The fight between insurers and car manufacturers as to whether and, if so how, to protect the design of spare parts for cars delayed the implementation of an EU regulation on design protection for well over a decade and ended in an uneasy compromise. The July 23, 2019 decision of the Court of Appeals for the Federal Circuit in Automotive Body Parts Association v. Ford Global Technologies, LLC came down firmly on the side of the car manufacturers holding that the concept of aesthetic functionality (i.e. that the design was dictated by function because it “must match” something else) and exceptions from the law of infringement for patented parts used for repairs, had no place in United States Design Patent Law.
The design patents in question were for the hood and headlights used by Ford in its F-150 trucks. After a clash before the International Trade Commission about import of hoods and headlights to be used in the repair of Ford’s F-150 trucks, the Automobile Body Parts Association (ABPA) sought a declaratory judgment that: (1) Ford’s patents were invalid on the basis that the designs failed to meet the ornamentality requirement of the design patent statute, 935 USC 171, (2) that they could not be enforced against the association’s members on the grounds that Ford’s rights to enforce expired with its sale of the F-150 truck, and/or (3) that the intended use of the parts was not an infringement because it related to repair of a product sold by the patent owner. Ford prevailed on all three issues.
The question of whether the doctrine of aesthetic functionality which exists in trademark law should be applied to design law has been discussed for many years. From 1988 to 2001, a “must match” exception to registered design protection existed in the United Kingdom and still exists for the UK unregistered design right, but not for the EU’s, unregistered design right. The Federal Circuit saw no need for such a doctrine in the United States. Having noted that:
- courts have explained that a party cannot use trademark protection to prevent its competitors from using “important product ingredient[s],” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 170 (1995), or “from making their products as visually entrancing as [its] own,” Pub’ns Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 339 (7th Cir. 1998).
The Federal Circuit went on to explain why such an approach was inapplicable under U.S. design patent law, pointing out that:
- trademarks promote competition by permitting a perpetual monopoly over symbols that “distinguish a firm’s goods and identify their source, without serving any other significant function.
- design patents expressly grant to their owners exclusive rights to a particular aesthetic for a limited period of time. 1
The considerations that drive the aesthetic functionality doctrine of trademark law therefore simply do not apply to design patents.
In response to a second argument that the designs failed the ornamentality requirement for design protection because they must fit the Ford truck, the court viewed Best Lock Corp. v. Ilco Unican Corp. as the most relevant precedent and pointed out that in that case, the design patent was for a key “blade,” that had to be designed as shown in order to perform its intended function—to fit into its corresponding lock’s keyway. Hence, the claimed key blade design was dictated solely by function, and the design patent was invalid. This was not the same as the present situation because the issue in the Best Lock case was one of mechanical compatibility not aesthetics and the evidence showed that there were alternative hoods and headlights available (“performance parts”) that could be used as replacement parts on the F-150 truck.
The first argument by the ABPA with respect to enforceability of the design patents was that any rights in the design patents were exhausted by sale of the F-150 truck because the patents covered components of the truck thereby permitting use of Ford’s designs on replacement parts so long as those parts are intended for use with Ford’s trucks. This argument was rejected by the court on the basis that exhaustion did not permit a “second creation of the patented entity” and so did not apply to manufacturers of the replacement hoods or headlights. Exhaustion prevented the patent owner from exercising further control after the initial authorized sale of a patented product. In the present case, however, the court found that sales by members of the ABPA “are not authorized by Ford; it follows that exhaustion does not protect them.”
The existence of performance parts also contributed to failure of the ABPA’s claim that the patents should not be enforced against its members because they were supplying parts needed for repair of F-150 trucks.
The court resisted the Association’s suggestion that different rules should apply to utility patents and design patents and noted that although the Supreme Court in Aro Mfg. Co. v. Convertible Top Replacement Co. had held that use of unpatented replacement parts in repair of a patented product was permissible as long as the “repair” was not so extensive as to become a reconstruction that in effect produced a new article, no such holding existed for use of patented parts. As noted above, alternative “performance parts” that did not infringe Ford’s patents were available to make repairs. More than 150 years ago in Aiken v. Manchester Print Works, it had been held that purchasers of a patented knitting machine had no right to repair it using patented needles without the patent owner’s consent. That was still the law.
The case therefore highlights the desirability of securing design patent protection in the United States for any components of an article that may be sold separately, for example for use in repairs. It contrasts with the situation under the EU’s design regulation where although design registrations for such parts may be obtained, as long as the conditions set out by the Court of Justice of the European Union in cases brought by Audi and Porsche against Acacia are complied with,2 the design registrations are not enforceable against any competitors product whose purpose is to repair a complex product to restore its original appearance.
- The actions brought by Porsche and Audi against the spare parts manufacturer Acacia is discussed at: https://ladas.com/education-center/its-2018-the-impact-of-ip-decisions-from-2017/. The decision emphasized that the exemption applied only to parts that are to be used for repairs and not for other reasons, and set out conditions where the exemption applies as requiring that:
- the replacement part has an identical visual appearance to the part that was originally incorporated in the complex product; and
- the seller of the replacement part has a “duty of diligence as regards compliance by downstream users” to make sure that the parts were being used only for repairs by including statements in catalogs and other sales materials that the parts were to be used only for repairs, to include provisions to this effect in its sales contracts and to terminate supply where parts were being used for or the supplier had reason to believe the parts would be used for purposes other than repair.