WIPIP Session 4: Design

Session 4: IP, Design, User Experience
Sarah Burstein, Reviving Ornamentality: Fed. Cir. killed
ornamentality in design; right now it means nothing other than Morton-Norwich nonfunctionality. She
thinks we should bring it back.  Two
aspects: (1) “matter of concern” in normal and intended use; (2) if you can’t
see it we don’t care.  But “normal and
intended use” means everything from manufacture to disposal; if you can see it
when it breaks, then it’s within the possible scope of design patent.  If you can draft a patent application, you
won’t run up against an ornamentality problem.
First mistake: treating ornamentality as opposite of
functionality. Some designs can be both at the same time.  Fed. Cir. says: it’s not primarily functional
unless there are no other alternatives; this makes everything ornamental b/c
there’s almost always an alternative. 
Only recent exception: a key that fit into a specific lock; and even
then there was a dissent.
This is a problem b/c design laws should incentivize the
creation of new and creative aesthetic product designs.  Design patents are now protecting useful
innovations in design patent clothing/petty patents, against Congressional
Before 1982, many courts said (1) is design dictated by utilitarian
concerns? (2) additional aesthetic requirement—some visual impact.  Don’t think of ornamentality as mere
nonfunctionality doctrine. Ask whether the design makes a material aesthetic
contribution to the product, providing a reason for choosing one over the
other?  How do we test that?  Well, we can measure it indirectly. Ask of
producer: was this design driven by utilitarian concerns?  Ask of consumer/user: does the appearance of
this type of design matter to a substantial portion of actual users?
Why focus on the visual? 
This is the only way that design patents make sense in our IP
landscape.  It’s the hole they were
intended to and can in fact fill: protecting useful articles with some visual
content that matters. Otherwise they’re just petty patents or copyrights.  If consumers don’t care (e.g., shape of USB
connector), then it’s wasted effort from design perspective/anticompetitive
from any other perspective.
Also addresses problems of partial claiming.  Plus the “Rabbit Strategy,” where you use
continuations to get competitors on the hook—you take a parent application and
then create child applications with subparts of the original design.  In my world, you’d have to prove consumers
cared.  Spare parts, too.  You might say that people buy bumpers b/c
they want the bumper to look like it did before the accident, but that’s not
the kind of aesthetic effect that should matter.
Would also make our crazy damages provision make more sense,
when you get total profits no matter what—if the design is material to the
consumer, that is closer to tort principles.
Mark McKenna: Who counts as a user?  You see TM use intermediate purchasers all the
time.  Materiality: you mean “is the
aesthetic aspect material”?  That raises
an important timing issue. As of the date of application? If it’s ever
true?  If successful, people will likely
come to appreciate the design and it will matter to them.
A: true, especially for primary products—the initiator of
the smartphone. But that may be justified.
McKenna: especially given evidence that familiarity breeds
A: but that is ok: we should create incentives for people to
create nice products even when they aren’t typically bought for aesthetic
Lunney: Congress didn’t intend this isn’t a good enough
justification—think more about broader social costs.
A: Agree—Congress said so for some pretty good reasons.  Mutant patents = big social problem. 
Farley: Steve Jobs even wanted the circuit board to be
A: I would focus on the user.
Zahr Said: presumptions anywhere?
A: We should just go test it.  Surveys; PTO would be subject to lower
standards as with TM. 
Peter Lee, The Law of Look and Feel: A comprehensive
examination of the regulation of consumers’ aesthetic experiences.  Emergent law of look and feel: exclusive
rights in design across ©, TM, utility patent, design patent.  Doctrines selectively mitigate exclusive
rights in response to certain factors. 
Look & feel of the 1980s, as shown by Pac-Man (really
Ms. Pac-Man).  Look and feel in Louboutin
heels; Abercrombie & Fitch clothes with hot guys and their abs—an A&F
store is a total sensory experience, including music and scent.  Exemplar of look & feel in modern
economy: the iPhone.  Valued in
significant part for how it feels in your hand. 
Marketers say: look and feel of products will determine their success;
in a crowded market place, aesthetics is often the only way to stand out.  Look and feel can encompass the
zeitgeist.  A&F evokes the early
2000s; iPhone = right now.
Law of look & feel. 
©: 9th Circuit in Roth Greeting Cards protected “total
concept and feel.”  Blurred Lines case:
jury found infringement based on sound & feel of the late 70s.  Limitations in ©: idea/expression; merger;
scenes a faire; useful articles.  Apple
Computer v. Microsoft: copying the GUI; the court invoked limiting doctrines of
merger & scenes a faire, including consumer expectations re: overlapping
TM: Taco Cabana
protects look & feel. Limiting doctrines: distinctiveness, functionality,
and likely confusion.  Product design
trade dress can’t be inherently distinctive. 
