By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law
Despite the protestations of Columbia and its amici in support of the petition for rehearing, the Federal Circuit’s decision in Columbia v. Seirus is not the end of design patent law as we know it. (For prior Patently-O coverage, of this case and the pending petition, see here and here.)
It would be better for everyone if the court had been clearer on one key point but—even if that part is not corrected—the sky still will not fall.
The paragraph that has spurred these declarations of designpocalypse reads as follows:
The district court relied on one precedent from this court—L.A. Gear—for the proposition that logos should be wholly disregarded in the design-infringement analysis. In that case, the parties did not dispute that the patented and accused designs were substantially similar. L.A. Gear, 988 F.2d at 1125. In fact, “copying [was] admitted.” Id. In evaluating infringement there, we explained that design infringement is not avoided “by labelling.” Id. at 1126. A would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name. But L.A. Gear does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one. Indeed, the fact finder is tasked with determining whether an ordinary observer would find the “effect of the whole design substantially the same.” Gorham, 81 U.S. at 530. It would be inconsistent with this mandate to ignore elements of the accused design entirely, simply because those elements included the name of the defendant.
Columbia v. Seirus, 942 F.3d 1119 at 1131. Columbia and its amici argue that the court’s decision in Columbia is inconsistent with a “holding” in L.A. Gear and will wreak destruction and devastation on design patent law. Columbia and its amici are wrong on both counts.
First, the statement in L.A. Gear that pertained to “labelling” was not a holding. As the Columbia panel noted, the issue of whether the designs were sufficiently similar was not before the court in L.A. Gear. In the briefs, none of the parties involved in L.A. Gear argued that “labelling” was relevant to design patent infringement. Nothing in the decision in L.A. Gear suggests that the issue came up in oral argument. The issue of whether “labelling” was relevant to the issue of design patent infringement was simply not before the Federal Circuit in L.A. Gear. Thus, nothing the Federal Circuit said about “labelling” vis-à-vis design patents constituted a decision of any kind—let alone a holding.
It’s not clear why the L.A. Gear panel chose to include that bit of “labelling” dicta. But it is dicta.
And even if it weren’t, not all uses of logos, brand names, etc. constitute “labelling.” As the panel appreciated, these visual elements can be used decoratively. (For many good examples, consider Louis Vuitton’s textile designs.) If we were to have a rule against “labelling,” some thoughtful development and line-drawing may be required.
Second, Columbia argues (and some of its amici echo) that the decision in Columbia v. Seirus will require courts to issue judgments of noninfringement whenever a defendant “simply emblazon[s] [its] brand name or logo on another’s design.” The panel decision says no such thing. It merely says that courts don’t have to ignore any and all uses of logos.
The three traditional types of protectable designs are: (1) configuration (a/k/a shape), separate and apart from any surface ornamentation; (2) surface ornamentation, separate and apart from the underlying configuration; and (3) a combination of both. The USPTO currently interprets the second category broadly, including any and all “surface treatment.”
In Columbia v. Seirus, the claimed design was for surface ornamentation only. Despite the broad language used by the panel, the panel had no occasion to—and could issue no holding as to—all possible types of designs. This decision simply does not apply to designs that claim configuration only. If patent owners wish to avoid having brand names, logos, etc. considered as part of the infringement analysis, they are free to keep claiming configuration-only designs (such as those shown in Bison’s amicus brief). Read properly, the panel’s decision in Columbia v. Seirus, merely says that, when surface ornamentation is claimed as part of the design, a court should consider the entire surface design—even if the surface design includes logos or brand names.
That ruling is consistent, by the way, with the USPTO’s current treatment of logos, brand names, etc. in the prosecution context. Logos, brand names, etc. can—and are—claimed as (or as part of) “surface treatments.” Here are just a few examples:
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It would be odd to say that these kinds of elements count as “designs” (or parts thereof) for the purposes of patentability but must be ignored entirely when it comes to infringement. Such a rule would not only be odd, it would also significantly undermine the notice function of design patents.
Of course, we could have a system where we said that logos, brand names, etc. aren’t protectable as “designs” and should be irrelevant to both patentability and scope. But that’s not the system we have today. Perhaps it’s a conversation we should have.
The panel’s decision in Columbia v. Seirus could put some pressure on patentees to be clearer about whether they’re claiming a configuration-only or combination design. After all, the latter involves surface designs while the former does not. But that wouldn’t be a bad thing. Greater clarity in this area would promote competition and greater public notice and could be achieved with minimal cost or complication for design patent applicants.
One final note: It’s not clear why the panel in Columbia v. Seirus put such emphasis on “copying.” Copying is neither necessary nor sufficient to support a finding of design patent infringement. (For more on the contemporary test for design patent infringement, see this short piece.) The references to copying are unhelpful at best; pernicious dicta at worst.
To summarize, if the panel in Columbia v. Seirus wanted to issue a revised decision that made it clear that they’re talking about surface designs—not configuration-only designs—that would probably be helpful. And the part about “copying” could go. But the sky is not falling.
