“Good Artists Borrow, Great Artists Steal” – Apple v. Samsung and Trade Dress in the Smartphone Era

By   /   April 17, 2012 

 

“Good Artists Borrow, Great Artists Steal”1
Apple v. Samsung and Trade Dress in the Smartphone Era

Brett Alazraki*

 

Apple Inc. (“Apple”), the computer and cell phone manufacturer, recently brought a lawsuit against Samsung Electronics Co. (“Samsung”), the electronics manufacturer, alleging that numerous Samsung products violate various Apple patents, trademarks, and trade dress on Apple’s iPhone and iPad line of products.  The magnitude of the issues makes this lawsuit the most significant action to date in the cell phone and tablet industry.  According to one recent survey, Samsung holds a 23.8% segment of the global smartphone vendor market share as compared to Apple, which holds a 14.6% segment of the market, rendering them first and second overall respectively.2  This suit addresses the critical legal questions that exist between Apple’s iOS software, which powers the iPhone, and Google’s Android software system, a variation of which is used by Samsung, in making the phones and tablets at issue.

Trade dress is, by definition, the overall look and feel of an entire product.3  In this case, the interface and overall product design, meaning its aesthetic features, constitutes its trade dress.  It would be impossible to apply any standard trade dress analysis broadly to a smartphone because it has two distinct elements to protect: the product design and the interface design.  Product design has been analyzed in numerous court decisions, including two Supreme Court cases.4  Interface design is a new area that is more complex than simply the look and feel of a product.  The interface design involves icons and home screens, as well as color, orientation and other trade dress staples.  The product design can be evaluated under a normal trade dress standard, but the interface design must be analyzed differently, especially when focusing on the “look and feel” of an overall interface design.  To scrutinize this interface, it is best to examine how courts have analyzed the trade dress of a website interface, specifically the decision in Conference Archives, Inc. v. Sound Images, Inc.5  This is so because even when a smartphone interface and website interface are not identical, a website interface is currently the most similar area of trade dress with established law.  According to this new approach, Apple would most likely lose its claims for iPhone product design and prevail on its trade dress infringement for the iPhone’s interface design.

In discussing this lawsuit, most technology and news websites often overlook the numerous trade dress allegations involved in Apple v. Samsung and focus instead on the patent issues.6  No cell phone manufacturer has ever sued a competitor for trade dress infringement probably because such a claim would have been difficult to prove for earlier cell phones.  Many of the older cell phones featured dial pads, a likely functional design.  With the evolution of cell phones into smartphones, the screen has become the center of attention and has opened new areas of intellectual property.

Part I of this paper examines the substantive trade dress protection for product design and interface design.  It applies this law to Apple’s claims in Part II and discusses current developments in Apple v. Samsung in Part III.  Specifically, this paper focuses on the iPhone and Galaxy S line of phones.7  The possibility of trade dress infringement seems to be the strongest and is examined for both the product design and the interface design.  While reading this paper, it is important to remember that Apple v. Samsung is ongoing litigation and is in a very early stage of this process.  Very little evidence has been entered by either side and some of the allegations made by each side have not yet been supported by evidence.  As this case is before a district court within the Ninth Circuit, most of the discussion of trade dress law will focus on Ninth Circuit decisions.

In its complaint, Apple claims that Samsung products have infringed its entire line of iPhone designs.8  This includes the original iPhone, the iPhone 3G,9 the iPhone 4 and the iPod touch.10  Apple currently owns three registered trade dresses for the iPhone.11  These registrations protect the iPhone’s product design and the layout of the interface, including the icons and their arrangement.12  In addition, Apple has one trade dress application for the iPhone 4.13

Apple claims that Samsung’s products, specifically, the Galaxy S line of phones are infringing upon the iPhone’s trade dress. 14  Apple claims that Samsung is unfairly benefiting from this infringement by using “Apple’s reputation and success,” giving Samsung’s infringing products an added value.15  Apple claims that it “will suffer and is suffering irreparable harm from Samsung’s infringement” because “Apple’s invaluable goodwill is being eroded by Samsung’s continuing infringement.”16  Apple, in both claims, asks the court for an injunction, damages and attorney’s fees, pursuant to sections 1116 and 1117(a) of the Lanham Act.17

 

I. Trade Dress Analysis

To bring a successful trade dress infringement claim, a plaintiff must establish  three basic elements: “(1) the trade dress is inherently distinctive or has acquired distinctiveness through secondary meaning; (2) there is a likelihood that the public will be confused by the infringing use; and (3) the trade dress is nonfunctional.”18  Apple brought claims against Samsung for registered and unregistered trade dress infringement, both of which require similar analysis.  The major difference is that with regard to infringement of a registered trade dress, “registration is prima facie evidence of the mark’s distinctiveness.”19  In addition, in the case of trade dress applications, applications are considered protectable as if registered.20

[T]he filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority . . . in connection with the goods or services specified in the registration against any other person . . . who, prior to such filing - (1) has used the mark; (2) has filed an application to register the mark which is pending or has resulted in registration of the mark.21

A registered trade dress will also provide constructive notice that the mark registered has been protected.22  Apple’s registrations and applications for trade dress give Apple a strong start to proving trade dress infringement by showing that there is evidence of distinctiveness.  However, this presumption is rebuttable.

