No. 15-777

IN THE

~uoreme ~ourt of t~e ~nite~ ~tate~

SAMSUNG ELECTRONICS CO., LTD., ET AL.,

Petitioners,

Vo

APPLE INC.,

Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURTOF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF AMICI CURIAE 113DISTINGUISHED INDUSTRIAL DESIGN

PROFESSIONALS AND EDUCATORSIN SUPPORT OF RESPONDENT

Rachel Wainer ApterORRICK, HERRINGTON

SUTCLIFFE LLP51 West 52nd StreetNew York, NY 10019

Mark S. DaviesCounsel of Record

ORRICK, HERRINGTON &

SUTCLIFFE LLP

1152 15th Street, NWWashington, DC 20005(202) 339-8400mark. davie s@orrick.com

Counsel for Amici Curiae

QUESTION PRESENTED

Whether 35 U.S.C. § 289, which provides that aparty that infringes a design patent may be held "lia-ble ... to the extent of his total profit," permits a juryto award the patent owner all profits the infringerearns from copying the patented design.

ii

TABLE OF CONTENTS

Page

QUESTION PRESENTED ........................................i

TABLE OF AUTHORITIES ....................................iv

INTEREST OF AMICI CURIAE ..............................1

SUMMARY OF THE ARGUMENT ..........................3

ARGUMENT .............................................................7

I. History Shows That A Product’s VisualDesign Drives Sales And Becomes TheProduct Itself In The Minds OfConsumers ..........................................................7

A. The founders of industrial designdiscovered that design drives sales ofconsumer products ........................................7

B. History teaches that a product’s visualdesign becomes the product itself inthe minds of consumers ..............................10

II. Design Is Particularly Important ForConsumer Products With ComplexTechnology ........................................................16

A. Successful technology companies usedesign to differentiate themselves fromcompetitors ..................................................16

B. Cognitive science explains why designis particularly important for consumerproducts with complex technology ..............17

iii

III. Section 289 Requires Disgorgement Of AnInfringer’s Total Profits On The InfringingArticle Of Manufacture ....................................24

A. Section 289 requires disgorgement of"total profits" because it is theinfringing design that sells the productand makes it possible to realize profits ......24

B. Given the jury’s infringement finding,Samsung must disgorge its totalprofits ...........................................................26

C. Samsung’s arguments to the contraryrest on a fundamentalmisunderstanding of design patents ..........30

D. This Court should decline to adopt the"totality of the circumstances" test foridentifying an article of manufacture ........34

CONCLUSION ........................................................36

APPENDIX A

List of Signatories ...................................................la

iv

TABLE OF AUTHORITIES

Cases

Page(s)

Gorham Co. v. White81 U.S. 511 (1871) ............................................6, 25

K-TEC, Inc. v. Vita-Mix Corp.,696 F.3d 1364 (Fed. Cir. 2012) ............................24

Statutes & Legislative Materials

35 U.S.C. § 171 ......................................................3, 24

35 U.S.C.§ 289 .............................i, 3,6,25,30,32,34

Act of Aug. 1, 1946, Ch. 726,60 Stat. 778 ..........................................................32

H.R. Rep. No. 1966 (1886), reprinted in18 Cong. Rec. 834 (1887) .................................3, 24

Other Authorities

3M Names Eric Quint Chief Design Of-ricer, 3M.com (Apr. 11, 2013),http://tinyurl, co m/j nxdp 9 q ...................................16

Christine Birkner, Packaging "Smalleris Bigger, "Adweek Magazine,June 6, 2016 .........................................................13

Ethicon Endo-Surgery, Inc. v.Covidien, Inc.,796 F.3d 1312 (Fed. Cir. 2015) ......................25, 31

V

Peter H. Bloch, Seeking the Ideal Form:Product Design and ConsumerResponse, J. of Marketing, July 1995 ..................19

Daniela Bfichler, How Different IsDifferent? Visual Perception of theDesigned Object (2011) ........................................21

David Butler & Linda Tischler, Designto Grow: How Coca-Cola Learned toCombine Scale and Agility (and How

You Can Too) (2015) ..........................10, 11, 16, 35

CACM Staff, Visualizations Make BigData Meaningful, Communicationsof the ACM, June 2014,http://tinyurl.com/z71ulrn ....................................16

Del Coates, Watches Tell More thanTime: Product Design, Information,and the Quest for Elegance (2003) .......................21

Nathan Crilly et al., Seeing Things:Consumer Response to the VisualDomain in Product Design, 25Design Stud. 547 (2004) ..........................21, 22, 27

Norman L. Dean, The Man Behind theBottle (2010) ...................................................12, 13

James T. Enns, The Thinking Eye, TheSeeing Brain (2004) .............................................28

David Gartman, Auto-Opium: A SocialHistory of American AutomobileDesign (Routledge 1994) ................................14, 15

vi

Siegfried Giedion, Mechanization TakesCommand: A Contribution ToAnonymous History (1948) ....................................8

Lev Grossman, The Apple of Your Ear,Time, Jan. 12 2007 .........................................26, 27

Gerald C. Kane & Alexandra Pear, TheRise of Visual Content Online, MITSloan Mgmt. Rev. (Jan. 4, 2016),http://tinyurl.com/jns258w ..................................17

David J. Kappos, America Doesn’t DoEnough to Protect Its Innovative De-signs, Wired (Nov. 9, 2015),http://tinyurl.com/q5nqspk ............................32, 33

Barry M. Katz, Make It New: A Historyof Silicon Valley Design (2015) ............................26

Kyong-Ae-Choi, Q&A: Hyundai DesignChief, The Wall Street Journal (Mar.5, 2013), http://tinyurl.com/hh37mc5 ..................16

Michael Lamm & Dave Holls, ACentury of Automotive Style: 100Years of American Car Design (1996) .......13, 4, 35

Raymond Loewy, Industrial Design:Yesterday, To-day and Tomorrow?Address Before the Meeting of theSociety and the Faculty of Royal De-signers for Industry (Oct. 9, 1980) inJ. of the Royal Society of Arts, Mar.1981, available at http://ti-nyurl.com/k82286s .................................................9

vii

Raymond Loewy, Jukebox on Wheels,The Atlantic, Apr. 1955,http ://tinyurl.com/jmda7jp ...................................13

Bob Lutz, Go Lutz Yourself: There AreNo Bad Cars, Only Bad Designs,Road & Track (Aug. 13, 2015),http://tinyurl.com/zgbqz9h ..................................35

Modern Living: Up from the Egg, Time,Oct. 31, 1949 ......................................................8, 9

Ruth Mugge & Jan P.L. Schoormans,Making Functional Inferences Basedon Product Design: The Effects ofDesign Newness, in Proceedings ofthe Society for Consumer Psychology(Feb. 24-27, 2011) ................................................19

David Charles Musker, Industrial De-sign Rights: United Kingdom, inIndustrial Design Rights: AnInternational Perspective (Brian W.Gray & Rita Gao eds., 2d ed. 2016) .....................33

Alexandra Neri, Industrial DesignRights: France, in Industrial DesignRights: An International Perspective(Brian W. Gray & Rita Gao eds., 2ded. 2016) ...............................................................33

Donald A. Norman, Emotional Design:Why We Love (or Hate) EverydayThings (2004) .......................................................19

o.oVlll

Stephen E. Palmer, Vision Science,Photons to Phenomenology (1999) .......................18

Luigi Pavenello, Industrial DesignRights: Italy in Industrial DesignRights: An International Perspective(Brian W. Gray & Rita Gao eds., 2ded. 2016) ...............................................................33

Antoaneta P. Petkova & Violina P.Rindova, When Is a New Thing aGood Thing? Technological Change,Product Form Design, and Percep-tions of Value for Product Innova-tions, 2006 Design Research Soc’y,Int’l Conference in Lisbon (IADE),Paper 0311, available at http://ti-nyurl.com/gmgukzp .............................................19

Gratiana Pol et al., Blinding Beauty:When and How ProductAttractiveness Overpowers NegativeInformation, Proceedings of theSociety for Consumer Psychology(Feb. 24-27, 2011) ................................................20

Arthur J. Pulos, American DesignEthic: A History of Industrial Designto 1940 (1983) .....................................7, 8, 9, 14, 32

Jeneanne Rae, What Is the Real Valueof Design? 24 Design Mgmt. Rev.,Winter 2013 ..........................................................17

ix

Ted Ryan, The Story of the Coca-ColaBottle, Feb. 26, 2015,http://tinyurl.com/jmbbg6u ............................10, 12

