As the Ford Motor Company proudly exclaims, when referring to the new 2005 Ford Mustang , "The Legend Lives." Made popular by Hollywood stalwarts such as Steve McQueen in Bullitt and Nicolas Cage in Gone in 60 Seconds, the Mustang look has become forever entwined with American pop culture. The unmistakable profile of the classic long hood and short rear deck tied together by c-scoops on both sides, along with the recognizable front headlights and the tri-bar tail lamps, gives the 2005 Mustang a look reminiscent of the 1967 model. "We weren't just redesigning a car, we were adding another chapter to an epic," says J. Mays, Ford Motor Company, Group Vice President, Design. "The new Mustang's modern design speaks to its technical advancements - without losing the classic Mustang bad-boy image."
The Legend of Mustang is not so much defined by its name, but by its look or appeal. This is a recent example of an automobile whose appearance evokes in the mind of the consuming public a specific make/model of automobile. Such automobile designs, be they of a sports car or sports utility vehicle, embody what automotive companies seek to acquire - a competitive advantage in a competitive market.
The value of a recognized automobile body design can be seen in the recent spate of litigation in the U.S. automotive industry. For example, disputes have emerged involving (1) the JEEP grill design, (2) the FERRARI body design, (3) the VIPER body design, and (4) most recently, the HUMMER body design, where General Motors Corporation (GM) in 2003 was able to permanently enjoin Avanti Motor Corporation from infringing the HUMMER's trade dress.
The motive behind these disputes is the desire by innovative automotive companies to protect their investments - investments that involve time and money to develop a recognized look. Without a doubt, one of the first questions that always comes to bear in such disputes is whether or not the automobile's design is capable of protection that will prevent the design from being knocked off by others.
Picture this scenario: Ford, after over 20 years, brings back the look of the successful 1960s Ford Mustang, which receives raves from the consuming public. Automotive Company B seizes upon the opportunity and creates a very similar-looking automobile. Ford, seeking to protect its investment attempts to stop Automotive Company B, finds that the only similar design features between company B's automobile and the Ford Mustang are ones incapable of protection by Ford. Ultimately, the investment by Ford dwindles in value as others follow Automotive Company B's lead, making similar-looking automobiles. Could Ford's designers have done something to protect the company's investments?
How Does An Automotive Company Protect Its Investment?
So, how does an automotive company best protect its investment? By making decisions about an automobile's design, cognizant of the end in mind: a design capable of intellectual property protection. The basic premise of real, personal or intellectual property law is that in order for one to claim ownership of property, he/she needs some form of recognizable scope of legal protection to exclude others from taking that property. Specifically, in the automotive industry, automotive manufacturers need legal protection that prevents others from taking their automobile's design (their intellectual property - property of creations from the mind). In seeking this end, at least three forms of intellectual property protection can be used in protecting the appearance of an automobile's design, namely (1) design patents, (2) copyrights, and/or (3) trademarks/trade dress.
Patent law provides a first legal protection for automobile designs. When the term "patent" is mentioned, what comes to mind most frequently is what is known as a "utility" patent - a patent that protects a new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof. However, another type of patent exists, known as a "design" patent. Generally, a utility patent is available for the functional aspects of a product (e.g., a new and non-obvious convertible top system), while a design patent is available for the ornamental features of a product (e.g., the look of the automobile not dictated by functional features). Theoretically, a line can be drawn between the two such that a feature obtaining design patent protection cannot, also, obtain utility patent protection.
The key requirement in obtaining design patent protection is for the design to be new, non-functional and non-obvious to one of ordinary skill in the art - e.g., an average designer in the automobile industry. If and when a design patent is granted, the owner of the design patent will be entitled to 14 years from the issue date of the right to exclude others from making, using, offering to sell or selling the patented design.
In asserting a design patent against others, the scope of the claimed design encompasses the visual appearance as a whole. For infringement to occur (an unauthorized making, using, offering to sell or selling of the protected design), the alleged infringing design must (1) be substantially the same as the patented design such that it would deceive an ordinary observer, and (2) appropriate or take the point of novelty that allowed the design to be patented.
A designer/owner seeking design patent protection needs to be aware of filing deadlines for a design patent application. If worldwide protection is desired, a design patent application needs to be filed somewhere in the world before the design is disclosed to others for commercial purposes or before it is offered for sale. If protection is desired in only the United States, then the designer/owner has a "grace period" of one year from the first disclosure or offer for sale to file a design application in the United States Patent Office. The designer/owner should also be aware that a design patent application filed in the United States Patent and Trademark Office can take 18 or more months to issue into a U.S. Design Patent. Unless Ford's 2005 design contains new and protectable ornamental design(s), this type of intellectual property is not available to protect Ford's recent investment, since the retro design was disclosed over 20 years ago. Interestingly, if Ford had timely filed design patent applications in the 1960s, the design patents would have issued and expired before the retro look was brought back in 2004.
