Rebecca Tushnet

court enjoins bar on “fake meat” labels; implications for FDA standards of identity?

Posted on December 16, 2019 by rtushnet

Turtle Island Foods SPC v. Soman, No. 4:19-cv-00514-KGB
(E.D. Ark. Dec. 11, 2019)

Unsurprisingly, the court here enjoins provisions of
Arkansas law that tried to restrict the use of “meat” terms for meatless
alternatives. The worrying part is that the breadth of the decision throws into
doubt FDA’s general ability to set standards of identity for food products,
though there are also ways to distinguish at least some of the reasoning. The big
looming issue, as with the skim milk case relied on by the court here, is what
should happen when consumers don’t actually understand the characteristics of
the food at issue: (how) can the government protect them from mistaken beliefs
that could harm them in those circumstances?
Where we think there’s a relatively robust consumer understanding, e.g.
that almond milk is not dairy milk, then perhaps we can be less worried—though I
will note that I haven’t seen good evidence about what consumers think about
the comparability between almond and dairy milk on measures of nutrition as
opposed to taste/function in a beverage.

Anyhow, plaintiff Tofurkey uses traditional meat-based terms
like “chorizo,” “ham roast,” and “hot dogs,” alongside qualifiers like “all
vegan,” “plant based,” “vegetarian,” and “veggie.” Tofurky alleged and the
court accepted that Tofurkey’s products “comply with federal food labeling
regulations as well as numerous state and federal laws that prohibit false and
deceptive labeling and marketing for food products and consumer products more
generally,” though see below for a possible qualification.

Arkansas law relevantly provides:

A person shall not misbrand or
misrepresent an agricultural product that is edible by humans, including
without limitation, by:. . .

(2) Selling
the agricultural product under the name of another food;. . .

(5) Representing
the agricultural product as a food for which a definition and standard of
identity has been provided by regulations under § 20-56-219 or by the Federal
Food, Drug, and Cosmetic Act, 21 U.S.C. § 301 et seq., as it existed on January
1, 2019, unless:

(A) The
agricultural product conforms to the definition and standard; and

(B) The
label of the agricultural product bears the name of the food specified in the
definition and standard and includes the common names of optional ingredients
other than spices, flavoring, and coloring present in the food as regulations
require;

(6) Representing
the agricultural product as meat or a meat product when the agricultural
product is not derived from harvested livestock, poultry, or cervids [a mammal
of the deer family];. . .

(8) Representing
the agricultural product as beef or a beef product when the agricultural
product is not derived from a domesticated bovine;

(9) Representing
the agricultural product as pork or a pork product when the agricultural
product is not derived from a domesticated swine;

(10) Utilizing a term that is the same as or similar to a term that
has been used or defined historically in reference to a specific agricultural
product. . . .

[As you can see, the successful as-applied challenge to (5)
does directly implicate FDA’s power, although there is no indication in this
record that FDA considers Tofurkey to be in violation.]

The stated legislative purpose of the law was to protect
consumers from being misled or confused by false or misleading labeling of
agricultural products that are edible by humans. As applied, it barred Tofurky from using
words like “meat,” “beef,” “chorizo,” “sausage,” and “roast” to describe its
plant-based meat products, since there was no exception for plant-based meat
producers that clearly identify their products as being vegetarian, vegan, or
made from plants. Each violation was punishable
by a civil penalty of up to $1,000. Although the relevant agency didn’t intend
to begin enforcement of the subsections challenged by Tofurky until this
dispute was resolved, the parties have not entered into a non-prosecution
agreement, and the State didn’t contend that Tofurky would not face retroactive
liability. Unsurprisingly, the court found that Tofurkey had standing and that
it should not abstain.

Tofurkey brought both facial and as-applied challenges;
facial challenges are hard to win, especially since the overbreadth doctrine
doesn’t apply to commercial speech. Thus, the court confined its analysis to Tofurkey’s
as-applied challenge.

On to Central Hudson: Arkansas argued that Tofurkey’s
labels were inherently misleading because they use the names and descriptors of
traditional meat items but do not actually include the product they invoke,
including terms like “chorizo,” “hot dogs,” “sausage,” and “ham roast.” Moreover,
Tofurky designs its food products to approximate the texture, flavor, and
appearance of meat derived from slaughtered animals, which would further the
misleadingness.

Tofurkey responded that words such as “meat,” “burger,” and
“steak” have been used for decades—and in some cases centuries—to describe
foods that are not made from slaughtered animals, and that its labels clearly
identified its products “all vegan,” “plant based,” “vegetarian,” “veggie,” and
“made with pasture raised plants” on the front of the packages. On this record, Tofurkey’s speech wasn’t
inherently misleading. “[T]he simple use of a word frequently used in relation
to animal-based meats does not make use of that word in a different context
inherently misleading,” especially given the label disclosures. For example,
the “Veggie Burger” label used “veggie” to motify “burger” and included the
words “all vegan” in the middle of the and “white quinoa” next to a picture of
the burger. Tofurky was likely to prevail on its argument that the labels’
repeated indications that its packages contain no animal-based meat dispelled
consumer confusion and rendered the speech not inherently misleading. “[T]his
is not a case of key information in minuscule type buried deep among many
ingredients.” Reasonable consumers would
not disregard all those other words, any more than they’d think that “flourless
chocolate cake contains flour, or that e-books are made out of paper.” Nor was there evidence that consumers or
potential consumers had been misled by the packaging, labeling, or marketing.

The court analogized to Ocheesee Creamery LLC v. Putnam, 851
F.3d 1228 (11th Cir. 2017), which helt that plaintiffs’ use of the term skim
milk wasn’t inherently misleading just because it conflicted with the State’s
definition of “skim milk,” according to which skim milk had to include
replenished vitamin A. While “[i]t is undoubtedly true that a state can propose
a definition for a given term …, it does not follow that once a state has done
so, any use of the term inconsistent with the state’s preferred definition is
inherently misleading.”

Because the speech wasn’t false or inherently misleading,
the court moved to the rest of Central Hudson’s test. The court assumed without deciding [!] that
the state had a substantial interest in “protect[ing] consumers from being
misled or confused by false or misleading labeling of agricultural products
that are edible by humans.” But the law
didn’t, as required, “directly and materially” advance that interest, because
Tofurkey’s speech was neither false nor misleading. And the challenged
provisions were likely “more extensive than necessary to serve the State’s
interest.” Although the state isn’t required to show that its restriction is
the least restrictive means possible, the “blanket” restriction in the Arkansas
law was “far more extensive than necessary, and Arkansas “disregard[ed] far
less restrictive and precise means” for achieving its stated purpose, such as
laws directed at prohibiting deceptive labeling and marketing of food products,
and consumer products more generally. “There also is no convincing argument as
to why each of these laws is ineffective at policing the alleged deceptive or
confusing practices the State purports to target.” In addition, if it was still
worried about “fake meat” in general, the state “could require more prominent
disclosures of the vegan nature of plant-based products, create a symbol to go
on the labeling and packaging of plant-based products indicating their vegan
composition, or require a disclaimer that the products do not contain meat.”

Because of this analysis, the court declined to consider
whether the real purpose of the law was to benefit the meat industry against a
competitor.

So, the court held that requiring
producers to comply with FDA standards of identity is unconstitutional without
evidence of producer deceptiveness (provision (5) of the challenged law). Suppose I want to put random red dye into my
food products and list it as FD&C Red Dye No. 3: it is beyond dispute that
the average consumer has no idea what’s in No. 3. Can there be any deception given that
incomprehension? Will courts accept the idea that the government can
legitimately bootstrap an understanding into existence? (E.g., I don’t know
what’s in Red Dye No. 3, but I believe that when Producer A uses the term it
will be identical to Producer B’s use, making variant uses deceptive.)

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Content Moderation in an Age of Extremes

Posted on December 10, 2019 by rtushnet

Belatedly, here is a link to the written version of a talk I gave last year, Content Moderation in an Age of Extremes, in which I note that the digital millennium lasted ten years, that strange apps handing out badges is no basis for a system of governance, and that it is hard to love in the time of content moderation.

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Court fixes mistake: Rogers applies to nonfiction titles

Posted on December 9, 2019 by rtushnet

IOW, LLC v. Breus, 2019 WL 6603948, No. CV18-1649-PHX-DGC
(D. Ariz. Dec. 2, 2019)

The court quite properly grants a motion for reconsideration
of part of its earlier
opinion, correctly applying Rogers v. Grimaldi/Empire to
protect the title of a nonfiction work.
Breus is a clinical psychologist, board certified in clinical psychology
and sleep disorders, who studies how his patients’ chronobiologies effect their
treatment, and has written extensively about chronobiology and circadian
rhythms. IOW claims rights in various “WHEN”-related marks; the issue here is Dr.
Breus’s third book, The Power of When; IOW claimed rights in that phrase.

Under Rogers, courts “apply the [Lanham] Act to an
expressive work only if the defendant’s use of the mark (1) is not artistically
relevant to the work or (2) explicitly misleads consumers as to the source or
the content of the work.” IOW argued
that The Power of When “is a non-fiction, self-help book that is not an
artistically expressive fictional work.” But nonfiction can be expressive.
Under Gordon v. Drape, an expressive work “evinces an intent to convey a
particularized message, and in the surrounding circumstances the likelihood was
great that the message would be understood by those who viewed it.” The Power
of When qualified. It discussed
“chronotypes” that supposedly explain when during the day it would be best to
tackle specific tasks, based on a person’s particular chronotype. “Given Dr. Breus’s creativity in developing
and expressing his theories, categorizing and naming the chronotypes, and
organizing the book, The Power of When is an expressive work worthy of First
Amendment protection.” The court explicitly recognized that Empire
rejected any requirement that an alleged mark have cultural significance before
Rogers could come into play.

So, was there “artistic relevance”? The level must merely be
nonzero. “The Power of When” [not the mark, but the phrase, despite some
confusion in the court’s discussion] was “certainly relevant” to the book. And was the use explicitly misleading? “The
Ninth Circuit has been clear that the use of a mark in the title of a work,
divorced from other explicitly misleading actions, is not enough to bar First
Amendment protection.” Plaintiffs
alleged that customers had been confused, and that one of IOM’s team members “immediately
contacted [an IOM principal] when she saw the book and asked if this was the
same ‘sleep doctor’ who [they] had been working with[.]” That showed only
confusion, not explicit misleadingness. “To be relevant, evidence must relate
to the nature of the behavior of the identifying material’s user, not the
impact of the use.” Without “an ‘explicit indication,’ ‘overt claim,’ or
‘explicit misstatement’ ” that The Power of When was affiliated with IOM, there
was no triable issue.

The court noted that defendants’ promotional activities for
the book were thus also protected by the First Amendment as an extension of
their protected use of the Power of When mark. The Ninth Circuit has held that
while “promotional efforts technically fall outside the title or body of an
expressive work, it requires only a minor logical extension of the reasoning of
Rogers to hold that works protected under its test may be advertised and
marketed by name.”

Rogers/Empire also applied to the Arizona
common law unfair competition claims.

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Touting a paid-for report as if it were independent could be false advertising; public webpage was “advertising”

Posted on December 9, 2019 by rtushnet

Pegasystems, Inc. v. Appian Corp., — F.Supp.3d —-, 2019
WL 6560120, No. 19-11461-PBS (D. Mass. Dec. 5, 3019)

Undisclosed sponsorship of a critical report from an
apparently neutral source leads to a Lanham Act/state false advertising claim,
which the court here refuses to dismiss. [Side note: I am unduly charmed by the
business name Pegasystems. Well done, namers!] Also, just as you don’t have to show how many people watched an ad on national TV to show that it was “commercial advertising or promotion,” so too with a public page on the advertiser’s own site.

In May 2019, defendant BPM.com published a report, “Market
Report: Analysis of Process Automation Investments and Total Cost of Ownership
(TCO): Appian, IBM, and Pega.” Those three compete to make “business process
management” software that helps create custom apps for business processes. BPM.com
holds itself out as “the leading destination for research, white papers and
community forums on BPM and process automation.” Appian commissioned BPM.com to
publish the accused report, though this wasn’t disclosed to the public, and
Appian highlighted the results on its website.

