IPSC Breakout Session III

Useful Articles 

Star Athletica: Stuck on the Merry-Ground  – Alfred C. Yen

We’re just going round and round. Those who can’t remember the past are condemned to repeat it; a page of history is worth a volume of logic. For a case the SCt took, the Ct was astonishingly indifferent to precedents. Only 4 cited © cases: Mazer v. Stein; Chosun (2d Cir. 2005) (article need not remain functional once artistic elements removed); Brandir dissent (statute controls, not intent); Bleistein.  All we have to do is look at the object and see if it’s capable of existing separately from the underlying function.  Doomed to failure b/c very project of identifying a hypothetical aesthetic object is riven w/strongly inconsistent perspectives. You can’t escape moving among perspectives in trying to identify artistic object.  Formalism (form of object itself), intentionalism, institutionalism (audience reaction). Doesn’t think we can ever rid ourselves of these contradictions in ordinary practice, and maybe we don’t want to—each can bolster one of the others.

Court rejects audience and intent as not being based in the statute; all they want to do is go back to formalism.  Star Athletica then puts us back where we started, in Mazer v. Stein.  Prediction: we will go around merry-go-round again.  Wy won’t it work? Even the very effort of trying to identify whether something is a useful article is fraught w/difficulty. Airplane wing or sculpture?  Shovel or sculpture?  Wall or sculpture?  Might want to know more about why it was made and how it is used.

RT: the other part of 102 might provide some protection: control over artistic design doesn’t give any control over making the thing depicted.  If form & function are unified, then anyone can sell that shovel in Home Depot regardless of whether the shovel-sculpture is ©able.  Now, that might just shift the intentionalism/institutionalism Q to the defense side, but it might also take care of many of the situations where we think there are competitive issues distinct from what we think of as the “real” point of ©.

A: it’s hard to talk about protectability of useful articles w/o also talking about thickness of ©.

Chris Buccafusco: the opinion lacks formalist analysis.  Can we spot pictorial features/a work of art?  Yes.  Opinion never describes them or engages w/what you might think formalism would entail, such as identifying or describing the pictorial/graphic elements.  A formalism that never specifies form, unlike Mazer & Carol Barnhart at least tried.

A: Court realized that trying to deliver an analysis would make it even more clear that there is nothing more there.  Thomas ducks: it’s the only way to avoid being criticized for subjectivity.

McKenna: some of these problems are Congress’ fault.  There is a definition of useful article, putting thumb on scale of calling it a useful article, but the courts have never taken that seriously. Also, Congress asked for an impossible task. Really Congress wanted to separate © from design patent, not © from utility patent, and that’s really difficult.  Look at the examples Congress used, and they’re all highly analogous to physical separability. Ignoring that caused Court problems.  You can’t really distinguish applied art from industrial design.

A: Temporal equity problem: if it was sculpture first, conversion to useful article later shouldn’t matter. If that’s the case, the reasoning goes, then it shouldn’t matter in the other direction.  That’s what gets you stuck.

Q: So we should just reject the temporal equity point.  If you use 102(b) to let defendants sell things as useful articles but not as sculpture, then you get lots of administrative costs.

Responding to Star Athletica v. Varsity Brands – Lili Levi

Issues: Practical impact of indeterminacy; Court’s approach to art; whether other limiting doctrines will work and how well; use of © for branding/anticompetitive non-© strategies.

Conflicting views on how bad Star Athletica is; the attempt to adopt a deceptively simple, uncertain unitary test creates an incentive for opportunistic litigation which is likely to expand boundaries—already happening, Puma’s action against Forever 21 over Rihanna’s footware, which is plastic slides w/bows and fake fur on them. These aren’t Schiaparelli’s dresses. Court doesn’t talk about affect on fashion industry and whether it would be good or bad to kill fast fashion.

There can be different interpretations of function—you don’t need to use the same definition of function to determine separability that you use to determine whether something is a useful article.  Possible functions: Mechanical, marketing (enhancing saleable value), branding. What about making people look thinner? Use in an interactive way w/audience’s perceptual responses, knowingly crafted to achieve resonance—does that make them expressive?

Star Athletica said it wasn’t ruling on originality, but she isn’t very hopeful, given that in the case itself there was disagreement b/t dissent and concurrence on elasticity of originality. Could make arguments about role of originality being different w/useful articles, but don’t know.  Maybe we should also look at scene a faire—whether there’s enough common understanding already; that’s mushy doctrine too. Granular, case by case analysis will be required.

Pam Samuelson: there’s no question that functionality was key part of what Congress was trying to do; ignoring that is a huge problem w/the decision. If we care about the implications, working on what function means is a task that we can bring to this.  Even though the definition of useful article states that conveying information is never functional, she found dozens of cases finding compilations functional and uncopyrightable.

