car design and IP/trademark rights

[justalayman]

What is the name of your state (only U.S. law)? federal

Ok IP wunderkind. Here is a link to an article about a company that is copying a car design (1963 Corvette Grand Sport). GM is suing them on a variety of claims apparently.

GM Sues Replica Corvette Maker - Corvette Grand Sport - Jalopnik

several questions come to mind. Many are mentioned in the readers comments and somewhat discussed but none truly answered. I understand the use of the Corvette name, any applicable GM logo and items such as that being forbidden but, if anybody cares to reply, a couple questions that come to mind for me:

can an auto manufacturer protect the actual design of a vehicle? and if so, for how long?

and if they can protect the actual design, how can another party make items such as replacement fenders and other very specific body parts?


I do know that Jeep sued AM General for having a similar designed grill (vertical slots of a particular quantity) which Jeep lost. Their claim was to prevent AM General from using the design but that was based on a trademark claim and not an over all design issue.

I have also read a comment in one of my many auto enthusiast magazines commenting on the Hyundai Sonata compared to a Mercedes Benz where the writer Hyundai should probably be paying royalties to MB. I am sure it was not serious but it does bring in my question of how much control does a manufacturer have over some design elements or possibly the total integrated design.

 

[divgradcurl]

This is an issue of trade dress. A company can acquire rights to the overall "look and feel" of their product as well as any mark or logo they use to identify their goods and services. The same tests for any mark apply to trade dress -- distinctiveness, evidence of secondary meaning, etc. -- and if the overall design of the product meets the requirements for obtaining trademark protection, it can be protected as trade dress.

When you are talking about physical things, you have a similar distinction between the functional aspects and the ornamental aspects as you do in copyright law (where the difference is between the idea and the expression of the idea). Things that are functional, even if also ornamental, cannot be protected as trade dress unless the ornamental-ness of the object can be separated from the functionality. The familiar shape of a Coke bottle is trade dress, because although the bottle is functional, the ribbing and shape are purely ornamental, and not related to functionality. If the bottle were designed in such a way that the shape and ribbing were necessary to make the bottle, then it would not be protectible as trade dress but would instead need to be the subject of a design patent for protection.

As far as reproduction parts go, obviously anything with a logo would need to be licensed. But fenders and the like are okay, because the trade dress only covers the entire "thing," not pieces of the thing individually or separately. So someone can make repro fenders for a Corvette without a license from GM, but cannot make a reproduction Corvette.

As far as the Hyundai example is concerned, there are a couple of considerations, first is whether or not the MB is really distinctive enough to qualify for trade dress protection in the first place, and second, if it is, is the Hyundai "confusingly similar." Neither may be true.

 

[justalayman]

thanks DGC. I was hoping you would comment.


and as always, a very informative and yet succinct answer.