The Report provides its methodology on the first page: BPM.com
sent out an online survey and received 500 responses. It then “eliminated any
non-compliant entries, such as those from organizations deemed too small or
from firms engaged in the sale, development, or specific services involved with
this type of software.” It conducted follow up interviews to ensure that the
surveyed customers were “verified end user organizations,” leaving 104
“verified projects,” of which 17% used Appian and 10% used Pega. Omitting some
specifics, the Report concluded “Appian was distinguished as the clear leader”
based on its low total cost of ownership combined with faster time to market.

Appian’s website allowed users to get the report, which it
categorized as a “Whitepaper.” It summarized the Report as follows: “Through
approximately 500 responses, BPM.com found that on average: • Appian customers build complete enterprise solutions 5
times faster • Appian customers use 79% fewer resources • Appian has more than
2x customers who’ve reached ROI in 2 years.”
It also created a webpage, “Appian vs Pega: Discover Why Enterprises
Choose Appian,” with similar claims and linked to the report with a hyperlink
labeled “READ THE 2019 BPM.COM REPORT.”

Without deciding that Rule 9(b) applied to Lanham Act false
advertising claims, the court found that Rule 9(b) was satisfied.
Appian/BPM.com were the who; the survey results and associated statements were
the what; the Report/webpages were the where; and the when was “continuously.”

False advertising: Appian argued that Pega failed to plead
sufficient dissemination to be commercial advertising or promotion. Widening a smallish split on this issue—in
the right direction, I think—the court found that it was enough to “target a
class or category of purchasers or potential purchasers, not merely particular
individuals.” “When Appian posted the Report’s findings on its website, it ‘target[ed]
a class … of purchasers.’”

Falsity/misleadingness: There were two misrepresentations:
(1) failure to disclose the material relationship between Appian and BPM while presenting
the Report as a neutral “white paper”; (2) presenting results as market
averages without reflecting Pegasystems’ actual performance in the marketplace.
Appian argued that the Report disclosed its methodology and didn’t claim to
offer “generally applicable” comparisons between Pegasystems and Appian, thus
wasn’t false or misleading.

First, it was plausible that the omission of the
relationship between Appian and BPM.com rendered the representations in the
Report and on Appian’s website false or misleading. Even without an explicit
statement that the Report had been independently developed, that was the
necessary implication of the presentation. Appian identified BPM.com as the
Report’s author and then described BPM.com as “a leading market research
group.” BPM.com states in the Report that its purpose was to “understand how
automation software is being used.” “Nowhere in the Report or Appian’s
statements promoting it would a reader learn that Appian was involved in the
Report’s production — they would likely be left with the opposite impression.
The allegation that the Report and website, when viewed in their entirety, are
at the very least misleading is plausible because their description conveys
neutrality.”

In addition, it was plausible that Appian made a literally
false statement when it wrote that BPM.com reached the Report’s results “Through
approximately 500 responses.” Only 104 were verified and analyzed and, of
those, only 27% of respondents used either Pegasystems or Appian. The website claim
about sample size was literally false.

If this was just misleading, Pega would need to show that “a
substantial segment of [the Report’s] audience” was actually deceived. However,
a plaintiff does not need to “identify the particular consumer survey that will
be used to support its allegations to survive a motion to dismiss.” And it had
plausibly alleged actual confusion. It alleged that “[c]ustomers have informed
Pegasystems that Appian has distributed or drawn their attention to the Report.
These customers have been confused or deceived by the false and misleading
conclusions of the Report[.]” That was enough for Twiqbal.

Injury: Pegasystems alleged that defendants’ statements had
been disseminated to “major customers for which Appian and Pegasystems
compete,” representing “prospective revenue streams in the millions of
dollars.” It was plausible that an explicit unfavorable comparison between
Appian and Pegasystems was likely to divert those customers from Pegasystems to
Appian.

False advertising under Mass. Gen. Laws ch. 93A survived
too. Appian argued that the challenged conduct did not occur “primarily and
substantially” in Massachusetts, as required by state law. Appian argued that,
“where the relevant deceptive conduct involves communications between a
defendant and third parties, courts have said that the ‘center of gravity’ lies
in the state in which the communications occurred (i.e., were ‘published’).” This
was an issue not suited for resolution on a motion to dismiss. It was enoguh to
allege that the plaintiff was based in Massachusetts, the injury occurred in
Massachusetts, one of the defendants is in Massachusetts and another has an
office there, and the document at issue was created there.

However, the complaint didn’t state a claim for
Massachusetts common law false advertising or unfair competition. Common law
false advertising requires fraud upon which a plaintiff relied to its
detriment; Pega was the wrong plaintiff for that claim. Likewise, unfair
competition is about consumer confusion as to source, which wasn’t alleged
here.

Commercial disparagement/injurious falsehood claims survived,
even though commercial disparagement covers only falsity and not misleadingness
and also requires actual malice (but not that the statement be made in
commercial advertising/promotion). It
was plausible that there was falsity here. Although a representation in a study
is not false simply because the study’s “design … was flawed” where the
disputed “article plainly acknowledged possible flaws and limitations with the
methodology that was used” and the plaintiff did not allege that the author
“inaccurately interpreted or reported the collected data,” the situation was
different here. Pegasystems alleged that
BPM.com “manipulated its selection of responses and projects in order to create
a sample favorable to Appian and detrimental to Pegasystems.” If so, it was
reasonable to infer that the Report’s unfavorable statements about Pegasystems
were based on skewed or inaccurate data and so were false. That would also
satisfy the actual malice requirement.

Footnote: BPM.com might have separate defenses but did not
assert them here.

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do retailers proximately cause the harm of false advertising? [what about of TM infringement?]

Posted on December 5, 2019 by rtushnet

In Re Outlaw Laboratory, LP Litig., No. 18-cv-840-GPC-BGS, 2019
WL 6497883 (S.D. Cal. Dec. 3, 2019)

Outlaw is doing a pretty good job of establishing the previously
contestable—and inconsistent with trademark law—rule that retailers aren’t
liable for false advertising that appears on products they sell. One would
think at least secondary liability would be appropriate, but Outlaw’s strategy
has been to claim direct liability.

Outlaw, which makes sexual enhancement products, sued five
independent convenience and liquor stores in the San Diego area as well as one
local wholesaler, alleging a scheme to sell sexual enhancement pills, which
contain hidden prescription drugs, and which they market as “all natural,”
among other false advertisements including that the products contain “no
harmful synthetic chemicals,” “no prescription necessary,” and that the
products have limited side effects. The court answers no to the question “can a
local retail or wholesale store that sells another company’s product, without
independently advertising that product, be held liable under Lanham Act for any
false statements on the product’s packaging?”

Defendants continue to sell the accused products, which are displayed
on racks “at or near the checkout counter” without the use of additional,
in-store advertisements. The FDA has issued multiple notices warning that some
of the accused products contain hidden drugs, including sildenafil (a
prescription drug found in Viagra), desmethyl carbodenafil (an analogue of
sildenafil), dapoxetine (an anti-depressant drug), and tadalafil (a
prescription drug found in Cialis). However, there is no evidence that
defendants had “any role in formulating the challenged products or had any role
in drafting the language on their packaging.” [Why are they still selling these
products, given the risks to their customers?]

In a strategy that will be reminiscent of other plaintiffs
in IP cases, Outlaw’s demand letters warned recipients that they were “selling
illegal sexual enhancement drugs,” which “subject your company to legal action
for racketeering…under RICO (Racketeer Influenced Corrupt Organizations) and
the Federal Lanham Act” and obligate the recipients to pay to Outlaw “profits
from the sale of Illicit Products dating back four years,” “Attorney’s fees,”
“Punitive damages,” and “Triple damages.” The letters estimated the recipients’
liabilities at “over $100,000” but stated that Outlaw would “settle all claims
in exchange for a one-time settlement agreement of [$9,765, in the sample
demand letter] and your agreement to stop selling the Illicit Products.”

Some recipients acquiesced to the demand letter and settled
with Outlaw. Others didn’t settle but removed the products from their shelves. In the resulting lawsuits, Outlaw contended
that defendants’ sales “caused Plaintiff to lose opportunities to expand into
the male enhancement market, and fail to realize gains in sales.” A principal
indicated his belief that some of Outlaw’s customers now purchase defendants’
products, and that the general consumer has “no reason to purchase
[Plaintiff’s] products if they can easily purchase pharmaceuticals over the
counter.” There was no quantification of loss or identification of specific
customers.

The traditional Lanham Act defendant “is the entity or
person that makes the specific, false statements at issue in the litigation.” Retail
or wholesale stores are different, and “cannot be held liable…on allegations
that they displayed and sold [other companies’ products] in their stores.” “In
the same way that an internet platform is not responsible for the veracity of
vendors’ advertisements, a retail or wholesale store cannot be found liable for
false information appearing on the packages of the products that they sell.” The
store must actively “misrepresent[ ]” the products or make a “false or
misleading representation.”

Outlaw’s contrary cases were Gucci Am., Inc. v. Action
Activewear, Inc., 759 F. Supp. 1060, 1065 (S.D.N.Y. 1991), and Grant Airmass
Corp. v. Gaymar Indus., Inc., 645 F. Supp. 1507, 1511 (S.D.N.Y. 1986). But Gucci
was a trademark case, and Grant Airmass speaks of “knowingly cause[ing]
a false representation to be used in connection with goods and services in
commerce.” By contrast, defendants here didn’t “independently promulgate[] a
misrepresentation or false advertisement,” whereas in Grant Airmass the
defendant “distributed and presented in commerce the allegedly false report,”
assisted in the sales efforts, and promoted the product in speeches to staff,
customers, and third-party organizations.
[The conclusion would have to be that “distributing and presenting in
commerce” aren’t enough, at least without additional acts like arranging for
the initial printing of the report.]

There was no evidence of independent advertising; the photos
of the stores showed no ads by defendants.

Separately, Outlaw failed to show proximate causation of the
harm, because defendants didn’t create the enhancement products, design their
packages, or independently advertise the products. As a result, “it is
difficult to see how merely placing products on display and selling them
qualifies as conduct that caused Plaintiff’s injuries under Article III or the
Lanham Act.” [Hey, TM folks. Note that this conclusion should apply to
retailers of infringing goods even if the “commercial advertising or promotion”
reasoning doesn’t. How comfortable are
you with this reasoning for proximate harm causation?] The next language links the causation argument
back to direct misrepresentation, though: the injury has to be “traceable to
some conduct by the defendant which violates the Lanham Act,” which was not the
case here.

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Design Law Scholars Roundtable part 3

Posted on December 5, 2019 by rtushnet

Session 3: Shaping an Overall Approach to Protection

Introductions: Jerry Reichman and Estelle Derclaye

In what ways should different forms of protection be
tailored to various types of subject matter (construed legally as forms of
intellectual property, but also subject matter construed socially or
commercially)? How, if at all, should we deal with concerns about
overlap/cumulation of rights? Should the current procedures and institutions
for granting and challenging the validity of rights be changed? Should we
channel subject matter to certain forms of protection? If so, how should we
draw the lines between different subject matter? Should we limit the scope of
different rights so that those rights have different effects? Provide for
different remedies?

Reichman: battle on concurrent protection has been won by
France. Italy abandoned separability, which we adopted. If courts take
conceptual separability seriously, it becomes the German test in disguise—but
even the German court has now abandoned a test of superior creativity, so
there’s only one test of originality in German law, which doesn’t require superior
creativity. From a legal perspective,
concurrent protection is the de facto norm in EU law.

That said, he doubts that this is as important result as it
seemed a decade ago. Because today, industrial designers are more inclined to
seek unending TM protection. Even © protection remains iffy where form and
function are fully integrated. In his view, role of sui generis design law
today is to allow designs to acquire secondary meaning through use. When that
demonstrably occurs, then the design can be protected indefinitely. The most
ingenious pro design legislation anywhere is the EU regime of unfair competition
law, prohibiting slavish imitation of unregistered designs for 3 years.
Brilliant b/c in fast moving markets a successful design may acquire secondary
meaning in 3 years; TM then takes over. Or it may have little/no further value
on the market, in which case neither design nor © is of interest to investors.

That isn’t to say sui generis laws are useless, but they
should be simple, easy to use, and inexpensive. To his mind, the best sui
generis law was the PTO/© office proposal of the 1970s, attached to the draft
act as Title II, but separated from the 1976 Act at the last minute on the
grounds that it was anticompetitive. We
are stuck with design patent law, which expressly requires novelty,
originality, though not nonobviousness and which is thus not fine under TRIPs.
Courts in England and elsewhere have managed to complicate design laws so much
that it no longer looks a ton better than our design patent scheme, but he
still doesn’t know why we haven’t been sued.

