Notre Dame Scope Roundtable, part 2

Jeanne Fromer & Mark McKenna, Claiming Design

Commentators: Sarah Burstein and Rebecca Tushnet

RT: Great paper exploring the ways that different claiming regimes contribute to producers’ ability to maximize rights by claiming under multiple overlapping regimes, copyright, design patent, and trade dress. Discuss specific regimes, then overarching issues.

One key argument of the paper: Early claiming might force a designer to think more carefully, and at an earlier stage, about the ways it is likely to market the design and about extent and nature of competition their designs will face. Query whether this is only true when there is peripheral claiming, or where scope is limited very strictly to the claimed design/counterfeits thereof—early claiming by exemplar may allow for a lot of manipulation too. One example: Maker’s Mark case v. Jose Cuervo, where the registered mark is the dripping wax seal but it turns out that red is a component of the “real” mark, which quite clearly allows Maker’s Mark a better chance at validity.

The TM registration process is also more demanding in terms of limits on presentation: the PTO will refuse to register a “mutilated” mark or a phantom mark; the thing claimed must be recognizable and complete as a symbol in itself without other matter interposed or to be added later. This serves notice functions but may also make possible some intervention on scope. Should the description offered in an unregistered trade dress have to meet the same standards for clarity as the registration process? Paper says courts don’t have a uniform level of generality; is there any way to specify the appropriate level of generality w/reference to PTO practice? Drawing of the mark?

Copyright: Lack of clarity about the claim complicated Varsity Brands: the ambiguity about whether Varsity claimed only two-dimensional drawings or the designs of uniforms themselves. Varsity registered its copyright in two-dimensional drawings of cheerleading uniforms, but the Sixth Circuit treated its claim against Star Athletica as if Varsity claimed rights in the design of threedimensional cheerleading uniforms. Did the SCt understand or destroy the difference? The car example in the opinion suggests that there is a difference, but the treatment of the “uniform” design suggests that there is not.

Originality and the concept of the “work” somewhat limit the extent to which one can manipulate the exemplar in copyright, as is likely to be taken up on remand in Varsity Brands. But we are increasingly seeing that design patent lacks similar constraints. Not only does it not have a decent functionality doctrine, but the ability to claim tiny parts of a design, accompanied by lots of dotted lines, may minimize the risks of not capturing what a competitor will do, especially if you can file multiple design patents on the same object—iPhone. One possible path for the paper: instead of election of remedies, but think about whether it’s possible to limit design patents per article of manufacture—even with many points of novelty, still only one design.

Another really useful insight: visual claiming likely focuses viewers on a design’s gestalt—though perhaps in skewed ways—rather than individual features, whereas verbal claiming likely does the opposite. And verbal claiming is often unavoidable once there is a serious challenge to validity using prior art or we’re at the infringement/scope stage—this seems to be true in design patent and copyright, and courts don’t even try to avoid verbal claiming in trade dress, using the ability to articulate the trade dress in words as a proxy for the examination that the claimant has otherwise avoided by not registering.

All three regimes entail forms of central claiming because these legal regimes involve laying claim to some members of the set of designs protected by the right as contrasted with peripheral claiming, which would lay claim to all members of that set. If litigation occurs, this central claiming by exemplar is then supplemented by claiming by characteristic. Central claiming reduces the cost of claim drafting, because the drafting party need not think through and articulate at the time of claiming the metes and bounds of the design. Central claiming by exemplar is also cheaper than claiming by characteristic, and may involve simply creating the relevant work or design.

Paper says: Visual claims are necessarily by exemplar (even if labeling directs the viewer to particular characteristics of the exemplar). But we can do better with notice by specifying the best way to do visual exemplar claiming, plus supplemental claiming by characteristic. So how do we do that? One subsidiary point made by the paper: The trick of “broken line” claiming can undercut the notice provided by the claims and make it hard to manage the scope of the design rights. Examiners, competitors, or judges might perceive the level of specificity in these drawings to be much greater than they actually are. Ok, so what is the possible solution? For design patent: Requiring a claim to cover an article of manufacture plus the claimant’s ability to identify point of novelty, even if the point of novelty is the overall combination? That actually is what we do w/©, where we have a work and then the unprotectable elements get filtered out, supposedly.  And w/TM, we use the concept of source identifier to do the heavy lifting—with respect to product design, the idea of “limping marks” might also be of use, cf. the European Kit Kat case: association isn’t enough.  New thought: in dilution we’ve specified that association isn’t enough, it must be association that impairs the distinctiveness in the mark.  So too for rights in limping marks in the first place: association with a particular producer is not enough, it must be association that consumers use to identify the goods and services they wish to buy or avoid.

Sarah Burstein: Agree re: mutilation/phantom marks: separate commercial impression required for just a part. That could be an external limiting constraint—where Ugg claims any boot w/ button infringes the trade dress, maybe you need separate commercial impression.

Not sure she buys rosy picture of early design claiming—plenty of shenanigans possible.  Paper says most designs are claimed before infringement begins. Not sure that’s true, especially for litigated design patents. Maybe true of what’s on register in archives, but filed or amended post-marketing—Nike files 100 different variants. More economical approach: file whole iPhone, then keep chain of continuations in the oven.  Nordock: continuation of utility patent filed 4 years after “infringer” came on market. Earlier disclosure is good, yes.

Trade dress: Taco Cabana’s continuing ability to say that “pink is a part of our trade dress” even though it wasn’t claimed in the last Taco Cabana case. That remains a problem even after the first definition occurs through litigation.

Configuration designs—seem less concerned w/surface ornamentation/packaging—would like more clarity on that. Now after Star Athletica maybe we are going to have more conflicts w/surface ornamentation.

