IPSC Breakout Session III

Useful Articles 
Star Athletica: Stuck on the Merry-Ground  – Alfred C. Yen
We’re just going round and round. Those who can’t remember
the past are condemned to repeat it; a page of history is worth a volume of logic.
For a case the SCt took, the Ct was astonishingly indifferent to precedents.
Only 4 cited © cases: Mazer v. Stein; Chosun (2d Cir. 2005) (article need not
remain functional once artistic elements removed); Brandir dissent (statute
controls, not intent); Bleistein.  All we
have to do is look at the object and see if it’s capable of existing separately
from the underlying function.  Doomed to
failure b/c very project of identifying a hypothetical aesthetic object is
riven w/strongly inconsistent perspectives. You can’t escape moving among
perspectives in trying to identify artistic object.  Formalism (form of object itself),
intentionalism, institutionalism (audience reaction). Doesn’t think we can ever
rid ourselves of these contradictions in ordinary practice, and maybe we don’t
want to—each can bolster one of the others.
Court rejects audience and intent as not being based in the
statute; all they want to do is go back to formalism.  Star Athletica then puts us back where we
started, in Mazer v. Stein.  Prediction: we
will go around merry-go-round again.  Wy
won’t it work? Even the very effort of trying to identify whether something is
a useful article is fraught w/difficulty. Airplane wing or sculpture?  Shovel or sculpture?  Wall or sculpture?  Might want to know more about why it was made
and how it is used.
RT: the other part of 102 might provide some protection:
control over artistic design doesn’t give any control over making the thing
depicted.  If form & function are
unified, then anyone can sell that shovel in Home Depot regardless of whether
the shovel-sculpture is ©able.  Now, that
might just shift the intentionalism/institutionalism Q to the defense side, but
it might also take care of many of the situations where we think there are
competitive issues distinct from what we think of as the “real” point of ©.
A: it’s hard to talk about protectability of useful articles
w/o also talking about thickness of ©.
Chris Buccafusco: the opinion lacks formalist analysis.  Can we spot pictorial features/a work of art?  Yes. 
Opinion never describes them or engages w/what you might think formalism
would entail, such as identifying or describing the pictorial/graphic elements.  A formalism that never specifies form, unlike
Mazer & Carol Barnhart at least tried.
A: Court realized that trying to deliver an analysis would
make it even more clear that there is nothing more there.  Thomas ducks: it’s the only way to avoid
being criticized for subjectivity.
McKenna: some of these problems are Congress’ fault.  There is a definition of useful article,
putting thumb on scale of calling it a useful article, but the courts have
never taken that seriously. Also, Congress asked for an impossible task. Really
Congress wanted to separate © from design patent, not © from utility patent,
and that’s really difficult.  Look at the
examples Congress used, and they’re all highly analogous to physical
separability. Ignoring that caused Court problems.  You can’t really distinguish applied art from
industrial design.
A: Temporal equity problem: if it was sculpture first,
conversion to useful article later shouldn’t matter. If that’s the case, the
reasoning goes, then it shouldn’t matter in the other direction.  That’s what gets you stuck.
Q: So we should just reject the temporal equity point.  If you use 102(b) to let defendants sell things
as useful articles but not as sculpture, then you get lots of administrative
Responding to Star Athletica v. Varsity Brands – Lili Levi
Issues: Practical impact of indeterminacy; Court’s approach
to art; whether other limiting doctrines will work and how well; use of © for
branding/anticompetitive non-© strategies.
Conflicting views on how bad Star Athletica is; the attempt to adopt a deceptively simple,
uncertain unitary test creates an incentive for opportunistic litigation which
is likely to expand boundaries—already happening, Puma’s action against Forever
21 over Rihanna’s footware, which is plastic slides w/bows and fake fur on
them. These aren’t Schiaparelli’s dresses. Court doesn’t talk about affect on
fashion industry and whether it would be good or bad to kill fast fashion.
There can be different interpretations of function—you don’t
need to use the same definition of function to determine separability that you
use to determine whether something is a useful article.  Possible functions: Mechanical, marketing (enhancing
saleable value), branding. What about making people look thinner? Use in an
interactive way w/audience’s perceptual responses, knowingly crafted to achieve
resonance—does that make them expressive?
Star Athletica said
it wasn’t ruling on originality, but she isn’t very hopeful, given that in the
case itself there was disagreement b/t dissent and concurrence on elasticity of
originality. Could make arguments about role of originality being different
w/useful articles, but don’t know.  Maybe
we should also look at scene a faire—whether there’s enough common
understanding already; that’s mushy doctrine too. Granular, case by case
analysis will be required.
Pam Samuelson: there’s no question that functionality was
key part of what Congress was trying to do; ignoring that is a huge problem
w/the decision. If we care about the implications, working on what function
means is a task that we can bring to this. 
