17 Feb Protecting Car Designs
In the United States, designs can be protected by design patents, copyright, trademarks, and trade dress. A design patent covers the ornamental aspects of a useful object. In a design, any aspects which are merely functional are not protectable by a design patent. For example, Ferrari has been granted over 100 US design patents for their cars, components, interiors and the like. Ferrari’s most recent design patent is US D870,626 for the below design:
Of interest is the fact that the title of some of Ferarri’s design patents reads as follows, “Car including toy-car, motor car, replica car, and scale-model car”. This implies that Ferarri is considering the existence of replica cars and is pro-actively asserting rights not only to its design on its cars but for its design on replica cars as well.
A disadvantage of US design patents is the limited period of protection, only 15 years from the date of grant. Once the design patent expires, it cannot be used to enforce rights against those who would copy the design.
As with European copyrights, US copyrights have a much longer life. As an intellectual property tool, copyright is a better asset than a design patent due to its longer enforcement period. A problem is that US copyright law excludes “useful articles” and defines a useful article as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”. Cars and vehicles have been held to be useful articles.
However, not all is lost, trade dress, which is a form of trademark protection, can apply to car designs. Ferrari successfully sued a replica car maker named Roberts for trademark and trade dress infringement. The court cited the Lanham Act (which covers trademark law) that prevents someone from doing acts “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” Ferrari showed at trial that the exterior design of Ferarri’s vehicles (in this case a Testarossa) enjoyed strong secondary meaning. The courts held that Ferarri could pursue trademark and trade dress infringement against Roberts.
Thus, a car designer can use both design patents and trademark/trade dress protection to combat infringement of their vehicle designs.