Commentator: Matthew Sag
Sag: what are design patents? One practitioner he knows
sells them to clients as another form of TM.
Risch shows how the infringement standard could be improved by applying
copyright rules and by applying his economic model. Sag will criticize the use
of economic models in this type of paper and how copyright informs the
discussion.
Economic models are often useful to clarify one’s own
thinking, but then they should be left out. The model here shows that costs are
bad and that all choices have tradeoffs.
Model says we should look at issue from the perspective of the time that
an actor is thinking of copying. But the
model doesn’t explain why this is so and he couldn’t distinguish this from the
general “we should maximize social welfare.”
The paper, however, teaches a lot. Design patents are easy to get because the
novelty bar is set really low, and courts still use the teaching/motivation
etc. test. Image plus a display is patentable: courts are treating ephemeral
displays, not always part of the object, as patentable, which is necessary for
GUI patents. They protect look &
feel in exactly the way of the old copyright cases, but without copyright’s
filter for functionality or its various limitations and defenses. Can be used
to protect function because of the way the infringement test is structured: doesn’t
require nearly exact copying. If juries
aren’t given strict instructions, as mostly they aren’t, they’ll be comparing
general appearance including functional elements; and after Egyptian Goddess they’ll protect designs
not at the point of novelty.
Apple v. Samsung:
the phones are a lot alike, but they are similar. Once you start abstracting
away for what’s protectable, you get into areas of function rather than the
proper ambit of design. Apple’s complaint was that Samsung used features that
were largely inevitable/attractive. By
using abstraction, you ensure an infringement test that covers function and not
just aesthetics.
History of copyright provides lessons: Courts disagree on
substantial similarity and how to filter, but at least in a case like Apple they would always filter. And they take account of user demand in
determining functionality, per Lotus v.
Borland.
Paper should consider the static/dynamic tradeoff: Apple
would argue that it deserves to be able to charge a huge amount because it took
the risks/made the investment. Would
also benefit from broader discussion of economics of design patents: they’re
weird hybrids where you get briefly very strong copyright/TM-like protection
better than either of them. If we should
have these at all, why? That’s where the economic analysis should take place.
Risch: often gets the static v. dynamic question. The reason he used the delayed ex ante view
is so that the court can assess efficiency of that sort at the time of the
reuse. If it’s early on, at that point the court might say there hasn’t been
enough time to recoup investment and it’s not a standard, and therefore it can’t
be reused. But if it’s been several years, as in Apple v. Samsung, then it can be time to allow reuse. It’s
problematic that Apple claimed infringement because the ideas were the same.
Copyright has the tools to deal with that.
You could take a photo of this room and get a design patent
on it. People are wearing colorful
outfits, they have heads of different shapes—and now no one else can take a
photo of people wearing colorful outfits in a room like this? That can’t be the
case. Basic takeaway: when comparing, there should be filtration. Judges do
this when they’re decisionmakers, but they worry it will confuse the jury so
they just give the designs to the jury without more and ask “would you think
the person who created X created Y?” We need to consider standards, customer
switching costs, slavish copying v. nonslavish.
Q: would better written claiming identifying what’s claimed
would help?
A: the claim is always the design as shown in the figure.
Q: but you never have to point to the novel part.
A: so reverse Egyptian
Goddess? Egyptian Goddess endorses filtering, but doesn’t require—it’s up to
the dct’s discretion to decide how to deal with prior art.
Q: the infringement standard—would the same person have made
these—sounds a lot like TM. Why not aesthetic functionality?
A: yes, it’s like TM infringement, but there’s no class of
goods. It’s a hybrid of substantial similarity and likely confusion.
Q: point out that Apple
is an outlier—just convinced jury that Samsung was a dirty, dirty copier.
Shouldn’t extrapolate—but then again it’s an early GUI case.
A: believes that if Samsung had applied for its own design
patent, it would’ve issued without an office action!
Mark McKenna and Katherine Strandburg, Progress and Competition
in Design
Commentator: Shubha Ghosh
Trying to explain works where function and aesthetics are
integrated. Trying to fit design patents
into copyright/TM scheme, where we know functional elements of design are excluded. Barton Beebe: in copyright, there is no good
theory of progress. Tends to be about
diversity: having something new is progress.
Apply those insights to design patent—but what are these works that
integrate aesthetics and function? Architecture—you have an
incentive/creativity process that works to integrate the two. Bathroom fixtures—might not fit copyright or
trademark, but someone has to figure out what bathroom fixtures should look
like, and they should assist the user while also being aesthetic. Existing law might not deal with bathroom
fixtures.
Paper shouldn’t assume that copyright/TM have it right in
terms of design. PGS doctrine in
copyright is not very helpful. Nothing
but ad hocery. Same with TM: Taco Cabana and Wal-Mart as a series of mistakes.
