Copyright Cow Volume 1 Issue 3

EXCELLENCE IN INTELLECTUAL PROPERTY I P

M A T T E R S

Trademarks Copyrights Patent Litigation Trade Secrets

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L I T I G A T I O N Federal Court State Court Trial and Appeals

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Timothy B. McCormack 617 Lee Street, Seattle WA

Attorney At Law

Copyright Cow™…..

With permission from:

Defending the American Dream FOUNDER & PUBLISHER: Timothy B. McCormack CONTRIBUTORS: Timothy McCormack Eric Harrison Lucas Michaels GENERAL REQUESTS: tim@mccormacklegal.com PUBLISHING/ADVERTISEMENTS: tim@mccormacklegal.com

DISCLAIMER: This magazine is not intended to give legal advice and is not a substitute for the same; if the reader has a concern they should contact a knowledgeable attorney.

Also by Timothy McCormack:

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The Copyright Cow Blog focuses on the untold stories of the second largest export of the United States – intellectual property and technology – through the lenses of law, economics (freaky-economics) and society.

Intellectual property is comic books, cartoon characters, the “Book of Life” embodied in the Human Genome, medicine, technology, movies, websites, and, for example, the business of producing and distributing milk (a Copyright Cow favorite).

The Copyright Cow BLOG is not only for your local dairy farmer / rancher in Washington state. It is also for the CEOs of Microsoft, Boeing and Getty Images. Although Copyright Cow is a great read for any business owner, it is also good for mothers and fathers, teachers and students and anyone who wants to know more about the legal and economic forces shaping 21st century America.

The law can decide, who lives and who dies; who eats and who starves. Who gets the latest HIV medication and who does not?

Who owns the critical intellectual property that, literally, holds the key to life and death for over 50 million people?

What about the economic and social forces that help to shape the law and also result in both prosperity and misfortune?

With the help of Copyright Cow, we will all be better prepared to answer these questions, shape a better future and hopefully be a little happier! With your help, the reader, Copyright Cow can continue to help defend the American Dream!

Copyright Cow™ Defending the American Dream!

The Apple Doesn’t Fall Far From the Croc Design Patents in a New Age of Amazing Designs: Apple v. Samsung and Crocs v. International Trade Commission

Design patents have been front and center in the tech drama between Apple and Samsung in the ongoing effort to attract new customers and gain footing in the portable computer industry. In gaining that footing and applying design patents to the market, we can look to the precedent obtained by some comfortable shoes that likely helped Apple win its billion dollar judgment.

Design patents are not exclusive to tech or shoe companies. All types of companies can utilize design patents to help protect their products from copying. This article explores how: (i) design patents have become powerful assets to a company’s overall intellectual property strategy; (ii) a court of appeals decision regarding rubber shoes paved the way for Apple’s billion-dollar judgment; and (iii) Seattle businesses can strengthen their current intellectual property strategies through the use of design patents.

In August, Samsung was found liable for copying Apple’s iPhone and iPad designs. In our previous article,

Apple v Samsung Patent Infringement – What it Means for Seattle Businesses, we discussed the infringing aspects of Samsung’s product and the dividing philosophies on intellectual property protection.

The case was important because it highlights how Apple’s design patents played an important role in the $1.05 billion-dollar judgment.

What is a design patent?

A design patent is a patent granted on an ornamental design having practical utility.

Unlike a regular utility patent, a design patent protects nonfunctional parts of a product. If a company obtains a design patent, a competing product design that is substantially similar cannot be made, used, copied or imported into the United States. The competing product does not have to be an exact copy for the design patent to be infringed. The competing product only has to be substantially similar. Design patents are valid for 14 years from the date of issue and unlike utility patents there are no maintenance fees.

In Apple’s iPhone case, they could have a utility patent on the internal computer workings, but a design patent on the rounded bevel-edge iPhone casing. Apple and Crocs share a common bond because both rely heavily on industrial designs to distinguish themselves in the market. Apple used design patents to protect the iPhone’s rounded corners and bevel design. Crocs used design patents to protect the unique appearance of its rubbery shoes.

Other examples of objects that are covered by design patents include ornamental designs for s ho es , je w e lr y , fu r ni t u re, b everage cont ainers, and computer icons. This effectively prevents competitors from making designs that look confusingly similar to your company’s products and walking off with your business.

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The information contained in these pages is provided for general guidance and informational purposes only. It does not constitute legal advice nor create an attorney -client relationship. Given the changing nature of applicable laws, there may be delays or revisions to the information contained in this site. Our firm makes no representations as to the accuracy of information contained in third party websites linked hereto. If you have questions or concerns about your legal rights or the laws noted above, you should consult with an attorney.

Where the Rubber Meets the Road: Crocs™ and the use of design patents Crocs™ are the designers of the soft, plastic, waterproof shoes commonly seen on nurses, children, and people with an interest in comfortable yet fashionable shoes. Crocs holds a design patent on the clog-like appearance of its shoes, including This Holding the arrangement of the holes at the front of the Was A Game toe box.