Intellectual Property’s Usefulness Problem, or Functionality as Fair Use – James Y. Stern

Even if we rested on any one of those 3 visions Yen talked about, we’d still have problems of incoherence b/c we have ontological problems.  Humvee designed to survive bomb blasts, deployed as suburban vehicle—is it functional in a subdivision? 

Externalist controls—preserving space for patent law.  Internalist—limits based on our view of what © is. Ontological v. pragmatic: the essential Q is whether TM/© protection would restrict access to a useful technology. Could defendant make a product that works as well without using material claimed by right holder?  Focus should be on alleged infringer, not right-holder. Doctrine should treat functionality as a defense, not an invalidity basis.  Not taking any position on where burdens of proof should be allocated, but it should be case-specific in terms of what the D is up to, rather than the nature of what the P has produced.  Traffix: currently upside down—focused on whether the spring is the reason the TM owner’s device works. In a lot of places in TM, that’s not always important, where we deal w/side by side competitors in the same market—functional for P and functional for D will overlap. If both make luggage w/shiny lining that causes confusion; in one case it’s purely decorative while the other has thermal insulation.  If the former is the senior user and sues, its feature isn’t functional for its use—and it seems like it should win!  [I doubt any court would so find, though.  Descriptive fair use would be a doctrinal hook if you can’t stretch functionality, though I have hopes that a court would recognize at least a category of defendant-side or product-category functionality.]  If the latter is the senior user and sues, it loses.  [This version is almost literally the old aluminum washboard case, updated.  False advertising would still be available as a claim, if consumers understood the silver to communicate the fact of thermal insulation.  If they didn’t, then so what?]

Copyright hypo: imagine bike rack designer copied the original Brandir sculpture, rather than the resulting bike rack.  Result under useful article doctrine seems to be that there is infringement, which means restricted access to tech.  Duchamp’s urinal would be the counterexample.

Star Athletica was interpreting what was really an attempt to create an internal limit: protection for industrial design excluded, but not for applied art.  Can’t you imagine anything as art, though?   Functionality takes care of many worries b/c functional uses are immune from © claims, and context matters—useful article doctrine requires exclusion of fact of utility in considering the nature of creative elements.  USB connector in the shape of a faucet—can’t protect the fact that it’s a USB connector through ©.  [Could through design patent.]

Lemley: internalist justifications ultimately have to fall back on externalist—you need a theory of why © shouldn’t extend too far; he thinks that will ultimately be about why we want other doctrines. We ought to have a doctrine of D-focused functionality, but we need not get rid of P-focused functionality. Even where there isn’t a D-focused functionality, we don’t want to give © or TM protection for truly functional elements.  [Really? What about ipodmybaby.com, where they put the image of the [functional, by hypothesis] click wheel on a baby onesie, where it was nonfunctional.  Seems little reason to allow non-Apple parties to do that, though there may also be minimal reason to stop them.]

A: thinks that’s more true for © than for TM.

Q: if you’re thinking about integrating useful articles in 102(b), you have to think about internalist views—there’s a lot of exclusions that aren’t dependent on patent law—many of such exclusions exist b/c we think they shouldn’t be protected at all, by patent or otherwise.

Buccafusco: you don’t need anything about Star Athletica to get copyrightability for the USB shaped like a faucet—that’s Mazer v. Stein.

A: but what are the copyrightable aspects?  Combination w/practical device should be excluded from consideration.

James Grimmelmann: TM: descriptive fair use + deny protection to descriptive terms as marks, analogous to P-side and D-side functionality. Serves prophylactic purposes.  There are arguments that scenes a faire and merger are defenses that have been pulled back into protectability.  That USB faucet might not be protectable b/c there’s no originality.

A: even a pure mold copy?  Might/might not have minimal © necessary.  As for both kinds of functionality, that might be practical, but don’t confuse prophylactics for principle.  Looking for answers in the nature of what makes the characteristic functional in the first placer.

Trademarks & Consumer Perception Room 304

Should Trademark Law Protect Marketing? Deven Desai

Why not protect nontraditional TMs?  Countries are increasingly accepting registrations for them. 

Why not?  First, scope. How do you know what’s being claimed.  US is less precise than Europe, which requires specific Pantone.  How do different people see the color?

Second, exhaustion of available colors, shapes, etc. 

Leads to aesthetic functionality morass.  Significant nonTM function: what does that mean?  Marketing literature: Design is part of branding, which can be used to compete.  The whole point is to move beyond competitors’ ability to compete.  Design is a source of differentiation.  It’s not marginal to the product but core; design & marketing dep’ts work together. Designers are looking to tap into innate attitudes—features, shapes, forms, colors, materials, surfaces, textures, to build brand image. Aesthetics and ease of use are all developed together.