Bernd Schmitt & Alex Simonson,Marketing Aesthetics: The StrategicManagement of Brands, Identity, &Image (1997) .......................................17, 18, 19, 23

Shaun Smith & Joe Wheeler, Managingthe Customer Experience: TurningCustomers into Advocates (spec. ed.,Pearson Custom Publ’g, 2002) ......................20, 22

Michelle Stuhl, What Is Behind the Riseof the Chief Design Officer? Forbes(Nov. 11, 2014),http://tinyurl.com/h3v354k ..................................16

H. Tarantous, Big Improvement inComfort of 1925 Cars, N.Y. Times,Jan. 4, 1925 ..........................................................15

Alex Taylor III, GM vs. Ford: Thehundred-year war, Fortune (Mar. 23,2011), http://tinyurl.com/jar6njb .........................14

Claudia Townsend & Sonjay Sood, TheInherent Primacy of Aesthetic Attrib-ute Processing, in The Psychology ofDesign 208 (Rajeev Batra et al. eds.,2016) .........................................................18, 19, 22

Fred Vogelstein, Dogfight: How Appleand Google Went to War and Starteda Revolution (2013) ..............................................27

X

Rob Walker, The Guts of a NewMachine, N.Y. Times, Nov. 30, 2003 ...................27

INTEREST OF AMICI CURIAE1

Industrial Design (ID) is the professional serviceof creating products and systems that optimize func-tion, value, and appearance for the mutual benefitof user and manufacturer. Amici curiae are leadingindustrial design professionals, fashion designers, de-sign museum directors, design research professionalsand design academics who work in high-profile con-sulting firms, prominent academic institutions andleading high-technology corporations across theUnited States and Europe. We have decades of expe-rience providing product design services to leadingU.S. and international corporations, nonprofit organ-izations, and government entities including Apple,Samsung, American Airlines, AT&T, Calvin Klein,Citibank, Coca-Cola, Ford, General Electric, GeneralMotors, Goldman Sachs, The Harvard Endowment,Herman Miller, Hewlett Packard, Google, IBM, Knoll,Lenovo, LG, Louis Vuitton, Mobil Oil, Motorola, theNew York Stock Exchange, NASA, Nike, Pfizer, Po-laroid, Procter & Gamble, Starbucks, Target, Whirl-pool, and Xerox and many, many others.

Amici have served as President and Chairman ofthe Board of the Industrial Designers Society ofAmerica. We have lectured at leading graduate pro-

1 The parties have consented to the filing of this brief, andtheir written consents are on file with the Clerk of this Court.No counsel for a party authored this brief in whole or in part,and no person other than amici and their counsel has made anymonetary contribution to the preparation or submission of thisbrief.

grams, including, Harvard, MIT Sloan School of Man-agement, Stanford University, Parsons School of De-sign, Pratt Institute of Design, Rhode Island School ofDesign, Innovation Design Lab of Samsung, Art Cen-ter College of Design and the University of Pennsyl-vania. Collectively, we have written and contributedto hundreds of leading business, academic and newspublications, including Business Week, The NewYork Times, Innovations Magazine, Science and TheWall Street Journal.

We have been invited speakers at leading law con-ferences on design patents. We have been either con-sulting or testifying experts in hundreds of designpatent cases including those which have formed thebasis for modern design patent law. We have testifiedbefore Congress about intellectual property and de-sign patents. We have been instrumental in the plan-ning of and have spoken at the Patent Office’s "DesignDay" since its inception.

We have received hundreds of major designawards for our work in industrial design, design re-search and design education. We have served on hun-dreds of design competitions in the U.S. and abroad.Our product design solutions are on display at leadingdesign museums in the U.S. and abroad including theMuseum of Modern Art. Our design solutions havefundamentally contributed to the economic growth ofthe U.S. and world economy.

We all share a strong professional interest in see-ing that design patent law continues to protect invest-ments in product design. Congress has provided that"[w]hoever invents any new, original and ornamental

3

design for an article of manufacture may obtain a pa-tent therefor." 35 U.S.C. § 171 (a). And one who in-fringes a design patent "shall be liable to the owner tothe extent of his total profit." 35 U.S.C. § 289. Wehave based our professional lives on the assumptionthat designs are patentable and worth enforcing wheninfringed. Collectively, we are named inventor onhundreds of U.S. design and utility patents.

Amici have no personal interest in the outcome ofthis dispute between Apple Inc. and Samsung Elec-tronics.2 We have consulted for both parties. Both ofthese leading technology companies own numerousdesign patents. This case happens to involve three ofApple’s design patents. But Samsung also owns de-sign patents on various sophisticated and complextechnological products. See, e.g., U.S. Design PatentNo. 658,612 (ornamental design for a television set).The fundamental principles of visual design set forthbelow are agnostic as to who brings forth a new designto the world.

SUMMARY OF THE ARGUMENT

Congress determined in 1887 that "it is the designthat sells the article, and so that makes it possible torealize any profit at all." H.R. Rep. No. 1966 (1886),reprinted in 18 Cong. Rec. 834 (1887). History and sci-ence have proven that judgment correct.

2 We cite Samsung’s Opening Brief as Samsung Br., theBrief for the United States as U.S. Br., and the Joint Appendixbelow as C.A.

4

I. The history of industrial design and the experi-ence of America’s most profitable industries demon-strate the value of design. The founders of Americanindustrial design discovered that design drives salesof consumer and commercial products. Indeed, a prod-uct’s visual design becomes the product itself in theminds of consumers. Modern cognitive and marketingscience verifies this fact. Two examples prove thepoint. First, the distinctive Coca-Cola bottle, whichwas designed and patented in 1915, helped the softdrink become the most widely distributed product onearth. A 1949 study showed that more than 99% ofAmericans could identify a bottle of Coke by shapealone, and customers routinely report that Coketastes better when consumed from the patented bot-tle. The same is true for American automobiles.Henry Ford’s original Model T was notoriously unat-tractive. After General Motors created an Art & Col-ours department in the 1920s, GM permanentlysurpassed Ford in annual sales. Embracing industrialdesign eventually lead to huge U.S. economic growth,as car manufacturers discovered that without chang-ing the underlying technology, engineering or func-tionality, they could create many different makes andmodels simply by changing the automobile’s shape,style and appearance. Today, design outranks allother considerations and is the driving force behindnew car purchases.

II. Design is particularly important for consumerproducts with complex technology. Cognitive scienceproves that a product’s visual design has powerful ef-fects on the human mind and decision making pro-cesses, and eventually comes to signify to theconsumer the underlying function, origin, and overall

user experience of that product. Sight is overwhelm-ingly our strongest sense. In addition, the humanbrain recalls memories and emotions attached to vis-ual stimuli for far longer than text or words. Becausethe brain does not separate the physical appearanceof an object from its functions, a consumer’s subse-quent exposure, experience, or knowledge of a productare cognitively mapped onto the product’s visual de-sign such that the look of the product comes to repre-sent the underlying features, functions, and total userexperience.

This is especially true in the market for complextechnological products. Counterintuitively, when asingle product performs numerous complex functions,and when parity in functionality is assumed acrossmanufacturers, product design becomes more im-portant, not less. By stealing designs, manufacturerssteal not only the visual design of the product, but theunderlying functional attributes attached to the de-sign of the product, the mental model that the con-sumer has constructed to understand the product,and the brand itself and all associated attributes de-veloped at great expense in the marketplace.

III. Design patents thus protect from misappro-priation not only the overall visual design of the prod-uct, but the underlying attributes attached to thedesign of the product in the eye and mind of the con-sumer. When an infringer steals the design of a suc-cessful product, it captures the consumer’sunderstanding of what the product does and what theproduct means in addition to the emotional connec-tions associated with the company’s brand. The plain

6

text reading of 35 U.S.C. § 289, requiring disgorge-ment of total profits, thus remains sound and per-fectly aligned with modern cognitive science. Indeed,disgorgement of total profits is the only appropriateremedy for design patent infringement.

Ignoring the statute’s clear text, Samsung arguesthat total profits cannot really mean total profits, be-cause "[u]nder [this] rule, an infringer of a patentedcupholder design must pay its entire profits on a car,an infringer of a patented marine-windshield designmust pay its entire profits on a boat, an infringer of apatented, preinstalled musical-note icon design mustpay its entire profits on a computer, and so on." Sam-sung Br. 1; see also U.S. Br. 23. But Samsung is pro-foundly confused about the design patent system. Thetest for design patent infringement requires the pos-sibility of a captured sale. See Gorham Co. v. White,81 U.S. 511, 528 (1871). Under this test, one who pa-tents a design for a cupholder could never recoverprofits on an entire car because no one could be in-duced into purchasing a Jeep supposing it to be a Por-sche simply because the vehicle’s cupholders lookedthe same.

