Intellectual Property in Industrial Designs: Issues in Innovation and Competition
Intellectual Property in Industrial Designs: Issues
in Innovation and Competition
July 1, 2008
John R. Thomas
Visiting Scholar
Resources, Science and Industry Division
Intellectual Property in Industrial Designs: Issues in
Innovation and Competition
Summary
Under current intellectual property laws, industrial designs may potentially be
protected through design patents, trade dress, and copyright. In addition, the Vessel
Hull Design Protection Act established a specialized, or sui generis, intellectual
property right for the protection of boat hull designs. Some experts argue that the
present intellectual property regime does not adequately protect industrial designers.
The 110th Congress has engaged in a number of activities with respect to
industrial designs. Legislation that would amend the Vessel Hull Design Protection
Act passed the Senate. Some experts believe that this statute has been underused
because it allows competitors to copy a protected boat hull design so long as they
introduce changes to the design of the deck. The Vessel Hull Design Protection Act
Amendments of 2007, S. 1640, would specify that protection is available for designs
of hulls and decks, either individually or in combination.
Bills that would provide proprietary rights in fashion designs have also been
introduced before the House and Senate. H.R. 2033 and S. 1957 would amend the
Vessel Hull Design Protection Act to allow for the protection of fashion designs.
The term of protection would be three years based upon registration with the U.S.
Copyright Office.
Another bill, H.R. 5638, would establish a “repair” exemption within the Patent
Act. Although potentially of broad application, this legislation appears to have been
motivated by the enforcement of design patents that are said to restrict competition
in the secondary market for automobile replacement parts.
The Senate has also recently provided its consent to ratify the Geneva Act to the
Hague Agreement Concerning the International Registration of Industrial Designs,
an international agreement that would allow U.S. designers more readily to obtain
intellectual property protection overseas. Accession to this international agreement
would require changes to the design patent statute, including expansion of the term
of design patents from 14 to 15 years.
Some legal experts have expressed concern that recent judicial developments
concerning infringement standards for design patents have reduced their effectiveness
in promoting innovation. The Court of Appeals for the Federal Circuit, which
possesses national jurisdiction over design patent appeals, has recently agreed to
reconsider these issues.
Supporters of sui generis regimes assert that they allow for protection of subject
matter, like industrial designs, that at times fall outside traditional intellectual
property paradigms. Proponents believe that these systems can prevent levels of free
riding that ultimately discourage innovation. However, some observers are
concerned that the proliferation of such systems may limit the ability of others to
compete, ultimately diminishing consumer choice.
Contents
Industrial Designs and Intellectual Property.............................3
Copyright ....................................................3
Trade Dress..................................................4
Design Patents................................................5
Vessel Hull Design Protection....................................8
Current Issues in Industrial Design Protection............................9
Intellectual Property Rights in Fashion Designs.....................10
Amendments to the Boat Hull Act................................12
U.S. Adherence to the Hague Convention..........................12
Automobile Spare Parts........................................14
Judicial Developments Concerning Design Patents...................15
Issues in Innovation and Competition.................................19
Legislation ......................................................22
This report was funded in part by a grant from the John D. and Catherine T.
MacArthur Foundation.
Intellectual Property in Industrial Designs:
Issues in Innovation and Competition
In recent years, Congress has expressed interest in intellectual property
protection for industrial designs. In the 110th Congress, legislation that would amend
the Vessel Hull Design Protection Act passed the Senate.1 Bills that would provide
proprietary rights in fashion designs have also been introduced before both the House
and Senate.2 Another bill introduced in the House would establish a “repair”
exemption within the Patent Act.3 Although potentially of broad application, this
legislation appears to have been motivated by intellectual property rights in the
designs of automobile parts.4 The Senate has also recently provided its consent to
ratify the Geneva Act to the Hague Agreement Concerning the International
Registration of Industrial Designs,5 an international agreement that would allow U.S.
designers to obtain intellectual property protection overseas more readily.6 In
addition to these legislative activities, industrial designs have also been subject to
notable developments in the federal courts and internationally. A review of
intellectual property issues pertaining to industrial designs therefore appears timely.
