A triangle is a simple shape, but intellectual property law in the United States is very, very complex.
When Triller announced Triad Combat as “a revolutionary, new combat team sport,” our own Patrick Stumberg summarized things as “basically BKFC, but dumber.” The event seemed like a hasty effort to compete with the scheduled date for a fight between Teofimo Lopez and George Kambosos that Triller famously and spectacularly lost the rights to promote after months of chaos and legal wrangling.
The event raised flags among combat sports fans for reasons beyond the possibility of spiteful counterprogramming. A hybrid boxing/MMA event where the co-feature included a former NFL player perhaps best known in combat sports for kicking an opponent’s testicles so hard it caused a hemorrhoid seemed like an odd concept, especially when announced barely a month after Triller’s COO told Yahoo Sports that Triller would abandon “freak show” and “carnival act” shows.
The “specially designed triangular ring” used for the Triad Combat show also reminded many observers of BYB Extreme Fighting Series and their patented “Trigon” triangle ring design. BYB and parent company Lights Out Productions felt the Triad design was an infringement worthy of a lawsuit on the grounds of “design patent infringement, unfair competition, copyright infringement, and related claims.”
To better understanding that lawsuit and the factors that might determine its outcome, Bad Left Hook spoke to Professor Sarah Burstein of the University of Oklahoma College of Law. Professor Burstein started out as a photographer and graphic designer before becoming a lawyer, and specializes in design patents and intellectual property law.
Our usual disclaimers apply: Professor Burstein has no direct connection to this case, nor any specific knowledge of the dispute between BYB and Triller beyond what is known through publicly available case files and patent documents. But, she was kind enough to review the lawsuit filing and the original design patent, and share her observations with us.
Among the key takeaways from our conversation: None of us are likely to get rich trying to patent new ring shapes. The appearance that someone may have gotten “ripped off” has very little bearing on an actual intellectual property lawsuit. And, though stories like this one would ordinarily be helpful to certain aspects of BYB’s lawsuit, they will absolutely not want her comments here included in their court case.
Our conversation, lightly edited for length and clarity, follows.
BAD LEFT HOOK: You’ve been an artist, a litigator, and now you’re a professor of law. You’ve clerked for a US District Court and worked as an academic research assistant for the legendary Richard Posner. You’ve been cited as an expert in this field by the Wall Street Journal, NPR, Reuters, Forbes, Time, Bloomberg, and Wired.
Now, you’re talking about triangles on a website for degenerate boxing fans. Where does this rank on your all-time list of career experiences?
SARAH BURSTEIN: [Laughs] Hey, I am always happy to talk about design patents in any context. And I am delighted to talk about this case with you today.
Well, thank you very much. To get us started, can you give us your best brief, casual, basic overview of design patents? What do they do, and how are they different from other kinds of patents?
In the US, there are actually three different kinds of patents. Utility patents are the ones most people know about. Those are the patents that protect how stuff works. All the technology, science, engineering stuff, that’s all utility patent land.
We also have plant patents, which are less appreciated and less used. They’re sort of the new kids on the block, but they’re also awesome. And then there are design patents, which protect how things look. They don’t protect the concept of a chair, but rather how a chair looks. The decorative carving on a chair, the overall shape, that kind of thing.
So, while utility patents cover how stuff works, design patents cover how stuff looks.
What sort of things are eligible for design patent protection? What characteristics would make something ineligible? What goes into approving or rejecting someone’s request for a design patent?
Great questions. You can get design patents for three different types of designs: The shape of an article of manufacture, the surface design for an article of manufacture, or a combination of both.
There’s a design patent for a leopard print grab bar that I like to use as an example. In theory, you could get a patent on the shape of the grab bar. Or, the leopard print design on it, without regard to the shape. Or, for the combination of both. Hopefully, that example shows you that the standard of creativity is not insurmountably high, because this patent really exists.
To get a design patent, the design has to be new, and new enough. In law speak, we call that “novel and not obvious.” So, if the shape is the same as a grab bar that existed before, or is pretty close? You’re not going to be able to get that patent. Leopard print existed before, so probably not able to get that patent. But, the combination? Did anyone put those together before? Maybe not! So, that patent got issued.
