Shred the Gnar, Not the Law

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Shred the Gnar, Not the Law

By Payton Miles

Picture this. It’s mid-December, and you’re atop a snowy mountain in Vail, Colorado awaiting your next downhill battle. The lifts are closing soon, which means it is time for a hot chocolate back at the lodge to warm you up. But you are in no rush today, all thanks to your new Columbia Sportswear jacket, equipped with its patented Omni-Heat thermal reflective material.

Columbia Sportswear Company, founded in 1938, is one of the largest outdoor and active lifestyle apparel and footwear companies in the world.[1] With competitors like Patagonia and North Face, Columbia prides itself on having the most affordable and innovative technology, such as their Omni-Heat material.[2] Its success in the marketplace has opened the door to potential infringers. One such infringer is Seirus Innovative Accessories, Inc. In 2015, Columbia brought suit against Seirus, claiming that Seirus’s HeatWave products infringed its design patent drawn to the ornamental design of its Omni-Heat reflective material.[3]

The district court granted summary judgment for Columbia Sportswear, deciding that Seirus’s HeatWave products infringed Columbia’s design patent.[4] The standard for determining whether a design patent has been infringed is the “ordinary observer” test.[5] Essentially, if one design copies a particular feature of another in a way that would deceive an ordinary observer into thinking they were the same, then the first patented design is infringed by the other.[6] The district court used the ordinary observer test and also relied on a previous case, L.A. Gear, Inc. v. Thom McAn Shoe Co., in which it was decided that logos should be “wholly disregarded” in a design infringement analysis.[7] L.A. Gear created the long-standing precedent that infringers should not be able to escape liability for design patent infringement by simply adding a logo to a copied design.[8] Contrary to this precedent, Seirus argued that there were “substantial and significant differences between the two designs,” namely that Seirus’s waves were interrupted by the use of their logo and were of different orientation, spacing, and size as compared to Columbia’s waves.[9] The district court ultimately agreed with Columbia’s argument that the two designs would be essentially the same without Seirus’s logo.[10]

In 2019, Seirus appealed, and the Federal Circuit reversed and remanded the district court’s grant of summary judgment.[11] Unlike in L.A. Gear, the Federal Circuit, in this case, gave more weight to logo placement and determined that all factors can be used to determine the overall visual impression to the ordinary observer.[12]

The Federal Circuit’s decision shredded the precedent that L.A. Gear established, muddying the waters between design patent and trademark law. Design patent law is meant to protect “the non-functional aspects of an ornamental design displayed in a patent.”[13] A trademark is “any word, phrase, symbol, design, or a combination of these things” that is used in conjunction with a product to establish that the product is associated with a certain brand/company.[14] But if a logo can be protected as a non-functional part of a design that an ordinary observer is evaluating, why would trademark protection also be needed? This decision has the possibility of closing the door on a large area of trademark law. And it also has the possibility of limiting which design patents actually get protection from infringers. The addition of a logo to a design patent defeats the purpose of the ordinary observer test that has been characteristic of design patent law. If logos are a contributing factor in distinguishing between two design patents, then an ordinary observer will attribute the dissimilarities to the logo each and every time, regardless of what the underlying products actually are.

On remand in August 2021, a jury determined that Seirus’s design did not infringe Columbia’s design patent.[15] The fear now is that the Federal Circuit’s decision will allow for endless infringement if a logo is given weight in such cases. If the ordinary observer cannot differentiate the two underlying designs, to begin with, then the logo should not be the way around infringement. Further clarity from courts on logo placement within design patents will be necessary in future cases to protect these two separate areas of intellectual property.

[1] A Diversified Revenue Base, Columbia Sportswear Co. (2022), https://investor.columbia.com/company-information.

[2] Columbia Sportswear Competitors, Comparably (2022), https://www.comparably.com/companies/columbia-sportswear/competitors.

[3] See Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1122–23 (Fed. Cir. 2019).

[4] Id. at 1122.

[5] Id. at 1129.

[6] Id.

[7] Id. at 1131.

[8] See Columbia Sportswear, 942 F.3d at 1131.

[9] Id. at 1130.

[10] Id.

[11] Id. at 1128–29, 1133.

[12] Id. at 1131.

[13] Design Patent, Legal Info. Inst. (July 2020), https://www.law.cornell.edu/wex/design_patent.

[14] What is a Trademark?, USPTO (June 13, 2022), https://www.uspto.gov/trademarks/basics/what-trademark.

[15] Gregory A. Castanias et al., When Trademarks and Design Patents Intersect: Making Waves in Columbia v. Seirus, Jones Day (August 2021), https://www.jonesday.com/en/insights/2021/08/when-trademarks-and-design-patents-intersect-making-waves-in-columbia-v-seirus.

Image Source: https://www.columbia.com/how-to-choose-a-ski-jacket.html