Justices permit copycat designs

Supreme Court reduces trademark protection on goods

March 23, 2000|By Lyle Denniston | Lyle Denniston,SUN NATIONAL STAFF

WASHINGTON -- In a clear victory for discount superstores, the Supreme Court cut back sharply yesterday on trademark protection for consumer product designs that are copied by cheaper knockoffs.

A product design, the court ruled unanimously, is eligible for trademark protection only if it in some way indicates the source -- that is, the company that makes and sells it. The design itself cannot qualify.

The ruling came under a federal law, the Lanham Act, that prohibits a word, name or symbol on a product from being copied if the copying would cause consumers to be confused about who made the item.

That protection has been extended to such well-known names as Nike on sports gear, symbols such as the Nike swoosh and packaging such as the classic Coke bottle. Yesterday's ruling was a reaction to recent lower court rulings that extended the protection to the product's design itself, on the theory that the design is a form of what lawyers call "trade dress."

Samara Brothers Inc., a maker of children's clothes that has sewn-on figures of hearts, flowers, and fruits, sued Wal-Mart Stores Inc., and won $1.6 million for infringing on its design of those figures. Wal-Mart sold cheaper versions of the clothing with those designs.

Overturning that verdict, the court said that a product design is like the color of a product: It can never be distinctive enough by itself to show its source, under trademark law.

"In the case of product design, we think consumer predisposition to equate the feature with the source does not exist," the court said in an opinion by Justice Antonin Scalia.

If the design does not somehow indicate its source, in a way that the consuming public recognizes, it cannot get trademark protection, the court ruled.

Protection under trademark law for designs has been attractive to business because it has been available for trade dress even without formally registering the mark. While yesterday's ruling takes away much of that protection, companies that wish to protect their designs have other alternatives left, according to Andrew L. Deutsch, a New York City lawyer with a Baltimore-based law firm who is a specialist in intellectual property law.

Companies can apply for patents on designs, he said, but the process is not easy because they must prove the design is truly novel. Moreover, a patent is in effect for a set period: 17 years.

Copyright protection is also available for a specific design -- though not for a general "look," Deutsch said. Copyrights last for the life of the creator, plus 70 years.

Copyright is the easiest to do, of the three types of protection -- trademark, patent, copyright, he said. And, he said, anyone who makes a substantially similar design can be sued for infringement.

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