The term “industrial design” broadly refers to the creation of the form and
function of objects of everyday use.7 Virtually every manufactured product,
including such items as automobiles, clothing, computers, footwear, furniture, and
telephones, embodies an industrial design.8 Industrial designers perform the tasks
previously accomplished by individual artisans with respect to mass-produced goods,
1 S. 1640, the “Vessel Hull Design Protection Amendments of 2007,” passed the Senate on
October 4, 2007, and was received in the House on October 5, 2007.
2 H.R. 2033 was referred to the Subcommittee on Courts, the Internet, and Intellectual
Property on May 4, 2007. S. 1957 was referred to the Committee on the Judiciary on
August 2, 2007. Both bills are titled the “Design Piracy Prohibition Act.”
3 H.R. 5638 was referred to the House Committee on the Judiciary on March 13, 2008.
4 See “Legislation/Patents: Auto Parts Groups Lobby for Bill to Exempt Repair Parts from
Patent Infringement,” 75 Patent, Trademark & Copyright Journal (April 25, 2008), 674.
5 World Intellectual Property Organization, Hague Agreement Concerning the International
Deposit of Industrial Designs, July 2, 1999, 2279 U.N.T.S. 156 (available at
[ h t t p : / / www.wi po.i nt / e xpor t / s i t e s/ www/ hagu e/ en/ l e ga l _ t e xt s/ pdf / geneva_act _1999.pdf]).
6 Treaty No. 109-21 (December 7, 2007).
7 See, e.g., Henry Dreyfuss, Designing for People (Allworth Press 2003); Carma Gorman,
ed., The Industrial Design Reader (Allworth Press 2003).
8 Regan E. Keebaugh, “Intellectual Property and the Protection of Industrial Design: Are Sui
Generis Protection Measures the Answer to Vocal Opponents and a Reluctant Congress?,”
commonly endeavoring to make products more convenient to use and more visually
appealing.9 As explained by the Industrial Designers Society of America:
Industrial design is the profession that determines the form of a manufactured
product, shaping it to fit the people who use it and the industrial processes that
produce it. Industrial Designers work to make our lives more comfortable,
pleasurable and efficient. By studying people at work, at home and in motion,
they create products like office chairs that promote proper posture, kitchen tools
that are comfortable even for elderly hands and toys that provide safe play and
learning for all children. In particular, Industrial Designers deal with the parts
of a product that humans interact with, striving to give universal access to
products that are ecologically responsible and safe to use. Also, they give a10
product with distinctive elegance that makes us want it.
“Intellectual property” is a phrase that refers to proprietary rights in creations
of the mind.11 Currently, some measure of protection for industrial designs can be
found under three different intellectual property laws: copyright, trademark, and
patent.12 Perceived shortcomings with these systems as applied to industrial designs
have led to proposals to establish specialized, or sui generis,13 regimes that apply to
particular sorts of designs. Congress established such a regime for boat hulls in
1988,14 and serious discussion is ongoing with respect to the merits of sui generis
intellectual property rights for fashion designs.15
This report identifies several current issues relating to intellectual property in
industrial designs. It begins by describing the different sorts of intellectual property
protection that apply to industrial designs. The report then identifies current issues
at the interface between intellectual property and industrial designs. The report
closes by reviewing the impact that sui generis rights regimes may have upon
innovation and competition in the United States.
9 William T. Fryer, “The Hague Agreement on the Protection of Industrial Designs:
Strategies to Use and U.S. Choices in Ratification of the Geneva Act,” 89 Journal of the
Patent and Trademark Office Society (2007), 662.
10 Industrial Design Society of America, “What is ID?” (available at
[http://www.idsa.org/ webmodul es/articles/articlefiles/what_is_id_brochure.pdf]).
