Efforts to Invalidate Design Patents for Vehicle Body Parts Continue
Written by: Brett J. Rosen
The process begins in an artist’s studio with black colored charcoal pencils and a stack of drafting sheets arranged on an easel. Starting from an overall concept that exists only in one’s mind, the designer slowly and methodically draws lines on the paper forming a silhouette as the charcoal splinters off the pencil and lands on the floor beneath. Various rough drafts are cast aside until, at long last, the designer is satisfied that the visual and ornamental impression offered by the paper sketch is suitable for sharing with her team. The design team carefully inspects the drawing, comparing the design with previous designs and competitive designs, and offering suggestions for perfecting the various contours and curves in an effort to generate a stronger visual impression. In the next phase of the process, the designer manually sculpts the vehicle out of clay material. The designer’s fingertips move over every surface, adding or removing clay as necessary, to delicately shape and contour the bumpers, doors, nose and tail of the vehicle until the silhouette shown in the charcoal drawing comes to life. The designer steps back, ponders, smiles and then fine tunes radii and curve lengths. The clay model is then covered in a silver paint substance in order to appreciate how the light will reflect off the shapes and contours. Marketing groups gather around the hardened model and pontificate the public’s reaction. When it is agreed upon by all that the design has made not only a visual impression, but has evoked the emotion of desire, it is ultimately green lit and passed on to the production stage. That emotion of desire is what drives consumers to purchase the vehicle.
Despite the intricate design process and the visceral emotion that is engendered by its fruits, some industry players contend that the body parts of a vehicle lack ornamentation and are purely functional, and, thus, are not eligible for patent protection.
In Automotive Body Parts Association (ABPA) vs. Ford Global Technologies, LLC (Ford), which was decided in 2018, the ABPA asked the U.S. District Court of the Eastern District of Michigan to invalidate design patents on auto body parts. Members of the ABPA make, import and/or sell auto body parts that are used to replace damaged auto body parts. Ford has numerous design patents protecting the designs for its auto body parts. Ford sent cease and desist letters to members of the ABPA over the members’ sale of auto body parts protected by Ford’s design patents. The ABPA consequently filed a declaratory judgment asserting that the Ford design patents were either invalid or unenforceable. Specifically, the ABPA argued before the court that designs for auto-body parts are not eligible for patent protection because (1) consumers seeking to repair their vehicles do not select body parts for their design, and (2) the designs were not dictated by the body part’s function. It is noted that the ABPA also set forth additional arguments, which are not discussed herein.
With regard to the ABPA’s first argument, the ABPA claimed that the design patents were not ornamental because the designs were not “a matter of concern” to the consumer. The ABPA essentially argued that the designs were not “a matter of concern” because, if no one cares about a particular design, then the design is not deserving of patent protection. The ABPA cited a case in which a court held a design patent unenforceable because the design patent covered a vacuum cleaner component that was concealed from view during its normal use, and, thus, the component was not a matter of concern to the ordinary purchaser of vacuums. Turning back to the case at hand, the ABPA argued that when a vehicle is involved in a crash, the owner simply wants the body parts that will return the vehicle to the way it looked before the crash, and the vehicle owner will not shop around and compare various body part designs. Thus, according to ABPA, an individual body part is not a matter of concern to the vehicle owner at the time that she is buying the replacement part because the vehicle owner does not care about the design of the replacement part.
The court disagreed with the first argument. According to the court, the matter of concern inquiry is not necessarily constrained to the perspective of a vehicle owner at the time that she is buying a replacement body part. Instead, the matter of concern inquiry should also consider the perspective of a vehicle owner at the time that she is buying the vehicle. The court opined that the vehicle’s design may have been the very reason the consumer bought the vehicle in the first place. Or, at least, a reason.
With regard to the ABPA’s second argument, the ABPA argued that Ford’s patented designs are not ornamental because the designs were “dictated by function.” Like the matter of concern test for design patent eligibility, the dictated by function test captures a similar concept, i.e., if an article had to be designed a certain way for the article to function, then the design does not deserve patent protection. See Ethicon Edo-Surgery, Inc. V. Covidien, Inc. 796 F.3d 1312, 1328 (Fed. Circ. 2015). The theory behind the test is that if a design patent could protect a design dictated by the article’s function, then the holder of a design patent would effectively be granted a monopoly on the function without having to clear the hurdles for obtaining a utility patent. See Donald S. Chisum, 8 Chisum on Patents 23.03 (2016). The ABPA asserted that several functions dictate the designs covered by Ford’s patents. For example, the shape of Ford’s hood is dictated by the need to mate with surrounding body parts and the vehicle frame.
In rejecting the ABPA’s second argument, the court pointed to the existence of several alternative hood designs (i.e., aftermarket hoods) that both perform the intended function and fit the vehicles yet have different ornamentation, and, the alternative hood designs strongly suggested that the designs were not dictated by function alone. The court remarked that they have often focused on the availability of alternative designs as an important – if not dispositive – factor in evaluating the legal functionality of a claimed design.
For the time being, the courts have maintained design patent protections for auto parts and, consequently, respected the artistic process that goes into developing the ornamentation of each vehicle part. Replacement auto body parts manufacturers will not soon cease operations, thus, we are likely to see new challenges to design patent protection of auto parts in the years to come.