Separability has become a farce in ©. Imagined separability boggles the mind as
framed in Star Athletica. The opinion is so meaningless as to require
Denicola to make sense of it. Still a blemish on our law, b/c we exclude a
bunch of designs from © and send them to design patent, but many can’t get
design patents, which thus violates TRIPS.
Enacting a 3 year law as Title II might be the best option, even 50
years late. That would stimulate our
design industries further.

Estelle Derclaye: Overlaps are not bad per se. If there are
different purposes, they are acceptable. Cumulating damages for the same
infringement is an issue where the harm is exactly the same. © protection can
be anticompetitive, where © extends (or is attempted to be used) where patent
should be. E.g., you use the contract for software that you can offer b/c of ©
to bar the extraction of ideas from the program. Or use of TM to extend a patent. Or overlap
during same protection where the exceptions/scope of the regimes differ.
TM/patent/design interface for shapes and other characteristics giving
substantial value to the goods. Several ECJ cases have interpreted. Q: does the
same demarcation apply to ©? She thinks it should. Not clear whether there is
negative convergence such that only patents can protect these shapes solely
dictated by function.

Designer’s option to register design to cumulate: getting
rid of community unregistered design right. That happened in UK, 2014 with its
own design right—trying to minimize regime clashes. But if you do that at, you
need a system which has a very well crafted registered design system. If you
have a patent or © approach for registered designs you’ll have cycles of over
and underprotection. A design approach
has to be neither © nor patent; EU is a good starting point.

Building on Ansgar
Ohly’s proposal: need a rule for how you cumulate, including w/unfair
competition. Imitation alone shouldn’t be banned w/o confusion as a cause of
action under unfair competition.

Remedies: courts should consider the underlying nature of
the harm and identify the remedy best designed to ameliorate that harm.

Sarah Burstein: Reichman is worried that designs can’t
satisfy nonobviousness—but the Federal Circuit has removed constraints.

Reichman: the Fed Cir has improved it; but still,
nonobviousness means that people don’t apply—the lawyers tell the designer
there’s no chance. [A lawyer who did
that now might arguably be committing malpractice.] Pre Fed Cir, almost all
design patents were invalid. With the
Fed Cir, the design patent system works. But even with a flexible
nonobviousness standard, you’re not going to get much protection.

Burstein: the lawyers I talk to don’t consider 102 or 103 a
serious bar and don’t counsel their clients that way. Not today. We know empirically
that the number that are rejected is very low. The Fed Cir has made the test
for hard to satisfy that rejection for obviousness is essentially impossible.

Sprigman: Examiners also don’t have the way to examine they
need. Went through design patents for yoga wear. They didn’t even make a
nonobviousness inquiry

Burstein: they don’t have the prior art. The examiners try,
but it’s stacked against them.

Dinwoodie: state of law or practice?

Sprigman: both! The standard requires examiners to do something
they’re not equipped to do.

McKenna: b/c nonobviousness is incoherent for design, the
Fed Cir has made the standard impossible.

Sprigman: racerback bras: multiple variants have been
granted based on narrowness/length of straps.

McKenna: agree not a meaningful bar, but trying to craft a
workable standard.

Buccafusco: drop the word, but consider the concept: a judgment
of similarity at some level of abstraction. No different from
idea/expression. So far, there has been
virtually no abstraction at all; just a little bit of difference is enough.

Dinwoodie: every design system has a question like this: how
much difference does there have to be? Reichman argued that utility patent
obviousness didn’t work in a system that regarded incremental innovation as its
object (design), but the framing: how different does this have to be to give
you an IP right? Is a workable framing.

Sprigman: racerback bra straps—length and thickness would be
normal variations. Two criss cross straps, you can patent three. That’s a
problem.

Jason Du Mont: isn’t that just formalism problems? The formalist test restricts examiners from
using primary or secondary references in a way that would take that into
account.

Dinwoodie: so would Reichman abolish design patents in favor
of Title II design right?

Reichman: yes, replacing it w/© like regime. If Burstein is
right [she is], then they’re no longer applying utility patent standard, which
is what they wanted from design right. Is that enough to satisfy TRIPs? He doubts it.
TRIPs reaffirmed the Paris Convention; a foreigner who doesn’t get a
design patent because of obviousness should object.

Sprigman: the standard probably fits now; there was
convergence.

Dinwoodie: for that regime to work, separability must work
robustly. 1980-2015 law was largely pushing stuff out of © is the other part of
the puzzle.

Reichman: agrees. © office knew what it was doing with
separability, but at that time separability was supposed to (a) be tough and
(b) coexist with a design right.

Dinwoodie: Derclaye seems to want British law before we were
forced to change. If you took a design that has © and apply it industrially, we
then restricted your © to the scope of registered design. Utterly compliant w/EU law but British IPO
decided it wasn’t and abolished it.
Another provision of the law prohibited rights in the article via
drawing of article; if you want that do you want unregistered design right
abolished?

Derclaye: should abolish the Community unregistered design
right b/c © does the trick. If you keep UK unregistered design right, the
prohibition on getting rights in the thing from drawing of the thing is also
good. Would change to election of remedies by choosing to make industrial use
of a work. So you could use © without knowing you want design right, cumulation
would be no problem, it would just limit the remedies/term you could get if you
used © to protect what was actually an industrial design.

Buccafusco: Canada’s law is based on the old UK system. If
you make more than 50 copies you have to switch to design right.

Ansgar Ohly: © and design law: Europe is a laboratory with
all the possibilities that could exist—we’ve had separability, we’ve had 25 years
for industrial application, we’ve had two different levels of originality (higher
for ©, lower for design—need to meet a “museum test” for a design to get ©
protection). Now we have no idea: open Q whether French have won full
cumulation or what the judgment means when it says there shouldn’t be a full
overlap b/t design and ©, without providing any criteria for avoiding full
overlap.

We find separability problematic—do you know what it is?

Designs and TM overlap: Article 4(e) says when a shape gives
substantial value to the goods, you can’t register the TM, even w/secondary
meaning. So what does that mean?

Dinwoodie: substantial value is unclear in meaning to him.
British courts may think that if it is capable of being registered as a design
then it has substantial value. That
would really exclude all shapes from TM.

Ohly: ECJ gave some criteria about design attractiveness: to
what extent are features highlighted in advertising, and so on. But when a
design becomes really well known as good, then it acquires secondary meaning
and also may give substantial value to the goods.

Dinwoodie: there’s a gap between recognition and iconicness
which isn’t quite recognized.

McKenna: but being recognized as a design is not the
same thing as having secondary meaning.

Ohly: but they overlap.

McKenna: no, they really don’t. Most widely recognized designs don’t have
secondary meaning in the TM sense.
(Statue of Liberty, anyone?)

Dinwoodie: there is opportunistic framing by litigants, and
the circumstantial evidence usually used might indicate both.

Du Mont: that’s the marketing function. We might not like
that concept, but that was what they were trying to put their finger on: the
difference b/t differentiation and secondary meaning.

McKenna: it’s entirely possible to be widely recognized as a
design but not say anything about source as such. Eames chair: Eames designed
it, but it doesn’t tell you all designs come from one source. But b/c we have
such bad proof systems for secondary meaning they do overlap.

Burstein: Dastar.

McKenna: Yes! Being recognizable as a work of design isn’t the
same thing as source.

Ed Lee: what we would do if starting from scratch for
design: the system we currently have is odd and irrational to have overlapping
forms of IP. Public interchangeably uses patent, copyright, and TM, and
apparently so does design even though there are important distinctions we
should be using. Traffix/Dastar type system to navigate the overlaps?
Functionality tests are different. Remedies are also different: seems like you
could elect statutory damages for © and disgorgement of all profits for design
patent in the same case, even though you couldn’t otherwise get two forms of
damages for the same conduct.

McKenna: remedies are very important: people who bring trade
dress/design patent claims say that they want injunctions and damages, and TM
makes injunction easier and design patents make damages easier, so it’s the
best of both worlds for them. The Frankenstein monster system we have now is
the result of many different forces. A lot of the overlaps are the result of
deliberate attempts to expand certain types of subject matter b/c of perceived
sense that other systems didn’t reach them—we have design patent b/c © and TM
didn’t protect them, but then people tried to expand © and TM b/c perceived
design patent didn’t protect them, and it worked. We have post-sale confusion
b/c fashion is supposedly not protected.
That’s a different problem from the natural internal logic of a system
inherently producing overlaps; the internal logic of the system is changed to
make it look like a natural outgrowth but these were engineered overlaps. That has ancillary effects on the operation
of those systems in their traditional domains: manipulating TM so it can cover
product configuration changes your understanding of what source identification
is, what confusion is, etc. So we should ask how much damage we’re doing to the
internal system in order to reach this area of overlap.

What are the practical solutions? Creating doctrines to
police boundaries; that can be done different ways. Can exclude stuff from the
system entirely (Dastar). We were stupid to incorporate product configuration
into TM in the first place and have created all these doctrines to deal with
the effects.

A sui generis system works only if you can identify its
coverage in a reasonably clean way and exclude its subject matter from
other systems. The concepts have gotten
blurred since Title II was on the table. Maybe this should be about “design of
certain stuff” and not just “design.”

The linedrawing difficulty wasn’t inevitable outgrowth of
the internal norms of each system, and we could productively rethink each core
system.

Ohly: can the legislature anticipate these strategic moves?
The EU unregistered design right was supposed to avoid that.

Sprigman: the antitrust division of DOJ really didn’t like
Title II. There is no evidence that these industrial designs need
encouragement.

Felicia Caponigri: the leading case for fashion © in Italy
was a case about moon boots; the reason court abandons the separability test is
that it evaluates how iconic the design is and how it changed the evolution of
the boot historically and culturally. Not saying this is correct, but when we
think about overlapping rights, we may have to consider whether there are other
areas of law that may be also affecting the definitions in IP law. Cultural
heritage law, GIs, concepts of authentic/not authentic may be affecting ideas
of copyrightability and nonobviousness. Expand horizons to other regimes.

Laura Heymann: courts are motivated by the sense that new
subject matter should be in the regime.
Post-sale confusion (e.g. for Ferrari kit cars) is invented b/c courts
think this should be protected, and they don’t yet have dilution. And
then we get dilution formally later. There’s a sense that this is the right
thing for the subject matter—how to address that.

Caponigri: the Ferrari, subject of the post-sale confusion
case mentioned, was recognized as subject to © in Italy this last year.

McKenna: agrees too. If the D feels like a bad guy, the court
may try to reconfigure the doctrine to get it. But that’s not the same thing as
a straightforward application of the internal logic of the system.

Derclaye: the EC was trying to address the overlap b/t
regimes with the unregistered design right, but naively thought that therefore
© wouldn’t be used by designers any more.
In France, they are winning the most on different bases (unfair
competition, TM, ©). Good intention, but left open the copyright/design
interface and thus ensured cumulation.
Negative convergence for shapes solely dictated by function (if no mess
is made by © reasoning in CJEU case on Brompton Bicycle) could do the trick.

Dinwoodie: the problem isn’t the Commission, the problem is
the Court. The Commission left it open for Germany and the UK to do what they
did.

Derclaye: well, they left it open for cumulation assuming that © would not be
used. Naïve.

Buccafusco: we could do simple things to make design patents
better: they could cost more; they could have renewals. But we might therefore
push people into trying to use TM/© in scarier ways. Trade dress cases over expired design
patents: if we want Traffix for design patents, that’s great, but may also
further push people into using other areas of the law. Maybe we should treat design patents as not
that scary, even though they are silly, compared to the other fields.

Burstein: will the line hold? Design law as safety valve.
But it’s not clear that works—Europe seems to suggest not. In litigation: if people think there are
multiple claims, they are more likely to find liability.

Lee: it also matters that you get to go to the Fed Cir if
you stick a design patent claim in.

McKenna: presence of multiple claims may let the courts
approach the case in broader terms—may let you get away with weaker claims on
each individual cause of action. Intent evidence may contaminate similarity
analysis for design patent.