Big picture Q: why should we care what you claim? Still get broader scope in TM no matter what b/c of infringement standard. We didn’t always care. In 19^th c.: you could claim article of manufacture configuration, surface ornamentation, both. PTO didn’t really care.  You got the whole thing.  Curious about how that might interact w/framing effects mentioned in the paper.  TM: separate commercial impression might be a limit.  Do you want some limit on “you get what you claim”?

Fromer: What’s the connection b/t claiming and scope? You could say it’s irrelevant, but it is about framing the case/setting things up.  This paper is teeing up the fact that this process is actually going on, b/c right now it’s relatively unreflective—courts often accept the descriptions they get uncritically.  That has many effects.  There should be internalization w/in business of claiming too broadly or too narrowly; utility patents has that in spades. But utility patent is peripheral claiming; hard to do in central claiming b/c you can make inconsistent claims in central claiming—emphasize different features at different times, different levels of generality. Make them internalize costs of claiming broadly sometimes and narrowly other times. 

McKenna: Other thing difficult in TM: rights are dynamic; trade dress you have today can change tomorrow, whereas utility patent is supposed to be locked down, at least in theory. 

Lemley: struggle w/peripheral/central divide, b/c advantages and disadvantages for each. Utility patents: verbal claiming sucks. However manipulable the image is, lawyers are better at manipulating words but also creating weird unintended effects in both directions, broader and narrower scope.  One question is whether we ought to think differently about it depending on whether copying is an element of the regime in question.  Disclaimers can also be used: use of words to supplement images might not be “here’s what’s important” but “here’s what standing alone I don’t claim”—that allows a prior art analysis.  Closest prior art idea in design patent—here’s what needs to be distinguished.

Penalizing overclaiming: in the noncompete context, some courts have a no-blue-pencil rule: if it’s overbroad, we strike the whole thing—this deters overclaiming.  Is there a way to do that in design patent that shares the utility patent’s feature that if it covers the prior art it’s invalidated in its entirety?

Buccafusco: There’s a validity/creativity stage: do you have something capable of granting rights at all?  That has costs of overbreadth. There’s also a functionality screen.  There’s also a liability/scope claim. Copyright smashes them all together at the same time w/overlapping doctrines. Over regimes spread them out.  Think about costs of overclaiming at different stages? Costs w/r/t validity might not be that high if validity doesn’t create a lot of market power.

McKenna: deep down no one form is adequate.  Verbal claiming doesn’t work.  Show students verbal description of Taco Cabana, and they think it’s every Mexican restaurant ever; show them the pictures and they think, oh, it’s nearly the same.  Inescapable conclusion is that the best requires some combination of visual and verbal. Shouldn’t pretend as design patent does that you’re only doing visual, not verbal; shouldn’t do what trade dress law does, which is require verbal but often take whatever plaintiff shows up with.

Samuelson: Independent invention isn’t as much of a concern on the design patent side. What is the motivation for design patent? The possibility of getting total profits!  Perry Saidman: claims that design patents are just about stopping knockoffs. How does that fit in?  A bit more about strategic considerations that affect early/late claiming.

McKenna: very few companies create product configurations to indicate source; they figure it out later; many registered long after first use (he believes).  Lawyers dabbling in both—love design patent b/c they can get secondary meaning from design patent exclusivity—bootstrap into secondary meaning. Other strategic reason: the ability to get patents on bits and pieces, which you can’t do effectively w/TM because atomizing “mark” into bits makes source identification difficult.  Also faster than acquiring secondary meaning.

Zahr Said: there is self-claiming that’s posturing but ends up being performative via overenforcement—e.g., DMCA notices. You claim something and then you claim to own every part of it, even though the law is not that way.  Loves the idea of disclaiming.

Lemley: award extra remedies for better claiming? 

Fromer: hold people to their intentions.

Said: somewhere between claiming and estoppel.

McKenna: if I say my design is X but then claim infringement by X-1, it’s not a difference in harm, but in what triggers the harm. 

Lemley: you get a substantial benefit from claiming ex post. Markman hearing is good b/c makes you decide scope when both validity and infringement are on line at the same time.  As long as we’re doing scope before infringement we’re better off than we are today.

Fromer: might not help w/all notice but would help in specific inquiry.

Burstein: might also get a design patent b/c there’s no use requirement: can stop making handbag and still claim rights.  Copying: is design patent really about deterring knockoffs? If so, that’s a very different system than we actually have.  We’d have to change the way we proved copying. Industrial design has been about mass production, which presumes access; we’re just cutting to the chase by fighting about similarity. But we do have copying-like doctrines; if there’s really close prior art, you might not have been copying the plaintiff. She sees in complaints designs that look independently created, in part b/c they’re super functional.  If it’s truly ornamental, one can expect less independent creation, but if anything goes there’s a lot of independent creation.

McKenna: real ornamentality requirement could also solve this problem.

Lemley: many of the problems are functional but not all, especially for minimalist design like rounded corners on a phone.  Not b/c it’s functional but b/c it’s simple.

Burstein: designers wouldn’t want to work in a clean room—the whole point is to find new solutions; looking at what other designers have done is important.  [There is no clean room, as there is not w/©.]

Said: courts too often find that “making choices” = protection.  No, choices for many reasons should not be protected. 

Grynberg: Fed. Cir. dominance is a problem: they control design patents but design patents aren’t their focus.

Fromer: same with PTO.  At least there are unregistered TMs so that TMs aren’t the sole province of an agency for which they are not primary as a focus.

McKenna: Fed. Cir. doesn’t like to invalidate design patents—it’s also the outlier in TM functionality; it’s an outlier in how it treats © (Oracle v. Google).