Notre Dame Scope Roundtable, part 2

Jeanne Fromer & Mark McKenna, Claiming Design
Commentators: Sarah Burstein and Rebecca Tushnet
RT: Great paper exploring the ways that different claiming
regimes contribute to producers’ ability to maximize rights by claiming under
multiple overlapping regimes, copyright, design patent, and trade dress. Discuss
specific regimes, then overarching issues.
One key argument of the paper: Early claiming might force a
designer to think more carefully, and at an earlier stage, about the ways it is
likely to market the design and about extent and nature of competition their
designs will face. Query whether this is only true when there is peripheral
claiming, or where scope is limited very strictly to the claimed
design/counterfeits thereof—early claiming by exemplar may allow for a lot of
manipulation too. One example: Maker’s Mark case v. Jose Cuervo, where the
registered mark is the dripping wax seal but it turns out that red is a
component of the “real” mark, which quite clearly allows Maker’s Mark a better
chance at validity.
The TM registration process is also more demanding in terms
of limits on presentation: the PTO will refuse to register a “mutilated” mark
or a phantom mark; the thing claimed must be recognizable and complete as a
symbol in itself without other matter interposed or to be added later. This
serves notice functions but may also make possible some intervention on scope. Should
the description offered in an unregistered trade dress have to meet the same
standards for clarity as the registration process? Paper says courts don’t have
a uniform level of generality; is there any way to specify the appropriate
level of generality w/reference to PTO practice? Drawing of the mark?
Copyright: Lack of clarity about the claim complicated
Varsity Brands: the ambiguity about whether Varsity claimed only
two-dimensional drawings or the designs of uniforms themselves. Varsity
registered its copyright in two-dimensional drawings of cheerleading uniforms,
but the Sixth Circuit treated its claim against Star Athletica as if Varsity
claimed rights in the design of threedimensional cheerleading uniforms. Did the
SCt understand or destroy the difference? The car example in the opinion
suggests that there is a difference, but the treatment of the “uniform” design
suggests that there is not.
Originality and the concept of the “work” somewhat limit the
extent to which one can manipulate the exemplar in copyright, as is likely to
be taken up on remand in Varsity Brands. But we are increasingly seeing that
design patent lacks similar constraints. Not only does it not have a decent
functionality doctrine, but the ability to claim tiny parts of a design,
accompanied by lots of dotted lines, may minimize the risks of not capturing
what a competitor will do, especially if you can file multiple design patents
on the same object—iPhone. One possible path for the paper: instead of election
of remedies, but think about whether it’s possible to limit design patents per
article of manufacture—even with many points of novelty, still only one design.
Another really useful insight: visual claiming likely
focuses viewers on a design’s gestalt—though perhaps in skewed ways—rather than
individual features, whereas verbal claiming likely does the opposite. And
verbal claiming is often unavoidable once there is a serious challenge to
validity using prior art or we’re at the infringement/scope stage—this seems to
be true in design patent and copyright, and courts don’t even try to avoid
verbal claiming in trade dress, using the ability to articulate the trade dress
in words as a proxy for the examination that the claimant has otherwise avoided
by not registering.
All three regimes entail forms of central claiming because
these legal regimes involve laying claim to some members of the set of designs
protected by the right as contrasted with peripheral claiming, which would lay
claim to all members of that set. If litigation occurs, this central claiming by
exemplar is then supplemented by claiming by characteristic. Central claiming
reduces the cost of claim drafting, because the drafting party need not think
through and articulate at the time of claiming the metes and bounds of the
design. Central claiming by exemplar is also cheaper than claiming by
characteristic, and may involve simply creating the relevant work or design.
