decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


Contact PJ

Click here to email PJ. You won't find me on Facebook Donate Paypal


User Functions

Username:

Password:

Don't have an account yet? Sign up as a New User

No Legal Advice

The information on Groklaw is not intended to constitute legal advice. While Mark is a lawyer and he has asked other lawyers and law students to contribute articles, all of these articles are offered to help educate, not to provide specific legal advice. They are not your lawyers.

Here's Groklaw's comments policy.


What's New

STORIES
No new stories

COMMENTS last 48 hrs
No new comments


Sponsors

Hosting:
hosted by ibiblio

On servers donated to ibiblio by AMD.

Webmaster
A Very Short Primer on Design Patents and Trade Dress (Apple v. Samsung) by Michael Risch
Tuesday, August 14 2012 @ 11:16 AM EDT

A Very Short Primer on Design Patents and Trade Dress
by Michael Risch
Associate Professor of Law
Villanova University School of Law

Here is a very short rule-of-thumb primer for Groklaw readers that might focus some of the areas to look for as you follow the Apple v. Samsung litigation:

1. Design Patents: These cover non-functional inventions in design. Unlike copyrights, they are enforceable against third parties even if the third party developed the infringing design independently. As such, you must have novelty and non-obviousness in the design.

The test for infringement is the "ordinary observer" test, but where the ordinary observer is aware of the prior art. However, you have to look at the design as a whole, and not the "points of novelty." Here is a good article on this.

So, here's what to look for. First, are the patents valid in light of all the prior art? If so, then how narrowly do we consider the patent as compared to the infringing device? It need not be identical, but to the extent the device looks like the prior art and not the patent, then that will be a defense.

Note also, that you must have non-functionality (which I will discuss below as well). This is why there were questions about the shape of icons, etc., because Apple desperately wants to convince the jury that square icons (and a dock of 4) has no basis in functionality. It's one reason why the iPad has only 4 icons across the bottom despite the ridiculous waste of empty space on a big tablet.

2. Trade Dress. Trade Dress is not really a "subset" of trademark law. It is trademark law. Lanham Act Section 43 allows protection against any use of a mark or device that might confuse as to origin of goods or sponsorship. Trade dress is that device, so if the trade dress causes confusion, then it will generally be actionable. But the story doesn't end there. You must have distinctiveness.

For product design, distinctiveness means that users generally think of one product and one product only when they see the design. Some marks can be inherently distinctive -- see, e.g. Xerox, which was a made-up term. You don't think of anything else. You also don't have to spend a lot of time proving customers think of one product. However, to be distinctive in product design, the distinctiveness must be earned -- it cannot be distinctive from the get-go. What this means for Apple is that even though the product debuted in 2006 or whenever, it had to wait until it could show that customers thought of *Apple* when they saw the design. That might have taken some real advertising and market penetration. Because Apple tends to wait until just prior to release to announce products, it doesn't get a lot of pre-release advertising to support it.

Furthermore, distinctiveness must not be functionally based. One way we think of functionality is genericness. That is, I can't sell an automobile with the name "CAR." This is because car serves a function -- it is the name of the general products, and thus cannot serve a specific purpose. Note that I am simplifying a tad here for the purpose of analogy -- most people don't think of genericness as functionality, but I think it is helpful, because it helps situate trade dress in with the rest of trademark law.

So, when we get to product design, functionality becomes critical, because -- you know -- it's the product. So, what the courts do is look at whether something serves a function. In the past, courts have favored plaintiffs, and most academics think this area is a mess. Here's a good background and a summary of cases.

There are two kinds of functionality. First is operable functionality -- how the product works. Second is aesthetic functionality -- customer demand for aesthetic design features that create the need for similar product design. Think about Owens Corning pink fiberglass. The color of the product design has no basis in the product's function. Because it is not visible in the final home, there is no aesthetic functionality. Compare this with John Deere green. Because the company has such a strong mark for tractors, farmers will want their accessories to match. As such, there is a good argument that John Deere cannot own green for tractor accessories, because aesthetic functionality will demand otherwise. However, as I note above, the courts are not great at consistently applying this defense with theoretical precision.

