GoPro accused of infringing Polaroid’s design rights

Proceedings have been brought against GoPro in the US by Polaroid for the alleged infringement of their design rights. In January 2014, Polaroid applied for registered design rights in the US (known as a ‘design patent’ under US law) in respect of its cube-shaped compact video camera. The design patent was ultimately granted in May 2015, although their product was released onto the market in 2014. Some months later, GroPro released a competing product, also a cube-shaped compact video camera. In terms of their appearance, Polaroid argue that both products feature rounded edges, a recessed lens on one face and a single record button on the top. Polaroid claim that they have invested considerable resources on the design and development of this product, hence it is unique and the first of its kind. In order to defend the action, GoPro will need to be able to establish that the overall design of their product is not similar and does not include the specific features protected by Polaroid’s registered design rights. If GoPro are able to find evidence that similar designs for cube-shaped compact cameras were already in the public domain prior to the date that Polaroid applied to protect the design, then this could assist in invalidating Polaroid’s registered rights. If they cannot, then GoPro could face the sales of their product being halted as well as liability for damages for all profits made. Polaroid is certainly no stranger to IP infringement actions, having successfully sued Kodak back in 1990 for damages of $909 million. It is uncertain at this point what the outcome of this action could mean for other cube-shaped cameras on the market. In the meantime, it serves as a handy reminder of the importance of searching the design registers to check if a design is unique before launching a new product to that design. It is important to remember that liability for registered design infringement can arise even where a design is used that has been created independently and without copying. Furthermore, if searches do not identify any relevant prior art (meaning designs that are already available in the public domain which produce the same overall impression on the notional informed user) then it is possible that the design will be deemed to be novel and possess individual character in order to meet the requirement for registration in its own right. Distinctive and attractive design can transform the commercial success of a product, so businesses are becoming increasingly aware of the fundamental role that design protection can play in protecting those unique design features for their exclusive use. Successful design can even turn the look and feel of a product into a ‘brand’ , enabling customers to instantly recognise them – take Apple’s iPod MP3 players for example. Under UK and EU law, it is not just the design of the product itself that can be protected, but also the design of the packaging, advertising materials, fonts, logos and icons, which can be equally as important. Stobbs can assist with all aspects of strategic and cost effective advice relating to the initial protection of innovative designs and the subsequent enforcement of those rights.

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