Method and Apparatus for Beating the Competition
January 2003
There are various types of intellectual property
rights available to protect product configurations in the marketplace. It is
important to remember that product configurations are often protectible, even
where utility patent protection is not available, and there is a variety of
protection available, with each class of protection having its own strengths
and weaknesses.
by Sanford
E. Warren Jr. and Kenneth T. Emanuelson
Winstead Sechrest
& Minick
The first thing most people think about when they think about a “patent”
is a utility patent. A utility patent covers
a useful device, process, or manufactured product. An example of such a device
is the “user-operated amusement apparatus for kicking the user’s buttocks” covered
by United States Letters Patent No. 6,293,874. Another example is the “method
of exercising a cat” covered by United States Letters Patent No. 5,443,036.
Utility patents such as these protect useful inventions taking the form of apparatuses
and methods. After all, who among us doesn’t know of a cat that needs some healthy
exercise or a person who really needs a good kick in the buttocks?
While patents on useful apparatuses and methods, or utility patents, are
the type of patents you are most likely to think of when you hear the word “patent,”
they’re by no means the only type of patent available to protect an inventor’s
creations. In addition to utility patents, the patent laws of the United States
provide for protection for new plants and
new ornamental designs. Although plant patents
have their value, they are probably not of particular interest to you unless
you are in the plant development business. Design patents, on the other hand,
are of interest to any manufacturer or business having a product. In this article,
I will be discussing certain advantages, as well as certain limitations, of
design patents. In addition, I will be discussing the manner in which design
patent protection can be combined with utility patent protection, copyright
protection, and trade dress protection in order to fully protect the intellectual
property embodied in the product.
Utility Patents
As we have discussed before, a utility patent covers a new, nonobvious, and
useful invention which fits within the statutory framework of patentable subject
matter. Under the patent law, patentable subject matter includes processes,
machines, manufactures, and compositions of matter. In the past, the U.S. Patent
and Trademark Office performed the role of “gatekeeper” in order to protect
the public from “frivolous” and “immoral” inventions, as well as those inventions
not clearly falling within one of the four statutory categories, narrowly defined.
Today, the U.S. Patent and Trademark Office has largely abandoned that role,
instead focusing on the “novelty” and “nonobviousness” requirements. Properly
drafted, a utility patent can be a very powerful asset, granting a legally-enforceable
monopoly to the inventor. A drawback to the utility patent is that it is in
force for only a limited period, up to a maximum of 20 years, after which the
invention enters the public domain.
Design Patents
In contrast to a utility patent, a design patent covers a new and original
design having aesthetic ornamentation. In order to be covered by a design patent,
a design must be an article of manufacture meeting the ornamentality requirement,
in addition to novelty and nonobviousness requirements similar to those for
utility patents. In addition, there is a requirement that the “ornamental” features
be “nonfunctional.” Similar to the utility patent, a design patent grants a
legally-enforceable monopoly to the inventor. Also similar to the utility patent,
a design patent is in force for only a limited term of 14 years.
Copyright Protection
Similar to the type of protection provided by design patents, copyrights
can expressly protect “works of artistic craftsmanship, insofar as their form
but not their mechanical or utilitarian aspects are concerned; the design of
a useful article shall be considered a pictorial, graphic, or sculptural work
only if, and only to the extent that, such design incorporates pictorial, graphic,
or sculptural features that can be identified separately from, and are capable
of existing independently of, the utilitarian aspects of the article.”
Copyright protection is similar in nature to design patent protection, but
with a number of major differences. Unlike design patents, there is no requirement
that the work in question be novel or nonobvious in order to be copyrighted.
So long as the creation was original in the mind of the creator, copyright protection
can attach to the creation. If you were brought up on a desert island and had
never seen Michelangelo’s David, but you created an identical sculpture though
sheer chance, your independently-created work could be copyrighted. A work created
by knowingly copying the work of another cannot, of course, be protected by
copyright. Put another way, the work doesn’t have to be new, it only has to be new to you. In contrast to patent protection,
which has a fairly-limited term, copyright protection to an individual author
extends for at least the life of the author plus an additional term of years,
depending on the year of the original copyright. Also unlike patent protection,
no formalities are necessary for legal protection to attach to the work.