Summing Up: What to Look For. Here's what to look for, then. To what extent does the product design get driven by actual function? Does the dock provide function that you can't protect, even if you were the first? For that matter, is it even distinctive? When you see 4 icons across, do you think of Apple only? Or is that a "generic" or "functional" feature? If Android implemented the four icons right away, then that aspect might well have never been associated exclusively with Apple, and secondary meaning never formed. That's why Apple is relying on its design patent for that as well, because the patent doesn't require secondary meaning.

Similar is the shape of the design. Was the iPad shape distinctive to Apple at release? If not, how long after? A perusal of the Samsung opening argument looks like Samsung wants to show that iPad never really garnered secondary meaning. If everyone copied it right away, it may never have obtained distinctiveness in consumer minds. Further, we have to look at operable functionality -- does the fact that touch screens got better and cheaper mean that iPad looks the way it does for functional purposes? Apple will surely argue that the technology got better because Apple's new design forced the technology to get better, but I'm not sure that's enough. Similar is the rectangle shape (screens have always been rectangle) and thin profile (customers always want thinner, don't they?). There are also reasons to have curved corners (aesthetically, and also actual function -- like not poking or breaking on impact). Or maybe not. On the other hand, the circular button is probably protectable -- it is distinctive, and a) functionality does not dictate round, and b) one button is really less functional than multiple buttons. This is the type of argument and testimony to look for as the trial goes on.

Confusion. A final issue is how to think about confusion. There is likely no confusion at the time of purchase. So, the real question is whether there is post-sale confusion and whether that confusion is the kind of thing that causes any damage. This is an area that has garnered a lot of academic attention, and is still debated.

In sum, Samsung's key pivots:

1. The design is not distinctive to Apple -- customers don't associate features only with Apple

2. The design is functional -- operation and/or aesthetic demands drive the design

3. There is no confusion in the consumer market.

Regards,

Michael Risch
Associate Professor of Law
Villanova University School of Law


  


A Very Short Primer on Design Patents and Trade Dress (Apple v. Samsung) by Michael Risch | 201 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Not the off topic thread Nokia selling a feature phone as a low priced smart phone
Authored by: Anonymous on Tuesday, August 14 2012 @ 11:33 AM EDT
About 85 Us dollars Big cpu old phone shell lots of games and freebes. Cli ck for a Desperate ploy to stay alive

[ Reply to This | # ]

My sig says it
Authored by: Anonymous on Tuesday, August 14 2012 @ 11:36 AM EDT
Thanks 10**6 for the education.

[ Reply to This | # ]

A Very Short Primer on Design Patents and Trade Dress (Apple v. Samsung) by Michael Risch
Authored by: PJ on Tuesday, August 14 2012 @ 11:47 AM EDT
Guys, Michael will be checking in from time to
time, so if you have questions, this is your
opportunity. I don't know a lot about design
patents, so I'm asking him too.

[ Reply to This | # ]

Damages
Authored by: Anonymous on Tuesday, August 14 2012 @ 11:53 AM EDT
Just a thought I had earlier. Apple is claiming damages for the 22.7 million
phones sold that look similar to the iPhone and claiming that they want $24
dollars per device.

But I bought 2 of those phones (Galaxy S / Sprint) and I can tell you that at
the time of purchase the major reason I bought them was for Android and the
slideout keyboard, both features that the iPhone does not provide. Shouldn't I
be able to request that my two phones be removed from consideration because I
knowingly bought my phones for other reasons that the patients Apple is claiming
to own?

Honest question, I'm curious.

[ Reply to This | # ]

Corrections thread
Authored by: nsomos on Tuesday, August 14 2012 @ 12:12 PM EDT
Please post any corrections in this thread.
A summary in the title may be helpful.

[ Reply to This | # ]

A Quibble Regarding Ridiculous
Authored by: Anonymous on Tuesday, August 14 2012 @ 12:32 PM EDT

Thank you for the explanation. There was one editorial comment, or more specifically one prepositional phrase, that should have been lost before the final draft. I quote: "It's one reason why the iPad has only 4 icons across the bottom despite the ridiculous waste of empty space on a big tablet."

I have had some experience with graphic design — though I don't want to pretend that I'm an expert — and it seems to me that large buttons with copious negative space was a design choice driven by aesthetics and some functionity, as bigger buttons widely spaced minimize errant launches. I can't deny that there are marketing reasons for four basic Apple-written apps being given a primary spot on all launchpad pages.

