throbber
No. 15-777
`
`In the
`Supreme Court of the United States
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUNG
`TELECOMMUNICATIONS AMERICA LLC,
`
`v.
`
`APPLE INC.,
`
`Petitioners,
`
`Respondent.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF OF AMICUS CURIAE AMERICAN
`INTELLECTUAL PROPERTY LAW
`ASSOCIATION IN SUPPORT
`OF RESPONDENT
`
`DenIse W. DeFranco
`President
`amerIcan Intellectual
` ProPerty laW assocIatIon
`241 18th Street South, Suite 700
`Arlington, VA 22202
`(703) 415-0780
`
`Jerry r. selInger
`Counsel of Record
`Patterson & sherIDan, llP
`1700 Pacific Avenue, Suite 2650
`Dallas, TX 75201
`(214) 272-0957
`jselinger@pattersonsheridan.com
`Attorneys for Amicus Curiae
`American Intellectual Property Law Association
`
`267209
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`

`
`i
`
`TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . . i
`
`TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii
`
`STATEMENT OF INTEREST . . . . . . . . . . . . . . . . . . . .1
`
`SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . .2
`
`ARGUMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`I. Overview of Design Patent Law . . . . . . . . . . . . . .3
`
`II. The Additional Relief to Design Patentees
`Afforded by 35 U.S.C. § 289 is Clear and
`Unambiguous . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`
`
`III. Legislative History Supports a Plain-
` Meaning Statutory Construction . . . . . . . . . . . . .7
`
`A. Patent Remedies Prior to 1842 . . . . . . . . . . .7
`
`B. Patent Remedies and the Carpet Cases. . . .8
`
`C. T h e A c t o f 1 8 8 7 El i m i n a t e d
`
`Apportionment. . . . . . . . . . . . . . . . . . . . . . . .11
`
`D. Section 289 Implements Congressional
`Intent to Award an Infringer’s Entire
`Profits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`

`
`ii
`
`IV. Reliance on Explicit Language in Section 289
`Is Justified by Evidence in Trademark and
`Copyright Law That Congress Conditions
`Infringement Remedies with Express
`Language Where It Chooses to Do So. . . . . . . .15
`
`
`
`V. The Policy Implemented by Congress in
`
`1887 Remains Good Policy . . . . . . . . . . . . . . . . . .18
`
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .20
`
`Table of Contents
`
`Page
`
`

`
`iii
`
`CASES:
`
`Apple Inc. v. Samsung Elecs. Co.,
`
`786 F.3d 983 (Fed. Cir. 2015) . . . . . . . . . . . . . . . . . . . .6
`
`Aro Mfg. Co., Inc. v. Convertible Top
`Replacement Co., Inc.,
`377 U.S. 476 (1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . .14
`
`
`
`Bonita Boats, Inc. v. Thunder Craft Boards, Inc.,
`
`489 U.S. 141 (1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`Burdell v. Denig,
`
`92 US. 716 (1876) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
`
`Dobson v. Dornan,
`
`118 U.S. 10 (1886) . . . . . . . . . . . . . . . . . . . . . . . . .4, 6, 10
`
`Dobson v. Hartford Carpet Co.,
`
`114 U.S. 439 (1885) . . . . . . . . . . . . . . . . . . . . .4, 6, 10, 11
`
`Egyptian Goddess, Inc. v. Swisa, Inc.,
`
`543 F.3d 665 (Fed. Cir. 2008) . . . . . . . . . . . . . . . . . . . .4
`
`Feltner v. Columbia Pictures Television, Inc.,
`
`523 U.S. 340 (1998) . . . . . . . . . . . . . . . . . . . . . . . . . . .17
`
`F.W. Woolworth Co. v. Contemporary Arts, Inc.,
` U.S. 228 (1952) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18
`
`Garretson v. Clark,
`
`111 U.S. 120 (1884) . . . . . . . . . . . . . . . . . . . . . . . . . . . .10
`
`TABLE OF CITED AUTHORITIES
`
`Page
`
`

