Thursday, December 05, 2019

Design Law Scholars Roundtable part 2

Session 2: Legal Protection for Design

Introduction: Chris Sprigman: what kinds of protection should be available depends on what the justifications for protection are. Incentives: requires us to ask about motivations of designers, the companies that employ them. Design of jet engines may not work the same as design of soda cans—worse than in ©, even. What are the fixed costs of design? Are they the kinds of costs that require longer term exclusivity to provide? There are some where the fixed costs are very low—where form and function are intertwined, we might want a first to market advantage. Ease of copying also matters; it’s not always easy to copy a visual appearance. E.g., car bodies; design patent and trade dress are available on the margins, but mostly not. There is some copying—trunk hump on BMW—but it’s relatively rare to copy car bodies. It’s not technical difficulty but they’re difficult to copy from a marketing perspective. Brands develop a brand specific design vocabulary; copying interferes with that message.

Fashion: first mover + TM protection for brand name is arguably sufficient b/c of ephemerality of designs. Another justification for protection: source identification. But that works against an argument that we should protect design through incentives. Relatedly: is a design an adjunct to a good, or a secondary good? E.g., a design of a computer may help, but the computer is also separately functional. The expenses of design may be defrayed by differentiating through actual functionality. Another factor: competition. Need some normative judgment about how much differentiation through design is enough or too much. Design used to extend period of monopolistic competition instead of ordinary competition, which is at least ambiguous in overall social effects.

Desert/natural rights arguments: labor/personality theory. Labor/desert arguments are complicated in design b/c design doesn’t involve rival goods/deprivation of the original creator’s physical outputs. Turns back into a question of incentives. Personality theory is even more confusing for design. Why mark artists out for their production as opposed to plumbers or surgeons? Surgical scars can be well/elegantly done, but we don’t treat that as an artistic claim. As producers of knowledge we tend to be more sympathetic to producers of knowledge, but most donuts are better than most poems. He can see the claim that a book reflects a person’s personality, but a computer screen design doesn’t speak in the way that a person does. It doesn’t express Jony Ives’s personality other than to tell you that he likes modernist design, as many people do.

Authenticity and narrative: a S. German furniture co. called Vitra, which has registered and litigated over a lot of IP; people go to jail in Europe regularly for trafficking in midcentury modern American furniture, where there are limited/no (what he calls bullshit) US rights.  Two stories about what it is doing: the obvious, ominous story—Vitra is just limiting competition, and the EU IP system lacks adequate screens. Design patents ran out but it claims ©, to which European © is open. Spurious claim to stewardship of these designs to exclude others from competition. Less ominous story: Vitra is engaged in a very deliberate propaganda campaign: an attempt to convince. Of what?  They call designers authors. Eames was an author! And we are the heirs to these authors’ estates in Europe. And these authors created what they created in a specific cultural context; an Eames chair has a backstory and a story about its cultural significance over time, and the kinds of architecture, paintings, carpets, music, that are associated with these chairs. What does that narrative try to do? It tries to change the nature of the good from an object to a story w/historical significance. They raise the price, eliminate competition, cut people out, transfer consumer surplus to themselves—but they are also giving something to people who can afford the chair: a chair with more narrative and thus more market value. Those w/o the money can’t experience the narrative instilled in the object. Is that socially good or bad? We need to balance what’s given and taken away.

GIs are the same thing; terroir is empirically nonexistent, but it’s a story of creating meaning in people’s heads. True of drinking Coke; true of luxury goods? Some counterfeits are close copies that will confuse, and there’s a straightforward story about those, but some counterfeits are very distinguishable and the theory of confusion, even post-sale confusion causing harm, is very weak. What we’re worried about there is inauthenticity—weakening of the narrative. Related to Barton Beebe’s observations about the sumptuary code, but it’s not directly about class but about control over the message (though it may cash out as class).

Laura Heymann:—origin stories written by well known authors for store bought items; sold for $8000 when bought for $1.25 because of the stories associated with those specific iterations.