The jury was instructed as much in this case--that it could only find that Samsung’s phones in-fringed Apple’s design patents "if, in the eye of an or-dinary observer, giving such attention as a purchaserusually gives, the resemblance between the two de-signs is such as to deceive such an observer, inducinghim to purchase one supposing it to be the other." Theundersigned take no position on whether the jury’sfinding on that point was correct, but Samsung doesnot challenge it before this Court. Thus, the jury

7

properly awarded to Apple all of Samsung’s profitsfrom selling its copycat devices.

ARGUMENT

History Shows That A Product’s VisualDesign Drives Sales And Becomes TheProduct Itself In The Minds Of Consum-ers.

The founders of industrial designdiscovered that design drives salesof consumer products.

Americans’ first inventions were born of neces-sity, directed towards function rather than aesthetics,as the "implements brought from Europe ... provedless than adequate in the American wilderness." Ar-thur J. Pulos, American Design Ethic: A History of In-dustrial Design to 1940 5 (1983). Critics praisedAmerica’s "technological wonders," but found themlacking in appearance--"severe and even tasteless,with little or no ornamental value." Id. at 110, 116.That suited the American public at the time, which"was not concerned with such lofty notions as the re-lationship of function to form or the inherent aes-thetic of manufactured objects--it was simplyoverwhelmed by the flood of affordable machine-madeproducts that promised to improve material exist-ence." Id. at 161.

By the early 20th century, the United States hadsurpassed all other countries in the sale of manufac-tured goods, but "an undercurrent of dissatisfactionand even embarrassment was emerging about the

lack of genuine aesthetic quality in American manu-factures." Id. at 242. At the same time, with the ad-vent of mass-produced print advertising, it "quicklybecame apparent that the appearance of the productin an advertisement would be an important elementin its public acceptability." Id. at 279.

Thus, American manufacturers began to recog-nize "that appearance does count," and industrial de-signers became integral to shaping mass-producedconsumer products. Siegfried Giedion, MechanizationTakes Command: A Contribution To Anonymous His-tory 608-10 (1948). Raymond Loewy, who would be-come the father of American industrial design, firstworked on a redesign of Sigmund Gestetner’s "famedold duplicating machine." Modern Living: Up from theEgg, Time, Oct. 31, 1949. Here is an image of the orig-inal machine:

In just five days, Loewy transformed it from a setof exposed and chaotic-looking metals and gears sit-ting on top of four protruding tubes into a streamlinedand aesthetically appealing device. Here is a pictureof Loewy’s design:

9

After Loewy’s re-design, sales soared so high thatGestetner was required to build three additional fac-tories to meet the increased demand, and the com-pany kept the same model for 30 years. RaymondLoewy, Industrial Design: Yesterday, Tooday and To-morrow? Address Before the Meeting of the Societyand the Faculty of Royal Designers for Industry (Oct.9, 1980) in J. of the Royal Society of Arts, Mar. 1981,at 200, 203, available at http://tinyurl.com/k82286s.

Loewy later performed the same task for Sears,Roebuck & Co.’s Coldspot refrigerator, turning "anugly machine with a dust trap under its spindly legs"into a "gleaming unit of functional simplicity." Mod~ern Living, supra; see U.S. Design Patent No. 112,080(Nov. 8, 1938). Sales increased "from 15,000 to275,000 units within five years." Pulos, supra, at 358.

By 1949, American businesses were spendingnearly half a billion dollars annually on industrial de-sign. Modern Living, supra. The work of Loewy andhis contemporaries proved, in concrete numbers, that"although the consumer might not always understandthe mechanism or construction of a manufacturedproduct ... he could always depend upon what hissenses told him about it." Pulos, supra, at 133.

10

History teaches that a product’s vis-ual design becomes the product it-self in the minds of consumers.

Visual design does not only drive sales. The his-tory of industrial design and the experience of Amer-ica’s most profitable industries demonstrate that aproduct’s visual design becomes the product itself inthe mind of consumers. It is the design of a successfulproduct that embodies the consumer’s understandingof and desire to own and interact with it. Two exam-ples prove the point.

1. Coca- Cola

After the Civil War, John Pemberton launchedthe Pemberton Chemical Company with entrepre-neurial dreams and a secret formula for a new bever-age: cola-flavored syrup mixed with soda water. DavidButler & Linda Tischler, Design to Grow: How Coca-Cola Learned to Combine Scale and Agility (and HowYou Can Too) 36-37 (2015). Pemberton’s accountant,a fan of alliteration, suggested the name "Coca-Cola."Id. at 37. The drink was originally sold only from sodafountains. In 1899, two Chattanooga lawyers con-tracted with Coca-Cola to bottle the drink to be con-sumed on the go. Ted Ryan, The Story of the Coca-Cola Bottle, Feb. 26, 2015, http://ti-nyurl.com/jmbbg6u.

Within just a few years, there were hundreds ofindependent bottlers, and, unfortunately, legions ofimitators. Butler, supra, at 38. The banality of Coca-

11

Cola’s bottles--simple, straight-sided glass contain-ers with an embossed name or a paper label--madethem easy to duplicate. Id. at 54.

In 1915, the Trustees of the Coca-Cola BottlingAssociation commenced a national contest for the de-sign of a unique new bottle. Id. They sought a bottlethat "a person can recognize as a Coca-Cola bottlewhen he feels it in the dark ... so shaped that, even ifbroken, a person could tell at a glance what it was."Id. at 53-54. Two employees of the Root Glass Com-pany of Terre Haute, Indiana--Earl R. Dean and AI-exander Samuelson--drew inspiration from the shapeof a cocoa pod to design the winning bottle. Id. at 54;see U.S. Design Patent No. 48,160 (Nov. 16, 1915).

12

The distinctive bottle, with its contoured shapeand the words "Coca-Cola" scrawled in cursive, put astop to imitators and was "the catalyst that [helped]Coca-Cola become the most widely distributed prod-uct on earth." Norman L. Dean, The Man Behind theBottle 106 (2010). A 1949 study showed that morethan 99% of Americans could identify a bottle of Cokeby shape alone. Ryan, supra. The impact of the con-tour bottle’s design on the company’s profits--andAmerican culture--is difficult to overstate. Accordingto Coca-Cola, "[n]o one can even guess where theCoca-Cola business might be today if it were not forthe unique package that distinguishes the prod-uct ... around the world." Dean, supra, at 14. Theiconic shape of the bottle is so important as a brandsignifier that today it is reproduced in silhouette formon aluminum cans of Coke:

13

Christine Birkner, Packaging "Smaller is Bigger,"Adweek Magazine, June 6, 2016 at 12.

But the contour bottle represents more than justmarketing for the brand--it has become synonymouswith the beverage itself. Customers routinely reportthat Coca-Cola tastes better when consumed from thecontour bottle, though there is no difference in the for-mula. Dean, supra at 108. In the words of Coca-Cola’sExecutive Vice President: "Nothing instantly com-municates the essence of Coca-Cola throughout theworld like our contour bottle." Id. at 16.

2. American Automobiles

"The American automobile ... changed the habitsof every member of modern society, lit is] the symbol,all over the world, of American industrial genius andenterprise." Raymond Loewy, Jukebox on Wheels, TheAtlantic, Apr. 1955, http://tinyurl.com/jmda7jp. Ini-tially, though, American cars were simply horseless,motorized carriages that "didn’t look right" withoutthe horses. Michael Lamm & Dave Holls, A Centuryof Automotive Style: 100 Years of American Car De-

14

sign 13 (1996). Public descriptions of early automo-biles ranged from "generally untidy" to "positivelyugly," David Gartman, Auto-Opium: A Social Historyof American Automobile Design 23, 26 (Routledge1994), and from 1900 to 1925, car makers singularlyfocused "on making cars reliable, durable, useful, andcomfortable," Lamm, supra, at 24. Consumers’ inter-ests initially aligned with this focus, and, "[f]orawhile, that the automobile worked at all and could beoperated with reasonable reliability was sufficient."Pulos, supra, at 242.

