Apple has filed a lawsuit against mobile phone rival Samsung, alleging that Samsung’s Galaxy line of smart phones and the Galaxy computer tablet infringe Apple patents and trademarks. The lawsuit, filed April 15 in the Northern District of California, represents an effort by Apple to maintain its status as clear market leader in the world of smart phones. The lawsuit cites various utility patents that Apple claims Samsung has infringed, but it goes beyond that in alleging that Samsung’s products infringe Apple’s trademark rights. While the patent claims are significant–and Samsung has now filed a countersuit against Apple alleging that Apple infringed its patents–I will focus in this post on some interesting trademark issues that Apple’s Samsung lawsuit raises.
Apple’s lawsuit claims that the look and feel of Samsung’s products, as well as the packaging that they come in, infringe upon Apple’s “trade dress.” Trade dress is a term that has its origins in older cases in which judges referred to the wrapping that a package came in as its dress. Nowadays, the term refers more broadly to product packaging and to the look and feel of the product itself. Apple’s lawsuit makes both types of trade dress claims. It claims that Samsung has copied so many features of the iPhone and iPad that a consumer seeing a Samsung product would actually believe them to be made by, or affiliated with, Apple. But it also claims that the packaging that Samsung employes mimics several details of Apple’s well-known method of packaging its product line.
Apple’s claim that Samsung uses icons that infringe its icons is a standard trademark claim. As I explain below, while trade dress claims inevitably raise some tricky legal issues, this type of claim is comparatively more straightforward. Icons can of course be trademarks, as the Lanham Act (the name of the law that governs federal trademarks) recognizes trademark protection for symbols, as well as words. Nike’s swoosh mark, for example, is a classic example of a symbol trademark. Apple has likewise trademarked several icons, such as the series of musical notes placed on a CD that it uses for iTunes.
Apple’s Claims Against Samsung for Infringement of Product Trade Dress
Apple first alleges that Samsung’s Galaxy line of android-based phones are in important respects copies of Apple’s iPhone 3GS. These features include: the rectangular shape of the iPhone; the use of rounded corners; a screen with black borders; black borders above and below the screen of approximately equal width with narrower corners on the sides; a top surface ensconced in a metal frame; colorful square icons, corners rounded and displayed in a grid; and a series of icons on the bottom of the display that remain constant as the user browses the phone. Apple cites a number of similar features in the case of the computer table it says consumers will associate with the iPad.
Apple’s claim is that the use of all of these features produces an aggregate result that has the look and feel of an iPhone and will result in consumer confusion. Apple will claim that none of the features was necessary. For example, it is not necessary to make a phone with a rectangular shape and that Samsung intentionally chose features in an effort to copy the design of the iPhone and iPad.
In order to succeed on its trade dress claims, Apple will need to prove that consumers associate certain features with Apple, and that these features are not “functional.” Apple has in fact filed several trademarks relating to the design and configuration of the iPhone, but a reviewing court will still question whether the use of any of these features would give Apple a competitive advantage if it were the only company allowed to use them. In trademark lingo, the court will inquire as to whether they are functional. A court will not award trademark protection to an element of a product that is functional, either because it makes the product more desirable to consumers or leads to substantial cost-savings in the production of the product for the company claiming trademark protection.
I expect Samsung to vigorously argue that the features that Apple cites are all functional. Start with the rectangular shape of the phone. This shape presumably makes the phone easier to grasp. A rectangular phone is a much better fit for one’s hand than is a square. As for rounded corners, they arguably also make the phone more pleasant to hold than a phone with sharp edges. Samsung could also argue that consumers generally prefer the look of products with rounded corners–for example, a number of websites use rounded corners to create a certain look–and that this makes rounded corners “aesthetically functional.” Samsung can argue that the black screen is easier on the eyes than, say, a white screen would be. The metal frame may lead to production savings or make the phone more durable over time. Colorful icons are presumably more attractive than bland icons, and anything other than a grid display would seem disorienting. Finally, if icons are truly important for the user to be able to access at all times, it makes sense for them to be available consistently as the user browses the phone.
Apple’s job will be to take all of Samsung’s functionality arguments and prove that they could have created the phone differently without experiencing a competitive disadvantage. Even if Samsung shows that some of the elements that it allegedly copied were functional, a court could still find that they went too far in copying nonessential elements of the iPhone. For example, perhaps if they had used a different color bordering on the side of the phone, instead of black, it would be more apparent to consumers that these were not iPhones. Perhaps the icons that are available for viewing at all times could be in a side panel. And so on. If Apple succeeds in proving that at least some of the element are not functional and that the overall look and feel of Samsung’s phones is strikingly similar to Apple’s, then it has a better chance of winning.
