Notre Dame Scope Roundtable, part 4

Chris Buccafusco & Mark Lemley, Screening Functionality

Commentators: Abraham Drassinower and Jim Gibson

Gibson: regime shopping is even more troublesome than scope problems in one regime. Design patents seem to exist purely for regime shopping; everyone wants a patent right w/o having to go to the PTO.

Didn’t find the notion of a percentage continuum of functionality all that helpful b/c the limiting doctrines/screens discussed very infrequently depend on the percentage of functionality in a given work—maybe merger does. They tend to boil down to some kind of separability (e.g., Altai’s nugget).  Not tonnage but ease of extracting one from the other, except for design patent which has jettisoned any requirement. Some are more bright line than others; Google v. Oracle says all consideration of what’s separable is shunted into fair use which is at least chronologically clear.  The filter being used is often a function of the kind of work the author creates: software, product configuration, PGS work. But it’s also a function of where the court sets the boundaries of the work; that performs a separability/filtering function itself—are we starting w/ something purely aesthetic or functional?  Maybe the X axis should represent separability where Y axis represents functionality—they’re related but distinguishable.

Originality as a more important screen after Star Athletic: Breyer suggests that the majority’s test would still produce a defendant-favorable result after originality is applied.  Also merger: one concept of merger is functional constraint on choices. You conceive of merger as something that kicks in at the low end of the aesthetic scale, but maybe it’s the zero/vanishing point on the scale. Originality would also fit in there.

Material that gets filtered out, but comes back in in compilation analysis—look and feel analysis gets sloppy, though there are some real compilations w/new aesthetics when put together.  A lot of screens aren’t just functionality screens, such as idea/expression, which also mediates between past, present, and future authorship.  Even Altai isn’t entirely about functionality—also about originality, public domain. Left w/question: if you’re evaluating screens in pros & cons for functionality, do we lose anything b/c of pros and cons for the other work that these screens do that we should be considering?

Drassinower: differences b/t exclusion and filtering: what’s out altogether, and what’s out even though it originally got in (like a border crossing and you have visa for a particular purpose). They both preserve free competition.  Exclusion as a heightened originality requirement—not copied, and subjecting to filtering ought not be too costly; if it is too costly, we have a heightened originality requirement.  But do you mean to say that originality is formally an independent principle, and if so what’s the relation with functionality?  Other tension worth developing: functionality as market efficiencies.  Administrative efficiency is separate: the likelihood that judges/etc. will make wrong decisions. Elaborate market logic’s relationship to administrative logic that presides over the functionality/protectability determination.

Lemley: A one-D line wouldn’t allow you to draw the distinction we want, which also goes to scope of protection.  X axis is percentage of functionality, Y is scope of protection; in a perfect world we’d have a 45 degree angle, with only the nonfunctional stuff protected. What constrains that? Administrative costs, difficulty of filtering. What do we do given those costs to get the second-best outcome?

Separability, not in the Star Athletica sense, can help us with the easy stuff to figure out the size of the “work.” Copyright does screen on percentages—in certain contexts the game is not worth the candle.  Food, yoga poses.  Leave it out entirely, or leave it out unless it passes a threshold.  Depends on assumptions about how much will be expressive v. how much functional.

Exclusion = what’s out entirely; filtering tells you what you get once you’re in.  It’s rules (exclusion) v. standards (filtering).  [Does that make sense when exclusion is often itself done case by case?]  The reason we have functionality doctrines is channeling in the service of market efficiency, but implementation of functionality screens is not driven by market efficiency; it’s driven by concerns about administrative efficiency.

Buccafusco: we try to avoid defining functionality at all. We are also concerned w/incentives: we don’t seem to be experiencing a shortage of recipe-related creativity, or dam-related creativity, or polka-related creativity—interaction b/t incentive costs and administrative costs helps explain the screen.  [Also error costs, as Lemley points out—even if we didn’t think there was much need for incentives, we wouldn’t be so worried if we thought this would be done in an error-free way; individual errors are costly as McKenna points out.]

Fromer: you’re conflating exclusion and filtering based on actual examples—you tend to talk about exclusions as categorical b/c that’s how we see them, but they don’t necessarily have to be that way. Separate factor affects that: if it’s case by case that affects costs.  Another factor not disaggregated is timing.  Administrative costs: you assumed that filtering would be later than exclusion.  So what costs are just about one or the other?

There is a functionality screen in utility patent: utility. Is there any symmetry going on? Thinking through that might illuminate other areas.

Burstein: Design patents is the most disconnected from the others. But is there really no filtering in design patent? We do it in infringement/claim construction—not in principled or clear way, but even though it’s not done in validity, you get particular appearance and not general concept.  What would a threshold look like?  Would it be enough to disclaim the functional part by putting it in dotted lines?