If you accept that courts in many of these cases that courts
have a protective instinct, the most useful intervention may be to remind them
that some other right is available. You don’t have to screw up TM law to get
this; they can get a design patent. That’s one reason that destroying unfair
competition as a separate doctrine has been bad: the existence of a lesser
remedy was a safety valve to prevent TM from expanding. Booking.com: generic
terms can be generic and there can still be a very limited remedy for passing
off (Blinded Veterans). Reminding courts that just b/c the structure of a
doctrine doesn’t cover conduct doesn’t mean that other doctrines don’t exist.
Copyright expires for a reason.

Sprigman: but the grass is always greener for doctrines you
don’t know as much about. Depends a lot on the structure of unfair competition
law. Antitrust law is one thing, but
letting plaintiffs’ lawyers have free rein over unfair competition is also a
problem.

Stacey Dogan: there’s nothing self contained about unfair
competition law. To say it’s limited to passing off is descriptive, not
normative. The impulse to have unfair
competition is itself normative, but the constraints on it (remedy is labeling
only) are descriptive.

Mid-point discussants: Rebecca Tushnet

Balloon problem/grass is always greener problem: there is a
rule about defamation that is a channeling device and it works a ton better
than the IP channeling doctrines. If you
relabel your defamation cause of action—if the gravamen of your claim is for
damage to your reputation, whether you call it intentional infliction of
emotional distress or tortious interference with contractual relations or even
trespass by deception—you have to meet defamation standards. Smithfield Foods, Inc. v. United Food and
Commercial Workers Int’l Union, 585 F. Supp. 2d 815, 820-21 (E.D. Va. 2008)
(“[I]f a plaintiff seeks damages which are ‘reputational’ in nature,
constitutional libel standards (i.e., falsity and actual malice) apply to the
plaintiff’s damage claims. To allow otherwise would be to countenance ‘an
end-run around First Amendment strictures.’ . . . [T]he label of the claim is
not dispositive ….”). (TM is an exception to this b/c no one knows what
goodwill means, but it’s only a partial exception given the limits TM law has
placed on suing over criticism.)

We have a better idea of what defamation is for than what ©
is for, and US courts are strongly committed to a distinctive First Amendment
tradition, so there’s definitely no slam dunk in making this difference stick. (But
… if courts start to distrust causes of action, they can be pretty rigorous.
Antitrust, RICO, even some TM claims.) If
you are really committed to what these doctrines are for, you can channel. But
without consensus you can’t.

Carol Rose: Crystals and mud
as a useful framing device? Bad guys and
sad sacks drive the change in focus of the law.
But we are at different points in the “cleaning up the mud” phases in different
fields—©, TM, design patent. This
ensures that no crystalline rule can ever get established successfully.

The centrality of functionality: Star Athletica and
functionality as the remaining limit. The potential dangers of saying it allows
protection of functional elements (e.g. Buccafusco Lemley Masur piece): compare
to the dangers of saying fair use is unpredictable. Courts may be able to do a
lot with de facto and de jure functionality as in TM.

Relation b/t costly
screens and biased screens in assigning the right in the first place: if
there are thresholds, who will pass them (even assuming they have the money,
which is also biased)? We have to understand that screens will
disproportionately burden disadvantaged groups, although it’s also true that
courts won’t be better.

Jason Du Mont: Might be ok w/a different functionality rule
for design patent. Thinks of design patent as a baseline: if an innovation is
going to go anywhere, it ought to be there unless it makes it into utility
patent (or is in the public domain). Overlaps aren’t a problem in themselves.
They tend to be problems of TM or ©. History of design rights in the US: a pure gap
filler, which was in the design patent system b/c Congress just listed topics
with no conceptual coherence.

Registration systems: might require greater specificity. The
Star Athletica © registration, for example, should have been better nailed
down. That could contribute to resolving cases earlier. Not sure how to make
that work in TM w/o getting rid of unfair competition.

McKenna: de facto/de jure functionality is not a strong
distinction.

Buccafusco: that still means expensive fights about what is
protectable and what is excluded. Everything is protectable and it’s about
scope and it may all have to go to a jury.

Du Mont: © office has started rejecting things for
originality.

Fromer: that’s mostly for logos—channeling to TM.

Du Mont: also rejected a float in the shape of a piece of
pizza.

Dinwoodie: de facto/de jure could be used in interpretation
of separability; could also be put into originality and idea/expression—102(b).
Or are you suggesting a freestanding functionality doctrine? If we want a transubstantive
functionality doctrine it might make more sense to do it freestanding.

RT: yes, could do it as a matter of 102(b) (facts aren’t
listed in 102(b) but we screen them out anyway).

Derclaye: that’s what we do in EU.

RT: and these decisions are always made in context of a
defendant who has done something: have they taken something copyrightable? So
there will always be a comparison and functionality can be part of that.

Q: would aesthetic functionality count?

RT: yes.

McKenna: Fromer has made the point that courts have never
taken seriously the Q of whether the intrinsic function of the article is
anything other than to portray its own appearance/convey information—it’s very
broad. Discussion: There’s very little
case law playing with aesthetic functionality and whether it counts as
functionality in © (in © it can get deemed merger, scenes a faire, etc.).

Reaching consensus on the meaning of functionality is one
thing; operationalizing it is another. Features are going to be aesthetic and
functional at the same time. The question is where along that curve it has to
be. TM says: if a drop of function, it’s out. Design patent: a drop of
aesthetics, it’s in. Could have the same question about what function is and
different places on the curve.

If you think of functionality as alternative designs
available in the market, there’s no reason to distinguish utilitarian from
aesthetic functionality.

Buccafusco: the amount we are scared of functionality has to
do with the limiting functions of other doctrines in the field. Functionality in ©, which is long and has
limiting doctrines like merger, idea/expression, raises different issues. [Note
that TM cases do say you can’t protect an idea with TM, though conceptually
that puts the cart before the horse.]

Caponigri: aesthetic functionality as a protection against
speech restrictions? People use these for communication.

Dinwoodie: Kalpakian says idea/expression protects freedom
to compete, so it’s not hard to locate functionality concepts in ©.

Buccafusco: design patent cases essentially have
idea/expression already: Richardson tool case; Ethicon. Without saying so, the courts are saying that
the design patent doesn’t protect the concept. Very narrow level of
specificity.

Du Mont: push back a little: factoring things out is
problematic.

RT: but substantial similarity is the exact same difficulty.

Du Mont: EU also does that with considering designer’s
degree of freedom.

Burstein: Egyptian Goddess actually does a good job of that.

Buccafusco: we don’t necessarily know what’s going on in the
field. But design patent data is available. One of the things we should be
doing is figuring out what we’d like to know about, e.g., design patent
citations.

Burstein: the prior art citation is very bad; they cite URLs
that then disappear.

Heymann: we also don’t know what’s happening in C&D
world. Rules that change the effect of what people do before they get to court
are more important.

Fromer: even w/registered TMs, it’s really hard to figure
out what’s registered—how much on the register is trade dress? The coding is
really bad! They don’t care about data consistency, maintenance, etc. We need
to push them to code consistently and keep data.

McKenna: we’re asking for data about categories that have
only recently been enforced on the law: trade dress as an ontological category
is new and undefined—it’s all just stuff that wasn’t a TM, so there was no
reason to distinguish packaging from configuration etc. The registration system
reflects that—“trade dress” or even “configuration” is a recent phenomenon.

Dastar is a rule about channeling. Defamation is channeling
based on the nature of the harm the plaintiff is claiming the defendant
inflicted. Most IP channeling rules
aren’t like that. Dastar is an opening for that kind of channeling: if the
nature of the harm you’re claiming is that people will attribute authorship of
the content to the plaintiff, then that’s a © and © only issue. Would it be
easier to configure rules around what the injury claimed is?

Dinwoodie: as RT says, the problem is that we need a
coherent concept of the harm.

Heymann: misuse is a group of cases geared at the same kind
of thing: you’re trying to enforce your © in a way that © is not for.

Mark Janis: note that the rhetoric of dilution crept into
the Apple v. Samsung case—that’s not the kind of harm design patent is for.

McKenna: there was a dilution claim there too, and that may
have contaminated the reasoning.

Burstein: that was also about gaming remedies; claiming they
needed an injunction for the brand.

Du Mont: is it really a legit purpose of design patent law
to let people acquire brand value?

McKenna: no! Deeper
Q: is the sharpness of the defamation rule coming from the fact that we really
understand the harm of defamation and so can recognize a defamation claim
whatever its label?

Dinwoodie: we can do better than subject matter channeling,
but with less consensus on purposes of IP it will be difficult to get as clear
as the defamation rule.

Caponigri: Is the harm of © infringement that there was harm
to incentives, or is it a more Abraham Drassinower like theory of harm to
expressive interests?

Burstein: SCt has said it doesn’t care about overlapping
subject matter.

Sprigman: so shallow: how is design patent different subject
matter than trade dress?

Dinwoodie: Kohler v. Moen says there’s a difference b/t an
invention (faucet) and a sign (faucet).

RT: incentivizing different things/preventing consumer
confusion as the cores of patent & ©/TM respectively?

Discussion about how this is a tough and abstact line to
draw, and also law & econ has contaminated the idea of incentives. RT:
thinks the Trademark Cases are nonetheless good law.

Future directions:

Dinwoodie: the role of transubstantive rules (the flip side
of cumulation). Some of us think there are values to that, but we might think
about the merits of such rules and design is a good vehicle for that Q
generally.

Fromer: the extent to which we use the same terms
differently in different fields—Burstein’s faux amis.

Derclaye: Overlaps and remedies.

Sprigman: Unfair competition as safety valve. Specify
doctrinal soft spots of each IP facets that could be eliminated in favor of a
meaningful unfair competition approach, e.g. post-sale confusion. Catalog where
unfair competition could be useful in solving/reducing overlap problems. There
was a theory of unfair competition once upon a time; could that be recovered?

McKenna: people use IP claims to complain their markets have
been disrupted; they also sometimes use antitrust or other business torts. Many
of those state tort doctrines have recognized the soullessness of those
doctrines and built protective doctrines: you can’t bring a claim for tortious
interference w/o identifying a separately tortious act—you can’t just show
competition. It’s not recovering the theory, but recognizing that we lost a
useful tool and reconstructing it for current purposes.

Sprigman: antitrust’s standing/injury doctrines are meant to
do that. It puts the plaintiff to an early showing that injury is w/in the zone
of interests.

Dinwoodie: Lexmark as innovation towards a similar thing?

RT: Courts let TM claimants get away with standing/injury
very easily [b/c we don’t know what goodwill is].

Buccafusco: should think of other areas of law that shape
product design: disability law, transportation law, environmental law, etc.

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Design Law Scholars Roundtable part 2

Posted on December 5, 2019 by rtushnet

Session 2: Legal Protection for Design

Introduction: Chris Sprigman: what kinds of protection should
be available depends on what the justifications for protection are. Incentives:
requires us to ask about motivations of designers, the companies that employ
them. Design of jet engines may not work the same as design of soda cans—worse than
in ©, even. What are the fixed costs of design? Are they the kinds of costs
that require longer term exclusivity to provide? There are some where the fixed
costs are very low—where form and function are intertwined, we might want a
first to market advantage. Ease of copying also matters; it’s not always easy
to copy a visual appearance. E.g., car bodies; design patent and trade dress
are available on the margins, but mostly not. There is some copying—trunk hump
on BMW—but it’s relatively rare to copy car bodies. It’s not technical
difficulty but they’re difficult to copy from a marketing perspective. Brands develop
a brand specific design vocabulary; copying interferes with that message.

Fashion: first mover + TM protection for brand name is
arguably sufficient b/c of ephemerality of designs. Another justification for
protection: source identification. But that works against an argument that we
should protect design through incentives. Relatedly: is a design an adjunct to
a good, or a secondary good? E.g., a design of a computer may help, but the
computer is also separately functional. The expenses of design may be defrayed
by differentiating through actual functionality. Another factor: competition.
Need some normative judgment about how much differentiation through design is
enough or too much. Design used to extend period of monopolistic competition
instead of ordinary competition, which is at least ambiguous in overall social
effects.