Henry Ford’s Model T was the perfect example: Itwas notoriously unattractive, yet it sold more than 15million units. Id. at 256. In 1926, however, GeneralMotors introduced a bold and colorful Chevrolet thatquickly surpassed sales of the black Model T. Gart-man, supra, at 77. General Motors president Alfred P.Sloan understood just "how much appearance andstyle contributed to the sale of new automobiles," andin 1927, he developed "a plan to establish a specialdepartment to study the question of art and color com-binations in General Motors products." Lamm, supra,at 84, 89. Sloan hired designer Harley J. Earl to leadthe newly minted Art & Colours department, whichwould become "the most important, influential auto-motive styling section the world has ever known." Id.at 84; see, e.g., U.S. Design Patent No 93,764 (Nov. 6,1934) (design for an automobile or similar article);U.S. Design Patent No 95,495 (May 7, 1935) (designfor automobile). It would also lead General Motors topermanently surpass Ford in annual sales. See AlexTaylor III, GM vs. Ford: The hundred-year war, For-tune (Mar. 23, 2011), http://tinyurl.com/jar6njb.

15

Embracing industrial design led not only to morebeautiful automobiles, but to huge U.S. economicgrowth. Without changing the underlying technology,engineering or functionality, car manufacturers dis-covered that they could create many different makesand models simply by changing the automobile’sshape, style and appearance. For example, GeneralMotors maintained five separate brands--Chevrolet,Pontiac, Oldsmobile, Buick, and Cadillac--whosemodels shared not only mechanical parts, like trans-missions and brakes, but also body shells, the struc-tural foundations of the car’s body. Gartman, supra,at 74. Dozens of different GM models were built onthe same three body shells. Yet each model lookedunique due to the addition of aesthetic features likefenders, headlights, taillights, and trim. Id. at 97. AndGM produced each model in a dazzling variety of col-ors. It also introduced the annual model change,tweaking the body style of all cars each year. Id. at75-76. Sales of these different models to "people everthirsty for something new" soared. H. Tarantous, BigImprovement in Comfort of 1925 Cars, N.Y. Times,Jan. 4, 1925 at A2.

Whether the relevant article of manufacture is aniconic soda bottle or an automobile, history teachesthat visual design is the way to package, market andsell technological innovation, manufacturingknowhow, product reliability and performance expec-tations. Appearance becomes identified with the un-derlying functional features and with a particularlevel of product quality and safety.

16

II. Design Is Particularly Important ForConsumer Products With ComplexTechnology.

Successful technology companiesuse design to differentiate them-selves from competitors.

The importance of visual design is reflected in thecomplex technological products that have becomeubiquitous in modern society. For American compa-nies, "[a]s the stakes get higher, and the world getsmore complex, using design to learn and adapt is ...critical." Butler, supra, at 104. Thus, today "compa-nies are elevating design and expanding its rolethroughout the business." Michelle Stuhl, What IsBehind the Rise of the Chief Design Officer? Forbes(Nov. 11, 2014), http://tinyurl.com/h3v354k. Indeed,"design is being baked into every aspect of corporatelife." Id.

There are over 40,000 industrial designers in theUnited States, and "many Silicon Valley startupshave three co-founders: a technologist, a business per-son, and an artist [designer]." CACM Staff, Visualiza-tions Make Big Data Meaningful, Communications ofthe ACM, June 2014 at 21, http://tinyurl.com/z71ulrn.Similarly, many well-known corporations, including3M, Audi, Hyundai, Johnson & Johnson, Pepsi Co.,Philips Electronics and Volkswagen, count Chief De-sign Officers among their corporate executives. SeeStuhl, supra; Kyong-Ae-Choi, Q&A: Hyundai DesignChief, The Wall Street Journal (Mar. 5, 2013),http://tinyurl.com/hh37mc5; 3M Names Eric Quint

17

Chief Design Officer, 3M.com (Apr. 11, 2013), http://ti-nyurl.com/jnxdp9q.

These companies understand that "giving designa seat at the table adds significant value that helpsdifferentiate and elevate [them] beyond the norm andhelps to deliver tangible business results." JeneanneRae, What Is the Real Value of Design? 24 DesignMgmt. Rev., Winter 2013, at 30, 37. The world’s mostsuccessful companies view design as a key corporateasset that undergirds their brand and differentiatesthem from competitors. Id. In fact, America’s top fif-teen "design conscious companies" outperform theirpeer group by 228% on a market asset value basis. Id.at 33. Design is thus a proven catalyst for Americanbusiness and economic growth.

Cognitive science explains why de-sign is particularly important forconsumer products with complextechnology.

Cognitive and marketing science explain why vis-ual design is so critical to complex technology. Visualdesign acts as a powerful motivator of consumers’choices, and Aristotle’s maxim that "all perceptionstarts with the eye" is especially true with today’s con-sumer products. Bernd Schmitt & Alex Simonson,Marketing Aesthetics: The Strategic Management ofBrands, Identity, & Image 85 (1997).

"Sight is our strongest sense: 90% of informationtransmitted to the brain is visual, and 40% of nervefibers to the brain are connected to the retina." GeraldC. Kane & Alexandra Pear, The Rise of Visual Content

18

Online, MIT Sloan Mgmt. Rev. (Jan. 4, 2016), http://ti-nyurl.com/jns258w. Once a product’s image is re-ceived on the retina, the mind rapidly processes theimage until it reaches what researchers label the "cat-egory-based" stage, where consumers--through vis-ual image alone--"recover~] the functional, propertiesof objects: what they afford the organism, given itscurrent beliefs, desires, goals and motives." StephenE. Palmer, Vision Science, Photons to Phenomenology91-92 (1999).

Visual designs "are processed more quickly thanwords and the connection between an image and itsmeaning is more direct than the connection betweena word and its meaning." Claudia Townsend & SonjaySood, The Inherent Primacy of Aesthetic Attribute Pro-cessing, in The Psychology of Design 208 (Rajeev Ba-tra et al. eds., 2016). While verbal or textualinformation regarding functionality must be pro-cessed sequentially, cognitive processing of visual de-sign occurs "all at once" and "can be so quick that wemay not be aware of its effects." Id. at 208, 209. Inother words, while visual design is processed holisti-cally and instantly, functions are processed sequen-tially, based on textural and spatiotemporalinteractions with the product. "[B]ecause design ispresented visually and because its visual presenta-tion does not require any interpretation, it is pro-cessed more quickly and less deliberately than otherattributes." Id. at 214.

In addition, the human brain recalls memoriesand emotions attached to visual stimuli (pictures,shapes, colors, products, etc.) for far longer than thoseattached to text or words. Schmitt, supra, at 86-87.

19

This is the reason we can identify a product we haveused before based on its visual appearance alone, butmay not remember information we read about theproduct (such as technical specifications or instruc-tions about product use). The powerful effect of visualdesign, which has been attributed to the mind’s"higher degree of discrimination of pictures comparedwith words," is simply stronger and longer lastingthan information gleaned from text. Id. at 86.

Immediately upon seeing a product, the mindforms "beliefs about product attributes and perfor-mance." Peter H. Bloch, Seeking the Ideal Form: Prod-uct Design and Consumer Response, J. of Marketing,July 1995, at 16, 20. Research has demonstrated that"attractive products are perceived to be of higherquality and easier to use." Ruth Mugge & Jan P.L.Schoormans, Making Functional Inferences Based onProduct Design: The Effects of Design Newness, Pro-ceedings of the Society for Consumer Psychology 188(Feb. 24-27, 2011). (internal citation omitted). Unsur-prisingly, "attractive things make people feel good."Donald A. Norman, Emotional Design: Why We Love(or Hate) Everyday Things 19 (2004). In scientificterms, cognitive processing of images has "been foundto be associated with increased affect," as "high aes-thetics activates the reward center of the brain."Townsend & Sood, supra, at 208. "[C]ustomers expe-riencing positive emotions may feel more predisposedto try new things and may perceive them as havinghigher value .... " Antoaneta P. Petkova & Violina P.Rindova, When Is a New Thing a Good Thing? Tech-nological Change, Product Form Design, and Percep-tions of Value for Product Innovations, 2006 Design

20

Research Soc’y, Int’l Conference in Lisbon (IADE), Pa-per 0311, available at http://tinyurl.com/gmgukzp.Thus, emotional responses and connections to prod-ucts and brands are "among the biggest drivers of re-peat business." Shaun Smith & Joe Wheeler,Managing the Customer Experience: Turning Custom-ers into Advocates 56 (spec. ed., Pearson CustomPubl’g, 2002).