Changer Crocs has been using its design patents for years to keep competitors out of the market. In 2010, Crocs won an appeal that allowed it to block other plastic shoes from being imported into the United States.(1) In the Crocs decision, the court held that the test for design patent infringement is whether an experienced shopper familiar with the items would have difficulty telling the two items apart. This holding was a game changer for holders of design patents and companies looking to create similar goods. The new rule hurt imitators who, in the past, could change a small feature in the item they copied without being caught red-handed for design patent infringement.

In Crocs v. International Trade Commission, Crocs sought to enforce one of its design patents by filing a complaint with the International Trade Commission (“ITC”) accusing several companies of infringing its design patent by importing similar looking

plastic clogs into the United States.

Initially, the administrative judge at the ITC provided a detailed verbal claim construction of Crocs’ design patent describing, among other features, the shape of the heel strap, the connection between the strap and base, and the location and shape of the ventilation holes.

This approach was found to be incorrect on appeal when the Federal Circuit took issue with the claim construction, arguing that it is dangerous to rely on detailed verbal claim constructions because focus on small features of the design distracted from the overall impression of the claimed ornamental features. In short, by using written versus visual claim construction the ITC lost sight of the forest for the trees.

In finding design patent infringement, the Federal Circuit emphasized the overall effect of the Crocs design and its impact on the ordinary observer, rather than focusing on a “checklist” of specific features. To illustrate its point, the Federal Circuit compared photos of Crocs’ products to its competitors’ products and showed that the shoes had the same overall ornamental appearance.

the ITC lost sight of the forest for the trees

the eye of the ordinary observer.” Also contributing to the overall effect of the design is the “visual theme of rounded curves and ellipses throughout the design.”(3) Although the accused shoes were not exact copies of the patented Crocs design, the court found that the accused products had the same overall effect on the eye, that the designs were similar enough to cause market confusion, and held that the accused products infringed Croc’s design patent.

The case reminded judges and jurors that they must decide infringement cases based on the overall effect and impact of the appearance of a similar good on an ordinary observer, not a The court identified several elements as detailed written description of the product. contributing to the “overall effect” of the Crocs This took design patent protection off the page design. In particular, the court found that the and into the 3-D world of real life. area where the footwear’s strap connects to the base constitutes a “focal point attracting

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The Apple Doesn’t Fall Far From the Croc

Figure 1. Crocs’ ’789 Design Patent (left) and a Competitors Substantially Similar Design

Through the teaching of Crocs, Apple learned that the appearance of the overall design to the consumer is the real teeth of the design patent infringement inquiry. In the Apple case, Samsung manufactured cellular phones that were rectangular with rounded edges, nearly identical to Apple’s industry leader iPhone which also has rounded edges and a streamlined design. Knowing that consumers can be confused by shoes with rectangular instead of circular holes, it is not much of a stretch that consumers would be confused by two phones of about the same size and shape both with rounded edges.

The Court agreed finding Samsung liable for copying Apple’s iPhone and iPad rounded edge designs resulting in a $1.05 billion-dollar judgment. This case is important because it highlights how Apple’s design patents played an important role in the $1.05 billiondollar judgment.

But this judgment would not have been possible using a written claim construction instead of considering how consumers would view the products as mandated by Crocs.

Walkaway Teachings for Seattle Tech and Other Companies The Apple and Crocs cases teach that Seattle companies may need to look to design patents to protect their products. It is not just the technology that’s important anymore, it’s how a company makes its technology look that needs to be protected.

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Some General Advice:

Conclusion

1. Protect Improvements! Consider filing In a world where you are only as good as your design patents as well as trademarks, most recent design and consumers identify copyrights and utility patents on product and purchase goods based on the source, a improvements or designs. Design patents are company’s brand image needs to be cost effective and may provide broad protected. One important tool in protecting protection for a company’s your brand against infringement is product. In the case of both Apple and Crocs – It is not just the tech- the design patent, without the need for fancy scientific analysis their innovative designs nology that’s imand utility patents. Design patents were protected along portant anymore, it’s make patents accessible to most with their market share! how a company companies, not only those that 2. Separate “Functional” makes its technology excel in the technology sector. As Aspects of the Design. look that needs to be discussed above, Crocs used Functional design design patents to protect the aspects cannot be protected. unique appearance of its rubbery protected by design shoes. From jewelry, to shoes, to patents. Functional aspects might include plastic casings, Seattle businesses should aspects that would affect cost of manufacture or product quality. If there are consider contacting an intellectual property design patents showing the functional nature attorney to discuss how they might improve of a design, this will be strong evidence that their intellectual property portfolio by the the patented elements are “functional.” Be addition of design patents.  careful in determining what is functional and what is not functional in designs.

3. Make It Look Different. If a company is going to sell a competing product design but can also give its design a “different appearance while retaining the benefit of the design” they should do so, just to be safe.

A B O U T C O P Y R I G H T C O W ™ Copyright Cow™ is the Blog and alter-ego-Blogger name for Timothy B. McCormack, attorney at law, a well established and successful Seattle-based intellectual property, technology and business lawyer.

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