Copyright law is an additional, but less commonly used, legal protection for automobile designs. The application of copyright law is via a specific category of sculptural works, recognized as being protected in their three-dimensional form. Copyright protection arises when (1) a specific feature of the design is original - that is, possessing more than a mere quantum of creativity in its design, and (2) that specific feature exists separate and apart from the feature's functional aspect. Upon surmounting these requirements, the copyright can exist 95 years from the creation of the work if the work was a work made for hire.
In asserting a copyright against others, the specific feature in which the copyright is asserted is typically initially reviewed to "filter out" portions that are incapable of protection (e.g., items that are non-original or dictated by a functional feature). The ultimate result of the filtering results in the scope of protection of the copyrighted work. Where the accused design appropriates this "scope of protection," copyright infringement occurs.
While a designer/owner can file a copyright application at any time after the work is created and obtain copyright protection, the designer/owner should be aware that failure to timely file a copyright application will result in loss of some rights to the designer/owner. For example, the failure to timely file a copyright application before the latter of three months from publication of the work or before an infringement occurred will result in the loss of, among other benefits, (1) statutory damages (provided by the copyright statute as compared to actual damages) and (2) the right, at the discretion of the court, to an award of reasonable attorney's fees. In general, copyright applications can register in six to nine months, and need to be filed before a lawsuit is brought to enforce the designer/owner's rights.
Therefore, if no infringement has yet occurred, Ford's Mustang designs, meeting the above requirements, could be protected by the copyright laws, with Ford retaining the right to seek statutory damages and reasonable attorney's fees.
Trademark & Trade Dress
Trademark law is another recognized legal protection for automobile designs. In essence, a trademark will protect a non-functional "source" indicator, having a primary purpose to avoid confusion by the consuming public as to the source of that indicator. It can include, but is not limited to, logos, graphics and distinctive shapes. The big advantage of trademark protection is that it has no time limitations - that is, trademark protection can protect a specific design into perpetuity, as long as the design is continuously used. Additionally, trademark protection can arise simply upon use by the designer/owner of the "source" indicator. Furthermore, additional benefits can arise if the trademark is registered on the Principal Register in the United States Trademark Office.
One of the simplest examples of trademark protection is protection afforded to the mark Mustang or the logos MUSTANG RUNNING HORSE design with and without three stripe badge. However, broader categories of protection also exist for specific features of an automobile.
A specific type of trademark protection, known as trade dress protection, has recently gained more popularity in protecting automobile designs. Trade dress protection generally refers to protection afforded the overall appearance of the design, but it can also include only a single feature or combination of features. Trade dress protection arises upon the design (1) being non-functional, and (2) acquiring "secondary meaning" - legalease terminology meaning that the consuming public will be able to recognize the source of an automobile by the design only.
Ford embraced this protection and, in 2004, filed for a configuration of the combined elements of a c-scoop and rear taillights of a motor vehicle, the combined elements of a c-scoop and front headlights of a motor vehicle, a c-scoop on the side of a vehicle for an automobile and a vehicle taillight design. While Ford, in all of these four configurations, claimed a first-use date of 1964, Ford's use of these designs in the 2005 Ford Mustang is undeniable. The challenge Ford will have in getting these trade dress applications to register is to prove to the U.S. Trademark Office that (1) the configurations at issue provide no real utilitarian advantage to Ford, but rather are simply one of many equally feasible, efficient and competitive designs, and (2) the configurations have acquired distinctiveness.
Trade dress infringement occurs when an alleged infringer makes use of a protectable and similar automobile design, which creates a likelihood of confusion as to the association, affiliation or sponsorship of the infringer's automobile design. Factors included in this "likelihood of confusion" determination include (a) the similarity of the trade dresses, (b) the area and manner of concurrent use, including the similarity of the automobiles on which the trade dresses are being used, (c) the degree of care likely to be used by consumers, (d) the strength of the mark owner's trade dress, (e) evidence, if any, of actual confusion, and (f) any intent on the part of the alleged infringer to pass off its automobile as that of the trade dress owner.
After reviewing these three types of protection, which should Ford choose to protect its Legend? Since each of the above-identified types of protection are not mutually exclusive, if Ford can identify in the 2005 Mustang new non-functional designs, Ford should seek all. After all, this is an investment...why not use several types of protection?
Richard D. Fladung is a Partner in the IP Litigation practice of Akin Gump Strauss Hauer & Feld LLP in Houston and the proud owner of a 2005 Ford Mustang.