Author: Professor Ed Lee

The 2024 Chicago IP Colloquium Speakers and Schedule

Chicago-Kent College of Law and Loyola University Chicago School of Law jointly sponsor and host the Chicago Intellectual Property Colloquium. Each year during the spring semester, Chicago-Kent and Loyola invite six nationally-renowned intellectual property scholars to Chicago to discuss their current research projects before intellectual property faculty from Chicago-area law schools and students from Chicago-Kent and Loyola. The topics typically provide students with exposure to a broad range of IP topics, both domestic and international and both theoretical and empirical.

Jan. 23, 2024: Jason Reinecke, Marquette University Law School, Our More-than-Twenty-Year Patent Term

Feb. 6, 2024: Amanda Levendowski, Georgetown Law Center, Open Source Perfume

Feb. 20, 2024: Mark D. Janis, Indiana University Maurer School of Law, Design Patent Infringement as Unfair Competition

Mar. 19, 2024: Cathay Smith, University of Montana Blewett School of Law, Rewriting History: Copyright, Free Speech, & Reimagining Classic Works

Apr. 2, 2024: Oren Bracha, The University of Texas School of Law, The Work of Copyright in the Age of Machine Production

Apr. 16, 2024: Sonia Katyal, Berkeley Law School, Indigenous Misdescription

Copyright Office rejects copyright in Spindrift Spiked Sparkling Water can designs

The Copyright Office Review Board affirmed the rejection of designs for Spindrift Spiked Sparkling Water cans. The designs lacked the minimal level of creativity, according to the Board, both in their individual elements and the combination of elements.

Interestingly, Spindrift argued that the Copyright Office had already registered its similar designs:

The Board distinguished these designs as having more elements. The first one above had more short phrases: “We squeezed 2/3 of a real cucumber into this 8-pack of sparkling water[;]” “Just sparkling water & real squeezed fruit. yup, that’s it[;]” and “Unsweetened. 5% juice. Serve chilled.” Likewise, the Board found the second design had more individual elements: “, only the specific combination of textual, pictorial, and graphic elements found on the 12-pack design is sufficiently creative. By contrast, the combination of elements in each of the Works includes fewer short phrases and colors.”

Federal Circuit en banc heard oral argument to revisit obviousness standard for design patents

The Federal Circuit, sitting en banc, heard oral argument in LKQ v. GM. The case presents the question “Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?”

Mark Lemley, representing LKQ v. GM, argued that the CAFC should overrule its prior case Rosen-Durling, which provides a fairly narrow test of obviousness for design patents based on references. That approach is at odds with the Supreme Court’s approach to obviousness (for utility patents) in KSR. GM argued for maintaining the Rosen-Durling test. The SG’s Office argued for something in between. You can find the briefs here.

Link to audio of oral argument.


Can NBA team logos be copyrighted? Or do they lack originality?

On March 16, 2017, the NBA filed an application to register a copyright in the Magic logo and, on April 6, 2017, filed applications to register copyright in the Pistons and Spurs logos.

Initial rejection: In October 30, 2017 letters, a Copyright Office registration specialist refused to register the claims, finding that the logos lacked originality. The NBA appealed to the Copyright Office Review Board and argued that the three logos meet the originality threshold because they are unique designs and not mere typographic ornamentations and that the logos comprise more than common and familiar shapes and mere letters.

Appeal: On the NBA’s second motion for reconsideration, the Board agreed with the NBA on the originality of the Pistons and Magic logos because they contained sufficient creativity, but the Board denied the registration of the Spurs logo. The question in registering a copyright in a logo is whether the combination of the elements is protectable.  The Board noted: “A mere simplistic arrangement of non-protectable elements does not demonstrate the level of creativity necessary to warrant protection. For example, the United States District Court for the Southern District of New York upheld the Copyright Office’s refusal to register simple designs consisting of two linked letter ‘C’ shapes ‘facing each other in a mirrored relationship” and two unlinked letter ‘C’ shapes “in a mirrored relationship and positioned perpendicular to the linked elements.'” (emphasis added).

