WIPIP, part 4

Mark McKenna & Jessica Silbey, Investigating Design: An Empirical Study of Industrial Design and IP Protection

Interviews & institutional analysis. Hypothesis generating—anti-copying/copying practices, etc.

Buccafusco: consider who’s in the sample—don’t limit to self-identified designers. Following career trajectories of design school grads is one path but also consider other people who ended up doing design, like UX design for websites.

Q: if you start w/ academic grads you may get rhetoric that doesn’t match reality.

Silbey: a risk w/snowball studies; you have to ask carefully for people who see things differently.

Q: interviews will difffer over whether you’re trying to understand how design patents work in daily life v. what should be the system—studies of successful design innovations?

McKenna: we want to know how people do design; incidentally, we want to know how they’re thinking about law and how the legal system works for them; we want to know about TM, ©, design patent but as a feature of their work.

Lunney: studying what’s not there is hard—is there an absence of market support for something that IP could help with?

Dogan: compare here w/Europe—is the thought process of designers different w/an assumption of robust protection?  Also interesting to interview the designers who copy—an entire industry in fashion & other design industries.

Silbey: The difficulty is how to disentangle what people think they’re supposed to say about homage, about distinguishing themselves, from the rules we know they play by. It’s cultural as well as legal.

McKenna: industrial design is all copying: they start w/a design that exists in the world and try to tweak it. May get different kinds of thinking about that question v. clothing.  [Doesn’t clothing exist in the world?  A functionality issue, perhaps.]

Sarah Burstein, The “Design” in Design Patents

Radical but unrecognized shift in the types of design we think are patentable. Most designers think design is methodology, process, not a thing, so it’s not surprising to see change.  Two least favorite CCPA decisions by Judge Rich—history undermines assumptions of practitioners.  19^th C. patent office rabbit hole: what did “article of manufacture” mean in 1877?  It took a lot.  Projects: Article of manufacture piece is coming out soon; current talk; then partial designs.

Courts have read “new” & “original” out; subject matter: “ornamental,” “design,” “for an article of manufacture.”  For 19^th c., there was a big list, changed in 1902 to current language. No matter how the language changed, courts interpreted it the same: two classes of designs, shape and ornamentation. Shape is the outward form or contour.  Ornamentation is the surface illustrations/delineations things printed or pressed into surface; cut glass contours for bottle.  You could claim one or both.  It was the whole article.  Ex parte Pope: tried to claim entire configuration of seat riser as well as a portion thereof; PTO said you couldn’t do that; it had to be the configuration. This persisted after the 1902 Act.

Today: PTO says it’s any visual characteristics applied to an article, which is a lot broader.  Use the same language of configuration or shape & ornamentation.  But now we see people claiming fragments of shape or fragments of ornamentation.  What happened?  They say surface ornamentation but they’ve expanded it to “surface treatment”—that opens up a potentially broad range, including computer icons; contrasting color or materials; anything else on the surface—golf club face scoreline pattern—that’s certainly not ornamentation.

What happened?  Judge Rich.  In re Hruby, 1967.  1952 Act was pretty clearly not trying to change stuff for design patents. But when Rich gets this case for the patterns of water shot out of a fountain—not the machinery, but the water sprays—the PTO says nope, that’s not a design for an article of manufacture and the PTO reverses.  Article means anything made by man, and the sprays of water are made by man.  Technically about different subject matter requirement but important b/c Rich equates configuration with 3-D design and then says the water is ok.  The court showed no understanding or care for the historical meaning of either article of manufacture or design.  They could have said Congress meant to change it, but they didn’t it.

In re Zahn, 1980, drill shank case. The design was the shank portion; the PTO refused b/c said the entire configuration was the design, not just the shank.  The court said that was cool b/c the statute didn’t require an entire article.  This is a watershed—you can be creative in design patent application. This is where shenanigans start in earnest.  Possibly not aware of relevant history and precedent. More likely: larger emphasis on periperhal claiming, allowing applicant autonomy in defining the scope of the claim—the design is what I say it is.

So what? (1) Important for reading old cases. Don’t assume that the contemporary rules applied, even if the language is the same.  (2) Current interpretation: are we stuck in a Zahn world?  No, can note its shaky historical foundation, lack of inevitability of reading the language in this way.  Implications for (1) partial designs, US and int’l; (2) GUI design patents—since this is the basis for approving such patents; (3) debates over special remedy of full disgorgement. If we’re reading old cases wrong, may be reading them wrong as to this too.

McKenna: does Apple/Samsung lock us in b/c the Ct has said that the article of manufacture can be a component—makes it no longer sensible to talk about partial design if whatever is claimed is the design.

A: not sure that’s what the Ct did. In theory, we could acknowledge that some components are articles, but we could make you claim the whole component—the screen, not some corner of the screen.

McKenna: but now can’t I say the article of manufacture is this corner?

A: in the 19^th c. they would have said now.

McKenna: Apple/Samsung is a second-best solution; maybe it was never necessary in the first place if we shouldn’t have been granting these patents in the first place—a rearguard attempt to fix problems from Zahn.

A: still interested in distinguishing article of manufacture from design.

Lunney: always important to know how we got where we are.  Also important to know it was Judge Rich—ex parte, w/just a gov’t lawyer and an applicant—shows how these things can go wrong/off the rails. You may not be able to rewrite, but can tweak way appeals from PTO are heard.

