Christine Farley, Authenticity and Design: Why sell a chair for 10x a visually identical chair? The claim is authenticity: authorized manufacturers and retailers; they call copies counterfeits. Sometimes the replication is exact; design claimants say they’re made with cheaper materials and practices, but midcentury modern design aimed for cheapness and access: the idea that more people can have it now would be a good not a bad. The claim is that coming from certain retailers = authenticity. But what does that mean for works that are mass produced, today, in plastic and metal by factories in typical settings? When Design Within Reach started, it said in its 2007 10K: “our competitors believe they have exclusive rights” in some of their proudcts, including some of their best selling items, which were reproductions. Now they’re claiming to have legal rights to stop that when others do it.
In the 1960s, preemption was big (Sears v. Compco, etc.) and
design patents were hard to get/not as valuable at the time. There’s not
evidence of a litigation history of the few midcentury modern design patents,
even though Herman Miller etc. had some. There was an extralegal campaign: look
for the real thing.
Meanwhile, the “authorized” retailers are changing the design
from the Eames design, in dimensions, colors, materials, collaborations with
other designers—not “authentic” in the way you would have thought. An Eames
plywood chair with an upholstered base!
More litigation now than there was when the designs were
created, and the litigation is very strategic: forum selection, defendants who
are not bringing a great defense. A lot of settlements. Interesting issues:
secondary meaning, abandonment, functionality, likely confusion, dilution.
Herman Miller litigated even against “Eames style.” In re Herman Miller, 2021
TTAB: the design of the plywood chair is functional.
Contemporary design/designers at the time thought their
design was good b/c the functionality was completely integrated into the look. A
far cry from Sears v. Stiffel. Almost all of these designs were abandoned/discontinued
circa 1955, and only brought back after other people restored their popularity.
Tyler Ochoa: how do you fix this?
A: Not giving design patents and utility patents then sets
them up for a good result now when they argue trade dress. They aren’t suing
the parties who would mount a challenge, like Target and Walmart. They’re being
extremely strategic. More than bad law, they’re muddling the ideas of
intellectual property with authenticity, which may change the ways we think
about IP as well. They’ve argued that they’re Eames’ descendants—the authorized
speaker for Eames. So “Eames style” is an attribution right-style violation,
but framed as TM.
Buccafusco: who are the producers and consumers of products
they deem knockoffs? What do the people buying those chairs think?
A: there’s a range. A rich dialogue about this among design
fans—the law is not helping them with any good information about what is not
counterfeit, what is good quality. They’re sharing information about quality,
but the law might be pushing towards counterfeits v. authorized rather than
distinguishing quality.
Saurabh Vishnubhakat: is this a repeat of trolling issues we
saw in utility patent/litigation costs?
A: the volume isn’t quite there. And the strategic choices
of Herman Miller have kept it mostly successful—they get a rule established,
and then they settle.
Felicia Caponigri, Iconic Copies: Exploring Heritage’s Role
in Defining the Origin of Goods or Ideas and its Boundaries
How does a design become iconic? Product placement in
media/cultural commentary. But that means that there is commentary, some of
which the TM claimant might not like. Creates boundary problems between ©/TM.
How is the word “iconic” used by brands, especially brands founded in early 20th
or late 19th centuries? Looking at TTAB proceedings—puts weight on
scale for commercial strength in LOC; fashion editorials can sometimes tip the
scales to show secondary meaning of design and even fame for dilution. But it
can also show genericity when the design seems very similar to what came
before, as with the bamboo arc bag. When does it refer to the origin of the
design v. the design itself?
How is “iconic” used in various ways? Traveling of the image
across context; brand universe v wider cultural universe—when do we tell the
story of a brand versus the culture from which the brand is feeding? Using Coke’s
“iconic” status to prevent the registration of “Concealed Carry” in Coca-Cola
font. (When) is iconic about household name status?
Dastar: content of an item versus producer of a physical item:
iconicity does not obviously map onto one side of this. What happens when
someone, e.g., makes pottery in the shape of “iconic” bags?
Silbey: Designers use that term all the time: produced in
the context of how they think about their work. Complicated relationship to
ownership: they think their value comes from providing iconicity/authenticity.
Alex Roberts: the problem is that brands use that word all
the time to proclaim themselves iconic.