Desert/natural rights arguments: labor/personality theory.
Labor/desert arguments are complicated in design b/c design doesn’t involve
rival goods/deprivation of the original creator’s physical outputs. Turns back
into a question of incentives. Personality theory is even more confusing for
design. Why mark artists out for their production as opposed to plumbers or
surgeons? Surgical scars can be well/elegantly done, but we don’t treat that as
an artistic claim. As producers of knowledge we tend to be more sympathetic to
producers of knowledge, but most donuts are better than most poems. He can see
the claim that a book reflects a person’s personality, but a computer screen
design doesn’t speak in the way that a person does. It doesn’t express Jony Ives’s
personality other than to tell you that he likes modernist design, as many
people do.

Authenticity and narrative: a S. German furniture co. called
Vitra, which has registered and litigated over a lot of IP; people go to jail
in Europe regularly for trafficking in midcentury modern American furniture,
where there are limited/no (what he calls bullshit) US rights. Two stories about what it is doing: the
obvious, ominous story—Vitra is just limiting competition, and the EU IP system
lacks adequate screens. Design patents ran out but it claims ©, to which
European © is open. Spurious claim to stewardship of these designs to exclude
others from competition. Less ominous story: Vitra is engaged in a very
deliberate propaganda campaign: an attempt to convince. Of what? They call designers authors. Eames was an
author! And we are the heirs to these authors’ estates in Europe. And these
authors created what they created in a specific cultural context; an Eames
chair has a backstory and a story about its cultural significance over time,
and the kinds of architecture, paintings, carpets, music, that are associated
with these chairs. What does that narrative try to do? It tries to change the
nature of the good from an object to a story w/historical significance. They
raise the price, eliminate competition, cut people out, transfer consumer surplus
to themselves—but they are also giving something to people who can
afford the chair: a chair with more narrative and thus more market value. Those
w/o the money can’t experience the narrative instilled in the object. Is that
socially good or bad? We need to balance what’s given and taken away.

GIs are the same thing; terroir is empirically nonexistent, but
it’s a story of creating meaning in people’s heads. True of drinking Coke; true
of luxury goods? Some counterfeits are close copies that will confuse, and
there’s a straightforward story about those, but some counterfeits are very
distinguishable and the theory of confusion, even post-sale confusion causing
harm, is very weak. What we’re worried about there is inauthenticity—weakening of
the narrative. Related to Barton Beebe’s observations about the sumptuary code,
but it’s not directly about class but about control over the message (though it
may cash out as class).

Laura Heymann: SignificantObjects.com—origin stories written
by well known authors for store bought items; sold for $8000 when bought for
$1.25 because of the stories associated with those specific iterations.

Mark Janis: Eligibility provisions: there’s a history of ex
ante detailed legislative specification of product categories, and a second
more abstract approach that uses the word “design” and throws in something
about functional characteristics. Legislative categories approach: on the extreme
edge, regimes specific to one particular product class, like Vessel Hull
protection. Calico Printers act, and ribbon patterns, and lacework patterns—protection
both sought and derided at the time. Vessel hull protection can be understood against
background of © act and recent proposals for fashion design, which sought to provide
a list—clothing, wallets, belts, eyeglass frames, but not shoes or backpacks.
Clumsy way of conceiving design legally. First US design patent legislation:
category-specific eligibility, some broad and some narrow: wool/silk/cotton
fabric; bas relief or statute; and on.

Questions: These categories seem purely reactive to
technological developments affecting ease of creating and copying designs, for
example in the cast iron stove industry. Reactive to lobbying pressure from
manufacturing interests. Started out planning to say that these lists are
incoherent, but then there’s a certain kind of interpretive coherence traded
off with other things—it’s perfectly coherent to track the categories that the British
protected, as we did. Should we care about reactivity, or strive for a
proactive legislative conception of what designs are in what regimes?

These are cumbersome—require response to shifts in tech, and
require litigation over gaps in the list—are backpacks fashion design? Should
we say we’d rather have ex ante thinking about these definitions and a
legislative approach that limits discretion or leave it to common law?

Most modern regimes are more abstract: ornamental design for
an article of manufacture, in the US; Community Design is a little less
abstract but similar. These regimes
place substantial pressure on articulation of central characteristics—ornamentality,
functionality, separability for ©. Burden falls on agencies and courts. Is
there a false perception of coherence here? A risk of lost meaning? Design
patent provision wasn’t written out of whole cloth, but derived from past
practice including past categories. Thus, PMEP says design means configuration,
ornamentation, or combinations thereof; would we get that definition w/o
knowledge of past practices?

Initially thought maybe we shouldn’t try to define design at
all, but compare utility patent law. It’s based on the concept of an invention,
but not much work is done in defining “invention.” There are statutory
definitions in the AIA/Patent Act but they’re recursive/very broad. Defines the act of inventing in the service
of rules of ownership, and that has relevance to design law. If design is
concept than identity of designer is up for grabs. Similarly, priority of
rights requires you to know when the design occurred. Finally, has mostly
discussed eligibility, but eligibility considerations are intertwined with
considerations of scope, and major fights in utility patent recently have been
whether to do primary work in defining eligible subject matter or to do most of
the screening work through doctrines of prior art and scope. Are we at the beginning
of a similar debate in design patent in thinking about what constitutes a
design/article of manufacture, which might be close to questions of
nonobviousness in design/infringement.

Ansgar Ohly: EU design law is based on academics working at
Max Planck. Child of its time: the mainstream in academia was to increase IP
protection because there was a generation who grew up in a world with big gaps
in IP protection. Very little discussion of justification, only gaps in present
system/what designers need for adequacy, but not justification in the sense we’ve
been talking about. Design approach: sui generis. Design has a marketing function, not just an
aesthetic function. Reflects difficulty
of locating design in IP system: beauty and functionality, © and patent, and
also communication, TM. Why not just use those 3 systems? Supposedly to avoid
overstretching those systems and unfair competition law. Low level of
originality; many of these creations are obvious from utility patent standpoint,
but making everyday things a little nicer or more functional is a different thing.
And unfair competition law: if there was no design law, there’d be the urge to
apply misappropriation.

Formal requirements: no substantive examination in EU law,
and unregistered community design grants three years’ protection and only
against copying. This was done for the fashion industry that didn’t want to wait
for a registration. Two-tier system has a lot to be said for it: longer and
stronger w/registration, shorter and weaker w/o. That might even be good for ©
if we didn’t have Berne.

But it hasn’t kept its promise in practice. There isn’t as
much litigation as one might expect for unregistered community design, probably
b/c the alternatives are too attractive—© in France/Benelux, with life + 70. In
Germany, Austria, Denmark, Poland, unfair competition is attractive. So one
problem is that there is no election/exclusion rule. Question: is there a case
for unregistered protection of design? Should these cases go to © or should we
cabin it and make it shorter?

Substantive requirements: in Europe, partly similar to the
US and partly different. Has to be
appearance; no standard of nonobviousness but rather individuality—a different
overall appearance from the perspective of informed user. Not terribly
demanding. Even small differences will be enough, as with Apple/Samsung: little
bits of the iPad are registrable. But scope is correspondingly small; Apple
lost against Samsung in EU b/c overall impression was so different that it got
out of Apple’s narrow scope. You might criticize this. Recommended paper: We Wanted
More Arne Jacobsen Chairs But All We Got Was Boxes – Experiences from the
Protection of Designs in Scandinavia from 1970 Till the Directive, Focuses
on Danish law but could be said of Europe—too much focus on packaging and
little bits of, e.g., radiators. Functionality: “no design alternatives” used
to be the test. Recent case, ECJ about functional design for welding, which
said that the right approach is whether the technical considerations were the
only considerations or whether aesthetic considerations also came into play,
from an objective test—slightly broader. Should there be a functionality
exclusion? Should we grant low level protection to functional shapes? That is
the origin of the German regime—sub-utility patent protection for aesthetic
models. What should a functionality exclusion look like so that form can follow
function and still be protected by design law?

Spillovers from design to ©: key case in ECJ, Gstar against
another clothes manufacturer. Are we allowed under harmonization to add
additional aesthetic requirements to distinguish © from design law? ECJ says
no. Originality is harmonized at EU level and there must not be additional
requirements. But there must not be a full cumulation of rights. Legislature
deliberately created design law so there must be something separate. But the
ECJ doesn’t say what that something is.

In design law, we take freedom of designer into account (jeans
must have two legs, pockets) etc. If we are asking for originality in ©, are we
likewise more generous when there is little scope for variation?

Pending © case about folding bicycles: Belgian court has to
apply the ECJ ruling and decide whether this bike (which is completely inseparable
and clearly just a bicycle) is protected by ©. Should more things be excluded
under functionality doctrine under ©? We don’t yet know under European law. Should
there be a spillover from design law, or should the standard be more robust. We
have to harmonize the originality standard but what that standard is, is less
clear.

Derclaye: Originality that is sufficiently identifiable is
the standard.

Ohly: but what does that mean for an object? German courts
would have said that a higher level of originality is required to distinguish
it from other objects. Struggle is whether funtionality from design law should be
borrowed for functionality for ©.

Derclaye: there was a utility patent on the bicycle, which
expired.

McKenna: that should be game over!

Dinwoodie: problem w/European law is failure to exclude
cumulative protection; the European structure, if it had been defined to avoid
cumulation, might actually have been useful. If we focus on what design is and exclude
other regimes, Sprigman’s formulation could help. Is there a definition that
works for what design adds to non-design? EU has huge protection and very low standard
for individual character, but very few cases find designs both valid and
infringed—scope is very closely tied to the threshold for protectability. If we
have definitional ambiguity, one way to help is to be very careful to connect
subject matter eligibility to questions of scope. That works if and only if you
properly control the register system. No UK case has found validity plus
infringement. But there’s a whole bunch of crap on the register that is
unexamined, and that has chilling potential outside the litigation context.
Substantive examination would be helpful. Then the EU model, of a right made to
be focused on what design adds and excludes other regimes, with a short term
unregistered right and a larger registered right, would make sense.

Caponigri: Sprigman’s descriptions of authenticity/narrative
seem to map onto justifications for cultural property. The public is involved
in design—a type of conversation w/the public about the surrounding
narrative/historical interest attached to a design. In terms of competition,
can people compete w/that?

Sprigman: thinks it’s different from cultural property b/c
state can promote that through education, museums, curation. W/Vitra an
interloper has laid hold of a cultural artifact and annexes itself to it
through property claims. The Eames chair is not European and not protected in
its country of origin. Authenticity narrative that seems deeply inauthentic to
him, and wrongly privatized. Private narratives [contradiction in terms?].

McKenna: you can buy the cultural narrative story about the
design, but the move from that to single company ownership is the troublesome
move. In what way does the cultural narrative get dissipated if other people are
allowed to participate? Accessibility would seem to be a value.

Reichman: if you take it and just copy, you’re just an
exploiter; if you add something that’s different, you ought to be able to
protect that increment but you can’t claim it’s a cultural narrative then.

McKenna: for an increment of time. But it’s bizarre to claim
infinite custodianship/ownership.

Dinwoodie: that’s what GIs do, albeit potentially exploitable
by many producers in the region.

Sprigman: the argument would be that commodity competition
gets rid of the incentive to establish, reaffirm the narrative—goods would be
stripped of meaning.

Reichman: Trademark protection could work for that. The main
function of design protection, for him, is to give you an opportunity to establish
a TM and decide whether the investment is worth it. If you can’t get it in 3
years w/an unregistered right, don’t bother!

McKenna: In ©, patent, TM, we’ve seen shift from eligibility
that is specific to eligibility that is abstract—from books and maps to works of
authorship, from names and devices to anything that functions as indicator of
source. This has created problems, substantially complicating the question “what
is the protected thing?” If I have to ID
a book, I can do that. But if I just have to say “work of authorship,” it’s
more difficult to specify claiming rules. We have pervasive problems,
especially but not just in design, with claiming rules.

Dinwoodie: Batmobile case: what is the work? The court doesn’t
really tell you, just runs through the different versions that appear in
different iterations of the comics and TV and movies.

Fromer: Star Athletica: each of the 3 opinions identified
the “work” at issue differently: a lot of mischief.

Reichman: maybe we need a derivative works right for design
like we have for ©.

Ed Lee: we could also list things that are excluded
from design patent, e.g. subject matter of utility patent. © office says short
phrases, titles, logos are not copyrightable. Utility patent has exclusions too,
though there are proposals to get rid of that.

