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Justin M. Clark is the managing attorney at J. Clark Law Firm in Phoenix, Arizona. He specializes in trademark and copyright prosecution and litigation. Julianne R. Davis focuses her practice exclusively on intellectual property matters, with an emphasis on litigation and strategic counseling. Her experience includes utility patents and models, design patents, trademarks, product configuration, trade dress, trade secrets, counterfeiting, and the procurement and enforcement of IP rights.
The famed human psychologist Abraham Maslow coined the phrase “To the man who only has a hammer, everything he encounters begins to look like a nail.” Although this quote has a great deal of relevance in the field of psychology, it also can be taken as the mantra of intellectual property attorneys. After all, many of the questions IP attorneys face in daily practice involve a weighing of different types of proprietary subject matter with the requirement that the attorney properly advise clients on the best form of protection. Viewed in this way, Maslow’s caveat against using only one type of tool in all situations has special significance.
Assessing proprietary subject matter and determining the most appropriate type of IP regime to apply can be anything but straightforward, particularly when the item to be protected presents elements that are protectable simultaneously by a trademark, copyright, or patent. The issue is particularly acute when a product has ornamental features that may be protected by either copyright or a design patent. Ever since Egyptian Goddess v. Swisa, design patent protection has taken on an increased role in product design.1 Designers have claimed that features embodied in items as diverse as cookware and graphical user interfaces (or screenshots) of software programs are ornamental and worthy of design patent protection. The importance of design patents and their overlap with other types of IP protections was highlighted in the recent Apple v. Samsung2 case, where Apple asserted claims of both trade dress infringement and design patent infringement against Samsung.
Some of these design features may also be protected by copyright as pictorial, graphic, or sculptural works. The possibility of copyright protection for certain features of a product gives what some might call a second bite of the apple to the design patent owner. Because ornamental features protected by the earlier design patent may later be protected by copyright, the “author” of the design obtains protection for the remainder of his or her life plus 70 years, at a minimum. If a design feature can be protected by both a design patent and a copyright, can a designer really be faulted for using both types of protections to cover his or her product to prevent competitors from appropriating particular elements? Does granting a longer term of protection over a particular feature of a product risk giving the designer an unfair advantage over competitors? Should an owner or inventor be forced to rely on one type of protection and lose out on the benefits of another area, or can the owner or inventor get the best of both worlds by capitalizing on the strengths of two available forms of protection?
Copyright statutes have been modified over the years to include protection for design elements that are separable from functional aspects of the product. Thus, while it may not always be clear where to draw the line between a product’s functional components and design components, designers might at least consider making a portion of their product’s design ornamental. For example, a designer of athletic shoes may overlay a pattern or streak across the sides of the shoes to add an artistic flare to an otherwise functional product. At the same time, some products may be of such a nature that an extended period of protection is unnecessary because the market to which the product is designed to appeal may be the result of a trend in technology or particular tastes. In such a case, it may not be as important to the designer that a particular element be eligible for copyright protection.
At the very least, IP attorneys must be aware of the availability of multiple protections for design elements and consider when clients should strive to design their product in such a way that the design can be covered by both a design patent and a copyright.
