The taco.
Whether you like ground beef with cheese and lettuce or chorizo with cilantro and onion, I’d be willing to bet that you probably like some kind of taco. And (fortunately, or maybe unfortunately for our waistlines) no one owns a patent on the taco.
Now, taco plates? That’s another story.
D574187
D574,187 is a design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs. issued to one Hugh Jarratt. Here’s what the patent claims (remember, it’s a design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs., so the real claims are the drawings, not text):
Those ridges? They hold your tacos vertically, instead of letting them flop open. Design patents aren’t supposed to protect “functional” aspects of a design. But in design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs. law, as explained by Prof. Sarah Burstein (@design_law on Twitter), “functional” means “the only configuration that is fit for a particular purpose.” If there’s another way of doing it, then it isn’t functional. And there are plenty of alternative configurations for plates that hold tacos upright. Just looking at design patents cited as prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed., I count at least five. [1][2][3][4][5]
And if we don’t limit ourselves to design patents, we have other options. For example, Arrow Home Products makes one that looks like this:
Similar idea to the Jarratt design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs., but not the same thing, especially when you think about the other taco plate design patents as background.
I picked Arrow because Jarratt sued them over this exact taco plate, an example of the “concept fallacy” in design patents. At its core, the concept fallacy is believing that a design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs. covers a general design principle (like “a taco plate with raised ridges to hold tacos”) rather than a specific design (like “an oval taco plate with four ridges of a certain configuration and a transverse ridge with a parabolic cross section”). But, as that implies, they don’t—similarity of concept isn’t enough. You need to be “deceived into believing that the accused product is the same as the patented design.”
Jarratt and Arrow settled their lawsuit. But last year, Jarratt sued again, this time suing CT Products and Amazon. CT Products settled out of the case, leaving only Amazon.
Am I Selling Taco Plates Or Logistics?
Jarratt’s basic complaint is that Amazon is selling products that infringe his design patentAs distinct from a utility patent. A design patent protects only the ornamental design or appearance of an article of manufacture, but not its structural or functional features. An ‘article of manufacture’ is a broad term which may extend even to computer icons. Like utility patents, design patents must be nonobvious but this standard is harder to apply to designs.. Setting aside the merits of whether the products being sold infringe the patent (there are some meaningful differences between the product and the patent), there’s another issue.
Amazon isn’t the one selling these. Here’s the offending listing from Jarratt’s complaint:
It’s an Amazon webpage, sure, but if you look closely it says “Sold by CT DISCOUNT STORE and Fulfilled by Amazon.” Amazon’s “Fulfilled by Amazon” service (and similar e-commerce or logistics facilities) provides an integrated network of support services for e-commerce. That means that CT DISCOUNT STORE sells the product, and Amazon provides warehousing, shipping, and e-commerce services to CT DISCOUNT STORE. Amazon charges a fee for these services based on the size of the item and the shipping type used (but not the item’s price).
What Amazon doesn’t do is sell the actual product.
Earlier this year, in the context of a similar situation involving Amazon, the Federal CircuitSee CAFC described sale in the context of the “passing of title from the seller to the buyer for a price.” The seller has title, the buyer has money, and they exchange. Parties might handle the money (perhaps a credit card company or payment processor) and might handle the product (a shipping service) but that doesn’t affect the exchange. As the Federal CircuitSee CAFC recognized, “Amazon’s services made it easier for third parties to consummate a sale, [but] the third parties remained the sellers.” While describing copyright, the Federal CircuitSee CAFC did directly relate the definition of sale for copyright and patent purposes.
Intermediary Liability and Patents
Amazon’s case highlights an issue we see in a number of other contexts. Online intermediaries provide services, but they wind up getting sued for the actions of the people using their services, actions that they have don’t control and have no involvement in.
At the end of the day, Amazon doesn’t “make, use, offer to sell, or sell” these products and shouldn’t wind up being held liable for patent infringement. But they’re going to have to spend money and time to get that decision. Hopefully we’ll see a clear statement from the court in this case explaining that e-commerce companies like Amazon, eBay, and others aren’t “selling” or “offering to sell” products when they provide services to third party sellers.