Most trade dress cases are decided based on a design of a product and trade dress protection for a product design, such as a phone’s physical design, is not very controversial.23  However, protection for the look and feel of an interface is a much more debatable topic.  In fact, the Western District of Washington went so far as to call the interface trade dress, a novel legal theory, and stated that in 2007, “there [were] more articles supporting trade dress protection for the ‘look and feel’ of websites than there are published cases deciding the merits of this theory.”24

The look and feel of a website is the best modern approach to analyze a phone interface under trade dress.  Prior interface cases involved computer interfaces, which were designed only for a specialized field and not the public at large.25  As devices like computers have become more common, older cases dealing with interfaces cannot apply because computers are no longer specialized and interfaces must be examined through the eyes of an ordinary consumer.  As computers and technology have evolved, the legal standard applicable to these interfaces must evolve as well.  For instance, “[W]eb sites and other electronic media present a new frontier for the protection of intellectual property rights.  While protection of source code and other technological processes have found refuge in copyright or patent law, protection of the ‘look and feel’ of a web site remains unclear.”26  Until a court makes a firm ruling on trade dress protection for the interface of a phone, the most analogous area of trade dress currently available is a website interface.  Since Apple brought trade dress infringement claims against Samsung regarding both the design of the phone and the phone’s interface, the easiest way to analyze Apple’s claims is to separate the product design trade dress from the interface trade dress.  Apple could then win or lose an infringement case based on either the phone’s product design or the interface design.

A website interface and a smartphone interface are different entities.  A website interface is only part of a person’s interaction with a computer while the smartphone interface represents an individual’s entire interaction with the phone.  The trade dress analysis that courts have created for a website interface can be extrapolated and applied to smartphones in the absence of judicial decisions on the subject.

For the purposes of this analysis, the phone design for the iPhone will consist of a rectangular device with rounded corners and one button centered on the bottom of the device.  The interface of the device will consist of “a matrix of colorful square icons with evenly rounded corners and a bottom row (or “dock”) of colorful square icons set off from the other icons, which does not change as other pages of the user interface are viewed.”27

A. Product Design Trade Dress Infringement

1. Functionality

Functionality is the first element of a trade dress infringement claim and according to the Lanham Act and the Supreme Court, any design which is found to be functional is not protected.28  A defendant in an infringement suit will often use functionality as a defense, claiming that the product’s design is functional and therefore not protectable.29  Functionality is an issue of fact and not of law.30

Functionality has been defined as “a product feature [that] is essential to the product’s use or . . . affects the cost and quality of the product.”31  However, functionality is much more complicated than its importance to the product or its cost and quality, since  “[f]unctional features of a product are features ‘which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.’ ”32

The courts have established several factors to determine whether a design is functional.  The Ninth Circuit uses four factors to determine functionality, all of which should be weighed equally, with no one particular factor being dispositive.33  The four factors are: “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.”34  The design alternative is an important factor, especially in the area of cell phones.  Based on the sheer number of existing cell phone designs, alternative designs are clearly available.

An example of a product which is functional can be seen in a water bottle design.  In Talking Rain Beverage Co. Inc. v. South Beach Beverage Co.,35 the court applied factors articulated in Disc Golf Ass’n, Inc. v. Champion Discs, Inc.,36 to hold that a bottle design, made to fit onto a bicycle, was functional because the bottle grip was motivated by manufacturing efficiencies and, additionally, was promoted in advertisements of the product as easy to grip.37  A feature motivated by manufacturing ease will make it more likely that the design is functional and not protectable.  If the design is functional, there can be no infringement because there is no protectable trade dress.

2. Distinctiveness

The next factor in determining infringement is distinctiveness.  Trade dress distinctiveness is an area in which the Supreme Court of the United States has made two important decisions.  The Court initially ruled, in Two Pesos, Inc. v. Taco Cabana, Inc.,38 that “[t]he general rule regarding distinctiveness is clear: An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.”39  This statement was later modified by the Court in Wal-Mart Stores, Inc. v. Samara Bros.40

In Taco Cabana, the Supreme Court held that trade dress could be inherently distinctive and did not require secondary meaning.41  The Court asserted that “[e]ngrafting onto § 43(a) [1125(a) of the Lanham Act] a requirement of secondary meaning for inherently distinctive trade dress also would undermine the purposes of the Lanham Act.”42  Eight years later the Court qualified this decision.43  The Court held that unregistered trade dress for product design was only distinctive upon a showing of secondary meaning.44  The Court stressed, in reading the Lanham Act section 1052, that only registered trade dress did not have to acquire secondary meaning.45  The Court distinguished product design from product packaging or configuration, which is the issue in Taco Cabana.46

Section 1057(b) of the Lanham Act speaks to the authority a registered trade dress provides the holder of the mark.

A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.47

Thus, any registered mark or application for registration is considered to have prima facie validity.  If a party seeks to cancel that mark, the party must prove by a preponderance of evidence that the mark should be canceled or not recognized in an infringement action.48

The protection that a registered mark receives is not without limitations.  Registered marks or trade dress may only be contested for five years from the date of registration.49  After five years of continuous use has expired the trade dress is extremely difficult to cancel and must meet certain requirements of section 1064.50  These requirements include the mark becoming generic; the mark is not controlled by the owner of the registration; the mark is allowed to be used for reasons other than to certify the mark; or the owner of the mark discriminately refusing to certify certain uses of the mark when the person using the mark is following standards and conditions.51

Courts have laid out several factors to determine distinctiveness.  As the Supreme Court noted in Taco Cabana, numerous circuit courts have applied the “Friendly Factors,” originally intended to determine distinctiveness of trademarks, to trade dress.52 Arranged in ascending order as to which is more likely to show distinctiveness the factors are: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.”53  While it may be difficult to apply these factors to trade dress, the Supreme Court has given some guidance in Taco Cabana.  The Court stated that if the mark or design through one of the “latter three categories” tended to show the identity of a particular source there was a greater chance of distinctiveness.54  Of course, if the mark falls in the first two categories the mark is not distinctive.

