Addressing the issue of the functional requirements of design patents, the US Court of Appeals for the Federal Circuit refused to invalidate design patents on truck parts on the basis of aesthetic functionality. Automotive Body Parts Association v. Ford Global Technologies, LLC, Case No. 18-1614 (Fed. Cir. July 23, 2019) (Stoll, J).

At issue were Ford’s design patents on its F-150 truck hood and headlamp. Ford accused members of the Automotive Body Parts Association (ABPA) of infringing on its patents. The ABPA sued Ford, seeking a declaratory judgment that the design patents were invalid or unenforceable. The district court entered summary judgment in favor of Ford, noting that the ABPA was essentially asking the court to eliminate design patents on auto parts. The ABPA appealed.

The Federal Circuit first addressed the ABPA’s invalidity argument. The ABPA argued that consumers seeking replacement parts prefer hoods and headlamps that restore the original appearance of their vehicles and that there is a functional benefit to designs that are aesthetically compatible with those vehicles. The Court disagreed, holding that “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.” To hold that designs that derive commercial value from their aesthetic appeal are functional would gut the very principles of a design patent, the Court noted.

The ABPA next argued that the Federal Circuit should apply “aesthetic functionality” from trademark law, which provides that purely aesthetic features can only be protected if they are non-functional. The Court again rejected the ABPA’s argument, pointing out that trademarks and design patents serve different purposes and have different governing law. Trademarks ensure brand awareness, whereas design patents expressly grant exclusive rights to the owners to a particular aesthetic for a limited period.

Next, the ABPA asked the Court to limit Ford’s ability to enforce its design patents to only the initial market for the sale of the F-150, and not the aftermarket for replacement parts. The ABPA reasoned that consumers have different concerns in different contexts and care less about the design when selecting a replacement part. The Court dismissed those argument as unpersuasive, unsupported and contrary to an abundant record of evidence.