It’s also supposed to be “ornamental.” This is a requirement we don’t see in any other area of IP [Intellectual Property] law. But, the Federal Circuit Court of Appeals, which is the one that hears all patent appeals, basically read that out of the statute. So, we see lots of stuff that you wouldn’t think of as “ornamental” in any reasonable English definition of the word, but is considered ornamental in design land.
Just to clarify for anyone skeptical about the validity of a lawsuit like this: Many in our audience probably hear about patents and the legal system largely through stories about “patent trolls” in the realm of software and technology. Is there any similar sort of problem of seemingly “nuisance” lawsuits over broadly defined design patent protections?
It depends a lot on what you mean by the phrase “nuisance lawsuit.” And I don’t actually love the “t-word” because I think it tends to shut down conversation. People hear that, and they just retreat into their corners and don’t want to listen to each other anymore.
We don’t see – or at least, I haven’t seen in public filings – the sort of widespread abusive litigation tactics that I think have led people to use that word [troll]. Like a company that sued everyone using credit cards as part of their small businesses, for example. They did not invent using credit cards but kind of acted like they did. We don’t really see that sort of wide scale stuff with design patents.
But, we see plenty of what you might think of as problematic litigation. Lawsuits where the claim is non-meritorious, where you’re just trying to hassle a competitor. And one general problem in law is that we, the public, only see what gets filed in court. We don’t see all the sub-judicial enforcement that happens. When people send nasty letters saying “you infringed my patent, now pay me $10,000!” There are a lot of things going on that can be hard for an academic or a member of the public to get a handle on beyond what we see in filed lawsuits.
Anyway, we certainly see cases I would say are concerning. But, I haven’t seen anyone take a design patent and sue 1,000 people for the same thing over a patent of questionable validity. Partly, because design patents are very hard to invalidate, but that’s a whole other discussion.
Fundamentally, how solid are trade protections for a design built off of a basic shape? UFC has a trademarked Octagon, BKFC has a patented circle ring design… Should I rush out to trademark and patent as many polygons as I can think of to try and strike it rich?
[Laughs] Well, you never know. The real question isn’t usually: Is it a basic shape or not?
There are three different regimes in the US that can protect designs, and you see all three of them in this complaint. Each one has special, different rules. When it comes to copyright, that’s one where the copyright office rejects things like basic shapes. So, it might come up there.
But, there are also a lot of special rules for copyright and product shapes. If you have a product that does something other than convey information or portray its own design? It’s called a “useful article,” and we have a group of special rules about it. If you want to get copyright for a design applied to a shoe? You’re going to have these special useful article rules. But, for a book, you don’t.
There are also allegations related to trade dress involved in this complaint. That’s a species of trademark law. In that area, we don’t really care about how creative your design is. What we really care about is, do consumers recognize it as an indicator of source? When they see red soles on your shoes, do they think they’re from Louis Vuitton? Or, do they think it comes from a specific company, even if they don’t necessarily know the company name?
For design patents, I suppose that in theory we should care about the level of creativity. But the Federal Circuit Court I mentioned before really eroded the requirements for design patent ability. So, if your design is different AT ALL, and that’s only a slight overstatement, from something that exists? Or, more precisely, different from something the examiner knows exists? You can get a design patent for it. And it’s going to be pretty unassailable.
So, honestly? Maybe you could go get design patents for all the shapes. But, whether they’d be able to help you do what you want is another question. And that’s a really big deal in this case, because design patent protection is narrow.
Well, that’s a fantastic transition into a much more serious question. Before this conversation, you shared a paper with me that you published in 2019 covering just how narrowly design patents are interpreted and protected. I’m going to link to it for the benefit of our audience, because I certainly don’t expect you to summarize a very carefully and precisely written argument like that in just a few sentences. But, there was one phrase you used that I’d like to quote and ask you about specifically: “[D]uplication of one public-domain element alone will not be enough to establish a valid claim of infringement.”
A casual observer might look at one triangle ring, then the other, and conclude for themselves on a common sense basis that someone ripped someone else off in this situation. But, how much of that gut reaction translates to valid legal protection, given that it’s coming from a basic shape?
Well, whether or not someone “ripped someone off” is not the standard for any form of IP infringement. The gut standard doesn’t necessarily match the legal standard here. “They copied me!” is not enough to prove infringement. Though, as you can imagine, litigators love to say that in front of juries.