Visual design can even overcome consumers’ neg-ative perception of function. Consumer psychologyhas shown that, "a beautiful product ... can com-pletely overpower negative functionality infor-mation." Gratiana Pol et al., Blinding Beauty: Whenand How Product Attractiveness Overpowers NegativeInformation, Proceedings of the Society for ConsumerPsychology 186-87 (Feb. 24-27, 2011). Thus, when re-searchers presented subjects with reviews depicting acomputer as poor in functionality, but then latershowed an image of a very attractive computer, thesubjects’ evaluations of the computer were just as fa-vorable as those of subjects who had been shown fa-vorable functionality reviews. Id. Visualattractiveness can even exceed what is known aboutthe product, "generating particularly rich and favora-ble inferences about missing product attributes." Id.at 186.

Particularly important here, because the humaninformation processing system does not separate thephysical appearance of an object from the relatedfunctions of that object, a consumer’s subsequent ex-posure, experience, or knowledge of a product are cog-nitively mapped onto the product’s visual design suchthat the look of the product comes to represent the

21

features, functions, and total user experience of theproduct itself. A consumer’s visual perception of anobject is thus "constructed by the knowledge [the con-sumer] has of [that object]." Daniela Bfichler, HowDifferent Is Different? Visual Perception of the De-signed Object 84-85 (2011).

Thus, when a consumer encounters a known prod-uct (or an infringing copy), the consumer identifiesthe look of the product with the underlying functionalfeatures. Design "subsumes all the other factors." DelCoates, Watches Tell More than Time: Product De-sign, Information, and the Quest for Elegance 15(2003); see also Nathan Crilly et al., Seeing Things:Consumer Response to the Visual Domain in ProductDesign, 25 Design Stud. 547, 547 (2004) ("Judgmentsare often made on the elegance, functionality and so-cial significance of products based largely on visualinformation.").

For a product that a consumer does not yet own,it is the visual design, rather than text or lists of fea-tures, that dominates print, television, and online ad-vertisements, social media platforms, and e-commerce websites. And it the visual design that con-sumers encounter while walking on the street observ-ing peers using the product--a powerful factor inpurchase decisions. Thus, when a consumer encoun-ters a product, the consumer identifies the look of theproduct with the underlying functional features andthe visual design comes to represent the features,functions, and total user experience of the product. Inthis way, "[c]onsumer preferences and motivation arefar less influenced by the functional attributes ofproducts and services than the subconscious sensory

22

and emotional elements" that are encompassed by thedesign and "derived by the total experience." Smith &Wheeler, supra, at 56 (citation omitted); see alsoCrilly, supra, at § 6.4, p. 565 ("[T]he symbolic mean-ing associated with products often has the potentialto dominate the aesthetic and semantic aspects of cog-nitive response.").

This is especially true in the market for complextechnological products. As products have becomevastly more complex, consumers have limited under-standing of every underlying function and feature.Instead, they rely on the visual design of the productto define its category membership and underlyingfunctionality. Thus, counterintuitively, when a singleproduct performs many complex functions, and whenfunctionality is generally equivalent across manufac-turers, design becomes more important, not less. Cog-nitive scientists have established that "as productquality parity has become the norm," design is a keymethod for manufacturers to "differentiat[e] theirgoods." Townsend & Sood, supra, at 207. In otherwords, when consumers are cognitively overloadedwith multiple functions and choices, and particularlywhere those functions are perceived as undifferenti-ated across products, "aesthetics [is] weighted moreheavily in the choice decision," and consumers are"more likely to select the better looking option, evenwhen there [is] a price premium." Id. at 211, 213 (em-phasis added).

By stealing designs, therefore, manufacturerssteal not only the visual design of the product, butalso the underlying attributes attached to the design

23

of the product and embodied in the mind of the con-sumer by the product’s visual appearance. When amanufacturer copies the design of a successful prod-uct, it captures the consumer’s understanding of whatthe product does and what the product means.

Moreover, copying of a design also allows the cop-ier to enter the marketplace on the back of the brandattributes built by the patent holder--who has ex-pended vast sums and effort in design, development,quality standards, marketing, sales and product pro-motion. Immensely successful companies use visualdesign to build their brands, expending time and re-sources to implement "systematic planning of a con-sistent aesthetic style that is carried through ineverything the company does." Schmitt, supra, at 13.Strong design can "enhanc[e] emotional contact with... customers" and "create positive overall customerimpressions that depict the multifaceted personalityof the company or brand." Id. Consumers come to as-sociate particular designs with specific attributes ofcompanies and products. Id. at 11-15. Design patentinfringement therefore steals much more than the de-sign itself--it robs innovative companies of the entirepositive mental model that consumers have createdfor their brand.

24

III. Section 289 Requires Disgorgement OfAn Infringer’s Total Profits On The In-fringing Article Of Manufacture.

Section 289 requires disgorgementof"total profits" because it is the in-fringing design that sells the prod-uct and makes it possible to realizeprofits.

Congress has provided that "[w]hoever inventsany new, original and ornamental design for an arti-cle of manufacture may obtain a patent therefor." 35U.S.C. § 171. As Congress correctly recognized, "it isthe design that sells" the product and "makes it pos-sible to realize any profit at all." H.R. Rep. No. 1966(1886), reprinted in 18 Cong. Rec. 834 (1887). Asdemonstrated above, visual design drives sales andcomes to represent the product itself in the mind ofthe consumer. Those who copy patented designs un-derstand this better than anyone. That is why theycopy patented designs: to confuse the potential pur-chaser into buying the copycat product, and to cooptthe successful brand of the patent holder. For exam-ple, in K-TEC, Inc. v. Vita-Mix Corp., the infringingparty started with the patented design and made only"a trivial change," so that "its customers would not beable to distinguish [it] from the [patented] container."696 F.3d 1364, 1378 (Fed. Cir. 2012).

Congress explained that design patent holdersare "entitled to all the good will the design has in themarket," and are therefore "entitled to all the profitthe infringer made on the goods." 18 Cong. Rec. 834.Section 289 therefore "prevents the infringer from ...

25

profiting by his infringement." Id. It provides that an-yone who "during the term of a patent for a design ...(1) applies the patented design, or any colorable imi-tation thereof, to any article of manufacture for thepurpose of sale, or (2) sells or exposes for sale any ar-ticle of manufacture to which such design or colorableimitation has been applied shall be liable to the ownerto the extent of his total profit." 35 U.S.C. § 289 (era-phasis added).

Section 289’s total profits remedy perfectly mir-rors the test for design patent infringement settled145 years ago in Gorham Co. v. White. As this Courtexplained in Gorham, "giving certain new and origi-nal appearances to a manufactured article may en-hance its salable value [and] may enlarge the demandfor it," 81 U.S. at 525. If people who go to purchase"articles of manufacture .... are misled, and induced topurchase what is not the article they supposed it to be"because of the deceptive design, "the patentees are in-jured, and that advantage of a market which the pa-tent was granted to secure is destroyed." Id. at 528(emphasis added). The Gorham test for design patentinfringement thus incorporates the possibility of acaptured sale. "[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 resem-blance is such as to deceive such an observer, induc-ing him to purchase one supposing it to be the other,the first one patented is infringed by the other."Gorham, 81 U.S. at 528 (emphasis added); see alsoEthicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d1312, 1335 (Fed. Cir. 2015) (citation omitted) (A de-sign patent is infringed "[i]f, in the eye of an ordinaryobserver, giving such attention as a purchaser usually

26

gives, two designs are substantially the same, if theresemblance is such as to deceive such an observer,inducing him to purchase one supposing it to be theother.").

Given the jury’s infringement find-ing, Samsung must disgorge its totalprofits.

This case perfectly illustrates how visual designdrives sales and thus why disgorgement of total prof-its makes sense. Apple’s design philosophy encom-passed "everything from hardware, software,advertising~ communication, and user experience de-sign." Barry M. Katz, Make It New: A History ofSilicon Valley Design 71 (2015). It required carefulconsideration of"the aesthetic statement of the enclo-sure; the software interface ... in short, the emotionalvalence of the entire product in all its details." Id. at69.