Silbey: if the story of the production of the design tells
you what’s protectable b/c of what was added, and insofar as the people doing
design feel they’re adding something of value, they attempt to delineate the
line between all the stuff that is part of what everyone uses/builds upon and
the final result claimed as exclusive. Through that story of process, there is
a lot that is/can be identified as public domain/tools. There’s a big
disconnect b/t design patent claim and what designers imagine as owned/controlled
by the process. Stories of authenticity (Sprigman) are for her one way of thinking
about an anti-counterfeiting impulse. “Truth” that distinguishes some producers
from others.

Sprigman: agree, but what does it mean to be “True” in this
context? Eames chairs are mass produced consumer goods. What is the authentic
chair? If it hews to the design, is that enough? There is no canonical Eames
chair.

Jason Dumont: they talk about the quality of production.

McKenna: but that’s about consumer protection/understanding
what they’re buying.

Silbey: a lot of things are packed into “authenticity.”

Derclaye: reminder that the limitation to appearance, as
opposed to other characteristics, is an exclusion of some things/limitation on
subject matter for design. Also it’s restricted to products, which may seem
obvious but in the UK it’s “articles,” and that acccording to Laddie could
include living things. Handicraft/industrial
product is a limit, though perhaps not a consciously chosen limit. Plants,
flowers, limbs—all can be made to look different. Artificial limbs: article or
part of a person?

In terms of functionality exclusions in EU: some academics
think the functionality exclusion in design is more robust than that in ©. Also there was a community unregistered
design that was held both valid and infringed in one case (Landau?), though
maybe no UK designs.

Mid-point Discussants: Sarah Burstein: EU’s definition is
close to that of the USPTO, which is any visual characteristics embodied in or
applied to an article—really broad.
Derivative works: the horror of considering it—Barbara Ringer discussed
this in the context of copyright reform in the 1970s, and said that one reason
design rights should be separate from © is that design shouldn’t have
derivative works. But given continuations/fragmented design claims, in practice
that looks a lot like a derivative work right, and we should talk about whether
that is a good thing.

Euro-regrets: registration sounded great, hasn’t worked
great; low originality standard sounded great, has led to a bunch of nuisance
claims. But as AIPLA/INTA have gotten more attentive, they’re pushing for protection
by registration worldwide, so we should write about that.

Short-term anticopying protection for unregistered designs:
gives her pause w/o a clear idea of what we think is copying. Intent? Full
duplication? Copying type rights might end up broadening the scope of the
right.

Jonathan Masur: Design as not involving much of a public
goods problem, per Sprigman; strikes him as correct. But what are the harms
from design protection/deadweight loss? His intuition, with the weakest
possible degree of confidence, is that static harms might also be pretty
low. One of Sprigman’s key points was that
design is relatively low cost, and can easily be funded w/first mover
advantage. If that’s true, there should be lots of relatively low cost
substitutes available for any given design. Lots of high quality consumer goods
are sold at relatively low prices: Target’s design reputation. Second, in many
cases the social value of design might stem from exclusivity created by the
design right itself. What makes the Birkin bag cost $10,000? If it’s exclusivity
that creates the value, then there’s not a lot of deadweight loss from having
it be exclusive. This assumes a sharp divide b/t design and functionality—functionality
exclusivity creates lots more deadweight loss. So the key here is the line b/t
protectable aesthetic design and functionality.
If we get the design right wrong (and they don’t really need to exist),
our misses may not be socially costly if we don’t allow protection of
functional designs. Mistakes about functionality are where deadweight loss will
accrue.

Dogan: add in interoperability/path dependence.

Masur: genericide as applied to design?

Buccafusco: encouraging commercialization/dissemination of
knowledge from utility patents: we don’t get that from design patents: these
are articles of manufacture so they’ll be commercialized anyway and the design
discloses itself, so we don’t get those benefits from having the design patent
system. Downstream: they are at least incredibly narrow in their scope. Design
patent law, following utility patent, has determined that its laughably low
validity criteria are also equivalent to its infringement criteria—lower than ©
originality, but as long as we use the same thing downstream it’s not so bad. That
makes him even more scared about derivative works rights. Substantial similarity
is a broader standard than not substantially different (the latter being the
design standard).

Dinwoodie: The lack of registration means you don’t have to
define what is owned. © issues: what
exactly the musical work is came up in Led Zepplin case; also Star Athletica. More
a European product, but also the US: if you allow partial designs, then
similarity of one spoke on the bicycle is enough to arguably infringe. Focus on
making sure that infringement inquiry filters out very aggressively things that
are functional. Software is like design in tending to be incremental forms of
innovation—maybe some lessons can be moved over. European approach requires a
list of exclusions from protecting functional designs: must-fit,
must-match. Some of the European
exceptions are effective, but others have been interpreted too narrowly.

Reichman: why hasn’t anyone sued us for violating TRIPs
because our nonobviousness standard for design patent is too high, given the
TRIPs standard of originality?

Burstein: we negotiated language that protects us.

DuMont: “or significantly differs” is language put in to
protect us.

Reichman: you can’t stretch that to nonobviousness.

Sprigman: within design patent today, the actual standard
fits comfortably w/in that.

Reichman: sees rejections/invalidations—they’re not being
lax on nonobviousness. Perplexed why
never raised even in informal discussions, when there are often Qs about
American TRIPs-inconsistent practice.

Burstein: visibly disagrees w/premise.

Dinwoodie: so many different countries have their own design
standards; they have no incentive to fight on the issue.

DuMont: legislative history arguments over industrial
property v. copyright originality standard—US says that “significantly differ”
is enough for those who have a patent model like US, Japan at the time to
satisfy the TRIPs standard.

McKenna: registration won’t necessarily help with the scope/definition
problem. If you have a book, then the work of authorship is still an abstraction.
Things like facts and ideas aren’t part of the work of authorship.

On design as low cost: that doesn’t cover everything we
talked about this morning. If we believe that we need to define our buckets of
design. Deadweight loss argument also relies
on assumptions about scope—he’s not sure that scope really does match the
originality standard. We see constant
assertion of claims that seem bonkers b/c the scope analysis can’t be done
until the end of the litigation. Also, the instinct that other designs are cheap
and easy seems wrong to him—if true, then not much incentive to seek the
rights, given how easy it would be to design around. There must be some reason design
rights seem competitively valuable. It’s not just design patent: trade dress
claims too. The assumption of easy designing around may come from valuing
utilitarian functionality over design, but that isn’t the limit of what’s
competitively important and may even be less competitively important than
design.

Masur: should figure out the costs first and then what needs
an incentive for design.

McKenna: instinct is that this would lead us to a list
rather than to a definition.

Fromer: There are a lot of design/function interactions that
are hard to disentangle. We see the same inventors on design and utility
patents for the same objects and both can seem plausibly valid. Fusion of form
and function is difficult to disentangle. Then design patent can be used to bootstrap
claims of secondary meaning—the regimes overlap which affects the costs they
impose.

Dogan: part of her concern for replacement parts is that
consumers really do not know that they’re buying into regimes where they may be
locked into repair/replacement from only one source even after paying the
manufacturer for the original. European
law is much more explicit about protecting this concern.

DuMont: Europe also has parts of complex products exclusion
where the parts aren’t seen during ordinary use.

Derclaye: looked at EU litigation: in fact, there are more
unregistered designs asserted in litigation than registered ones. It’s because
the scope isn’t claimed, like ©, so it’s not easy for defendants to know what
the scope is until it’s litigated. ECJ has imposed a requirement of objectivity
of definition on a TM claim, and even in © they’ve said that’s the rule but it’s
impossible to do that w/o a registration. Agrees that not every type of design is
low cost. Some designs require designer to take multiple factors into account
to come up with the product. Much activity in the EU in registering designs;
why are people doing that/thinking it’s worth the expense? Especially where the
sector is crowded, and it’s harder to identify individual character.

Sprigman: not claiming all design is cheap; it’s just there
are wide swathes where it will be. We tend to regulate as if these disciplines
were inherently high cost and they’re not; even tend to go down over time. Why
people are registering designs/patenting designs: the incentive story is
complicated by activity that isn’t about protecting designs as such but as
about protecting ability to differentiate a product—a TM interest, even though
these things aren’t supposed to be for protecting distinctiveness, since TM has
its own screens including functionality and secondary meaning/TM function that
aren’t present in design. Cumulation = people aren’t disciplined about what
they want, and why would they be? The law makes design one of the criteria for
competition in areas where it might not otherwise be, because companies respond
to legal opportunities. Have to decide the normative question of what kind of
competition we want.

Caponigri: when something becomes socially mandated, is
there now a need for competion to proved it? Whether it’s a standard way of
making coffee or something else.

Dogan: Boudin’s concurrence in Lotus v. Borland—make it
possible for a competitor w/a better product to enter the market by using the commands
that consumers have been trained on.

Sprigman: scenes a faire doctrine could accommodate this
idea. The minute Java became widely used the previously available options for
declarations became unavailable. [Explicitly rejected, wrongly, by the Federal
Circuit.] Cape on a superhero: it’s not
like superheroes were formed with capes. But it became widely enough done that
it became standard for the genre, to the point that Incredibles made it into a
joke about the genre.

Dinwoodie: though Boudin would treat this as a matter of
fair use rather than unprotectability. In European TM cases, treating iconic
design as giving substantial value to the goods = similar result.

Burstein: why are people getting registrations? Remedies,
especially border enforcement in Europe, which people here really envy.

McKenna: parties mislead about the use of “distinctive”—they
try to bootstrap “distinctive from other designs” into “distinctive as to source.”
Study in China about a period where design rights aren’t enforced: shoe companies
not able to enforce design rights invest more in the functional performance of
the shoes. Relevant to what kind of competition we want. On the margin, design
rights can affect investment.

Silbey: some designers say that designs converge on fundamental
instantiations, like a phone with curved edges; they tend to think of that as
part of the toolbox, but there were a lot of different instantiations at first
until the design settled. Relevant to scenes a faire.

Sprigman: that can work with relatively short term rights,
but if copyright eats this area then what then? We’ve stayed away from
discussing Star Athletica because of the potential horror.

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Design Law Scholars Roundtable (Notre Dame) part 1

Posted on December 5, 2019 by rtushnet

I have just now gotten around to my notes from this excellent roundtable.

Introduction: Mark McKenna & Graeme Dinwoodie

Why do a roundtable like this? Putting together scholarly
discussion for long-term outputs rather than particular works in the short
term. Also developing a reading list/canon, which is particularly useful for
design where there are a lot of different fields involved/don’t need to jump
straight to legal doctrine.

Session 1: What is “Design”?

Introduction: Laura Heymann: IP thinks most of things,
objects, the work; by contrast, designers mostly say that their work is about
solving problems, and experience/interactions.
Design not as craft but as hypothesis.
Considerations: User response, inputs—not unidirectional; focus is on
audience not designer. Social, economic, political effects of design: e.g.,
camera film that didn’t work as well on nonwhite skin, algorithms that produce
differential outputs. Standardizing sizes of bricks: standardized to a male
hand, and face masks and crash test dummies were similarly gendered. (Invisible
Women, Caroline Criado Perez.) Policies
are also designed, e.g. the snow removal policy that is designed to help out
most those who commute in and out, two car trips a day, while the paths for
people who are making multiple small trips on side roads and sidewalks remain
uncleared—gender and age effects. It’s
easier to drive through 3 inches of snow on a major artery than to push a baby
carriage through 3 inches on a sidewalk, so reversing the priorities helps
equity and decreases health costs. That is design.

Shifting from product to process means attention to what the
process looks like. Design is often “good enough”—the minimum viable
product—the idea is that there will be versions of it. Moved from “waterfall” process of handing off
the product at each step in the chain . Now the idea is “agile,” breaking down
a project into “sprints,” w/different iterations. Discovery, design, testing,
feedback, repeat, all working at the same time.

Questions for group: what we think about constraints.
Constraints as hampering innovation, versus constraints as a form of spurring
creativity. Second, if design is more about iteration and less about creating a
design for all time that will be in MOMA, how does that cohere w/our focus on
the work and not the process. Third, how do we respond to design that doesn’t
just accommodate behavior but changes it?
An app that is designed to get you to exercise more/save more money
might influence behavior away from the app. It is both the thing and what the
thing does/how it affects people.

