Intellectual Property Law and Wearable Technologies Functional technology with style

Wearable technology has moved far beyond eyeglasses, hearing aids, wristwatches and pacemakers.

Now that significant computing power can be packed into devices small enough to be worn comfortably on – or in – the body, numerous sectors are developing “wearables” for a wide variety of purposes.

Google Glass® has been used to facilitate surgery, allowing surgeons to view information relevant to the patient without having to look away from the patient. Nike+Sportwatch GPS tracks steps, distance and calories burned. Fitbark monitors a dog’s activity. Gameband Minecraft allows gamers to play Minecraft anywhere. FiLIP is a GPS device for young children, and ProGlove enables industrial workers to work smarter, faster and more safely. There are now a plethora of smartwatches including Apple Watch; Pebble, LG G Watch, Moto 360 and Samsung Gear 2, ranging in price from the $99 Pebble to the $349 Apple.  Cameras worn by police officers for enhancing situational awareness and improving real-time decision making, live video systems enabling firefighters to stream live data, devices for diffusing drugs through the skin, and air-bag vests for cyclists are all in the wearable category.

Wearable technologies are coming to market at a rapid pace and whether the application is for sports and fitness, health and medicine, safety and security, child care, pet care, gaming, fashion or work productivity, companies need to protect their intellectual property.

IP Strategies for Wearable Technologies
Companies need to consider the intellectual property (IP) inside and outside the wearable technology device, for each component, method step, functionality, appearance, and for all content.  To protect IP rights, legal counsel should consider patents (utility and design), copyrights, trade dress, trademarks and trade secrets.  Because wearable technologies are proliferating rapidly, counsel should consider expedited IP filings as well as varied scopes of IP protection available in different territorialities and under different treaties.

Patents
Obtaining patents is a good strategy for fending off competitive functional technology while building market share. Patents provide innovators the right to exclude others from making, selling, using and importing devices with technology that infringe the patent’s claims.

Components such as software, sensors, actuators, materials, interfaces, controls, methods, kits, mechanical components, fabrics, stability, placement, and improved batteries are all candidates for a patent portfolio, guarding wearable technology.

As an example: a Google patent application, entitled “Wearable Device with Input and Output Structures,” discloses and claims the Google Glass® system – the display, frames, image projection and capture, wireless connection, and related sensors.  Similarly, Lenovo filed a patent application entitled “Electronic Device and Sound Capturing Method” for a head-mounted wearable intended to directly compete with Google Glass®. Apple recently announced that its Apple watch will include a touch screen that will perform different functions based on how hard the user presses on the screen – no doubt the subject of a patent application.

A portfolio of IP for wearable technology should be comprehensive, but must be selective depending upon the novelty of the wearable device, the cost of obtaining the protection, how soon protection is sought and in what geographic regions.  Companies should be mindful of different patent statutory requirements, the requirements of patent notices, deadlines for patent filings and statutory methods to speed up patent issuance, as well as the varying scopes of IP protection afforded in different countries and the terms of such forms of protection.

Some say patents are only expensive tickets to much more expensive litigation – and there has been much of it involving wearable technology.  For example in Adidas AG v. Under Armour, Inc. and MapMyFitness, Inc., Adidas sued Under Armour, Inc. and its wholly owned subsidiary MapMyFitness, Inc., for infringement of patents related to “performance monitoring” apparatus, methods and systems. The accused products are training devices and pertinent services offering real-time, audible coaching, and a web application to assist people in optimizing their workout sessions by detecting, evaluating, analyzing body movements and providing performance information.

Trade Secret Protection
If it is possible to keep the technology a secret, a company could consider protecting the technology from misappropriation by trade secret law.  Reverse engineering is a common occurrence in the global marketplace, however, and it is unlikely that trade secret protection will adequately protect the investment made in developing the technology.

Trademarks, logos and taglines
In the U.S. many forms of trademarks are protectable, including color, shape, scent, touch, sound and motion. Other unregistered “common law” trademarks can also be used. But in many other countries, they are not protected and alternative forms of protection must be sought. Trademarks, of course, must be properly used so they do not become generic. Google® has established extensive branding guidelines for the use of what otherwise might be considered a fairly descriptive term – “Glass.”  Companies protecting their IP should develop guidelines that set forth how a trademark should be used in text, how to tag content using a term, and the correct and incorrect ways of referring to a trademark.

In the excitement of bringing a new wearable to market, companies should not forget to assess the availability of the brand by conducting trademark clearance searches in every territory where the wearable is to be sold, made and distributed. This kind of search might have made a difference in the Fitbug v. Fitbit suit, where Fitbug, a UK company that has been producing “health coaching devices” sued competitor Fitbit, alleging trademark infringement.

Trade Dress
Trade dress (for example, the shape of a Coca-Cola® bottle) may protect key non-functional aspects of the wearable’s appearance, configuration and packaging. The device’s trade dress may be subject to trademark registration if the trade dress is not functional and is distinctive – for example, by advertising in a way that prompts consumers to “look for” a wearable that has a particular appearance.

Design Patents
Because wearables are becoming more and more fashionable, wearable technology also gives rise to the opportunity to protect the design features by patent. In 2013, Apple reportedly hired Paul Deneve from Yves Saint Laurent to design ergonometric concepts coupled with functionality (presumably for products such as its smart watch). Google has obtained a design patent for a sleeker Google Glass® device. Design patents are less expensive to obtain than utility patents and may also be an alternative for trade dress, because design patents do not require proof of distinctiveness.  Design patents also provide power to develop market share as the recent Samsung design patent litigation has illustrated.

Copyright Issues
Copyright issues – related to content used with the wearable device – need to be addressed both with the wearable device itself as well as its written instructions. Aware of possible copyright infringement, the Motion Picture Association of America and the National Association of Theatre Owners have announced their “zero-tolerance” policy towards “using any recording device while movies are being shown,” stating that “all phones must be silenced and other recording devices, including wearable devices, must be turned off and put away at show time.”
Wearable devices offer companies the opportunity to enter new markets and develop new products and services for existing markets. Consumers and industries are keenly interested in the efficiency, utility, innovation, fashion and entertainment provided by wearables.

Protecting and leveraging the intellectual property of a company’s wearable technologies – both domestically and worldwide – presents an opportunity for in-house and outside counsel to bring value to their companies and clients.

Rod S. Berman is the Chair of the Intellectual Property Department at Jeffer Mangels Butler & Mitchell LLP. Contact him at RBerman@jmbm.com