Brown: Is a taco a sandwich? This IP question isn’t patently absurd

Brown

By Chris Brown

We are all aware that sometimes things just don’t fall neatly into categories. Is it “nature” or “nurture”? Is my legal issue more in tort or in property, common law, statutory or Constitutional areas?

We all know that intellectual property law is commonly divided into several easily definable “buckets.” Patents concern inventions, whether machines, compositions of matter, methods or designs. Copyrights protect original works fixed in a tangible medium of expression. Trademarks are words, logos or other “devices” that serve to identify the source of a product or service. Each of these property concepts have particular rules governing what subject matter they apply to, when they come into existence, and what activities by others with respect to them are actionable.

I was reminded recently of a client who came to see me with drawings of a chair he had designed, and he wanted to protect it. Since he was an architect, he immediately thought of copyright — he considered the chair to be essentially an article of sculpture, with his particular design of the arms, legs and back the expression that was fixed in the tangible wood of the chair. As we looked at the design and mulled over the possible ways others might find value in it, it became clear that the chair might fit into multiple IP buckets — or perhaps none at all.

The copyright law broadly defines the subject matter it protects, as noted above: any original expression (e.g. art, words, music) that is fixed (e.g. in canvas, on a page, in a disc or other recording medium). But it also carves out a large exception for features of a “useful article,” such as a chair. Those features may have copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. §101 (quoted in Star Athletica, LLC v. Varsity Brands, Inc., 137 S.Ct. 1002, 1005 (2017)). Separate identification means that one “need only … spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 1010. Independent existence requires a determination that the particular feature can “exist apart from the utilitarian aspects of the article.” Id. In context, the question is whether the feature could be removed from the first medium and applied to another medium, without replicating the first medium itself. Id. at 1012.

In the case of the chair, it may be easy to see a particular decorative groove pattern, a clawed foot or a stained or painted decoration as a part of the chair. Separate identification of these features, as sculpture, graphics or pictures apart from the chair, is straightforward. But in the case of the groove pattern or the clawed foot, the much harder question is whether duplicating that pattern requires the utilitarian element of the chair — the foot, arm or back rest — in order to exist. In my experience, the Copyright Office generally takes a narrow view of the independent existence question, requiring not only a specific identification of the features the claimant considers worthy of protection, but a full explanation of how those features can exist without the underlying article.

Turning to the Lanham Act, the design of a product can itself qualify for trademark protection (commonly referred to as protectable “trade dress”) so long as it has “a distinctiveness which serves to identify the product with its manufacturer or source.” Traffix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28 (2001). That distinctiveness must be proven by the claimant through evidence such as long and exclusive use, advertising that directs consumers to the product design, and surveys of consumers tending to demonstrate that they recognize the design as coming from a single source. Even if that burden is met, however, “trade dress protection may not be claimed for product features that are functional … [and we have] noted that product design almost invariably serves purposes other than source identification.” Id. at 29 (internal quotation marks and citations omitted). Lanham Act protection for a chair design or some of its features is thus possible, but requires substantial time, commitment and expense. The characteristic shape of the Coca-Cola bottle is protected, and has been registered with the U.S. Patent and Trademark Office, but only with proof acquired over time of the distinctiveness and non-functionality of the design.

Of course, for many, patents are the first protection that comes to mind for a product. A utility patent can protect the structure of the device or methods of making or using it. However, just because the client has not found the product on the shelf or online, does not mean that a patent is available. The product (or particular features of it) are compared to prior knowledge in that field of endeavor to see if the “new” product represents a true invention, a move forward in the relevant technology. For a chair, one might imagine the extreme range and depth of available information, over hundreds of years, pertinent to chairs and other furniture. Early in my career, a client proposed a therapeutic candle impregnated with her selection of substances, which would be released as the candle burned. No such item was available, as far as we could find — but there was a wealth of relevant, and patentability-destroying, information in 19th-century patents and products.

Design patents can provide an answer to a new product that is not a sufficient technological advance for a utility patent, does not have the distinctiveness of protectable trade dress, and does not meet the copyright law’s independent existence test. Only the ornamentation or artistic design of the product is assessed for patentability, and only that ornamentation is protected. Thus, competitors may offer a product that looks sufficiently different but performs the same task. Nevertheless, assuming the design is inventive, a client can obtain a patent and market its product as “patented” over the 14-year life of the design patent. Further, the design patent may provide the opportunity for the client to begin asserting the design in marketing and developing evidence of the distinctiveness that might be used later to obtain trademark rights or a registration of the product design.

The exemplary chair could have aspects that fit into any of the intellectual property categories. It could also be protectable by none of them, and only strong competitive effort will make and keep it successful in the marketplace. Exploring all avenues gives the client the best opportunity for protection suitable to his or her needs and goals.•

• Chris Brown is a partner at Woodard, Emhardt, Moriarty, McNett and Henry, LLP. Opinions expressed are those of the author.