The Copyright Act protects all original works of authorship that are fixed in a tangible medium of expression, including works known as pictorial, graphic, or sculptural (PGS) works.3 PGS works are taken today as encompassing the design of works that have a utilitarian function. Indeed, § 101 speaks specifically to “useful articles” as copyrightable subject matter: “[T]he 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.”4
The Copyright Act has not always included protection for articles of design that also include a functional aspect. Although the definition of a useful article eligible for protection may seem straightforward, the development and application of the so-called separability test has created a lot of confusion about where the line between protected design and unprotected function should lie. The history of the gradual inclusion of copyright protection for useful articles as PGS works makes the line somewhat easier to discern.5
From the early days of copyright protection in the United States, there have been many revisions to the Copyright Act to keep it current with evolving technologies and changes in the way works of authorship are created and conveyed. Tracking the course of these revisions, one common theme has been a reinforcement of the principle that copyright protection is not available for any “idea, procedure, process, system, method of operation, concept, principle, or discovery.”6 This theme has played out in the courts since the Supreme Court’s decision in Baker v. Selden, where the Court held that there was a basic distinction between an author’s copyrightable original writing and underlying ideas or practical knowledge about which the author is writing.7 The 1909 Copyright Act seemed to extend the holding in Baker when it excluded from copyright protection works of industrial arts that were utilitarian in purpose or character, even if the works were made with an artistic motivation.8
The Supreme Court’s decision in Mazer v. Stein seemed to challenge a broad application of the 1909 Copyright Act as a prohibition of copyright protection for any useful article, regardless of its inclusion of artistic elements.9 The Court concluded that although the lamp bases were mass-produced and sold commercially, the artistic design of the sculpture itself constituted the “writings of an author” which was sufficient to meet the standard for copyrightability under the 1909 Act.10 This interpretation gave credence to a 1949 amendment to the Copyright Act whereby works of art were defined as “works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries.”11 In 1959, following the ruling in Mazer, the Copyright Office attempted to clarify the definition of a useful article by specifying that all useful articles that had utility as a sole intrinsic function were not eligible for copyright protection as a work of art.12
After 1959, many courts struggled to apply the 1959 directive to works that contained both utilitarian and artistic features. Most of the confusion of courts in applying the directive may have been due to the Copyright Office’s failure to address the challenge of distilling artistic features from a product that also had a degree of utility.13 The 1976 Act was intended to clarify many of the regulations promulgated under the 1909 Act. The result was an expanded definition of a PGS work and the enunciation of a general framework to apply to any useful article to isolate copyrightable design elements from uncopyrightable utilitarian elements.14
The House Report accompanying the 1976 Act discussed such line drawing in terms of a process known as “separability,” whereby copyrightability is found only in artistic elements that are capable of being identified separately from utilitarian components.15 Notably, although the definition of PGS works in the 1976 Act does not discuss the ways in which an element of design can be separated from a useful article, language in the House Report suggests that copyrightable elements can either be physically or conceptually separable. The possibility of physical or conceptual separability clashed with the long-standing treatment of works of the industrial arts as noncopyrightable regardless of whether an element of the article was aesthetically pleasing. Thus, although the 1976 Copyright Act was meant to bring some clarity to the debate surrounding the copyrightability of useful articles, the disconnect between the notion of conceptual separability and the previous hardline test blurred the line between art and nonart.16
Initially, courts struggled to apply the various separability ideas described in the 1976 Act as they embarked on a difficult journey to develop an effective separability test. Most of the important developments in this area have come from the Second Circuit. In Kieselstein-Cord v. Accessories by Pearl, Inc., the court held that the ornamental designs of belt buckles were conceptually separable from the utilitarian aspects of the belts. In the court’s opinion, the artistic features could be conceived of as having been added to an otherwise utilitarian article and were not so intertwined with the functional requirements of the belt that a particular design was required for the buckles.17 Conversely in Carol Barnhart, Inc. v. Economy Cover Corp., the court held that the designs of mannequins of partial human torsos, with particular anatomically correct configurations of shoulders and breasts, were not conceptually separable from the utilitarian functions of the mannequins to display and model clothes.18
The Second Circuit again took up the issue of conceptual separability in the case of Brandir International, Inc. v. Cascade Pacific Lumber Co.19 In Brandir, the court considered whether a bicycle rack made of metal tubing bent to resemble a ribbon with a series of slots in which a bike could be placed was copyrightable. The court held that the rack was not copyrightable because the functional elements of the rack were not separable from the design elements based on the designer’s failure to separate artistic from functional considerations during the design process.20 With the benefit of previous opinions and scholarly commentary on the tough line that Congress attempted to draw in the 1976 Act, the court embraced a new viewpoint on conceptual separability. In the process, it attempted to extricate itself from becoming too involved in the subjective interpretation of what constituted true art distinct from function. To get to this result, the court endorsed a test described by Professor Robert Denicola, where copyrightability turned on “the relationship between the proffered work and the process of industrial design.”21
Under Denicola’s test, copyrightability depends on the extent of artistic expression uninhibited by functional considerations.22 In terms of conceptual separability, if a design element reflects a merger of aesthetic and functional considerations, that design element is not conceptually separable and not eligible for copyright protection.23 However, where a design element reflects the designer’s artistic judgment independent of functional influences, that element is conceptually separable.
