Session 4: IP, Design, User Experience
Sarah Burstein, Reviving Ornamentality: Fed. Cir. killed ornamentality in design; right now it means nothing other than Morton-Norwich nonfunctionality. She thinks we should bring it back. Two aspects: (1) “matter of concern” in normal and intended use; (2) if you can’t see it we don’t care. But “normal and intended use” means everything from manufacture to disposal; if you can see it when it breaks, then it’s within the possible scope of design patent. If you can draft a patent application, you won’t run up against an ornamentality problem.
First mistake: treating ornamentality as opposite of functionality. Some designs can be both at the same time. Fed. Cir. says: it’s not primarily functional unless there are no other alternatives; this makes everything ornamental b/c there’s almost always an alternative. Only recent exception: a key that fit into a specific lock; and even then there was a dissent.
This is a problem b/c design laws should incentivize the creation of new and creative aesthetic product designs. Design patents are now protecting useful innovations in design patent clothing/petty patents, against Congressional design.
Before 1982, many courts said (1) is design dictated by utilitarian concerns? (2) additional aesthetic requirement—some visual impact. Don’t think of ornamentality as mere nonfunctionality doctrine. Ask whether the design makes a material aesthetic contribution to the product, providing a reason for choosing one over the other? How do we test that? Well, we can measure it indirectly. Ask of producer: was this design driven by utilitarian concerns? Ask of consumer/user: does the appearance of this type of design matter to a substantial portion of actual users?
Why focus on the visual? This is the only way that design patents make sense in our IP landscape. It’s the hole they were intended to and can in fact fill: protecting useful articles with some visual content that matters. Otherwise they’re just petty patents or copyrights. If consumers don’t care (e.g., shape of USB connector), then it’s wasted effort from design perspective/anticompetitive from any other perspective.
Also addresses problems of partial claiming. Plus the “Rabbit Strategy,” where you use continuations to get competitors on the hook—you take a parent application and then create child applications with subparts of the original design. In my world, you’d have to prove consumers cared. Spare parts, too. You might say that people buy bumpers b/c they want the bumper to look like it did before the accident, but that’s not the kind of aesthetic effect that should matter.
Would also make our crazy damages provision make more sense, when you get total profits no matter what—if the design is material to the consumer, that is closer to tort principles.
Mark McKenna: Who counts as a user? You see TM use intermediate purchasers all the time. Materiality: you mean “is the aesthetic aspect material”? That raises an important timing issue. As of the date of application? If it’s ever true? If successful, people will likely come to appreciate the design and it will matter to them.
A: true, especially for primary products—the initiator of the smartphone. But that may be justified.
McKenna: especially given evidence that familiarity breeds likeability.
A: but that is ok: we should create incentives for people to create nice products even when they aren’t typically bought for aesthetic reasons.
Lunney: Congress didn’t intend this isn’t a good enough justification—think more about broader social costs.
A: Agree—Congress said so for some pretty good reasons. Mutant patents = big social problem.
Farley: Steve Jobs even wanted the circuit board to be beautiful.
A: I would focus on the user.
Zahr Said: presumptions anywhere?
A: We should just go test it. Surveys; PTO would be subject to lower standards as with TM.
Peter Lee, The Law of Look and Feel: A comprehensive examination of the regulation of consumers’ aesthetic experiences. Emergent law of look and feel: exclusive rights in design across ©, TM, utility patent, design patent. Doctrines selectively mitigate exclusive rights in response to certain factors.
Look & feel of the 1980s, as shown by Pac-Man (really Ms. Pac-Man). Look and feel in Louboutin heels; Abercrombie & Fitch clothes with hot guys and their abs—an A&F store is a total sensory experience, including music and scent. Exemplar of look & feel in modern economy: the iPhone. Valued in significant part for how it feels in your hand. Marketers say: look and feel of products will determine their success; in a crowded market place, aesthetics is often the only way to stand out. Look and feel can encompass the zeitgeist. A&F evokes the early 2000s; iPhone = right now.
Law of look & feel. ©: 9th Circuit in Roth Greeting Cards protected “total concept and feel.” Blurred Lines case: jury found infringement based on sound & feel of the late 70s. Limitations in ©: idea/expression; merger; scenes a faire; useful articles. Apple Computer v. Microsoft: copying the GUI; the court invoked limiting doctrines of merger & scenes a faire, including consumer expectations re: overlapping windows.
