What’s famous to an IP attorney might not be well-known to the general public. There are cases that we are familiar with because they serve as great examples or set wide-ranging precedents for the rights of IP holders. 

Here are three famous cases we think you should know about. 

It Takes More than Patents to Turn a Profit

The Wright Co. v. Herring-Curtiss Co

Everyone has heard about the Wright Brothers, but fewer have heard of Glen Curtiss. 

The Wright brothers, of course, are famous for their invention of the flying machine. They ended up with several patents on it but were eventually left behind by Curtiss, who turned out to be a much better businessman. 

One of the realities of the world today is that patents alone do not ensure success. This was true in the early 1900s as well. Business fundamentals haven’t changed much. 

Although the Wrights were the first to fly, earn fame, and ended up obtaining patents covering aspects of their early flying machines, they just weren’t the best businessmen. Unfortunately for the Wrights, and for other patent holders, being first to patent often isn’t enough. 

Related: Should You Pass on a Patent?

The great inventors that they were, the Wright Brothers understood the idea of lateral stability. In other words, they were looking for a way to stabilize their aircraft from wingtip to wingtip. This would allow the plane to adjust to wind gusts and make banked turns. Their solution was to twist the wings of their airplane to warp them. To keep competitors at bay, the brothers successfully obtained a fairly broad patent that covered designs the Wright Brothers had not contemplated. 

Undeterred by the patent, Curtiss took the concept of a flying machine and instead of using the awkward, and difficult to control, wing-warping approach developed by the Wrights, Curtiss came up with hinged “miniwings,” which were mounted between the biplane wings of his flying machine.  The miniwings were the birth of the hinged ailerons that we see dropping down from the fixed wings of aircraft today.  While he was at it, Curtiss also developed a better control system than the Wrights.  

Litigate or Innovate? 

The Wright brothers took Curtiss to court in a series of battles that only ended with World War I. Even then, Curtiss continued to innovate while the Wrights continued to litigate. 

Although the Wright brothers were finally successful in the actual legal dispute against Curtiss, they were less successful in their business. Their obsession with patent protection and their penchant for secrecy, stifled production and invention.  The Wrights also created a public relations disaster suing producers and promoters of popular flight exhibitions.  In some instances they even sued individual aviators. 

The last two years of Wilbur Wright’s life, until his death in 1912, was almost exclusively focused on fighting Curtiss on patent matters.  And Orville did not care enough about the business side of their work to keep it going, so he sold the company in 1915.  

Unlike the Wrights, Curtiss commercialized his interest in aviation and quickly demonstrated its uses in the war effort. He provided the first demonstration of aerial bombing to the army and navy. The naval seaplane, flying boat, and aircraft carrier operations all owe their existence to his influence. In 1917, the U.S. Army offered him a large and lucrative contract to build aircraft for them. In 1919, his flying boat became the first aircraft to cross the Atlantic Ocean successfully. 

Unfortunately for the Wrights, they rested too much on their patents, did little to continue to innovate, and failed in marketing.  Although important, then as today, patents are no substitute for continued innovation and solid business practices.    

Can You Use Color as a Trademark? 

Qualitative Corporation v.  Jacobson Products Corporation 

Press pads for dry cleaning operations are not the sexy subject matter that captures headlines, but sometimes it’s the simple stuff that makes it to the Supreme Court.  Qualitative Corporation used a shade of green gold in the press pads it sold to dry cleaners. When Jacobson began to use a similar color for their press pad, Qualitative sued. What makes this case interesting is that it established precedent at the Supreme Court, which held that color actually can serve as a trademark. 

On the surface, it may seem ridiculous. You can use color as a trademark? Really? 

Related: What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws

Yes, indeed. The Supreme Court held that color can serve to distinguish the source and origin of a product or service from others. And that is the intended purpose of a trademark: to serve to protect an association created in the minds of consumers.  Color is one of the more unusual devices along with product shapes, sounds, and scents can serve as trademarks.  

Boise State has one of the few football stadiums with a blue football field. Some know it as the Smurf Turf.  But Boise asserts trademark protection over their blue football field. 

Owens Corning has created a similar association with its pink insulation. You won’t find anyone else daring to sell pink insulation. Tiffany’s robin’s egg blue is also a trademark, as is John Deere’s green and yellow. 

The Caveat on Color 

For a trademark to work, it must be distinctive. Color by itself is not distinctive. So, the law requires that an association, in the minds of consumers, must be built over time between the color and the goods or services before the color can be registered as a trademark.  

It took Owens Corning a while to acquire that distinctiveness. It took Boise State a while before their football field was distinctive. It also took Qualitative time to create a distinction with their green-gold press pads. 

The Issue of Too Little, Too Late on Copyright

Fourth Estate Public Benefit Corp. v. Wall-Street.com

Many, including numerous federal courts, believed that filing for copyright registration offered immediate procedural protections. 

This is what content provider, Fourth Estate, believed as well. They had filed for copyright registration but had not yet received approval. When one of their clients, Wall-Street.com, stopped using their services but refused to take down their content, Fourth Estate took them to court. 

The issue was whether copyright protections exist upon application or registration. To complicate matters, the courts had also been at odds on the issue. The Ninth Circuit allowed suits upon application, while the Second Circuit held that claimants must wait for registration. This made for some interesting court-shopping as lawyers sought out the venues that would favor their side. 

The Supreme Court finally settled the issue by ruling that lawsuits can only be brought after registration.  This was bad news for Fourth Estate and for others who waited too long to file for copyright registration. 

Lesson Learned? Register Early. 

There is a lot at stake. Aside from being the ticket into court, copyright registration also opens the door to statutory damages.  Courts can award statutory damages between $750 and $150,000 to the copyright holder without the copyright holder showing any damages. But you have to register with the Copyright Office before the infringing activity occurs or within three months of publication.  So, the bottom line is, register early and as often as you create content you want to protect.  

These cases might not be making the attention-grabbing headlines, but they are “famous” for holding some insightful lessons for anyone seeking patent, trademark and copyright protections.