If copyright has evolved to protect limited elements of useful articles (namely artistic elements not influenced by functional considerations), to what extent is the test of conceptual separability compatible with the framework used by the courts in considering whether an element of a design is protectable by a design patent? Design patents are often favored by designers because they are relatively inexpensive to obtain and do not require that the article be used in commerce, as is the requirement for trade dress.24 Moreover, design patents provide 15 years of protection for the design features, often giving the owner of the underlying design time to establish trade dress rights. Design patents are often considered to be as attractive as copyright protection for artistic elements of a useful article.
Design patents protect novel, ornamental features of an article of manufacture with the limitation that utilitarian features or functional aspects of the design are not protectable.25 To satisfy the ornamental requirement, a claimed design must be arbitrary, meaning that the way the article is to be used cannot dictate the article’s design.26 However, the absence of artistic merit in the ornamental feature to be protected does not mean that the design is purely functional. In addition to the ornamentation requirement, designs must be novel, meaning that an ordinary observer must see a new design and not merely a replica of an existing design.27
Design patents and copyrights could be said to overlap on several fronts. In terms of the protected subject matter, both a design patent and a copyright require a degree of ornamentality that is separable from underlying functional components. In both cases, the ornamental design also cannot be dictated by a particular functional purpose. When examining the standards of infringement in design patent and copyright cases, there is also a degree of overlap. In design patent cases, a court compares the accused product to the claimed design and uses an ordinary observer test to determine whether there is substantial similarity between the two designs. In making this determination, a court is careful to give weight to the overall ornamental visual impression that the two designs make on a viewer as opposed to the broader general design concept.
In a case involving a claim of infringement of a PGS work, a copyright owner must show that the alleged infringer copied the protected elements of the design and that the copying was substantial enough to amount to an appropriation of the design.28 Copying is usually shown by proving that the infringer had access to the work and that there is substantial similarity between the copyrighted design and the accused design.29 Just as in a design patent case, an infringing design does not have to be an exact reproduction of the copyrighted design in order to be infringing. Instead, a court considers “whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression.”30
A difference between design patent and copyright protection that might persuade a designer to favor copyright protection is the difference in remedies that a rights owner receives if it prevails against an infringer. A rights owner can recover monetary damages for either design patent or copyright infringement. Under the Patent Act, the owner of a design patent can choose one of two strategies in recovering damages: a reasonable royalty31 or the total profits made by the infringer from the infringing design.32 However, some restrictions on the application of § 289 place limits on the amount of recovery and limit the patentee from receiving enhanced damages.33 In the case of copyright infringement, a rights owner can choose whether it wants actual damages and any additional profits of the infringer or statutory damages.34 If the rights owner elects to take statutory damages, damages are calculated on each instance of infringement (i.e., each individual work).35 If infringement is found to be willful, a court may increase the award of statutory damages to a sum of $150,000 for each instance of infringement,36 an award that is not available in the case of a design patent. In addition, an award of attorneys’ fees is easier to obtain under the Copyright Act. In copyright actions, the court may award fees and costs to the prevailing party as it sees fit. However, an award under the Patent Act requires a showing that the case was “exceptional,” which usually means the infringement was willful, or the suit was brought in bad faith. Thus, a rights owner who asserts a copyright against an infringer stands to reap significant damages that may not otherwise be realized in a design patent remedy.
Despite the differences in remedies in cases of design patents and copyrights, one might conclude based on these overlaps that copyright and design patent are one and the same and that a designer is better off opting for copyright protection due to its longer term of protection and limited formalities. After all, even though an article of manufacture may meet the standards for registrability under both a copyright and design patent, a design element must meet the additional constraints of novelty, originality, and nonobviousness in order to be protected by a design patent. Paradoxically, this does not make it easier for a designer to obtain a copyright over a design patent. The key difference lies in the way that courts analyze designs that are claimed as copyrightable by the designers.
Copyright may be the preferred method of protection for design elements, but the bar for attaining copyright protection appears to be higher because a designer is subjected to a multitude of validity tests when his or her copyright is challenged. Although amendments to the Copyright Act have created a standard for determining whether design features of a useful article are protectable as a PGS work, the application by courts has been anything but uniform. High-profile cases in the Second Circuit,37 Fifth Circuit,38 and Seventh Circuit39 have all yielded a different viewpoint regarding what conceptual separability requires. This type of conflicting case law is something that a design patentee does not face because all review of design patents is conducted by the Federal Circuit only, thereby creating a more uniform decisional framework.
