Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jun 2, 2015

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Man Holding iPhoneThe US Court of Appeals for the Federal Circuit upheld most of Apple’s 2012 patent infringement win against Samsung, but ruled that Apple could not protect the general look of the iPhone as “trade dress.”

As reported by the New York Times, a jury unanimously found that Samsung violated several Apple design and utility patents. Samsung was originally ordered to pay more than $1 billion in damages; the amount was later reduced to $930 million by another jury in 2013.

According to the Federal Circuit’s decision, the jury “found Samsung liable to the likely dilution of Apple’s iPhone trade dresses under the Lanham Act.”

Trade Dress

The Lanham Act is a federal statute that prohibits trademark infringement, trademark dilution, and false advertising, among other things.

Trade dress is “the totality of elements in which a product or service is packaged or presented.”

For example, “trade dress” can cover things like:

  • The design of a magazine cover
  • The appearance and décor of a Mexican restaurant chain
  • A method for displaying wine bottles in a wine store

According to the Federal Circuit,

The essential purpose of a trade dress is the same as that of a trademarked word: to identify the source of the product.

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Balancing Act

However, according to the Ninth Circuit’s decision in the Leatherman case, trade dress protection must be balanced against “a fundamental right to compete through imitation of a competitor’s product . . . .”

Copyright and patent laws only protect against copying for a limited term of years. A trademark, on the other hand, can theoretically be used forever – assuming it’s properly protected.

Since trademark protection can be perpetual, trademark law only protects physical details and design elements of a product that are non-functional, so as not to discourage competition.

Functionality

As the US Supreme Court said in the Qualitex case,

If a product’s functional features could be used as trademarks… a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

Thus, in the Apple case the Federal Circuit needed to determine whether the design features claimed by Apple as protected trade dress were functional or not.

In general, said the court,

[A] product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article…. A product feature need only have some utilitarian advantage to be considered functional…. A trade dress, taken as a whole, is functional if it is in its particular shape because it works better in this shape.

Even if a design has been registered as a federal trademark, it can still be found by a court to be functional.

The iPhone’s Design

Apple claimed the following elements of the iPhone 3G and 3GS as trade dress:

  • a rectangular product with four evenly rounded corners;
  • a flat, clear surface covering the front of the product;
  • a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and
  • when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons.

Apple argued that these design features were non-functional.

The Federal Circuit disagreed, noting that an Apple executive testified that Apple’s goal in creating the design involved more than just beauty. The executive said that Apple wanted:

to create a new breakthrough design for a phone that was beautiful and simple and easy to use and created a beautiful, smooth surface that had a touchscreen and went right to the rim with the bezel around it and looking for a look that we found was beautiful and easy to use and appealing.

(Emphasis added by the court.)

Samsung introduced evidence that the Apple design features enhanced usability. For example, rounded corners make a phone more durable and make it easier to put in a pocket.

Thus, concluded the court, Apple’s trade dress for the phones had a “utilitarian advantage” and thus could not be protected by trademark law.

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Protecting Designs

If you have questions about protecting your product designs and trade dress, you may wish to consult an intellectual property attorney in your area.