11 See Roger E. Schechter and John R. Thomas, Intellectual Property: The Law of
Copyrights, Patents and Trademarks (Thomson West 2003), 1.
12 Keebaugh, supra, at 260.
13 The term sui generis, which literally means “of its own kind,” “is used in intellectual
property law to describe a regime designed to protect rights that fall outside the traditional
copyright, trademark, patent, and trade secret doctrines.” Black’s Law Dictionary (8th ed.
14 The Vessel Hull Design Protection Act was enacted as Title V of the Digital Millennium
Copyright Act of 1998 in the 105th Congress. P.L. 304, 112 Stat. 2905 (1998).
15 See Lynsey Blackmon, “The Devil Wears Prado: A Look at the Design Piracy Prohibition
Act and the Extension of Copyright Protection to the World of Fashion,” 35 Pepperdine Law
Review (2007), 107.
Industrial Designs and Intellectual Property
Industrial designs that are well-received in the marketplace may attract
competition. William T. Fryer III, a member of the faculty of the University of
Baltimore School of Law, asserts that “[o]nce an effective product design is
successful, competitors rush in and copy the product, particularly the product
appearance.”16 Advocates of enhanced protection for industrial designs therefore
assert that intellectual property rights potentially provide an important mechanism
for allowing innovators to reap the economic rewards of their investments.17 On the
other hand, some observers are concerned that overly expansive intellectual property
rights may raise prices and decrease the availability of consumer goods.18
Under current intellectual property laws, industrial designs may potentially be19
protected through copyright, trade dress, and design patents. Congress has also
established a specialized, or sui generis, intellectual property right for the protection20
of boat hull designs.
Copyright
The Copyright Act of 1976 provides protection for original works of authorship.
The types of creations addressed by copyright range from traditional works of art,
including literature, music and visual art, to such modern forms of artistic expression
as sound recordings, motion pictures and computer software.21 Copyright protection
arises automatically, as soon as the work has been fixed in tangible form.22 Authors
may register their works with the U.S. Copyright Office, however, and obtain certain
procedural and substantive advantages during copyright enforcement.23 The
copyright law affords authors the exclusive right to reproduce, adapt, and publicly
distribute, perform, and display the protected work, subject to limitations such as the
16 Fryer, supra, at 662.
17 Perry J. Saidman, “The Crisis in the Law of Designs,” 89 Journal of the Patent and
Trademark Office Society (2007), 301; David Goldenberg, “The Long and Winding Road:
A History of the Fight Over Industrial Design Protection in the United States,” 45 Journal
of the Copyright Office Society (1997), 21.
18 Keebaugh, supra at 256 (noting those views).
19 See Orit Fischman Afori, “Reconceptualizing Property in Designs,” 25 Cardozo Arts &
Entertainment Law Journal (2008), 1105.
20 See Bradley J. Olson, “The Amendments to the Vessel Boat Hull Protection Act of 1988:
A New Tool for the Boating Industry,” 38 Journal of Maritime Law and Commerce (2007),
21 17 U.S.C. § 102 (2006).
22 Id.
23 17 U.S.C. §§ 408 — 412 (2006).
fair use privilege.24 The term of copyright is ordinarily the life of the author plus 70
years.25
The availability of copyright protection for industrial designs has been described
as limited, however.26 The Copyright Act of 1976 provides protection for “pictorial,
graphic, and sculptural works” but further explains that:
the design of a useful article . . . shall be considered a pictorial, graphic, or
sculptural work only if, and only to the extent that, such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from,
and are capable of existing independently of, the utilitarian aspects of the
article.27
The Court of Appeals for the Ninth Circuit has explained that “[t]his limitation is in
keeping with the notion that functional items are not eligible for the relatively long-
term protections of copyright, as opposed to the more temporary rights provided by28
the Patent Act.” Because industrial designs are commonly integrated into a “useful
article”29 — such as automobiles, handheld electronic devices, or clothing — they are30
often not eligible for copyright.
