WIPIP session 7: Design Law

Rachael Dickson, Administrative Discrimination? At the Trademark Office

[I feel like there’s a Panic! At the Disco joke to be made here.]

ID manual: a searchable database of acceptable IDs of goods/services, regularly updated and changed to adapt; you can make suggestions to add easily, and new IDs are added regularly. Benefits: lower application filing fees: $350/class goes to $250 class; clarity and examples as to what IDs are acceptable. Potentially less back & forth communication w/ PTO=cheaper prosecution, quicker access. “Accidental” addition of medical marijuana IDs in 2010 led to rise in applications; withdrawn.

Some options are broad: medical services. Others highly specific: writing pens that may also be used to perform pen spinning tricks, arranging beauty contests for animals, financial evaluation of alpaca fiber. Dickson’s suggestions for “medical services in the nature of providing abortions,” “consultation services in the field of sexual health and wellness,” and “providing health information related to contraception” were all refused as already covered by broader categories. But: Pedodontists, nevus removal, psychological services for infants, medical clowning are all in there.

No class 44 IDs contain contraceptive, birth control, condoms; sex or sexual only shows up in class 44 in the manual for addiction treatment services. Class 44 IDs don’t contain gay, lesbian, transgender, but prostitution services in the state of Nevada are in there. Also no reference to cannabis, THC, or CBD. They instead want a very complicated specification that ought to be in the manual. Porn/adult film, sex therapy, and nudist resorts also missing. Sex toys don’t seem to have been added until 2015.

Search codes for images are very useful; many poop marks are applied for, but there is no poop codes; since there’s no search code, you will have higher prosecution and maintenance costs. No results for nudity, genitalia, or penis. They do have nude. A lot are filed under other parts of body: genitalia are treated as random other parts.

Applications w/controversial content may get an “unofficial suspension”—application to register swastika filed shortly after Tam, and wasn’t examined for over 2 years and 2 months; 8 times longer than the average 2.7 months first action pendency in 2017. Why was the obvious failure to function refusal delayed so long? Applications for goods with uncertain legality also create TM problems—waits over 2 years w/o examination for goods containing delta-8 THC, whose federal legality is questioned.

Applicants are essentially left in limbo; they don’t really have any recourse (maybe a writ of mandamus, but not clear it would work b/c there is no timeline except under the Madrid Protocol).

Gilden: the patent side has categories for, e.g., devices for genital massage. Why the difference between patent & TM sides?

A: much easier to get a more controversial good registered than a controversial service. TM office may get in the news more; articles about “how dare they grant a patent to this thing” don’t seem to appear.

Fromer: Wrote about inconsistent application of immoral/scandalous applications—is this legacy from having to police this, making them feel like they could be arbiters of prudery?

A: definitely could be a factor.

Jordana Goodman: how do they decide they need a new category? PTO did a lot of work on the patent side. Is this just in the US and do they talk to other countries?

A: classes are set internationally, but IDs can vary a lot b/t offices and US has stricter ID requirements than others; WIPO database is missing a lot of these IDs. The ID division can be very insular. Question is whether there is demand.

Calboli: every other country still has the morality rules, so they won’t have these except within the classes.

Christine Haight Farley: connecting to Katyal’s paper: “Indian man” design code. That’s highly offensive [A: but still in there!] but helpful to research. Why the whole pattern?

A: will be talking to PTO historian; they ended up offering to refund fees to 2010 applicants if they’d abandon them, so may never find out what happened there.

Rosenblatt: are there things that are fine? You say discrimination—discrimination against controversy might be different than other kinds.

A: they’re cowards—avoiding controversy is the goal. There is a design code for marijuana leaves; you just can’t get a cannabis ID.

Laura Heymann: There expressive consequences and functional consequences here. What’s the meaning and what effects does it have on competitors? Are they having trouble clearing marks?

Christine Haight Farley, Design Authenticity

Book project, still shaping up. Case study of George Nelson’s bubble lamp (mid-century modern design), how TM law creates new design rights. Nelson was second design director of Herman Miller Co. Contested origin stories: lack of clarity about who’s the designer; George Nelson had his own design firm while working as design director. Lots of stories of derivative iterations of designs where people were working together. Mazer v. Stein: a sculptural base can be © but not a midcentury modern lamp; Sears v. Stiffel: invalidated patent on another midcentury modern lamp. Attributed to Jens Risom, 1950s: a daybed can’t get a design patent, would need to flip up and fry an egg. Even without IP protection, they promote authenticity. Herman Miller makes catalogs like coffee-table books, pushing the idea of the celebrity designer (even though they weren’t exclusive to Herman Miller). Midcentury modern revives in the 1990s, so there are reproductions (since there aren’t enough old pieces around). Modernica buys the original molds etc. and starts selling them. Design w/in Reach had some “authorized” works but also was making their own versions of furniture. Herman Miller starts to fight back, saying that’s all fake. Certificate of authenticity; they mark the hell out of chairs w/designer names, signatures. “You can copy a Rembrandt and do a beautiful job but it’s not a Rembrandt.”

