Protecting Designs without Design Patents ABSTRACT

Protecting Designs without Design Patents1

James J. Aquilina2

ABSTRACT

Design patents are the form of intellectual property protection best suited to cover useful products embodying ornamental or artistic characteristics. In some scenarios, however—typically owing to the timing of public disclosure of a design prior to when a patent application is filed—design patents may not be an available option. Moreover, design patents provide a fairly short term of protection, currently 15 years from issuance in the United States.3

Trademark and copyright laws—although not generally as well-suited to protect designs as industrial design law—in some scenarios can provide very meaningful and much longer terms of protection for designs than a design patent would be able. Moreover, trademark and copyright laws do not impose the same rigid "file now or forever lose it" timelines as does design patent law.

In this Article, I will discuss the legal framework and options for protection of designs via trademark and copyright mechanisms when design patents are unavailable or, better yet, in combination with the use of design patents.

I. Protecting Designs with Trademarks: The Trade Dress Functionality Hurdle

In general terms, proposed trade dress in the United States is functional, and therefore cannot function as a trademark, if it fails either of two tests. The first test is relevant to the protection overlap between trademark law and utility patent law, and the second test is relevant to the protection overlap between trademark law and both design patent and copyright law.

1 © 2019-2021 James J. Aquilina. All rights reserved. 2 Mr. Aquilina is Of Counsel to the firm of Quarles & Brady LLP in

Washington, DC, where his practice includes all aspects of intellectual property law, with emphasis on U.S. design law. He is the immediate past Chair of the Industrial Designs Committee of the American Intellectual Property Law Association and a member of the Design Rights Committee of the International Trademark Association. Any opinions expressed in this Article are his own.

3 In most countries, the maximum term of protection for industrial design patents and registrations is between 10-25 years.

Aquilina Protecting Designs without Design Patents 2

In the first functionality test—also known as the “utilitarian

functionality” doctrine—a product feature is functional if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article”.4 A feature is deemed to be “essential to the use or purpose of the article” when it is “the reason the device works,” as opposed to “an arbitrary flourish in the configuration of [the] product.”5 Even a showing of acquired distinctiveness will fail to save a proposed mark that is functional as a whole.6 For example, in the TrafFix case, the Supreme Court held that the dual-spring arrangement shown below for keeping a temporary road sign upright during windy conditions could not serve as a source identifier because it was “the reason the device works,” and “not an arbitrary flourish in the configuration of [the] product.”7

In making a determination of whether asserted trade dress is functional, courts also consider the following four non-exclusive Morton-Norwich categories of evidence, named for the case in which they were first articulated:

4 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161,

1163-64 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982)).

5 TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001) (quoting Qualitex, 514 U.S. at 165).

6 15 U.S.C. §1052(e)(5) and 15 U.S.C. §1052(f). 7 TrafFix, 532 U.S. at 34.

3 Protecting Designs without Design Patents Aquilina

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;

(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;

(3) the availability to competitors of functionally equivalent designs; and

(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. 8

The Supreme Court has made it clear that if evidence such as

statements in a related utility patent or the applicant’s own promotional materials establishes that the design is functional, further inquiry into the existence of available alternative designs or whether there is a competitive necessity for the feature is unnecessary.9 Accordingly, there is no requirement that all of the categories of evidence identified in Morton-Norwich appear in every case in order to find that asserted trade dress is functional.10

The purpose of the utilitarian functionality doctrine is to

prevent trademark law from inhibiting legitimate competition in the marketplace by allowing the producer of a product to control a useful product feature in perpetuity. This doctrine cements that utility patent law—which Constitutionally time-limits the exclusive control of a useful product feature—is the exclusive IP regime for protecting de jure functional product configurations or features.11

8 In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16

(CCPA 1982). 9 TrafFix, 532 U.S. at 33 (“Where the design is functional under the Inwood

formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.”); In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) (“[S]ince the patent and advertising evidence established functionality, the Board did not need to analyze whether alternative designs exist.”).