Reading this complaint, [BYB] seem to think they own the idea of a triangle ring. They don’t. None of these forms of IP protection that we’ve talked about allow you to own an idea. The closest you can get is through a utility patent, if you can prove that there’s something new and useful and novel and not obvious about using this shape as a ring.
Because, again, you’re not just claiming the shape. At least, with design patents, you’re not just claiming a triangle. You’re claiming a triangle as applied to a specific article of manufacture. Now, the quote that you read has to do with a concern some people have had over the test for infringement. I won’t go into all the details there, but basically, the fact that this is a triangle and that’s also a triangle is not enough to prove infringement.
For design patents, the accused design must look the same as the claimed design as shown and described as you’ll see it in the patent. So, you have to compare the accused product to those descriptions and drawings. And, as you saw in the article, the standard of visual similarity is very high.
[Reflex sputtering noise] YES.
And appropriately so! Because if you can get a design patent for a little change, someone else should be able to make a big change without you capturing them with your patent. If you’re only making a minor contribution to the world, you shouldn’t get a big, broad patent. I think it’s actually good that design patents are very narrow.
Looking at the images in the complaint, the closest one might be what they call the “diamond design.” Maybe that is a “commercial embodiment” of the claimed design, meaning a product that embodies your patent and design. I’d have to actually see pictures. But this new one that they call the “Trigon” triangle is absolutely not a commercial embodiment of the patent. It’s not.
They say the patent covers both [the Trigon and the diamond design], but it doesn’t. Design patents cover one design.
And ultimately, the question for design patent infringement is not “Does your ring look like my ring?” Instead, it’s “Does your ring look like my patent?” And in this case, there’s just no way. It’s just not even close. And that’s even without getting into step two of Egyptian Goddess. [NOTE: Egyptian Goddess, Inc. v. Swisa, Inc., a 2008 en banc U.S. Court of Appeals for the Federal Circuit ruling that outlined a two-part test for design patent infringement.]
So, first we look at the designs in the abstract. Look at the drawing, look at the accused design. If we look and conclude they aren’t plainly dissimilar, then the defendant can point to older designs, what we call “prior art,” to try and show they aren’t really that similar after all. But, we don’t even have to get here. I think this claim dies at Egyptian Goddess step one. I don’t see a winning infringement claim at all, as far as the design patent goes.
As far as the other two regimes, copyright and trademark have their own rules, and they have lower overall degrees of visual similarity. Copyright is still high, but not as high [as design patents]. There are some legal problems that, if you want to go into detail, I’m happy to talk to you about. But the short answer is they can’t really make the infringement claim they’re making. See 17 U.S.C. § 113. And, trademark has a lot of factors relating to how and why consumers might be confused, where visual similarity is only one part of that. In trademark land, you can be less visually similar, so we have to look at these other factors. But, even here, [BYB] still have some legal problems.
I do have a lot of other questions about the various aspects of BYB’s filing that I want to ask you about. You’ve given us a pretty compelling and thorough evisceration of some of the major things people might naturally assume or react to when reading about this case and seeing the pictures. So, let’s hold off on digging deeper into that for now, and work forward on the assumption of a valid lawsuit, which you are free to prop up or knock down as we proceed later in this conversation.
For now, to start addressing one other interesting part of the filing: I suspect most of our readers are familiar with the principle of “ignorance of the law excuses not,” either from the original Latin phrase or from trying to argue with a police officer about a speeding ticket. Are there any exceptions or qualifications that might be relevant to defending a civil lawsuit over design patent infringement like this one? Does it matter if an infringement occurs through ignorance rather than intent?
Yes, and it depends on the regime, and what we’ve been talking about so far goes to liability, not damages.
But, I just want to say first that under US law, there is nothing inherently wrong with “copying.” The state of things naturally is that anyone can copy each other’s ideas and products. There’s nothing inherently legally wrong with that, at least as our system is set up. IP is supposed to be an exception. For limited periods of time, Congress is giving you artificial exclusivity.
Going back to that intuitive response that someone “got ripped off.” Well, they might have, but that might not be a legal problem. So, where does this come in? Because, as you alluded to, they make a big deal of this in the complaint. In copyright law, you are not an infringer unless you copy. There generally has to be some proof that you knew about their design and copied it. If you create something totally on your own, and there are many classical examples of this, you get your own copyright for that creation and you are not an infringer. That’s fine, legally.