The Supreme Court further distinguished Taco Cabana in ruling that there was a qualification between product design and product packaging design, or something like product packaging design.55  The Court emphasized that product design is not inherently distinctive.56  The Court determined this by stating that “even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing.”57  The Court furthered this by asserting that consumers will be harmed because there will be no competition “with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.”58  The Court realized that this decision might be in conflict with the decision in Two Pesos and makes it clear that there is a distinction between product design and product configuration, such as how a restaurant was decorated or configured.59  The Court further clarified this conflict by stating that creating this distinction will only need to be done on rare occasion.60

If the trade dress is not registered, it is significantly more difficult to establish distinctiveness as secondary meaning is required.61  Secondary meaning is a question of fact.62  The Ninth Circuit has determined several factors to determine if a product’s design has acquired secondary meaning:

(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer; (2) the degree and manner of advertising under the claimed trademark; (3) the length and manner of use of the claimed trademark; (4) whether use of the claimed trademark has been exclusive; (5) evidence of sales, advertising, and promotional activities; (6) unsolicited media coverage of the product; and (7) attempts to plagiarize the mark.63

A party wishing to prove that a product has acquired secondary meaning usually employs numerous tools, including surveys and expert witnesses.  Without secondary meaning there can be no distinctiveness and no trade dress infringement.

3. Likelihood of Confusion

In order for there to be trade dress infringement, there must also be a likelihood of confusion on the part of the consumer.64  The courts use several factors to determine if there is a reasonable chance a consumer would be confused between the two products.  The likelihood of confusion factors for trademark infringement in the Ninth Circuit were established in AMF Inc. v. Sleekcraft Boats.65  However, these factors have been applied to trade dress by other Ninth Circuit cases such as Vision Sports, Inc. v. Melville Corp.66  The factors are:

1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant’s intent in selecting the mark; and 8. likelihood of expansion of the product lines.67

A Ninth Circuit court will consider all of the factors to determine whether there is likelihood of confusion.  No one factor will determine the outcome of a court’s determination as to whether there is likelihood of confusion.

Determining likelihood of confusion can be either a question of fact or a question of law.68  In Sleekcraft, the Ninth Circuit asserts that the circuit should follow whichever standard regarding a question of fact or law that the district court sets, unless the decision is completely baseless.69  If the trade dress in question is shown to be non-functional, distinctive and there is a likelihood of confusion, a court will find that there is an infringement.

B. Website Trade Dress – Interface

The trade dress of a website, as discussed earlier, is a relatively new idea and has only been dealt with in a handful of cases.70  Blue Nile, Inc. v. Ice.com, Inc.,71 is the first case that dealt with the notion of websites as trade dress.  However, it was not until Conference Archives, Inc. v. Sound Images, Inc.,72  in 2010, that a court seriously examined the implications of trade dress in a website interface.73  This Western District of Pennsylvania decision examined in depth the parameters of the trade dress of a website.

The facts of Conference Archives are not analogous to Apple v. SamsungConference Archives does not involve a cell phone, nor does it involve any allegation of violations of the Lanham Act.  The plaintiff and defendant in Conference Archives had been in business together before litigation when the plaintiff produced a website for the defendant.74  The two parties eventually ceased their business relationship; the defendant then copied a portion of the website the plaintiff produced.75  The issue of the “look and feel” of a website, along with other categories of trade dress infringement, became important once both parties submitted motions for summary judgment.76  While the plaintiff raised issues of copyright and trademark infringement, the court determined that the “look and feel” of the website should be examined under some sort of trade dress analysis.77  Despite the fact that the plaintiff did not raise any trade dress infringement claims, Conference Archives presents a framework for how to analyze a website under trade dress infringement.

Conference Archives examined multiple parts of a website’s overall design, which included what the court considered are the three “technical elements” of a website: color, orientation and code elements.78  The court determined it would be helpful to separate “look and feel” in this area, commenting that “[t]he ‘look’ comprises aspects of a web site’s design including the colors, shapes, layouts, typecases, and shapes.  While the ‘look’ can be readily understood under existing trade dress doctrines, the ‘feel’ presents a new wrinkle.”79  Conference Archives discussed the numerous layers that exist on a website: the “visual design” and the “interface design.”80  The court asserted that the “interface design” is the feel of the website.81  In addition, the court went so far as to call the website interface a graphical user interface.82  The court stated that this “look and feel” of a website is precisely what trade dress is designed to protect.83    The court emphasized that protecting this sort of trade dress promotes growth, and that a designer will be more likely to create a better interface without the threat of it being freely copied.84

To determine trade dress infringement, the court in Conference Archives engaged in a trade dress analysis as discussed in section A with some minor changes.  In terms of functionality, the court realized that many aspects of a website’s “look and feel” are functional, and determined that one functional element of a website “do[es] not by necessity preclude trade dress protection.”85  Functionality would only be a real consideration when the “look and feel” “made viewing the site owner’s goods more efficient or facilitated the placing of orders on the owner’s site.”86  According to the court “[a]s long as there are alternate ways to design a web site, beyond the arrangement protected by the trade dress, the site’s interface should not be considered functional.”87  This analysis takes into account both the look and feel of a website.

