Design patents protect new ornamental designs for “articles of manufacture.”
A recent Federal Circuit decision Auto Body Parts v. Ford Global Techs. (Fed. Cir. 2019), rejected a limitation on design patents, and highlights how design patents can be a powerful tool to secure demand in the after-market for parts and components.
The case involved design patents owned by Ford for certain components of its cars – a vehicle hood and a head lamp. Auto Body Parts wanted to manufacture replacement parts for Ford Cars with the same designs.
Auto Body Parts argued that the design patents were “functional” and hence invalid, because consumers want to buy replacement parts to match their cars. While arguably that would be a valid argument under trade dress law, the Federal Circuit rejected it under design patent law. So, Ford’s component design patents were valid.
This decision highlights what can be a powerful strategy for manufacturers of products that have components that may need replacements.
A design patent on components of a whole product (e.g., the headlamp of a car) can be leveraged to cover sales of replacement components.
Ford, of course, is a manufacturer of automobiles, and its designers create designs for both the vehicles and various components. Ford secured design patents for certain components used in some of its vehicles.
The Automotive Body Parts Association (ABPA) is an association of dealers in automotive parts.
Ford accused some of its members of infringing its design patents by importing and selling components that bore those designs. The ABPA brought a declaratory judgment suit seeking to have the patents declared invalid.
The Patent Act allows an inventor to secure a design patent for any “new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171(a). Long-standing precedent holds that the term “ornamental” excludes functional designs, i.e., designs “dictated by function,” that is functional for short.
However, because a design patent’s claim protects an article of manufacture, which “necessarily serves a utilitarian purpose” it may have some functional elements. But if the design is “primarily functional,” meaning that the “design is essential to the use of the article, it cannot be the subject of a design patent.”
Most cases involving a challenge to design patents focus on utilitarian functionality – whether the design is needed to make the product work. The inquiry then focuses on whether the ornamental design is really needed to make the product work, or there are other designs that can be used without infringing on the design patent.
But ABPA did not pursue such an argument. Instead, it tried to import a functionality doctrine from trade dress law.
Federal Circuit Rejects ABPA’s Functionality Argument
The ABPA argued that consumers seeking replacement parts prefer hoods and headlamps that restore the original appearance of their vehicles. It then asserted that there is a functional benefit to designs that are aesthetically compatible with those vehicles. This, it argued, rendered the designs “functional” and hence not protectible through design patents.
The ABPA relied upon a similar doctrine under trade dress law called “aesthetic functionality.”
In trade dress law, if there is a market advantage in selling goods that look a certain way, or have a certain visual appeal, that may render the design “aesthetically functional” and hence the design not protectible as trade dress. See Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (D.C. Iowa 1982), aff'd 721 F.2d 253 (8th Cir. 1983) (holding that because farmers prefer to match their loaders to their tractors, the doctrine of aesthetic functionality barred John Deere from protecting its unique green color); M-5 Steel Manufacturing, Inc. v. O'Hagin's, Inc., 61 U.S.P.Q.2d 1086 (T.T.A.B. 2001) (holding that the shape of a roof vent is functional because the vents blend in or match the roof tiles with which they are used better than alternative products).
But the Federal Circuit rejected such a concept for design patents. The whole point of a design patent is to protect new aesthetic designs, which designs may enhance the salability, and hence the market demand, for those products. It would be perverse to bar design patent protection because of the aesthetic appeal of the design drives market demand.
To hold that designs that derive commercial value from their aesthetic appeal are functional and ineligible for protection, as ABPA asks, would gut these principles. The very thing . . . for which [the] patent is given, is that which gives a peculiar or distinctive appearance, its aesthetic. If customers prefer the “peculiar or distinctive appearance” of Ford’s designs over that of other designs that perform the same mechanical or utilitarian functions, that is exactly the type of market advantage ‘manifestly contemplated by Congress in the laws authorizing design patents.
Lessons from the ABPA Case
The ABPA decision highlights a potential powerful employment of design patents.
Manufacturers of products that have components that may need to be replaced (either from wear and tear through ordinary use, or repair from an accident) can implement strategic use of design patents to secure market demand in the after-market. Design patents for components are valid, even if there is demand to use them for replacements for the original product.
A design patent would provide the manufacturer a limited monopoly over such matching parts, which it either could manufacture itself, or license to a parts manufacturer for royalties.