Jessica Silbey: One way to answer “what is design?” is to
ask what designers do. Design as a profession—characterized by education,
principles, ethics. But you could also ask for a history of design: what is
design over time? Art historians/cultural historians: could trace industry
trends and aesthetic patterns, as well as political patterns. We could also
study design semiotically, as a form of aesthetic craft—Bruno Latour talks
about design having characteristics of modesty, a meaning, a hermeuneutics, and
a morality. When you have a designed object, you can interpret its features the
way you might interpret a novel or a poem: what it means/the role it plays in
culture. We could also study design as a social process, institutional
practice—trying to figure out the mechanisms in society that produce design:
economic, political, domestic institutions. That could help w/why design seems
ascendant today. We could also think about doctrinal and statutory rules, maybe
over time/comparatively: we have to talk about why it’s a category of legal
attention in the first place.

Some of these methods are not normative at all. More of a how.
Law cares more about the why. Need to choose the other
frameworks/knowledge systems on which we will rely to justify the treatment in
law—whether that’s art history, sociology, etc.
W/McKenna, working on ethnography: when designers talk about design,
they say they’re designing experiences not just objects; human-centered design
is the focus of design work, even if designing a washing machine/stove. Minimizing
waste, improving lives, getting inspiration from other things in
life—empathetic design. There is an ethics/view of what good design is, and
that’s a feature of a professional standard. If there is a metric of good
design/bad design, thinking of the law’s role in promoting that would be one
way of justifying the standards.

Chris Buccafusco: could we benefit from thinking about
other, distinguishable concepts? E.g., innovation or creativity or engineering.
W/in institutions (schools, guilds, etc.) differences b/t the kinds of people
who call themselves engineers and those who call themselves
designers—histories, including gendered histories, of this. Carl Ulrich at Penn has a nice book, free on
his website: Design:
Creation of Artifacts in Society. His definition: Design is
conceiving/giving form to artifacts that solve problems. So broad a definition
as to be almost meaningless, but allows us to ask interesting questions. He describes design in stages—designers sense
gaps in users’ experiences. They then define the problem, explore alternatives
to solve it, and select a plan. Any step can be iterative w/in itself and
w/other steps. Very often “users,” both for Ulrich and the law, can mean firms
themselves, not just customers. Or users could be regulators, third party
payors, etc.

Law enters at each stage, not just at the end where there is
an artifact. E.g., law requires certain MPG for fleet of cars. Problems can
also include avoiding upstream IP rights or desire to create downstream IP
rights. Desirable qualities themselves will vary according to different users’
inputs into the design problem. When designers explore alternatives, grammars,
rules, and norms of claiming affect the realms of exploration and the paths of
exploration. Designs are interactive
w/other designs in society. Disability in design: the creation of
mobile/foldable wheelchair is transformative in some ways but deeply limited in
others; law and society shapes the environment in ways that are responsive to
demands of wheelchair users.

Graeme Dinwoodie: Implicit in discussions: we have a
different understanding of design now than we did in prior stages of history.
What is the value, if there is a value, of looking for something intrinsic
versus looking for what it means to us now. 1920s version: “most advanced yet
acceptable” as measure of design—is that just historically contingent? Agile design: what prompted that shift from
waterfalling? Have consumers become comfortable w/a product that is in many
respects incomplete?

Design compared to what: Max Planck Institute folks in the
80s tried to distinguish design from marketing, but since the 80s we’ve become
more comfortable merging them.

Design as externally driven: responsive or reactive.
Connected to different justifications for IP: tends to mesh better with
instrumental justifications for IP rather than deontological/expressive ones.

Law entering into different stages of the process: tort and
environmental law, not IP law, in many of the examples. Law is a social force
like any other, not surprising that it enters the design process. IP has very
little to do w/what many designers are doing. They only think of IP when the
lawyers show up (agreement from McKenna on that from research with designers).

Jeanne Fromer: Don Normal, the Design of Everyday Things,
original title The Psychology of Everyday Things: good design tells people how
to use an artifact; users aren’t stupid but there’s a lot of bad design out
there, like doors that look like you should push them but you’re really
supposed to pull. This also goes to the issue of integrating form and function.

Industrial organization point: if you look at companies, you
see designers/design departments in very different places. They can be in
engineering, marketing, design departments—it’s hard to categorize. How a
company is organized can affect what comes out as the final design. Toyota
famously has alternative designs for cars that get handed over to engineers,
who pick the one that works best for them. At Microsoft, Surface/X-box
designers/engineers had very different structures. Surface: the designers were
leading the show. They wanted the hinge to be unseen, and the engineers said
that was impossible, but they ended up doing a lot of engineering innovation at
the prodding of designers. X-box: the engineers ran the show and the designers
were constrained to follow. Overall: Design and its effect only can be assessed
in relation to the whole process, which can differ a lot.

Sarah Burstein: “Design” goes back to 1790s in utility
patents. The industry/marketing has changed, but don’t treat the bullshit as real.
Not that different from other regimes: artists think that they live as artists
and just produce things as spinoffs (compared to Michelangelo who was hired to
paint a chapel and move on). And what we want to encourage in terms of
innovation is similar. Everything that wasn’t “art” or “craft” was called
design. But the term gets in our way—we’ve lumped dissimilar things together
for hundreds of years, and not everything that is, has been, or can be called
design should be treated the same way in law.
The “professional identity” of designer is new.

Dinwoodie: it was a list of things that rent-seeking
industries in the UK sought and received protection for, and eventually the
list was called “design” (cutlery, pottery, etc.).

McKenna: Whirlpool’s designer they talked to: discussed
workarounds for industrial organization based on personal relationships to get
around constraints on design imposed by structure of organization.
Collaborative team w/different disciplines working together so it doesn’t get
thrown over the wall to the engineers. Even so, designers didn’t lose track of
who was a designer, regardless of where they were in the organization.

Also, extraordinary breadth of what they mean by “artifact,”
which could be a thing but could also be an experience or brand: it’s something
produced by the process. Chicken and egg problem: do we shift to process b/c
the outputs are so broad?

Problem finding: how do designers know what needs to be
solved? His sense is: designers don’t have a strong sense of that, they just
feel like there’s a problem to be solved.

Heymann: it may depend on whether there’s an existing
backdrop/specific clients for which they’re working. The background may produce
the problems.

McKenna: sometimes the problem is: this isn’t selling
enough. That’s a marketing problem, not a deep human need in the world.

Mark Janis: struck by the magnetism of “designer” now:
everyone wants to be one! Does its breadth deprive it of the ability to be an
organizing principle? In law: the visual appearance of artifacts, a tiny subset
of what we’re kicking around here.

Jerry Reichman: to what extent is functional standardization
of products still a driver of design? He thought that standardization rather
than technical superiority was important w/in any given price range. To what
extent do designers care about aesthetic impact regardless of what
corporate/engineering people are saying?

Silbey: responding to Dinwoodie about problem solving: many
designers we talk to talk about problem finding. Two masters: they have a
client who thinks they have a problem, but also they have a set of
disciplinary/pedagogical goals to uphold as designers. A lot like law: you have
obligations to the law and to the client, and those two things can conflict.
Sometimes those are aesthetic conflicts: they want to design something
optimally beautiful but the client doesn’t want to go to that level. “Just
scary enough” for the client to want to do it.
Problem finding = they are thinking about a set of standards from their
background/discipline along w/the client’s wants. We have been asking what the
canon of design is, and they very much believe their origins are in art &
architecture even when doing human centered design. They studied drafting, font
design, architecture—even when they’re designing apps. They don’t talk about
articles of manufacture. We haven’t figured out yet when they describe the
ascendancy of design in the 60s and 70s as a pro field, whether that is a
change or shift that is meaningful beyond as an educational model (this is when
design was hived off educationally).
Introduction of ethnography into their work today is different from
being an artist/architect: studying how people eat in a fast food
restaurant/how they interact w/their computers—they describe that as a new wave
in design that implicates what it means to be a designer.

Role of constraints from law: if what is happening is
ethics/client management/marketing, the idea that anti copying protection will
facilitate professional standards is sort of orthogonal.

Buccafusco: there are lots of designs that come from people
who aren’t pro designers in firms—3D printing, Eric von Hippel, etc.

McKenna: has asked whether anyone who uses design process is
a designer; “designers” tend to be skeptical about that.

Silbey: like photographers! It’s not just someone who takes
a photo. Many were educated before there were design schools; form &
function were integrated in a particular field, such as architecture/car
design—they came out of fields w/a particular utilitarian/aesthetic balance.

Younger designers: their sketching skills are less developed
but what drew them to design school is now the ethnographic elements.

Dinwoodie: surprised by how little of the description has
been about aesthetics given that the law is going to focus on that.

Silbey: evaulation of aesthetics as a driver has been harder
to create standards around.

McKenna: we do hear over & over that their own
evaluations of good design have aesthetic components. Sometimes the problem
they have is an aesthetic problem, so the distinction is not clear; one medical
device designer was frustrated by her inability to spend more time making
things beautiful.

Felicia Caponigri: When/where does design end? Does someone
who puts in a fountain in front of an historic building in its style engage in
design?

Jonathan Masur: design practice as sensing a gap in user
experiences—that could be an aesthetic gap (and thus connected to deontological
motivations/internal drives, contra Dinwoodie). Industrial organization: even
w/in the confines of for profit consumer product firms, you see designers in
different roles w/different ends related to design of product, user experience,
or how the product is marketed. That brings me to the idea of Janis/Burstein
that this is such a big category that it may not cohere in a legally useful
way. Design as process: thinking of the how of design—that is a coherent whole
that we can talk about sociologically as having commonalities across design,
but that’s not how law thinks—law is interested in the what, and also the why,
and also the who (what skills they bring to bear, what background do they
have), rather than the how. Do we think that law is right to engage in this
kind of sectioning and fragmentation? Is there something broader to be said as
design as a process (& its relation to law).

Masur: Right, we can throw around the word innovation in the
same way. Design as a how is potentially coherent; then the Q is how law should
think about that coherent category.

Chris Sprigman: Design as in part the result of increasing
standardization of physical artifacts—that goes to why we engage in this
process. We tend to valorize design but there is probably an optimal level of
design, and we may have too much in some markets. EU design registry: has few
fashion items, but many portable generators.
He spoke to a guy in a Japanese company: this is a very mature company,
so these things are all about the same regardless of who makes them. So we are
in a commodity market w/price competition. We engage in design to manufacture
desire for a particular producer to price above marginal cost. This is a debate
from 50 years ago about TM: is this socially good? Or is this a
dissipation/transfer of consumer surplus to producers with associated
deadweight loss? This Q pertains to design as well.

Heymann: one change over time is explicitly noticing that
design is a process; another is in thinking about other disciplines’ knowledge
like psychology as relevant. More sympathetic than Sprigman to value of brand
as design: it does produce welfare for at least someone.

Just as © has different meaning for publishers than for
authors, design law may have different meanings to firms than to designers: who
are we doing this for?

Masur: if people are willing to pay for a beautifully
designed generator, we would hope that they’re getting value out of it, at
least as long as there is still the ability to buy a plain vanilla generator.

Sprigman: but it’s in every producer’s interest to engage in
conscious parallelism. Rational choice is a matter of faith; he doesn’t think a
preference is a preference is a preference; some preferences are manufactured.
We should be careful about interfering w/preferences but other people (sellers)
are already interfering with preferences, and we have put the law at their
disposal to do so.

Masur: the Q is whether the user is getting more value,
enjoyment, whatever out of the designed product than they would out of the
standardized commodity. It’s certainly
true that producers can create desires and that law facilitates it. But the
desire is still real/its satisfaction still makes the person better off. All
this could be said about cars [or novels, Silbey says] as well as
generators.

Sprigman: yes, but that’s shallow. The law shapes
preferences by creating markets that makes things available. People are
inherently conservative: it’s hard to envision what they don’t have.
Preferences depend on what’s available/what you know. There may be good policy
reasons for the Chicago view to prevail, but it can’t be defended based on what
we know.

Estelle Derclaye: There are engineers who would not call
themselves artists or architects who would still consider themselves designers.
They draw! In Europe, if the appearance of the product has not been the main
concern, we have said that you should use [utility] patent.

Design of processes: that gets to “systems,” but that should
make us think of patent—methods of operation—or even of exclusions from patent
[and from ©].

McKenna: designers we talk to identify an intrinsic motivation
to make things beautiful, but also a recognition that their own sense of what
is beautiful can’t measure success if design is about solving problems, so it
has to be something that others find beautiful.