Trade Dress
Protection for industrial designs may also occur under the trademark law in the
form of “trade dress” protection. The term “trade dress” refers to the overall visual
image that a product presents to consumers, including its design.31 To be entitled to
trademark protection, a significant number of consumers must perceive the trade
dress as denoting the product of a particular manufacturer, rather than being arbitrary32
or merely decorative, after the trade dress has been used in the market. In
trademark law, this notion of acquired distinctiveness is termed “secondary33
meaning.”
24 17 U.S.C. §§ 106, 107 — 122 (2006).
25 17 U.S.C. § 302 (2006).
26 Emily S. Day, “Double-Edged Scissor: Legal Protection for Fashion Design,” 86 North
Carolina Law Review (2007), 245-47; Keebaugh, supra, at 264-65.
27 17 U.S.C. § 101 (2006).
28 Chosun, Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (9th Cir. 2005).
29 The term “useful article” is defined as “an article having an intrinsic utilitarian function
that is not merely to portray the appearance of an article or to convey information.” 17
U.S.C. § 101 (2006).
30 CRS Report RS22685, Copyright Protection for Fashion Design: A Legal Analysis of the
Design Piracy Prohibition Act (H.R. 2033 and S. 1957), by Brian T. Yeh.
31 Schechter and Thomas, supra, at 587-91.
32 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000).
33 Ingrida Karins Berzins, “The Emerging Circuit Split Over Secondary Meaning in Trade
(continued...)
Trademark rights in trade dress may arise under state law as soon as the product
is used in commerce. However, trade dress may be registered with the United States
Patent and Trademark Office (USPTO), a step that affords significant substantive and
procedural advantages.34 The trade dress owner may prevent others from using a
similar product appearance that creates a likelihood of confusion as to the source or
sponsorship of the associated goods.35 These rights persist so long as the trade dress
continues to be used and retains its distinctiveness.36
Commentators have identified a primary limitation of trade dress protection with
respect to industrial designs.37 Trade dress rights cannot be established in functional
features of a product. Courts have reasoned that such protection would overly
hamper competition and undermine the policies of the patent system.38 As a result,
if the industrial design makes the product easier to manufacture, more convenient to
ship, or work better, then it may not be subject to trade dress protection.39
Design Patents
In addition to granting so-called “utility patents” directed towards machines,
manufactures, compositions of matter and processes,40 the Patent Act of 1952 also
allows for “design patents.” An inventor may obtain a design patent by filing an
application with the USPTO directed towards a “new, original and ornamental design
for an article of manufacture.”41 Most design patent applications consist primarily
of drawings that depict the shape or surface decoration of a particular product. They
may concern any number of products, including “apparel, automobile parts, computer
products, containers, cosmetics, electronics products, textile designs, home
furnishings, home appliances, jewelry, motor vehicles, office supplies, optics and
toys .”42
33 (...continued)
Dress Law,” 152 University of Pennsylvania Law Review (2004), 1661.
34 15 U.S.C. § 1051 (2006).
35 See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 20.
36 Id. at § 30.
37 See Margreth Barrett, “Consolidating the Diffuse Paths to Trade Dress Functionality:
Encountering Traffix on the Way to Sears,” 61 Washington and Lee Law Review (2004), 79;
see also Jay Dratler, Jr., “Trademark Protection for Industrial Designs,” 1988 University of
Illinois Law Review (1988), 887.
38 Schechter and Thomas, supra, at 610-11.
39 See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995).
40 35 U.S.C. § 101 (2006).
41 35 U.S.C. § 171 (2006).
42 Saidman DesignLawGroup, “Design Patent” (available at [http://
www.designlawgroup.com/tool s_design_patent.cfm]).