You, of course, are free to dismiss Apple's design and business choices, but today's article was about law and I found the quoted line jarringly off- topic. Of course, I may be easily dismissed as a satisfied Apple customer who has no problem with the app icon layout. I suppose one may call me a fanboy or freedom-hater to hasten my dismissal.

Still, if strengthening one's ability to enforce legal rights is one reason to do something a certain way, then is the extra negative space truly ridiculous? Is the tiny headstock of the Fender Telecaster goofy? How about the 1890s flourish on the Coca-Cola label, is it hopelessly old-fashioned? From a personal point of view, I could answer yes to the latter two questions, but we all understand why they add to product and brand differentiation.

[ Reply to This | # ]

News pick thread
Authored by: kuroshima on Tuesday, August 14 2012 @ 01:02 PM EDT
Please include a clickable link to the news pick, so it is
visible after it scrolls down from the front page newspicks

Do it by posting in HTML, and writing it like this: <a
href="http://some.domain/and/maybe/something/else"> link
title </a>

Put spaces before and after the text in the link to try and
avoid the bug in geeklog that adds extraneous spaces in long
links

[ Reply to This | # ]

A Very Short Primer on Design Patents and Trade Dress (Apple v. Samsung) by Michael Risch
Authored by: Anonymous on Tuesday, August 14 2012 @ 01:19 PM EDT
Michael,
Even if Apple insists that the 4 icons is a design decision,
couldn't Samsung claim that it is functional based on average
finger size? For the wider phones, more icons can be accommodated.
Case in point, the new Galaxy S3 defaults to 5 buttons at the
bottom, and the Galaxy Note has 5 rows across the board.
Also, the tablets have 8 or 10 rows of icons.

[ Reply to This | # ]

Post-sale confusion? Yes. Damage? To the contrary!
Authored by: BJ on Tuesday, August 14 2012 @ 01:23 PM EDT
I own a Samsung Galaxy 10.1. When using it in a public space,
I hear: "he has an iPad", "...but I'm sure you can find that on
your iPad", "look it up on your iPad", and so on.

From the people seeing me use my device, there must be a
certain percentage potentional buyers of a 'tablet' (generic
term here). How many, having seen mine, are caused by it to go
to an Apple Store?

Oh -- I always feel urged to explain "no -- this a Google Samsung
tablet." Guess why.

bjd


[ Reply to This | # ]

Etch A Sketch went from sharp to round corners
Authored by: Anonymous on Tuesday, August 14 2012 @ 01:29 PM EDT
The Etch-A-Sketch tablet went from sharp to round corners over the decades:
http://en.wikipedia.org/wiki/Etch_A_Sketch

Why? Probably because little children used them. Hence it was a functionality
aspect - safety. The same with Apple, a phone initially intended for iMac users
which in all likelihood could not be trusted with sharp objects; hence a safety
aspect here too.

Still, other phone makers had rounded corners long before the iPhone; think
Gordon Gecko's phone from 1987
(http://www.slate.com/blogs/browbeat/2010/09/23/gordon_gekko_s_cell_phone.html).


Yet, how rounded is deemed rounded? Almost all square objects have rounded
corners if looked at an appropriate scale; e.g. a Marlboro cigarette pack
(http://en.wikipedia.org/wiki/Cigarette_pack#Hard_pack_.26_soft_pack).

[ Reply to This | # ]

A Very Short Primer on Design Patents and Trade Dress (Apple v. Samsung) by Michael Risch
Authored by: Anonymous on Tuesday, August 14 2012 @ 02:43 PM EDT
Maybe Apple could sue this girl:-

http://www.allposters.com/-sp/Gabrielle-Ray-Actress-Doing-Her-
Sums-on-a-School-Slate-Posters_i3998951_.htm?AID=1023772566

Oh hang on - she probably died about 50 years ago. Looks a lot
like an slate or tablet to me - just the ipad is an electronic
version of it. Would this have an impact of a design patent or
trade dress?

