WIPIP 2019, Plenary (designs)

Whole Designs, Sarah Burstein
What is a “design for a useful article”?  TLDR: it’s a whole article.  Egyptian
Goddess
said the infringement test has to be sameness of appearance. Must
appear substantially the same to the ordinary observer.
Worst design patent claim ever: Caffeinate Labs v. Vante:
multitool shaped like a monkey; the accused design is not shaped like a monkey.
(Withdrawn when D correctly filed a motion for sanctions.)  Richardson v. Stanley works: claimed &
accused designs were hammer tools w/things in the same places but didn’t look
the same.  We don’t have fragmented
literal similarity as in ©; you have to look at the design as a whole.
But: the whole what?  Three long-recognized types of designs.  A design for the shape of an article of
manufacture, like a dryer ball shaped like a hedgehog.  A design for the surface ornamentation of an
article.  Or a combination of both (grab
bars covered with leopard spots).
Then came Zahn,
where the CCPA said that the old rule of claiming the whole was out; the design
is whatever the patentee says it is. 
Dotted lines disclaim portions of a complete design.  Now you can claim anything, including daisy
chaining so you keep an application pending and target what your competitors
are doing.  Apple had a bunch of
noninfringed whole shape patents that it didn’t assert against Samsung; you can
also claim components; you can claim fragments. There’s at least three types:
intact fragments, where only the part in solid lines is claimed—never exists separately
in real life, such as the rounded edge of one side of a laptop.  Apple has mastered this—there are still
pending applications from the original iPhone at the PTO.  There are also fragments that are voids:
holes.  Apple claims the hole where you
plug in your Lightning connector.  There
are also variable fragments (she wanted to call them mutilations) where you can’t
see them by looking at the product. 
E.g., a pink interior with dotted lines around the round holes in the
interior.  Is that claiming an interior
with no holes?  With star-shaped holes?  No one knows.
Fragment design conflicts w/ the statutory text, which
refers to “an article of manufacture” not multiple articles.  [This would be a good issue to try to get
cert on at this particular juncture in time.] Conflicts w/long-standing
practice.  It distorts the total profits
remedy, making a not great situation worse. 
And it provides protection for minor, immaterial, and/or functional
parts.  Creates doctrinal incoherence: if
everything is a design, then it is difficult to apply the other rules about, e.g.,
prior art and how to deal with parent/child applications. Anticompetitive.
As a design school graduate, was trained that design is the
whole—it’s not just shape but color and all other elements.  Not simply a hodgepodge of discrete elements
but a cohesive and integrated whole. 
Also there is positive space/negative space in art theory: when you draw
on a piece of paper, there is a part that is perceived as ground/empty
space.  Even when it’s colored and the figure
is not colored, you perceive the background as negative space and the figure as
positive space.  This is important
because negative space is as important as positive space in creating the
design. 
A new theory: a configuration design for an article of manufacture
would be a design that dictates the entire shape of that article, including
positive and negative spaces; a surface design would dictate the entire
surface, including positive and negative spaces; and a combination design would
be both.  Thus a single image for fabric
would be a different design than that image repeated multiple times in a
pattern on fabric. 
If a piece is made and sold separately, that can be a separate
design.  So there can be handle design
patents.
Lemley: what happens to dotted lines under your proposal? 
A: have served different purposes over time—not the same
meaning in the 19th c.  Do we
protect designs per se or tether them to a particular product?  It can’t be in the abstract, but the Fed.
Cir. might screw it up. The key is that the uncertainty adds more complexity.
Lemley: then we need a standard that is something other than
infringement standard that uses dotted lines for something. When you have a
swirl for the screw top of a bottle depicted in solid lines and dotted lines to
indicate the rest of the shape of the bottle, right now courts say that the
accused design has to have some kind of a bottle shape; you wouldn’t be able to
win an infringement claim for a similar screw top configuration on a car.
A: under my rule you just don’t use solid lines for that
purpose.  [I guess under her rule at
least you could try to get the grooves as part of a design for a bottle cap, to
the extent that’s a separate article; maybe a bottle cap can go on many
different things, but the problem would be diminished and you wouldn’t be
worried about dotted lines.]
The Laws of Design, Christopher Buccafusco:
Legal and nonlegal mechanisms that promote or fail to
promote disabled access in the environment. Fits into non-IP motivations for
innovation. There’s lots of important work on access and innovation, including
in access to texts, access to the internet, deafness/blindness.  Will focus on physical environment and opportunities
to move around in it.
1920s/30s after WWI, medical innovation lets people
w/serious spinal cord injuries survive when they wouldn’t have before. That
creates a new population, further affected by polio epidemic which also increases
portion of population that survives into adulthood w/a major disability.
Medicalized, rehabilitationist model of disability: how to be productive
laborers in society, which typically involves lots of things disabled people
don’t actually have as goals. 
