By Lawrence R. Robins, partner, and Katherine Staba, associate
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Beaming with pride at the recent manufacture of your latest, brilliant design for an armchair, you sit down to flip through some catalogs. There—among the sectional sofas and table lamps—is the armchair on which you just spent nine months agonizing over every angle and detail. However, it’s not your name attributed to the design, it is the name of an infamous knock-off artist and your chair, the one you are about to launch in the market, is on clearance. What are your options?
Background
In addition to pursuing intellectual property protection for furniture designs via copyright law, furniture designers should also consider design patent protection. Below, we discuss the reinvigorated enforcement potential of design patents in the furniture industry. To facilitate this discussion, we focus on a hypothetical design, titled “FH Design.” FH Design is a bedroom dresser with an attached mirror, modeled in the Epoch style with ornamental scrolls encircling the mirror, entwining leaf patterns edging the top of the dresser, and drawer handles etched with floral motifs. The dresser section itself is unconventionally short, rising only three feet from the ground. The entirety of the dresser and mirror is painted with a forest green lacquer.
Design Patent Protection: What Does It Protect?
Design patents protect “new, original, and ornamental” aspects of an article for manufacture, and can either cover the overall appearance of the article, or certain design elements. Regardless of whether a furniture designer intends to protect the overall appearance or a single element, design patents only protect non-functional aspects of an article.
Functional elements are generally those that are essential to the use or purpose of the article. In the case of the FH Design, although the dresser itself is functional, the overall utilitarian purpose of the dresser does not detract from its non-functional design elements such as the ornamental scrolls encircling the mirror.
Recent Developments in Design Patent Law Relating to Furniture Design
A design patent grants to the owner the right to exclude others from manufacturing, using, selling, or importing an article embodying the protected design. Until recently, design patent owners often encountered obstacles in asserting infringement claims. Under the former infringement standard, a patent owner needed to prove (1) that the accused design was substantially similar to the patented design from the point of view of an ordinary observer (the “ordinary observer” test), and (2) that the accused design contained the same “points of novelty” that distinguished the patent design from the prior art (the “point of novelty” test). The point of novelty test caused numerous problems, the most significant was that the selection of the point of novelty determined the outcome of the infringement questions and there was no set protocol for determining what feature should be selected as the point of novelty. The alleged infringer picked a feature found in the claimed design that was not found in the prior art or the accused design. The patent owner picked a point of novelty not found in the prior art but found in both the patented design and the alleged infringing design. Thus, the outcome of the infringement question depended on whose point of novelty was selected. This uncertainty discouraged designers from using U.S. design patents to protect product designs.
In 2008, the U.S. Court of Appeals for the Federal Circuit, the court with exclusive appellate jurisdiction over patent cases, decided Egyptian Goddess v. Swisa, and alleviated a significant enforcement barrier faced by design patent holders by changing this infringement standard. The court eliminated the point of novelty test and determined that a modified “ordinary observer” test is the sole test for design patent infringement. Under the new test, the court essentially asks, “would a person who buys and uses this furniture, and who is familiar with this type of furniture, confuse the accused design with the patented design?” Theoretically, minor differences between the patented and accused designs would not bar a finding of infringement under this standard if the patented design departed significantly from previous designs. If, however, the patented design was very similar to previous designs, minor differences (depending on their visual significance) may prevent a finding of infringement.
The modified ordinary observer test reduces the burden of patent holders to prove design patent infringement, simplifying the path for designers to effectively enforce their design patents. Yet, a subsequent Texas federal district court decision suggests that the path to success, while more straight-forward, could still be challenging. Although the Texas decision involved lighting fixtures, it still provides guidance as to what design differences or similarities an ordinary observer in the furniture industry would perceive.
In that case, the patent holder owned three design patents for its lighting fixture, separately covering an exterior lamp housing unit, a lamp support arm, and an interior light globe. Under the modified ordinary observer test, the court compared each patented design with the alleged infringer’s comparable piece. In reaching its conclusion that none of the defendant’s designs infringed the patented designs, the court found that the ordinary observer, a retail purchaser, viewing the patented and defendant’s light globes, would be able to perceive differences in the curvatures of the globes as well as the distribution and placement of ornamentation. In comparing the candy-cane shaped lamp support arms, the court held than an ordinary observer would readily perceive the fact that the defendant’s design had an additional upwardly curved hook in the center and its decorative scrolls were more loosely bound than the patented design. It appears from this post-Egyptian Goddess decision that, while the infringement test was streamlined, our “ordinary observer” may have a discerning eye capable of meticulous distinctions.
Design Patent Concepts Important to the Design Process
If intellectual property protection is a goal, the designer should consider whether design elements incorporated into a piece are separately protectable, and also whether the overall design is protectable. As stated above, design patents protect “new, original, and ornamental” elements. To determine what does not qualify as ornamental, a typical test asks whether the design’s appearance is primarily dictated by functional considerations. For example, in the case of the FH Design, the shape of the dresser as abnormally short is not solely for functional purposes, and thus the design would be protectable. Only when the shape of the design is entirely dictated by function would the design be unpatentable on the basis of it not being ornamental.
Furniture designers should also consider the impact of prior art when determining what design elements to incorporate into a piece. Prior art includes similar designs already in the public domain or subject to another’s design patent, either of which could result in the denial of patent protection. If a patented design merely brings together old or common design elements without arranging them in an innovative way, it is likely that a third party could also combine these elements without infringing the patent. For example, in the Texas district court decision, the court found that the prior art revealed designs with similar general silhouettes, similarly positioned leaf designs, and similar ridged or scalloped edges. The court used these similarities between the patented design and the prior art to show that an ordinary observer would not confuse the accused design with the patented design.
