The district court granted summary judgment for Columbia Sportswear, deciding that Seirus\u2019s HeatWave products infringed Columbia\u2019s design patent.[4]<\/a> The standard for determining whether a design patent has been infringed is the \u201cordinary observer\u201d test.[5]<\/a> Essentially, if one design copies a particular feature of another in a way that would deceive an ordinary observer into thinking they were the same, then the first patented design is infringed by the other.[6]<\/a> The district court used the ordinary observer test and also relied on a previous case, L.A. Gear, Inc. v. Thom McAn Shoe Co.<\/em>, in which it was decided that logos should be \u201cwholly disregarded\u201d in a design infringement analysis.[7]<\/a> L.A. Gear<\/em> created the long-standing precedent that infringers should not be able to escape liability for design patent infringement by simply adding a logo to a copied design.[8]<\/a> Contrary to this precedent, Seirus argued that there were \u201csubstantial and significant differences between the two designs,\u201d namely that Seirus\u2019s waves were interrupted by the use of their logo and were of different orientation, spacing, and size as compared to Columbia\u2019s waves.[9]<\/a> The district court ultimately agreed with Columbia\u2019s argument that the two designs would be essentially the same without Seirus\u2019s logo.[10]<\/a><\/p>\n In 2019, Seirus appealed, and the Federal Circuit reversed and remanded the district court\u2019s grant of summary judgment.[11]<\/a> Unlike in L.A. Gear<\/em>, the Federal Circuit, in this case, gave more weight to logo placement and determined that all factors can be used to determine the overall visual impression to the ordinary observer.[12]<\/a><\/p>\n The Federal Circuit\u2019s decision shredded the precedent that L.A. Gear<\/em> established, muddying the waters between design patent and trademark law. Design patent law is meant to protect \u201cthe non-functional aspects of an ornamental design displayed in a patent.\u201d[13]<\/a> A trademark is \u201cany word, phrase, symbol, design, or a combination of these things\u201d that is used in conjunction with a product to establish that the product is associated with a certain brand\/company.[14]<\/a> But if a logo can be protected as a non-functional part of a design that an ordinary observer is evaluating, why would trademark protection also<\/em> be needed? This decision has the possibility of closing the door on a large area of trademark law. And it also has the possibility of limiting which design patents actually get protection from infringers. The addition of a logo to a design patent defeats the purpose of the ordinary observer test that has been characteristic of design patent law. If logos are a contributing factor in distinguishing between two design patents, then an ordinary observer will attribute the dissimilarities to the logo each and every time, regardless of what the underlying products actually are.<\/p>\n On remand in August 2021, a jury determined that Seirus\u2019s design did not infringe Columbia\u2019s design patent.[15]<\/a> The fear now is that the Federal Circuit\u2019s decision will allow for endless infringement if a logo is given weight in such cases. If the ordinary observer cannot differentiate the two underlying designs, to begin with, then the logo should not be the way around infringement. Further clarity from courts on logo placement within design patents will be necessary in future cases to protect these two separate areas of intellectual property.<\/p>\n <\/p>\n <\/p>\n <\/p>\n <\/p>\n [1]<\/a> A Diversified Revenue Base<\/em>, Columbia Sportswear Co. (2022), https:\/\/investor.columbia.com\/company-information.<\/p>\n [2]<\/a> Columbia Sportswear Competitors<\/em>, Comparably (2022), https:\/\/www.comparably.com\/companies\/columbia-sportswear\/competitors.<\/p>\n [3]<\/a> See<\/em> Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1122\u201323 (Fed. Cir. 2019).<\/p>\n [4]<\/a> Id.<\/em> at 1122.<\/p>\n [5]<\/a> Id.<\/em> at 1129.<\/p>\n [6]<\/a> Id.<\/em><\/p>\n [7]<\/a> Id.<\/em> at 1131.<\/p>\n [8]<\/a> See<\/em> Columbia Sportswear<\/em>, 942 F.3d at 1131.<\/p>\n [9]<\/a> Id.<\/em> at 1130.<\/p>\n [10]<\/a> Id.<\/em><\/p>\n [11]<\/a> Id.<\/em> at 1128\u201329, 1133.<\/p>\n [12]<\/a> Id.<\/em> at 1131.<\/p>\n [13]<\/a> Design Patent<\/em>, Legal Info. Inst. (July 2020), https:\/\/www.law.cornell.edu\/wex\/design_patent.<\/p>\n
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