`
`iv
`
`Garretson v. Clark,
`
`10 F. Cas. 40 (C.C.N.D.N.Y. 1878). . . . . . . . . . . . . . . . .9
`
`Gorham Co. v. White,
`
`81 U.S. (14 Wall.) 511, 20 L.Ed. 731 (1871) . . . . . . .4, 5
`
`Henry Hanger & Display Fixture Corp. of Am.
`v. Sel-O-Rak Corp.,
`270 F.2d 635 (5th Cir. 1959). . . . . . . . . . . . . . . . . . . . . .7
`
`
`
`Markman v. Westview Instruments, Inc.,
`
`517 U.S. 370 (1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4
`
`Petrella v. Metro-Goldwyn-Mayer, Inc.
`
`134 S. Ct. 1962 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . .17
`
`Ratzlaf v. United States,
`
`510 U.S. 135 (1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
`
`Schnadig Corp. v. Gaines Mfg. Co.,
`
`620 F.2d 1166 (6th Cir. 1980). . . . . . . . . . . . . . . . . . . 6-7
`
`Seymour v. McCormick,
`
`57 U.S. (16 How.) 480 (1853) . . . . . . . . . . . . . . . . . . . . .7
`
`Sheldon v. Metro-Goldwyn Pictures Corp.,
`
`309 U.S. 390 (1940). . . . . . . . . . . . . . . . . . . . . . . . . . . .17
`
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`
`135 S. Ct. 831 (2015). . . . . . . . . . . . . . . . . . . . . . . . . . . .4
`
`Cited Authorities
`
`Page
`
`

`
`v
`
`STATUTES:
`
`15 U.S.C. § 1114 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15, 16
`
`15 U.S.C. § 1117 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15
`
`17 U.S.C. § 504 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16, 17
`
`35 U.S.C. § 70 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .14
`
`35 U.S.C. § 171 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3, 19
`
`35 U.S.C. § 284. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5, 13
`
`35 U.S.C. § 289. . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
`
`RULES:
`
`S. Ct. R. 37.3. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2
`
`S. Ct. R. 37.6. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
`
`OTHER AUTHORITIES:
`
`U.S. Const., art. 1, § 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`Act of Feb. 21, 1922, ch. 58, § 8, 42 Stat. 389 . . . . . . . . .13
`
`Act of August 29, 1842, ch. 263, § 2, 5 Stat. 543 . . . . . . .8
`
`Cited Authorities
`
`Page
`
`

`
`vi
`
`Du Mont, Jason J. and Janis, Mark D., American
`Design Patent Law: A Legal History, Ch. 6 -
`Design Patent Remedies at 6/14 (May 26, 2016),
`Ch. 6 - Design Patent Remedies (Cambridge Univ.
`Press Forthcoming) Available at SSRN: http://
`ssrn.com/abstract=2784746 . . . . . . . . . . . . 5, 10, 11, 12
`
`
`
`Gilman, Todd J., Attorney Puts Foot Down
`About Sneaker Patents; Avia Takes Shoe
`P i rat es t o Cou r t t o P rot ect Desig n,
` Wash. Post, July 20, 1987 . . . . . . . . . . . . . . . . . . . . . .19
`
`H.R. 8323, reprinted at 18 Cong. Rec. 834
`
`(Jan 20, 1887) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`H.R. Rep. 1923, 82nd Cong., 2d Sess. (1952) . . . . . . . . . .14
`
`H.R. Rep. No. 1587, 79th Cong., 2d Sess. (1946) . . . . . . .14
`
`H.R. Rep. No. 1966, as reprinted in 18 Cong.
` Rec. 834 (1887) . . . . . . . . . . . . . . . . . . . . . . . . . . . .11, 12
`
`1887 Act, ch. 105, 24 Stat. 387 . . . . . . . . . . . . . . . 10, 11, 12
`
`Act of August 1, 1946, c. 726, § 1, 60 Stat. 778 . . . . . . . .14
`
`Lanham T radema rk Act, Pub L.79 - 4 89,
`
`60 Stat 427 (1946) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15
`
`Patent Act of 1790, ch. 7, § 4, 1 Stat. 111. . . . . . . . . . . . . .7
`
`Cited Authorities
`
`Page
`
`