The problem with most of the conceptual separability standards developed by the courts is that they all allow some degree of subjective judgment by a judge as to the nature and merit of the underlying artistic elements in a useful article. This tendency is highlighted in a Fifth Circuit opinion, Galiano v. Harrah’s Operating Co., where the court weighed whether the article at issue (uniform designs for casino employees) could be marketable without the utilitarian functionality.40 Determining the issue of separability based on the marketability of an article necessarily gives courts an opportunity to weigh the underlying artistic merit of a piece. This results in the inconsistent treatment of different types of articles and confounds the role of a court in attempting to identify copyrightable portions of a design. For example, when evaluated under the test from Brandir (a case that involved an article of “modern” art), an article containing modern artistic elements would be protectable regardless of the popularity of the art that influenced the aesthetic feature. After all, Brandir merely requires the designer to use art during the design process to influence the design of a particular element of the article.
A conceptual separability standard that places an emphasis on the popularity of art or its ability to appeal to the artistic tastes of the audience is not something that is easy for a designer to account for in the design process. The various standards certainly impose a higher bar than the ornamentality requirement imposed by a design patent because a court is not considering only whether particular elements sought to be protected are separable from the functional components. In addition to separability, some courts are considering whether the design element to be protected is also recognized as artistic expression.
For example, a design for a door may use a minimalist profile that incorporates a series of horizontal slats filled with fogged glass with a unique handle. The door design may not contain any of the traditional accents or elaborate designs that other doors contain (e.g., elaborate stained glass designs or elaborately cut wood panels with decorative trim), but it was nevertheless designed with a particular artistic goal in mind. Under a design patent, such a door would certainly have ornamental features not dictated by the function of the door itself and would likely be protectable. On the other hand, if a court believed that the door’s design elements were required by the utilitarian features of the door and that modernism is not widely recognized as artistic expression, it may find that the door is ineligible for copyright protection.
With the different standards for copyrightability employed by each circuit, a designer would be well-advised to focus on more than just copyright protection for aesthetic features of his or her design. Design patent protection may be available where the article to be protected has ornamental, novel, and nonobvious features. If a design feature of the article is not influenced by functional or utilitarian concerns, it may also be copyrightable as a PGS work. Fortunately, the United States allows overlapping protection, so a designer could attempt to have both a design patent and a copyright on the same design element.
Under the new America Invents Act (AIA),41 designers are well-advised to choose the protection that they start with wisely. If a designer brings a product to market quickly under the belief that the product is protected by a copyright, he or she may be left in a tight position if a competitor sues to invalidate the copyright claim by arguing that the product’s design features are not protected PGS works. Under the AIA, the same provisions that apply to utility patents apply equally to design patents, including the expanded conception of what constitutes prior art and invalidating disclosures. Therefore, if designers sell their product in the marketplace without first securing a design patent, a ruling that the design is ineligible for copyright protection would allow others to freely copy design components of the article.
Designers should carefully consider the tool they want to use to protect their designs. In general, copyright protection is inexpensive compared to design patents, and a rights owner who opts for copyright protection does not have to overcome the additional hurdle of the prior art. While the procedural requirements to secure a copyright or design patent may be distinct, an examination of the essence of what each type of regime is protecting yields some similarities. However, the hurdles that designers face in defending a design as copyrightable are significant because courts have struggled to create a unified and predictable standard for when aesthetic elements of a useful article are considered protected PGS works. In situations where a designer is concerned about the viability of his or her copyright claim in a PGS work, design patents may be a necessary tool to use in order to gain some protection.
1. In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit modified the standard for determining when a design patent is infringed, rejecting the point of novelty test enunciated by the Federal Circuit in Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998), and reverting to the ordinary observer test from Gorham Co. v. White, 81 U.S. 511 (1871). Without the burden of proving that an accused device shares each point of novelty with a patented design, a plaintiff can more easily prove that a particular design is infringing.
2. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012).
3. 17 U.S.C. § 102(a).
