Christopher V. Carani, Esq. is a partner and shareholder at the intellectual property law firm of McAndrews Held & Malloy, Ltd. based in Chicago. He is a registered patent attorney practicing in all areas of intellectual property law with particular emphasis on design law, which focus on the protection of product appearance using design patents, trade dress and copyrights.
Chris has extensive experience litigating design patent, trade dress and copyright cases, including representations before U.S. district courts, the Federal Circuit, U.S. Supreme Court and the ITC. In 2023, in Columbia Sportswear v. Seirus, Chris successfully argued a case of first impression before the Federal Circuit Court of Appeals, creating new law on the issue of the proper scope of comparison prior art used in the design patent infringement analysis. In the landmark design patent case Egyptian Goddess v. Swisa, Chris authored amicus briefs on behalf of the AIPLA at both the petition and en banc stages, taking positions which were ultimately adopted by the Federal Circuit and thereby reshaping U.S. design patent jurisprudence. In Calmar, Inc. v. Arminak & Assoc., Chris authored a brief on behalf of the Industrial Design Society of America in support of a petition for writ of certiori to the U.S. Supreme Court. In 2023, Chris authored the amicus brief for AIPLA in the en banc case of LKQ v. General Motors.
Chris represents some of the world’s most design-centric companies to create valuable design right portfolios. He has procured thousands of strategic design rights, both in the U.S and in over 70 countries around the world. He counsels a wide range of clients on design law protection and enforcement issues and is often called upon to render infringement and validity opinions. IAM Magazine has long included Chris in its IAM Patent 1000 referring to him as one of the U.S.’s “pre-eminent design law experts,” “design patent authority” and “one of the nation’s top design patent specialists.” IAM Magazine also has recognized Chris as being among the World’s 300 Leading IP Strategists, specifically noting that Chris is “one of the world’s leading design law strategists” and “widely regarded as one of the country’s premier design patent lawyers.”
Chris is currently serving a 3-year term on the Board of Directors for American Intellectual Property Law Association’s (AIPLA). He is also the current chair of the International Association for the Protection of Intellectual Property (AIPPI) Design Rights Committee, which studies issues related to design, trade dress and copyright laws. He is the former chair of the American Bar Association’s Design Rights Committee, and also AIPLA’s Committee on Industrial Designs. Chris is the past president of AIPPI-US (the U.S. national group to AIPPI). In 2023, Chris was awarded AIPPI’s Award of Merit, making him only the sixth American to receive the prestigious award.
Since 2015, Chris has been on the faculty of the Northwestern University School of Law as an Adjunct Professor of Law teaching Intellectual Property Fundamentals, a course which covers utility patent, design patent, trademark, trade dress, copyright and trade secret law. Prior to joining McAndrews, Chris served as a law clerk to the Honorable Rebecca R. Pallmeyer at the U.S. District Court for the Northern District of Illinois. Chris was conferred his Juris Doctorate from The Law School at The University of Chicago. He also holds a Bachelor of Science in Engineering from Marquette University.
Chris is a registered patent attorney licensed to practice before the USPTO. He is licensed to practice before the U.S. Supreme Court, the U.S. Federal Circuit Court of Appeals and other U.S. District Courts. Chris has received numerous awards and accolades, including IAM Patent 1000 (2015-23), Super Lawyers (2007-23), IAM Strategy 300 (2021-23) and Leading Lawyers Network (2012-23). In 2018, Chris was named one of the “Top 100” attorneys in Illinois by Thomson Reuters in its Super Lawyers publication.
He has published and lectured extensively on the topic of design law. He is the editor-in-chief and author of the book entitled “Design Rights: Functionality and Scope of Protection,” which is published by Wolters Kluwer N.V. The Second Edition of the book was published in early 2022. Chris’s influential article All or Nothing at All: Design Patent’s Ornamentality Requirement and the Failings of Feature Filtration was published in the Berkley Technology and Law Journal in 2022. 37 Berkeley Tech. L.J. 101 (2022). Chris has lectured on design rights at the United States Patent & Trademark Office (Washington D.C.), the World Intellectual Property Organization (Geneva, Switzerland), the Korean Patent Office (Daejeon, Korea), the Chinese Patent Office (Beijing, China), the Japanese Patent Office (Tokyo, Japan) and the European Union Intellectual Property Office (Alicante, Spain).
In 2007, I began attending sessions of the World Intellectual Property Organization’s (WIPO’s) Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) in Geneva, Switzerland, to discuss the development of the Design Law Treaty. I attended these yearly meetings typically on behalf of the International Association for the Protection of Intellectual Property (AIPPI), though occasionally as a representative of the American Intellectual Property Law Association (AIPLA). I was consistently intrigued by the opportunity to bring harmony to international design law—an area plagued by discord and confusion, including disagreement over the very terminology used to describe the right (e.g., design patent, industrial design, design registration, design model, aesthetic model, etc.). Fast forward 17 years, and I found myself in Riyadh, Saudi Arabia, attending the final Diplomatic Conference for the Design Law Treaty.
While Prince might have written the song “Nothing Compares 2 U,” Sinéad O’Connor transformed the tune, made it her own and it became a mega hit. In a similar vein, photographer Lynn Goldsmith took a photograph of Prince in 1981 that artist Andy Warhol used as a basis for his 1984 “Prince Series” silkscreen prints. Did Warhol infringe Goldsmith’s copyright by using her photograph as the basis for his prints or was his work sufficiently transformative to be protected as “fair use”? That is the question at the heart of the case that the United States Supreme Court will hear in its fall 2022 term. This case may prove to be the most significant Supreme Court fair use case to date.