`
`vii
`
`Patent Act of 1793, ch. 11, § 5, 1 Stat. 318. . . . . . . . . . . . .7
`
`Patent Act of 1800 ch. 25, § 3, 2 Stat. 37. . . . . . . . . . . . . .7
`
`Patent Act of 1819, ch. 19, § 1, 3 Stat. 481. . . . . . . . . . . . .8
`
`Patent Act of 1836, ch. 357, § 17, 5 Stat. 117. . . . . . . . . . .8
`
`Patent Act of 1870, ch. 230, §§ 55, 59, 15 Stat 198
`
`(1870) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
`
`S. Rep. No. 104-177 (1995) . . . . . . . . . . . . . . . . . . . . . . . .19
`
`S. Rep. No. 1503, 79th Cong., 2 (1946) . . . . . . . . . . . . . . .14
`
`S. Rep. 206, 49th Cong., lst Sess. (Mar. 9, 1886) . . . . . . .12
`
`Cited Authorities
`
`Page
`
`

`
`1
`
`STATEMENT OF INTEREST
`
`The American Intellectual Property Law Association
`is a national bar association of approximately 14,000
`members who are primarily lawyers engaged in private
`and corporate practice, in government service, and in
`the academic community.1 The Association’s members
`represent a wide and diverse spectrum of individuals,
`companies, and institutions involved directly and
`indirectly in the practice of patent, trademark, copyright,
`trade secret, and unfair competition law as well as other
`fields of law affecting intellectual property. Our members
`represent both owners and users of intellectual property.
`Our mission includes helping establish and maintain fair
`and effective laws and policies that stimulate and reward
`invention while balancing the public’s interest in healthy
`competition, reasonable costs, and basic fairness.
`
`The Association has no stake in the parties to this
`litigation or in the result of this case, other than its
`
`1. In accordance with Supreme Court Rule 37.6, amicus
`curiae states that this brief was not authored, in whole or in part,
`by counsel to a party, and that no monetary contribution to the
`preparation or submission of this brief was made by any person
`or entity other than the amicus curiae and its counsel. Specifi-
`cally, after reasonable investigation, AIPLA believes that (i) no
`member of its Board or Amicus Committee who voted to file this
`brief, or any attorney in the law firm or corporation of such a
`member, represents a party to this litigation in this matter, (ii) no
`representative of any party to this litigation participated in the
`authorship of this brief, and (iii) no one other than AIPLA or its
`members who authored this brief and their law firms or employers
`made a monetary contribution to the preparation or submission
`of this brief.
`
`

`
`2
`
`interest in the correct and consistent interpretation of
`law affecting intellectual property.2
`
`SUMMARY OF ARGUMENT
`
`Congress has answered the question presented in
`this case. In enacting 35 U.S.C. § 289, it established that
`compensation for design patent infringement may include
`the infringer’s profit from the sale of the article bearing
`the claimed design. Section 289 expressly states that the
`infringer “shall be liable to the owner to the extent of his
`total profit” for the article manufactured to which the
`claimed design is applied.
`
`The legislative history of Section 289 supports the
`plain meaning of the statutory language and demonstrates
`the policy decision Congress made in providing this
`remedy to design patent owners. Congress over the
`years has made somewhat different decisions concerning
`recovery of an infringer’s profits with respect to utility
`patents (repealed in 1946), trademarks (granted in 1946,
`placing the apportionment burden on the infringer), and
`copyrights (granted in 1976, placing the apportionment
`burden on the infringer). Congress has not, however,
`moved away from its grant to design patent owners of
`the right to recover an infringer’s total, un-apportioned
`profits.
`
`2. In accordance with Supreme Court Rule 37.3(a), AIPLA
`has obtained the consent of the parties the file this amicus brief
`in support of Respondent. Petitioner Samsung has filed a blanket
`consent letter with the Court, and Respondent Apple delivered
`its consent to AIPLA by letter filed with this brief.
`
`