4. Id. § 101. A “useful article” is defined in § 101 as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”
5. For a thorough overview of the Copyright Office’s treatment of useful articles as copyrightable works, see Richard P. Sybert & Lindsay J. Hulley, Copyright Protection for “Useful Articles,” 54 J. Copyright Soc’y U.S.A. 419 (2007).
6. 17 U.S.C. § 102(b).
7. 101 U.S. 99 (1879).
8. Copyright Office, Rules and Regulations for the Registration of Claims to Copyright, Bulletin No. 15, at 8 (1910).
9. 347 U.S. 201 (1954). The case involved a challenge to the copyrightability of a sculpture that was sold as the base of a lamp.
10. Id. at 218.
11. 37 C.F.R. § 202.8 (1949). Perhaps as a prelude to this modification, the Copyright Office made an amendment to the Copyright Act in 1917 clarifying that works of industrial arts that are utilitarian both in purpose and character were the subject matter of a patent and not copyright, regardless of the artistic motivation behind the work. However, works incorporating an artistic drawing could be copyrightable despite their later utilization for articles of manufacture. See Mazer, 347 U.S. at 212 (citing 37 C.F.R. § 201.4(7) (1939)).
12. 37 C.F.R. § 202.10(c) (1977). The Copyright Office also seemed to require some type of artistic influence in order for the article to be considered protectable. See 37 C.F.R. § 202.10(c) (1959) (“[I]f the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.”).
13. Compare Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978) (supporting the copyright register’s restrictive interpretation of the separability test provided in the 1959 post-Mazer directive by reinforcing the notion that articles with a sole utilitarian purpose are ineligible for copyright protection no matter how aesthetically pleasing the overall shape or design of the article might be), with Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980) (giving a more expansive interpretation to the 1959 directive by concluding that copyrightability could adhere in the “conceptual” separation of an artistic element from the utilitarian features of an article).
14. H.R. Rep. No. 94-1476, at 50 (1976).
15. Id. at 55.
16. See Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 351 (1990) (arguing that granting copyright protection to articles that are merely capable of conceptual separability “opened new vistas of protection” and “set the stage for subsequent analysis”).
17. Kieselstein-Cord, 632 F.2d at 993.
18. 773 F.2d 411 (2d Cir. 1985).
19. 834 F.2d 1142 (2d Cir. 1987).
20. Id. at 1143.
21. Id. at 1145 (quoting Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707, 741 (1983)).
24. Design patents can be obtained in as quickly as three to six months with advanced planning and expedited examination. Design patents also do not require payment of maintenance fees or annuities like utility patents. See David W. Hill, Design Patents in the United States—Protecting Product Designs, Int’l Ass’n for the Protection of Intell. Prop., www.aippi.org/download/reports/forum/forum09/6/ForumSession6_Presentation_Hill_David.pdf (last visited Jan. 13, 2014).
25. 35 U.S.C. § 171.
26. See Seiko Epson Corp. v. Nu-Kote, Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999).
27. 35 U.S.C. § 102.
28. See Johnson v. Gordon, 409 F.3d 12, 18 (1st Cir. 2005).
30. Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982).
31. 35 U.S.C. § 284.
32. Id. § 289.
33. These restrictions include a prohibition on recovering both a reasonably royalty under § 284 and total profits under § 289, and a requirement that the recovery of damages only be from sales of the infringing article itself. See Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1291–92 (Fed. Cir. 2002) (finding an infringer who sold a lamp that infringed both a utility patent and a design patent liable to pay the infringer’s profits to the patentee under § 289 but not additional damages (i.e., a reasonable royalty) under § 284).
34. 17 U.S.C. § 504(a).
35. Id. § 504(c)(1).
36. Id. § 504(c)(2).
37. See Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987) (holding that separability of copyrightable elements from functional elements turns on the role that artistic considerations were part of the design process); Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985) (holding that aesthetic features embodied in a useful article are conceptually separable if the article’s utilitarian features do not require aesthetic features).
38. See Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005) (concluding that conceptual separability exists when there is any substantial likelihood that the article will be marketable to some significant segment of the community simply because of its aesthetic qualities).
39. See Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004) (holding that PGS features incorporated in the design of a useful article are conceptually separable if they can stand on their own as a work of art and if the useful article that embodies it would be equally useful without it).
40. 416 F.3d at 421.
41. Pub. L. No. 112-29, 125 Stat. 284 (2011).