In making this determination, the Board does not consider “the attractiveness of a design, the espoused intentions of the author, the design’s visual effect or its symbolism, the time and effort it took to create, or the design’s commercial success in the marketplace are not factors in determining whether a design is copyrightable. See, e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903).”

The Detroit Pistons Logo

The Board found sufficient creativity in the Pistons logo for the following reasons:

  • The combination of the letter “D” and various geometric shapes featuring numerous colors and shading exhibits sufficient creativity.
  • The elements interact with one another in a singular manner; for example, the basketball passes through the letter “D,” as emphasized by the wedge shape to the left of the basketball illustrating movement.
  • The basketball and wedge shapes also feature stylized shading, which courts have considered a significant element in demonstrating originality.

The Orlando Magic Logo

The Board found sufficient originality in the Magic logo for the following reasons:

  • The Magic logo features four colors and, as in Nicholls and Prince Group, shading on the basketball, which adds three- dimensionality to the artwork.
  • The basketball is surrounded by a double border in black and white that incorporates numerous star designs, an arrangement that is not common or intuitive.

The design of the Magic logo is still relatively simple, and therefore the Board cautioned the NBA that the resulting copyright would be thin and would only protect the NBA from virtually identical copying.

The San Antonio Spurs Logo

However, the Board affirmed the refusal to register the copyright claim in the Spurs logo for the following reasons:

  • The placement of the lines on the basketball merely conforms to the size of the circle and helps to create the standard appearance of a basketball.
  • The arrangement of the “S” and “A” – unprotectable in themselves – also corresponds to the dictates of the basketball shape and design.
  • The minimal color scheme of black and gray does not add sufficient creativity to the design.

We can expect the NBA to appeal the Board’s decision in federal court.  The NBA is likely to take another shot at the issue of originality. Whether the fine distinctions the Copyright Board made in distinguishing the Spurs logo as unoriginal from the other two logos will likely be the subject of litigation.

by Adam Grodman, Chicago-Kent Center for Design, Law & Technology fellow

Porsche Loses Design Protection for 911 car in EU

In a recently decided appeal to the General Court, Porsche lost their EU design right to the classic Porsche motor 911.  See Porsche AG v. AUTEC AG, 20190606 – T-210_18.  Porsche filed its Community design (OJ 2002 L 3, p. 1) with the European Intellectual Property Office on 2 July 2004 for passenger cars. The Community design applied for is represented in the photographs above and below (“the Community design”): “Earlier design with the 997 series of Porsche motor 911).”

Felicia Ferrone Headshot

Video Recap: Felicia Ferrone on “What Is Design? A Designer’s View”

Edward Kim

Video Recap: Chef Edward Kim – “What Is Design? A Chef’s View”

Christopher V Carani headshot

Video Recap: BookIT talk with Christopher Carani

Sarah Burstein

Prof. Sarah Burstein talk on “Whole Designs”

event: Prof. Sarah Burstein of the University of Oklahoma College of Law is this year’s first speaker in the Center’s series on “What Is Design?”  That question is central to the scope of design protection, yet the answer may differ depending on one’s view of design.  Prof. Burstein examines the question of statutory subject matter of the design patent act and how we might reimagine the concept of what is a “design.”

bio: Sarah Burstein is an Associate Professor of Law at the University of Oklahoma College of Law. Her scholarship focuses on design law, with a particular focus on design patents.  She is a Research Affiliate of the Chicago-Kent Center for Design, Law & Technology.

She has participated, by invitation, in design law conferences at the University of Oxford, Stanford Law School, the Max Planck Institute for Intellectual Property and Competition Law, ETH Zürich, and Waseda University in Tokyo. Prior to joining the faculty at OU, Professor Burstein worked as an intellectual property litigation associate in the Chicago office of Kirkland & Ellis LLP. Professor Burstein has a law degree from the University of Chicago and B.A. in Art & Design from Iowa State University.

Date: Nov. 14, 2018
Time: 3:00 pm to 4:00 pm
Venue : Chicago-Kent College of Law

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