Design Patents and Damages
The ability to stop a third party from infringing the furniture design is entirely dependent on a designer’s forethought in patenting it because infringement or copying cannot be stopped until after the patent has been examined, allowed and granted. That can take from six months to two years from the time a design patent application is filed. There is a process for expediting the grant of a design patent and, with planning, one can issue in as little as three months. An issued design patent allows the owner to assert design rights for fourteen years after it is granted. Once the patent is granted, there are no fees needed to keep it in force.
Potential recoveries in infringement lawsuits include recovery of lost profits, the infringer’s total profits from the sale of the product embodying the infringing design, or a reasonable royalty. With this last avenue of recovery, enhanced damages are available permitting trebled damages, although such awards are rare. Trebled damages may be awarded where an infringer acted in wanton disregard of the designer’s patent rights or, alternatively, did not have reasonable belief that he could use the design. This is termed “willful infringement.”
A patent holder may choose not to seek its lost profits because, to recover such lost profits, a patent owner must generally establish: (1) demand for the patented product; (2) absence of acceptable non-infringing substitutes; (3) the patent holder’s manufacturing and marketing capability to exploit the demand; and (4) the amount of the profit the patent holder would have made.
Recovery of an infringer’s total profits, however, does not require the rigorous elements of lost profits. The design patent holder need only establish the infringing party’s gross sales figures, from which the infringer is then able to deduct any proven variable costs. In one case, a North Carolina federal district court accepted a suggested profit-based calculation that extracted the difference between what the infringer paid its manufacturer in China per cabinet, and what a hypothetical customer would pay to purchase the cabinet directly from the Chinese manufacturer, awarding $23,200 to the patent holder.
The most unique form of recovery involves claiming a reasonable royalty for the infringer’s sale of the patented design. A patent holder may suggest a reasonable royalty, but courts are free to independently determine a figure. Courts look at a variety of factors, but all essentially pose and resolve a hypothetical royalty negotiation between the parties.
Where it is not possible to determine the economic benefit of an individual patented component within a larger assembly of component parts, a design patent holder can seek the infringer’s profit for the sale of the entire assembly. Such damages cannot be multiplied for “willful infringement.”
International Protection
If you expect to sell your designs outside the United States, or if you are concerned about knock-offs originating in other countries, consideration should be given to international registration of the design. Unlike the design patent system in the United States, most foreign countries do not examine design patent applications and grant design patents, but merely register the designs for a fee. There are three major differences between foreign registrations and U.S. design patents: First, most registered designs must be copied to infringe; second, registrations require the payment of fees to keep them in force; and finally, registrations can be enforced upon filing.
Practical Tips
If obtaining design patent protection is a goal, keep in mind the following:
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Avoid using combinations of known design elements in predictable arrangements;
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Incorporate new, ornamental elements into your designs;
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Consider patenting unique elements or portions of your designs as well as the combinations of such elements;
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While it would be rare for a furniture design to have only functional features, avoid describing your furniture designs as “functional”;
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Avoid copying or adapting from the prior art—the more your design departs from the prior art, the broader your design patent becomes;
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Establish a practice of monitoring for potentially infringing designs; and
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Consider whether international design registrations could help prevent the manufacture, sale, and export to the United States of potentially infringing designs.
See a previously posted article by Lawrence Robins and Katherine Staba "Copyright Protection in the Furniture Industry"
About The Authors:
Lawrence R. Robins, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP : Larry Robins represents clients on a variety of intellectual property matters, with a particular focus on the litigation of trademark, copyright, and related disputes; strategic trademark portfolio development, management, and protection; and counseling on the use and protection of copyrighted works. His areas of industry and technical experience include information technology; search engines; e- commerce; pharmaceuticals; medical devices; consumer goods; financial services; restaurants and clubs; furniture and design; food and beverage; and sports and sporting goods.
In his copyright practice, Mr. Robins assists clients in designing and implementing policies both to protect their own copyrightable works and to ensure the appropriate use of the works of others, including the use of open source software.
Mr. Robins is an experienced copyright litigator and also assists clients in enforcing their rights via the United States Immigration and Customs Service. In the trademark area, he works proactively with clients to develop and implement trademark management programs designed to maximize the return on investment in both marketing and legal expenditures relating to brand management. He represents clients in trademark/unfair competition disputes in the federal and state courts, before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office and via alternative avenues of dispute resolution such as arbitration under the ICANN Uniform Dispute Resolution Policy.
In his transactional practice, Mr. Robins prepares and negotiates agreements involving computer software, hardware, e-commerce, and other technology. The transactions have included license, distribution, development, OEM, VAR, and joint venture agreements. For more than 15 years, Mr. Robins has been involved in internet-related transactions including co-branding; joint site development; web hosting and site development; and content licensing. For more information contact
larry.robins@finnegan.com or call 617.452.1600.
Katherine Staba, Associate, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP : Katherine Staba’s practice focuses on trademark and unfair competition litigation as well as domestic trademark prosecution. Ms. Staba’s litigation practice includes both federal court cases, and opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
Ms. Staba advises clients on the selection, adoption, maintenance, and enforcement of their marks, and renders opinions on the availability and proper use of trademarks. In addition, she prepares, files, and prosecutes U.S. trademark applications.
Call her direct at 617.452.1641 or email katherine.staba@finnegan.com.