But this is smoke and mirrors: they claim rights b/c it’s authentic and it’s authentic b/c they claim rights. They’ve changed the design, but still claim authenticity: the authenticity is the brand. Herman Miller brings claims of unfair competition, false association, false advertising, right of publicity, TM rights including dilution, claiming designer’s name, model names, and shape of the design. Claim to have been authorized by designers and heirs—claiming to own history of design, contra Dastar’s point about not searching for the source of the Nile and all its tributaries. “Original reproductions” is the concept. They’re machine-made goods.

Eric Johnson: have they been successful in pushing others out of the market?

A: not always—Eames sought utility patents for some designs, so the PTO then didn’t allow registering the shape. Herman Miller was unsuccessful in one case but learned from that. Suing all the time, more successfully. When they’re all knockoffs, it’s a race to the bottom. Design w/in Reach was selling its copies as “museum quality reproductions.” It’s now hard to sort through the market to get a good one.

Lemley: larger problem of TM capturing the concept of authenticity; separated from traditional goal of branding. Should separate the law from the marketing.

A: most of these other designs went out of production; Herman Miller never produced some of them. They don’t have good arguments for being “authentic” except by claiming rights from the designer—lineage. They say it’s authentic b/c we are authorized by designer/heirs. Authorized how? For what? As if there were rights to pass to them. Their authenticity leans on rights—mutually constitutive. Authenticity then has a different meaning than it did in 1950.
Rosenblatt: yes, this is a story about de-tethering of authenticity from anything else. No ©, no TM—just a case study in a free-floating signifier. Also true of the “Conan Doyle Estate Ltd.” A collection of distant relatives who purchased some © from the trust to which they were willed. They have a claim to authenticity in name and backtracking, but no authenticity. Authenticity seems to matter to people even when there’s nothing tangible, like NFTs.

Q: are there patterns in authenticity judgments that differ across, e.g., clothing and furniture?

Jeanne Fromer, An Integrative Theory of Design & Utility Patents (with Chris Sprigman)

Many technologies are design-sensitive: computers, shoes, cars, phones, game systems. Design patent protection: the justification is a puzzle. Maybe historically it made sense but doesn’t match up to what’s going on now. Share commonalities w/other IP: encouraging people to create (design). Do we need that incentive? Many other IP rights protect design—©, TM. Moral considerations? TM-type concern for signifying source/distinctiveness? Beebe’s critique of sumptuary codes seems relevant to that. Thinking about what design patent is or could be doing now.

Patent has two buckets: utility for useful inventions, design for ornamental designs. The oddness is that when we look at innovating design-sensitive technologies, we see extensive, iterative interaction b/t industrial designers working with mechanical and electrical engineers. Microsoft Surface designer: design is king; industrial design defines the experience, and the form will follow the experience. Defining experience gives constraints to the engineering team, so the engineers have to find functional solutions. Similar for Xbox, but in reverse: function is king, and designers have to come in and fit the best design for the function provided. Ultimate goal is coherence. Surface is subject to utility and design patents for the hinge on the back. Overlap in inventors listed. Apple does the same thing—utility and design patents overlapping w/same inventors listed. They understand what they’re doing as highly integrated.

Design patents + utility patents = optimal protection for fusion of design and function, obverse to the conceptual framework that pervades the dichotomy of design and function in patent law. By separating them out legally, you end up protecting the merger of form and function. If you get both, you control the merger—they’re optimal together. Still, design patent lawyers are often thinking in very TM-like terms.

Implications: partial claiming and fragmented designs might be a really bad thing if we care about the fusion of form and function. We need better understandings of ornamentality/functionality. Maybe we shouldn’t be so troubled by seeing both design and utility patents for the same thing, but we do have to worry about two bites at the apple/staggered bites at the apple. Might provide a justification for design patent if we get it right.

If so we might wonder about the role of design patents for things that aren’t for merging form and function [designs on, not designs of?]

Q: subsequent effects on claiming TM protection (using design patent to get secondary meaning).

A: totally! We spend so much time in legal doctrine trying to separate form and function and designers spend so much time uniting them. Many of us are drawn to election doctrines to avoid bootstrapping one protection to another.