The best example is the iPhone. Without question,the success of the iPhone is due to its merger of indus-trial design (i.e., the physical appearance of the hard-ware) and interaction design (i.e., ease of use andGUIs). Apple’s entry into the cell phone marketsprang from Steve Jobs’ observation that "eventhough [cell phones] do all kinds of stuff--calling, textmessaging, Web browsing, contact management, mu-sic playback, photos and video--they do it very badly,by forcing you to press lots of tiny buttons and navi-gate diverse heterogeneous interfaces and squint at atiny screen." Lev Grossman, The Apple of Your Ear,Time, Jan. 12 2007. From the beginning, therefore,iPhone development focused on improving the user

27

experience through industrial design, not introducingnew functions.

The iPhone embodies Jobs’ belief that "[d]esignis ... not just what [the product] looks like and feelslike. Design is how it works." Rob Walker, The Gutsof a New Machine, N.Y. Times, Nov. 30, 2003 (empha-sis added). And the proof, as always, is in the num-bers. In the 48 hours following the iPhone’s release,Apple sold 270,000 phones. Fred Vogelstein, Dogfight:How Apple and Google Went to War and Started aRevolution 77 (2013). "Strangers would accost you inplaces and ask if they could touch it--as if you hadjust bought the most beautiful sports car in theworld." Id. at 80. In just one year, Apple’s stock pricedoubled. Id. The iPhone has become a "cultural icon"that "alone generates more revenue for Apple thanthe entire Microsoft Corporation does." Id. at 71.

The iPhone confirms that in the market for com-plex technology, "attention to a product’s appearancepromises the manufacturer one of the highest returnson investment," especially given that basic "function-ality and performance of products are often taken forgranted." Crilly, supra, § 9.1, p. 574 (citation omitted).The iPhone did not fundamentally alter the core func-tionality of the smartphone. Instead, it created a newand vastly simpler and more attractive means of ac-cessing underlying functions based on the applicationof design principles and practices. The iPhone, afterall, "[did]n’t even have that many new features--it’snot like Jobs invented voice mail, or text messaging,or conference calling or mobile Web browsing." Gross-man, supra. To the contrary, today’s consumers as-sume that mobile devices will handle voice calls, text

28

messages, emails, photographs, web browsing, musiccataloguing, calendar, databases, and millions of cus-tomized applications. But none of these features de-fines the phone in the mind or eye of the consumer.Instead, it is the visual design of the phone that comesto represent the underlying features. Without the de-sign, the iPhone is simply a pile of electronic compo-nents and a few million lines of software code.

In this case, the jury found that Samsung inten-tionally copied Apple’s patents covering the iPhone’sfront face (U.S. Design Patent No. 618,677), distinc-tive appearance (U.S. Design Patent No. 593,087),and graphical user interface (U.S. Design Patent No.604,305). C.A. 640. Indeed, Samsung’s infringementcovered the most important design elements of theiPhone. The rectangular face with rounded corners,and the home screen with colorful icons, are the mostviewed aspects of the device in print and televisionadvertisements, media coverage, and e-commercewebsites. In scientific terms, they are the "canonicalview" of the phone--that is, the "ideal viewing per-spective for optimal recognition." James T. Enns, TheThinking Eye, The Seeing Brain 205 (2004).

The jury was correctly instructed that it couldonly find infringement if it found that "in the eye ofan ordinary observer, giving such attention as a pur-chaser usually gives, the resemblance between thetwo designs is such as to deceive such an observer, in-ducing him to purchase [the Samsung phone] suppos-ing it to be [Apple’s patented designs]." C.A. 1394(emphasis added). Thus, despite Samsung’s declara-tion that the patents it copied do not cover "the iconiclook and feel" of the iPhone and instead cover only

29

"narrow" "partial features of a smartphone’s design,"Samsung Br. 6 (internal quotation marks omitted),the jury obviously disagreed.

Similarly, Samsung asserts that "[b]efore Apple’siPhone ever entered the market, Samsung had devel-oped mockups and prototypes for round-cornered rec-tangular flat-screened smartphones," and includesthe following images:

Samsung Br. 5. But Samsung conveniently deletesthe images that show that its mockups were actuallyfor old-fashioned designs with slide-out keyboards.

30

JA 248-56, 260, 264-66, 523. Not surprisingly, aftercopying Apple’s designs, Samsung’s smartphone mar-ket share rocketed "abrupt[ly] upward," C.A.42050-52--jumping from 5% to 20% in just two years,C.A.90104. That is exactly what Samsung was goingfor. It is therefore appropriate that Samsung disgorgethe entire profit it earned from its infringement.

Samsung’s arguments to the con-trary rest on a fundamental misun-derstanding of design patents.

1. Samsung argues that this Court should ignorethe plain language of § 289, requiring disgorgementof an infringer’s total profits, and should adopt a tor-tured interpretation of the words "article of manufac-ture," because "[u]nder the Federal Circuit’s rule, aninfringer of a patented cupholder design must pay itsentire profits on a car, an infringer of a patented ma-rine-windshield design must pay its entire profits ona boat, an infringer of a patented, preinstalled musi-cal-note icon design must pay its entire profits on acomputer, and so on." Samsung Br. 1, 30-31.

But Samsung’s "disastrous practical conse-quences," Samsung Br. 2, ignore the actual test fordesign patent infringement. Under the actual test,one who patents a design for a cupholder could neverrecover profits on an entire car because no one couldever be induced into purchasing a Jeep supposing itto be a Porsche simply because the two have cuphold-ers that look the same. Similarly, no one could ever beinduced into purchasing (1) a dinghy supposing it tobe a yacht because of the design of the windshield; (2)

31

a Samsung ChromeBook supposing it to be a Mac-Book because one musical-note icon looks the same;(3) a Dr. Seuss book believing it to be Shakespeare be-cause of the bookbinding design; (4) a Kenmore refrig-erator believing it to be a Sub-Zero because of therefrigerator latch casing, or, finally, (5) any "elec-tronic device" believing it to be an iPhone because ofone circular button. Samsung Br. 1, 33, 45-48; U.S.Br. 20-21, 23-24. Samsung’s examples go on and on,but none acknowledge that the test for design patentinfringement incorporates the possibility of a cap-tured sale.

In order to prove design patent infringement, theowner of a design patent for a cupholder (of whichthere are a total of 26, see http://tinyurl.com/hxkjc9m)would have to show that the allegedly infringing cup-holder was sufficiently similar such as to possibly in-duce Jeep or Porsche to purchase the infringingcupholder for use in its vehicles supposing it to be thepatented cupholder design. If the patent ownerproved as much, he could then recover the total profitsthat the infringer earned from selling the copycat cup-holders to Jeep or Porsche. See, e.g., Ethicon Endo-Surgery, 796 F.3d at 1335.

2. Samsung also asks this Court to ignore theplain language of § 289 because Congress was onlyconcerned with design patents for "carpets, wallpa-pers, and oil-cloths," and never suggested that "it isthe design that sells the article ... for complex prod-ucts like smartphones." Samsung Br. 2, 14, 25, 40, 41.But this reflects, if anything, the state of industrialdesign in 1887, not any Congressional judgment that

32

design patents should not apply to complex technolog-ical products. As earlier noted, it is only since theearly 20th century that industrial design’s influencein the United States has been felt in mass producedconsumer goods "in the areas of machinery, appli-ances, and vehicles." Supra, at 7-9; Pulos, supra, at324. In 1887, design was "an indispensable ingredientin the success of domestic furnishings" and generallyfocused on "cultural products such as pianos, melode-ons, and seraphines for music in the home and print-ing and daguerreotype processes for visualgratification." Id. at 133. Yet despite the dramatic in-crease in the importance of industrial design and Con-gress’s many amendments to the Patent Act since1887, including eliminating the infringer’s total prof-its as a remedy for utility patent infringement in1946, see Act of Aug. 1, 1946, Ch. 726, 60 Stat. 778,Congress has continually maintained the total profitsremedy for design patent infringement and expresslyreaffirmed it with the adoption of § 289 in 1952.

3. Samsung’s insistence that § 289’s total profitrule "would encourage companies to divert researchand development from useful technologies to orna-mental designs" is false. Samsung Br. 2. As earliernoted, supra 30-31, under the current rule for designpatent infringement, one could never recover the prof-its earned from an entire product simply because theproduct infringed "the most trivial design patent."

Instead, it is weakening § 289 as Samsung urgesthat would dramatically diminish the value of designand dramatically weaken the United States’ competi-tive position in the world. Design protection "has wideinternational buy-in." David J. Kappos, America

33

Doesn’t Do Enough to Protect Its Innovative Designs,Wired (Nov. 9, 2015), http://tinyurl.com/q5nqspk. Ifanything, the total profits remedy is weak comparedto the remedies for design theft available around theworld.