TM: Taco Cabana protects look & feel. Limiting doctrines: distinctiveness, functionality, and likely confusion. Product design trade dress can’t be inherently distinctive. Aesthetic functionality: A&F lost claim against American Eagle for general look of its stores.
Utility patents: Apple’s patents on two-finger pinch to zoom and on slide to unlock. These patents contribute to look & feel: streamlined aesthetic/user interface. Limitations: functionality; constraints on patentable subject matter; apportionment of damages.
Design patents: here though there’s a distressing lack of limitations. Functionality is construed narrowly; consumer deception standard for infringement isn’t sensitive to context; expansive damages. Greater standardization is justified to make design patent fit better with the other IP forms.
Linford: limits on © don’t seem to be that good. We do abstraction, filtration, comparison when we’re worried about functionality; total look and feel seems to be courts generally extending broad protection. If the argument is design patent needs more than what it has, I’m with you there, but it’s surprising to think that copyright might be a good model.
A: Not saying that © is perfect; impressionistic view is problematic in itself, but other doctrines help cabin it in ©, not design patent.
Q: Zeitgeist—if it’s true that one producer was the first to create the zeitgeist, wouldn’t limited term take care of that with obviousness afterwards?
A: it could, but that revolves around the question of timing. Something can achieve the status of a standard quite quickly, before 14 years expires.
Said: Roth never really meant to establish a test. Look & feel cases seem to involve courts struggling; treating look & feel as an element of a work along with plot, as opposed to a lens through which to view the work. Treating errors/outcome-driven cases as a unifying principle begs the question. She’d rather say: there are these cases, and what about the cases drove the court to use total concept & feel instead of something else—scope, filtration, etc.
Farley: also concerned you’re reifying look & feel, which is a fictitious concept—case involving the artist Tarkay—attempt to protect his style was rejected, and she’s not sure how to distinguish look & feel from style.
A: we don’t want to focus on the words look & feel. What we argue is that there’s a law of look & feel that extends past the use of the words (to substantial similarity). It can’t be an analytic grab bag. Other doctrines that have never explicitly been associated with look & feel are part of the broader law of look & feel.
Mark McKenna & Jeanne Fromer, Claiming in Litigation/Claiming Design: How different systems of IP conceive of claiming. Louboutin: how does the court understand the nature of the plaintiff’s claim as a kind of property. Yankee Candle: P attempts to claim everything you might think about when you think about this store. Recent TM application: all of the lines on the image are dotted out, meaning they’re claiming no shape, just a color—the color of something. TM doesn’t have a methodology for claiming; thinks about problem where law encounters it in particular cases. Recent design patents: Claim limited to one curve on a gear, everything else dotted out. What explains the different methodologies for claiming, especially given increasingly overlapping use of those systems? Design patent system forces you to show up at PTO with a claim in pictures; you have some definitive ex ante claim against which you can compare anything later on. TM says: you don’t have to do anything ahead of time if you don’t want to (though we might want to change that rule)—most trade dress cases involve unregistered trade dress, and even when there is a registration, doesn’t seem to have much bearing on court’s infringement analysis (Louboutin being the outlier).
What TM law does so differently: articulate your claim in litigation, rather than in ex ante document. Issues of public notice. Not specific to design: happens in copyright, trade secret—claiming in litigation is an issue in many situations. Attacking the problem as a claiming in litigation problem suggests that design is one instance of a larger problem. In TM we allow it because we’re concerned about how it works in the market, not in the abstract. Product designs change over time; makes more sense to consider it at time of litigation. Costs of claiming in litigation: public notice; courts seem uncomfortable w/lack of notice/lack of ability to pin down scope. So they sometimes say “we don’t know what you’re claiming, so it’s out.” Fair Wind Sailing in the 3d Circuit: P seems to be claiming a way of doing business, using a certain size of boat and using customer testimonials—3d Circuit says “no mark” but they don’t have a tool like distinctiveness or functionality to do this work.
Trade dress cases: courts have tried to say: you need to articulate the trade dress in words. The problem with that rule, though it’s the right instinct, is that courts allow people to articulate the claim in incredibly varying levels of generality: every Mexican restaurant you’ve ever seen, or exacting description. Courts are thinking about infringement/managing scope, and backing into a claim definition. Design patent: pictures are used, but deep & persistent ambivalence about need to describe pictures in words—b/c pictures are often not very illuminating (no pun intended). Maybe they aren’t so different—the mostly dotted image is a trick, leaving the design patent incredibly general and vague by claiming only a very small part of the design. Relates to partial claiming.