Trade Dress Protection
Last, but certainly not least, is trade dress protection. Trade dress is
the manner of presentation of a product to the public. In the same way that
a company name or a logo can serve as a trademark to identify a company’s goods,
the shape of a product can serve the same function—as an indicator of the source
for particular goods. In general, trade dress is afforded the same type of protection
as traditional trademarks and service marks, provided that it functions as a
recognizable source indicator. A source indicator enjoying a high level of consumer
recognition is said to have “secondary meaning” in the marketplace.
Similar to design patent protection, trade dress is weakest for those aspects
of a product shape that can be thought of as partly or completely functional.
When properly maintained, trade dress protection for a product shape has a potentially-infinite
term. Many product designs have been held to be protectible as trade dress.
Examples include the shape of Life Savers candies, the shape of Goldfish crackers,
and the design of a Ferrari Daytona Spyder.
At one time, design patent protection, copyright protection, and trade dress
protection were thought to be mutually-exclusive areas of protection. Under
the modern case law, these areas of protection are viewed as distinct, and separately-protectible,
aspects of a given product. For example, the fact that a given product shape
has ceased to be associated with a particular manufacturer may preclude its
protection as trade dress. The loss of trade dress protection does not preclude
the existence of copyright or design protection. Similarly, a product shape
may be identical to, and based on, that of an ancient sculpture in the public
domain. The fact that the shape itself is a public domain work, and therefore
not subject to design patent or copyright protection, should not necessarily
preclude the existence of trade dress protection for that shape.
Patents versus Trade Dress
The existence of a design patent on a product is generally not a bar to trade
dress protection. The courts have held, for example, that existence of a design
patent on the configuration of a wine bottle is no bar to registration of that
configuration as a trademark. In certain cases, the existence of a utility patent
may, however, make enforcement of trade dress registration or protection difficult,
such as where the inherent function of the invention cannot be separated from
its shape.
As noted, because of the potentially infinite term of trade dress protection,
courts ruling on the scope of trade dress protection have generally held to
the rule that trade dress protection does not extend to purely functional aspects
of a product shape. That is not to say that purely functional features can’t
serve as source designators. They can and do. Monopolies over purely functional
features are, however, considered exclusive to the patent law. To allow a manufacturer
to monopolize functional features of a design would be equivalent to granting
that manufacturer a patent on that functionality. Congress has made clear in
federal law that a utility patent is to extend for 20 years from its filing
date. Congress has also made clear that patents are not to be granted on inventions
that have already been in the public domain. Trade dress protection on functional
features of a product has the potential to frustrate both of these policies.
In certain cases, product configurations may have protectible trade dress, even
if the configurations incorporate functional features that are covered by utility
patents.
In order to limit the potential for trade dress law to swallow patent law,
the courts have developed the “functionality” doctrine. This doctrine provides
that no person or entity can be allowed to obtain trade dress protection for
the purely or primarily useful or utilitarian aspects of a product configuration.
Within trade dress law, a “functional” feature is one that possesses sufficient
utility that a monopoly on it would hinder competition in the marketplace.
In certain cases, courts have held that even if one or more aspects of a
product are found to be functional features, a manufacturer may still be entitled
to trade dress protection in its particular design. Thus, the manufacturer may
have assertable trade dress rights, even in a case where its particular design
has been depicted and claimed in an
issued utility patent. This rationale is only applicable, of course, where the
same functional advantages are available using an alternate design. If a competitor
cannot achieve the same functional advantages using an alternate design, trade
dress protection must, by necessity, yield to the fundamental policies of the
patent system.