Notion of innate/essence capturing: communicating an aesthetic is done best by using symbols to tap into innate preferences—preferences for unity, proportion and symmetry, etc.  Bright colors; shoes (large to signify power; even if a hair dryer has a ton of power in smallness, consumers like it better when it’s big), angular forms for masculinity in cars, roundness (phone edges, car trunks).  Functional/ergonomic: largeness can indicate power, communicate quality by looking reliable or solid.  Does the number of buttons make consumers think a machine is easier to use? Consumers care about shape of button.

Attention drawing/categorization.  Varying size and color; contrasting colors can draw attention. Categorization: the way a consumer chooses products as fitting w/in product market can drive consumer choice.  You want prototypicality: look or appearance that makes most people think it belongs in the product space.

Look at Apple’s claims for trade dress—all those features seem functional under this view—icons arranged to be easy to see and use, contrasting colors b/t borders and screen, rounded shapes for phone & icons—all these things you’d be very wise to use if you wanted to compete.

Maybe we should have a ban, taking seriously that TM isn’t supposed to be incentivizing creativity. Consumers would learn that product design trade dress isn’t necessarily reliable indicator of source.  Reality, though: rules aren’t going away—so we need to manage it. Justin Hughes has proposed a way to handle design, which Desai doesn’t think will work.  Where aesthetic appeal preexists the product, he says, there should be functionality, but not otherwise. But: designs are hybrids. They draw on and perform a variety of functions at the same time—designers are explicitly tapping into innate and preexisting preferences or biases.  Also, there are not clear metrics on what should be granted. EU isn’t as clear as people want, though it’s clearer than we are.  Super-limited protection/scope might work, but there’s still the deep problem that the more we grant, the more overreach we get, worse than in word marks.  Still, it’s here to stay, so we need limiting efforts.

Q: curb cuts, designed for wheelchairs but used by many other people. Why the iPad became such an appealing piece of software/hardware for differently abled people—goes to a lot of the things you’re talking about.  That’s an example of the worst case scenario for protecting these features—you give monopoly on accessibility.

Gerhardt: role of registration in determining scope?  Frequently we seen trade dress defined against what the D is doing—ex post.  Ex ante applications to register are in a weird space; companies proceed differently than they do w/registering word marks.  They jump on word marks, but w/trade dress they sometimes try to pin it down to put everyone else on notice, or it doesn’t occur to them, or they don’t want to be pinned down so they wait.

A: Needs to know more about that.

McKenna: you could harden up the claiming rules to limit ex post problems.

Trademarks, Employees, and the Firm – Matthew T. Bodie

TM is about attribution, so has particular puzzles for employees/firm.  How can a firm claim that a product or service is protected by TM when the employees aren’t making the product/performing the service?  What about the firm can change and yet still be the same “source”?  Paradox of Theseus’ ship—every bit is replaced, and is it still the same ship?  [I would say, why are you asking?]  School of Law isn’t the building it’s in; it isn’t the people who are there now (all the originals have been replaced).  Is the school anything more than the TM, the right to say that it’s the School of Law? 

What about a labor-fissured firm, like Uber/independent contractors? How can we say their work is “Uber”? The magic of the brand is to encompass this, and the TM is the legal operationalization of enforcing the brand connection.  Work done by non-employees is still our TM.

TM has cheated and said that the business is the source—the fictional entity. Firms have been arbitraging and we shouldn’t let them get away w/it—disavowing for labor & employment law purposes, but claiming for brand & TM purposes.  TM law does say that you can lose a mark through giving up on quality control—control over quality establishes the mark.  Firms control through contracts, etc. w/outside entities.

Choices for fissured firms: maintain control over labor and become employer/joint employer (operate as a firm)—or if they want to outsource housekeeping and not control it, they should lose TM b/c they aren’t controlling quality any more.

Lunney: TM Act: authorizes TM owners to allow related cos. to use their marks, defining related as those TM owner has control over.  But people don’t know or care whether there are independently owned franchises or centrally controlled; you’d force central control and McDonald’s seems to be doing fine having both types of restaurants.

McKenna: 100 years ago, outsourcing would have been considered fraud. There was a very deliberate move in the common law and then in the statute to abandon that, to enable companies to create different kinds of commercial relationships. You might say TM law enabled the labor/employment situation you enabled, and the payoff is that the market structure isn’t independent of the rest of the law. If TM law were different, it would create a different labor/employment market. Another take: in a service economy, what does control mean? That might be a different paper.