[ Reply to This | # ]

Will Samsung Be Bringing Up this Prior Art?
Authored by: Anonymous on Tuesday, August 14 2012 @ 03:59 PM EDT
"Maybe you didn’t know, but this technology was invented in 1982 at
the University of Toronto and started as a finger pressure multi-touch
screen, which became capable to manipulate images later in 1984, same
year when Microsoft became interested in the field.In 1991, a paper
written by Pierre Wellner described a multi-touch Digital Desk with
support for multi-finger and pinching motions, technology that was
adopted later by Apple for its popular iPhone."

Could this prior art could end up invaliding all these patents?
Apple's, Microsoft's Surface and this witness Samsung Brought in from
Dimond Touch. Seems like very OLD TECHNOLOGY.... if it goes back to
1982!

[ Reply to This | # ]

Constitutional Basis for Design Patents
Authored by: RFD on Tuesday, August 14 2012 @ 04:46 PM EDT
Among the powers granted to congress by Atricle I, Section 8 of the US
Constitution is the power:

"To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries."

Is the initial phrase a throwaway phrase, or was it intended to limit congress's
power to grant monopolies? How can design patents, which have no utility,
"promote the Progress of Science and useful Arts"?



---
Eschew obfuscation assiduously.

[ Reply to This | # ]

A more Detailed Look at Design Patents
Authored by: Anonymous on Tuesday, August 14 2012 @ 05:20 PM EDT
in Apple vs Samsung, by Christopher V. Carani (McAndrews, Held & Malloy, Chicago)
posted under a newspick two stories back

paidContent Dec 2, 2011

[ Reply to This | # ]

How can there be confusion?
Authored by: Anonymous on Tuesday, August 14 2012 @ 05:28 PM EDT
I don't see how Apple can say that there is confusion between
their product and any other.

Visit any Best Buy and there is an Apple section and everyone
else.

It is like saying all cars are the same. I bought a Ford but
I really meant to buy a Toyota. Ford tricked me! Please.

Jamie Royer

[ Reply to This | # ]

Off Topic threads
Authored by: bugstomper on Tuesday, August 14 2012 @ 07:28 PM EDT
Please stay off topic in these threads. Use HTML Formatted mode to make your
links nice and clickable.

[ Reply to This | # ]

Comes transcripts here
Authored by: bugstomper on Tuesday, August 14 2012 @ 07:30 PM EDT
Please post your transcriptions of Comes exhibits here with full HTML markup but posted in Plain Old Text mode so PJ can copy and paste it

See the Comes Tracking Page to find and claim PDF files that still need to be transcribed.

[ Reply to This | # ]

A Very Short Primer on Design Patents and Trade Dress (Apple v. Samsung) by Michael Risch
Authored by: Anonymous on Wednesday, August 15 2012 @ 12:17 AM EDT
iPhone was launched in 2007. Samsung F700 and LG Prada were
developed in 2006. Infact, LG Prada was launched before the
iPhone. Remarkably, all these companies working separately
came up with similar designs.

[ Reply to This | # ]

What goes around comes around
Authored by: IMANAL_TOO on Wednesday, August 15 2012 @ 01:59 AM EDT
http://www.epiphanysearch.co.uk/blog/if-you-wait-long-enough-everything-comes-ba
ck-into-fashion/

"Quantum Link was a dialup service for the Commodore 64, created in 1985,
with a host of features we would all recognise today. Electronic mail, online
chat, instant messaging, file sharing and online clubs which would eventually
evolve into the UseNet service. Stocks, weather, quizzes, online help forums,
online shopping (yes, even an auction site), airline flights reservation and car
rental."


The similarity with the iPhone GUI and Windows 8 is stunning, or?


---
______
IMANAL


.

[ Reply to This | # ]

'I can't sell an automobile with the name "CAR."'
Authored by: Anonymous on Wednesday, August 15 2012 @ 09:36 AM EDT
Would it be more precise (and law is about precision) to say that you can sell
it, but you can't (successfully) claim it as a trademark?

[ Reply to This | # ]

ridiculous waste of empty space
Authored by: artp on Wednesday, August 15 2012 @ 10:28 AM EDT
Re: 4 icons across the bottom of the tablet

Way back when, I was the volunteer editor of a magazine,
about 15,000 circulation.

I had the privilege of getting a professional graphics
design review of my efforts.

One of the major comments was: Leave some white space. White
space is a major component of an interesting graphics
design. Used properly, the reader's eye is drawn into the
page, helping them continue to read the article. Without it,
the reader's eye is not drawn into the page, it is drawn
away from the page. It drifts off into never-never land.

