Design Patent: Ordinary Observer Test Must Examine Design as a Whole

AIPLATalk158Amini Innovation v. Anthony California (Fed. Cir. 2006, 05–1159).

Furniture is often protected by both copyrights and design patents. Amini sued Anthony for both copyright and design patent infringement. The district court granted summary judgment of non-infringement on both counts, and Amini appealed.

AIPLATalk159Design patents: Design patents infringement is proving by overcoming two tests: the ordinary observer test and the points of novelty test.  The ordinary observer tests looks at the design as a whole, while the novelty test looks at individual elements of the design.  The CAFC found that the lower court had erred in its use of the ordinary observer test by analyzing “each element separately instead of analyzing the design as a whole from the perspective of an ordinary observer.” Reversed.

Copyright: Unlike patent infringement, liability under copyright laws require some evidence of copying.  This is often satisfied by showing that the defendant had access to the protected design before creating the accused design. The Ninth Circuit operates under an “inverse-ratio rule” that requires a lesser showing of substantial similarity when there is a strong showing of access.

To assess similarity, the Ninth Circuit uses a two-part analysis: the extrinsic test and the intrinsic test. The extrinsic test is an objective test that compares specific expressive elements while the intrinsic test focuses on what an ordinary reasonable audience would think.  Here, the district court erred by expanding its application of the extrinsic test to the “total concept and feel of the work.”