Paper says: Visual claims are necessarily by exemplar (even
if labeling directs the viewer to particular characteristics of the exemplar). But
we can do better with notice by specifying the best way to do visual exemplar claiming,
plus supplemental claiming by characteristic. So how do we do that? One
subsidiary point made by the paper: The trick of “broken line” claiming can
undercut the notice provided by the claims and make it hard to manage the scope
of the design rights. Examiners, competitors, or judges might perceive the
level of specificity in these drawings to be much greater than they actually
are. Ok, so what is the possible solution? For design patent: Requiring a claim
to cover an article of manufacture plus the claimant’s ability to identify
point of novelty, even if the point of novelty is the overall combination? That
actually is what we do w/©, where we have a work and then the unprotectable elements
get filtered out, supposedly.  And w/TM,
we use the concept of source identifier to do the heavy lifting—with respect to
product design, the idea of “limping marks” might also be of use, cf. the
European Kit Kat case: association isn’t enough.  New thought: in dilution we’ve specified that
association isn’t enough, it must be association that impairs the
distinctiveness in the mark.  So too for rights
in limping marks in the first place: association with a particular producer is
not enough, it must be association that consumers use to identify the goods and
services they wish to buy or avoid.
Sarah Burstein: Agree re: mutilation/phantom marks: separate
commercial impression required for just a part. That could be an external
limiting constraint—where Ugg claims any boot w/ button infringes the trade
dress, maybe you need separate commercial impression.
Not sure she buys rosy picture of early design claiming—plenty
of shenanigans possible.  Paper says most
designs are claimed before infringement begins. Not sure that’s true,
especially for litigated design patents. Maybe true of what’s on register in
archives, but filed or amended post-marketing—Nike files 100 different
variants. More economical approach: file whole iPhone, then keep chain of
continuations in the oven.  Nordock:
continuation of utility patent filed 4 years after “infringer” came on market.
Earlier disclosure is good, yes.
Trade dress: Taco Cabana’s continuing ability to say that “pink
is a part of our trade dress” even though it wasn’t claimed in the last Taco
Cabana case. That remains a problem even after the first definition occurs
through litigation.
Configuration designs—seem less concerned w/surface
ornamentation/packaging—would like more clarity on that. Now after Star Athletica maybe we are going to
have more conflicts w/surface ornamentation.
Big picture Q: why should we care what you claim? Still get
broader scope in TM no matter what b/c of infringement standard. We didn’t always
care. In 19th c.: you could claim article of manufacture configuration,
surface ornamentation, both. PTO didn’t really care.  You got the whole thing.  Curious about how that might interact
w/framing effects mentioned in the paper. 
TM: separate commercial impression might be a limit.  Do you want some limit on “you get what you
claim”?
Fromer: What’s the connection b/t claiming and scope? You
could say it’s irrelevant, but it is about framing the case/setting things
up.  This paper is teeing up the fact
that this process is actually going on, b/c right now it’s relatively
unreflective—courts often accept the descriptions they get uncritically.  That has many effects.  There should be internalization w/in business
of claiming too broadly or too narrowly; utility patents has that in spades.
But utility patent is peripheral claiming; hard to do in central claiming b/c
you can make inconsistent claims in central claiming—emphasize different
features at different times, different levels of generality. Make them
internalize costs of claiming broadly sometimes and narrowly other times. 
McKenna: Other thing difficult in TM: rights are dynamic;
trade dress you have today can change tomorrow, whereas utility patent is
supposed to be locked down, at least in theory. 
Lemley: struggle w/peripheral/central divide, b/c advantages
and disadvantages for each. Utility patents: verbal claiming sucks. However
manipulable the image is, lawyers are better at manipulating words but also
creating weird unintended effects in both directions, broader and narrower
scope.  One question is whether we ought
to think differently about it depending on whether copying is an element of the
regime in question.  Disclaimers can also
be used: use of words to supplement images might not be “here’s what’s
important” but “here’s what standing alone I don’t claim”—that allows a prior
art analysis.  Closest prior art idea in
design patent—here’s what needs to be distinguished.
Penalizing overclaiming: in the noncompete context, some
courts have a no-blue-pencil rule: if it’s overbroad, we strike the whole thing—this
deters overclaiming.  Is there a way to
do that in design patent that shares the utility patent’s feature that if it
covers the prior art it’s invalidated in its entirety?