Even though the definition of useful article states that conveying
information is never functional, she found dozens of cases finding compilations
functional and uncopyrightable.
Intellectual Property’s Usefulness Problem, or Functionality
as Fair Use – James Y. Stern
Even if we rested on any one of those 3 visions Yen talked
about, we’d still have problems of incoherence b/c we have ontological
problems.  Humvee designed to survive
bomb blasts, deployed as suburban vehicle—is it functional in a
Externalist controls—preserving space for patent law.  Internalist—limits based on our view of what ©
is. Ontological v. pragmatic: the essential Q is whether TM/© protection would
restrict access to a useful technology. Could defendant make a product that
works as well without using material claimed by right holder?  Focus should be on alleged infringer, not
right-holder. Doctrine should treat functionality as a defense, not an
invalidity basis.  Not taking any
position on where burdens of proof should be allocated, but it should be
case-specific in terms of what the D is up to, rather than the nature of what
the P has produced.  Traffix: currently
upside down—focused on whether the spring is the reason the TM owner’s device
works. In a lot of places in TM, that’s not always important, where we deal
w/side by side competitors in the same market—functional for P and functional
for D will overlap. If both make luggage w/shiny lining that causes confusion;
in one case it’s purely decorative while the other has thermal insulation.  If the former is the senior user and sues,
its feature isn’t functional for its use—and it seems like it should win!  [I doubt any court would so find, though.  Descriptive fair use would be a doctrinal
hook if you can’t stretch functionality, though I have hopes that a court would
recognize at least a category of defendant-side or product-category
functionality.]  If the latter is the
senior user and sues, it loses.  [This version
is almost literally the old aluminum washboard case, updated.  False advertising would still be available as
a claim, if consumers understood the silver to communicate the fact of thermal
insulation.  If they didn’t, then so
Copyright hypo: imagine bike rack designer copied the
original Brandir sculpture, rather than the resulting bike rack.  Result under useful article doctrine seems to
be that there is infringement, which means restricted access to tech.  Duchamp’s urinal would be the counterexample.
Star Athletica was
interpreting what was really an attempt to create an internal limit: protection
for industrial design excluded, but not for applied art.  Can’t you imagine anything as art,
though?   Functionality takes care of many worries b/c
functional uses are immune from © claims, and context matters—useful article
doctrine requires exclusion of fact of utility in considering the nature of
creative elements.  USB connector in the
shape of a faucet—can’t protect the fact that it’s a USB connector through ©.  [Could through design patent.]

Lemley: internalist justifications ultimately have to fall
back on externalist—you need a theory of why © shouldn’t extend too far; he
thinks that will ultimately be about why we want other doctrines. We ought to
have a doctrine of D-focused functionality, but we need not get rid of
P-focused functionality. Even where there isn’t a D-focused functionality, we
don’t want to give © or TM protection for truly functional elements.  [Really? What about ipodmybaby.com, where
they put the image of the [functional, by hypothesis] click wheel on a baby
onesie, where it was nonfunctional. 
Seems little reason to allow non-Apple parties to do that, though there
may also be minimal reason to stop them.]
A: thinks that’s more true for © than for TM.
Q: if you’re thinking about integrating useful articles in
102(b), you have to think about internalist views—there’s a lot of exclusions
that aren’t dependent on patent law—many of such exclusions exist b/c we think
they shouldn’t be protected at all,
by patent or otherwise.
Buccafusco: you don’t need anything about Star Athletica to
get copyrightability for the USB shaped like a faucet—that’s Mazer v. Stein.
A: but what are the copyrightable aspects?  Combination w/practical device should be
excluded from consideration.
James Grimmelmann: TM: descriptive fair use + deny
protection to descriptive terms as marks, analogous to P-side and D-side
functionality. Serves prophylactic purposes. 
There are arguments that scenes a faire and merger are defenses that have
been pulled back into protectability. 
That USB faucet might not be protectable b/c there’s no originality.
A: even a pure mold copy? 
Might/might not have minimal © necessary.  As for both kinds of functionality, that
might be practical, but don’t confuse prophylactics for principle.  Looking for answers in the nature of what
makes the characteristic functional in the first placer.
Trademarks & Consumer Perception Room 304
Should Trademark Law Protect Marketing? Deven Desai
Why not protect nontraditional TMs?  Countries are increasingly accepting
registrations for them. 
Why not?  First, scope.
How do you know what’s being claimed.  US
is less precise than Europe, which requires specific Pantone.  How do different people see the color?
Second, exhaustion of available colors, shapes, etc. 
Leads to aesthetic functionality morass.  Significant nonTM function: what does that
mean?  Marketing literature: Design is
part of branding, which can be used to compete. 
