Wang, Ghesquière and More Support Apple in Patent War

BY LAUREN SHERMAN Top fashion designers have signed an amicus brief asking the Supreme Court of the United States to reject Samsung’s appeal in its legal battle with Apple over design patents. WASHINGTON DC, United States — Apple’s case against Samsung just got a boost from the global design community. In an amicus brief filed with the Supreme Court of the United States on August 4, 2016, a consortium of design professionals and educators have come out in support of Apple in its ongoing case against Samsung, for which the California-based company was paid $548 million in damages by the South Korean technology giant in December 2016. The group includes several prominent fashion designers like Nicolas Ghesquière,Alexander Wang, Calvin Klein, Dries Van Noten, Paul Smith, Alber Elbaz and Sacai’s Chitose Abe, as well as other fashion creatives like Fabien Baron, a who’s who of industrial designers — including Dieter Rams and Del Coates — and architects like Norman Foster. The $548 million award was linked to a 2012 court case, where Apple was initially awarded $1 billion in Samsung profits from a mobile phone that the court ruled violated design-patent laws, cribbing technology and design elements from Apple’s iPhone. The court ruled in favour of Apple based on section 289 of Title 35 of the United States Code, a design-patent law that states that those who infringe on a design patent must pay the owner full profit on any sales made from the design. Samsung has thus far been able to lower the figure to $548 million through a series of appeals and aims to further lower the amount by $399 million. Samsung posits that the previous court ruling “overprotects and overcompensates” the value of its patent infringement against three specific design elements in of the iPhone: its rounded-corner front face, bezel and app icon grid. For the first time in more than 120 years, the Supreme Court agreed to hear oral arguments about the law from both Apple and Samsung, which are set to begin on October 11, 2016. And while a ruling against Apple could mean that the design-savvy tech company might have to return at least some of the $548 million it has received from Samsung, the decision also has broader implications for the industrial design community at large, which has increasingly welcomed fashion designers into its fold. This may help to explain why 111 designers and industry professionals have filed an amicus brief, which can be described as a plea from non-litigants with a vested interested in the subject matter. “It became clear to some of us with more experience in the IP space that we were looking at a very serious potential problem,” explains industrial designer Charles Mauro, founder of Mauro New Media and lead representative of the group, known as the amici curiae. They teamed with intellectual property lawyers Mark Davies and Rachel Wainer Apter of the international law firm Orrick, who drafted the brief. While Orrick has represented Apple in past intellectual property cases, it does not represent Apple in the Samsung case. Neither Apple nor any other corporation has funded the brief. “Those who have signed the brief have a serious concern about what’s happening with Samsung, and they are also completely dedicated to design as a way of achieving business success,” Mauro told BoF. “Apple is obviously a prime example of that and in that regard they are aligned with Apple. But I think it was important to those individuals who signed the brief that design is properly positioned in this major case.” Indeed, the brief discloses that several members of the group have consulted with both Apple and Samsung. (Wang, for instance, has partnered with Samsung on projects.) It even calls out a design patent Samsung owns, which falls under the same laws as Apple’s three design patents being reviewed in the case: Amici have no personal interest in the outcome of this dispute between Apple Inc. and Samsung Electronics. We have consulted for both parties. Both of these leading technology companies own numerous design patents. This case happens to involve three of Apple’s design patents. But Samsung also owns design patents on various sophisticated and complex technological products. See, e.g., U.S. Design Patent No. 658,612 (ornamental design for a television set). The fundamental principles of visual design set forth below are agnostic as to who brings forth a new design to the world. But the participation of so many fashion professionals does indicate a notable shift in the way the fashion industry thinks about protecting their designs, particularly in the US where trademark and copyright laws don’t afford apparel design the same degree of protection as in the EU. What’s more, in the past, only certain categories where designs are repeated season after season — most notably shoes and foundation garments — were deemed by apparel companies to be worthy of the time and money it takes to secure a design-patent, with costs starting at $4,000 to $6,000 for a 15-year patent, plus legal fees. But a 2012 case, in which Lululemon sued Calvin Klein owner PVH Corp. and licensee G-III for infringing on three patents, including that of a waistband design, was settled out of court, marking something of a turning point in the way the apparel industry thinks about this form of protection. “Suddenly, the fashion industry started thinking about design patents,” says Susan Scafidi, professor at Fordham Law School and director of the Fashion Law Institute. “Anecdotally, I’ve seen a dramatic rise in interest in design patents in the fashion realm.” The numbers support this. In 2015, there were 25,986 design patents granted by the US government, up 10 percent from 23,657 in 2014 and 68 percent from 15,451 in 2002. For instance, in 2013, Alexander Wang sought and was granted patents for his “Robyn” hobo bag, including the structured metal corners of the bag and the attached metal feet. Wang continues to use those design details on bags he currently sells. “The fashion industry is finally beginning to understand that there is not only adequate intellectual property mechanisms for protecting brand attributes, but there’s also sound underlying marketing science and cognitive science about why visual design is so valuable as an asset,” Mauro says. “I think this is a key asset of what the brief brings to the table.” Indeed, for designers like Wang or Van Noten, whose unique shoe designs are copied the world over, the designs of their products are as important as the shape of a Coca Cola bottle, one of the examples used in the amicus brief to prove the group’s point. “It’s not just what the product looks like, it’s that what the product looks like comes to symbolise everything else that the consumer knows about the product,” says Orrick attorney Wainer Apter. To be sure, a reversal of the decision in this case would have implications across many industries. For instance, if Wang were to sue another company for using his metal corners, as the interpretation of the law currently stands, he would be awarded the profits from sales of any items the other company was selling that incorporated the metal corners. But if Samsung wins this case, it would set a new precedent, raising questions as to whether he should only receive a portion of these profits. “I think one of the concerns is that the decision is being made in a tech case and in being made in regard to devices that are indeed very complex,” Scafidi says. “Fashion designs, even complex ones, tend to have fewer parts. The concern is that it will seem logical to the court that you might want to apportion damages. Often you buy the fashion item because there is one cool element.” On the flip side, many in the tech industry are worried that a Supreme Court ruling in favour of Apple could mean trouble for those facing so-called patent trolls, or entities that secure patents in order to extort money from others for reasons far beyond what the patent actually covers. “As the computer industry has matured, utility patents — those involving ‘useful process, machine, manufacture, or composition of matter, or a new and useful improvement’ — have become increasingly difficult to obtain,” according to Matt Milano, a reporter for the tech industry website Apple Insider. “In contrast, design patents, which are ‘issued for a new, original, and ornamental design embodied in or applied to an article of manufacture,’ are still a relatively open field.” Regardless, there is a chance that no matter what happens in the Supreme Court, the loser will take the matter to the US Congress, Scafidi says. Source: businessoffashion.com

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