In England, copying a registered design is a crim-inal offense and infringers face money damages or anaccount of their profits as an alternative equitableremedy. David Charles Musker, Industrial DesignRights: United Kingdom, in Industrial Design Rights:An International Perspective at § 20.05[D], 372-73(Brian W. Gray & Rita Gao eds., 2d ed. 2016). Designpatent infringers in France face not only total profitdamages, but also damages reflecting the cost savingsof promotional investments resulting from the pirateddesign, prison sentences of up to three years, and tem-porary or permanent closure of their business. Alex-andra Neri, Industrial Design Rights: France, inIndustrial Design Rights, supra at § 7.05[D], 129131.Similarly, in Italy design patent infringers face per-manent injunctions, attachment and destruction ofthe counterfeited goods, and criminal sanctions, in ad-dition to money damages. Luigi Pavenello, IndustrialDesign Rights: Italy, in Industrial Design Rights, su-pra, at § 10.05, 191-92.

Thus, to maintain "America’s lead" in the field ofindustrial design, "it is critical that we continue to in-centivize investment in great design by ensuring thatour design protection laws remain strong," and by re-jecting "proposals that seek to drastically alter designprotections--including serious consequences for in-fringement." Kappos, supra.

34

This Court should decline to adoptthe "totality of the circumstances"test for identifying an article ofmanufacture.

The United States agrees that § 289 "authorizes apatent owner to recover an infringer’s total profit froman infringing article of manufacture." U.S. Br. 10. Italso agrees that § 289 "does not permit apportionmentbased on the extent to which the infringer’s profit onthe relevant ’article of manufacture’ was attributableto the infringing design." Id. at 11. However, it sug-gests a multi-factored, indeterminate "totality of thecircumstances .... case specific analysis" for identifyingthe relevant article of manufacture. Id. at 25.

According to the United States, in determiningthe relevant "article of manufacture," the jury shouldconsider the scope of the claimed design, the extent towhich the design determines the appearance of theproduct as a whole, the existence of unrelated ele-ments of the product, the extent to which various com-ponents can be physically separated from the productas a whole, and the manner in which the componentswere manufactured. Id. at 27-30. The United Statesoffers no guidance on how these "considerations"should be weighed, but it implies that a design for aVolkswagen Beetle might not apply to the car as awhole, but only to the "appearance of the automobile’sbody." Id. at 26. Therefore, if a car company were tointentionally copy the patented design for theVolkswagen Beetle (see U.S. Design Patent No.D729,697 (May 19, 2015)) down to the very last detail,and a reasonable observer could buy the counterfeitcar believing it to be a Beetle, Volkswagen would be

35

entitled only to the profits that the counterfeiterearned on the car’s outer body shell, not on the caritself.

If anything, the VW example confirms the senseof the total profits rule. Volkswagen "consistentlyuses design to build a cult-like customer culture,"which it protects through design patents. Butler, su-pra, at 208. And today, design "outranks all other con-siderations as the prime motivator of most new-carpurchase decisions." Lamm, supra, at 8. "Reliability,braking, steering, handling, ride, and refinement areall largely on par across automakers and segments."Bob Lutz, Go Lutz Yourself." There Are No Bad Cars,Only Bad Designs, Road & Track (Aug. 13, 2015),http://tinyurl.com/zgbqz9h. Indeed, "[t]he days of see-ing a comparison test of four cars where one is the ob-vious loser are gone, replaced by a new age ofautomotive equality." Id. In today’s world, there is"just one chief differentiator" when it comes to cars:design. Id. Therefore, one who copies a car’s designshould disgorge all profits.

In any case, it is not the role of the jury to engagein amorphous and indeterminate balancing tests thathave no basis in the statutory text. Pursuant to § 289,it is the role of the jury to decide whether "in the eyeof an ordinary observer, giving such attention as apurchaser usually gives, the resemblance between thetwo designs is such as to deceive such an observer, in-ducing him to purchase one supposing it to be theother," and, if so, to award the total profits the copierearned from his infringement. That is exactly whatthe jury did here. The Court should affirm.

36

CONCLUSION

The judgment of the Court of Appeals should beaffirmed.

Respectfully submitted,

Rachel Wainer ApterORRICK, HERRINGTON

SUTCLIFFE LLP51 West 52nd StreetNew York, NY 10019

Mark S. DaviesCounsel of Record

ORRICK, HERRINGTON &

SUTCLIFFE LLP

1152 15th Street, NWWashington, DC 20005(202) 339-8400mark.davies@orrick.com

Date August 4, 2016

la

Appendix A*

Charles Lee Mauro, CHFP, IDSAPresident & Founder, MauroNewMediaChairman, IDSA Design Protection SectionCoordinating Author, Brief of Amici Curiae113 Distinguished Industrial DesignProfessionals and Educators in Support ofRespondent

Dieter RamsFormer Head of Design and ExecutiveDirector, BRAUNFormer Professor of Industrial Design,Academy of Fine Arts Hamburg

Raymond Riley, IDSAExecutive Creative Director, Microsoft

Stefan Hans SielaffDirector of Design, Bentley Motors

o Del CoatesFormer Design Strategy Consultant, NissanMotor Co.Professor Emeritus of Industrial Design, SanJose State UniversityFormer Chair, Dept. of Industrial Design,College for Creative Studies, Detroit, MI

* Institutions are listed for affiliation purposes only. Allsignatories are participating in their individual capacities andnot on behalf of their institutions.

o

10.

11.

12.

13.

23

Per HjulerSenior Vice President, LEGO Group

Nicolas GhesquiereArtistic Director, Women Ready To Wear,Louis Vuitton

Sir John SorrellThe Sorrell FoundationChairman, UK Design Council

Bruce Claxton, FIDSAProfessor, Savannah College of Art andDesignFormer President, IDSAFormer Sr. Director of Design, MotorolaSolutions

Calvin KleinFounder & Designer, Calvin Klein Studio

Dr. Robert Blaich, FIDSAPresident, Blaich AssociatesFormer Vice President of Design, HermanMiller, Inc.Board of Regents, Syracuse University

Sir Terence ConranConran HoldingsFormer Provost, Royal College of Art

Lord Norman FosterFounder & Chairman, Foster + Partners

14.

15.

16.

17.

18.

19.

20.

21.

3a

Arnold WassermanPrincipal & Co-Founder, Collective InventionFormer Dean, Pratt InstituteFormer VP of Design, Xerox Corp.

Robert BrunnerFounder/Partner, Ammunition LLCFormer Director of Industrial Design, Apple

Alexander WangCreative Director, Chairman & CEO,Alexander Wang

Cooper C. Woodring, FIDSAPresident/Owner, Woodring DesignFormer President, IDSAFormer Lecturer, Harvard Graduate School ofDesign

Robert Cohn, IDSAPresident, Product Solutions, Inc.

Sir Paul SmithFounder & Designer, Paul Smith Limited

Edward Barber OBEDesign Director, Barber Osgerby Ltd.

Donald M. GenaroFormer Senior Partner, Henry DreyfussAssocs.

22.

23.

24.

25.

26.

27.

28.

43

Allan Hastings, IDSAFormer Automotive Designer, General MotorsProfessor Emeritus of Interior Architecture &Product Design, Kansas State University

Dr. Peter ZecFounder and CEO, Red Dot Design AwardPresident, Red Dot GmbH & Co. KG.Emeritus Professor of BusinessCommunication & Design Management, theUniversity for Applied Sciences, Berlin

Julie AnixterExecutive Director, AIGACo-Founder, Innovation Excellence

Charles Austen AngellCEO, Modern Edge, Inc.Chair Emeritus, IDSAFormer Global Director of Design Researchand Innovation, Intel Corporation

Paula ScherFounder/Partner, Pentagram Design Inc.Public Design Commission of the City of NewYork

Sohrab VossoughiPresident, Ziba Design, Inc.Former Senior Industrial Designer, Hewlett-Packard

Mark AdamsManaging Director, Vitsoe Ltd.

29.

30.

31.

32.

33.

34.

53

Marco ScarpellaExecutive Director, ValextraPresident, SanterasmoCinque

Michelle S. Berryman, FIDSADirector, Experience Design Servs., THINKInteractiveFormer President and Chair Emeritus, IDSA

Gordon Bruce, IDSAConsulting Industrial Designer, Gordon BruceDesign LLCFormer Product Design Chairman, InnovativeDesign Lab of Samsung

David ChuChief Creative Director and Chairman, GeorgJensen A/SFounder and Former Chief Executive Officer,Nautica InternationalFormer Executive Creative Director, TumiInc.