Institutionalization v. preferences for independence. GI Bill then
provides a not inconsiderable amount of $ to buy accessible technology; March
of Dimes and similar things also increase ability to pay/demand side.  Oldsmobile Valiant: a car driveable with two
arms and no use of legs. But veterans’ payments only allowed them to buy a
certain set of cars, e.g., a regular Chevy, then sell it and buy the Valiant.  A huge amount of user innovation is going on.
Users’ language of inventorship seems to provide ways to claim continuing
community membership.
Case study: wheelchair development.  One company dominated the market; it had
patents that helped. In addition, as the patents began to expire, they began to
engage in anticompetitive practices such as deals w/foreign companies to prevent
imports. Same wheelchair cost $400 in US in 1975$, but cost $100 in England.
Worked with Medicare/VA to specify which chairs would be insurable, and those
just happened to be the Everest & Jennings chair and no others. Disabled
people begin to protest the increased prices and depressed innovation. Nader
& his raiders took on the company and began to publish findings. Eventually
Justice Dep’t began an antitrust case, which was settled in 1979. Almost
immediately the market expanded, though not a ton.  OTA in 1984 studied the market and found some
innovation but many of the new manufacturers suggested they were anxious about
producing new innovation b/c they were worried about products liability law if
they did more than tweak the Everest & Jennings chair.  Whether this is true or not, we see a claim
about innovation drivers.
VA/Medicare as buyer has other problems: if the buyer is not
the user, that skews things. VA/Medicare cared more about initial cost than total
operational costs, for example. Ralf Hotchkiss, wheelchair innovator, argued
against patents as inhibiting progress/access in the area.
Once wheelchairs spread, people start to notice that the
built environment is hostile to them and thus to their users. That changes the
site of innovation—from innovation at the individual/product level to
innovation at the environment level. Section 504 of the Rehabilitation Act of
1973 produces a civil rights/antidiscrimination approach that has a demand-forcing
effect, creating willingness to pay on the part of institutions.
Lessons: innovation regulation is really complicated; when
users aren’t purchasers, incentives can be skewed.
Grynberg: cognitive access?
A: deliberately focused so far on physical access.
Q: FDA piece should be a bigger part: there are regulations
for wheelchairs and for wheelchair accessories [shades of the phone and the
Hush-a-Phone].
Ebrahim: firms w/different strategies?
A: user innovation sometimes gets users to start
commercializing; sometimes firms buy out the innovation but sometimes they get
shut down.  Federal gov’t encouraged accessible
buses when GM wasn’t making accessible buses and had 85% market share.  GM just ran out the clock until Reagan took
over and kept its market share.
Q: each of these stories can be its own paper.
A: rather tell them together—focused on a product and wants
to tell the story of that product.  [The
recent book Temp by Louis Hyman is an
interesting example of how to bring together narrative threads in a really
productive way, though I’m not sure you could do exactly the same here.]
Privacy When Form Doesn’t Follow Function, Roger Ford
Design patent: for stuff that’s seen.  Taco Cabana: designs and shapes are
protectable if nonfunctional. Privacy law does something very different: “privacy
by design,” which is about process. Building privacy into design specs from the
beginning, to get better results. 
For physical design, people learn to infer functionality
from particular features, e.g., olive oil bottles are dark because the oil will
deteriorate in light otherwise, so dark bottles are likely to contain sensitive
liquids.  Things with multiple spikes on
them may dig down into dirt.  Security
cameras signal surveillance and thus send messages; even one-way mirrors affect
the design of space. Because companies know consumers make these inferences, online
they use those signals to send messages: e.g., the image of a padlock and a secure
website. But this signal is also manipulable b/c the connection b/t form and
function is not as tight.  Or phone apps
can track your movements without telling you that’s happening.  This will be a bigger problem over time.  Now there are padlocks that look like padlocks
but are run by software and not physical keys; consumers can be misled by the
form they recognize about how easy it is to open, so one of these broadcast its
key unencrypted and anyone with the right software could open it, while another
was secure at the software level but had screws that could simply be opened w/a
screwdriver.  22 services track you on
USA Today’s homepage, but nothing on the browser/URL line shows anything to
make you think that there’s anything other than a link b/t you and the USA Today
server.  
Williams Sonoma case: zip code as personally identifiable
information—that’s a legal rule designed to solve the mismatch b/t perception
and reality: the law is designed to deal w/the fact that retailers are asking
the info in a context that looks like it’s for security purposes but is really
for marketing purposes.  When Apple does
the same thing, though, the court said security is more important online so it’s
ok, without inquiring whether Apple was actually using the info for security or
marketing. Thus he thinks the courts/ regulators should look more at intentional
attempts to exploit consumer expectations.
Said: Compliance as a goal might be a different framing than
design: external constraints as something you better be designing towards. 
A: Compliance oriented might avoid unexpected problems but
doesn’t necessarily avoid expected problems—manipulation of what the consumer
would expect based on the design.

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