To obtain protection, the design must not have been obvious to a designer of
ordinary skill of that type of product.43 In addition, a design must be “primarily
ornamental” to be awarded design patent protection.44 Similar to the doctrine of
functionality in trademark law, if the design is instead “dictated by the performance
of the article, then it is judged to be functional and ineligible for design patent
protection.”45 In such circumstances the designer should pursue a utility patent,
which protects the functional and utilitarian aspects of products and processes.46
Issued design patents confer the right to exclude others from the “unauthorized
manufacture, use, or sale of the article embodying the patented design or any
colorable imitation thereof.”47 The scope of protection of a design patent is provided
by drawings within the design patent instrument.48 To establish infringement, the
design patent proprietor must prove that “in the eye of an ordinary observer, giving
such attention as a purchaser usually gives,” the patented and accused designs “are
substantially the same, if the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it is the other.”49 The courts also require
that “no matter how similar two items look, the accused device must appropriate the
novelty in the patented device” that distinguishes it from earlier designs.50 The term
of a design patent is 14 years from the date the USPTO issues the patent.51
Intellectual property attorneys Richard Sybert and Lindsay Hulley have
explained that the “best protection for product design is likely a design patent in the
United States . . . .”52 Design patents have been described as less expensive to
prepare than utility patents, and unlike utility patents they are not subject to
“maintenance fees” that must be submitted to the USPTO during the life of the
patent.53 In contrast to copyright enforcement, design patent infringement does not
43 35 U.S.C. § 103(a) (2006).
44 Arminak and Associates, Inc. v. Saint-Gobain Calmer, Inc., 501 F.3d 1314, 1319 (Fed.
Cir. 2007).
45 Id.
46 Keebaugh, supra, at 260.
47 Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116-17
(Fed. Cir. 1988); see also 35 U.S.C. § 289 (2006).
48 In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988).
49 Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
50 Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citation
omitted).
51 35 U.S.C. § 173 (2006).
52 Richard Sybert and Lindsay J. Hulley, “Copyright Protection for ‘Useful Articles,’” 54
Journal of the Copyright Society of the USA (2007), 419.
53 Scott D. Locke, “Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents
to Increase the Value of Fashion and Luxury Goods Companies,” 5 John Marshall Review
of Intellectual Property Law (2005), 40.
require a showing that the defendant accessed the prohibited design and copied it.54
And unlike trademark, the design patent holder need show neither the existence of
consumer confusion nor the design’s acquisition of “secondary meaning” in order to
prove infringement.55
The design patent regime has nonetheless been subject to criticism by industry
representatives, lawyers, and academics alike. Some commentators have expressed
concerns that the standards of novelty and nonobviousness, which the design patent
law essentially adapted from the law of utility patents, do not provide apt or fair
evaluating criteria for industrial designs. As Gerard Magliocca, a member of the
faculty of the Indiana University School of Law — Indianapolis, explains:
To see this point more clearly, think of these two elements as part of a broader
test to determine whether an improvement represents an “advance” over the state
of the art in a given field. Viewed in these terms, one commentator has observed
that, “[w]hereas it may often be possible to recognize a technological innovation
as an ‘advance’ because of its efficiency in promoting economies or in achieving
previously unattainable utilitarian ends, there exist no comparable criteria of
‘advance’ for artistic creations.” Indeed, most designs simply involve
rearranging basic artistic elements (e.g., colors, shapes, and materials) into a new
pattern. The result of this reshuffling process can almost always be considered
obvious — and hence unpatentable — because any designer could have come
up with the combination at issue. Put another way, the nonobviousness and
novelty requirements often end up restricting design protection to those rare
instances when an improvement establishes an entirely new style. This leaves
most designers out of luck and is at odds with the reality that commercial art is56
generally incremental in nature.
Other observers believe that acquiring design patents remains an overly costly
and time-consuming procedure. These factors may reduce the attractiveness of such
protection for products, like clothing, that remain popular for only short periods of
time.57 Design patent law’s functionality doctrine, which is similar to principles
found in copyright and trademark law, has again been subject to critique. An
industrial design that successfully integrates functional and ornamental aspects may
simply be ineligible for protection.58
54 Daniel H. Brean, “Enough Is Enough: Time to Eliminate Design Patents and Rely on
More Appropriate Copyright or Trademark Protection for Product Designs,” 16 Texas
Intellectual Property Law Journal (2008), 325.