Stefan BehlingDirector and Head of Studio, Foster +Partners

Paul ThurmanProfessor of Management and Analytics,Mailman School of Public Health, ColumbiaUniversity

35.

36.

37.

38.

39.

40.

41.

42.

43.

63

Clive RouxCEO, Society for Experiential Graphic DesignFormer CEO, IDSAFormer Head of Creative Units, PhilipsElectronics

Benjamin A. PardoExecutive Vice President of Design, Knoll

Marc EckertCEO & Owner, Bulthaup GmbH & Co. KG

Konstantin GrcicKonstantin Grcic Industrial Design

Tim LindsayCEO, D&AD

Roger QuinlanPrincipal Design Researcher, CrownEquipment Corporation

Amelia AmonPrincipal, Alt. Technica

Alber ElbazFormer Creative Director, Lanvin

Dr. Roberto ScarpellaDirector, M.I.B. SPAPresident, Italian Fur Association

73

44. Professor Jeremy TillHead of College, Central Saint Martins,University of the Arts LondonPro Vice-Chancellor, University of the ArtsLondonDean of Architecture and the BuiltEnvironment, University of Westminster

45. Tony ChambersEditor-in-Chief, Wallpaper*

46. Rick BerryOwner & Designer, Rick Berry DesignPast board member, American Society ofFurniture

47. Fabien BaronCreative Director & President, Baron & Baron

48. Jasper MorrisonFounder, Jasper Morrison Ltd.

49. Nicholas FoulkesDirector, Foulkes International Ltd.

50. Ron DennisExecutive Chairman & CEO, McLarenTechnology Group Limited

51. Peter GammackGroup Director, Design and New Technology,Dyson Technology Limited

52.

53.

54.

55.

56.

57.

58.

8a

Andries van NotenPresident & Managing Director, Dries VanNoten

Gary van Deursen, L/IDSAPresident, Van Deursen LLCFormer VP Global Industrial Design, Black &DeckerFormer Design Manager, General Electric

Professor Tom GattisDean, Columbus College of Art & DesignProfessor & Chair of Industrial Design, Co-lumbus College of Art & Design

Chitose AbeCreative Director and Founder, Sacai

James Douglas Alsup Jr., IDSAPrincipal, Alsup Watson Associates, Inc.Member, Executive Board of the College ofArchitecture, Design and Construction,Auburn University

Daniel Ashcraft, IDSACEO & Chief Design Officer, Ashcraft Design

Shimon ShmueliPrincipal, Touch360Assistant Professor of Practice, Engineering &Technology Management, Portland StateUniversity

93

59. Jill AyersPresident, AirspaceFormer President, Society for ExperientialGraphic Design

60. Nancy Perkins, FIDSAPresident, Perkins Design Ltd.

61. Joseph BallayPrincipal, MAYA Design, Inc.Former Head, School of Design, CarnegieMellon UniversityEmeritus Professor of Design, CarnegieMellon University

62. Alexander Bally, FIDSAManaging Partner, Nexxspan Healthcare LLCFormer Associate Professor, Carnegie MellonUniversity

63. Eric Beyer, IDSAPresident, Copesetic, Inc.Board of Directors, IDSAAdjunct Professor of Industrial Design,Syracuse University

64. George Russell Daniels, L/IDSACEO, Daniels Development Group, LLC

65. John Gard, L/IDSADesign Director, Prova Design DevelopmentGroup

66.

67.

68.

69.

70.

71.

72.

73.

lOa

Mike Garten, IDSA

Betsy Goodrich, FIDSACo-Founder & VP Design, MANTA ProductDevelopment Inc.

Robert GreveyDirector, Brand & Digital Strategy, OpenEyeGlobalMember, Society for Experiential GraphicDesign

Scott Peterson, L/IDSAFounder & President, Scott Peterson Design,Inc.

Dennis ZdonovHead of Studio, Dairy Free Games Inc.

Michael NaughtonDirector of Product Management,Nielsen-Kellerman Co.

Stephen Hauser, FIDSAPresident, SGH-R Product Development, LLCFounder & President, Hauser, Inc.

John LutzPartner, Selbert Perkins DesignBoard of Directors & President, Society forExperiential Graphic Design

lla

74. Patricia Moore, Ph.DPresident, MooreDesign AssociatesVisiting Professor of Design, University ofCalifornia Berkeley

75. Louis Nelson, IDSAPresident & Founder, The Office of LouisNelson

76. Gordon Perry, IDSACEO, Gordon Randall Perry Design

77. Dale Raymond, IDSAFounder & MGM, Design Lift, LLC

78. Brian Roderman, FIDSAPresident, IN2 Innovation

79. Bryce Rutter, Ph.DCEO, Metaphase Design Group, Inc.

80. RitaSue Siegel, IDSAFounder & President, RitaSue SiegelResources

81. Paul Specht, FIDSAPresident, PBS Design, Inc.

82. John V. Stram, L/IDSAIndependent Design Consultant

83.

84.

85.

86.

87.

88.

89.

90.

91.

92.

12a

Jack HarkinsGeneral Manager, Farm Design, Inc.

Mathieu Turpault, IDSAPartner & Director of Design, Bresslergroup

Allan WeaverFormer Principal Industrial Designer, retired

Edmund Weaver, L/IDSARetired Assoc. Tech. Principal, Kraft Foods

Stephen Wilcox, Ph.D, FIDSAPrincipal, Design Science

Angela Yeh, IDSAPresident & CEO, Yeh Ideology

Steven RogersHuman Factors Engineer, MauroNewMedia

Stan KongFaculty Director & Professor, IndustrialDesign, ArtCenter College of Design

Andy OgdenChair, Graduate Industrial Design, ArtCenterCollege of Design

Bryan TynerHuman Factors Engineer, InstructionalTechnology, MauroNewMedia

13a

93. Fred FehlauProvost, ArtCenter College of Design

94. Geoff WardleExecutive Director, Graduate TransportationSystems and Design, ArtCenter College ofDesign

95. Katherine BennettProfessor, ArtCenter College of Design

96. Ronald Kemnitzer, IDSAProfessor Emeritus, Virginia Polytechnic In-stitute and State UniversityFormer President and Chairman of the Board,IDSA

97. William Bullock, FIDSAProfessor & Chair, Industrial Design Pro-gram, University of Illinois atUrbana-Champaign

98. George McCain, FIDSAAffiliate Assistant Professor of Industrial De-sign, University of WashingtonChair Emeritus, IDSAFormer Corporate Design Manager, FlukeCorporation

99. Dr. Lorraine Justice, FIDSADean, Rochester Institute of TechnologyFellow, Industrial Design Society

14a

100. Julie HobbsNational President, Design Institute ofAustraliaPrincipal Lecturer Applied Design, CentralInstitute of Technology, Western AustraliaCEO FutureNow, Creative and LeisureIndustries Training Council, WesternAustralia

101. Brook KennedyAssociate Professor of Industrial Design, Vir-ginia Polytechnic Institute and StateUniversityProfessor Emeritus of Industrial Design,North Carolina State University College ofDesign

102. Haig Khachatoorian, IDSAProfessor Emeritus of Industrial Design,North Carolina State University College ofDesign

103. Rama ChorpashDirector & Associate Professor, ParsonsSchool of Design

104. Edward Dorsa, IDSAChair & Associate Professor, IndustrialDesign Program, Virginia PolytechnicInstitute and State University

15a

105. Richard Wilfred Yelle, IDSAChair, Industrial Design, University ofBridgeportFormer Chair, Product Design, Parsons Schoolof Design

106. James Kaufman, FIDSAProfessor Emeritus, Ohio State University

107. Prasad BoradkarProfessor, Arizona State UniversityDirector, InnovationSpace

108. Lance RakeProfessor, University of Kansas

109. Bruce TharpAssociate Professor, Stamps School of Art &Design, University of MichiganFormer Professor, University of Illinois atChicago

110. Steven VisserProfessor of Industrial Design, PurdueUniversity

111. James BuddProfessor & Chair, School of IndustrialDesign, Georgia Institute of Technology

16a

112. James Lesko, L/IDSAFormer Professor, Carnegie MellonUniversity, Purdue University, The OhioState University, University of Cincinnati,Bridgeport University

113. Laura Lisa SmithPresident, Lisa Smith StudioTrustee, Rowena Reed Kostellow Fund, PrattInstitute