Drake, part 3

Panel 3: Intellectual Property Law I

Prof. Sarah Burstein, University of Oklahoma School of Law (beginning fall 2012)

In Defense of Design Patents

Ralph Brown called design patent a Cinderella who never goes to the ball; today she calls them the ugly stepsisters who everyone loves to hate.  Standard critiques exist in the admittedly small literature.  Wants to challenge those critiques.  They obfuscate the real issues with design protection.

Industrial design is her focus, though many arguments go to fashion. 

Critique #1, Design is Art!  Either design is like sculpture, or it’s so much more like sculpture than like building a new machine that we should use copyright. Problem: industrial design is a lot broader than a gorgeous Phillipe Starck chair.  It includes a “mailbox bolt,” which goes into a larger design. Do we want to protect “art”?  The products of industrial design?  Something else?

Critique #2, we (only) need anticopying protection.  Narrow protection is better to avoid overprotection of patent.  In re Laverne: two bowl chairs (prior art).  Copyright has access/similarity sliding scale.  But design patent is industrial design and thus will generally always have high availability/access, thus decreasing the amount of similarity required to find infringement.  In Laverne, copying wasn’t an issue—the issue was whether the prior art rendered the applied-for design obvious.  Narrow scope of design patent exists now.  Both of these designs are important design icons and the second comer shouldn’t be discouraged.

Critique #3, patent requirements are not “appropriate” because they’re too expensive, take too long, too difficult to satisfy.  Maybe the system should be more patent-like.  Design patent applications aren’t published prior to issuance, and can’t get pre issuance damages; we could require publication and allow pre issuance damages.  Are we really interested in incentives?  Or do we want to reward authorship?  That’s the question that has to be answered first.  Some argue that the best designs, from midcentury minalism point of view, won’t get protected/can’t get patents.  But she’s never seen an example of a rejection because of its strict adherence to minimalism. We haven’t talked enough about specifics.

Big issues: ex ante v. ex post examination; property v. liability rules; what do we want to protect, exactly; also how the design patent system relates to product design trade dress protection.

Raizel Liebler, John Marshall Law School

Be the Brand: Required Involvement in Social Media

Red Cross: tweet by staffer was personal, discussed drunkenness.  Red Cross reacted well: deleted the “rogue tweet” but assured everyone that the Red Cross was sober.  The beer brand mentioned in the rogue tweet also took advantage to promote itself & donations to the Red Cross.

Chrysler tweet: “I find it ironic that Detroit is known as motorcity but no one here can f—ing drive.”  Staffer and agency were fired.

AARP tweet: “We miss you, Biggie.”  Not exactly the AARP’s target audience.

Kenneth Cole tweet, not an accident: mentioned Egyptian unrest: “Rumor is they heard our new spring collection is now available online.”  Became quite controversial.

Gilbert Gottfried, AFLAC duck voice, posted controversial tweet about Japanese tsunami and was subsequently dumpted as spokesduck.  Baseball player’s tweet during spring training got him in trouble.

Other risks: disgruntled employee could erase or deface the brand’s page.

Legal issues: FTC regulations, copyright/trade secrets, employment/contract/NLRB, right of publicity, privacy, moral rights (outside US). She is most concerned with allowing employees to have personal lives outside the workplace, especially those whose jobs include doing social media and may be expected to be on call/tweeting all the time.  Also concerned with employers, public, celebrities.

Maremont v. Susan Fredman Design Group—employee hospitalized in accident, but company wanted to continue tweeting from her account, and did post on her account without her permission.  Can’t tell which tweets she actually posted.  (Liebler says real v. fake but it’s not clear to me this is the proper characterization.)

Linedrawing difficulties, especially in an age of flexible employment.  What happens when an individual has many Twitter followers and switches employment—is it wrong to “take” them?  Happened with a BBC employee who switched networks; BBC did not act (but person changed her Twitter name to take “bbc” out and put new network name in).

Prof. Emily Michiko Morris, Indiana University School of Law—Indianapolis

Artifice and Action in Patentable Subject Matter: A ‘Common Sense’ Approach?

We have intuitions; unpredictability is the complaint, but she believes there’s a common thread in intuition.  Artifice and action combined are recurring themes.  Artifice means: the result of ingenuity; humanly contrived, human-made.  Action: something active, does something or performs some activity.  Does more than just exist.  Seen in the “machine or transformation” test before Bilski.  Invention must behave, operate, function.

