WIPIP, part 4

Mark McKenna & Jessica Silbey, Investigating Design: An
Empirical Study of Industrial Design and IP Protection
Interviews & institutional analysis. Hypothesis
generating—anti-copying/copying practices, etc.
Buccafusco: consider who’s in the sample—don’t limit to
self-identified designers. Following career trajectories of design school grads
is one path but also consider other people who ended up doing design, like UX
design for websites.
Q: if you start w/ academic grads you may get rhetoric that
doesn’t match reality.
Silbey: a risk w/snowball studies; you have to ask carefully
for people who see things differently.
Q: interviews will difffer over whether you’re trying to
understand how design patents work in daily life v. what should be the system—studies
of successful design innovations?
McKenna: we want to know how people do design; incidentally,
we want to know how they’re thinking about law and how the legal system works
for them; we want to know about TM, ©, design patent but as a feature of their
Lunney: studying what’s not there is hard—is there an
absence of market support for something that IP could help with?
Dogan: compare here w/Europe—is the thought process of
designers different w/an assumption of robust protection?  Also interesting to interview the designers
who copy—an entire industry in fashion & other design industries.
Silbey: The difficulty is how to disentangle what people
think they’re supposed to say about homage, about distinguishing themselves,
from the rules we know they play by. It’s cultural as well as legal.
McKenna: industrial design is all copying: they start w/a
design that exists in the world and try to tweak it. May get different kinds of
thinking about that question v. clothing. 
[Doesn’t clothing exist in the world? 
A functionality issue, perhaps.]
Sarah Burstein, The “Design” in Design Patents
Radical but unrecognized shift in the types of design we
think are patentable. Most designers think design is methodology, process, not
a thing, so it’s not surprising to see change. 
Two least favorite CCPA decisions by Judge Rich—history undermines
assumptions of practitioners.  19th
C. patent office rabbit hole: what did “article of manufacture” mean in
1877?  It took a lot.  Projects: Article of manufacture piece is
coming out soon; current talk; then partial designs.
Courts have read “new” & “original” out; subject matter:
“ornamental,” “design,” “for an article of manufacture.”  For 19th c., there was a big list,
changed in 1902 to current language. No matter how the language changed, courts
interpreted it the same: two classes of designs, shape and ornamentation. Shape
is the outward form or contour. 
Ornamentation is the surface illustrations/delineations things printed
or pressed into surface; cut glass contours for bottle.  You could claim one or both.  It was the whole article.  Ex parte Pope: tried to claim entire
configuration of seat riser as well as a portion thereof; PTO said you couldn’t
do that; it had to be the
configuration. This persisted after the 1902 Act.
Today: PTO says it’s any visual characteristics applied to
an article, which is a lot broader.  Use
the same language of configuration or shape & ornamentation.  But now we see people claiming fragments of
shape or fragments of ornamentation. 
What happened?  They say surface
ornamentation but they’ve expanded it to “surface treatment”—that opens up a potentially
broad range, including computer icons; contrasting color or materials; anything
else on the surface—golf club face scoreline pattern—that’s certainly not
What happened?  Judge
Rich.  In re Hruby, 1967.  1952 Act was pretty clearly not trying to
change stuff for design patents. But when Rich gets this case for the patterns
of water shot out of a fountain—not the machinery, but the water sprays—the PTO
says nope, that’s not a design for an article of manufacture and the PTO
reverses.  Article means anything made by
man, and the sprays of water are made by man. 
Technically about different subject matter requirement but important b/c
Rich equates configuration with 3-D design and then says the water is ok.  The court showed no understanding or care for
the historical meaning of either article of manufacture or design.  They could have said Congress meant to change
it, but they didn’t it.
In re Zahn, 1980, drill shank case. The design was the shank
portion; the PTO refused b/c said the entire configuration was the design, not
just the shank.  The court said that was
cool b/c the statute didn’t require an entire article.  This is a watershed—you can be creative in
design patent application. This is where shenanigans start in earnest.  Possibly not aware of relevant history and
precedent. More likely: larger emphasis on periperhal claiming, allowing
applicant autonomy in defining the scope of the claim—the design is what I say
it is.
So what? (1) Important for reading old cases. Don’t assume
that the contemporary rules applied, even if the language is the same.  (2) Current interpretation: are we stuck in a
Zahn world?  No, can note its shaky
historical foundation, lack of inevitability of reading the language in this
way.  Implications for (1) partial
designs, US and int’l; (2) GUI design patents—since this is the basis for
approving such patents; (3) debates over special remedy of full disgorgement.
If we’re reading old cases wrong, may be reading them wrong as to this too.
McKenna: does Apple/Samsung lock us in b/c the Ct has said
that the article of manufacture can be a component—makes it no longer sensible
to talk about partial design if whatever is claimed is the design.
A: not sure that’s what the Ct did. In theory, we could
acknowledge that some components are articles, but we could make you claim the
whole component—the screen, not some corner of the screen.
McKenna: but now can’t I say the article of manufacture is
this corner?
A: in the 19th c. they would have said now.
McKenna: Apple/Samsung is a second-best solution; maybe it
was never necessary in the first place if we shouldn’t have been granting these
patents in the first place—a rearguard attempt to fix problems from Zahn.
A: still interested in distinguishing article of manufacture
from design.
Lunney: always important to know how we got where we
are.  Also important to know it was Judge
Rich—ex parte, w/just a gov’t lawyer and an applicant—shows how these things
can go wrong/off the rails. You may not be able to rewrite, but can tweak way