10 In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015). 11 Although the USPTO no longer uses the terms “de jure” and “de facto” in

assessing whether a proposed product configuration mark is functional, see TMEP § 1202.02(a)(iii)(B), an understanding of the differences between these two concepts remains critical. De facto functionality simply means that a product or product feature has a function, and a finding of de facto functionality does not necessarily defeat registrability. In re Morton-Norwich Prods., supra. De jure functionality, on the other hand, means that the product has a particular shape “because it works better in this shape,” and a finding of de jure functionality will defeat registrability. In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). In its Qualitex, TrafFix, and Walmart (infra) opinions, the Supreme Court did not use the de facto/de jure language.


However, where it is possible to separate a non-functional

aspect of a product from its functional elements, said non-functional aspect may be protectable under trade dress law. For example, in the Qualitex case, the green/gold color of the dry-cleaning press pad show below was held to be protectable trade dress—despite that the shape and composition of the dry-cleaning pad were not protectable as failing the utilitarian functionality doctrine—since the selected green/gold color served no functional purpose.

In the second functionality test—also known as the “aesthetic functionality” doctrine—a product feature is considered functional if denying a competitor access to that feature would put that competitor at a “significant non-reputational-related disadvantage,”12 i.e., that there is competitive necessity to include that feature. Although inconsistently applied by courts, the aesthetic functionality doctrine generally holds that at some point the primary function of a design feature becomes aesthetics rather than source-identification and precludes trade dress protection when this condition has been met. Said another way, the threshold for application of the aesthetic functionality doctrine is whether the product configuration is “primarily aesthetic”—rather than source-identifying—before the aesthetic functionality doctrine will entirely preclude trade dress protection.

The U.S. Circuit Courts of Appeals disagree on the applicability of the aesthetic functionality doctrine. The Second, Sixth, and Seventh Circuits, for instance, have long recognized the existence of the doctrine.13 Other Circuits (such as the Third and

12 Qualitex, 514 U.S. at 165 (citing Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 850, n.10 (1982)). 13 See, e.g., Christian Louboutin S.A. v. Yves St. Laurent Am. Holding, Inc.,

696 F.3d 206, 222 (2d Cir. 2012) (“[A] mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the


Fifth Circuits) have either rejected the doctrine outright or limited its application. Several other Circuits (such as the First, Eighth, Tenth, and Eleventh Circuits) have not had the occasion to consider the doctrine directly post-Qualitex.

Since product configuration is not primarily about identifying source, there is a risk that opening up trademark law to product configurations will permit protection for the way a product looks, when protection for that appearance may not be available under copyright law (or any protection under copyright law would be of a narrower scope). Accordingly, the Supreme Court has determined that product configurations are never considered inherently distinctive as source identifiers,14 but has recognized that the physical configuration and/or color of a product itself can sometimes come to serve a source-identifying function,15 after a showing of acquired distinctiveness—i.e., secondary meaning—has been made.

Some commenters have suggested that the existence of a

design patent on an ornamental design for a product configuration should prevent the eventual development of trade dress rights in that same configuration, based on the theory that it would be against public policy to permit a party to potentially extend the term of their design patent in perpetuity via trademark law when the Constitution requires time-limiting of patent rights. But any trademark rights that might possibly develop in a particular product configuration aren’t the same rights as those exclusionary rights afforded by design patents. These views further miss the mark by treating owners of expired design patents worse off than a party who never attempted to obtain a design patent, and most importantly by either ignoring or failing to recognize that the relevant period of time for potential acquired distinctiveness shouldn’t commence until the design patent expires. This is to say that, if, during some suitable length of time

mark significantly undermines competitors’ ability to compete in the relevant market.”); Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 641 (6th Cir. 2002) (“[N]o reasonable jury could deny the existence of a ‘significant non-reputation-related disadvantage’ that would be imposed on competitors by protecting Abercrombie's claimed trade dress. That form of functionality governs the analysis of this case.”); Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860 (7th Cir. 2010) (“A design’s aesthetic appeal can be as functional as its tangible characteristics.”).

14 Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000).