Aesthetic functionality: A&F lost claim against American Eagle for
general look of its stores.
Utility patents: Apple’s patents on two-finger pinch to zoom
and on slide to unlock. These patents contribute to look & feel:
streamlined aesthetic/user interface. 
Limitations: functionality; constraints on patentable subject matter;
apportionment of damages.
Design patents: here though there’s a distressing lack of
limitations.  Functionality is construed
narrowly; consumer deception standard for infringement isn’t sensitive to
context; expansive damages.  Greater
standardization is justified to make design patent fit better with the other IP
Linford: limits on © don’t seem to be that good.  We do abstraction, filtration, comparison
when we’re worried about functionality; total look and feel seems to be courts
generally extending broad protection. If the argument is design patent needs
more than what it has, I’m with you there, but it’s surprising to think that
copyright might be a good model.
A: Not saying that © is perfect; impressionistic view is
problematic in itself, but other doctrines help cabin it in ©, not design
Q: Zeitgeist—if it’s true that one producer was the first to
create the zeitgeist, wouldn’t limited term take care of that with obviousness
A: it could, but that revolves around the question of
timing. Something can achieve the status of a standard quite quickly, before 14
years expires.
Said: Roth never
really meant to establish a test.  Look
& feel cases seem to involve courts struggling; treating look & feel as
an element of a work along with plot, as opposed to a lens through which to
view the work.  Treating
errors/outcome-driven cases as a unifying principle begs the question.  She’d rather say: there are these cases, and
what about the cases drove the court to use total concept & feel instead of
something else—scope, filtration, etc.
Farley: also concerned you’re reifying look & feel,
which is a fictitious concept—case involving the artist Tarkay—attempt to
protect his style was rejected, and she’s not sure how to distinguish look
& feel from style.
A: we don’t want to focus on the words look & feel. What
we argue is that there’s a law of look & feel that extends past the use of
the words (to substantial similarity). 
It can’t be an analytic grab bag. 
Other doctrines that have never explicitly been associated with look
& feel are part of the broader law of look & feel.
Mark McKenna & Jeanne Fromer, Claiming in Litigation/Claiming
Design: How different systems of IP conceive of claiming. Louboutin: how does
the court understand the nature of the plaintiff’s claim as a kind of
property.  Yankee Candle: P attempts to
claim everything you might think about when you think about this store.  Recent TM application: all of the lines on
the image are dotted out, meaning they’re claiming no shape, just a color—the
color of something.  TM doesn’t have a
methodology for claiming; thinks about problem where law encounters it in
particular cases.  Recent design patents:
Claim limited to one curve on a gear, everything else dotted out.  What explains the different methodologies for
claiming, especially given increasingly overlapping use of those systems?  Design patent system forces you to show up at
PTO with a claim in pictures; you have some definitive ex ante claim against
which you can compare anything later on. TM says: you don’t have to do anything
ahead of time if you don’t want to (though we might want to change that rule)—most
trade dress cases involve unregistered trade dress, and even when there is a
registration, doesn’t seem to have much bearing on court’s infringement
analysis (Louboutin being the outlier).
What TM law does so differently: articulate your claim in
litigation, rather than in ex ante document. 
Issues of public notice.  Not
specific to design: happens in copyright, trade secret—claiming in litigation
is an issue in many situations.  Attacking the problem as a claiming in
litigation problem suggests that design is one instance of a larger
problem.  In TM we allow it because we’re
concerned about how it works in the market, not in the abstract.  Product designs change over time; makes more
sense to consider it at time of litigation. 
Costs of claiming in litigation: public notice; courts seem
uncomfortable w/lack of notice/lack of ability to pin down scope.  So they sometimes say “we don’t know what you’re
claiming, so it’s out.”  Fair Wind
Sailing in the 3d Circuit: P seems to be claiming a way of doing business,
using a certain size of boat and using customer testimonials—3d Circuit says “no
mark” but they don’t have a tool like distinctiveness or functionality to do
this work.
Trade dress cases: courts have tried to say: you need to
articulate the trade dress in words. The problem with that rule, though it’s
the right instinct, is that courts allow people to articulate the claim in
incredibly varying levels of generality: every Mexican restaurant you’ve ever
seen, or exacting description. Courts are thinking about infringement/managing
scope, and backing into a claim definition. Design patent: pictures are used,
but deep & persistent ambivalence about need to describe pictures in words—b/c
pictures are often not very illuminating (no pun intended). Maybe they aren’t
so different—the mostly dotted image is a trick, leaving the design patent
incredibly general and vague by claiming only a very small part of the design.  Relates to partial claiming.