In regard to distinctiveness, the court looked at standard factors established by the courts and added the thoughts of Professor Kurt Saunders.88

Professor Kurt Sa[u]nders suggests that in the context of web sites, the “the issue of distinctiveness will be considered in the aggregate and a court would likely consider the entire layout of the website interface.”  Further, Saunders remarks that “if a user would recognize the source of a website by the unique audiovisual design or its overall combination of features and colors, then that website is distinctive and capable of trade dress protection.”89

The court agreed with Saunders that it is important to examine the entire website and must lead a consumer to recognize the source, as with regular distinctiveness.  One component of the website cannot make it recognizable under trade dress.  Rather, distinctiveness is achieved when all of the elements of a website are combined.  The court in Conference Archives believed that “proximity of products considered” can be considered for likelihood of confusion.90  The court declared that if the products are competitive, a customer is more likely to be confused by a similar interface.91

While many other cases have examined website trade dress none examined it in such detail as Conference Archives, including Blue Nile, the first case to mention it. 92  Conference Archives provides a basis to examine the trade dress of a website and through that, the trade dress of a user interface in a device such as a cell phone.  Conference Archives presents a thorough examination of trade dress in a website interface, and the standard the court establishes can be used for any number of interfaces.  This case provides a solid foundation upon which to base analysis for trade dress infringement for the variety of interfaces human beings use on a daily basis.

Smartphone interfaces and website interfaces are not the same.  However, as discussed earlier, there is no legal standard for trade dress in cell phones.  Conference Archives should be applied as a framework to analyze smartphone interface trade dress infringement claims.  The established law in the area of website interface gives courts the context to analyze smartphone interfaces.  The decision in Conference Archives is a starting point for a smartphone interface analysis.  By framing an interface as more than just the overall look and feel, and by separating the look and feel of a website, Conference Archives establishes a framework that could be applied to any interface, including a smartphone interface.

 

II. Apple’s Likelihood of Success

The next step is to apply trade dress standards and case law to Apple’s claims against Samsung.  In addition, as Apple v. Samsung is an ongoing action; any comments or decisions made by Judge Koh will be helpful to determine Apple’s likelihood of success.

A. Are Samsung’s Devices Infringing?

1. Product Design

To determine if Samsung’s Galaxy S line infringes upon Apple’s iPhone trade dress, it is necessary to analyze the iPhone under the applicable standards, namely functionality, distinctiveness and likelihood of confusion.  In addition, it is essential to separate the product design from the interface design.

The first factor of trade dress infringement is functionality.  Samsung simply claims that the iPhone’s design is functional without submitting any supporting evidence.93  Applying the Disc Golf factors: (1) no evidence has been presented to show there is a utilitarian advantage to the iPhone’s design; (2) based on the sheer number of other smartphones on the market, alternative designs are available; (3) the advertising of Apple does not tout the utilitarian advantage of the iPhone design; and, (4) Samsung has presented no evidence that the design used by Apple is a result of manufacturing efficiencies.  It would be difficult for Samsung to attempt to prove that the iPhone’s design is functional and it would need to obtain an internal Apple document that explains that the iPhone’s design is utilitarian.  Therefore, a court should find that the design of the iPhone is not functional and, consequently protectable, if the factors are indeed satisfied.  The analysis of trade dress can continue on to distinctiveness.

Since Apple has registered and applied for registration for the iPhone line’s product design, it is presumed that Apple’s products have distinctiveness.94  Samsung has yet to offer any evidence that Apple’s product design is not distinctive, but that could change.  Samsung would have to meet the requirements laid out in section 1064, such as demonstrating that the Apple mark has become generic or Apple is no longer in control of the mark.  Samsung could show that Apple no longer controls the iPhone trade dress as there are so many similar smartphone designs in use, including Samsung’s design.  However, if the Court does not invalidate the Apple registration, Samsung will have admitted to infringing the iPhone trade dress.  The iPhone line does not require secondary meaning as it is registered trade dress.  Any secondary meaning acquired by the iPhone will only help Apple.  Samsung may argue that the iPhone’s design is merely descriptive and is therefore not protectable.  Samsung would first need to submit evidence of some sort to express this.  Despite of any evidence Samsung might offer, it is likely that a court would find the iPhone to have secondary meaning as a consumer would probably associate the design of an iPhone with Apple, but survey evidence must be presented to verify this.  Apple is certainly of the belief that its products have secondary meaning, based on its television advertisements for the product.  A recent advertisement for the iPhone 4S portrays people using the iPhone and does not state or display the name of the product or of Apple until the very end of the advertisement.95  Apple likely believes that consumers will be able to associate the product in the advertisement with its company without directly identifying the product.  Any evidence Apple could produce to show that the iPhone has acquired secondary meaning would only strengthen its argument to show that the Galaxy S line infringes on Apple’s trade dress.