The whole point is to move beyond competitors’ ability to compete.  Design is a source of differentiation.  It’s not marginal to the product but core;
design & marketing dep’ts work together. Designers are looking to tap into
innate attitudes—features, shapes, forms, colors, materials, surfaces,
textures, to build brand image. Aesthetics and ease of use are all developed
Notion of innate/essence capturing: communicating an aesthetic
is done best by using symbols to tap into innate preferences—preferences for
unity, proportion and symmetry, etc. 
Bright colors; shoes (large to signify power; even if a hair dryer has a
ton of power in smallness, consumers like it better when it’s big), angular
forms for masculinity in cars, roundness (phone edges, car trunks).  Functional/ergonomic: largeness can indicate
power, communicate quality by looking reliable or solid.  Does the number of buttons make consumers think a machine is easier to use?
Consumers care about shape of button.
Attention drawing/categorization.  Varying size and color; contrasting colors
can draw attention. Categorization: the way a consumer chooses products as
fitting w/in product market can drive consumer choice.  You want prototypicality: look or appearance
that makes most people think it belongs in the product space.
Look at Apple’s claims for trade dress—all those features
seem functional under this view—icons arranged to be easy to see and use, contrasting
colors b/t borders and screen, rounded shapes for phone & icons—all these
things you’d be very wise to use if you wanted to compete.
Maybe we should have a ban, taking seriously that TM isn’t
supposed to be incentivizing creativity. Consumers would learn that product
design trade dress isn’t necessarily reliable indicator of source.  Reality, though: rules aren’t going away—so we
need to manage it. Justin Hughes has proposed a way to handle design, which
Desai doesn’t think will work.  Where
aesthetic appeal preexists the product, he says, there should be functionality,
but not otherwise. But: designs are hybrids. They draw on and perform a variety
of functions at the same time—designers are explicitly tapping into innate and
preexisting preferences or biases.  Also,
there are not clear metrics on what should be granted. EU isn’t as clear as
people want, though it’s clearer than we are. 
Super-limited protection/scope might work, but there’s still the deep
problem that the more we grant, the more overreach we get, worse than in word
marks.  Still, it’s here to stay, so we
need limiting efforts.
Q: curb cuts, designed for wheelchairs but used by many
other people. Why the iPad became such an appealing piece of software/hardware
for differently abled people—goes to a lot of the things you’re talking
about.  That’s an example of the worst
case scenario for protecting these features—you give monopoly on accessibility.
Gerhardt: role of registration in determining scope?  Frequently we seen trade dress defined
against what the D is doing—ex post.  Ex
ante applications to register are in a weird space; companies proceed
differently than they do w/registering word marks.  They jump on word marks, but w/trade dress
they sometimes try to pin it down to put everyone else on notice, or it doesn’t
occur to them, or they don’t want to be pinned down so they wait.
A: Needs to know more about that.
McKenna: you could harden up the claiming rules to limit ex
post problems.
Trademarks, Employees, and the Firm – Matthew T. Bodie
TM is about attribution, so has particular puzzles for
employees/firm.  How can a firm claim
that a product or service is protected by TM when the employees aren’t making
the product/performing the service?  What
about the firm can change and yet still be the same “source”?  Paradox of Theseus’ ship—every bit is
replaced, and is it still the same ship? 
[I would say, why are you asking?] 
School of Law isn’t the building it’s in; it isn’t the people who are
there now (all the originals have been replaced).  Is the school anything more than the TM, the
right to say that it’s the School of Law? 
What about a labor-fissured firm, like Uber/independent
contractors? How can we say their work is “Uber”? The magic of the brand is to
encompass this, and the TM is the legal operationalization of enforcing the
brand connection.  Work done by non-employees
is still our TM.
TM has cheated and said that the business is the source—the fictional
entity. Firms have been arbitraging and we shouldn’t let them get away w/it—disavowing
for labor & employment law purposes, but claiming for brand & TM purposes.  TM law does say that you can lose a mark
through giving up on quality control—control over quality establishes the
mark.  Firms control through contracts,
etc. w/outside entities.
Choices for fissured firms: maintain control over labor and
become employer/joint employer (operate as a firm)—or if they want to outsource
housekeeping and not control it, they should lose TM b/c they aren’t
controlling quality any more.
Lunney: TM Act: authorizes TM owners to allow related cos. to
use their marks, defining related as those TM owner has control over.  But people don’t know or care whether there
are independently owned franchises or centrally controlled; you’d force central
control and McDonald’s seems to be doing fine having both types of restaurants.

McKenna: 100 years ago, outsourcing would have been
considered fraud. There was a very deliberate move in the common law and then
in the statute to abandon that, to enable companies to create different kinds
of commercial relationships. You might say TM law enabled the labor/employment
situation you enabled, and the payoff is that the market structure isn’t
independent of the rest of the law. If TM law were different, it would create a
different labor/employment market. Another take: in a service economy, what
does control mean? That might be a different paper.

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