`
`3
`
`This remedy, moreover, remains an important weapon
`in the arsenal of design-patent holders in the fight against
`counterfeit articles of manufacture. That mundane,
`everyday battle should not be overshadowed by high-
`profile rhetoric.
`
`ARGUMENT
`
`I. Overview of Design Patent Law
`
`The development of design patent law parallels the
`history of technology in the United States and reflects
`policy decisions enacted by Congress concerning the role
`of design patents to “promote the progress of science and
`useful arts.” U.S. Const., art. 1, § 8. Of particular relevance
`here, Congress realized that the additional remedy of an
`infringer’s profits was necessary for adequate design
`patent protection.
`
`Since 1842, Congress has made protection available
`for “any new, original and ornamental design for an
`article of manufacture.” 35 U.S.C. § 171. To qualify for
`protection, a design must present an aesthetically pleasing
`appearance that is not dictated by function alone, and must
`satisfy the other criteria of patentability set forth in Title
`35 of the United States Code. See, e.g., Bonita Boats, Inc.
`v. Thunder Craft Boards, Inc., 489 U.S. 141, 148 (1989).
`
`Patent claims define the scope of protection afforded
`to the patent holder for both utility patents and design
`patents. A utility patent includes claims in the numbered
`sentences that appear at the end of a patent, whereas
`a design patent has only one claim directed to the
`ornamental design as shown by the drawings in the
`
`

`
`4
`
`patent.3 Construction of both claim forms is now an issue of
`law for the courts. Teva Pharms. USA, Inc. v. Sandoz, Inc.
`135 S. Ct. 831 (2015); Markman v. Westview Instruments,
`Inc., 517 U.S. 370 (1996). One practicality of construing
`a design patent claim, i.e., the drawing, is that a picture
`alone sometimes may be better than a thousand words.4
`
`The test for determining infringement of a design
`patent was established in Gorham Co. v. White, 81 U.S.
`(14 Wall.) 511, 20 L.Ed. 731 (1871):
`
`[I]f, in the eye of an ordinary observer, giving
`such attention as a purchaser usually gives,
`two designs are substantially the same, if
`the resemblance is such as to deceive such
`an observer, inducing him to purchase one
`supposing it to be the other, the first one
`patented is infringed by the other.
`
`3. See, e.g., Markman v. Westview Instruments, Inc., 517
`U.S. 370, 373 (1996)(utility patents); Dobson v. Hartford Carpet
`Co., 114 U.S. 439, 446 (1885)(design patents). Design patents are
`subject to the statutory claim requirement. 35 U.S.C. § 171 (“The
`provisions of this title relating to patents for inventions shall apply
`to patents for designs, except as otherwise provided.”).
`
`4. A claim to a design “substantially as shown,” without
`verbal description, is an accepted claim form. Dobson v. Dornan,
`118 U.S. 10, 14 (1886)(claimed design “is better represented by
`the photographic illustration than it could be by any description,
`and a description would probably not be intelligible without the
`illustration.”). See also Egyptian Goddess, Inc. v. Swisa, Inc., 543
`F.3d 665, 679-80 (Fed. Cir. 2008) (en banc).
`
`

`
`5
`
`Id. at 528.5 The need to prove substantial similarity that
`creates a potential for deception suggests the context in
`which Congress long ago provided design patent owners
`with the additional remedy now codified in 35 U.S.C. § 289.
`
`II. The Additional Relief to Design Patentees Afforded
`by 35 U.S.C. § 289 is Clear and Unambiguous
`
`In general, patent owners may recover “damages
`adequate to compensate for the infringement,” 35 U.S.C.
`§ 284, such as an award of their lost profits or a reasonable
`royalty for use of the claimed invention. In addition, design
`patent owners may elect those remedies as well as (with
`some limitations) the infringer’s profits under 35 U.S.C.
`§ 289:
`
`Whoever … applies the patented design … to
`any article of manufacture … shall be liable to
`the owner to the extent of his total profit, but
`not less than $250 .…
`
`Nothing in this section shall prevent, lessen or
`impeach any other remedy which an owner of
`an infringed patent has under the provisions
`of this title, but he shall not twice recover the
`profit made from the infringement.
`
`35 U.S.C. § 289 (emphasis added).
`
`5. This case was the outgrowth of a clash between solid silver
`manufacturers and silver-plating operations. See, e.g., Du Mont,
`Jason J. and Janis, Mark D., American Design Patent Law: A Le-
`gal History, Ch. 6 - Design Patent Remedies at 6/14 (May 26, 2016)
`(hereafter “Du Mont, Legal History”). American Design Patent
`Law: A Legal History, Ch. 6 - Design Patent Remedies (Cambridge
`Univ. Press Forthcoming) Available at SSRN: http://ssrn.com/ab-
`stract=2784746
`
`