Mark Janis: Eligibility provisions: there’s a history of ex ante detailed legislative specification of product categories, and a second more abstract approach that uses the word “design” and throws in something about functional characteristics. Legislative categories approach: on the extreme edge, regimes specific to one particular product class, like Vessel Hull protection. Calico Printers act, and ribbon patterns, and lacework patterns—protection both sought and derided at the time. Vessel hull protection can be understood against background of © act and recent proposals for fashion design, which sought to provide a list—clothing, wallets, belts, eyeglass frames, but not shoes or backpacks. Clumsy way of conceiving design legally. First US design patent legislation: category-specific eligibility, some broad and some narrow: wool/silk/cotton fabric; bas relief or statute; and on.

Questions: These categories seem purely reactive to technological developments affecting ease of creating and copying designs, for example in the cast iron stove industry. Reactive to lobbying pressure from manufacturing interests. Started out planning to say that these lists are incoherent, but then there’s a certain kind of interpretive coherence traded off with other things—it’s perfectly coherent to track the categories that the British protected, as we did. Should we care about reactivity, or strive for a proactive legislative conception of what designs are in what regimes?

These are cumbersome—require response to shifts in tech, and require litigation over gaps in the list—are backpacks fashion design? Should we say we’d rather have ex ante thinking about these definitions and a legislative approach that limits discretion or leave it to common law?

Most modern regimes are more abstract: ornamental design for an article of manufacture, in the US; Community Design is a little less abstract but similar.  These regimes place substantial pressure on articulation of central characteristics—ornamentality, functionality, separability for ©. Burden falls on agencies and courts. Is there a false perception of coherence here? A risk of lost meaning? Design patent provision wasn’t written out of whole cloth, but derived from past practice including past categories. Thus, PMEP says design means configuration, ornamentation, or combinations thereof; would we get that definition w/o knowledge of past practices?

Initially thought maybe we shouldn’t try to define design at all, but compare utility patent law. It’s based on the concept of an invention, but not much work is done in defining “invention.” There are statutory definitions in the AIA/Patent Act but they’re recursive/very broad.  Defines the act of inventing in the service of rules of ownership, and that has relevance to design law. If design is concept than identity of designer is up for grabs. Similarly, priority of rights requires you to know when the design occurred. Finally, has mostly discussed eligibility, but eligibility considerations are intertwined with considerations of scope, and major fights in utility patent recently have been whether to do primary work in defining eligible subject matter or to do most of the screening work through doctrines of prior art and scope. Are we at the beginning of a similar debate in design patent in thinking about what constitutes a design/article of manufacture, which might be close to questions of nonobviousness in design/infringement.

Ansgar Ohly: EU design law is based on academics working at Max Planck. Child of its time: the mainstream in academia was to increase IP protection because there was a generation who grew up in a world with big gaps in IP protection. Very little discussion of justification, only gaps in present system/what designers need for adequacy, but not justification in the sense we’ve been talking about. Design approach: sui generis.  Design has a marketing function, not just an aesthetic function.  Reflects difficulty of locating design in IP system: beauty and functionality, © and patent, and also communication, TM. Why not just use those 3 systems? Supposedly to avoid overstretching those systems and unfair competition law. Low level of originality; many of these creations are obvious from utility patent standpoint, but making everyday things a little nicer or more functional is a different thing. And unfair competition law: if there was no design law, there’d be the urge to apply misappropriation.

Formal requirements: no substantive examination in EU law, and unregistered community design grants three years’ protection and only against copying. This was done for the fashion industry that didn’t want to wait for a registration. Two-tier system has a lot to be said for it: longer and stronger w/registration, shorter and weaker w/o. That might even be good for © if we didn’t have Berne.  

But it hasn’t kept its promise in practice. There isn’t as much litigation as one might expect for unregistered community design, probably b/c the alternatives are too attractive—© in France/Benelux, with life + 70. In Germany, Austria, Denmark, Poland, unfair competition is attractive. So one problem is that there is no election/exclusion rule. Question: is there a case for unregistered protection of design? Should these cases go to © or should we cabin it and make it shorter?