The final component of trade dress infringement is likelihood of confusion.  Due to the fact that Apple will probably be unable to prove likelihood of confusion, there will be no infringement under the Ninth Circuit applicable standards established in Sleekcraft:96 (1) the iPhone trade dress is fairly strong; (2) the goods are in the same market so they are proximate; (3) the marks have some similarities but, as will be shown later, have several key differences; (4) no evidence of actual confusion has been presented; (5) the same marketing channels, television and print, have been used; (6) the average purchaser will likely walk into a cell phone store and buy a phone without much research; (7) Samsung has not been shown to have any intent to copy Apple; and (8) the likelihood of expansion of product lines is not relevant since both products are smartphones.  There will be no evidence of actual confusion because the marks are not similar, despite some resemblances.  This can best be seen by viewing the two products side by side, although it is not proper under the Lanham Act to analyze marks side by side.97

As can be seen in a photo comparing the two products,98 several key design aspects will differentiate the two products leading consumers not to be confused.  First is the Samsung addition of two “soft buttons” adjacent to the large center button.99  Next is the Samsung logo on the top part of the phone.  Additionally, the colors of the two phones are different.  Finally, the “reverse chin,” or the protrusion on the bottom of the Samsung phone does not exist on the iPhone.  Although more evidence would have to be presented by Samsung to demonstrate this fact, the phones are sufficiently dissimilar enough to prevent likelihood of confusion.

2. Interface design of the iPhone

Interface design follows the same basic concepts as product design trade dress but scrutinizes it through a different perspective as laid out by Conference Archives.  The first major difference with product design is how look and feel is examined.  Color, orientation and code elements are all examined.  While code elements will have to be determined at discovery, the color and orientation can be analyzed by simply studying the interfaces.  This is the “look” of the website.  The colors of the interfaces are very similar with grey and black being the predominant background and icons of similar, although not precisely the same colors.  In terms of orientation, the interface is almost identical.  Both interfaces have a bottom row of four icons which are shown on every screen.  There are other icons, similar to the bottom row, but change depending on the screen that is being shown on the display.  The key differences in orientation are the top bar of both phones, which have the time and signal status in different locations, and the visual indication that specifies which particular home screen the phone is displaying though dots.

Conference Archives discusses how the “feel” of a website interface is more complicated than the “look.”100  The feel includes intangible and interactive elements.101  One of the clearest examples of the feel of a smartphone can be shown through the notification bar in the Samsung device.  The Samsung top bar or notification bar may be pulled down to show a notification “tray.”  The original iPhone and the iPhone 3G do not contain any such feature.  It was not until a recent software upgrade, iOS version 5, that an Apple device contained such a feature.  In addition, the trade dress registration contains no mention of such a notification tray.  This brings to light something alluded to in Conference Archives, but never discussed, the many screens or menus of a website.  Any smartphone has several home screens in addition to menus and other interfaces.  While some of these menus and other interfaces may be better examined under a copyright framework, the menus still have a look and feel.  Judge Koh must determine how deep into the phone’s interface she wishes to examine and compare.  The simplest solution would be for a court to just look at home screens, completely ignoring menus and other interfaces.

A related additional problem that courts must examine is that every smartphone can, to some extent, be customized.  While the original iPhone’s home screen could not be customized, later versions could and all iterations of Samsung’s style of Android could be customized.  There is no one sole screen to use for comparison as all users of an iPhone of Galaxy S phone may have their home screens set up differently.  This issue may be resolved by examining which home screen the company is advertising.  Otherwise, a court would have to analyze endless possibilities.

Another key difference in “feel” between the two user interfaces is the capability of the Samsung device to display a widget on the home screen.102  Apple’s phones have no such capability.  However, as mentioned earlier not all Samsung phones display widgets.  Widgets are added onto the home screen by a user.

The interface of the iPhone is clearly not functional as there are numerous other designs available.103  The interface of the iPhone is distinctive because it has a registered trade dress and Samsung has yet to proffer any evidence to suggest that this trade dress is not distinctive.  Under the standard laid out by the Supreme Court in Wal-Mart, the interface is likely both a configuration and a design.  Conference Archives discusses that an interface is both a design and configuration.  In terms of secondary meaning, however, this may not matter as Samsung has yet to offer any evidence to show the lack of secondary meaning that was presumed upon Apple’s trade dress registration.  Additionally, as discussed earlier, the interface may have acquired secondary meaning.  It will be more difficult in the interface design for Samsung to prove there is no likelihood of confusion.  As discussed earlier the orientation and colors are very similar.  However, Samsung’s strongest argument at trial would be to demonstrate the significant differences in the feel of the two interfaces.  The look may be similar but the feel has numerous key variations, such as widgets and a notification bar on the Galaxy S.  The differences in feel discussed above will give Samsung an opportunity to show just how distinguished the feel of the two interfaces are.  If out of context a consumer sees just the interface of the iPhone and the Galaxy S, it is very possible that consumer will be confused as to which product belongs to Apple.  Of course, Apple would need survey evidence to demonstrate this.  The infringement on Apple’s interface design trade dress would only exist if a court took into account the basic home screen.104

B. Recent Developments in Apple v. Samsung Litigation

Apple v. Samsung is ongoing litigation in which new steps are taken every day.  The most recent decision was issued on December 2, 2011 when Judge Koh denied Apple’s motion for a preliminary injunction against all of Samsung’s infringing products.105  The decision admitted that some of Apple’s design patents were valid, and that Samsung infringed upon these patents.  However, “Apple has failed to establish that it is likely to be irreparably harmed in the absence of a preliminary injunction.”106  Unfortunately for the purposes of this Article, Judge Koh made no ruling or mention of trade dress.  Judge Koh might take this approach, that Apple has not been irreparably harmed by Samsung’s infringements, and apply it to the trade dress infringement claims.  This possibility could lead Judge Koh to rule that although Samsung’s products violate the product design or interface design of Apple’s products, that Apple has been unable to show irreparable harm by the infringements and that an injunction would be inappropriate.  However, this is only a hypothetical and Judge Koh may apply a completely different rationale to the area of trade dress.