15 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).


after the design patent expires—i.e., during a period in which competitors are free to adopt the once-patented product configuration in their own products with impunity—a party can show that competitors did not adopt that product configuration in their goods such that the party’s use of the product configuration was substantially exclusive, clearly not dictated by any functional consideration which required its inclusion in the respective category of goods, and that secondary meaning in fact resulted during this free-competition period, there is no reasonable policy argument for preventing the protections afforded by trademark law from resulting. Moreover, design patent claims do not—but for a very small number of unfortunate examples—include any admission that a particular product configuration includes utilitarian or aesthetically functional features, thus nullifying the potential applicability of Justice Scalia’s formulation in Dastar Corp. v. Twentieth Century Fox Film Corp. that trade dress law could be used to create an unconstitutional “species of perpetual patent” covering useful functions.16 II. Protecting Designs with Copyrights: Separability and Originality Required

It is nearly always the case that works of art—whether literary

or of some other artistic category—contain both copyrightable and non-copyrightable elements. Copyright law acts to distinguish copyrightable elements of a work from its non-copyrightable elements, but does so through different mechanisms based on the nature of the work under examination.

For literary works, courts generally filter out and grant copyright protection to a particular expression of an idea, while treating the idea itself as uncopyrightable. This “idea-expression” dichotomy is reflected in the current Copyright Act, in which Section 102(a) includes a list of protectable categories of original authorship, and Section 102(b) then states: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”17 The filtering process applied generally to works of literary art separates and preserves for

16 539 U.S. 23, 37 (2003). 17 17 U.S.C. § 102(b) (2012); see also Baker v. Selden, 101 U.S. 99 (1879).


protection any elements of original creative expression (even if intermingled with functional or useful processes or elements), while allowing remaining elements of the work which are purely functional or utilitarian to slip through the filter into a “bucket of unprotectable.” Thus, since it is capable of separating and protecting only that which is original and expressive, copyright law is unconcerned with whether a work is “primarily” functional.18

For pictorial, graphic, or sculptural works (collectively called “PGS Works”), a different and more complex mechanism, known as the “useful articles” doctrine, is applied to determine whether the work reaches a necessary threshold for copyright protection. The 1976 Copyright Act defines PGS Works as:

… works of artistic craftmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.19

The first step in this functionality analysis is to determine

whether a work is a PGS Work. If it is, the second step is to determine whether the PGS Work is a “useful article” under the statute.20 If the work is not a PGS Work, then the simpler filtering mechanism discussed above may be applied, and all original, expressive elements of the PGS Work may be protectable.21 If, on the

18 The sole caveat to this point is the existence of the “merger doctrine” in

copyright law. The merger doctrine holds that once the number of ways in which an idea may be expressed collapses into one or a very small number, copyright protection should be denied or else de facto protection for that idea would result.

19 17 U.S.C. § 101. 20 Id. According to the statute, a “useful article” is an article having an

intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article.”

21 To be protectable by copyright law, a work must also be original, i.e., contain a “modicum of creativity.” The U.S. Supreme Court has determined that the amount of creativity required for copyrightability is small. See Feist Publications, Inc. v. Rural Telephone Services Co., 499 U.S. 340, 363 (1991). A discussion of the copyright originality doctrine is outside the scope of this Article.


other hand, the PGS Work is a useful article under the statute, then the factfinder must subject the PGS Work to step three, i.e., the question of whether the aesthetic features of the work “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”22 This “separability” criterion attempts to address works having elements that are both aesthetic and functional, such that copyright protection may be properly afforded to the former while avoiding the extension of copyright protection to the latter.

While the basic principle of a useful articles threshold appears straightforward on its face, the lower courts struggled mightily in its application, resulting in more than a half dozen separate tests being created for determining whether an element satisfied the separability criterion. Finally, the U.S. Supreme Court took up the matter in a 2017 case entitled Star Athletica v. Varsity Brands.23

In Star Athletica, the Supreme Court clarified the separability test, holding that the designs appearing on cheerleading uniforms were separable from the uniform’s function as clothing, and thus were copyrightable under the Copyright Act. A few of the cheerleading uniform designs at issue are shown below.

The Court in Star Athletica wiped away the competing tests and reduced opportunities for lower courts to consider subjective factors that are unhinged from the relevant statute. However, in

22 17 U.S.C. § 101. 23 Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.Ct. 1002 (2017).


announcing its separability test, the Court only paraphrased the statute, ignoring that lower courts implemented that language in many different ways, and failing to address why disparate readings of the statute were possible in the first place.