Even if Apple wins on the functionality issue, it still needs to show that the similar design of the phones results in confusion. If the case goes to trial, this will be a fact for a jury to decide. All of the Circuits have their own list of factors that juries are supposed to consider in making that determination. One thing that can be incredibly important in trademark cases is market surveys. If a significant percentage–say 20%–of the population is confused, that will bolster the case that there is trademark infringement. But “actual confusion,” in part because surveys depend on such things as the ways questions are presented, is only factor. One factor that courts in the Ninth Circuit, where Apple brought its lawsuit, consider is intent. That is, if Samsung intentionally copied Apple’s iPhone and iPad, particularly if it meant to evoke the Apple product line in selling its own brands, that would support a finding of trade dress infringement (but, again, only if what it copied was not functional.)
Apple’s complaint alleges that Samsung’s Galaxy line will create confusion at the point of sale and post-sale as well. Apple claims that consumers buying phones will see the Galaxy phone and assume that Apple either created it or sponsored it. One defense I expect Samsung to at least raise is that consumers who are buying phones tend to do so carefully. It is not usually a casual purchase. This means it is much more likely that a consumer will know something about the Galaxy phones and not be confused. But if a substantial number of in-store purchasers are nevertheless confused, that will be enough to support Apple’s claim of confusion at the point of sale.
Beyond that, Apple alleges post-sale confusion because consumers will see the phones being used and will assume they are Apple products. Post-sale confusion claims are nothing new, but they’ve only ever made much sense to me if one product is demonstrably inferior in quality to the product it is mimicking–which is what I suppose Apple will argue here. I am skeptical that this claim really has a lot of merit in this case, but no doubt Apple’s lawyers threw everything into the complaint that they could think of that could possibly have merit.
It will be interesting to see how the issues above, especially the question of functionality, get resolved if this case is not quickly settled.
Apple’s Claims Against Samsung for Infringement of Packaging Trade Dress
Apple also claims that Samsung’s packaging infringes on the trade dress in Apple’s packaging, which Apple claims is distinctive. An important point to remember is that product packaging that is “inherently distinctive” and is non-functional is protected as trade dress even if absent a showing that substantial number of consumers associate the packaging with the company manufacturing the product. In explaining the distinctiveness of the iPhone and iPad packaging, Apple’s complaint against Samsung describes what it describes as non-functional features of the packaging. Specifically, Apple identifies: the rectangular box that displays the product on top along with minimal metallic lettering identifying the product as an Apple iPhone or Apple iPad, a two-piece box in which the bottom piece is enclosed within the top piece, a tray that holds the product and which makes it immediately visible after a consumer opens the package. Apple claims that Samsung has copied these elements of its packaging trade dress.
As with the trade dress of the product itself, Apple’s lawsuit for infringement of the trade dress in the product packaging raises the question of whether what is claimed as trade dress is in fact functional. The two-piece box may well be functional if it is easier to open than alternatives. Perhaps this seems trivial, but on the other hand consumers do get quite frustrated with some product packaging that is not easy to open. At least to me, a packaging design that is easy to open is functional because this is something that consumers genuinely do care about. Similarly, I would not be surprised were a court to find that a cradle that gives a consumer immediate access to a product upon opening packaging served a useful purpose and is therefore functional.
While there is no functionality issue regarding the outside of the packaging that Samsung uses there is a real issue as to whether consumers would be in any way confused. Would a consumer viewing a picture of a box with a picture of the Galaxy on it genuinely believe that what he or she was purchasing was an Apple product? Perhaps, because the phone bears a similarity to the iPhone. This is another case where market surveys would be important to establish exactly what percentage of consumers were genuinely confused as to whether Apple manufactured or was affiliated with the Galaxy phone based on the product packaging. If it is true that consumers do not normally even see the package until after they buy the phone, that would be problematic for Apple’s case. As with any trademark case, confusion is a factual question and there is no straightforward, obvious answer absent data about what consumers actually believe.
Apple’s Claims Against Samsung for Trademark Infringement of Icons
Apple’s lawsuit against Samsung also references several icons that Apple uses in the iPhone and iPad that Apple alleges Samsung has infringed in its Galaxy products. The icons that the lawsuit references are an icon of a phone on a green background at a forty-five degree angle; an icon of a speech bubble on a green background; an icon of a flower on a sky blue background; an icon of gears on a gray background; a picture of a yellow note pad; a picture of a man on a spiral notebook; and a picture of two musical eighth-notes on a purple background. These icons represent (in the same order) symbols for making telephone calls, instant messaging, photos, settings, notes, contacts, and iTunes.
The Phone Icon. Like the Apple telephone, Samsung use an icon of a telephone that is placed on an angle on a green background. However, the two icons are not entirely the same. First, the backgrounds are a bit different. Apple’s telephone is on a light green background with stripes going from the top right to the bottom right. The background of the icon that Samsung uses is a darker shade of green. Though it appears to be divided into a few different regions of slightly different hues, it does not have stripes as does Apple’s icon. In addition, the phone in the icon occupies much more of the icon than does Apple’s. The angle of the phones is also not the same. Samsung’s appears to be more upright.
The Speech Bubble Icon. Whereas Apple’s speech bubble is on a green background with stripes, Samsung’s speech bubble is placed on a multi-colored background and does not use stripes. Apple’s speech bubble is basically an oval in shape. Samsung’s speech bubble is rectangular. Apple’s speech bubble is a solid white. Samsung’s is a shade of yellow with a smiley face prominently displayed on it.
