The U.S. Court of Appeals for the Federal Circuit ruled that a defendant’s placement of an ornamental logo is one factor to be considered in a design patent infringement case. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019).
The Facts
Columbia Sportswear owns U.S. Design Patent No. D657,093 that covers an ornamental design of a heat-reflective material. This reflective material was used by Columbia as a lining in its Omni-Heat line of apparel that includes jackets, pants, gloves and boots. Columbia sued Seirus for patent infringement over the sale of its products that incorporated material with a similar wavy pattern. The U.S. District Court for the District of Oregon granted Columbia summary judgment that Seirus infringed the ‘093 patent. The case was then transferred to U.S. District Court for the Southern District of California which held a trial on the questions of damages and willfulness in the infringement of the ‘093 patent. At the end of the trial, the jury found that the infringement was not willful and awarded Columbia over $3 million in damages for Seirus’s total profits from the sales of the infringing products.
The Appeal
On appeal, the Federal Circuit reversed the district court’s grant of summary judgment for design patent infringement. The Federal Circuit found that the district court should have considered, among other features, the Seirus ornamental logo in evaluating the effect the logo had on the whole design in the infringement analysis.
The Federal Circuit previously had ruled, in L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), that an accused infringer could not avoid design patent infringement by labeling the copied design with its name. The L.A. Gear case involved a patented sneaker design and an infringing product that copied the sneaker design but added a logo on the side of the sneaker. However, the Court distinguished the current case from L.A. Gear since the parties in that case did not dispute substantial similarity between the infringing sneaker and the patented design. The Court stated that L.A. Gear “does not prohibit… considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.”
Thus, the court concluded that the placement and appearance of the Seirus logo in the reflective pattern used in Seirus’s products should have been considered in evaluating design patent infringement. The Federal Circuit also criticized the district court’s infringement analysis in other respects, including the district court’s resolving a number of factual issues that should have been considered by a jury.
Significance
The Federal Circuit’s finding that the placement of an ornamental logo is a relevant consideration in a design patent infringement case may, in some cases, have negative implications for owners of design patents covering surface ornamentations.
An ornamental logo applied to a surface ornamentation in a way that obstructs or covers some of the patented design could potentially avoid infringement if it changes the overall visual impression of the surface ornamentation. By contrast, the application of a logo to a patented three-dimensional object, such as a sneaker, is not likely to change the overall visual impression of the object and its three-dimensional shape.
The court did not decide the level of change in the overall visual appearance required by the addition of an ornamental logo and sent this case back to the district court for a new trial on design patent infringement.
Possible Design Patent Strategies
In view of the Court’s ruling, one potential strategy in applying for a design patent covering a surface ornamentation might be to limit the number of repeating elements claimed in the design patent drawings to only those that are necessary to show the pattern. This strategy could potentially broaden the scope of the design patent protection, which would be advantageous to the patent owner. In addition, it could limit the ability of a potential infringer to avoid liability by minimally obstructing only portions of the patented design, or it could force a potential infringer to use an unreasonable density of ornamental logos to avoid infringement.
An alternative strategy may be to show the surface ornamentation with a limited number of repeating elements in solid lines while showing the remaining portions in broken lines. Since the portions shown in broken lines are not part of the claimed design, this strategy would have similar effects to those mentioned above. In addition, the applicant would be able to amend the application during prosecution to convert the broken lines to solid lines, if necessary.
In any case, it is important for patent applicants at the time of preparing design patent applications to consider how they and their competitors may use a logo with the design to be protected.
Anastasia Zhadina, Esq.
Cowan, Leibowitz & Latman
212-790-9286
axz@cll.com
