Want to buy a Porsche 911 for only $159? Well, now you can. Or at least you can buy the virtual 3-D model of a Porsche 911 to 3-D print or to use in an online video game. How is this possible? Certain websites, such as turbosquid.com, 3dexport.com, 3docean.net, creativecrash.com, and many others sell virtual 3-D models in the form of digital files that a customer can download.1 Searching the name of any company listed in the top ten design patent filers2 into one of these sites turns up hundreds of results. Many of the files that appear seem to be exact virtual replicas of physical products, many of which are protected by design patents.3

The situation bears some resemblance to the peer-to-peer downloading that companies such as Napster used in the early 2000s. Copyright law was originally used to shut down those websites; however, to date, courts have not applied patent law to prevent virtual 3-D models from being shared or sold as Computer Aided Design (CAD) files online. The vast majority of design patents are directed to physical articles, not virtual ones. Does having a design patent that appears to be directed to a physical product provide any recourse to stop these virtual sales? As the sale and use of virtual 3-D articles becomes more prevalent, this will be an issue that courts will be asked to consider.

What Does the Law Say?

To date, the law has not squarely addressed this issue. But we have a few nuggets that we can glean from the current case law and guidance from the U.S. Patent and Trademark Office (USPTO) that may be helpful.

First, the design patent protects the design, not the article. The Patent Act states: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor.…”4 But this design does not need to be applied to a specific article of manufacture.5 In In re Zahn, the Federal Circuit held that 35 U.S.C. § 171 permitted an applicant to obtain a patent for a “design,” not an “article of manufacture.” According to the court, “[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds….”6

For virtual designs, the underlying article of manufacture has been to date the display device. After an appeal involving a computer icon, the USPTO adopted guidelines recognizing that “computer-generated icons may constitute articles of manufacture in that they are surface ornamentation on the computer display.7 This means, at present, the virtual design must be “grounded” by a display device to be patentable subject matter.

Second, in the past, the USPTO has not interpreted standard line drawings to be limited to a specific color or a specific material, so long as “the appearance of the material does not patentably depart from the visual appearance illustrated in the drawing.”8 More than one court has agreed that these factors are not pertinent in the infringement analysis.9 The Manual of Patent Examining Procedure (MPEP) guidelines show, and the courts have confirmed, that the comparison centers on the visual appearance of the claimed design and the accused article, not the article’s material. A survey of issued design patents for computer icons and interfaces shows that many include specific colors, while others are depicted in the more traditional black and white line drawings, and thus presumably not limited by color.

Third, although the case law is sparse, one case is worth noting. In P.S. Products, Inc. v. Activision Blizzard, Inc., the plaintiff alleged that its U.S. Design Patent No. D561,294 (“the '284 patent”) for a brass-knuckle-style stun gun was infringed by a weapon found in a video game.10 For reference, the ’294 patented design looks like this:

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Perspective View

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Side View

The weapon, which is called the “Combat Suppression Knuckles” or “Galvaknuckles,” is used in the video game Call of Duty: Black Ops II and is also a brass-knuckle-style stun gun that looks like this11:

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Although the concept of a stun gun in the form of brass knuckles was used by Activision, the actual stun gun depicted in the game looks very different than the claimed design of the ’294 patent. In the end, the court found no infringement, but not by applying the traditional ordinary observer test, where the overall visual appearance of the claimed design is compared to the accused product in light of the prior art. Rather, the court determined that no ordinary observer would be deceived into purchasing a video game, believing it to be the plaintiffs’ patented physical stun gun.12 As a result, the court failed to reach the more important question of whether a design patent directed to a physical article could be infringed by a virtual 3-D depiction and failed to look at the design of the allegedly infringing article, the 3-D virtual weapon itself. While it is unlikely the court would have come to a different conclusion if it had compared the virtual article to the design patent, the court’s approach could set a standard that may make enforcement of design patents directed to physical articles more difficult when the infringing article is a virtual article.

Protecting Innovative Designs in Both the Real and Virtual Worlds

The two design patents at issue in Activision, the ’294 patent and D576,246, both claimed “the ornamental design for a stun gun, as shown and described.” Both patents show the design of a brass knuckle stun gun, but there is no specific mention that the infringing article must be tangible. Up until now, it was generally assumed that the design in a design patent was intended for some physical article. Today, this has changed.

While the courts can deal with the question of applying existing design patents to virtual accused products, an important consideration moving forward is how to protect these types of designs, now that we know that infringement may occur in both the physical and virtual worlds.

Some commentators have suggested that the mere act of creating a design that is so detailed that the customer need only buy it and push the “print button” to infringe should be the basis for direct infringement—a new type of infringement called “direct digital infringement.”13 Until that day, the most straightforward case would be if the design patent is crafted to cover both the physical and virtual embodiments.

One possible strategy would be to draft two design patents—one which covers the physical representation and one which explicitly covers the virtual representation. This might be cost prohibitive to clients because it would require paying twice the government fees.

Another strategy would be to draft a single application, but use a title or language in the specification that tried to designate the application as covering both virtual and physical embodiments. The USPTO’s requirement that the virtual design be “seated” in the display device would likely mean that the application would need at least two sets of figures. But, it is unclear how the USPTO would classify this application, and whether it would be sent to the art unit that examines the physical articles of that type, or the art unit that considers computer icons and interfaces.14 It is also possible that the USPTO might issue a restriction requirement. Thus, this option is not without risk or expense.

In the end, if an exact copy of the stun gun was made into a CAD file online and sold, what is the difference between the physical product’s design and the virtual product’s design? Under Zahn, it would seem that the design patent covers the use of the design on any article, physical or not. The MPEP even says the appearance of the material doesn’t matter, as long as the article looks like the design as shown in the design patent. Why can’t the “material” be a display on a computer screen? Why does the “material” need to be something physical?

Design patents don’t actually require the patent owner to build a physical product. The design itself is what is protected. It seems that an exact virtual replica of a design should infringe as a physical replica, especially when that virtual copy is being sold. If artists can get protection for their music being sold online, shouldn’t design patent owners get protection for their designs being sold online?