The flower icon. While both phones use flowers as a symbol for pictures, the flowers look quite different to me, save for the fact that they are both yellow. In particular, the perspective is very different. Samsung’s flower is in the nature of a closeup photo and there is no sky visible in the background. One sees the petals of the flower and green in the upper right hand corner. Apple’s flower is also a closeup but the sky is clearly visible.
The gears icon. Apple’s icon includes three interlocking gears, although only one is prominently displayed. Samsung’s icon uses one gear. The background in Apple’s icon gives off a metallic look. It appears to be a piece of metal with holes in it. While one gear is prominent, one cannot make out the entirety of the gear in the icon. In Samsung’s icon, by contrast, the entirety of the one gear displayed is visible. The background consists of varying shades of blue. Beyond that, the gears themselves are not drawn in a similar style. For example, Apple’s gears have sharp points on the outer edge of the rotating gear whereas Samsung’s consist of squarish shapes with spaces in between.
The yellow notepad icon. The notepads are similar in color, but there are differences. Apple’s notepad is bordered on top by a solid dark brown. Samsung’s notepad is bordered on top by a shiny dark brown color. There is a solid brown behind the page in Samsung’s notepad that is not visible in Apple’s notepad. In addition, the bottom right corner of Samsung’s notepad is flipped up in the manner of a page being turned.
The man on a spiral notebook icon. Apple’s man is a solid brown color and is placed on a light brown background. There are tabs visible on the right. Samsung’s man is white and is placed on an orange, shiny metallic looking background. He is surrounded by a metal frame. In addition, the picture of the man in Samsung’s icon is larger than the one Apple uses.
The eighth-notes icon. The icon that Apple uses on its phones is purple in color and has two eighth-notes enclosed in a circle. Apple has also registered the symbol with the USPTO the symbol that it uses on desktops of the two eighth-notes on top of a CD. Samsung’s icon has a purple background with two eighth-notes connected by a bar on top of a CD.
In my view, the eighth-notes icon is the Apple icon claim that seems the clearest. Not only has Apple registered its iTunes icon, but it has been over five years since it was approved by the USPTO. That means the mark is protected nationwide, unless it can be shown that it is generic. To be honest, I find it puzzling that Samsung would use such a similar icon. I suppose Samsung’s only real chance would be if no actual confusion resulted, but I think it is clear that consumers will associate the Samsung mark with iTunes.
Some of the other icons are less clear to me. A picture of a telephone, for example, seems truly obvious as a symbol. Moreover, Apple could never have trademarked the telephone symbol itself because a depiction of a telephone would be considered generic. It is only because the telephone was placed against the green, striped background that the entirety of the icon became registrable as a trademark. And I’m just not sure that when consumers see the Samsung telephone on a darker shade of green that it will connote Apple to them. That is an empirical question that the parties will explore as they take surveys in this case.
The speech bubble icon claim seems weak to me. It is at least my impressions that the backgrounds are not at all the same, nor are the speech bubbles themselves. And, as with a telephone, I think a speech bubble is itself not eligible for trademark protection. I suspect that were a jury to consider this question, at least some of the members of the jury would feel as I do that the icons are different enough not to be confusing.
The gears icon is interesting because it’s not intuitively obvious that a picture of gears is the symbol to use for settings. That has to be in Apple’s favor as it makes it look like Samsung just wanted to cash in on Apple’s choice of picture in this context. On the other hand, the actual pictures are to my eye not easily confused. So it’s not clear to me how a jury would decide this one.
The notepad icon is also a close call. I’m not sure how a jury would decide this one. On the one hand, the overall pictures are similar. But the fact that Samsung’s page has the bottom right corner turned up and that the borders are quite different bodes in favor of Samsung. Here too, as with the phone icon, I have the feeling that a jury would be intuitively sympathetic to Samsung’s use of a truly obvious icon.
The man on a notebook icon is interesting. To be sure, Samsung did not have to use a picture of a man similar to the one Apple used. But the backgrounds are so different, with Apple’s notebook having a soft brown and Samsung’s notebook having a shiny orange background, that I would be surprised if this icon actually resulted in confusion.
The general gist of this analysis is that seemingly minor similarities and dissimilarities may be quite important on the ultimate issue of whether Samsung’s application icons are similar enough to Apple’s so as to lead to consumer confusion. It may that both companies, and their lawyers, will come up with surveys that support their side and that it will come down to which survey evidence seems more reliable. As I mentioned before, a jury will also be inclined to take into account other factors. These other factors–such as the fact that the products are in the same market and Apple’s marks are well-known–help Apple. In sum, Samsung needs to present solid statistical evidence to make its case that its icons are not really likely to lead consumers to believe that Apple made or is associated with its products.
This case will bear watching. I am confident that the case will hinge largely on questions of functionality and actual confusion, as I have indicated in the analysis above. As the case progresses, I will update this post.