That criticism aside, the Court in Star Athletica held that, to assess whether an artistic feature incorporated into the design of a useful article is protected by a copyright, a decisionmaker must ask: (1) can the design be perceived as a two or three-dimensional work of art separate from the useful article; and (2) would the design qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.24

This analysis focuses on “the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction [because the] statute does not require the decisionmaker to imagine a fully functioning useful article without the artistic feature.”25 Put another way, while useful articles as such are not copyrightable, if an artistic feature “would have been copyrightable as a standalone [PGS] work, it is copyrightable if created first as part of a useful article.”26

Applying the above test, a majority of the Court found that the decorations applied to the cheerleading uniforms were separable and therefore qualified for copyright protection. First, the Court held that “one can identify the decorations as features having pictorial, graphic, or sculptural qualities.”27 Second, the Court reasoned that:

If the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium - for example, on a painter’s canvas - they would qualify as ‘two-dimensional … works of ... art,’ § 101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the

24 Id. at 1007. 25 Id. at 1013. 26 Id. at 1011. 27 Id. at 1012.


designs in this case to other media of expression - different types of clothing - without replicating the uniform.28

Importantly, the Court made clear that “respondents have no

right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear,” and that “[t]hey may prohibit only the reproduction of the surface designs in any tangible medium of expression - a uniform or otherwise.”29

The author has not located any lower court opinions since Star Athletica that appear to struggle with this simplified doctrine of separability in copyright law. Since the opinion, many commentators have wondered whether the scope of protectability for design copyrights has in fact been widened. While it’s safe to say that no conclusive answer to this question can yet be ventured, it may be instructive to look at opinions issued by the Copyright Office Review Board (“CORB”) since the opinion was issued, to see if there are any items that likely would not have merited protection before Star Athletica that do merit that protection now.30

As of mid-March 2021, the author has identified 34 post-Star Athletica CORB opinions that involve useful articles. Of those nearly three dozen opinions, seven resulted in reversal of a prior refusal to register a work. Four of those seven reversal opinions are discussed below. “In re Pendant Lamp - 76”31

In this matter, the applicant sought to register a three-dimensional sculpture claim in the work of a pendant lamp, as shown below:

28 Id. 29 Id. 30 As of 2016, the CORB’s opinions are available online here:

https://www.copyright.gov/rulings-filings/review-board/. 31 Opinion issued April 4, 2018.

https://www.copyright.gov/rulings-filings/review-board/


The work had originally been denied registration because the Copyright Office’s Registration Policy and Practice division concluded that “it is a ‘useful article’ which does not contain any separable authorship needed.”32 In denying the applicant’s first request for reconsideration in a rejection letter issued three weeks before the Star Athletica opinion was issued, the Office relied on the pre-Star Athletica “conceptual separability” test for assessing whether copyrightable authorship is separable from the utilitarian aspects of a useful article. This test required that, for a feature to be copyrightable, it must be “imagined separately and independently from the useful article without destroying the basic shape of that article,” such that “the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works — one an artistic work and the other a useful article.”33

Upon review, the CORB reversed the refusal to register in view of Star Athletica, holding that the “Work’s three-dimensional design of glass formed into a half globe and imbedded with filament wires can be perceived as a standalone work of art without the internally mounted LED that makes the Work a useful article.”34

Despite the timing of the reversal and the Office’s citation to

32 Letter from Robin Jones, Registration Specialist, to Todd Hathaway at (Correspondence ID: 1-1QCBU38) at 1 (June 29, 2016). 33 Letter from Stephanie Mason, Attorney-Advisor, to Todd Hathaway

(Correspondence ID: 1-22CR8GE) at 2 (Mar. 1, 2017) (citing COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES (“COMPENDIUM (THIRD)”) § 924.2(B) (Dec. 22, 2014 version)).