Mid-point discussants: Ed Lee: We often describe what
lawyers do as problem solving. Does that mean we’re doing the same thing as
design thinking? Human centered design could be called “empathy.” Relevant
goals: usability, nondiscrimination (including in AI). Something that goes unsaid: designers design
things that are new, whether as problem to be solved or as method for
solving. The design process is not
necessary for pure copying. [Or is
it?] Designers are trying to do
something that is not just a repetition of what others are doing. Not just solving
a problem, then, but solving a problem in a way that hasn’t been done.

Dinwoodie: you’re saying that’s an artistic vision. [I don’t
hear that, necessarily; it might just be a professional norm or self-concept.]

Reichman: we should accept low levels of novelty because
those can still be valuable.

Stacey Dogan: Definition of design: not always what we talk
about in legal context, but goes well beyond it in doctrinal and practical
contexts. We should all be thinking about network design. There is no satisfying
single definition. She’d define it something like deliberately trying to solve
a problem/create a demand.

Thinking critically: designers are often portrayed as
altruistic, trying to solve a problem “for us.”
But programmers/cryptographers think about the world in terms of adversaries;
they don’t assume that everyone is acting in society’s best interests. We have
been assuming problem solvers for the general good, but there are all sorts of
situations in which designs may not promote overall well being of society. [See
“dark patterns.”] Bad actors in
antitrust context: 9^th Cir. case in which a design/patenting of
biopsy needle gun was made specifically to create barriers to entry, so they
were no longer compatible w/after market replacement parts sold at a lower
cost. Similar concerns w/evergreening pharma patents. Old Microsoft litigation:
Microsoft designed the OS in a way making it virtually impossible to extricate
the browser from the OS, creating barriers to entry. These days, we’re all thinking
about the design of tech in ways that promote addiction. Serve the economic
goals of the firm, but we need to think critically about whether they’re
promoting or disserving social goals. Infinite scroll, autoplay, inducements to
keep posting.

Relation b/t consumer demand and social welfare: difficult
problems we’re only beginning to ID let alone understand. Our laws have been
built on presumption that expressed preferences say something about the value
that products or services have for the people purchasing them. There’s a temporal
aspect to that. Law/gov’t as producer of regulation should pay attention to the
fact that short-term pleasures often don’t translate into medium and long term
well being and can even degrade it. To
what extent should the law be incentivizing particular types of design and why?
And how should it regulate the iterative process of design as described? To
what extent does/should the law place limits on design, and should those limits
focus on the design itself in isolation as artifact, the intent behind the
design (interesting Q in antitrust), the effects of the design?

Jeanne Fromer: Lawyers like all inclusive definitions, but
that will lead us into a trap here w/broad definitions of design. We do have
some canonical sense of design: we should think about the prototypical
“design/s.” Household products, devices,
furniture; then we can focus on what the heartland means and also about
borderline categories like systems. The heartland might not be static over
time.

What makes good design? A beautiful chair can be
uncomfortable; would we all agree that was good or bad design? Are there
different theories? Is it about the market deciding? We need a framework for
that to get a sense of the law’s role.
Designers and consumers might have different answers; different time
horizons would give different answers.

There are different invocations of design w/in different
legal regimes, just as an “is” and not even considering “ought.” A lot of what law is doing,
explicitly/implicitly, is having a sense of what design is and
lawyers/claimants have to articulate their claims in a particular way for ©,
TM, design patent, utility patent. What
role if any can IP law have in inclusive design: what we want designers to
think about, given that many of them are not thinking about, e.g., women’s
interests in the design of sidewalks, inclusive sizing. Market alone? Or law, perhaps
including IP?

McKenna: one way of defining design is to ask what design is
not. Copying is not design. Every single designer we’ve talked to has talked
about widespread consumption of precedent across a huge set of areas—furniture designers
don’t just look at furniture. They feel mostly quite free to incorporate lots
of pieces from others, and feel that small changes/small repurposing is enough
to create a new design. Resists the idea of copying, but the line is a narrow one.

B/c he’s been teaching privacy, seems quite obvious that not
all design is socially beneficial. Often used in harmful ways. But the design
is created b/c it fits a need—the companies value it. Like designs meant to
prevent compatibility/interoperability/to create deliberate obsolescence.
Should be obvious that some designs in immediate interest of purchaser do not
promote social welfare. “Persuasive design” is a concept; designer had some
discomfort b/c they had a self-concept of solving problems rather than creating
them.

Sprigman: though that’s a story they’re telling themselves.

McKenna: and yet they believe it; they think they have
lines, though you might draw them elsewhere.

Reichman: article 3(d) of Indian law can deal w/evergreening—expressly
precludes evergreening. We should adopt that. European unregistered design right
of 3 years is the most brilliant solution.
There’s a relation b/t design and appropriation art.

Dinwoodie: Law is more normative than descriptive. System
has to be workable at some generalizable level, which may interfere w/our desire
to be granular about which designs are good/bad for society.

Dogan: don’t think about good/bad categorically, but limits
on things like scope. Those are designed to limit the adverse effects of the
regime, and we can use them here.

Ansgar Ohly: Similar debate in patent law about
environmentally friendly/unfriendly innovations. Could leave it to
market/extralegal factors like designers’ beliefs about the acceptability of
copying.

Buccafusco: search, experience, and credence qualities as
useful ways to think about design. Visual characteristics are often search
goods, but value often derives from experience over time. And w/credence
qualities we may not know at all. If we think that search is king, markets are
likely to do well and supply side rules like IP are good. But to the extent
that experience and credence matter, demand side regulations may do better at
maximizing those values. Copying: will be important to think about how
audiences think about levels of abstraction. Experts may see more differences
than nonexperts. His students tend to see more similarities for downmarket
copiers (Sketchers copying Stan Smith) than upmarket (Gucci copying Stan
Smith).

Burstein: Designers may well object to copying of ideas and
think that’s what the relevant level of abstraction is.

Derclaye: in EU, we have morality embedded in all regimes
except ©. Possibility of excluding sexist/racist design from protection.

Ohly: judges may have different senses of morality from
designers/general population. Successful movie in Germany: using Fuck Goethe in
the title. General Court decided the TM was against public morality.

Derclaye: I agree—the law should be based on a criterion
other than leaving it to the judge. Empirical/scientific approach to public
perception.

Silbey: maybe some parts of design should be more common law
based, evolutionary in response to some of these concerns. Separately: design
is a process, but designers also describe design as a story; a design has a
narrative behind it, whether it’s the precedent of the things that have been
made or a narrative connecting the pieces of brand identity. Design is intimately
tied to self-justificatory story for how you get from A to B. Is that different
from how © owners talk about © and patentees talk about patents? There are
often mythical origin stories; maybe the design story’s uniqueness is the way
it talks about solving a problem based on things that came before.

Sprigman: notion of authenticity is noticeable in designers’
talk, but not sure it’s unique.

Silbey: brand requires a cohesive narrative, but a lot of
designed things are described in narrative terms without brand.

Silbey: yes, but in design the user/customer is always part
of the story. A stock story of how a novel was created wouldn’t include the audience,
and a design would.

Derclaye: if we recognize artistic design then we raise the
issue of moral rights. Architecture: France limits the ability of the designer
to prevent the alteration of the building; the users’ interests will come into
moral rights in different ways than in traditional nonutilitarian artistic
works.

McKenna: the legal Qs we ask depend on the systems into
which we’ve sorted design: design patent, ©, TM. But if design doesn’t sort
conventionally into those categories on their own terms, why are those the
right categories/constraints? We romanticize designers in a way we don’t
romanticize plumbers, but we have to figure out who fits in the category
designer and why. When we get to doctrine, we should live with the messiness of
these definitions and not just jump straight to separability. Lots of stuff
from other areas fits the definition of design, and do we really want to corral
that all into design law? A lot of the rules we have come from very particular
subject matter that lawmakers were trying to cover and not from some attempt to
define what design was in general.

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A press release about a lawsuit against a supplier wasn’t commercial speech

Posted on December 5, 2019 by rtushnet

Townsend Farms, Inc. v. United Juice Corp., — Fed.Appx.
—-, 2019 WL 6358780, No. 18-55067, No. 18-55068 (9th Cir. Nov. 27, 2019)

Townsend included pomegranate arils supplied by Göknur in
its Townsend Farms Organic Antioxidant Blend; some of those arils were
contaminated with hepatitis A. After consumers of the frozen fruit mixture
contracted the virus, Townsend recalled the product in coordination with the
FDC and the CDC. In the wake of the outbreak and subsequent recall, injured
consumers filed numerous lawsuits against Townsend. Townsend and its insurers
defended and settled most of those lawsuits. Townsend then sued Göknur seeking
equitable indemnification Göknur raised a counterclaim arguing that Townsend’s
recall press releases constituted false advertising under the Lanham Act. This
was correctly dismissed because the recall press release didn’t propose a
commercial transaction.

Denouement: The parties stipulated that Townsend and its insurers
incurred over $13.7 million in relevant litigation and settlement costs; a jury
awarded Townsend $2.7 million for underlying settlements and associated
litigation expenses and $4.8 million in punitive damages. It was ok for the
jury to award only that amount in compensatory damages, because Townsend bore the
burden of proving the degree of Göknur’s fault in causing the stipulated
damages. However, the punitive damages award had to go because California law
required “meaningful evidence of the defendant’s financial condition” in order
to obtain punitive damages. Townsend provided only evidence of Göknur’s income
and assets, not about its expenses and liabilities, which wasn’t enough;
remanded with instructions to dismiss the punitive claims.

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Knives Out for storage jars (copyright geeks, that is)

Posted on December 5, 2019 by rtushnet

I very much enjoyed Knives Out and recommend it even for non-copyright
geeks, but I suspect that some of the despicable family members didn’t need to
despair so much about being cut out of the patriarch’s will. Based on the
description in the movie, the patriarch had transferred his copyrights to his
publishing company, of which he was the sole owner (presumably for tax reasons). He did this for two books a year and
apparently had been doing so since the 1980s.
Given these transfers, §203 termination would be possible for a vast
number of his works, and on a regular basis, giving the two living children and
the grandchild by the deceased child equal shares in the revenues derivable
from the works as long as at least two of them could agree to terminate.

Of course, it appears that the film rights were the most
valuable part of the copyrights, and if he transferred only book rights to the
publishing company then the film rights would have transferred, unterminably,
by will; it’s possible the discussion of transferring the “copyrights” was
merely loose talk. Certainly the family
lawyer didn’t raise the possibility of termination with the family, which
suggests that he wasn’t the right lawyer for a literary estate.

… But. Since the devisee presently owns the publishing company
and the copyrights (subject to §203), they might be able to pull of a Steinbeck/Winnie
the Pooh move. At least before any given §203 notice is filed and the rights
thus vest in the parties entitled to send the notice, they might be able to
agree to rescind the earlier transfers and replace them with new, nonterminable
transfers to the publishing company (nonterminable because they are post-1978
transfers not made by the author), cutting out the statutory heirs
entirely. Is there any reason this
wouldn’t work?

Other lawyerly questions raised by the movie include: assuming
no undue influence, even if the slayer rule applied to the sole beneficiary of
the currently valid will, it seems to me that you don’t go back to the previous
valid will. Instead, you just strike the slayer out of the will, meaning that
the will doesn’t dispose of the estate, and you distribute the assets as if the
patriarch died intestate. That means
that grandchildren don’t get anything if a relevant parent is still alive, even
if they got their own grant in the previous will. But I could be wrong about that!

Also: did [spoiler] actually murder the patriarch? Relatedly, is [other spoiler] a slayer under
inheritance law because of the but-for causal relationship between their
behavior and the death? Pointers to any legal discussions of these issues welcome!

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Rebecca Tushnet

court enjoins bar on “fake meat” labels; implications for FDA standards of identity?

Content Moderation in an Age of Extremes

Court fixes mistake: Rogers applies to nonfiction titles

Touting a paid-for report as if it were independent could be false advertising; public webpage was “advertising”

do retailers proximately cause the harm of false advertising? [what about of TM infringement?]

Design Law Scholars Roundtable part 3

Design Law Scholars Roundtable part 2

Design Law Scholars Roundtable (Notre Dame) part 1

A press release about a lawsuit against a supplier wasn’t commercial speech

Knives Out for storage jars (copyright geeks, that is)

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