So you see questions about whether something is artificial enough: Diamond v. Chakrabarty.  Also, some things don’t do much more than exist, so courts are reluctant to see them as technological/function-performing.  These concepts are hardly unique to patentable subject matter and correlate with utility and obviousness, and also enablement. But in conjunction they seem to underlie PSM.

Not arguing that this is the correct answer.  She thinks the Constitution poses an empirically impossible question about what promotes the progress of the useful arts. But still it’s a relatively consistent theme.

Laws of nature/algorithms: not artifice.  Perhaps it’s not Lockean labor, perhaps it’s not progress, perhaps there’s an aversion to propertizing nature/naturally occuring phenomena.  Overbreadth is another concern—overbreadth underlies all of patent law.  Laws of nature/algorithms also flunk the action requirement; action is not utility.  A law of nature or algorithm may have a purpose/use, but it is unlikely to be “active.”  Copyrightable subject matter is useful, but it doesn’t do anything itself.  It exists, it informs us, but it doesn’t “work.”  (This seems to me to skip over things like performative utterances.)  Laws of nature are like that too.  Abstract/vague ideas: not artifice, maybe, because they might not have existence prior to human creation; courts also refer to laws of nature as abstract. The real failure is action: lack the specificity necessary to accomplish something, they only indicate what the inventor would like to accomplish.  Enablement is an issue too in these cases, despite showing up in PSM.

Machine or transformation test: SCt rejected this as exclusive test for processes.  Transformation is clearly “action.”  Machines/compositions of matter/manufactures—can be seen as active, doing more than existing.  Machines are clearly non-human; is transformation non-human/artificial?  Her concept also helps explain problems with mental steps; printed matter doctrine; business methods; computer software; diagnostic methods.

Prof. Rebecca Tushnet, Georgetown University Law Center

The Eye Alone Is the Judge: Images and Design Patents

Fear of images is common in law, resolved by two contradictory and unpredictably deployed concepts – the image as transparent representation of reality and the image as opaque and non-dissectable fact in the world.  Courts lean towards one concept but find themselves appealing to the other when difficulties emerge.

The key problem with respect to the scope of design patents can be briefly stated, though not easily resolved: Many designs involve non-novel or functional features, and are only protectable because of other novel features, or because of a novel combination of otherwise familiar features.  But if the overall effect of the design on the eye is the measure of infringement, how are factfinders to avoid potentially broadening the scope of the design patent too far when an accused design looks like a patented design because of similarities in these unprotectable features?

Problem comes up in copyright too, e.g., the Franklin Mint case where a bird painter painted three different versions of the same scene, and the second was held not to have infringed the first because the similarities derived from the genre.

Well, can we specify what’s different about a design as compared to prior art by explaining using words?  Or by using words to sort out what part of a design patent has utilitarian functionality?  We can try, but we then confront the problem of words and verbal overshadowing.

The problem of uniqueness.  Uniqueness—distance from prior art—is the standard in design patent, which itself can give us some insight on why it’s not the standard in copyright, which has an idea/expression distinction. This means that even if you have a unique idea—you’re the first one to come up with a story about resurrecting dinosaurs out of insect DNA—you don’t have a monopoly over that idea, only rights to your particular expression of it.

A further problem created by protecting uniqueness: Triangulation.  What happens when a design is similar to prior art, but also similar to patented design.  Which penumbra is the accused design within?  Visual inspection will not provide answers; instead we need some normative idea of what we’re protecting and why.

Shontavia Johnson: For Liebler—what are the First Amendment implications?  Even if you sign a contract with a morals clause, can an employer/endorsee control all your speech?

Liebler: In the US, we’ve pretty much said you can contract away your rights within the scope of employment. The issue for her then is whether the contract is acceptable.  At what point is someone outside the scope of employment?  Social media makes that line particularly difficult to draw.  Do you have to announce to your Twitter followers that you’ve changed jobs?

Q for Burstein: Time may matter – design patent may take time, but gives you certainty of timing; compare to trade dress, which requires time to acquire and may be lost.  So design patent gives certainty but may also overprotect.  Should SCt worry about design patent overlapping TM rights, given Dastar?

A: she thinks trade dress is the problem, not design patent.  Dastar is about authorship masquerading as trademark.  She’d rather cut back on trade dress than design patent.  Tests for secondary meaning are overprotective for products—very hard to distinguish between ‘I recognize this as an iPad’ and ‘I view this primarily as an indicator of source.’ 

Q for Morris: how does this work for a composition of matter?  Prometheus: trouble distinguishing between lab work and law of nature.