Patent is different. If my design looks like your design, it doesn’t matter if I knew about your design or not. It’s a strict liability offense. But intentional copying can matter when it comes to damages. So, I think they’re trying to set up a willful infringement argument here.
Trademark is somewhere in the middle, where you don’t have to copy to be an infringer, but copying can be relevant to the claim.
So, you have copying required for copyright, copying not required for patent, and copying might matter for trademark.
In this case, Triller’s parent company [TrillerNet] owns the streaming service that broadcast BYB’s “Trigon” shows, and the parties in the lawsuit cite specific dates and locations where they claim to have negotiated with Triller’s co-owner about licensing their patent for Triller’s “Triad” show. Does that claim of ‘knowing and willful’ infringement have any significance in this matter?
Yes, if you are a willful infringer, that can be relevant depending on what kind of damages you’re looking at. For design patents, you can pick either regular patent damages under 35 U.S.C. § 284 or you can pick special total profits damages under § 289. For regular patent damages, willfulness matters.
Right now, they seem to think they’re entitled to both, but they’re not entitled to both. They will have to pick one. But, they can plead both. It’s totally fine to have both in your complaint and see what a jury comes up with.
Mostly, we’re going to care about copying when it comes to damages. And, to go back to what we were saying earlier, where if you’re planning on putting this in front of a jury? This stuff looks bad in front of a jury. Even if it’s not legally relevant to the issue of patent infringement, this is the kind of stuff you love when you’re the plaintiff’s lawyer. “Look at those bad copying copiers who copied me!”
“Those dirty thieving thieves, stealing from my innocent little Mom & Pop people-punch-each-other-in-the-face company. Taking food from my children’s mouths, those monsters.”
Yes! Lawyers might use different words, but the spirit, absolutely.
A lot of the filing is devoted to defining Florida as the appropriate district court for this lawsuit. Any reason that might be a problem since the event was held in Texas?
[Deep breath] Okay, so… Thank you.
[Laughing] I thought that was a simple question, but that sigh makes me think I’m about to hear about a lot of nuances related to it.
There are a LOT of nuances to it!
The question of where you can bring a patent case has been a very active area. The Supreme Court just decided a really important case on it a few years ago called TC Heartland LLC v. Kraft Foods Group Brands LLC. We’ve seen bills in Congress and multiple court cases to fight about patent lawsuit venues, and it’s a really interesting issue.
At a high level, the rules for patent venue are a little bit different than they are in other civil cases. There’s a special rule about where you can bring your patent suit. Ultimately, you can sue someone for patent infringement in the state where they’re incorporated. Or, option two, is a place where they’ve infringed and they have a, quote, “regular and established place of business.” As you can imagine, lawyers can make a lot out of that phrase. We are still fighting about what it means to have a “regular and established place of business” for the purposes of patent infringement.
So, without knowing more facts about these companies, I can’t really say for sure based on this complaint. But, you can see that they’ve used that exact phrasing in their lawsuit, and that’s what they’re getting at. I’d have to know a lot more about these companies, what exactly they did, and where. There might or might not be an issue there, but we’d need more information.
Researching this piece, I read a lot about the significance of solid vs. dashed lines in a design patent. Can you explain a bit what that means to the scope and defensibility of a patent like this?
Absolutely. Design patents cover the entire claimed design. You can’t pick and choose pieces of the design. It has to infringe the whole thing, the entire claimed design. But, patent applicants get to define the “whole” of what’s being patented. So, they use broken lines, or dashed lines, to show things they don’t want to claim.
To use a simple example: If you had a chair, and you just wanted to claim the design of the leg? You could show the leg in solid lines, and the rest of the chair in dotted lines. That means that the part that would have to match for that Egyptian Goddess test would only be that part in solid lines. So, dotted lines are a way to increase the scope of your design patent claim.
Here, [BYB] are saying: “Look, we put some stairs in dotted lines, but you don’t need stairs to infringe.” That is accurate; that’s true. The part in dotted lines doesn’t have to visually match. Only the part in solid lines.
Does the first wave of media coverage comparing Triller’s “Triad” to BYB’s “Trigon” have any relevance to their claim of “consumer recognition” for their preexisting design?