RT: interesting to put in context of legal thought of the time: pre-Realist; they thought there were platonic ideals of everything, not just a design.  Formalism—we don’t have to abandon that if it’s encoded in the statute.  [Now I’m thinking about tax doctrine: there’s evasion and avoidance; we recognize that laws create structures that one must take into account, and some things are within the statute and others without—especially if a distinction is made by the legislature, it is acceptable to say that some line must be drawn and that the legislature could rationally put it in one place even if facts on the ground are something of a continuum, like a speed limit.]

Stacey Dogan, The Role of Design Choice in Intellectual Property and Antitrust Law

Issue in both contexts: should law influence the design of technology/innovation?  Answers differ depend on political/ideological predispositions in IP and antitrust.  People who are strong advocates of IP rights are often antitrust skeptics and vice versa.  Grokster, Aimster, Betamax; Allied Orthopedics, Microsoft—common factor was courts being asked to look at the design choices made by defendants and unpack them to figure out whether their choice of design should be impugned b/c it helped enable infringement or exclude competitors/shore up a monopoly.  The design itself wasn’t independently unlawful, but allegedly unlawful for role in achieving some unlawful end.

Courts’ starting principle is non-interference.  Or so they say.  Generally leave it up to the market to bless design.  Non-interference in ©/TM: substantial noninfringing uses make a product ok; parties need not design staple products to avoid or minimize infringement; not a cost-benefit analysis.  Parallel in antitrust: even monopolists don’t have to design products to make life easier for competitors.

And yet: Grokster, court looks at design as one of the factors taken into account in determining whether there’d been inducement.  Both technological design and business goals in designing the system as it did.  In some antitrust cases, Microsoft and Bard, courts look behind the product to figure out what motivated particular aspects of the design choices.  Bard biopsy guns: a redesign of the gun was made w/primary intent of making the gun incompatible w/others’ needles. Microsoft browser bundling, making it very hard for people to remove it and substitute Netscape.

Are there common themes or differences across IP/antitrust?  Common reasons for non-interference: error costs (impossibility/incommensurability of weighing value of innovation v. other interests—risks of Type I/false positive errors); supervision costs (oversight of design—court reluctant to be regulatory agency); chilling effect & interference w/legit trade.

One reading of Grokster focuses on intent: to root out ventures that wouldn’t exist but for infringement.  It’s not actually the acts of inducement that matter; they are only evidence of intent to induce.  Focus on whether intervention would interfere w/commerce unrelated to infringement.  Theory: unlikely to interfere w/future development of tech done by people w/better motives.  Similar thread can be found in antitrust cases.  Courts’ starting rule is not to second-guess design choices. Attempts to identify dimensions of products that have no purpose but to exclude.  Things that made no economic sense except when exclusionary effects are taken into account. 

Posner is willing to interfere w/design choices in Aimster, whereas he’s hands-off in antitrust; Michael Carrier is very strong non-interventionist in IP context, but believes in heavier hand in antitrust context. This reflects normative views of underlying area of law.

McKenna: we have an entire area of torts based on products liability—law is perfectly willing to second guess design when there are good reasons. Why in IP but generally not elsewhere?  Antitrust, market power tripwire—might be more reason to intervene v. IP which applies to every actor in the industry.

RT: Ann Bartow’s point: TM/false advertising flip is the same, where people who like strong TM like limited false advertising liability and vice versa (it me).  Nature of the people you’re harming; ability to protect themselves via knowledge or competition?  So with antitrust we might say competitors can protect themselves via the market more easily than consumers w/product design.  Likewise, the IP cases in which these principles come up are not standard individual infringement cases; they are cases in which it is clear that it is industry v. industry, whether or not they’re contributory infringement cases; it’s clear that big market actors with big structural effects are in play.

Lunney: property v. markets—Posner & Carrier would both say they’re consistent.  Do they just weight the values differently? 

A: sure, but interesting to unpack that to figure out what’s underneath.

Aaron Perzanowski [& Dave Fagundes], Juggalos Without Juggalaws: The Norm-Based Governance of Clowns

Following up on Dave Fagundes’ work on roller derby; also Perzanowski’s work on tattoos, w/premium placed on unique designs viewed as deeply personal in part b/c they’re connected to the human body.

Clown eggs: carefully painted, disturbingly accurate portraits of clowns painted on chicken eggs, including wool hair and portions of costumes.  Astounding and maybe disturbing. Seems to have originated in UK, now known as Clowns Int’l.  Also, disputes about similarity on online forums (these are awesome).  What norms spring up: was the registry a response to norms; did it create norms?  How does the registry screen or resolve claims?  Does it play a role in norm enforcement?  Why has the UK registry persisted and the US registry has not?

Q: what’s the standard of similarity? To the untrained eye, there is not infinite possibility here.  So how does that relate to similarity measures elsewhere?

A: good question. There are conventions; 4-5 types of clowns recognized as genres, so there are constraints on how much you can do and still be recognized as a clown. We’ll get some of that from interviews.

Sheff: seems more like dilution than confusion—it makes my entry in this space indistinct b/c similarities are so close but not exact.  Dilution of a non-strong identity; as opposed to dilution for famous marks—might provide insight on what dilution gets wrong.