An Overview of U.S. Design Rights – Infringement & Enforcement, Part 1 of 2

By: Ian R. Walsworth & Craig W. Mueller

This two-part blog series provides a primer on the different types of design rights in the United States and their enforcement. Part I will review the various types of infringement, and Part II will address remedies available to rights owners and defenses available to accused infringers. These posts are based on a paper and presentation delivered at the AIPLA’s Design Rights Boot Camp Conference in August 2019.

In general, there are three types of design rights in the United States: design patents, trade dress, and copyrights. The following will discuss the different burdens of proving infringement in actions to enforce design rights.

Design Patent Infringement

A design patent protects the ornamental or aesthetic appearance of an article. Unlike trade dress and copyrights, design patent protection is only afforded after the design patent is examined and issues. Design patent infringement is generally approached in the same way as utility patent infringement: the design patent is properly construed by the court, and then the question of whether the accused design infringes is evaluated by a fact finder (i.e., a jury or the court in a bench trial).

The court may, but is not required to, construe the design by giving a verbal description of the figures that setout the claims, but the “preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” A court “may find it helpful to point out . . . various features of the claimed design as they relate to the accused design and the prior art. . . . [A] trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim” and by explaining particular conventions in design patent drafting, such as the role of broken lines and distinguishing between the features of the claimed design that are ornamental and those that are purely functional.

After the design is properly construed, infringement is a question of fact and requires showing that the accused design is substantially the same as the claimed design by a preponderance of the evidence. Infringement is established when “an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” In evaluating infringement, a court considers whether the deception is a result of similarities in the “overall design”, rather than similarities considered in isolation.

A two-step test for determining design patent infringement has developed. First, the court compares the claimed design and the accused product to determine if they are “sufficiently distinct” such that the two designs could not be found “substantially the same” by the ordinary observer.

Second, if the claimed and accused designs are not plainly dissimilar, the court compares the claimed and accused designs with the prior art. If the claimed design is similar to the prior art designs, small differences between the accused design and the claimed design may “assume more importance” to the ordinary observer. The ultimate question is whether the overall design is substantially same in the eye of the ordinary observer, i.e., whether the resemblance would deceive such an observer, inducing him or her to purchase one supposing it to be the other.

Trade Dress Infringement

A federal claim for trade dress infringement may be brought under Section 43(a) of the Lanham Act, which states that “[a]ny person who, . . . uses in commerce any word, term, name, symbol, or device, or combination thereof, or any false designation of origin . . . which is likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act."

It should also be noted that trade dress infringement can also be raised as a claim under state law, typically under unfair competition or unfair and deceptive trade practices laws. Specific requirements of a state law claim will vary from state to state.

If a trade dress is federally registered, then a plaintiff may also assert a claim for infringement under Section 32 of the Lanham Act, which prohibits use in commerce of “any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake, or to deceive . . ..”

To establish a claim of trade dress infringement, a plaintiff must prove: (1) that it owns protectable rights in and to the trade dress, including that it is inherently distinctive, or has acquired secondary meaning, and is not functional; (2) that it began use of its trade dress prior to the defendant’s use of its similar trade dress or, if the trade dress is not inherently distinctive, that its trade dress acquired secondary meaning before the defendant’s trade dress did; and (3) that the defendant’s use of its trade dress is likely to cause confusion of the consuming public as to the source, origin, affiliation, or sponsorship of its goods or services.

Likelihood of confusion is evaluated by considering the total image or impression created by a defendant’s trade dress in the eyes and mind of an ordinary purchaser. Courts often consider one or more of the following factors:

  1. Strength of the trade dress (the more unique or well-known the trade dress is, the broader the scope of protection).
  2. Similarity of the parties’ trade dress.
  3. Similarity of the goods/services sold under the trade dress.
  4. Similarity of the distribution channels and customers.
  5. Sophistication of purchasers and the expense (sophisticated purchasers may be less likely to confuse trade dress, and more care is likely to be exercised in the purchase of expensive products).
  6. Similarity of means and methods of advertising/promotion.
  7. The defendant’s intent in adopting its trade dress (i.e., did it do so in good faith or with the intent to imitate the plaintiff’s trade dress?).
  8. Whether there is evidence of actual confusion by consumers or other relevant groups (this is not necessary for a likelihood of confusion, but is strong evidence of likely confusion).

These factors are not necessarily exhaustive, and no single factor is considered dispositive, such that the weight given to each factor may vary from case to case. When considering these factors, courts compare the trade dresses “in light of. . . the marketplace, not merely by looking at the two. . . side-by-side.”

In rare situations, a plaintiff may possess a claim for trade dress dilution pursuant to Section 43(c) of the Lanham Act. A claim of dilution requires a showing that (1) the plaintiff’s trade dress is not functional and is both distinctive and famous; (2) the defendant is using the trade dress in interstate commerce; (3) the defendant’s use occurred after the plaintiff’s trade dress became famous; and (4) the defendant’s use is likely to cause dilution by blurring or dilution by tarnishment of the plaintiff’s famous trade dress. While the fame of the trade dress is often the limiting factor, it can also be difficult to prove tarnishment (i.e. degrading the reputation of the mark through negative associations) or blurring (i.e. impairing the distinctiveness of the mark).

Copyright Infringement

Copyright infringement requires a plaintiff to prove: (1) ownership of a valid copyright, and (2) actionable copying by the defendant of constituent elements of the work that are original.

In relation to the second element, proof of copying, there are different analytical schemes applied by different courts around the United States. In the Ninth Circuit, infringement is proven by establishing ownership of copyright, access to work, plus substantial similarity. In the First Circuit, infringement may be shown by ownership of copyright and proof of “actionable copying” by (a) proof of “factual copying” and (b) proof of sufficient copying of protected matter to render the two works substantially similar.

On March 4, 2019, in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, the United States Supreme Court resolved a longstanding split among the circuit courts concerning what exactly the copyright registration prerequisite to filing a copyright lawsuit means, specifically whether an application to register is sufficient, or if an actual issued registration is required before a lawsuit may be filed. The Supreme Court chose the latter, holding that a copyright owner must first obtain a copyright registration certificate from the Copyright Office before filing a copyright infringement suit.

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