Substantive requirements: in Europe, partly similar to the US and partly different.  Has to be appearance; no standard of nonobviousness but rather individuality—a different overall appearance from the perspective of informed user. Not terribly demanding. Even small differences will be enough, as with Apple/Samsung: little bits of the iPad are registrable. But scope is correspondingly small; Apple lost against Samsung in EU b/c overall impression was so different that it got out of Apple’s narrow scope. You might criticize this. Recommended paper: We Wanted More Arne Jacobsen Chairs But All We Got Was Boxes - Experiences from the Protection of Designs in Scandinavia from 1970 Till the Directive, Focuses on Danish law but could be said of Europe—too much focus on packaging and little bits of, e.g., radiators. Functionality: “no design alternatives” used to be the test. Recent case, ECJ about functional design for welding, which said that the right approach is whether the technical considerations were the only considerations or whether aesthetic considerations also came into play, from an objective test—slightly broader. Should there be a functionality exclusion? Should we grant low level protection to functional shapes? That is the origin of the German regime—sub-utility patent protection for aesthetic models. What should a functionality exclusion look like so that form can follow function and still be protected by design law?

Spillovers from design to ©: key case in ECJ, Gstar against another clothes manufacturer. Are we allowed under harmonization to add additional aesthetic requirements to distinguish © from design law? ECJ says no. Originality is harmonized at EU level and there must not be additional requirements. But there must not be a full cumulation of rights. Legislature deliberately created design law so there must be something separate. But the ECJ doesn’t say what that something is. 

In design law, we take freedom of designer into account (jeans must have two legs, pockets) etc. If we are asking for originality in ©, are we likewise more generous when there is little scope for variation?

Pending © case about folding bicycles: Belgian court has to apply the ECJ ruling and decide whether this bike (which is completely inseparable and clearly just a bicycle) is protected by ©. Should more things be excluded under functionality doctrine under ©? We don’t yet know under European law. Should there be a spillover from design law, or should the standard be more robust. We have to harmonize the originality standard but what that standard is, is less clear.

Derclaye: Originality that is sufficiently identifiable is the standard.

Ohly: but what does that mean for an object? German courts would have said that a higher level of originality is required to distinguish it from other objects. Struggle is whether funtionality from design law should be borrowed for functionality for ©.

Derclaye: there was a utility patent on the bicycle, which expired.

McKenna: that should be game over!

Dinwoodie: problem w/European law is failure to exclude cumulative protection; the European structure, if it had been defined to avoid cumulation, might actually have been useful. If we focus on what design is and exclude other regimes, Sprigman’s formulation could help. Is there a definition that works for what design adds to non-design?  EU has huge protection and very low standard for individual character, but very few cases find designs both valid and infringed—scope is very closely tied to the threshold for protectability. If we have definitional ambiguity, one way to help is to be very careful to connect subject matter eligibility to questions of scope. That works if and only if you properly control the register system. No UK case has found validity plus infringement. But there’s a whole bunch of crap on the register that is unexamined, and that has chilling potential outside the litigation context. Substantive examination would be helpful. Then the EU model, of a right made to be focused on what design adds and excludes other regimes, with a short term unregistered right and a larger registered right, would make sense. 

Caponigri: Sprigman’s descriptions of authenticity/narrative seem to map onto justifications for cultural property. The public is involved in design—a type of conversation w/the public about the surrounding narrative/historical interest attached to a design. In terms of competition, can people compete w/that?

Sprigman: thinks it’s different from cultural property b/c state can promote that through education, museums, curation. W/Vitra an interloper has laid hold of a cultural artifact and annexes itself to it through property claims. The Eames chair is not European and not protected in its country of origin. Authenticity narrative that seems deeply inauthentic to him, and wrongly privatized. Private narratives [contradiction in terms?].

