For companies that sell aesthetically distinctive consumer products in the United States, it is important to understand the different forms of intellectual property rights that are available to protect the visual appearance of those product designs from copying by competitors. Most practitioners are familiar with design patents, which are often not difficult to obtain, and last for 15 years after they are granted. Design patents can be used to protect the distinctive aesthetic exterior styling of everything from cars, to furniture, to food containers, to fashionable clothing and accessories. However, design patents are limited in scope, and are ultimately not suitable for protecting product designs that a company intends to sell for more than 15 years. Alternative forms of intellectual property protection are available, though often less well understood than design patents. The most important of these is trade dress, which is a sub-category of trademark rights that can protect the appearance of products that have become well-known among relevant consumers. Unlike design patents, trade dress rights can last indefinitely, for as long as the owner actively uses the design. Because of this potentially wide reach, U.S. law sets strict requirements on what can qualify for trade dress protection. Knowing how to satisfy these requirements is imperative for companies with popular product designs that out-live design patent protection, or that are not eligible for design patent protection because no timely patent application was filed. Additionally, following an important 2017 Supreme Court decision, copyright law has now also emerged as a potentially important form of protection for aesthetically distinctive product designs.
Trade Dress
Unlike a name or logo, trade dress can protect the external shape and appearance of consumer products and other real-world objects separate and apart from any brand name, with the product shape itself being considered the brand identifier. Some examples of the kinds of product designs that could be eligible for trade dress protection are the aesthetic body styling of a well-known car (like the Volkswagen Beetle), the shape of a unique beverage container (like the classic Coca Cola bottle), the look of a distinctive handbag (like the Hermès Birkin Bag), the styling of a classic shoe (like the Converse Chuck Taylor sneaker), or the appearance of a piece of aesthetic furniture (like the iconic Herman Miller Eames Chair). (Trade dress can also be used to protect things like packaging, website design, and restaurant décor, but this article focuses on consumer product configuration)
A company seeking to establish trade dress rights in a product’s aesthetic appearance must be able to prove two things: (1) that the overall design is “non-functional,” and (2) that the design has acquired “secondary meaning.” Non-functionality has a special definition in trade dress law, meaning that the shape of the product has aesthetic styling, rather than the shape being purely dictated by its function. This requirement is intended to prevent companies from improperly monopolizing the best utilitarian ways of constructing useful products, thereby essentially securing never-ending utility patent protection. It was because of the doctrine of functionality that Apple was denied trade dress protection for the iPhone, which was considered to be too simple and utilitarian a shape to warrant granting Apple an indefinite monopoly (though Apple was permitted to enforce its design patents because of those patents’ limited lifetimes). A good general rule of thumb is that simple designs for which there are few reasonable alternative shapes would tend to be found legally “functional,” whereas stylized, artistically-influenced designs are more likely to be found legally non-functional.
Below are some examples of product designs that were found to be functional, and some that were not.
To have acquired secondary meaning, the design in question must have become well-known to a significant number of the relevant target consumers, such that even if the target consumers do not know the name of the company that makes the design, they tend to recognize the design as unique, and believe it is associated with a single supplier. Secondary meaning can be proven directly by conducting a survey of the target consumers, or indirectly with evidence of a significant amount of product sales and marketing spending over many years.
When introducing a new product design, it is often useful to have a design patent in place until the product has gained enough secondary meaning among target consumers to establish trade dress rights.
With respect to non-functionality, it is also advantageous to adopt a distinctive stylization for the product: a unique visual appearance that no competitor would have a legitimate reason to copy unless they were deliberately trying to take advantage of the company’s reputation. So, if a product could work just as well in a simple shape, designing it with arbitrary and distinctive curvatures or patterns will help establish that the overall look of the design is non-functional. It is important to maintain consistency in the chosen design over time to show that it is being used as a brand identifier. For example, although the Volkswagen Beetle was modernized, the newer versions looked similar to older models, and were still easily recognizable to consumers as Beetles. It is also important to maintain detailed records of sales, marketing spending, and marketing materials: anything that can be used to help establish that the design has become well-recognized among the relevant consumers.
While not strictly necessary, it is advisable for companies to formally register their trade dress designs with the U.S. Trademark Office, primarily because this can shift the burden of proof to the defendant in a litigation to have to disprove the validity of the trade dress. Once validity is established, liability for trade dress infringement is proven by looking to the same likelihood of confusion factors that are applied in all trademark cases, including not only visual similarity, but also an assessment of the sophistication of the relevant consumers, and the degree of market overlap with the defendant’s competing products. For very famous products that are widely recognized, liability for diluting the brand can be found even if there is no likelihood of confusion, i.e., even if consumers would understand that they are purchasing a knock-off. Remedies for infringing trade dress can include an injunction against the defendant, monetary compensation for the plaintiff’s lost sales (if provable), and equitable disgorgement of the defendant’s infringing profits.
Copyright
The U.S. Copyright Statute at 17 U.S.C. § 101 provides that a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article” is eligible for copyright protection if it (1) “can be identified separately from,” and (2) is “capable of existing independently of, the utilitarian aspects of the article.” The full meaning of this provision was unclear until 2017, when the U.S. Supreme Court decided the case of Star Athletica, L.L.C. v. Varsity Brands, Inc., which dealt with the question of whether aesthetic patterns on cheerleading uniforms were eligible for copyright protection. Opponents of copyrightability argued that the designs were inextricably intertwined with the uniforms because the uniforms were not useful as cheerleading attire without the designs, and because the patterns were in the shape of the uniforms. A majority of the Supreme Court disagreed, finding that the uniform patterns were no different than “a design etched or painted on the surface of a guitar” (which would be copyrightable). The Court went on to explain that it was unnecessary to prove that the product in question would remain useful without the aesthetic design, but rather only necessary to show that “the separated [aesthetic] feature qualify as a nonuseful pictorial, graphic, or sculptural work on its own”. The Court rejected the idea that Congress had intended to preclude copyright protection for industrial designs, and explained that “we have long held that design patent and copyright are not mutually exclusive”. In summation, the Supreme Court held that “an artistic feature of the design of a useful article is eligible for copyright protection if the feature (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 either on its own or in some other medium if imagined separately from the useful article.”
Following the Star Athletica decision, there has been an increase in copyright claims for consumer products. For example, in California, a District Court suggested that the artistically-styled Noguchi Table should be copyrightable. And in May of 2019, the Copyright Office granted a copyright registration to adidas for its popular Yeezy Boost sneaker design. While the law is still evolving, it is fair to say that more consumer product designs will be found copyrightable after the Supreme Court’s Star Athletica decision.
Copyright protection is attractive for intellectual property owners because it is generally easier to recover damages and obtain an injunction for copyright infringement than it is for trade dress infringement. Importantly, there is also no requirement to prove secondary meaning: artistic works can be copyrighted regardless of how popular they are.
Conclusion
While design patents remain an important tool for protecting product designs in the United States, it is important for companies to explore whether they can also invoke trade dress and copyright. In particular, companies that have sold popular product designs for many years – or that intend to sell a new design for many years – should consider trade dress registration. And for products that are artistically shaped, copyright registration may be available as well.
JEAN-PAUL CIARDULLO
Intellectual property attorney in Foley & Lardner LLP (Los Angeles) (www.foley.com/en/people/c/ciardullo-jeanpaul)