By Dennis Crouch
In this post, I question whether copying is a required element for profit disgorgement under the design patent remedy provision of 35 U.S.C. § 289.
An important element of design patent protection is the special damages provision found in 35 U.S.C. § 289. According to the statute, design patent owners have an optional remedy available of disgorging the “total profit” of an infringer. It was this profit disgorgement that likely drove the bulk of Apple’s $1 billion award in the recent Apple v. Samsung jury decision. When the adjudged infringer is profitable, the disgorgement provision can lead to an enormous award.
Section 289 is titled “Additional remedy for infringement of design patent” and is written as follows:
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.
In patent cases, copying is normally not an element of proving infringement. And, although proof of copying will be important in determining punitive damages, it is also not normally an element in determining the underlying damages. In the design patent cases, copying has not traditionally been seen as required in order to seek profit disgorgement. However, in my view, a plain reading of the old statute suggests that copying may in fact be required when the infringing product does not embody the identical design found in the patent. The key phrase repeated in the statute is “colorable imitation.”
The “colorable imitation” language was included in the original 1887 legislation. By that time, however, the term was already in frequent use in trade-mark cases and implied copying.* The suggestion here is that, when the infringement falls under the “colorable imitation” prong, that a disgorgement damage award should only occur when a plaintiff offers some proof of copying. A more aggressive position (and probably less defendable position) could also argue that the statute always requires some proof of copying because “appl[ying] the patented design” implies that knowledge learned from the original is being used to create the new article of manufacture.
Assuming that the distinction for the copying requirement is between whether the infringer “applies the patented design” or “applies … any colorable imitation thereof,” it will be important moving forward to understand how to differentiate between these two.
- Professor Tom Cotter has an interesting take on the Apple v. Samsung damage award in a post titled Apple v. Samsung and awards of defendant’s profits: the potential for overcompensatory damages in design patent infringement cases. See also Colin B. Harris & Andrew M. Ollis, Design Patent Damages, 2 No. 5 Landslide 57 (May/June 2010).
- The original design patent law review article was published in Volume 1 of the Yale Law Journal. See, Frederic H. Betts, Some Questions under the Design Patent Act of 1887, 1 Yale L.J. 181 (1892).
- * The hyphen has since been removed from trademark common usage.