McKenna: you can buy the cultural narrative story about the design, but the move from that to single company ownership is the troublesome move. In what way does the cultural narrative get dissipated if other people are allowed to participate? Accessibility would seem to be a value.

Reichman: if you take it and just copy, you’re just an exploiter; if you add something that’s different, you ought to be able to protect that increment but you can’t claim it’s a cultural narrative then.

McKenna: for an increment of time. But it’s bizarre to claim infinite custodianship/ownership.

Dinwoodie: that’s what GIs do, albeit potentially exploitable by many producers in the region.

Sprigman: the argument would be that commodity competition gets rid of the incentive to establish, reaffirm the narrative—goods would be stripped of meaning.

Reichman: Trademark protection could work for that. The main function of design protection, for him, is to give you an opportunity to establish a TM and decide whether the investment is worth it. If you can’t get it in 3 years w/an unregistered right, don’t bother!

McKenna: In ©, patent, TM, we’ve seen shift from eligibility that is specific to eligibility that is abstract—from books and maps to works of authorship, from names and devices to anything that functions as indicator of source. This has created problems, substantially complicating the question “what is the protected thing?”  If I have to ID a book, I can do that. But if I just have to say “work of authorship,” it’s more difficult to specify claiming rules. We have pervasive problems, especially but not just in design, with claiming rules.

Dinwoodie: Batmobile case: what is the work? The court doesn’t really tell you, just runs through the different versions that appear in different iterations of the comics and TV and movies.

Fromer: Star Athletica: each of the 3 opinions identified the “work” at issue differently: a lot of mischief.

Reichman: maybe we need a derivative works right for design like we have for ©.

Ed Lee: we could also list things that are excluded from design patent, e.g. subject matter of utility patent. © office says short phrases, titles, logos are not copyrightable. Utility patent has exclusions too, though there are proposals to get rid of that.

Silbey: if the story of the production of the design tells you what’s protectable b/c of what was added, and insofar as the people doing design feel they’re adding something of value, they attempt to delineate the line between all the stuff that is part of what everyone uses/builds upon and the final result claimed as exclusive. Through that story of process, there is a lot that is/can be identified as public domain/tools. There’s a big disconnect b/t design patent claim and what designers imagine as owned/controlled by the process. Stories of authenticity (Sprigman) are for her one way of thinking about an anti-counterfeiting impulse. “Truth” that distinguishes some producers from others.

Sprigman: agree, but what does it mean to be “True” in this context? Eames chairs are mass produced consumer goods. What is the authentic chair? If it hews to the design, is that enough? There is no canonical Eames chair.

Jason Dumont: they talk about the quality of production.

McKenna: but that’s about consumer protection/understanding what they’re buying.

Silbey: a lot of things are packed into “authenticity.”

Derclaye: reminder that the limitation to appearance, as opposed to other characteristics, is an exclusion of some things/limitation on subject matter for design. Also it’s restricted to products, which may seem obvious but in the UK it’s “articles,” and that acccording to Laddie could include living things.  Handicraft/industrial product is a limit, though perhaps not a consciously chosen limit. Plants, flowers, limbs—all can be made to look different. Artificial limbs: article or part of a person?

In terms of functionality exclusions in EU: some academics think the functionality exclusion in design is more robust than that in ©.  Also there was a community unregistered design that was held both valid and infringed in one case (Landau?), though maybe no UK designs.

Mid-point Discussants: Sarah Burstein: EU’s definition is close to that of the USPTO, which is any visual characteristics embodied in or applied to an article—really broad.  Derivative works: the horror of considering it—Barbara Ringer discussed this in the context of copyright reform in the 1970s, and said that one reason design rights should be separate from © is that design shouldn’t have derivative works. But given continuations/fragmented design claims, in practice that looks a lot like a derivative work right, and we should talk about whether that is a good thing.

