On appeal of a summary judgement decision entered sua sponte by the district court, the Federal Circuit rejected Plaintiff’s argument that the desire of consumer’s to purchase a replacement hood or headlamp that matched the original part and/or overall vehicle design rendered the design functional. Stating that a consumer preference for a matching design over other designs that may perform the same function “is exactly the type of market advantage ‘manifestly contemplated’ by Congress in the laws authorizing design patents” (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 525 (1871), the Court held that “even in this context of a consumer preference for a particular design to match other parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional.” In so doing, the Court noted that while Ford had provided evidence that the inventors of the design patents are artists holding Bachelor of Fine Arts degrees and that no changes to the designs had been made in response to engineer review of the final designs, ABPA did not provide any evidence that consumers seeking replacement parts preferred those that restored the original appearance of their vehicles, nor identify any design patent case where aesthetic appeal was ruled functional.
ABPA attempted to buttress its argument that Ford’s design patents were invalid as being directed to functional features via citation of Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996). In Best Lock a design patent to a key blade was held invalid as functional as a key blade having a different design would not work with the corresponding lock. The Federal Circuit dismissed this argument, stating “But Best Lock turned on the admitted fact that no alternatively designed blade would mechanically operate the lock – not that the blade and lock were aesthetically compatible.” And, once again, Ford showed up with “abundant evidence”, this time of numerous alternative headlamp and hood designs that would fit its trucks.
While Ford acknowledged that its patents are exhausted upon the sale of a truck, as to the components actually sold as a part of the truck. ABPA argued that the doctrine should be extended to permit use of Ford’s designs on replacement parts, so long as those parts “are intended for use with Ford’s trucks.” Similarly, ABPA argued that the doctrine of repair rendered their users noninfringing. The Federal Circuit rejected both arguments and declined ABPA’s invitation to adapt the doctrines of exhaustion and repair to be design patent specific, stating “That the auto-body components covered by Ford’s patents may require replacement does not compel a special rule.”
This case includes a useful discussion of the requirement of ornamentality. It also provides an interesting juxtaposition to European statutory law that dictates that replacement parts are noninfringing.