55 Jonathan E. Moskin, “The Shape of Things to Come — Emerging Theories of Design
Protection,” 92 The Trademark Reporter (2003), 681.
56 Gerard N. Magliocca, “Ornamental Design and Incremental Innovation,” 86 Marquette
Law Review (2003), 852.
57 Keebaugh, supra, at 262.
58 See Steven A. Church, “The Weakening of the Presumption of Validity for Design
Patents: Continued Confusion Under the Functionality and Matter of Concern Doctrines,”
Vessel Hull Design Protection
In the boating industry, some manufacturers have been known to use a “plug
molding” technique to duplicate the hulls of their competitors. Some observers
believe that the “boat manufacturing industry has long been plagued by low-cost boat
makers who think nothing of taking a successful competing boat hull design to make
a direct-cast mold for their own unauthorized manufacturing use.”59 In response, the
state legislature of Florida enacted legislation that prohibited certain uses of the plug
molding process.60 However, the 1989 Supreme Court ruling in Bonito Boats Inc. v.
Thunder Craft Boats, Inc. held that this legislation was preempted by the federal
patent statute and therefore invalid.61
Following the Bonito Boats decision, Congress enacted the Vessel Hull Design
Protection Act.62 This 1998 statute, currently codified in Title 13 of the Copyright
Act, allows for the registration of an original design that has actually been
incorporated into a fabricated vessel hull.63 Although this system is administered by
the Register of Copyrights, the protection afforded by the Vessel Hull Design
Protection Act is not a copyright, but rather a sui generis right.64
In order to enjoy protection, the design owner must affix notice of the
registration upon vessel hulls that embody the design.65 The protected design affords
its owner the exclusive right to “make, have made, import, for sale or for use in trade,
any useful article embodying that design” and “sell or distribute for sale or for use in
trade any useful article embodying that design.”66 The statute does not extend
protection to designs that are “staple or commonplace” or “dictated solely by a
utilitarian function.”67 In addition, an accused design that is “original and not
substantially similar in appearance to a protected design” is exempted from
i n fri ngem ent . 68
The Vessel Hull Design Act also creates infringement liability if a seller or
distributor who did not itself make or import an infringing article induces, or acts in
59 Olson, supra, at 178.
60 Fla.Stat. § 559.94 (1987) (repealed).
61 489 U.S. 141 (1989).
62 The Vessel Hull Design Protection Act was enacted as Title V of the Digital Millennium
Copyright Act of 1998 in the 105th Congress. P.L. 304, 112 Stat. 2905 (1998).
63 17 U.S.C. §§ 1301(b)(2), 1310(b) (2006).
64 Keebaugh, supra, at 274.
65 17 U.S.C. § 1306 (2006).
66 17 U.S.C. § 1308 (2006).
67 17 U.S.C. § 1302 (2006).
68 17 U.S.C. § 1309(e) (2006).
collusion with, a manufacturer to make or import the article.69 A seller or distributor
may also be liable for infringement if it fails to respond to the design owner’s request
to disclose the source of an infringing article, and if that person orders or reorders the
article after receiving notice of the protected design.70 The Act also establishes a
limited “innocent infringement” exemption which excuses individuals who made,
imported, sold, or distributed an article embodying the copied design without
knowledge that the design was protected.71
The design owner may bring a lawsuit in federal court against those it believes
are infringing.72 Remedies available under the Act include an injunction73 and
damages adequate to “compensate for the infringement.”74 The Act also allows the
court to increase the damages “to such amount, not exceeding $50,000 or $1 per
copy, whichever is greater, as the court deems to be just,” provided that the damages
awarded are compensatory rather than punitive in nature.75 The term of protection
is ten years.76
Current Issues in Industrial Design Protection
Multiple forms of intellectual property protection are potentially available to
industrial designs. Some observers believe that this “ragged quilt of protection” does77
not adequately protect designers, however. In particular, the inability of copyright,
trademark, and design patent law to protect industrial designs that have some78
functional component is frequently criticized. Others disagree, believing that there
is no compelling case for expanding intellectual property protection for industrial
designs and that doing so would limit competition and the availability of products for
consumers.79 Recent debate about the scope of intellectual property rights for
69 17 U.S.C. § 1309(b)(1) (2006) (further explaining that purchasing or giving an order to
purchase an infringing article in the ordinary course of business does not of itself constitute
infringement or collusion).
