Today, the Federal Circuit vacated the trade dress award in Apple v. Samsung.
Apple had asserted four unregistered "trade dress" features of the products, as well as TM No. 3,470,983 covering a layout of icons:
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 round
With the registered TM being the sixteen default home screen icons on the iPhone.
The Federal Circuit analyzed the factors laid forth in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998) to determine whether the trade dresses were functional.
Does the design yield a utilitarian advantage?
Are there alternative designs available?
Does advertising tout the benefits of the design?
Does the design result from a comparatively simple or inexpensive method of manufacture?
The Federal Circuit emphasized that 9th Circuit's standards on whether or not a trademark is drawn to function subject matter has nothing to do with whether or not the trademark's primary purpose is aesthetics, but that it serves no purpose other than identification.
The Federal Circuit also drew attention to evidence presented about the design:
Easy to Use (which is kind of a vague argument to make)
Improving "pocketability" (e.g.: the device tends to slide into a pocket rather than bouncing off of a seam if the user isn't paying particular attention)
Improving "durability" (e.g.: probably that the device may slide on its rounded corner, spreading any impact over a larger surface area on the device and reducing the likelihood that any one component will absorb most of the impact, for instance)
Rectangular shape maximizes display area (this may be related to existing 16:9/16:10 aspect ratio standards; it's extremely rare to find square aspect video)
A flat, clear surface promotes touch operation
"The bezel protects the glass from impact when the phone is dropped"
The borders around the display can provide extra room for components without making the product excessively large (e.g.: you have to cram oddly-shaped components behind a 16:9 screen somehow)
The dots in the user interface indicate the availability of more pages of menu
The icons differentiate the function of the application associated.
Alternative designs should offer exactly the same features as the Trade Dressed design. This is to prevent manufacturers from forcing others to use designs with entirely different advantages and disadvantages under trademark law. The court ruled that Apple had not shown that alternative designs existed that offered exactly the same features as the product.
Apple lost some points on this factor:
Apple fails to show that, on the substance, these demonstrations of the user interface on iPhone’s touch screen involved the elements claimed in Apple’s unregistered trade dress and why they were not touting the utilitarian advantage of the unregistered trade dress.
Method of Manufacture
The Federal Circuit also noted that the manufacturing challenges Apple pointed to were regarding the durability of the steel and the durability of the screen, rather than drawn to the specific claimed trade dress elements.
Because of this, the Federal Circuit reversed the determination that the unregistered trade dress elements were non-functional.
Registered Trade Dress
The Federal Circuit focuses on the "functionality" of icons. Essentially, they quoted Apple's expert that "the whole point of an icon ... is to communicate to the consumer ... that if they hit that icon, certain functionality will occur ..." (pg. 15) They follow Samsung's logic that the functionality of the individual elements invalidates the trade dress as a whole- that it doesn't "negate" the functionality of the individual elements.
I'm not sure I necessarily follow with this completely. Any trade dress is going to involve some amount of "functional elements"; a bottle, for example, can involve divots that improve grip but given a wide berth of cost-effective alternatives, we can fairly say that the Coca-Cola bottle is a distinctive product identifier that doesn't unfairly prohibit competition.
Similarly, while I think the Federal Circuit came to a good conclusion, I would have liked to see more of the deep-digging into the Disc Golf factors.
For example, let's do some math for a second:
human finger press =~ 1.2cm radius
iphone 4 screen = 7.4 x 4.9cm or 6.16 x 4.08 finger presses
And what do you know, we have a 5x4 grid of icons with a bar on top and a row of page dots for required context. Can we seriously say there are cost-effective alternatives to this design? Rather than issuing a vague and kind of legally destructive guideline of "functional features equals functional trade dress", the factors are there, and taking interface design seriously really does produce a good result.
I think part of why I'm miffed that the CAFC glossed over the Disc Golf factors on the registered Trade Dress is that I would have liked to see "Method of Manufacture" applied to interfaces. They were given the tools by Apple's UX expert to say: "Look, these icons are functionality indicators for users; you have arranged them in the only configuration that makes sense on a screen this size; you advertise the ease of use of this icon configuration; and a designer who requires context for a multi-application touchphone is going to have to use all of these elements or take a major hit in usability."
Granted, this is a lot easier said than done. Quantitative UX research is a quickly-growing field with complex and valuable data that neither Apple nor Samsung necessarily want to air out in a public court of law. Putting numbers on usefulness is not really something the CAFC may be ready to grok yet.
This is where you might get a little confused. When the CAFC applies the Disc Golf factors to trademarks covering the bezel, the corners, and the user interface trade dresses and comes to the conclusion that they're functional and therefore cannot be infringed.
Now, D'667, D'087, and D'305 are drawn to all of them respectively and are affirmed. An important part of this is that "functionality" in CAFC law has a different effect than Disc Golf functionality under 9th Circuit law.
For one, functionality in design patents does not destroy the entire design- it just causes the court to subtract the functional parts and apply the remainder to the accused product. The CAFC determines that this is properly done because all design patents recite "the ornamental design as shown".
There were also jury instructions objected to, specifically portions about how "actual deception is not required" (e.g.: that it induced the jury not to think about the fact of no actual deception), and about how the jury "must familiarize" themselves with the prior art (e.g.: that it wasn't a strong enough admonition that prior art invalidates the patent). The CAFC upheld the instructions. The CAFC also upheld the conclusion over a challenge of insufficient evidence.
Finally, the CAFC upheld the exclusion of evidence that could have rebutted an argument that Samsung copied from Apple.
The CAFC also upheld the damage award against a challenge that the jury improperly awarded the entirety of Samsung's profits. This is the upper bound that 35 USC § 289 allows: "[an infringer] shall be liable to the [patent] owner to the extent of his total profit ..."
Importantly, the court footnotes:
Amici 27 Law Professors argues that an award of a defendant’s entire profits for design patent infringement makes no sense in the modern world. Those are policy arguments that should be directed to Congress. We are bound by what the statute says, irrespective of policy arguments that may be made against it.
Samsung also attacked the lost profits and reasonable royalty calculations. The CAFC affirmed because all Samsung offered to counter the lost profits calculation was the existence of two non-infringing phones and it needed to make a showing that those phones were "acceptible substitutes" for the iPhone. It also affirmed that small inconsistencies of experts not reciting the full Georgia-Pacific factors didn't harm the outcome of a reasonable royalty.