Oh, I would absolutely use that if I were litigating this case. That’s the kind of evidence trademark lawyers love. Not really relevant for the design patents or copyright, although they may try to use it that way.
If you look at Apple v. Samsung, they used all kinds of media coverage in that case. Product launch, product promotions, all to try to prove that there was product recognition. The issues here will come from how “trade dress” has different rules than other types of trademarks.
One of the things you have to prove is that it is not functional. Which, they have alleged, but I am dubious. Because the test for “functional” actually has some teeth in trademark law. Anyone interested can read a short comparison I’ve written on that subject. Basically, functionality might be a problem for their case.
A bigger problem is going to be what’s called “secondary meaning.” For regular trademarks, such as word marks, you have to prove that your mark is distinctive. You can either be inherently distinctive, or you can prove acquired distinctiveness. So, what does that mean? Well, it means the law will either recognize there is a trademark straight out, or you would need more proof that people see it as a trademark.
For example, really fanciful words, like “Häagen-Dazs,” is an example of something people would immediately think of as an inherently distinctive trademark. One, because it’s not a real word in any language, but also because it’s not describing the good. But, if you wanted to sell something like “Tasty Ice Cream Brand Ice Cream”? You’d have to prove that consumers actually see that as a trademark. We call that evidence of “secondary meaning.”
Product design trade dress, which is what they’re claiming here, can never be inherently distinctive. The Supreme Court held that around 21 years ago in a case called Wal-Mart v. Samara Brothers. So, I don’t know why they’re alleging their product design is inherently distinctive here. Under Supreme Court precedent, they’ll have to prove they have secondary meaning.
That’s where this media coverage could come in. [BYB] might try to use that to prove that when consumers see a triangle-shaped ring, they connect that with their brand, their product, their entertainment services. That’s how it might factor in. As a way of proving that people actually recognize it as a trademark.
Not to turn this into an ouroboros, but literally the stories our website has written on this already, and the explainer article we’re discussing right now, could be relevant to the case?
[Stammers out a few ultimately abandoned questions] I’m not sure how to ask this, and I may be making myself a little dizzy here trying to figure it out.
In theory, maybe. But I strongly suspect that they are not going to want the court to see anything that I have said about this case so far. [Laughing]
Normally, media coverage is good! A law professor saying specifically that your claims are bad is not usually something you really want to highlight, though.
One of the differences cited in the filing is that the rival triangle ring designs have a different number of posts holding up the ring’s three ropes. Is that small of a distinction enough to distinguish Triller’s ring from the design patent on BYB’s?
Yes, and I wouldn’t call it a small distinction. Here, there are other differences. There’s no door portion that we see clearly claimed in the design patent. But, depending on what it looks like, sometimes the number of poles might matter and sometimes it might not. In most cases, it probably will matter, especially if they were drawn in solid lines.
Ultimately, the question is: “Does it look the same or not?” And, just looking at these drawings, it does not look the same. The poles are part of that. It’s hard to make a hypothetical response in this area, because it is all so fact-specific.
You have been very candid so far on the relative strengths, and more specifically, the relative weaknesses of this lawsuit. Are there any other thoughts you can share about the likely success or failure in this case of the design patent claim as compared to the copyright infringement claim and the “trade dress” or unfair competition claims? Are any of these particularly strong or flimsy causes for a civil suit?
Well… There are two key questions here. How should it be determined? And: How will it be determined? And, I suppose, a third question would be: When?
The design patent claims are incredibly weak. If I were the defendant, I would move to dismiss, and should win.
The copyright claim has a big problem. They have a registration for a drawing of a ring, but the copyright act specifically says that you can’t control a useful article based on your drawing. And if anyone had any questions about that, it was answered by the Supreme Court in Star Athletica, LLC v. Varsity Brands, Inc. There, they literally said that just because you make a cardboard model of a truck, you can’t stop other people from making real trucks. That’s just now how it works, and that’s exactly what they’re trying to do here. The dissent talked about a painting of shoes and real shoes. That’s exactly their claim here, and that’s not a thing. They don’t have a valid copyright claim as they’ve currently framed it.
