Copyright Protection for Useful Articles – Garmin Loses Reconsideration Fight for Watch Band Copyright Registration
Garmin is a large multinational company specializing in GPS technology. Millions of customers around the world interact with Garmin devices on a daily basis – including Garmin’s various GPS car navigation systems and smart watches.
For the past year, Garmin has been trying to secure copyright registrations over several of its watch band designs – presumably for watch bands which are sold in connection with Garmin’s smart watches. Thus far, however, Garmin has been unsuccessful – recently losing a second administrative appeal within the Copyright Office. This matter provides a useful case study to learn about copyright law, design patent law and the importance of always seeking multiple layers of intellectual property protection.
Garmin’s Copyright Application:
On January 5, 2018, Garmin filed an application to register a copyright claim in the “Crosshatch Band” shown below:
On January 5, 2018, Garmin also filed an application to register a copyright claim in the “Stippling Band” shown below:
With respect to both applications, Garmin acknowledged that the watch bands themselves were useful articles. However, Garmin argued that that the pattern formed on the surface of such watch bands – along with the location of a delta design in relief relative to such pattern – constituted copyrightable subject matter.
The Copyright Office’s Registration Examiners denied both of these applications on the same grounds, namely, that the watch bands were useful articles without any copyrightable elements. After such initial denials, Garmin filed first requests for reconsideration – each of which were likewise denied on the same grounds. At the Copyright Office, first requests for reconsideration are reviewed by a Registration Program staff attorney who did not participate in the initial examination of the copyright claim.
Garmin then filed a second request for reconsideration with the Copyright Review Board. The Copyright Review Board considers second requests for reconsideration de novo and consists of the Register of Copyrights (or his/her designee), the general counsel of the U.S. Copyright Office (or his/her designee) and a third individual designated by the Register.
Copyright Application Standard:
In evaluating whether a useful object is eligible for copyright protection, the Copyright Office follows a two-prong test.
First, the Copyright Office determines whether a work has the requisite separable authorship necessary to sustain a copyright claim.
Second, the Copyright Office determines whether a work meets the standards of originality set forth by the supreme Court under Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340 (1991). More specifically, this includes ensuring that a work was independently created (i.e., not copied) and that it possesses at least some minimal degree of creativity.
Copyright Review Board Analysis:
In evaluating the first prong of the useful article copyright test noted above, the Copyright Review Board explained that:
“To assess whether an artistic feature incorporated into the design of a useful article is protected by copyright, the Office examines whether the feature “(1) can be perceived as a two or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”
Applying such logic, the Copyright Review Board agreed with Garmin that the designs formed into the bands were conceptually separable, i.e., that they passed the first prong of the copyright analysis.
In evaluating the second prong of the useful article copyright test noted above, the Copyright Review Board acknowledged that the independent creation of the watch bands was not at issue. However, the Copyright Review Board focused its analysis – and ultimately denied the second request for consideration on the grounds that – Garmin’s watches lacked the minimal degree of creativity necessary to give rise to copyright protection. More specifically, the Copyright Review Board held that:
“…the combinations of the components in each watch band are not sufficient to make the designs original. The Compendium instructs that a painting of a solidly colored rectangle decorated with many evenly spaced circles would be denied registration. Id. § 906.1. In contrast, it also instructs that a wrapping paper design featuring a multitude of common geometric shapes in different sizes and arranged in an unusual pattern would be registered. Id. Here, the Crosshatch Band features intersecting straight lines that create diamonds, trimmed on three sides by flat edges, with a triangle on one edge. This is a minimal combination of simple shapes. As in the first example from the Compendium, the crosshatch design and diamonds are comprised of repeated and identical common shapes arranged in a familiar and unremarkable pattern. The inclusion of flat edging and a single triangle are de minimis additions that do little to enhance the creativity of the overall design. Indeed, it is a predictable arrangement to add a plain border to a visual work. In contrast to the wrapping paper example from the Compendium, the watch band features a limited number of geometric shapes arranged in a basic manner without distinctive colorization.”
Bottom line: the Copyright Review Board concluded that the pattern on Garmin’s watch bands simply were not “creative enough” to give rise to copyright protection.
Possible Design Patent Protection:
Notwithstanding the issues noted above regarding copyright law, a separate possibility Garmin can (and, indeed, has) pursued is seeking design patent coverage for some of its watch / watch band designs. As discussed in another of our firm’s recent articles, it is often possible to secure design patent protection for the non-utilitarian, ornamentation embodied in useful articles such as watches and watch bands.
For example, our firm’s quick “knock-out” search of the U.S. PTO’s patent database shows numerous design patents have been issued to Garmin for watches and/or watch band designs. This includes, inter alia:
- D839,753 entitled “Watch with display” as shown below:
- D836,465 entitled “Watch with display” as shown below:
- D836,464 entitled “Watch with display” as shown below:
- D820,140 entitled “Watch band” as shown below:
and
- D806,582 entitled “Watch with display” as shown below:
It even appears that D806,582 (shown above) covers a watch while D820,140 (also shown above) covers a mating watch band. This illustrates an excellent design patent technique used by Garmin – separately patenting various component parts of a single product. While this is more expensive than filing a single design patent application, doing so helps strengthen Garmin’s position by: (i) making it easier to attack infringers who only sell knock offs of single components (e.g., replacement watch bands); and (ii) providing two counts of design patent infringement for infringers who sell knock offs of the entire product (e.g., the combined watch / watch band assembly).
Garmin’s experience highlights the importance of always seeking multiple layers of intellectual property protection. Where possible, clients should simultaneously seek patent, trademark and copyright protection over consumer products. Reasons for seeking such multi-faceted intellectual property protection include: (i) the different burdens of proof associated with litigating different intellectual property infringement claims; (ii) the different damage awards available for successfully litigating intellectual property infringement claims; and (iii) the possibility that the U.S. PTO or the Copyright Office might refuse to issue one or more forms of protection (as happened to Garmin). By evaluating the potential for simultaneous patent, trademark and copyright protection, companies can maximize their legal protection against counterfeiters and other infringers.
If you have a useful article or other product that might qualify for copyright registration and/or a design patent, call us today for a free consultation.
