In US Design Patent cases, placement of a logo might have a big impact on infringement

by Joshua B. Goldberg (Nath, Goldberg & Meyer – U.S.A.)

It has long been the case in the U.S. that design patent infringement is not avoided by “labeling.” Specifically, a design patent infringer in the US cannot avoid infringement by copying another’s design but putting their own name on it. However, the US Court of Appeals for the Federal Circuit (CAFC) has decided that that this precedent does not necessarily preclude design patent infringement for a product having a logo in a different position. Rather, this is seen as a “material issue of fact” that must be decided by a jury.

In the recent case of Columbia Sportswear v. Seirus Innovative Accessories, (Fed. Cir. 2019),, Columbia asserted infringement of Design Patent No. US D657,093, directed to a heat reflective material, by Seirus. After winning on summary judgment, a jury awarded $3 million in damages to Columbia for design patent infringement.

On appeal, the CAFC vacated the summary judgment decision, holding the district court improperly decided disputed issues of material fact. Specifically, the CAFC noted:

Design patent infringement is a question of fact. . . . The “ordinary observer” test is the sole test for determining whether a design patent has been infringed. Egyptian Goddess (Fed. Cir. 2008) (en banc). The test originates from the Supreme Court’s Gorham decision, which provides that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham Co. v. White, 81 U.S. 511, 528 (1871)). . . . The ordinary observer is considered to be familiar with prior art designs, and “[w]hen the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art.” Crocs (Fed. Cir. 2010).

Seirus’ main argument was that the location of its logo raised a sufficient question of fact that entitled it to a jury verdict. The CAFC agreed with Seirus that the logo should be considered as a part of the non-infringement analysis. Specifically, in distinguishing certain precedential decisions, the CAFC noted the fact finder was not prohibited “from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one. Indeed, the fact finder is tasked with determining whether an ordinary observer would find the ‘effect of the whole design substantially the same.’”

This case has now been remanded to the District Court for a likely jury trial on this issue.