GUEST POST: "What makes a fashion design 'obvious'?" by Sarah Burstein (Associate Professor, U. of Oklahoma College of Law)

Posted by Sarah Burstein

[Ed. LAW OF FASHION is delighted to welcome back one of the most insightful (and most #interactive!) scholars working in the area of design patent law, Professor Sarah Burstein. Note: Some of the hyperlinks in the post have been added by LOF.]


Design patents are the intellectual-property regime du jour for fashion designs. But it’s not clear how some of the new design patents for clothes will fare if challenged in court. A recent case about canine couture may, however, provide some clues...


On January 31, 2013, the Hon. Patricia A. Gaughan, U.S. District Judge for the Northern District of Ohio, granted summary judgment for the defendants in MRC Innovations, Inc. v. Hunter Mfg., LLP. (The full text of the order is posted here.)


In this case, MRC asserted two design patents: (1) U.S. Patent No. Des. 634,488 (“the D’488 patent”), entitled “Football Jersey for a Dog”; and (2) U.S. Patent No. Des. 634,487 (“the D’487 patent”), entitled “Baseball Jersey for a Dog.” 





           D’488 patent – Fig. 1                             D’487 patent – Fig. 1


The defendants moved for summary judgment, arguing—among other things—that both of the patents-in-suit were invalid as obvious.


Like other patents, design patents are subject to 35 U.S.C. § 103. So, in order to be patentable, a design must be not only novel but “nonobvious.” As explained in the recent case of Apple, Inc. v. Samsung Electronics Co.:


In addressing a claim of obviousness in a design patent, “the ultimate inquiry . . . is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” To determine whether “one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,” the finder of fact must employ a two-step process. First, “one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design.’” Second, “other references may be used to modify [the primary reference] to create a design that has the same overall visual appearance as the claimed design.” However, the “secondary references may only be used to modify the primary reference if they are ‘so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.’”


678 F.3d 1314, 1330–31 (Fed. Cir. 2012) (internal citations omitted) (alterations in original). A court must also consider whether any secondary considerations—including commercial success, licensing and copying—indicate that the design is nonobvious.


So the first (and in many cases, dispositive) question is whether there is a “primary reference”i.e., is there a pre-existing design that “creates basically the same visual impression” as the claimed design?


In MRC [the "dog jersey case"], the defendants argued that multiple pieces of prior art qualified as primary references. Judge Gaughan agreed that one of those references, the “Eagles jersey,” was a proper primary reference for the D’488 patent. Here is an illustration from MRC’s brief showing both the claimed design claimed and the Eagles jersey (the red arrows indicate differences between the designs):




Judge Gaughan concluded that the Eagles jersey was a proper primary reference because:


The Eagles jersey is clearly a pet football jersey having an opening at the collar portion for the head of the pet, two openings and sleeves stitched to the body of the jersey on either side for limbs of the dog, and a body portion on which a football logo is applied (extending from the top of the jersey to the bottom of the jersey and covering a portion of the body of the pet). . . . In addition, the Eagles jersey exhibits ornamental surge stitching, which plaintiff emphasizes exists in the claimed design.


She acknowledged that there were differences between the designs, namely, “the V-neck collar depicted in the patented design, additional ornamental surge stitching appearing on the claimed design . . . and . . . ‘an interlock fabric panel’ that appears on the side portion of the claimed design.”  However, Judge Gaughan accepted Defendants’ argument that these differences were “either de minimis or plainly suggested by related secondary prior art references.”


Judge Gaughan’s analysis of the D’487 patent was similar. She concluded that the “Sporty K9 pet jersey” was a proper primary reference and that any “differences that exist between [the claimed design and] the Sporty K9 jersey are either minor, or are plainly disclosed in modifying secondary . .  . references.” Here is MRC’s illustration of the two designs:




MRC argued that certain secondary considerations negated a finding of—or at least raised genuine issues of fact regarding—obviousness. But the only evidence MRC presented was the inventor’s “own statements [regarding] commercial success, copying, and licensing of [the] claimed design.” According to Judge Gaughan, this evidence was insufficient to demonstrate that there was a genuine issue of fact. Therefore, she granted summary judgment for the defendants.  


So, will MRC appeal? Judge Gaughan has scheduled a settlement conference for Feb. 25, 2013; MRC might not make a decision before then.


But no matter what happens, this decision is definitely a must-read for anyone interested in fashion law. Even though this was a case about clothing for dogs, the defendants’ arguments—and Judge Gaughan’s analysis—could easily be applied to cases about clothing for people.


Sarah Burstein is an Associate Professor of Law at the University of Oklahoma College of Law. Her most recent law review article discussed the application of § 103 to design patents. For updates on design patents (and related legal issues), you can follow her on Twitter @design_law.  



[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman, his law firm, or its agents or clients. Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with it) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]