After a contentious trial, a jury rendered its verdict in the first Apple v. Samsung case on August 24, 2012.  The jury decided overwhelmingly in favor of Apple, awarding Apple over one billion dollars in damages.107  With respect to trade dress, the jury found that Apple’s registered iPhone and unregistered iPhone 3G trade dress is protectable.108  The jury ruled that six of Samsung’s seventeen allegedly infringing products infringed the iPhone’s registered trade dress and five of Samsung’s products infringed the iPhone 3G unregistered trade dress.109  However, the jury also decided that Apple’s unregistered trade dress of the iPad and iPad 2 was not protectable and therefore Samsung’s products were not infringing.110  The jury’s verdict  on the iPad and iPad 2 trade dress leaves open the possibility that, barring Apple’s registration of  trade dress for the iPad, Apple competitors may use the iPad’s look and feel in creating their own tablets, as long as they do  not infringe on any of Apple’s other  intellectual property.

 

III. Conclusion

The best way for a court to determine whether there is a violation of trade dress in a smartphone will be to apply a new analysis in which courts separate product design, trade dress and interface design trade dress.  In Apple’s action against Samsung for trade dress infringement and dilution, Apple should lose the product design trade dress claim for the iPhone.  Apple could likely prevail in the action for infringement of the iPhone’s design interface based on the basic home screen of the two products.  An injunction would then be issued against Samsung’s Galaxy S line and any Samsung phone that uses Samsung’s Touchwiz interface.

 

*  Brett Alazraki is a smartphone “enthusiast” and a second year law student at Touro College Jacob D. Fuchsberg Law Center.

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Footnotes:

  1. Brian Barrett, Steve Jobs, 1996: “Good Artists Copy, Great Artists Steal”, Gizmodo (Mar. 2, 2010, 2:13 PM), http://gizmodo.com/5483914/steve-jobs-1996-good-artists-copy-great-artists-steal/.
  2. Darren Murph, Samsung claims top spot in global smartphone shipments for Q3 2011, Apple slips to number two, Engadget (Oct. 28, 2011, 9:37 AM), http://www.engadget.com/2011/10/28/samsung-claims-top-spot-in-global-smartphone-shipments-for-q3-20/.
  3. Gateway, Inc. v. Companion Prods., Inc., 384 F.3d 503, 507 (8th Cir. 2004).
  4. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
  5. No. 3:2006-76, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010).
  6. See, e.g., Erik Kain, Apple Sues Samsung In US Court, Forbes (Feb. 12, 2012, 10:17 AM), http://www.forbes.com/sites/erikkain/2012/02/12/apple-sues-samsung-in-us-court/.
  7. This paper does not focus on trade dress dilution, which is also alleged by Apple against Samsung.
  8. Amended Complaint and Demand for Jury Trial (hereinafter “Amended Complaint”), Apple Inc. v. Samsung Electronics Co., Ltd., No.11-cv-01846-LHK (N.D. Cal. June 16, 2011), 2011 WL 2422278 (alleging infringement of the iPad trade dress by Samsung; however, this paper focuses on the iPhone).
  9. The iPhone 3G trade dress encompasses the iPhone 3GS trade dress as their design is the same.  It would also seem Apple would group the iPhone 4S with the iPhone 4 trade dress; however, the iPhone 4S was released after the initiation of this litigation and no amended complaint has been released containing the 4S, possibly because the iPhone 4 and 4S are identical in looks.
  10. Amended Complaint, Apple Inc. v. Samsung Electronics Co., Ltd., No.11-cv-01846-LHK at 19.
  11. Handheld mobile digital electronic devices comprised of a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic personal organizer, pocket computer for note-taking, electronic calendar, calculator, and camera, and capable of providing access to the Internet and sending and receiving electronic mail, digital audio, video, text, images, graphics and multimedia files,  Registration No. 3,475,327.  This mark consists of  “[t]he color gray [which] appears as a rectangle at the front, center of the device. The color black appears on the front of the device above and below the gray rectangle and on the curved corners of the device. The color silver appears as the outer border and sides of the device.”  Handheld mobile digital electronic devices comprised of a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic personal organizer, pocket computer for note-taking, electronic calendar, calculator, and camera, and capable of providing access to the Internet and sending and receiving electronic mail, digital audio, video, text, images, graphics and multimedia files, Registration No. 3,457,218.  The mark consists of “the configuration of a rectangular handheld mobile digital electronic device with rounded corners.”  Handheld mobile digital electronic devices comprised of a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic personal organizer, pocket computer for note-taking, electronic calendar, calculator, and camera, and capable of providing access to the Internet and sending and receiving electronic mail, digital audio, video, text, images, graphics and multimedia files, Registration No. 3,470,983.  The registration states the mark consists of “the configuration of a rectangular handheld mobile digital electronic device with rounded silver edges, a black face, and an array of 16 square icons with rounded edges. The top 12 icons appear on a black background, and the bottom 4 appear on a silver background.”
  12. Id.
  13. U.S. Trademark Application Serial No.85/299, 118 (filed April 19, 2011); U.S Trademark Application Serial No. 77/921,838 (filed January 27, 2010); U.S. Trademark Application Serial No. 77/921,829 (filed January 27, 2010); U.S. Trademark Application Serial No. 77/921,869 (filed January 27, 2010).  All four of these applications have not yet been granted and have a status date of December 7, 2011 given by the USPTO.
  14. Amended Complaint, Apple Inc. v. Samsung Electronics Co., Ltd., No.11-cv-01846-LHK at 41-42.
  15. Id. at 42.
  16. Id.
  17. Amended Complaint, Apple Inc. v. Samsung Electronics Co., Ltd., No.11-cv-01846-LHK at 42-43.
  18. Stephen W. Boney, Inc. v. Boney Services, Inc., 127 F.3d 821, 828 (9th Cir. 1997) (citing Two Pesos, 505 U.S. at 769).
  19. 55 Am. Jur. 3d Proof of Facts 383 (Originally published in 2000) (citing 15 U.S.C.A § 1057(b) (West 2011)).
  20. 15 U.S.C.A § 1057(c) (West 2011).
  21. Id.
  22. Id.
  23. See Devan Designs, Inc. v. Palliser Furniture Corp., No. 2:91CV00512, 1992 WL 511694 (M.D.N.C. 1992) (rejecting a design of furniture as protectable trade dress); L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1129 (2d Cir. 1993) (“Trade dress protection is not limited to the exterior packaging of a product, for ‘the design of a product itself may function as its packaging, serving to distinguish it from other products, and hence be protectable trade dress under § 43(a).’ ”); LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir. 1985).
  24. Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1246 n.8 (W.D. Wash. 2007).
  25. See Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994) opinion supplemented on denial of reh’g, 46 F.3d 408 (5th Cir. 1995) (ruling that software used solely by trained professionals would not be easily confused because of the training and specialization of those using the software).
  26. Conference Archives, Inc., Civil No. 3:2006–76, 2010 WL 1626072, at *1 (W.D. Penn 2010).
  27. Amended Complaint, Apple Inc. v. Samsung Electronics Co., Ltd., No.11-cv-01846-LHK at 9.
  28. 15 U.S.C.A. § 1125(a) (West 2011);  see also Two Pesos, 505 U.S. at 769 (“It is also clear that eligibility for protection under § 43(a) depends on nonfunctionality.”).
  29. See, e.g., Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995) (stating “functional packaging and product designs are unprotected, and the functionality of a design may be raised as a defense to an action for trade dress infringement.”).
  30. Vuitton et Fils S.A. v. J. Young Enters, Inc., 644 F.2d 769, 775 (9th Cir. 1981).
  31. Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987) (citing Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir.1987));  see also Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 863 (1982) (“I am also mindful that functionality is a defense to a suit under § 43(a) of the Lanham Act alleging damages from a competitor’s ‘false designation of origin’ on a good.”); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (stating a color could acquire secondary meaning and be the basis for a trademark).
  32. Vuitton, 644 F.2d at 774-75 (citing International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir. 1980)).
  33. Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998) (citing International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 823 (9th Cir.1993)).
  34. Id.
  35. 349 F.3d 601 (9th Cir. 2003).