Subtext tends to be “why did we grant cert?”
Progress is just a question of institutional choice. Should we defer to the political
process/Congress or not?
Inclination: design patent was just a compromise. If you try
to explain some ideal system, why? If you’re trying to explain the law as it
is, then it’s just Congressional dealmaking.
McKenna: this isn’t an attempt to explain why we have design
patents, but rather a piece saying that if we have design patents, the only
coherent way to think about them is as follows.
Patent like rights for designs that integrate form and function: if you’re
going to have a system that looks like a patent system, an indispensable
component is a way to measure progress over time, even if not in any given
specific case. You can’t talk about progress in design the way you can talk
about progress in the speed of computers. So we need to be able to say that
integration of form and function can be measured; if it can’t be measured, then
the case for design patent is not good.
Strandburg: what makes a system a patent system, as opposed
to something else, you need obviousness/nonobviousness and an idea of
cumulative progress. Maybe the copyright system is doing a bad job; we’re not
saying it is, but we are saying that what patent systems do, with obviousness,
is to incentivize cumulative progress.
McKenna: this is why obviousness in design patent is
presently a mess—we don’t have any idea what it would mean to be an improvement
in design. The idea of integration came from what we see over the cycle of
history—worry that people are using design patents as a backdoor to utility protection,
and repeated attempts to solve that by creating invention/functionality
doctrines that all fail because they require courts to separate form and
function and that doesn’t work. All
design integrates form and function, some more obviously and some better than
others; that’s why courts can’t deal with functionality, because it requires
them to separate the inseparable.
One thing that makes it hard to get the rules right is that
we don’t know what kinds of design we want to produce. If you don’t have a way
to measure the costs, competitively, of the system you run into trouble. Progress is a proxy for costs and benefits.
It’s hard to imagine telling the court how to balance costs and benefits
without knowing what we want to incentivize.
Strandburg: we believe that designers do care about
integration, creating a space where it’s possible to have incentives.
Wendy Gordon: what if the person contesting the patent
proves there’s a functional advance?
Shouldn’t that exclude design patentability? But you assume we know what progress means
for utility patents—if that were so, we’d know what should be in design and
what should be in utility. But courts say they don’t know what will be valuable
in the future—extreme agnosticism in utility.
Strandburg: there’s a distinction between the goal of the
patent system and the implementation of nonobviousness. The goal, from the Constitution and
elsewhere, is better technology. But we don’t always know what will be more
valuable/better. So what we’ve tried to do, not totally successfully, is
require something that takes a step of a certain size, a step that competition
alone wouldn’t spur. The doctrine doesn’t ask “is this better,” but rather by
giving patents only on things that take a big enough step, we’ll eventually end
up with better. Whereas we don’t seek “better”
with copyright.
Gordon: disagrees.
There are good and bad shower designs.
Strandburg: but that’s functionality. Courts don’t want to say that there are good
and bad plays. (RT: or rather, they want
to ostentatiously announce their aesthetic judgments and then assure us that
those judgments don’t affect their rulings.)
Barton: paper seems to assume that integrating form and
function is aesthetic progress. What if that’s not true? One could say that
this version of aesthetic advance is very historically situated. Compare Art
Nouveau: one could say that such designs were much better than Apple’s
minimalism. Less isn’t more; less is
less—nothing to do with function. So he wants to push back on this definition
of progress.
McKenna: we don’t assume integration is a form of aesthetic
progress. But it’s possible that one could measure progress through
integration, and that might be a goal that isn’t fulfilled well by copyright/TM
etc. and therefore represents an appropriate role for design patents if this can
be measured. If the only thing you can get out of design patents is new
aesthetics, then let copyright take care of it.
Ghosh: every field might have its own definition of
progress.
McKenna: where we are is that he doesn’t trust courts to
filter out functionality. His view: avoid that by asking a different question.
Strandburg: in the market, there’s no distinction between Traffix and aesthetic functionality. So
you have to think about what you want dynamically, since static analysis won’t
help you at all.
Risch: how do you deal with the statute’s explicit embrace
of surface ornamentation?
McKenna: that’s written into the patent statute because
copyright doesn’t cover it at the time, but that doesn’t belong to his
conception of what design patent could coherently be for—it should be moved.
The paper is theoretical and doesn’t attempt to justify the current statute.
Strandburg is agnostic about moving to more copyright for
design; McKenna worries about copyright’s duration, but we still need to figure
out what kinds of investments count for what it is we’re trying to incentivize
to figure out whether any system makes sense.
Strandburg: that’s also a question about what copyright is
doing. Design probably is not different
from everything else within copyright’s subject matter. Maybe overall the
copyright system is borked and we’re focusing on design because we have the
opportunity to do so.
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