Vishnubhakat: Might get some mileage by comparing how it’s
used in the market to how it’s used in courts.
Mark Lemley & Mark McKenna, Breaking the Symmetry
Between Utility and Design Patents
AKA Design Patents Aren’t Patents (… and it’s a good thing
too)
Three rules: (1) design patents are judged by patent rules
unless statute says otherwise; (2) that which infringes if later anticipates if
earlier: there is symmetry b/t infringement and anticipation; (3) infringement
in design patent is completely different than infringement in utility patent,
which does element by element comparison. These three things can’t all be true
at the same time. Something has to give.
(2) and (3) make sense even if you don’t love Egyptian
Goddess; element by element identity approach doesn’t work great for design
patent. And symmetry b/t anticipation and infringement is important for scope
purposes. That suggests that (1) should give. And if you look, there are a lot
of differences.
Anticipation, in part b/c of the symmetry issue and for
weird reasons is different and uses a different audience—the ordinary observer
(or maybe a specialized observer); obviousness doctrine ignores KSR entirely—in
design patents the rule is no obviousness inquiry at all w/o a single reference
that is “basically the same,” which is the opposite of what we do in utility
patent. Claim construction is discouraged in design patent, in part for good
reasons—doesn’t make much sense to translate into words when you can compare
the two designs directly. Ornamentality and functionality should in theory be
part of design patent; patent prosecution is virtually nonexistent for design;
even remedies are different.
Design patents aren’t patents. They lack almost all of the
major features of utility patent. Probably a good thing too. Some differences
driven by differences b/t design and invention. Also b/c design patents are
centrally rather than peripherally claimed, as utility patents are. Design
patent: are you too close to the thing I built? Utility patent: are you w/in
the boundary I claim?
Separating design from utility, like every other place in
the world, may help us fix inconsistencies. For example, in recent LKQ case
judge ruled that Egyptian Goddess is a confusion test, so a design will only
anticipate a claimed design if it would cause confusion. That’s not obviously
the right way to go about it.
Judges can read the same statute differently in appropriate
context, though it’s not obvious they will in the age of naïve textualism. But it
is dumb to require a single reference for obviousness. We might want to replace
it with an analysis based on actual design principles, but not the flat
application of KSR.
Jeanne Fromer: Imagine radically—what should it look like?
Do we even need obviousness?
A: there are benefits and drawbacks—maybe it would look more
like a © regime. But that would require legislation; courts can adapt
obviousness to the way design works.
Nicholson Price: Utility patent imperialism: why aren’t they
patents if they say patents on them. Are plant patents not patents?
A: they probably bear more resemblance than design patents in
what they are protecting and why. But the Plant Patent Act and Plant Variety
Protection Act have a lot of similarities despite the latter not being a patent.
Adding “utility” every time you say it is annoying and we don’t always succeed.
It’s fine to call them all patents up to the point where we import doctrines
and assume identity of concepts that aren’t identical, which is what has happened.
Vishnubhakat: should we remove exclusive appellate jurisdiction
from Fed Cir?
(in response to Burstein) There’s a narrow window for Fed
Cir to write a rule applying the principle of KSR to design patents in a
sensible way, but a risk the textualist SCt will just say “do KSR exactly”
which would be bad.
Burstein: there are design patents elsewhere, including in China.
Is this really happening in many cases? They are applying 103, but differently
in design patent.
A: sure, even though we’re nominally applying the same rules,
in fact there’s big differences. That’s the problem of the paper.
Buccafusco: wants to hear more about what designers actually
do in terms of iteration. Also, why don’t we figure out whether the
constitutional language matters—are these products of authorship or products of
inventorship?
Jason Rantanen: maybe authorship produces different
constitutional constraints than inventorship [I’m not sure there’s much current
support for that, but who knows what these folks will do?]
Are there judge effects? A few judges invested in importing
utility to design concepts.
Farley: do you need to have a position on why we
protect design to answer these questions?
A: to a certain extent, yes, which is why Fromer wants us to
go bolder. We are thinking about how much this has to be a reconceptualization
of design from the ground up. But things that require us to go to Congress are
probably never going to happen and could end up much worse than we are now.
Kumar: how much work is the word patent doing? Is the EU
system that different?
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