Success By Design

On a bookshelf in Christopher V. Carani’s office sits a glass case containing a pair of century-old spoons, one silver-plated and one sterling silver, gifts from a past president of the Industrial Designers Society of America. They’re from the same batch as the exhibits in an 1871 U.S. Supreme Court case, Gorham Mfg. Co. v. White, which was, Carani says, “the only time the high court has ever spoken on the test for design patent infringement.”

That ruling put into place a test that governs Carani’s practice area to this day: “whether two designs are substantially the same in the eye of the ordinary observer,” explains Carani. He’s an intellectual property attorney at McAndrews, Held & Malloy, focusing on design-patent law and litigation.

“I first learned of Gorham v. White while working on my first design-patent case,” says Carani. “Citations to it appeared everywhere; it was of those cases that everyone cites but it is rarely discussed.  The deeper I dug, the more interesting the cases became. Justice William Strong, who was newly appointed by President [Ulysses S.] Grant, wrote the opinion. To think he was gazing at the same spoon designs brings the case to life.

“I show them off to anybody who will give me the time of day.”

That can range from Fortune 500 execs to individual designers. Carani is one of the nation’s leading authorities on patents of three-dimensional objects. Mementos from his cases—toys, medical devices, cell phones, handbags, swimsuits—clutter his office.

“The only way to really be able to counsel people in this area of ‘how close is too close’ is to have a wealth of experience in these different scenarios,” he says.

The swimsuits are from a case in which the client, a quilter, published a book of patented designs. When one suddenly appeared in a bikini on the cover of a popular mail-order catalog, the client called Carani. Six months later, another design showed up in the carpeting of a Las Vegas casino’s lounge. “So that was a whole other ordeal, trying to get them to pull up the carpet,” Carani says. Both cases settled favorably for the client. Last year, he served as an expert legal consultant for Coca-Cola, who accused Pepsi of infringing the design of Coke’s Simply Orange bottlecap on Pepsi’s Tropicana juice.

Carani’s father, attorney and renowned jazz musician J.J. Carani, passed along his varied talents to his son. Carani has a logical mind and an artist’s heart, qualities that mesh well with patent work. His natural curiosity is what drew him to law. After graduating with an engineering degree from Marquette University, he was offered a summer job as a file clerk in 1995 at McAndrews, where he became enamored of intellectual property law. “There’d be an extra brief on the copy machine and you’d just want go to read it; even though it’s about a motion to dismiss or lack of venue or something, you’d think it’s so cool.”

As a clerk for U.S. Circuit Judge Rebecca Pallmeyer, he worked on a trade dress case. When he returned to McAndrews as an associate, one of his first cases involved a design patent. “I started reading every single design-patent case that was published: U.S. cases, international cases, cases from the old courts in England,” he says. “I think what was fascinating to me was that there wasn’t a lot that was readily available; you had to dig to get these materials.” He is still digging, often into foreign jurisdictions, and has contacts with design-patent offices throughout the world.

Carani also has influenced U.S. design-patent law. In 2008, the full U.S. Court of Appeals for the Federal Circuit in Washington, D.C., decided to “clean house” after years of confusing patent rulings by taking on Egyptian Goddess, Inc. v. Swisa, Inc. The case involved accusations of infringement of a fingernail-buffer design. Carani represented the American Intellectual Property Law Association, which wasn’t taking sides but wanted to voice its opinion in the landmark decision.

“When a court decides to hear something en banc, that’s a big event, so most everybody and their sister gets in on it and they file briefs,” notes Carani. Writing two amicus curiae briefs, Carani argued that the court should eliminate a complex test put in place in the 1980s and revert to the simpler Gorham v. White as the sole test for infringement. He also argued that designs should be shown in court—not converted into words, as some judges had been doing—and that the court should examine similar, previously designed items, not just the two at the center of the battle.

The court agreed with all three of Carani’s points, effectively setting them as ground rules. The decision was gratifying, considering “that I’ve dedicated my life to this practice,” he says. “It sort of breathes new life into this area of the law.” 

A large part of Carani’s life has always been defined by music. “We always had jazz playing the house. We went to jazz clubs with my father,” he says. “That was sort of the soundtrack to my life.”

Carani plays the upright bass professionally, plucking out bebop, swing and Latin jazz. He’s performed with legendary saxophonist Franz Jackson and has played in locales as far-flung as China, Thailand and Italy. He sings in five languages, including Portuguese and French. “It’s nice to connect with the different people in the audience through music,” he says.

Another major element in Carani’s life, of course, is his growing family. He and his wife, Anita, have a daughter and a second child on the way. “My father always stressed the golden mean—with arts, athletics, family and education,” Carani says. “Not doing one thing to the exclusion of others.”