`
`6
`
`As discussed below, this statutory language first was
`enacted in 1887 and has remained essentially unchanged.
`The genesis of the 1887 legislation can be found in
`decisions in 1885 and 1886 decisions of this Court that
`limited a design patent owner to recovery of “only nominal
`damages,” for want of evidence apportioning the value
`of the design and the value of the article of manufacture
`itself. Dobson v. Dornan, 118 U.S. 10 (1886); Dobson v.
`Hartford Carpet Co. 114 U.S. 439 (1885).
`
`The language of the statute is clear and unequivocal.
`One who applies a patented design to an article of
`manufacture shall be liable “to the extent of his total
`profits.” 35 U.S.C. § 289. See e.g., Ratzlaf v. United States,
`510 U.S. 135, 147-48 (1994) (“There are, we recognize,
`contrary indications in the statute’s legislative history. But
`we do not resort to legislative history to cloud a statutory
`text that is clear.”). It has been argued that the statutory
`term “article of manufacture” refers to the component to
`which the design is applied (here it would be the cell phone
`case) rather than the entire phone product sold. However,
`as pointed out by the Federal Circuit, the identification of
`the article of manufacture for purposes of Section 289 is an
`issue of fact to be decided on a case-by-case basis, focusing
`on how the product is sold. Apple Inc. v. Samsung Elecs.
`Co., 786 F.3d 983, 1002 (Fed. Cir. 2015); Brief of the United
`States as Amicus Curiae Supporting Neither Party, at 9.
`
`The statutory language constitutes a congressional
`rejection of a causation consideration, i.e., an apportionment
`requirement, and authorizes recovery of the infringer’s
`total profit from the article of manufacture bearing the
`patented design. See 786 F.3d at 1002-3 (citing Schnadig
`Corp. v. Gaines Mfg. Co., 620 F.2d 1166, 1171 (6th Cir.
`
`

`
`7
`
`1980); Henry Hanger & Display Fixture Corp. of Am.
`v. Sel-O-Rak Corp., 270 F.2d 635, 643-44 (5th Cir. 1959)).
`
`III. Legislative History Supports a Plain-Meaning
`Statutory Construction
`
`Section 289 is intertwined with the evolution of law/
`equity jurisprudence and with sea changes in technological
`advances.
`
`A. Patent Remedies Prior to 1842
`
`Section 4 of the Patent Act of 1790 allowed patentees
`to recover “such damages as assessed by a jury.”6 The
`Patent Act of 1793 changed the patentee’s recovery to
`“a sum, which shall be at least three times the price, for
`which the patentee has usually sold or licensed to other
`persons, for the use of the said invention.”7 Congress again
`changed the form of damages in the Patent Act of 1800,
`authorizing a patentee to recover “a sum equal to three
`times the actual damages sustained” by the patentee.8
`
`6. Patent Act of 1790, ch. 7, § 4, 1 Stat. 111 (1790).
`
`7. Patent Act of 1793, ch. 11, § 5, 1 Stat. 318 (Feb. 21, 1793).
`See also Seymour v. McCormick, 57 U.S. (16 How.) 480, 488 (1853)
`(while the price of a license became the measure of single dam-
`ages, “the value of a license could not be made a universal rule,
`as a measure of damages.”).
`
`8. Patent Act of 1800, ch. 25, § 3, 2 Stat. 37 (1800).
`
`

