SAN FRANCISCO — Low-technology companies that rely heavily on patented designs, ranging from Crocs footwear to Kohler kitchen and bath products, are lining up behind Apple’s demand that Samsung disgorge all of its profits from infringing Apple’s smartphone design.
“For companies in industries such as footwear, apparel, accessories, and appliances (to name a few), design can be everything—the differentiator in the market, the driver of sales, and the lifeblood of the company,” Faegre Baker Daniels partner Natalie Hanlon-Leh wrote in an amicus curiae brief filed Thursday at the U.S. Court of Appeals for the Federal Circuit.
Absent the deterrent of full infringer’s profits, counterfeiters will be “unstoppable,” warns Perry Saidman of Saidman DesignLaw Group in an amicus for Kohler Co., eyewear maker Oakley Inc. and six other companies.
Apple Inc. and Samsung Electronics Co. agreed to drop their international litigation earlier this month, but that pact did not cover Samsung’s appeal of a $930 million verdict stemming from the 2012 “trial of the century” in San Jose over iPhone and iPad patents.
Samsung and its amici have trained their heaviest fire on the $399 million awarded for infringement of Apple’s distinctive smartphone design. They argue it makes no sense to penalize Samsung every dollar it earned on complex, multicomponent devices when design was one small selling point. Doing so “undervalues technical innovation and manufacturing know-how” in the modern age, a group of patent law scholars, led by Durie Tangri partner Mark Lemley, argued in May as amicus for Samsung.
The design patent damages law traces all the way back to 1887, and Crocs Inc., Kohler and Oakley don’t want it thrown aside now just to suit smartphone makers.
When Crocs’ “Classic Clog” became an international hit in 2005, other companies rushed to copy a design that, Hanlon-Leh notes, was recognized by the book Fifty Shoes That Changed the World. Crocs fought back by asserting its design patents in federal courts and the International Trade Commission.
A decade later, Crocs is innovating hundreds of new styles of shoe every year. “The primary differentiator between these styles is not the function of the article or the method of manufacture, but is instead the ornamental or aesthetic design,” Hanlon-Leh writes.
If design royalties were apportioned, counterfeiters would simply treat them as a cost of doing business, argues Saidman on behalf of Kohler, Oakley, Design Ideas Ltd. and others. “Were it not for the deterrent to copying provided by 35 U.S.C. Section 289, many of these copyists would be unstoppable, and the company’s design patents would be rendered impotent,” he writes.
Also supporting Apple is a phalanx of design professionals who take issue with Samsung’s “set of law professors with unspecified design credentials.” Product design “is the way to sell technological innovation and manufacturing know-how,” argues the group, which is represented by Orrick, Herrington & Sutcliffe partner Mark Davies.
Finally, Apple’s own group of academics—from the world of design, rather than law—argues that, in some ways, smartphones aren’t that different than apparel. “Modern smartphones are commonly seen in a person’s hands,” Gibson, Dunn & Crutcher partner Brian Buroker writes for the group, “and like shoes, watches, eyeglasses, and other worn items, the ‘coolness’ factor of the device is extremely important to the target demographic.”
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