Morris: even compositions of matter will do something if they are patentable: a drug will have biological effect.  Action requirement is fairly low.  Could have a composition of matter that works as a paperweight: perform the function of holding paper down.  But artifice has to be product of human activity, not human activity itself. Intuition: Human thought can’t be propertized.

For Burstein: In New Zealand, don’t have copyright protection for industrial designs, but do have registered designs. For local people, they rarely use registered design; use copyright instead. Term is reduced to 16 years. Similar to patent protection.

Boone: ask about 3-D printing. If designs can suddenly be copied, does that change the calculus about what the law should be doing about design patents? 

For Liebler: is this a conflict between agency law and how the sites are coded, or is it just a situation where the companies haven’t figured out how to do it right?

A: yes! It’s complicated because it’s new. If before the relationship starts everyone thinks about what happens if the employee quits or is fired, everything will be fine, but that’s not what happens. Mostly it’s “we need a Twitter spokesperson” and if a part-timer starts it, as in the PhoneDog case, then things get entrenched.  If he’s the only one with the password and can change the account, that creates a legal issue.  Facebook: FB doesn’t allow a corporate owner of a page; has to be connected to a real person. If a disgruntled employee leaves, s/he could erase that page.

Yu: for the Franklin Mint paintings, when the painter drew the second and third painting, he also had the memory of drawing the first.  Why isn’t that enough to infringe?

RT: Yes, of course copyright recognizes unconscious copying and ordinarily we’d say his memory was enough.  Instead there must be some underlying idea about allowing him to be free to continue painting in his chosen style (which was Audobon’s style).  This is a rationale that can’t be gleaned just from looking at the pictures, which do look a lot alike.  There is a gap between explanation and outcome.

Greg Vetter: what would you show the jury beyond the pictures—market information? That’s not how utility patent infringement is done.  Contextual infringement analysis would be resisted by people from the utility patent side out of fear of creep.

RT: true, though design patent is already different—the drawing is the claim, not the words, which is not how it works in utility patent; you don’t have to construe the claims to make sure they read on the accused device because you evaluate similarity overall. 

Q: What’s the lesson for copyright?

A: uniqueness isn’t right for copyright, though it may be for design patent.  Samson Vermont has a paper on this I find intriguing but ultimately wrong.

Benjamin Liu: you used to have to submit an exemplar with a utility patent; we then decided to embrace the word in the utility patent, and even denying the relevance of drawings in the utility patent.  What is at stake for that choice?  Why not embrace verbal overshadowing?

A: Lawyer dominance?  Verbal overshadowing simply distorts outcomes; can also favor plaintiff by allowing framing of similarities as predominant, though even if there wasn’t systematic distortion there’s still distortion that is worth combating if we can figure out how.

For Burstein: should we have a doctrine of election between copyright and design, as with some other nations’ regimes?

A: that’s missing from many proposals. (Not from Mark McKenna’s!)  Worth considering: give someone 10 years of protection but then they’re done.

Q: people designated to be the brand: (1) intentional hijacking; (2) mistake (tried to tweet from personal account).  Can contracting get around that?  Make a condition of employment that the account belongs to the company.  (Consider FB’s position on making employees share passwords on this—FB threatens it’s a violation of CFAA, which seems wrong but is aggressive.)  Could tell a person that they can’t have another social media identity, and thus couldn’t mistakenly tweet in the other identity.

A: doesn’t see it as realistic, especially the second: when someone is hired to “be the brand,” they’re often chosen because they already have a presence—many job descriptions require a certain number of Twitter followers to be considered.  Sometimes the line is blurred; sometimes they start a new feed but start from scratch.  Another way to address mistakes: someone could only use certain devices while they’re working—two phones, two computers.  Many businesses have multiple official Twitter accounts.  Mistakes are likely to be inherent.  It’s hard to contract away the possibility of mistakes.

Q: Procedure matters in how we apply the infringement test.  Arnstein and analogy to copyright: the two-part test there is supposed to be expert and then lay.  PHOSITA in patent seems very different. Other way to go is to protect markets: take what’s pleasing to the viewer more seriously. Look at how the market reacts.

Boone: Dealing with verbal overshadowing—a lot of that happens with claims in patent cases. Is there a comparative study for what happens in a TM survey?  Or is that subject to the same problems?  (I think it would be, because the questions you ask shape the answers, though controls may be able to account for some of that. I don’t know if there’s a way to replicate that in patent, though with design patent you might be able to show people in the control group the prior art and the accused design.)