70 17 U.S.C. § 1309(b)(2) (2006).
71 17 U.S.C. § 1309(c) (2006).
72 17 U.S.C. § 1321 (2006).
73 17 U.S.C. § 1322 (2006).
74 17 U.S.C. § 1323(a) (2006).
75 Id.
76 17 U.S.C. § 1305 (2006).
77 Magliocca, supra, at 845.
78 See Laura C. Marshall, “Catwalk Copycats: Why Congress Should Adopt a Modified
Version of the Design Piracy Prohibition Act,” 14 Journal of Intellectual Property Law
(2007), 305.
79 See Testimony of Steve Maiman Before the U.S. House of Representatives Subcommittee
on the Courts, the Internet and Intellectual Property (February 14, 2008) (available at
(continued...)
industrial designs has occurred within several specific contexts. This report next
turns to a review of these issues.
Intellectual Property Rights in Fashion Designs
Legislation has been introduced in the 110th Congress that would, for the first
time, provide explicit intellectual property protection for fashion designs.80 H.R.
2033 and S. 1957, each titled the Design Piracy Prohibition Act, would expand the
scope of coverage under the Vessel Hull Design Protection Act to also include “an
article of apparel.”81 This term is broadly defined to include an article of clothing,
including undergarments, outerwear, gloves, footwear, headgear, handbags, purses,
tote bags, belts, and eyeglass frames.82 In order to secure protection, the designer
must apply for registration within three months after the article has been made
available to the public.83 The term of protection is three years.84
H.R. 2033 and S. 1957 would also narrow the current “innocent infringement”
exemption established by the Vessel Hull Design Protection Act by stating that
someone who does not have actual knowledge of the existence of protection, but had
“reasonable grounds to know that protection for the design is claimed,” can be held
liable for infringement.85 These bills also stipulate that an article is infringing if its
design was copied from a protected design “or from an image thereof.”86 They would
further codify the doctrines of secondary liability for infringement of a protected
design87 and increase the potential judicial augmentation of infringement damages
to $5 per copy with a cap of $250,000.88
Although H.R. 2033 and S. 1957 are nearly identical in text and structure, the
two bills feature one substantive difference. This distinction relates to the current
provision, introduced in the Vessel Hull Design Protection Act, that exempts from
infringement an accused vessel hull design that is “original and not substantially
79 (...continued)
[http://j udiciary.house.gov/media/pdfs/Maiman080214.pdf]).
80 For a more thorough review of these proposals, see CRS Report RS22685, Copyright
Protection for Fashion Design: A Legal Analysis of the Design Piracy Prohibition Act (H.R.
81 H.R. 2033, S. 1957, 110th Cong., 1st Sess., at § 2(a)(2)(A) (2007).
82 Id. at § 2(a)(2)(B).
83 Id. at § 2(e)(1).
84 Id. at § 2(c).
85 Id. at § 2(d)(1).
86 Id. at § 2(d)(2).
87 Id. at § 2(d)(3). The term “secondary liability” includes such concepts as contributory,
vicarious, and induced infringement, and refers generally to the imposition of liability upon
those who did not directly infringe, but rather encouraged or benefitted from the
infringement in certain circumstances. See Schechter and Thomas, supra, at 188.
88 Id. at § 2(g).
similar in appearance to a protected design.”89 H.R. 2033 would not amend this
provision, with the result that it would apply both to vessel hulls and fashion designs.