Are there good reasons for claiming methodologies differing? You might say that TM v. utility patent: it’s more important for utility patents to be clear b/c stakes are higher. But that doesn’t work well for design patent. Iinfringement standards are pretty similar b/t trade dress and design patent; obviousness criteria are mostly nonexistent for design patent, so design patent claims look like trade dress claims. Both sides ought to think about more specific rules to apply across cases.
Lunney: exemplar systems worked well for old-style TM (where double identity was required to infringe) and © (pure copying) but never worked for utility patent.
Fromer: we want people to have to think through an invention; claiming forces you to a certain level of generality/specificity. Is there something similar going on in this context? Do we want to force people to think about their rights early on for TM/design patent. Not as obvious.
Lunney: what would a written claim for Star Wars look like?
McKenna: reason why TM lacks methodology for claiming—historically, most of this would have been in unfair competition, so you didn’t need to worry too much about the front end.
Aaron Perzanowski, The “Buy Now” Lie: “Buy now” on Amazon for Kindle books; the page for Orwell’s 1984 looks the same for Kindle version as for the paperback. But Amazon can pull back and destroy 1984 for the Kindle, not for the paperback. One claim: the market has spoken and people don’t value possession rights for ebooks as much as they do for physical books. But that assumes consumers understand that “buy now” doesn’t mean “buy now.” Commerce Department White Paper: MPAA/Disney said, of course consumers understand they’re buying a license. But I figured it was worth empirically testing. Fake online retail portal: simplified layout like Amazon’s. Tested “buy now” button. 1300 consumers representative of the US population in sex, income, age. Showed a number of variations on this retail page. Tested books, movies, music.
Asked them: after they’d clicked, can you lend it to a friend? Leave it in your will? Resell it? Keep it as long as you want?
People who believe they “own” what they buy using “buy now”: high percentage; also high percentage believe they can keep forever & use on device of choice (both of these in the 80-90% range). Believe they can lend ebooks, mp3s, and digital movies: (1/2 or less); lend as gifts (similar); leave in wills (1/3 or less); resell it (17% or less). Significant number of consumers get these questions wrong. All of these percentages, w/possible exception of resale, are large enough to establish falsity/deception.
Apple is replacing albums stored in the cloud; it can just disappear.
Switch to “license now”—while belief in “ownership” goes down, other things go weird but don’t change much and people still believe they can keep forever & use on device of choice in the same %ages; more people believe you can resell digital movies when you say “license now.”
The tested short notice caused a pretty big drop, especially for lending, gifting, reselling—with the weird exception of digital movies.
Results: there is miscommunication happening. There is a reasonably effective intervention. He isn’t a user interface designer, and he spent 10-15 minutes on the notice, and yet it had a pretty substantial impact.
Also asked respondents questions about materiality. Maybe their wrongness doesn’t matter. Digital v. hardcover: people’s ability to lend and resell matters to consumers in stated preference, and there’s almost no difference in preference b/t physical and digital version. Indeed, they care more about reselling ebooks than hardcovers, if you believe his numbers (which there’s no reason not to).
Also asked: if you can’t get the rights you want, would you be more likely to download illegally or stream it from a subscription service? About 1/3 said yes to illegal download; from 36-74% said streaming would also be more appealing. WTP: $3-4 range for the rights.
Dep’t of Commerce White Paper recognizes the problem: consumers don’t understand what they’re getting. Doesn’t cite any evidence, but now there is evidence.
Haven’t broken down results by age, education level, behaviors of lending/reselling.
RT: Richard Craswell has good work on how you interpret different results from different disclosures.
A: doesn’t know that new options will necessarily help consumers. [I think we were saying/hearing slightly different things, but Craswell would probably agree with this point. Craswell has written about when it makes sense to require rewriting a claim, if some people don’t get information/lose value from the increased cognitive burden while others benefit from enhanced information.]
McKenna: Do people think they own it but can’t lend it? Do people have any idea what ownership means? [Note that it’s possible to have a physical thing you own but can’t rent—that’s what airBNB is fighting about.]
A: 40% say they don’t believe they’re allowed to lend their physical books to other people. There is a big difference b/t physical and digital, but physical is interesting in its own right.