Given Apple's predilection for aesthetic designs, I would
find it hard to believe that they did not APPLY this basic
principle, and not INVENT this basic principle. It is not
deserving of consideration for a design patent, especially
one that is being used to block a product that is
technically better. Apple's motives are suspect here.

While the law might be clear on design patents, the law
needs to be applied in light of prior developments.
Knowledge of the law without knowledge of the field leads to
some hare-brained rulings that have people well-versed in
the field shaking their heads.

---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Rounded corners
Authored by: artp on Wednesday, August 15 2012 @ 11:56 AM EDT

Michael says:

There are also reasons to have curved corners (aesthetically, and also actual function -- like not poking or breaking on impact). Or maybe not. On the other hand, the circular button is probably protectable -- it is distinctive, and a) functionality does not dictate round, and b) one button is really less functional than multiple buttons.

Rounded corners are a must. You can approximate a square corner, but in all cases, there is a radius. Even on a machined exterior corner that is cut in two directions, there will be tearing at the corner on the second cut. That tearing will be eliminated by sanding, tumbling, sand- blasting or similar process that will produce - a rounded corner!

Any manufacturing process which molds material will produce a rounded corner. Stamping, drawing, casting, diecasting, extrusion, injection molding, rotational molding -- you name it, it has a rounded corner. The question is - how round?

Most processes require tapered surfaces and round corners to facilitate release from the forming operation tools. A straight surface produces too much friction when the part is released. Corners have an additional consideration - material flow follows curved paths. You just can't make a right angle turn in material flow without severe costs, financially and functionally. Part failure and even die/mold failure sometimes results.

When the law differentiates between rounded and square corners, they are imposing an artificial definition that cannot be defined in practical terms. Where are the limits? There cannot be a definition without defining the limits of the definition. The law does not exist independently of the physical universe.

Groklaw was conceived as a multidisciplinary effort at understanding the law. I have learned a lot about how the law works in my time here. Perhaps it is time for the law to learn how things work outside the artificial atmosphere of a courtroom. It's time to get your hands dirty, Michael!

Let's look at what the industry says about rounded corners from a random Google search.

Injection Molding Part Design, San Francisco State University, under Fillets:

The flow patterns of the plastic melt require generous fillets at all corners on injection molded parts. A fillet is formed by rounding off all sharp corners. Sharp corners, particularly inside corners, cause severe compacting of the plastics molecule. This compacting produces molded-in stress. Injection pressure forces the plastic through the thin walled sections of a part. When the plastic comes into contact with a square corner, pressure builds up to the maximum until it is forced to move at right angles with the original flow. ... This level of acute stress causes increased wear on the mold and results in premature failure of the plastic part.

To combat this, inside corners should have a radius equal to half of the wall's thickness, at least 0.020 inch are is considered minimum thickness while 0.050 provides a stress- free corner for most parts.

An article from an injection molding company called ProtoMold

Much of today’s design aesthetic seems to be about swooping curves. Nevertheless, sometimes you just need a nice square corner. When it comes to molded plastic parts, inside corners are easy. The inside corner of a part is formed by the outside corner of a mold, and the mold is formed by machine tools, which are great at cutting straight lines. Where two of those lines cross, you get an outside corner that is as sharp as the material will allow. If you want a sharp outside corner on a part, however, that’s another matter.

How about sand casting?:

Sand Casting Design Considerations

1. Use rounded corners.

OK, let's look at metal stamping:

Arvalda Corp Precision Metal Components

Corner radii – Corner radii should be at least 1/2 times the material thickness. Tighter corner radii can be achieved but often come at the expense of a larger burr as well as additional tool maintenance or shorter tool life.

---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley sinks ?

[ Reply to This | # ]

So why have both?
Authored by: Anonymous on Thursday, August 16 2012 @ 08:01 PM EDT
I am courious. What is the thinking behind having both design patents and
trademarks?

They both do that same job - prevent confusion in the market place. They both
use the same mechanism - non function components. So why have both?

PS, do Design Patents have the same limited lifespan as a normal patent?

[ Reply to This | # ]

  • So why have both? - Authored by: Anonymous on Thursday, August 16 2012 @ 08:09 PM EDT
Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )