In Craft Smith, LLC v. EC Design, LLC, the U.S. Court of Appeals, Tenth Circuit, ruled that a knockoff version of a personal organizer did not infringe the original organizer’s overall design.1 The court also concluded that the organizer was ineligible for federal trade dress protection, but the compilation was eligible for copyright protection with limited protection.
EC Design, LLC, has sold its popular LifePlanner personal organizer since 2007. Craft Smith, LLC, wanted to enter the personal organizer market and approached EC about working together in 2015. After EC turned down Craft Smith, Craft Smith developed its own personal organizer similar to LifePlanner’s design, using the same size, spiral type, pagination and other similar features.2
EC sued Craft Smith for copyright and trade dress infringement, and the district court granted Craft Smith summary judgment on both claims. The Tenth Circuit affirmed.
The Tenth Circuit first ruled that EC owned a valid compilation copyright in the LifePlanner’s “original selection, coordination, and arrangement of phrases, inspirational quotations, holidays, and other numerical data,” which included graphic elements such as “banners, color schemes, and two-dimensional artwork” because they were separate from the planner’s useful features pursuant to the Supreme Court’s ruling in Star Athletica L.L.C. v. Varsity Brands, Inc.3
However, the court held that Craft Smith’s planner did not infringe EC’s copyright because it was not substantially similar to the copyrightable elements of the LifePlanner. The court reasoned:
EC Design does not claim that Appellees copied any of its planner’s artwork or text—the two most significant portions of protected expression in the LifePlanner compilation. In fact, EC Design does not even claim that Appellees employed similar artwork or similar text. Instead, EC Design claims that Appellees have adopted a similar format. But the format of the LifePlanner is not part of its protectable expression.4
In addition, the court held that the LifePlanner personal organizer was not eligible for trade dress protection under the Lanham Act because EC did not show the design identified the company as the source in the eyes of consumers. Evidence that the design only existed from 2015, that EC routinely altered the design and that advertisements for the LifePlanner only highlighted the planner’s “desirable features” instead of producing a “conscious connection” between the planner’s design and EC worked against EC’s argument that the planner’s design identified EC as the source.5
The court also explained that the fact that Craft Smith copied the design was insufficient and could have been a result of factors other than source identification, such as functionality.6 The court acknowledged:
We recognize that this decision may make it more difficult to obtain trade-dress protection for a product’s design. But this reflects the reality that trade-dress protection is an awkward fit for product design.7
Takeaways
The Tenth Circuit acknowledged the “reality” that trade dress protection is an imperfect fit for protecting a product design even if the design is copied. Importantly, the court explained that evidence showing that the trade dress identifies the source is crucial when determining whether a product design is eligible for trade dress protection. Key to showing that the trade dress identifies the source of the product includes the customer’s perception, which can be determined using, for example, surveys. The court also emphasized that it is important that the advertising promote the origin of the design rather than specific functional features of the product.
Since trade dress is limited, companies should seriously consider protecting their product designs using design patents and possibly utility patents. However, patent filers should be cautious about how a product configuration/trade dress is described or illustrated, and to the extent possible, provide alternate designs capable of attaining similar functionality to reduce the risk the trade dress will be considered functional and not eligible.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Craft Smith, LLC v. EC Design, LLC, 969 F.3d 1092, 2020 USPQ2d 10918 (10th Cir. 2020).
2 Id., 969 F.3d at 1098.
3 Id., 969 F.3d at 1103 (citing Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1007, 122 USPQ2d 1001, 1011-12 (2017)).
4 Id., 969 F.3d at 1105.
5 Id., 969 F.3d at 1112.
6 Id., 969 F.3d at 1110.
7 Id., 969 F.3d at 1112-13, n. 27 (citing Traffix Devices Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001, 1005 (2001) (noting that the Supreme Court has “caution[ed] against misuse or overextension of trade dress,” and that this is especially true for product design trade dress, because “product design almost invariably serves purposes other than source identification”)).