Are there good reasons for claiming methodologies
differing?  You might say that TM v.
utility patent: it’s more important for utility patents to be clear b/c stakes
are higher. But that doesn’t work well for design patent. Iinfringement
standards are pretty similar b/t trade dress and design patent; obviousness
criteria are mostly nonexistent for design patent, so design patent claims look
like trade dress claims.  Both sides
ought to think about more specific rules to apply across cases.
Lunney: exemplar systems worked well for old-style TM (where
double identity was required to infringe) and © (pure copying) but never worked
for utility patent.
Fromer: we want people to have to think through an
invention; claiming forces you to a certain level of
generality/specificity.  Is there
something similar going on in this context? Do we want to force people to think
about their rights early on for TM/design patent.  Not as obvious.
Lunney: what would a written claim for Star Wars look like?
McKenna: reason why TM lacks methodology for claiming—historically,
most of this would have been in unfair competition, so you didn’t need to worry
too much about the front end.
Aaron Perzanowski, The “Buy Now” Lie: “Buy now” on Amazon
for Kindle books; the page for Orwell’s 1984
looks the same for Kindle version as for the paperback.  But Amazon can pull back and destroy 1984 for the Kindle, not for the
paperback. One claim: the market has spoken and people don’t value possession
rights for ebooks as much as they do for physical books. But that assumes
consumers understand that “buy now” doesn’t mean “buy now.”  Commerce Department White Paper: MPAA/Disney
said, of course consumers understand they’re buying a license.  But I figured it was worth empirically
testing.  Fake online retail portal:
simplified layout like Amazon’s.  Tested “buy
now” button. 1300 consumers representative of the US population in sex, income,
age.  Showed a number of variations on
this retail page.  Tested books, movies,
What do consumers think they get?  Switched to “license now.”  What do consumers think when they see
that?  Switched to just a price + a
notice about what you can and can’t do: you can download to approved devices,
read on approved devices, keep subject to our terms of use; you can’t resell,
lend it, transfer it, give it away, or read on approved devices.  (Out of 1300 people, 14 clicked on terms of
Asked them: after they’d clicked, can you lend it to a
friend? Leave it in your will?  Resell
it? Keep it as long as you want?
People who believe they “own” what they buy using “buy now”:
high percentage; also high percentage believe they can keep forever & use
on device of choice (both of these in the 80-90% range).  Believe they can lend ebooks, mp3s, and
digital movies: (1/2 or less); lend as gifts (similar); leave in wills (1/3 or
less); resell it (17% or less).  Significant
number of consumers get these questions wrong. 
All of these percentages, w/possible exception of resale, are large
enough to establish falsity/deception.
Apple is replacing albums stored in the cloud; it can just
Switch to “license now”—while belief in “ownership” goes
down, other things go weird but don’t change much and people still believe they
can keep forever & use on device of choice in the same %ages; more people believe you can resell
digital movies when you say “license now.”
The tested short notice caused a pretty big drop, especially
for lending, gifting, reselling—with the weird exception of digital movies.
Results: there is miscommunication happening.  There is a reasonably effective
intervention.  He isn’t a user interface
designer, and he spent 10-15 minutes on the notice, and yet it had a pretty
substantial impact.
Also asked respondents questions about materiality.  Maybe their wrongness doesn’t matter.  Digital v. hardcover: people’s ability to
lend and resell matters to consumers in stated preference, and there’s almost
no difference in preference b/t physical and digital version. Indeed, they care
more about reselling ebooks than hardcovers, if you believe his numbers (which
there’s no reason not to).
Also asked: if you can’t get the rights you want, would you
be more likely to download illegally or stream it from a subscription
service?  About 1/3 said yes to illegal
download; from 36-74% said streaming would also be more appealing.  WTP: $3-4 range for the rights.
Dep’t of Commerce White Paper recognizes the problem:
consumers don’t understand what they’re getting.  Doesn’t cite any evidence, but now there is
Haven’t broken down results by age, education level,
behaviors of lending/reselling.
RT: Richard Craswell has good work on how you interpret
different results from different disclosures.
A: doesn’t know that new options will necessarily help
consumers.  [I think we were
saying/hearing slightly different things, but Craswell would probably agree
with this point.  Craswell has written
about when it makes sense to require rewriting a claim, if some people don’t
get information/lose value from the increased cognitive burden while others
benefit from enhanced information.]
McKenna: Do people think they own it but can’t lend it?  Do people have any idea what ownership means?
[Note that it’s possible to have a physical thing you own but can’t rent—that’s
what airBNB is fighting about.]
A: 40% say they don’t believe they’re allowed to lend their
physical books to other people.  There is
a big difference b/t physical and digital, but physical is interesting in its
own right.

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