Euro-regrets: registration sounded great, hasn’t worked great; low originality standard sounded great, has led to a bunch of nuisance claims. But as AIPLA/INTA have gotten more attentive, they’re pushing for protection by registration worldwide, so we should write about that.

Short-term anticopying protection for unregistered designs: gives her pause w/o a clear idea of what we think is copying. Intent? Full duplication? Copying type rights might end up broadening the scope of the right.

Jonathan Masur: Design as not involving much of a public goods problem, per Sprigman; strikes him as correct. But what are the harms from design protection/deadweight loss? His intuition, with the weakest possible degree of confidence, is that static harms might also be pretty low.  One of Sprigman’s key points was that design is relatively low cost, and can easily be funded w/first mover advantage. If that’s true, there should be lots of relatively low cost substitutes available for any given design. Lots of high quality consumer goods are sold at relatively low prices: Target’s design reputation. Second, in many cases the social value of design might stem from exclusivity created by the design right itself. What makes the Birkin bag cost $10,000? If it’s exclusivity that creates the value, then there’s not a lot of deadweight loss from having it be exclusive. This assumes a sharp divide b/t design and functionality—functionality exclusivity creates lots more deadweight loss. So the key here is the line b/t protectable aesthetic design and functionality.  If we get the design right wrong (and they don’t really need to exist), our misses may not be socially costly if we don’t allow protection of functional designs. Mistakes about functionality are where deadweight loss will accrue.

Dogan: add in interoperability/path dependence. 

Masur: genericide as applied to design?  

Buccafusco: encouraging commercialization/dissemination of knowledge from utility patents: we don’t get that from design patents: these are articles of manufacture so they’ll be commercialized anyway and the design discloses itself, so we don’t get those benefits from having the design patent system. Downstream: they are at least incredibly narrow in their scope. Design patent law, following utility patent, has determined that its laughably low validity criteria are also equivalent to its infringement criteria—lower than © originality, but as long as we use the same thing downstream it’s not so bad. That makes him even more scared about derivative works rights. Substantial similarity is a broader standard than not substantially different (the latter being the design standard).

Dinwoodie: The lack of registration means you don’t have to define what is owned.  © issues: what exactly the musical work is came up in Led Zepplin case; also Star Athletica. More a European product, but also the US: if you allow partial designs, then similarity of one spoke on the bicycle is enough to arguably infringe. Focus on making sure that infringement inquiry filters out very aggressively things that are functional. Software is like design in tending to be incremental forms of innovation—maybe some lessons can be moved over. European approach requires a list of exclusions from protecting functional designs: must-fit, must-match.  Some of the European exceptions are effective, but others have been interpreted too narrowly.

Reichman: why hasn’t anyone sued us for violating TRIPs because our nonobviousness standard for design patent is too high, given the TRIPs standard of originality?

Burstein: we negotiated language that protects us.

DuMont: “or significantly differs” is language put in to protect us.

Reichman: you can’t stretch that to nonobviousness.

Sprigman: within design patent today, the actual standard fits comfortably w/in that.

Reichman: sees rejections/invalidations—they’re not being lax on nonobviousness.  Perplexed why never raised even in informal discussions, when there are often Qs about American TRIPs-inconsistent practice.

Burstein: visibly disagrees w/premise.

Dinwoodie: so many different countries have their own design standards; they have no incentive to fight on the issue.

DuMont: legislative history arguments over industrial property v. copyright originality standard—US says that “significantly differ” is enough for those who have a patent model like US, Japan at the time to satisfy the TRIPs standard.

McKenna: registration won’t necessarily help with the scope/definition problem. If you have a book, then the work of authorship is still an abstraction. Things like facts and ideas aren’t part of the work of authorship.