`
`8
`
`The Patent Act of 1819 ushered in federal equity’s
`involvement in patent litigation.9 Until then, a patentee
`had only the legal remedy of an action on the case, with
`relief limited to an award of damages. Under the 1819 Act,
`courts of equity could order equitable accountings of the
`infringer’s profits, but not the recovery of the patentee’s
`lost profits or royalty. The Patent Act of 1836 continued
`to give patentees the option of pursuing actions in law or
`equity. It empowered a jury in a court of law to assess
`“actual damages sustained” by the patentee, but repealed
`mandatory trebling.10 Instead, courts were vested with the
`discretionary power to award up to treble the amount of
`the actual damages as punitive damages.11 Federal equity
`jurisdiction was also continued into the 1836 Act.12 At least
`some judges sitting in equity awarded an accounting of
`infringer’s profits in patent cases.
`
`As noted above, Congress enacted provisions to
`address specific issues raised by patents on designs in
`1842.13
`
`B. Patent Remedies and the Carpet Cases
`
`In 1870, Congress expanded the power of federal
`equity to include where appropriate the award of the
`
`9. Patent Act of 1819, ch. 19, § 1, 3 Stat. 481-82 (1819).
`
`10. Patent Act of 1836, ch. 357, § 17, 5 Stat. 117 (1836).
`
`11. Id. at § 14.
`
`12. Id. at § 17.
`
`13. Act of August 29, 1842, ch. 263, § 2, 5 Stat. 543 (1842).
`
`

`
`9
`
`patentee’s damages as well as the infringer’s profits.14 An
`infringer’s profits remained the primary award for relief
`in a suit at equity while a patentee’s damages were the
`primary award in a suit in a court of law.15
`
`The doctrine of apportionment in utility patent cases
`was adopted in 1884 by this Court in Garretson v. Clark,16
`which involved an improvement patent on a mop head. The
`patentee sought an award of the infringer’s profits in a
`case in equity. The Master had recommended an award
`of only nominal damages because the patent was for an
`improvement, but the patentee’s proof on damages was for
`the mop as a whole. That recommendation was adopted,17
`and this Court affirmed, observing that the patent owner
`“produced no evidence to apportion the profits or damages
`between the improvement constituting the patented
`feature and the other features of the mop. His evidence
`went only to show the cost of the whole mop, and the price
`at which it was sold.”18
`
`This decision coincided with the culmination of clashes
`in the carpet industry between an old-line New England
`business and a then-new Philadelphia concern, the Dobson
`brothers. The American carpet industry experienced
`a dramatic transformation during the middle decades
`
`14. Patent Act of 1870, ch. 230, §§ 55, 59, 15 Stat. 198 (1870).
`
`15. See, e.g., Burdell v. Denig, 92 US. 716, 719-20 (1876).
`
`16. 111 U.S. 120 (1884).
`
`17. Garretson v. Clark, 10 F. Cas.40, 41 (C.C.N.D.N.Y. 1878).
`
`18. 111 U.S. at 121.
`
`

`
`10
`
`of the nineteenth century.19 Prior to then, the industry
`was composed primarily of individual weavers who used
`handlooms to produce ingrain carpets for local customers.
`Ingrain was a smooth-surfaced carpet in which the pattern
`was woven into the carpet. Erastus Bigelow invented and
`commercialized a series of power-driven looms in the late
`1830s. Notably, Mr. Bigelow obtained a utility patent on a
`power loom for producing ingrains, which he licensed to
`New England manufacturers. After his patent expired,
`the industry turned to design patent protection.20
`
`These facts provide context for the Court’s 1885 and
`1886 Dobson decisions, which were swiftly followed by
`congressional action in the form of the 1887 Act.21 The
`1885 decision consolidated three suits in equity for design
`patent infringement brought against John Dobson and
`James Dobson by the Hartford Carpet Co. and Bigelow
`Carpet Co. See Dobson, 114 U.S. 439.
`
`The appellate court had awarded the patent holders
`the profits which they would have made on the sale of
`the quantity of carpets sold by the Dobsons. The Court
`reversed, relying on the apportionment rule announced in
`Garretson. Dobson, 114 U.S. at 445-46 (“The [Garretson
`rule] is even more applicable to a patent for a design than to
`one for mechanism. A design or pattern in ornamentation
`or shape appeals only to the taste through the eye, and is
`often a matter of evanescent caprice.”). Accord Dobson
`v. Dornan, 118 U.S. 10, 17-18 (1886) (reversing award of
`
`19. Du Mont, Legal History at 6-11
`
`20. Id. at 6-12.
`
`21. Act of 1887, ch. 105, 24 Stat. 387 (1887).
`
`