appeals from PTO are heard.
RT: interesting to put in context of legal thought of the
time: pre-Realist; they thought there were platonic ideals of everything, not
just a design.  Formalism—we don’t have
to abandon that if it’s encoded in the statute. 
[Now I’m thinking about tax doctrine: there’s evasion and avoidance; we
recognize that laws create structures that one must take into account, and some
things are within the statute and others without—especially if a distinction is
made by the legislature, it is acceptable to say that some line must be drawn
and that the legislature could rationally put it in one place even if facts on
the ground are something of a continuum, like a speed limit.]
Stacey Dogan, The Role of Design Choice in Intellectual Property
and Antitrust Law
Issue in both contexts: should law influence the design of
technology/innovation?  Answers differ
depend on political/ideological predispositions in IP and antitrust.  People who are strong advocates of IP rights
are often antitrust skeptics and vice versa. 
Grokster, Aimster, Betamax; Allied Orthopedics, Microsoft—common factor
was courts being asked to look at the design choices made by defendants and
unpack them to figure out whether their choice of design should be impugned b/c
it helped enable infringement or exclude competitors/shore up a monopoly.  The design itself wasn’t independently
unlawful, but allegedly unlawful for role in achieving some unlawful end.
Courts’ starting principle is non-interference.  Or so they say.  Generally leave it up to the market to bless
design.  Non-interference in ©/TM:
substantial noninfringing uses make a product ok; parties need not design
staple products to avoid or minimize infringement; not a cost-benefit
analysis.  Parallel in antitrust: even
monopolists don’t have to design products to make life easier for competitors.
And yet: Grokster, court looks at design as one of the
factors taken into account in determining whether there’d been inducement.  Both technological design and business goals
in designing the system as it did.  In
some antitrust cases, Microsoft and Bard, courts look behind the product to
figure out what motivated particular aspects of the design choices.  Bard biopsy guns: a redesign of the gun was
made w/primary intent of making the gun incompatible w/others’ needles.
Microsoft browser bundling, making it very hard for people to remove it and
substitute Netscape.
Are there common themes or differences across
IP/antitrust?  Common reasons for
non-interference: error costs (impossibility/incommensurability of weighing
value of innovation v. other interests—risks of Type I/false positive errors);
supervision costs (oversight of design—court reluctant to be regulatory
agency); chilling effect & interference w/legit trade.
One reading of Grokster
focuses on intent: to root out ventures that wouldn’t exist but for
infringement.  It’s not actually the acts
of inducement that matter; they are only evidence of intent to induce.  Focus on whether intervention would interfere
w/commerce unrelated to infringement. 
Theory: unlikely to interfere w/future development of tech done by
people w/better motives.  Similar thread
can be found in antitrust cases.  Courts’
starting rule is not to second-guess design choices. Attempts to identify
dimensions of products that have no purpose but to exclude.  Things that made no economic sense except
when exclusionary effects are taken into account. 
Posner is willing to interfere w/design choices in Aimster, whereas he’s hands-off in
antitrust; Michael Carrier is very strong non-interventionist in IP context,
but believes in heavier hand in antitrust context. This reflects normative
views of underlying area of law.
McKenna: we have an entire area of torts based on products
liability—law is perfectly willing to second guess design when there are good
reasons. Why in IP but generally not elsewhere? 
Antitrust, market power tripwire—might be more reason to intervene v. IP
which applies to every actor in the industry.
RT: Ann Bartow’s point: TM/false advertising flip is the
same, where people who like strong TM like limited false advertising liability
and vice versa (it me).  Nature of the
people you’re harming; ability to protect themselves via knowledge or
competition?  So with antitrust we might
say competitors can protect themselves via the market more easily than
consumers w/product design.  Likewise,
the IP cases in which these principles come up are not standard individual
infringement cases; they are cases in which it is clear that it is industry v.
industry, whether or not they’re contributory infringement cases; it’s clear
that big market actors with big structural effects are in play.
Lunney: property v. markets—Posner & Carrier would both
say they’re consistent.  Do they just
weight the values differently? 
A: sure, but interesting to unpack that to figure out what’s
Aaron Perzanowski [& Dave Fagundes], Juggalos Without Juggalaws:
The Norm-Based Governance of Clowns
Following up on Dave Fagundes’ work on roller derby; also
Perzanowski’s work on tattoos, w/premium placed on unique designs viewed as
deeply personal in part b/c they’re connected to the human body.
Clown eggs: carefully painted, disturbingly accurate
portraits of clowns painted on chicken eggs, including wool hair and portions
of costumes.  Astounding and maybe
disturbing. Seems to have originated in UK, now known as Clowns Int’l.  Also, disputes about similarity on online
forums (these are awesome).  What norms
spring up: was the registry a response to norms; did it create norms?  How does the registry screen or resolve claims?  Does it play a role in norm enforcement?  Why has the UK registry persisted and the US
registry has not?

Q: what’s the standard of similarity? To the untrained eye, there is not
infinite possibility here.  So how does
that relate to similarity measures elsewhere?
A: good question. There are conventions; 4-5 types of clowns
recognized as genres, so there are constraints on how much you can do and still
be recognized as a clown. We’ll get some of that from interviews.

Sheff: seems more like dilution than confusion—it makes my
entry in this space indistinct b/c similarities are so close but not
exact.  Dilution of a non-strong identity;
as opposed to dilution for famous marks—might provide insight on what dilution
gets wrong.

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