October 05, 2011, 2:45 PM — Samsung took a step toward finding a kind of "pax tabletica" with arch-foe Apple in an Australian court last week, offering to remove features from its Galaxy Tab to avoid a court ban on sales of the device in that country. But what's really interesting about the case isn't the technical litigation, but the underlying attempt to define how much of a product's design is actually protected under existing, fragmented international laws.
The fight began in April, when Apple sued Samsung for allegedly copying Apple's tablet and smartphone designs. Shortly thereafter, Samsung countersued, and the battle was on.
In some ways, the various legal cases now pending between the two companies -- just today Samsung went after planned sales the iPhone 4S in Italy and France -- seem likely to force courts worldwide to make decisive judgments on just how far a person can patent a design.
Defining design protection
"Apple's complaint is notable because it also cites the overall product design and onscreen interface," said Ilya Kazi, Chartered Patent Attorney and partner at leading intellectual property advisors Mathys & Squire in London. These are sometimes called 'trade dress' issues as well as involving aesthetic designs.
"The original suit claims that Samsung's products infringe Apple's technical ('utility') patents relating to user interaction, specifically pinching, zooming, scrolling, and selecting," Kazi said. "Apple also accuses Samsung of breaching design patents, most notably the flat black face of the iPhone and iPad."
Samsung's unusual response to Apple's original U.S. lawsuit included citing as 'prior art' -- information already public before Apple's patent was filed -- a video device depicted in the film 2001: A Space Odyssey.
Samsung refers to a scene in the 1968 Stanley Kubrick classic where actors watch a TV news broadcast from what appears to be a digital newspaper and describes the scene as astronauts "using personal tablet computers." This is an attempt to limit what Apple can claim is unique to the iPad and is part of a global search for antecedents, according to patent law experts.
"I think it's fair to say this is the most high-profile design case we've ever had and this is really testing the system in these different countries, forcing them to make decisions on difficult issues about design," said Chris Carani, chairman of the American Bar Association's Industrial Designs Committee for 2011-13. He is also a patent attorney at Chicago-based IP law firm McAndrews, Held & Malloy.
The 1871 precedent
In the U.S., Apple must only satisfy a single requirement to prove its claim. This dates back to an 1871 decision in the Gorham v. Company v. White case. To show U.S. courts that a design patent has been abused, Apple must show that:
"If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same -- if the resemblance is such as to deceive such an observer and sufficient to induce him to purchase one supposing it to be the other -- the one first patented is infringed by the other."
Apple's culture of industrial design, which has won high marks for everything from the original iMac to the Cube to peripherals like the Apple mouse -- has helped the company achieve its high levels of success; purity of design is part of the Apple allure.
The challenge for judges is huge: "Countries will need to grapple with the question of how should scope be declared when you have such limited choices," said Carani.
Given the stripped-down simplicity of Apple product design, Samsung may try to argue that when you have a limited number of design choices, infringement can be avoided by changing the smallest detail. Apple could counter that no one ever claimed a tablet needs to be rectangular, and no one demanded that all tablets have straight edges.
Adding to the difficulty of making all-encompassing rulings on design is a bigger problem; every jurisdiction in which the legal fights are now taking place operates under different rules. It's theoretically possible for Apple to win a specific point in some countries, which could make it hard to take a product and turn it into an icon by ensuring it is consistent.
Why consistency matters
