Notre Dame Scope Roundtable, part 4

Chris Buccafusco & Mark Lemley, Screening Functionality
Commentators: Abraham Drassinower and Jim Gibson
Gibson: regime shopping is even more troublesome than scope
problems in one regime. Design patents seem to exist purely for regime
shopping; everyone wants a patent right w/o having to go to the PTO.
Didn’t find the notion of a percentage continuum of
functionality all that helpful b/c the limiting doctrines/screens discussed
very infrequently depend on the percentage of functionality in a given work—maybe
merger does. They tend to boil down to some kind of separability (e.g., Altai’s
nugget).  Not tonnage but ease of
extracting one from the other, except for design patent which has jettisoned
any requirement. Some are more bright line than others; Google v. Oracle says all
consideration of what’s separable is shunted into fair use which is at least
chronologically clear.  The filter being
used is often a function of the kind of work the author creates: software,
product configuration, PGS work. But it’s also a function of where the court
sets the boundaries of the work; that performs a separability/filtering
function itself—are we starting w/ something purely aesthetic or
functional?  Maybe the X axis should
represent separability where Y axis represents functionality—they’re related
but distinguishable.
Originality as a more important screen after Star Athletic: Breyer suggests that the
majority’s test would still produce a defendant-favorable result after
originality is applied.  Also merger: one
concept of merger is functional constraint on choices. You conceive of merger
as something that kicks in at the low end of the aesthetic scale, but maybe it’s
the zero/vanishing point on the scale. Originality would also fit in there.

Material that gets filtered out, but comes back in in
compilation analysis—look and feel analysis gets sloppy, though there are some
real compilations w/new aesthetics when put together.  A lot of screens aren’t just functionality
screens, such as idea/expression, which also mediates between past, present,
and future authorship.  Even Altai isn’t
entirely about functionality—also about originality, public domain. Left
w/question: if you’re evaluating screens in pros & cons for functionality,
do we lose anything b/c of pros and cons for the other work that these screens
do that we should be considering?
Drassinower: differences b/t exclusion and filtering: what’s
out altogether, and what’s out even though it originally got in (like a border
crossing and you have visa for a particular purpose). They both preserve free
competition.  Exclusion as a heightened
originality requirement—not copied, and subjecting to filtering ought not be
too costly; if it is too costly, we have a heightened originality
requirement.  But do you mean to say that
originality is formally an independent principle, and if so what’s the relation
with functionality?  Other tension worth
developing: functionality as market efficiencies.  Administrative efficiency is separate: the likelihood
that judges/etc. will make wrong decisions. Elaborate market logic’s
relationship to administrative logic that presides over the
functionality/protectability determination.
Lemley: A one-D line wouldn’t allow you to draw the
distinction we want, which also goes to scope of protection.  X axis is percentage of functionality, Y is
scope of protection; in a perfect world we’d have a 45 degree angle, with only
the nonfunctional stuff protected. What constrains that? Administrative costs,
difficulty of filtering. What do we do given those costs to get the second-best
Separability, not in the Star Athletica sense, can help us
with the easy stuff to figure out the size of the “work.” Copyright does screen
on percentages—in certain contexts the game is not worth the candle.  Food, yoga poses.  Leave it out entirely, or leave it out unless
it passes a threshold.  Depends on
assumptions about how much will be expressive v. how much functional.
Exclusion = what’s out entirely; filtering tells you what
you get once you’re in.  It’s rules
(exclusion) v. standards (filtering). 
[Does that make sense when exclusion is often itself done case by
case?]  The reason we have functionality
doctrines is channeling in the service of market efficiency, but implementation
of functionality screens is not driven by market efficiency; it’s driven by
concerns about administrative efficiency.
Buccafusco: we try to avoid defining functionality at all.
We are also concerned w/incentives: we don’t seem to be experiencing a shortage
of recipe-related creativity, or dam-related creativity, or polka-related
creativity—interaction b/t incentive costs and administrative costs helps
explain the screen.  [Also error costs,
as Lemley points out—even if we didn’t think there was much need for
incentives, we wouldn’t be so worried if we thought this would be done in an
error-free way; individual errors are costly as McKenna points out.]
Fromer: you’re conflating exclusion and filtering based on
actual examples—you tend to talk about exclusions as categorical b/c that’s how
we see them, but they don’t necessarily have to be that way. Separate factor
affects that: if it’s case by case that affects costs.  Another factor not disaggregated is
timing.  Administrative costs: you assumed
that filtering would be later than exclusion. 
So what costs are just about one or the other?
There is a functionality screen in utility patent: utility.
Is there any symmetry going on? Thinking through that might illuminate other
Burstein: Design patents is the most disconnected from the
others. But is there really no filtering in design patent? We do it in
infringement/claim construction—not in principled or clear way, but even though
it’s not done in validity, you get particular appearance and not general
concept.  What would a threshold look
like?  Would it be enough to disclaim the
functional part by putting it in dotted lines?
McKenna: No recipes is one kind of categorical rule.  Traffix is another kind of categorical
exclusion, but it’s a determination based on substantive definition of
functionality rather than ontological status as recipe. © has a mixture of both.
TM law is almost uniformly not ontological. 
One way TM tries to mitigate costs: Wal-Mart shifts the curve over,
making it have to meet other thresholds for secondary meaning so we don’t have
to get to the difficult functionality issues. So think about sequencing w/r/t
other doctrines. Is it better to do originality first, or is it so permissive
that we are using functionality to avoid hard cases?  [RT but practically, don’t courts and the PTO
tend to do both functionality and no secondary meaning, belt and suspenders?]  Court sometimes can’t figure out secondary
meaning so does functionality; Louboutin is the opposite, where they do secondary
meaning b/c they can’t figure out functionality [and then they neglect
infringement analysis; Louboutin is a weird one b/c it finds secondary meaning
and then announces there’s no infringement]; no rule of law tells them which to
do first.
Lemley: exclusions are the easiest to do before trial so we
go there first. Filtration tends to require a jury. As a practicing
lawyer/administrative cost sensitive person, instinctively on board with
avoiding hard questions when easy questions can resolve the cases.  Gives him some pause is whether doing that
case in and case out ends up having selection effects that bias the substantive
law.  If all the strong functionality
cases are also cases in which there aren’t secondary meaning, we might
therefore get a functionality doctrine made up of cases in which functionality
argument is pretty weak.  Sequencing as
error cost reduction in particular cases might have systemic effects on
doctrines/case law.
McKenna: just exclude product configuration altogether, that
will solve the problem.
Lemley: one way to insulate decision from reversal is to
make a bunch of aligned findings: functionality and no secondary meaning, or
secondary meaning and nonfunctionality. That tendency is less in courts of
appeals than PTO and district courts.
Beebe: There’s no third category—neither aesthetic nor
functional—proposed in the paper. This seems suspicious.  Where do you classify political or religious
speech?  Nonfunctional, but therefore
aesthetic?  For you, the secondary
category is the aesthetic and your real focus is functional and nonfunctional,
and you could dispense with any reference to the aesthetic.
Lemley: by aesthetic we might mean “something legitimately
subject to an IP regime that isn’t patent.”
Said: if you’re trying to screen, you don’t care where it
goes after bouncing off.  If you’re
trying to channel, you do care where it goes.
Gibson: but you are trying to avoid people getting back-door
patents. So you do care about the double-dipping problem.
Said: but your mechanism to deal with that problem is
Lemley: we aren’t into deciding whether the monkey selfie is
copyrightable.  It makes it through the
screen as nonfunctional, but we don’t care whether it gets ©.
McKenna: the fact that you have to be clear that it’s not
necessary for it to be patentable for it to be screened out by being the kind
of thing that could only be covered by patent—Bonito Boats—should affect the design of the screen.