McKenna: No recipes is one kind of categorical rule.  Traffix is another kind of categorical exclusion, but it’s a determination based on substantive definition of functionality rather than ontological status as recipe. © has a mixture of both. TM law is almost uniformly not ontological.  One way TM tries to mitigate costs: Wal-Mart shifts the curve over, making it have to meet other thresholds for secondary meaning so we don’t have to get to the difficult functionality issues. So think about sequencing w/r/t other doctrines. Is it better to do originality first, or is it so permissive that we are using functionality to avoid hard cases?  [RT but practically, don’t courts and the PTO tend to do both functionality and no secondary meaning, belt and suspenders?]  Court sometimes can’t figure out secondary meaning so does functionality; Louboutin is the opposite, where they do secondary meaning b/c they can’t figure out functionality [and then they neglect infringement analysis; Louboutin is a weird one b/c it finds secondary meaning and then announces there’s no infringement]; no rule of law tells them which to do first.

Lemley: exclusions are the easiest to do before trial so we go there first. Filtration tends to require a jury. As a practicing lawyer/administrative cost sensitive person, instinctively on board with avoiding hard questions when easy questions can resolve the cases.  Gives him some pause is whether doing that case in and case out ends up having selection effects that bias the substantive law.  If all the strong functionality cases are also cases in which there aren’t secondary meaning, we might therefore get a functionality doctrine made up of cases in which functionality argument is pretty weak.  Sequencing as error cost reduction in particular cases might have systemic effects on doctrines/case law.

McKenna: just exclude product configuration altogether, that will solve the problem.

Lemley: one way to insulate decision from reversal is to make a bunch of aligned findings: functionality and no secondary meaning, or secondary meaning and nonfunctionality. That tendency is less in courts of appeals than PTO and district courts.

Beebe: There’s no third category—neither aesthetic nor functional—proposed in the paper. This seems suspicious.  Where do you classify political or religious speech?  Nonfunctional, but therefore aesthetic?  For you, the secondary category is the aesthetic and your real focus is functional and nonfunctional, and you could dispense with any reference to the aesthetic.

Lemley: by aesthetic we might mean “something legitimately subject to an IP regime that isn’t patent.”

Said: if you’re trying to screen, you don’t care where it goes after bouncing off.  If you’re trying to channel, you do care where it goes.

Gibson: but you are trying to avoid people getting back-door patents. So you do care about the double-dipping problem.

Said: but your mechanism to deal with that problem is screening.

Lemley: we aren’t into deciding whether the monkey selfie is copyrightable.  It makes it through the screen as nonfunctional, but we don’t care whether it gets ©.

McKenna: the fact that you have to be clear that it’s not necessary for it to be patentable for it to be screened out by being the kind of thing that could only be covered by patent—Bonito Boats—should affect the design of the screen.

Said: Litman said, 30 years ago © descriptions represented its protection as porous; now many don’t, don’t talk about thin/thick protection.  Worried that this paper may be doing that at the level of the work.  Could a screen ask the question: is this work predominantly composed of protected elements or not?  Not a fan of the more discerning ordinary observer test for works comprised of public domain elements, b/c that’s true of all works, but some lawyers in some jurisdictions have used a filter to think about it that way. Some works you can see at a distance as predominantly composed of copyrightable/uncopyrightable things.

Lemley: even short of exclusion, you’re talking about the Wal-Mart approach from TM. Mostly not about expression (or branding) so create a new & higher threshold outside functionality.

Said: would rather see that than filtering. When you see filtering as a binary option, it’s almost always gotten wrong. Why give it such an important role?  If we have to go all the way to the facts, how is it different in any way from substantial similarity? [It is different in framing, as the Fromer/McKenna paper suggests.  It focuses attention on chunks which may limit the scope granted to the work/design etc.]

Gibson: still wants a definition of functional, especially if the other side is “not functional.”

Samuelson: Vessel Hull Design Protection Act was supposed to be an industrial design law and then it never happened; think about where that would fit in if it changed. If the paper has generality beyond American context: other countries have grappled w/relationship b/t ©, design law, and other forms of unfair competition; functionality plays a role there.  If design patent didn’t have “ornamental” in it, it’d be a straight up industrial design law.  VHDPA prohibits getting both design patent and VHDPA protection—it’s the one prohibition in the law; does raise the question of what the interactions would be like.

Lemley: he thinks VHDPA is really a new form of utility patent, like plant patent. Our view of functionality there should be different b/c the goal is not to prevent people from getting back door utility patents, but rather to give them a new form of utility patent w/fewer requirements.