`
`11
`
`lost profits to the patentee based on quantity of carpet
`sold by the defendant).
`
`C. The Act of 1887 Eliminated Apportionment
`
`Congress swiftly reacted to the application of the
`Dobson applications of the apportionment rule to design
`patents. The House Report accompanying H.R. 8323
`explicitly rejected the use of an apportionment rule as a
`limitation on an award of profits:
`
`It is expedient that the infringer’s entire
`profit on the article should be recoverable, as
`otherwise none of his profit can be recovered,
`for it is not apportionable; and it is just
`that the entire profit on the article should be
`recoverable and by the patentee, for it is the
`design that sells the article, and so that makes
`it possible to realize any profit at all ….”
`
`See H.R. Rep. No. 1966 at 2-3 (1886), reprinted in 18 Cong.
`Rec. 834 (1887) (emphasis added). Moreover, the House
`Report pointed directly to the 1885 Dobson decision as
`the reason for the need to change design patent law:
`
`It now appears that the design patent laws
`provide no effectual money recovery for
`infringement. This is the result of the statute,
`as applied to the peculiar character of property
`involved, in a test case decided April last by the
`Supreme Court of the United States. Since that
`decision the receipts of the Patent Office in the
`design department have fallen off upwards of 50
`percent, and the average weekly issue of design
`patents has also fallen off just on half.
`
`

`
`12
`
`H.R. Rep. No. 1966 at 1 (1886), reprinted in 18 Cong. Rec.
`834 (1887). The Senate Report accompanying S. 1813
`contained comparable language: “[T]he complainant must
`clearly prove what part of his own damage or what part
`of defendant’s whole profit on the article made and sold
`was directly due to the appearance of those articles ….”22
`Continuing, the Senate Report stated that it had been
`“abundantly shown to your committee … that the proof
`thus called for can never be furnished.”23
`
`The House Report compared the design patent
`right to a trademark right as a means of recovering an
`investment in goodwill: “the patentee is entitled to all the
`good will the design has in the market, and so, after the
`analogy of trade-mark law, is entitled to all the profit the
`infringer made on the goods marked.” Id.
`
`Those two bills were passed by Congress and became
`the Act of 1887. The language of the statute was consistent
`with the intent expressed in the House and Senate Reports
`to eliminate apportionment as a requirement. In pertinent
`part, § 1 provided that:
`
`Any person violating the provisions, or either
`of them, of this section, shall be liable in the
`amount of two hundred and fifty dollars; and
`
`22. S. Rep. 206, 49th Cong., 1st Sess (Mar. 9, 1886) at 1-2
`(emphasis in original), reprinted in Du Mont, Legal History, Ap-
`pendix A.
`
`23. Id. at 2. Isolated remarks made during the House floor
`debate, if taken out of context, might be raised to cloud the issue.
`See Du Mond, Legal History 6:39-6:41. Put in proper context, those
`isolated comments are inconsequential when compared against the
`clear language in both Senate and House reports.
`
`

`
`13
`
`in case the total profit made by him from the
`manufacture or sale, as aforesaid, of the article
`or articles to which the design, or colorable
`imitation thereof, has been applied, exceeds the
`sum of two hundred and fifty dollars, he shall
`be further liable for the excess of such profit
`over and above the sum of two hundred and
`fifty dollars….
`
`Section 2 explained that this grant of rights to recover
`statutory damages or “the total profits” of the infringer
`was complementary to the rights otherwise available to
`the owner of a design patent:
`
`[N]othing in this act contained shall prevent,
`lessen, impeach, or avoid any remedy at law or
`in equity which any owner of letters patent for
`a design, aggrieved by the infringement of the
`same, might have had if this act had not been
`passed ….
`
`Id.
`
`D. Section 289 Implements Congressional Intent
`to Award an Infringer’s Entire Profits
`
`Prior to 1946, the statutory precursor of the present
`§ 284 generally gave patent owners the right to recover
`both what the owner of the patent lost by infringement
`(i.e., damages) and what the infringer made (i.e., profits).24
`
`24. In 1922, Congress revised the general remedies provision
`for patent infringement to allow “a reasonable sum” rather than
`nominal damages as the floor for actual damages. Act of Feb. 21,
`1922, ch. 58, § 8, 42 Stat. 389, 392.
`
`