The trademark one is difficult. I have serious questions about the merits, including whether they actually have a trademark or not. It doesn’t look like there’s a registration. That isn’t necessarily a problem, it just makes things harder for them in litigation. They have to first prove they have a trademark in that case. I have questions about validity, I have questions about infringement, if it’s valid. But, the thing is that it’s hard, even when you have a weak trademark claim, to get rid of it early in a case. Because it is so fact-specific. So, all of the things we discussed, like proving secondary meaning? Lots of factors, lots of facts. Proving infringement? Lots of factors, lots of facts. And when we have a lot of questions about facts, our system tends to push those issues towards a jury adjudication.
You can get rid of the design patent and copyright claims on a motion to dismiss very early, just based on the pleading. We don’t have to do anything else, don’t have to go into discovery, trade all of the documents, or spend a lot of money and time. But trademark claims are hard to get rid of early. You can try! You can do discovery, trade documents, and file a motion for summary judgment before a trial. Still hard, though, because it is so fact-specific.
This is all not to say that the trademark claim is more meritorious, or even necessarily meritorious at all. But, I think it will be the hardest one for the defendants to make go away.
So, putting aside the question of legitimacy, it has a potential durability that the other complaints may not have?
Yes, just from the nature of trademark law. In law, we talk a lot about rules versus standards. Rules have bright, clear lines. Standards are squishy. Trademark law is very squishy. And, the truth is, most cases don’t go to trial. The vast majority of cases settle.
Well, let’s talk a little about the reality of design patent litigation now, if that’s okay with you. I’m assuming it doesn’t usually involve Matlock coaxing a confession out of someone, or Jack Nicholson shouting from the witness chair. How does a design patent lawsuit play out in real life? How likely is it that an issue like this one gets taken all the way to trial and jury as opposed to agreeing on a settlement?
Well, Matlock moments are not supposed to ever exist in federal civil litigation. Discovery means you’re supposed to tell the other side all of the facts and share all the documents, so there shouldn’t ever be any actual surprises at trial.
With design patents, the test of infringement is a visual one. Judges can do that on the papers, and they do, appropriately, on the papers. It’s not obvious we need a jury at all to figure out these cases. But, right now the law says you have a jury for patent claims, for better or worse. There are ways judges can make determinations if no reasonable jury could come to a conclusion. But, there shouldn’t be shocks or surprises at trial, and this isn’t the sort of case that should lead to that sort of thing anyway.
The area where you’d have more fact issues would be on damages, not liability. If you take the total profits option, you have to find a way to calculate the profit damages. That may seem boring, but it’s actually super important. That’s what your clients actually care about: Can I get money? Can I shut the other guy down?
We all know that there’s nothing that lawyers, doctors, and computer technicians love more than people demanding the benefit of their professional expertise without any compensation. In that spirit, I’d like to ask you: If this were a client of yours, or if you were advising the plaintiffs on how to best pursue their interests in this case, what guidance would you share, or what might you have done differently?
I’m not sure. In litigation, the client’s goal is not always to win at trial. Sometimes, the client’s goal is to get a lot of publicity. And they seem to be getting that with this case. Sometimes, their goal is to put out the message that they will fight, that they will not take a perceived infringement lying down, that kind of thing. So, it really would depend on what their goals are and what they want.
I wouldn’t have filed that copyright claim. And I certainly would not have alleged that the trade dress was inherently distinctive. The design patent claim is weak, but it’s not necessarily frivolous. I hate even using that “f-word” about the work of a fellow lawyer. I just hate it.
It really just depends on what the client’s goals are. Those things are firmly within the realm of attorney-client privilege, and I won’t try to guess what’s been said between them. But, people do file lawsuits for lots of reasons. That reason is not always just to win in court. And it usually isn’t to impress law professors. [Laughs] So, there you have it.
Anything else you’d like to add, elaborate upon, or share as a closing thought on this matter?
I would just repeat what I said before, that the feeling that someone has been ripped off doesn’t always mean there’s been an IP infringement. And that’s actually a good thing.
Imitation is the lifeblood of competition, and it’s ultimately good for consumers. It is good for people to have choices. It is good to not lock up basic ideas. If a triangle ring is better, let people use triangle rings. Unless it actually does fall into one of legally protected categories, there’s no legal problem.
[Intellectual Property protection] is the exception. Or, at least, it should be the exception. Not the rule.