By Jeri Zeder
For the apparel industry, counterfeiters are Public Enemy No. 1.
“To give you an idea of how counterfeiting is an issue in our industry, in 2012, [U.S.] Customs seized over $100 million of counterfeit footwear coming into the U.S.,” said Gary Dewar JD ’08, senior patent counsel at New Balance Athletic Shoe, Inc.
Dewar gave the keynote address at “Design Patents: Modernizing an Old Property Interest,” a day-long continuing legal education program sponsored by the Center for Advanced Legal Studies and held Nov. 22, 2013, at Sargent Hall.
For purposes of protection against counterfeiters, registrations are more important than case law, according to Dewar.
“A lot of the counterfeiters that we work to prevent are never going to go to court and are never going to fight this through the appeals process and are never going to spend money to actually challenge this,” he said. “Design patents in our area are a very quick, reasonably cheap and practical way of providing extra protection to a market where people are getting more sophisticated in looking for ways to get around trademark law and getting around other areas of IP law.”
Along with trademark, trade dress, and copyright, design patent is an effective device for maximizing legal protection for intellectual property manifested in products—a point reinforced throughout the day.
“Design patents are an important and often underutilized tool for protecting the intellectual property embodied in products,” said Professor Andrew Beckerman-Rodau, who helped organize the program and is co-director of Suffolk Law’s Intellectual Property concentration. “They should be used more.”
Design-patent law expert Perry Saidman, of Saidman DesignLaw Group, said one of the current issues in design patent litigation is overcoming the “sufficiently distinct” benchmark that the district court judges have used to grant summary judgment motions.
“You can’t use a design patent to protect an idea. If you get a design patent instead of a utility patent, you’re not going to be able to stop somebody else who uses a hammerhead and a claw and a step thing unless it looks like yours,” said Saidman, who wrote an amicus brief on behalf of Apple, Inc., that was cited by the U.S. Court of Appeals for the Federal Circuit in Egyptian Goddess v. Swisa.
Design-patent attorney Elizabeth D. Ferrill traveled from her office at Finnegan, Henderson, Farabow, Garrett & Dunner in Washington, D.C., to participate in the Suffolk program. For her, a highlight of the day was Dewar’s talk.
“He shared some great practical tips on using design patents to combat counterfeiters in the athletic and apparel industry,” she said. “The reality is that most design patents are never litigated and I think that Gary’s presentation showed how valuable design patents can be on a day-to-day basis.