Suzanna M. M. Morales

A couple of recent court decisions have brought attention to the manner in which the design features of a tangible object can be protected under U.S. intellectual property law.

The Supreme Court, in Star-Athletica, L.L.C. v. Varsity Brands, Inc. held in March that the design on a cheerleading uniform can be eligible for protection under U.S. copyright law.  Previous precedent made it difficult to obtain copyright protection in fashion because clothing is considered a “useful article” not valid for protection.

About a week later, a jury in the United States District Court for the Central District of California found in favor of Dan Aykroyd’s company Globefill Incorporated against Elements Spirits, Inc. an accused infringer selling alcohol in a skull-shaped bottle.  Globefill prevailed based upon its trade dress in its own skull bottle.

Together with design patents, trade dress and copyright form a trifecta of methods for protecting the design or configuration of a tangible object.  This protection is available for decorative, non-functional features, which differs from the more common type of patent, utility patent, available only if the invention is “useful.”

The differences among the types of protection for trade dress, copyright, and design patents, can be understood in the context of the purpose of those laws.  Trademark and trade dress law is to protect consumers from confusion.  Patent and copyright law are to incentivize creation.

A few distinctive features of each one are described below:

Trade dress: Trade dress consists of all the features that make up the product design or product packaging and together serve as a source identifier that consumers can use to distinguish among brands. Therefore, a product design or packaging must be able to identify the source of the owner’s goods or services in order to qualify for protection under U.S. trademark law.

There are two types of trade dress: product design and product packaging. It is more difficult to get a federal registration for product design than for product packaging. Trade dress protection is not available for functional aspects of the object (e.g., if the shape of a bottle makes it easier to grasp), but it can be difficult to determine functionality. Registration of trade dress in the United States can be perpetual, as long as the owner continues to use the trade dress and pay a periodic renewal fee to the U.S. Patent and Trademark Office.

Copyright: United States copyright law protects original works of authorship fixed in a tangible medium of expression. Copyright protection is not available for useful articles because the protection of rights in useful articles falls within patent law.

The Star Athletica decision articulated the test as whether a claimed non-utilitarian function of a useful article “(1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work . . . If it were imagined separately from the useful article into which it is incorporated.”

The duration of copyright registration varies depending upon the owner, but is much longer than patent protection. For example, the copyright registration for a work owned by an individual author is the life of the author plus seventy years.

Design patent: To obtain a U.S. design patent, an applicant must invent a new, original, and ornamental design for an article of manufacture article, which cannot have been disclosed more than a year prior to application. Design patent protection is only available for an article of manufacture. A design patent originating in the U.S. expires fourteen years after it is issued by the U.S. Patent and Trademark Office.

Enforcement and Damages

Rights in trade dress and copyright exist whether or not the owner has obtained a registration, but registration, or at least a pending application, provides a copyright owner access to federal courts, which is crucial for enforcement.  While unregistered trade dress infringement claims can be brought in federal court, registration provides a presumption of validity and ability to obtain greater damages.  Patent rights require registration. Trade dress and patent registration can be more costly to obtain than copyright registration, due to filing fees and the complexity of the registration process.

Various monetary remedies are available in trade dress cases, which attempt to approximate the damage to the owner’s good will. The court may increase the amount of damages if the infringement is willful. Attorneys’ fees are available in exceptional cases.  In the Globefill v. Elements case, the judge recently (on June 13, 2017) tentatively awarded $870,000, defendant Elements’ disgorged profits.

Copyright law allows the plaintiff to elect actual damages or statutory damages. Statutory damages can range from $750 to $30,000 per infringed work, or up to $150,000 per work if the infringement is willful. Attorneys’ fees are available to the prevailing party in certain circumstances based on a multi-factor test.

Damages for design patent infringement can be the total profit of the infringer. This has been in the news due to a December 2016 Supreme Court ruling overturning a $400 million verdict in favor of Apple for Samsung’s infringement of Apple’s design patents. Where previously, the profits were based upon the entire article of manufacture (e.g., a phone), the Supreme Court held that the profits can be based upon a component of the infringed article (e.g., user interface).

Injunctive relief preventing future sales of infringing products are available for all three.

The type of protection available depends upon the type of work at issue, but it can be possible to own trade dress, copyright, and design patent registration for the same article. For example, Dan Aykroyd’s company, Globefill, owns trade dress, copyright, and patent registrations for its skull bottle. In the Elements case, Globefill only asserted trade dress infringement, though Globefill has brought claims against at least one other company for copyright and design patent infringement.  An intellectual property attorney can help your company determine what rights it has and the best way to protect them.