In practice, the value of a design patent or copyright as against trade dress
protection generally varies over time. When a product configuration is first
introduced by a company, the strength of trade dress protection for that configuration
will be relatively weak, owing to its inability to serve as a well-recognized
source indicator to the buying public. During this early period, patent and
copyright protection can protect the configuration from competitors. As sales
of the product expand, and the patented or copyrighted configuration becomes
associated with the manufacturer in the eyes of the buying public, secondary
meaning, and therefore, trade dress protection will attach to the product configuration,
continuing after utility patent, design patent, and perhaps even copyright protection
have lapsed. This is a prime example of the manner in which these distinct areas
of intellectual property protection can be used together.
Patents versus Copyrights
Patents and copyrights can also coexist. The Copyright Office will apply
certain basic criteria in order to determine whether creative work embodied
in a utilitarian article can be registered. First, there must be one or more
artistic features that can be identified separately, either physically or conceptually,
from the utilitarian article. These features must be capable of existing independently
from the article as a work of art. In other words, where the product configuration
or design has an intrinsic utilitarian function, the Copyright Office must determine
whether the form of the product or design is separable from its function. If
the form is inseparable from its function, copyright protection cannot be awarded
to the product or design.
Examples of product configurations held to be entitled to copyright protection
include sculptural lamp bases, belt buckles, ornamental face masks, artwork
on clothing, slippers, backpacks, and ornamental mannequins. On the other hand,
many products have been held to have no copyrightable features, including an
outdoor floodlight, a bicycle rack, utilitarian mannequins, and automobile wheels.
The interplay between utility patent protection on the one hand, and design
patent or copyright protection on the other, is relatively straightforward on
the surface. A utility patent protects the conceptual utility or function performed
by an object, while a design patent or copyright protects the appearance of
the object. In the marketplace, a utility patent on an object is generally valued
above a design patent or copyright, due to the fact that a monopoly on the functionality of a product generally has
more value than a monopoly on a product’s appearance.
This is, of course, not always the case.
One particularly interesting aspect of the interplay between patent and copyright
arises from the standards of patentability and copyrightability, on the one
hand, and the respective standards of infringement, on the other. In general,
copyright law is much more “knowledge-based” than patent. What this means is
that you can copyright a sculpture that is indistinguishable from a famous sculpture
so long as you didn’t know of it, or copy it. That is, your subjective knowledge is very relevant to copyrightability.
Furthermore, you are not liable to the earlier creator for infringing his copyright,
as you have not copied. Patentability does not incorporate a subjective knowledge
element. The relevant inquiry of patentability is: “what does the world know?”
Also in contrast to copyright, infringement of a patent does not require knowledge
of the patent. Innocent infringement of a patent does not preclude liability.
Given these standards, there are likely to be situations in which you can copyright
something that you can’t patent.
Conclusion
As always, the above treatment is only a broad overview of the various types
of intellectual property rights available to protect product configurations
in the marketplace. The points I hope to have made are the following: (1) product
configurations are often protectible, even where utility patent protection is
not available; and (2) there is a variety of protection available, with each
class of protection having its own strengths and weaknesses.
Ken Emanuelson is an associate with the intellectual property section of Gardere & Wynne, LLP.
His clients range in size from small startups to established Fortune 500 companies,
in various areas of technology, from online commerce to aerospace. His regular
practice includes client counseling in all areas of intellectual property law,
patent and trademark drafting and prosecution, litigation, licensing negotiation,
and infringement analysis. In his prior career as an engineer, Mr. Emanuelson
worked for Texas Instruments and Ford Motor Company. His engineering experience
included work in semiconductor processing, factory automation, microwave communications,
aerospace materials, automotive technology, and superconductive ceramics. Mr.
Emanuelson is a graduate of the University of Texas School of Law, where his
course of study focused primarily on patent, trademark, and copyright law. He
also holds a BS degree in mechanical engineering from the University of Arkansas.
He can be reached by email at Kemanuelson@gardere.com.
Opinions expressed in Expert Commentary articles are those of the author and are
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