34 Opinion issued April 4, 2018, at p. 2.


Star Athletica, the author believes that the CORB likely would have reversed the earlier refusal to register this work even absent a change in the law, given the unique nature of the sculptural work at issue. “In re Floor Liner”35

A perhaps more revealing post-Star Athletica reversal of an earlier refusal to register a work relates to the following pattern applied to a floor liner:

To be clear, applicant did not seek to register a copyright for

the overall floor liner, which it admitted is a useful article that is unprotectable under the Copyright Act. Instead, it sought to register a copyright for the decorative raised pattern comprising various shapes and orientations that appears on the floor liner. Applicant also acknowledged that grooves and lines on the surface of a floor liner, in general, do serve the useful function of trapping dirt and water, but asserted that the specific decorative pattern in and of itself serves no useful function and are solely for cosmetic purposes.36

35 Opinion issued April 19, 2018. 36 In an important footnote, the CORB stated that it accepted as true the

Applicant’s statements that this specific decorative pattern serves no utilitarian purpose, subject to criminal offense under 17 U.S.C. 506(e) if such statements were discovered to have been made falsely.


Citing Star Athletica, the CORB held that the work contained artistic features that are separable from the overall useful article, specifically finding that “the Work’s raised, decorative pattern of various shapes can be identified as a two-dimensional work of art separate from the floor liner” and that “[s]uch features would qualify as a protectable pictorial, graphic, or sculptural work if imagined separately from the useful article; moreover, they do not replicate the floor liner itself or ‘an article that is normally a part of’ a floor liner when so imaginatively removed.”37 Accordingly, based on applicant’s representation that this pattern serves a purely aesthetic purpose, the CORB determined that the work was protectable.

Referring back to the now-deleted Section 924.2(B) of the 2014 Compendium discussed above, the author is of the opinion that this is a work that likely benefited from the doctrinal “reframing” brought by Star Athletica. Specifically, the old conceptual separability test required that, for a feature to be copyrightable, it must be “imagined separately and independently from the useful article without destroying the basic shape of that article,” such that “the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works — one an artistic work and the other a useful article.” In the author’s opinion, it would have been difficult for the CORB to reach the same outcome under the old test, given the challenge of finding that the raised decorative pattern could be “imagined separately and independently from the [floor liner]” without “destroying the basic shape of [the floor liner].” “In re Yeezy Boost” Versions 1 and 238 In another recent opinion, the CORB held that the two sneaker designs shown below exhibited copyrightable authorship and thus could be registered. After initial denials of registration and affirmance of that denial by the Copyright Office, the CORB reversed course and held that the two sneaker designs (1) could “be perceived as two- or three-dimensional works of art separate from the useful article, that is, the sneaker” and each "contain a sufficient amount of original and creative two- and three-dimensional authorship" "if imagined separately from the sneaker" to support registration.

37 Id. 38 Opinion issued May 8, 2019.


Yeezy Boost 350 Version 1

Copyright Office's summary of protectable work: "irregular black lines of various lengths and shapes on a gray fabric with a black semi-circle in the arch and an orange dotted stripe on an off-white heel loop"


Yeezy Boost 350 Version 2

Copyright Office's summary of protectable work: "several grey lines in a wave pattern with a thick orange stripe on the outsole that fades toward the heel of the sneaker. Underneath Yeezy Boost 350 Version 2’s outer cloth layer is an inner orange layer that adds intermittent orange coloring" “In re Wilderness Survival Card”39 In this opinion, which represents the most recent reversal by the CORB of a refusal to register a copyright in a useful article, the CORB held that the card design shown below of a multi-tool pressed into a sheet of metal was eligible for thin copyright protection based on the specific artistic arrangement of the various tools into a single sheet. Even if individual elements of a useful article are unprotectable on originality grounds, “a combination of unprotectable elements is eligible for copyright protection [] if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”40

39 Opinion issued December 23, 2019. 40 Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (internal citations

omitted).


Although providing only a thin copyright that would protect against “only virtually identical copying,” the specific organization of the various unprotectable, individual tools—which include an awl, tweezers, two sewing needles, three saw blades, four snare locks, five arrows, and nine fishhooks—was held to reflect a suitable level of creativity necessary to support copyright registrability.

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Protecting Designs without Design Patents ABSTRACT

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