`
`14
`
`In 1946, Congress substantially altered the equitable
`relief provisions of the patent statute. Significantly,
`Congress eliminated the right to an accounting for an
`infringer’s profits in courts of equity and changed the
`equitable damages remedy to “general damages which
`shall be due compensation for making, using or selling the
`invention, not less than a reasonable royalty therefor ….”25
`The legislative history of the 1946 Act reveals Congress’
`concern with the difficulties that had plagued the courts
`in apportioning the infringer’s profits between that which
`was and that which was not attributable to the claimed
`invention.26
`
`In 1964, the Court explained that the purpose of the
`1946 change “was precisely to eliminate the recovery of
`profits as such and to allow recovery of damages only.” Aro
`Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc.,
`377 U.S. 476, 505 (1964). By contrast, the Court explained
`that “[i]n the 1952 codification, §§67 and 70 of the 1946
`Act were consolidated in the present § 284. The stated
`purpose was merely ‘reorganization in language to clarify
`the statement of the statutes.’ H.R. Rep. No. 1923, 82d
`Cong., 2d Sess., at 10, 29.” Id., at 505 n.20. There is nothing
`to indicate any different purpose in the codification of
`current § 289, despite some minor differences in wording.
`Notably, neither the 1946 Act nor the 1952 Act amended
`
`25. See Act of August 1, 1946, c. 726, § 1, 60 Stat. 778; 35
`U.S.C. §70 (1946).
`
`26. “[I]t is absolutely impossible to apportion the profits due
`to the invention, those being the only profits to which the patentee
`is entitled…. The only sound principle is to have the plaintiff re-
`cover the damages he can prove.” H.R. Rep., No. 1587, 79th Cong.,
`1, at 3 (1946). See also, S.Rep. No. 1503, 79th Cong., 2 (1946).
`
`

`
`15
`
`or repealed the separate remedy for design patent owners
`created in 1887.
`
`IV. Reliance on Explicit Language in Section 289 Is
`Justified by Evidence in Trademark and Copyright
`Law That Congress Conditions Infringement
`Remedies with Express Language Where It
`Chooses to Do So.
`
`That Congress meant what it said in Section 289 –
`that infringers of design patents are liable for their “total
`profit” on the sold articles – is supported by the enactment
`of parallel remedies for federally-registered trademarks
`and copyrights. By providing trademark and copyright
`owners the remedy of an infringer’s profits with specific
`and sometimes distinguishable terms, Congress has
`indicated that it knows how to require apportionment or
`apply other conditions when it wishes to do so.
`
`In 1946, Congress repealed the remedy of infringer’s
`profits for utility patent owners, but in that same year
`it provided that very remedy for trademark owners in
`enacting the Lanham Act. Under Section 1117(a) of Title
`15, a trademark owner that proves a violation of its rights
`provided by Section 1114 can recover compensatory
`damages, costs, and the infringer’s profits subject to the
`principles of equity.
`
`The Lanham Act imposes other prescriptions and
`limitations on the remedy of a trademark infringer’s profits.
`Under Section 1117(a), these include the following: (1) once
`the trademark owner proves the infringer’s total sales, the
`infringer carries the burden to prove costs or deductions;
`(2) the court may adjust an inadequate or excessive profits
`
`

`
`16
`
`award to “enter judgment for such sum as the court shall
`find to be just, according to the circumstances of the case”;
`and (3) the award must constitute compensation and not
`a penalty. Congress has also distinguished the remedies
`for a Section 1114(1)(a) use in commerce of a mark that
`infringes a registered mark from the remedies for the
`Section 1114(1)(b) production of a mark that is intended to
`be used in commerce and that infringes a registered mark.
`Unlike Section 1114(1)(a) infringement, Section 1114(1)(b)
`infringement triggers remedies of the defendant’s profits
`and damages only where there is proof that the defendant
`knew the infringing mark was intended to cause confusion,
`mistake or deception. Section 1114(2) provides a variety
`of provisions limiting the trademark owner’s remedy to
`injunctive relief with respect to innocent infringement
`by a printer or by a newspaper or magazine publisher. In
`addition, Section 1114(2)(D) includes extensive safe-harbor
`provisions for domain name registration authorities.
`
`In the Copyright Act, Section 504 provides that a
`copyright owner may elect an infringement recovery
`of its actual damages and any additional profits of the
`infringer, or instead an award of statutory damages.
`Thus, in

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