Two recent cases illustrate the potential benefits of protecting intellectual property rights with both design patents and copyrights, particularly for an article that has both utility and a design, including because a design patent infringement analysis may sometimes be more straightforward to apply. In a design patent case, Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, No. 3:15-cv-00064 (D. Or. Aug. 10, 2016), a court applied a clear-cut analysis in granting summary judgment of infringement of a design used for breathable heat-reflective material. In contrast, in a copyright case, Star Athletica, L.L.C. v. Varsity Brands, Inc., 136 S. Ct. 1823, No. 15-866, 2016 U.S. Lexis 3031 (2016), the Supreme Court has granted certiorari to examine the test of whether a feature of a useful article – such as a garment or piece of furniture – is conceptually separable from the article and thus protectable by copyright, which courts have consistently struggled with.

In Columbia, Federal Judge Marco A. Hernandez ruled as a matter of law that Seirus HeatWave gear infringes Columbia’s design patent, U.S. Patent No. D657,093 because the “striking visual similarity between [the] designs is likely to confuse an ordinary observer.” Both Columbia and Seirus manufacture gear including a breathable heat-reflective material, which Columbia calls Omni-Heat and Seirus calls HeatWave. The illustration in the decision shows both the Seirus HeatWave and Columbia D’093 designs:

Columbia D’093M Seirus HeatWave

Judge Hernandez did not construe the design patents with a detailed textual description, which is a discretionary step in determining infringement of a design patent. He determined infringement by using the non-discretionary test that “[t]he accused product infringes the design patent if ‘the designs have the same general visual appearance, such that it is likely that the purchaser (or the ordinary observer) would be deceived into confusing’ the two designs,” citing Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116 (Fed. Cir. 1998).

Judge Hernandez held that “a defendant cannot avoid infringement by merely affixing its logo to an otherwise infringing design,” citing L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1118, 1126 (Fed. Cir. 1993). Additionally, Judge Hernandez noted that “the scope of the ’093 patent is not limited to a particular orientation,” and thus the fact that the ’093 patent reflects a generally horizontal pattern and the Seirus product is generally vertical when the logo is read, is not a defense to infringement. (Judge Hernandez cited Apple, Inc. v. Samsung Elecs. Co., 932 F. Supp. 2d 1076, 1085 (N.D. Cal. 2013).)

The Columbia case involves both the ’093 design patent and two utility patents, as the OmniHeat product is protected by both design and utility patents. Although OmniHeat is protected by utility patents, indicating that it has both a “new, original and ornamental design” and a utility, the court had no difficulty in ruling that the design patent was infringed, regardless of the utility of the product.

This straight-forward analysis of infringement of a design patent stands in contrast with the complicated issues raised when a copyright protects a design on an article with utility. Pending before the U.S. Supreme Court is the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. Star Athletica, which considers the design of cheerleading uniforms, raises the issue of “how to determine whether a feature of a useful article – such as a garment or piece of furniture – is conceptually separable from the article and thus protectable.” Petition for Writ of Certiorari, p. 5.

In general, a design patent protects a new, original and ornamental design for a useful article of manufacture. A copyright generally protects any original work of authorship that has been fixed in a tangible medium of expression. Copyrights do not protect useful articles, but the design of a useful article may be copyrightable under the Copyright Act, 17 U.S.C. § 102(a) (2012), when the design is separable from the useful aspects of the article:

[T]he design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work [and thus copyrightable] 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. – 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.

There is a two-part test to determine whether a useful article is protectable as with a copyright. The first question is whether the design for which the author seeks copyright protection is a “design of a useful article.” The second question is whether the design of the useful article “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the [useful] article.” Varsity Brands, Inc. v. Star Athletica, LLC, 799 F3d 468, 481 (6th Cir. 2015).

The Sixth Circuit in Varsity Brands, noted the difficulty of determining the second part of the test, noting:

Since Congress passed the Copyright Act of 1976, no court has relied exclusively on the physical-separability test without considering whether the pictorial, graphic, or sculptural features of a design are conceptually separable from the utilitarian aspects of the useful article.

Id. at 483. At least nine different approaches were in place when this decision was issued. Id. at 484-85.

Many people hope that the U.S. Supreme Court decision in Star Athletica will resolve the issue of which test to use to determine whether pictorial, graphic or sculptural features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

All of this begs the question – why didn’t Varsity Brands get a design patent instead of, or in addition to, a copyright for the new, original and ornamental design of its cheerleading uniforms? Things might have been easier when it came time to enforce its rights.

Some clothing companies may be reluctant to get a design patent because it is generally more expensive and takes longer to get a design patent than a copyright. Additionally, clothing companies are often more attuned to branding with trademarks, trade dress and copyrights than they are to patents. In light of Columbia Sportswear, however, clothing companies should consider adding design patents to their arsenal of design protection tools. While design patents may not always be the right choice, there are times when they are the best protection for a product.