District Court Rejects Efforts To Invalidate Design Patents on Automobile Parts
In what may be viewed as another blow to aftermarket automotive suppliers, on February 20, 2018, the U.S. District Court for the Eastern District of Michigan issued a decision declining to invalidate or render unenforceable two of Ford’s design patents covering auto-body parts for the F-150 truck. Automotive Body Parts Association (“ABPA”) v. Ford Global Technologies, LLC, Case No. 2:15-cv-10137 (E.D. Mich. Feb. 20, 2018). In reaching its decision as to whether Ford’s patents covered designs that were “ornamental” or “dictated by function,” the Court rejected the ABPA’s: (i) “matter-of-concern” argument, finding instead that the “the look of a vehicle matters,” especially given that the look may have influenced the initial purchasing decision; (ii) creative efforts to “import the aesthetic-functionality doctrine from trademark law to design-patent law”; (iii) claim that the design patents were based on their need to physically fit the F-150; and (iv) argument that the patents were unenforceable due to patent exhaustion where “the mere purchase of an F-150 does not convey to the owner the right to make new auto-body parts covered by Ford’s design patents.” Beyond denying ABPA’s summary judgment motion, the Court also surprisingly noted its intent to enter judgment in favor of Ford (which had not separately filed a motion on these issues in the instant case), given the Court’s consideration of “the entirety of ABPA’s declaratory judgment complaint.”
The ABPA decision is yet another in the long-running saga regarding proprietary protection for the aesthetics of automobiles and replacement parts, which has been the subject of extensive litigation for decades, including in the well-known 6th Circuit decision, Ferrari S.p.A. Esercizio Fabriche Automobili E Corse v. Carl Roberts, 944 F. 2d 1235 (6th Cir. 1991). Automotive manufacturers have sought to enforce their intellectual property rights (whether trademark, trade dress, or design patent) against third parties attempting to replicate the aesthetics of an entire vehicle (e.g., Ferrari case), or individual parts or body panels (e.g., ABPA case). Members of the ABPA—a well-known automotive trade association—import, make, and sell automotive parts that are used to repair vehicles that are damaged in collisions, including replacement parts for the Ford F-150.
This most recent episode in the saga began with Ford sending cease and desist letters to ABPA members, resulting in the ABPA filing a declaratory judgment action asserting that the Ford design patents were either invalid or unenforceable. According to the Court, the ABPA was effectively asking the Court to “eliminate design patents on auto-body parts.” While the ABPA decision does not make any groundbreaking changes to design patent law, some may find the decision interesting, given the ABPA’s attempted importation of trademark law’s theory of “aesthetic functionality” as a limit on the rights of exclusivity of a design patent. In this case, ABPA argued that when a Ford F-150 is involved in an accident and a replacement hood is required, it is functionally required that the aesthetics of the replacement hood match the aesthetics and shape of the original hood.
Fortunately for automobile manufacturers, the Court declined to import this frequently maligned and inconsistently applied theory of aesthetic functionality into the body of design patent law. The Court provides at least three reasons for reaching its conclusion. First, the Court acknowledges that no other court has imported aesthetic functionality into design patent law despite the coexistence of both forms of IP protection (trademark and design patents) for more than a century. Second, the Court stated that one purpose of trademark law is to “promote competition” by encouraging brand owners to develop high quality goods that will be remembered by consumers. Directly opposed to this “pro-competition purpose” is design patent law’s purpose of allowing patent holders to exclude others from replicating the protected design, a clearly anti-competitive purpose. Because these underlying purposes of trademark and design patent law are directly opposed to one another, it is, according to the Court, inappropriate to import this theory into the body of design patent law. Third, the Court reasoned that there was “greater reason for trademark law to be concerned with aesthetic functionality than design patent law,” though the Court’s analysis here seems premised solely on technical function and does not take into account how “functionality” under the Lanham Act must be considered under a variety of economic and non-economic factors.
The Court likewise rejected ABPA’s creative argument that Ford’s design patents were invalid because the designs are “dictated by function,” given the need for the hood and headlamp to mate with surrounding parts. Specifically, ABPA claimed that the design of the Ford F-150 hood is dictated by dimensions of the hood opening, the position of the surrounding body parts, the means for being mounted to the truck’s frame, and the need to match the overall aesthetics of the truck. The Court correctly noted that the constraints of the dimensions of the hood opening restrict the pool of available designs, but found that these limitations did not dictate the details of the design. In rejecting APBA’s position, the Court seemed most impacted by the existence of third-party parts specifically designed to replace the Ford F-150 hood where these parts intentionally have a different overall look as compared to the original Ford hood. For example, third parties sell hoods which fit the opening of the standard hood, but include different contours to create a different, custom look. The existence of these alternative, aesthetically different designs which fit the hood opening and perform the intended function, but do so while creating a different look, was strong evidence that the patented Ford design is not dictated by function.
Overall, the Court is to be commended for considering each party’s disparate arguments, including arguments raised in Ford’s motion seeking mootness based upon other developments in this and related cases. The Court’s proactive entry of judgment also moves this matter forward without further motion practice and at least for now provides design patent protections for the underlying automobile parts. Given the activity in this space, we anxiously await the next installment of the automobile parts IP protection saga.