= = = = =
The following briefs have been filed in the pending en banc petition for the case:
In her recent Patently-O article, The Sky is Not Falling, Professor Burstein goes to great length to argue that the Columbia Sportswear v. Seirus is nothing to be concerned about, despite the vigorous protestation of many amicus briefs. However, it seems the esteemed professor has actually proven the reverse or at least has demonstrated a profound lack of self-awareness in terms of her conflicting prior opinions and inaccuracies.
Specifically, it wasn’t so long ago that Professor Burstein was singing a different tune. Here is what she wrote in Oct 31, 2018 on Patently-O entitled Conflating Design Patent & Trademark Infringement – Can you just not?: “Thus, factors like labeling, marketing, etc. are (at least in theory) relevant to the question of product-design trade dress infringement. But they’re not relevant to the question of design patent infringement.”Perhaps her previous arguments were just dicta too??….. So, which is it? Failing to be aware of her own prior positions demonstrates a worrisome lack of academic rigor if not demonstrating outright shoddy analysis.
There is more, Professor Burstein states: “In Columbia v. Seirus, the claimed design was for surface ornamentation only.” Wrong. The D’093 patent was not for surface ornamentation only. Rather, the patent claims a three-dimensional ornamental appearance of a heat reflective material. See Figs. 1-3 of the patent. Her entire argument crumbles with this misunderstanding of the facts of the case.
There is yet more… Professor Burstein cites USPTO policy to grant design patents with labelling as support for her argument that the Columbia Sportswear opinion isn’t problematic. Her argument totally misses the mark. Of course, patentees can CLAIM labeling. And, in such circumstances, labeling on the accused product would certainly be part of the infringement analysis. The issue here, however, is that the patentee did NOT claim labeling. Thus, labeling on the accused product should be irrelevant.
And finally… Professor Burstein argues that the portion of L.A. Gearin debate is mere dicta, not a holding. This is a weak attempt to avoid the importance of L.A.Gear. The panel in Columbia Sportswear sure didn’t think it was mere dicta; rather it referred to L.A. Gear as a “precedent from this court.” Further, this portion of L.A. Gear is regularly cited by courts without qualification as mere dicta. She is out on a limb.
I now turn briefly to the effusive thank you posted by Dennis Crouch to Prof. Burstein in appreciation for The Sky is Not Falling post. Patently-O has developed a reputation for high-quality well-reasoned and researched reporting. The fact that Prof. Burstein posted directly conflicting opinions within less than one year on the Patently-O site does not seem to meet the standards widely assumed at play with Patently-O submissions. Perhaps in that context the sky is falling.
Gosh, professor, could you at least be consistent with your earlier posts?
“Thus, factors like labeling, marketing, etc. are (at least in theory) relevant to the question of product-design trade dress infringement. But they’re not relevant to the question of design patent infringement.”
~Prof. Burstein, October 31, 2018, Conflating Design Patent & Trademark Infringement – Can you just not?, Patently-O
Maybe this was just dicta on your part….
I chalk that up to the diminishing support for a desired Ends given the other comments put on the table of discussion directly on Design Patent law.
… when you want a desired Ends, sometimes some will reach for ANY Means.
First, to correct the professor, Columbia’s design patent (D657,093) is not “for surface decoration only”. It is clear from FIGS. 1-3 of the patent that a 3D material is claimed. It is not clear whether there is any “surface ornamentation” at all. FIGS. 1 and 2 show the appearance of the product when viewed from the top, which may, for all we know, comprise a substrate over which a wavy line material has been applied (FIG. 2 upon close inspection appears to support this; I have not however reviewed the record to see if this is a fact).
Second, it is interesting to note that the professor is the only one – save for the infringer Seirus – who does not think that this is a big deal. Design patent practitioners in the forefront of design patent enforcement all agree that the panel decision is highly problematic for the future of design patents. Not surprisingly, no one filed an amicus brief in support of Seirus. I suppose (sigh) that the anti-design patent academics might weigh in if and when rehearing is granted.
There are two explanations for why we have all these academics coming out and trying to end IP.
1) Money. The universities are taking money and the professors are taking money. We know that this is a big part of it. Probably about 80 percent are taking money. We know this from some of the articles about Google funding professors to write articles based on abstracts written by Google.
2) The professors (or large corporate advocates) have some utopia ideal where there is no property. This probably accounts for 20 percent.
I hear you — but from some (admittedly old) personal experience, I would flip the numbers somewhat and place the divide somewhat differently:
35% – show me the money
60% – the ideology (lack of meritocracy)
5% – people actually trying to be objective
Seirusly?
Is there some confusion between the ‘notice function’ of Trade Dress (of Trademark law) and Design patent law?
A quick search of this site for “notice” and “design patents” only provided an odd older hit in which a different academic was lamenting a lack of quick publication (more taking Quo without giving Quid) in order to “give public notice” of what may be coming down the pike as to protected design patent items (and not in the same sense as used here of a ‘notice function’).
IF ‘the sky would not fall,”
THEN why the consistent effort to NOT simply acquiesce to the concern?
By fighting AS HARD as this Professor has done, she raises more questions than gives answers to.
To put it bluntly, the ‘better story’ here is that the addition of labels into an otherwise present design should not differentiate the designs being compared and there is NO proffered reason why such should create non-infringement.
+1
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