  36. 158 F.3d 1002 (9th Cir. 1998).
  37. Talking Rain Beverage Co. Inc., 349 F.3d at 603-04.
  38. 505 U.S. 763 (1992).
  39. Id. at 769 (citing Restatement (Third) of Unfair Competition § 13, cmt. a (Tent. Draft No. 2, Mar. 23, 1990)).
  40. Wal-Mart, 529 U.S. at 216.
  41. Two Pesos, 505 U.S. at 776.
  42. Id. at 774.
  43. Wal-Mart, 529 U.S. at 216.
  44. Id.
  45. Id. at 211.
  46. Id. at 215.
  47. 15 U.S.C.A. § 1057(b) (West 2011).
  48. See Martahus v. Video Duplication Services, Inc., 3 F.3d 417, 422 (Fed. Cir. 1993) (“To establish that VCDS’s registration should be cancelled, VDS had the burden of proving by a preponderance of the evidence that VDS used ‘VDS’ as either a trade name or a service mark prior to VCDS’s first service mark use of ‘VCDS.’ ”).
  49. 15 U.S.C.A. § 1065 (West 2011).
  50. 15 U.S.C.A. § 1065.
  51. 15 U.S.C.A. § 1064 (West 2011).
  52. Two Pesos, 505 U.S. at 768;  see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (“Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful”).
  53. Abercrombie, 537 F.2d at 9.
  54. Two Pesos, 505 U.S. at 768.
  55. Wal-Mart, 529 U.S. at 213.
  56. Id.
  57. Id.
  58. Id.
  59. Id. at 214.
  60. Wal-Mart, 529 U.S. at 215.
  61. Id. at 216.
  62. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 614 (9th Cir. 1989) (citing Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc., 870 F.2d 512, 514 (9th Cir. 1989)).
  63. SG Serv. Inc. v. God’s Girls Inc., No. CV 06-989 AHM, 2007 WL 2315437, at *9 (C.D. Cal. May 9, 2007).
  64. Two Pesos, 505 U.S. at 769.
  65. 599 F.2d 341 (9th Cir. 1979), abrogated by Mattel, Inc. v. Walking Mountain Prod., 353 F.3d 792 (9th Cir. 2003).
  66. Id. at 348-49; see also Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 845-46 (9th Cir. 1987) (“Evidence of actual confusion is persuasive proof that future confusion is likely.”); Vision Sports, Inc., 888 F.2d at 616  (“Likelihood of confusion in the trade dress context is evaluated by reference to the same factors used in the ordinary trademark context. . . strength of the trade dress, similarity between plaintiff’s and defendant’s trade dress, evidence of actual confusion, marketing channels used, type of goods and likely degree of purchaser care, and the defendant’s intent in selecting its trade dress . . . .”) (citation omitted).
  67. Sleekcraft, 599 F.2d at 348-49.
  68. Id. at 347.
  69. Id.
  70. See Blue Nile, 478 F. Supp. 2d at 1246  (“Here, plaintiff seeks protection for the ‘look and feel’ of its website under the Lanham Act.  This is a novel legal theory . . . .”); Faegre & Benson, LLP v. Purdy, 367 F. Supp. 2d 1238 (D. Minn. 2005) (applying regular trade dress analysis to a website); Conference Archives, 2010 WL 1626072, at *7 (“Beyond the sparse case law, the academy has developed a growing body of literature discussing whether the ‘look and feel’ of a web site should be protected as a trade secret under the Lanham Act.”); Mortg. Mkt. Guide, LLC v. Freedman Report, LLC, 2008 U.S. Dist. LEXIS 56871 (D.N.J. July 28, 2008) (holding that visual section of website in question was subject to copyright and not trade dress); Sleep Sci. Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *5 (N.D. Cal. May 10, 2010) (“Because Plaintiff has not adequately explained the ‘look and feel’ of its website, it is not clear to what extent its purported trade dress falls within the scope of copyright.”).
  71. 478 F. Supp. 2d 1240 (W.D. Wash. 2007).
  72. Civ. No. 3:2006–76, 2010 WL 1626072 (W.D. Penn. 2010).
  73. Id.
  74. Id. at *1.
  75. Id.
  76. Id.
  77. Conference Archives, 2010 WL 1626072, at *4.
  78. Id. at *4-5.
  79. Id. at *14.
  80. Id.
  81. Id. (“The ‘feel’ corresponds to certain dynamic navigation elements, including buttons, boxes, menus, and hyperlinks.  These intangible and interactive elements contribute to the feel.”).
  82. Conference Archives, 2010 WL 1626072, at *14 (“The hallmark of a protectable ‘look and feel’ trade dress is a graphical user interface that promotes the intuitive use of the web site.”).
  83. Id. (“The simple layout of Google’s home page, the listing of tweets on Twitter.com, or the organization of photographs and status updates on Facebook.com are all integral to the recognition of their brands, and consequently the firm’s reputation.”).
  84. Id. at *14.
  85. Id. at *17.
  86. Id. (quoting Fred H. Perkins, Alvin C. Lin, What’s Old is New in Web Site Protection: A New Look at the ‘Look and Feel’ Doctrine, 7 NO. 3 Internet L. & Strategy 3, Internet Law & Strategy (March, 2009) § 13:10).
  87. Conference Archives, 2010 WL 1626072 at *17 (citing Fred H. Perkins, Alvin C. Lin, WHATS OLD IS NEW IN WEB SITE PROTECTION 7 NO. 3 Internet L. & Strategy 3, Internet Law & Strategy (March, 2009) § 13:10).
  88. Id. at *16-17.
  89. Id. at *17 (citing Kurt M. Saunders, Tradesite Or Web Dress?: Trade Dress Protection For Website Interfaces, available at http://alsb.roundtablelive.org/Resources/Documents/NP%202001%20Saunders.pdf).
  90. Id. (citing Lisa M. Byerly, Look and Feel Protection Of Web Site User Interfaces: Copyright Or Trade Dress?, 14 Santa Clara Computer & High Tech. L.J. 221, 262 (1998)).
  91. Id. at *18.
  92. See supra note 70.
  93. Answer, Apple Inc. v. Samsung Electronics Co., No.11-CV-01846-LHK, 2011 U.S. Dist. LEXIS 53233 (N.D. Cal. May 18, 2011).  At trial Samsung could offer evidence to further this assertion, but at the writing of this paper no such evidence has been introduced.
  94. 15 U.S.C. § 1057(b) (West 2011).
  95. Apple iPhone 4S advertisement available at http://www.apple.com/iphone/videos/#tv-ads-siri.
  96. Sleekcraft, 599 F.2d at 348.
  97. McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 359 (3d Cir. 2007) (citing Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 713 (3d Cir.2004)).
  98. Nilay Patel, Apple sues Samsung: a complete lawsuit analysis, The Verge (April 19, 2011, 12:32 PM),  http://www.theverge .com/2011/04/19/apple-sues-samsung-analysis/.
  99. Soft buttons are buttons that are not actually pressed but are engaged by a sensor like a touchscreen.
  100. Conference Archives, 2010 WL 1626072, at *14.
  101. Id.
  102. Widgets are items on a home screen that display data, such as a weather widget which displays the weather for a certain area, or a music widget which allows a user to change what song is being played from the home screen.
  103. This can be seen by the number of cell phone variations which are available on the market such as the several variations on Android used by manufactures, Windows Phone 7 and several others.
  104. This basic home screen is the one which comes basic from Samsung and Apple before any changes have been made by the use.  See supra note 94 (citing to article containing picture of both home screens).
  105. Apple. v. Samsung, No. 11-cv-01846-LHK, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal Dec. 2, 2011).
  106. Id. at 65.
  107. Amended Verdict Form, Apple, Inc. v. Samsung Electronis Co., LTD,. No.11-cv-01846-LHK at 15 (N.D. Cal Aug. 24, 2012).
  108. Id. at 10.
  109. Id. at 11-12.
  110. Id. at 10.