Happy Toys v. Original Products
There are several issues that will arise in this appeal.
Design Patent Infringement
In order for Original Products (OP) to succeed in their claim of design patent
infringement, they must first show that they hold a valid patent.
Summary judgment was
granted in favor of OP against Happy Toy's (HT) claim of patent invalidity.
Patent Invalidity - Design Patents
Design patents protect the aesthetic appearance of a product rather than its functional
A design is patentable if it meets the requirements of novelty, originality, and
nonobviousness, is ornamental and is not dictated by functional considerations.
A design is novel if the 'ordinary observer' viewing the new design as a whole, would
consider it to be different from, rather than a modification of an already existing design.
The design of the 'Spinner' is a football with a narrow tail shaft containing three fins
protruding from its rear.
The facts do not indicate if such a design had been anticipated in the
prior art, and thus, presumably, an ordinary observer would consider it different from an already
existing design since no such design previously existed.
Further, the fact that a design patent
was issued in the first place seems to indicate that this design was not anticipated in the prior
art because an issued patent comes with a presumption of validity.
HT might argue that the
design of the football is similar to its classic spinning top, but this argument will likely fail since
the aesthetics of the football, unlike its function, do not resemble a top.
Thus, OP will likely be able to establish that their design is novel.
Nonobviousness requires the 'exercise of the inventive or originative faculty.'
measured in terms of a designer of ordinary capability who designs articles of the type
presented in the patent application.
HT will argue that the Spinner is something that any second grader might have
constructed, implying that the design was an obvious one.
OP will counter that such a design
required inventiveness since it is not intuitive to put a three finned tail shaft on a football.
Otherwise, other designers of ordinary capability might have done so and reaped great
commercial success, as evidenced by the success of the Spinner toy.
Thus, OP will likely be able to establish that their design is nonobvious
A patentable design must be ornamental, creating a more pleasing appearance.
satisfy the requirement of ornamentality, a design must be the product of aesthetic skill and
OP will contend that they designed the Spinner so as to make it appear as if a tail shaft
was protruding from the inside of the football, which requires some artistic skills since they must
create somewhat of a visual illusion using their abilities.
Further, the added tail shaft to the back
end of the football gives the product more of an ornate and dynamic feel since it looks so much
less like an ordinary football and more like a ball that is capable of jet propulsion.
Accordingly, OP has a strong argument that its design meets the ornamentality