Said: Litman said, 30 years ago © descriptions represented its protection as
porous; now many don’t, don’t talk about thin/thick protection.  Worried that this paper may be doing that at
the level of the work.  Could a screen
ask the question: is this work predominantly composed of protected elements or
not?  Not a fan of the more discerning
ordinary observer test for works comprised of public domain elements, b/c that’s
true of all works, but some lawyers in some jurisdictions have used a filter to
think about it that way. Some works you can see at a distance as predominantly
composed of copyrightable/uncopyrightable things.
Lemley: even short of exclusion, you’re talking about the
Wal-Mart approach from TM. Mostly not about expression (or branding) so create
a new & higher threshold outside functionality.
Said: would rather see that than filtering. When you see
filtering as a binary option, it’s almost always gotten wrong. Why give it such
an important role?  If we have to go all
the way to the facts, how is it different in any way from substantial
similarity? [It is different in framing, as the Fromer/McKenna paper suggests.  It focuses attention on chunks which may
limit the scope granted to the work/design etc.]
Gibson: still wants a definition of functional, especially
if the other side is “not functional.”
Samuelson: Vessel Hull Design Protection Act was supposed to
be an industrial design law and then it never happened; think about where that
would fit in if it changed. If the paper has generality beyond American
context: other countries have grappled w/relationship b/t ©, design law, and
other forms of unfair competition; functionality plays a role there.  If design patent didn’t have “ornamental” in
it, it’d be a straight up industrial design law.  VHDPA prohibits getting both design patent
and VHDPA protection—it’s the one prohibition in the law; does raise the
question of what the interactions would be like.

Lemley: he thinks VHDPA is really a new form of utility patent,
like plant patent. Our view of functionality there should be different b/c the
goal is not to prevent people from getting back door utility patents, but
rather to give them a new form of utility patent w/fewer requirements.

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