Buccafusco: There’s a validity/creativity stage: do you have
something capable of granting rights at all? 
That has costs of overbreadth. There’s also a functionality screen.  There’s also a liability/scope claim.
Copyright smashes them all together at the same time w/overlapping doctrines.
Over regimes spread them out.  Think
about costs of overclaiming at different stages? Costs w/r/t validity might not
be that high if validity doesn’t create a lot of market power.
McKenna: deep down no one form is adequate.  Verbal claiming doesn’t work.  Show students verbal description of Taco
Cabana, and they think it’s every Mexican restaurant ever; show them the
pictures and they think, oh, it’s nearly the same.  Inescapable conclusion is that the best
requires some combination of visual and verbal. Shouldn’t pretend as design
patent does that you’re only doing visual, not verbal; shouldn’t do what trade
dress law does, which is require verbal but often take whatever plaintiff shows
up with.
Samuelson: Independent invention isn’t as much of a concern
on the design patent side. What is the motivation for design patent? The possibility
of getting total profits!  Perry Saidman:
claims that design patents are just about stopping knockoffs. How does that fit
in?  A bit more about strategic
considerations that affect early/late claiming.
McKenna: very few companies create product configurations to
indicate source; they figure it out later; many registered long after first use
(he believes).  Lawyers dabbling in both—love
design patent b/c they can get secondary meaning from design patent exclusivity—bootstrap
into secondary meaning. Other strategic reason: the ability to get patents on
bits and pieces, which you can’t do effectively w/TM because atomizing “mark”
into bits makes source identification difficult.  Also faster than acquiring secondary meaning.
Zahr Said: there is self-claiming that’s posturing but ends
up being performative via overenforcement—e.g., DMCA notices. You claim
something and then you claim to own every part of it, even though the law is
not that way.  Loves the idea of
disclaiming.
Lemley: award extra remedies for better claiming? 
Fromer: hold people to their intentions.
Said: somewhere between claiming and estoppel.
McKenna: if I say my design is X but then claim infringement
by X-1, it’s not a difference in harm, but in what triggers the harm. 
Lemley: you get a substantial benefit from claiming ex post.
Markman hearing is good b/c makes you decide scope when both validity and
infringement are on line at the same time. 
As long as we’re doing scope before infringement we’re better off than
we are today.
Fromer: might not help w/all notice but would help in
specific inquiry.
Burstein: might also get a design patent b/c there’s no use
requirement: can stop making handbag and still claim rights.  Copying: is design patent really about
deterring knockoffs? If so, that’s a very different system than we actually
have.  We’d have to change the way we
proved copying. Industrial design has been about mass production, which
presumes access; we’re just cutting to the chase by fighting about similarity.
But we do have copying-like doctrines; if there’s really close prior art, you
might not have been copying the plaintiff. She sees in complaints designs that
look independently created, in part b/c they’re super functional.  If it’s truly ornamental, one can expect less
independent creation, but if anything goes there’s a lot of independent
creation.
McKenna: real ornamentality requirement could also solve
this problem.
Lemley: many of the problems are functional but not all,
especially for minimalist design like rounded corners on a phone.  Not b/c it’s functional but b/c it’s simple.
Burstein: designers wouldn’t want to work in a clean room—the
whole point is to find new solutions; looking at what other designers have done
is important.  [There is no clean room,
as there is not w/©.]
Said: courts too often find that “making choices” =
protection.  No, choices for many reasons
should not be protected. 
Grynberg: Fed. Cir. dominance is a problem: they control
design patents but design patents aren’t their focus.
Fromer: same with PTO. 
At least there are unregistered TMs so that TMs aren’t the sole province
of an agency for which they are not primary as a focus.

McKenna: Fed. Cir. doesn’t like to invalidate design patents—it’s
also the outlier in TM functionality; it’s an outlier in how it treats ©
(Oracle v. Google).

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