On design as low cost: that doesn’t cover everything we talked about this morning. If we believe that we need to define our buckets of design.  Deadweight loss argument also relies on assumptions about scope—he’s not sure that scope really does match the originality standard.  We see constant assertion of claims that seem bonkers b/c the scope analysis can’t be done until the end of the litigation. Also, the instinct that other designs are cheap and easy seems wrong to him—if true, then not much incentive to seek the rights, given how easy it would be to design around. There must be some reason design rights seem competitively valuable. It’s not just design patent: trade dress claims too. The assumption of easy designing around may come from valuing utilitarian functionality over design, but that isn’t the limit of what’s competitively important and may even be less competitively important than design.

Masur: should figure out the costs first and then what needs an incentive for design.

McKenna: instinct is that this would lead us to a list rather than to a definition.

Fromer: There are a lot of design/function interactions that are hard to disentangle. We see the same inventors on design and utility patents for the same objects and both can seem plausibly valid. Fusion of form and function is difficult to disentangle. Then design patent can be used to bootstrap claims of secondary meaning—the regimes overlap which affects the costs they impose.

Dogan: part of her concern for replacement parts is that consumers really do not know that they’re buying into regimes where they may be locked into repair/replacement from only one source even after paying the manufacturer for the original.  European law is much more explicit about protecting this concern.

DuMont: Europe also has parts of complex products exclusion where the parts aren’t seen during ordinary use.

Derclaye: looked at EU litigation: in fact, there are more unregistered designs asserted in litigation than registered ones. It’s because the scope isn’t claimed, like ©, so it’s not easy for defendants to know what the scope is until it’s litigated. ECJ has imposed a requirement of objectivity of definition on a TM claim, and even in © they’ve said that’s the rule but it’s impossible to do that w/o a registration. Agrees that not every type of design is low cost. Some designs require designer to take multiple factors into account to come up with the product. Much activity in the EU in registering designs; why are people doing that/thinking it’s worth the expense? Especially where the sector is crowded, and it’s harder to identify individual character.

Sprigman: not claiming all design is cheap; it’s just there are wide swathes where it will be. We tend to regulate as if these disciplines were inherently high cost and they’re not; even tend to go down over time. Why people are registering designs/patenting designs: the incentive story is complicated by activity that isn’t about protecting designs as such but as about protecting ability to differentiate a product—a TM interest, even though these things aren’t supposed to be for protecting distinctiveness, since TM has its own screens including functionality and secondary meaning/TM function that aren’t present in design. Cumulation = people aren’t disciplined about what they want, and why would they be? The law makes design one of the criteria for competition in areas where it might not otherwise be, because companies respond to legal opportunities. Have to decide the normative question of what kind of competition we want.

Caponigri: when something becomes socially mandated, is there now a need for competion to proved it? Whether it’s a standard way of making coffee or something else.

Dogan: Boudin’s concurrence in Lotus v. Borland—make it possible for a competitor w/a better product to enter the market by using the commands that consumers have been trained on.

Sprigman: scenes a faire doctrine could accommodate this idea. The minute Java became widely used the previously available options for declarations became unavailable. [Explicitly rejected, wrongly, by the Federal Circuit.]  Cape on a superhero: it’s not like superheroes were formed with capes. But it became widely enough done that it became standard for the genre, to the point that Incredibles made it into a joke about the genre.

Dinwoodie: though Boudin would treat this as a matter of fair use rather than unprotectability. In European TM cases, treating iconic design as giving substantial value to the goods = similar result.

Burstein: why are people getting registrations? Remedies, especially border enforcement in Europe, which people here really envy.

McKenna: parties mislead about the use of “distinctive”—they try to bootstrap “distinctive from other designs” into “distinctive as to source.” Study in China about a period where design rights aren’t enforced: shoe companies not able to enforce design rights invest more in the functional performance of the shoes. Relevant to what kind of competition we want. On the margin, design rights can affect investment.

Silbey: some designers say that designs converge on fundamental instantiations, like a phone with curved edges; they tend to think of that as part of the toolbox, but there were a lot of different instantiations at first until the design settled. Relevant to scenes a faire.

Sprigman: that can work with relatively short term rights, but if copyright eats this area then what then? We’ve stayed away from discussing Star Athletica because of the potential horror.

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