USA – ARIZONA Trends and Developments Contributed by: George Saad, PLATZ JURIS, PLLC
establishing that the claimed dress is non-functional; establishing distinctiveness (inherent for packaging, secondary meaning for product design); and estab- lishing likelihood of confusion, which in the Ninth Cir- cuit is governed by the eight Sleekcraft factors from AMF Inc . v Sleekcraft Boats , 599 F.2d 341 (9th Cir. 1979). Where the doctrine cuts against brand owners The functionality doctrine is brutal and, in the Ninth Circuit, well-developed. Any feature that is essential to the use or purpose of the article, or affects cost or quality, is functional. A round sandwich is functional. A zippered hoodie collar is functional. A blue back- ground may be “aesthetically functional” if blue is the industry’s colour code for a given product category. Brand owners who treat trade dress as a standalone shield will frequently find it has already leaked. Pillar two : copyright Copyright protects original works of authorship fixed in a tangible medium of expression. For dupe litiga- tion, the relevant doctrine lives in a narrow corner of copyright law: the protection of design elements in useful articles – ie, clothing, packaging, product shapes, under the separability test refined in Star Athletica , L . L . C . v Varsity Brands , Inc ., 580 U.S. 405 (2017). Star Athletica held that a design element on a use- ful article is copyrightable if it can be perceived as a two- or three-dimensional work of art separate from the article, and would qualify as a protectable picto- rial, graphic, or sculptural work if imagined apart from it. The decision was heralded as a win for fashion and product designers, but its practical reach has been narrower than the headlines suggested. The separability test protects surface decoration, such as stripes, chevrons, prints, graphic patterns, far more readily than it protects silhouettes, cuts, or structural features. A Lululemon jacket’s decorative quilting pat- tern may be copyrightable; its raglan sleeve construc- tion almost certainly is not. Packaging artwork like the Oreo swirl or the Ritz red crown graphic is more squarely within copyright’s comfort zone.
Where the doctrine cuts against brand owners Copyright registration is inexpensive, swift, and rou- tinely overlooked. Many brand owners fail to reg- ister the artwork on their packaging or the graphic elements on their products, foreclosing the statu- tory damages, up to USD150,000 per work for wilful infringement under 17 U.S.C. § 504 (c)(2), and attor- neys’ fees that make copyright litigation economically viable. The functionality exclusion also bites: anything that shapes the product rather than decorates it is typically outside copyright’s scope. Pillar three : design patents A design patent, granted under 35 U.S.C. § 171, pro- tects the new, original, and ornamental design of an article of manufacture for 15 years from issuance. It is the one IP right that protects the shape itself of a product – eg, the silhouette of a bottle, the contour of a running shoe, or the profile of a chair. Design patents have long been the quiet workhorse of strategic IP portfolios, and for a period between Apple v Samsung and mid-2024 they were regarded as relatively easy to obtain and formidable to enforce. That changed on 21 May 2024 when the Federal Cir- cuit, sitting en banc, decided LKQ Corp . v GM Global Technology Operations LLC , 102 F.4th 1280 (Fed. Cir. 2024). LKQ abandoned the decades-old Rosen- Durling two-part test for design patent obviousness and replaced it with a flexible Graham-factor analysis borrowed from utility patent law, drawing explicitly on KSR International Co . v Teleflex Inc ., 550 U.S. 398 (2007). The consequence: design patents are harder to obtain and easier to invalidate than they were under the prior regime. Prior art combinations that would previously have been dismissed under Rosen-Durl- ing’s rigid “basically the same” threshold are now fair game in both prosecution and post-grant challenges. Where the doctrine cuts against brand owners LKQ is a mixed blessing for dupe litigation. Design patents remain uniquely powerful; they require no proof of secondary meaning and no proof of con- sumer confusion, only that the accused design would appear substantially the same to an ordinary observer under Gorham Co . v White , 81 U.S. 511 (1871). But LKQ means design patent portfolios now require more careful prosecution, more defensible prior art records,
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