A Multi-Layered Approach to Packaging Protection

The way in which a product looks or how it is packaged and sold can often be a driving force in the consumer’s purchasing decision. Yet, the intellectual property rights available for product designs and packaging are anything but straightforward in view of the multiple means of protection within the United States as well as the differences from rights available in other countries. New and unique designs for product packaging may be protectable under a number of intellectual property regimes. In the United States, trade dress protection may be available under trademark law, while copyright and design patent protection may also be available. Trade dress protects the ability of the design to assist consumers in identifying or recognizing the source of the product and associating it with the consumer’s perspectives about the quality of the product. Copyright recognizes the original expressive aspects of the design. Design patent protects the new and different ornamental aspects of the design from what came before it. Layering these levels of protection, as well as giving consideration to whether and how these rights should be protected in multiple jurisdictions, may be prudent. At the same time, courts are somewhat reluctant to allow cross-regime protection in all cases, as shown by the recent EU decisions holding the KitKat candy bar design is not protectable as a trademark ¹ , and the LEGO company’s ongoing efforts to protect the design of their building bricks as a trademark have been unsuccessful ² , but the design of the LEGO man is protectable³ .

Trade dress protections can be available if packaging is distinctive, not functional, and recognized by consumers as a source-identifier of the goods. This recognition can take time to develop, or sometimes can be earned quickly through intensive marketing. Even if the trade dress is not sufficiently distinctive, some of the benefits of registration can be obtained in the United States, in some cases, through the Supplemental Register, where marks can acquired distinctiveness over time. However, the design cannot be functional because other companies need to have the ability to use functional elements in their own packaging, for example. In addition to packaging, other examples of trade dress include color, and the look and feel of a restaurant, as was recognized in Two Pesos v. Taco Cabana ⁴ . If available, trade dress protection can last so long as the product continues to be sold. Customs registration can be useful to block the import of infringing products.

The U.S. Supreme Court’s 2017 decision in Star Athletica v. Varsity Brands has highlighted the copyright protections available for designs which can be separable from a useful object, in this case, the patterns on cheerleader uniforms. The design can be protectable under copyright if:

1. it can be perceived as a two- or three-dimensional work of art separate from the useful article, and
2. the design would qualify as a protectable pictorial, graphic or sculptural work — either on its own or fixed in some other tangible medium of expression.

In this case, the designs were patterns made as part of the uniforms, but the designs could be sketched separate and apart from the uniforms themselves. We expect this ruling to have broader impact to other non-functional aspects of designs, including products and packaging, perhaps more of which may be protected by copyright than previously. Having a copyright registration, if available, can be useful due to the different standards required to obtain an injunction against an infringer, as well as the ability to obtain statutory damages under U.S. law as opposed to actual damages. Among other benefits are the ease of obtaining the removal of infringing matter from a website under the Digital Millennium Copyright Act (a so-called DMCA takedown), and as with registered trade dress, the availability to register with U.S. Customs to block imports. Generally, U.S. copyrights last for 70 years beyond the life of the author, 95 years from first publication, or 120 years from creation, and their ownership by a business requires either that the author was an employee whose creation of the design was within the scope of employment (i.e., a work for hire) or a written assignment of the rights.

If the design is embodied in, or applied to, an article of manufacture, then design patent protection may be available. A design patent may be available even if the product has not been offered or sold in the marketplace. However, under U.S. law, it must be a new design, non-functional, ornamental, and not obvious when compared to existing designs (i.e., prior art). Design patents are currently limited in term to 15 years, and can be infringed even if there was no copying, unlike copyright. Even if the design is arrived at by another party independently, it would infringe the design patent. A design patent can also aid in obtaining trade dress protection because it serves as evidence that the trade dress is not functional. Business ownership of a design patent usually requires a written assignment or agreement with the creators of the work.

A product or packaging design can be highly important to the purchasing decision because the consumer may rely on its appearance to make judgments about its quality, and appreciate its aesthetic originality both independently of the product’s commercial purpose and as an article of manufacture. Intellectual property regimes both inside and outside of the United States allow proprietors to take advantage of these various aspects in securing multiple forms of exclusive rights.