S. 1957 would retain the existing provision for vessel hulls, but with respect to
fashion designs exclude from protection accused designs that are “original and not
closely and substantially similar in overall visual appearance to a protected design.”90
Perceived shortfalls in the established intellectual property regimes provide the
impetus for this Design Piracy Prohibition Act.91 Design patents have been described
as “difficult and expensive to obtain,” as well as entailing “a lengthy examination
process.”92 Trade dress law may protect a fashion design if that design has obtained
a reputation among consumers as identifying the source of the product.93 However,
such protection is not of general applicability, and its extent is limited to uses of the
design that create a substantial likelihood of consumer confusion.94 Finally, the
prohibition against obtaining copyright for “useful articles” means that clothing most
often does not secure protection.95
Due to the limited nature of existing intellectual property rights for fashion,
many designers assert that their successful designs are “knocked off” in a matter of
weeks or even days.96 This trend may particularly impact young designers who have
yet to establish reputations in the marketplace, and in fact may be unable to do so
when competitors frequently copy their work.97 Proponents of the Design Piracy
Prohibition Act further assert that the relatively short term of protection afforded —
three years — will protect high end “haute couture” designs but not unduly impact
the public.98 Supporters of this statute also point to intellectual property rights that
have been established for fashion design overseas.99
Not everyone agrees that enactment of the Design Piracy Protection Act would
be appropriate. Opponents of the legislation explain that the fashion industry is
enjoying great success and that copying is an integral and accepted practice within
89 17 U.S.C. § 1309 (2006).
90 S. 1957 at § 2(d)(2)(C) (emphasis added).
91 See Day, supra, at 243.
92 A Bill to Provide Protection for Fashion Designs: Hearing Before the House
Subcommittee on Courts, the Internet, and Intellectual Property, 109th Cong., 2nd sess. (2006)
(statement of the U.S. Copyright Office) [hereinafter “Hearings”].
93 See supra notes 31-32 and accompanying text.
94 See Hearings, supra (statement of U.S. Copyright Office).
95 Id.
96 See Day, supra, at 241-42.
97 See Hearings, supra (statement of Susan Scafidi, Associate Professor of Law, Southern
Methodist University).
98 Day, supra, at 270.
99 See Hearings, supra (statement of Susan Scafidi, Associate Professor of Law, Southern
Methodist University).
it.100 They also claim that this legislation would lead to numerous accusations of
infringement, stifling the creative production of fashion designs and reducing
consumer choice.101 They further observe that substantial copying of designs
continue to occur in foreign states that have enacted fashion design protection laws,
suggesting that this intellectual property right may prove of limited effectiveness.102
Amendments to the Boat Hull Act
Some experts believe that in the decade since its enactment, the Vessel Hull
Design Protection Act has been “underutilized, no doubt in part due to the difficulty
in proving infringement based on the way in which ‘hull’ was originally defined.”103
In particular, the Act currently defines the term “hull” as “the frame or body of a
vessel, including the deck of vessel . . . .”104 This definition requires that courts
consider the features incorporated into a vessel’s deck when considering what subject
matter is protected.105 As a result, the Act has been said to have created a “legal loop-
hole for ‘knock-off’ artists to freely copy a protected boat hull design as long as they
are clever enough to modify one or more protectable elements of the ‘deck.’”106
S. 1640, the Vessel Hull Design Protection Act Amendments of 2007,
apparently responds to these concerns. This legislation would amend the 1998
legislation by clarifying the distinction between a hull and a deck.107 S. 1640 would
also specify that protection is available for designs of hulls and decks, either
individually or in combination.108 The Senate passed this legislation on October 4,
U.S. Adherence to the Hague Convention
An international agreement known as the Geneva Act to the Hague Agreement
Concerning the International Registration of Industrial Designs potentially simplifies
100 See Hearings, supra (statement of David Wolfe, Creative Director, Donegar Creative
Services).
101 See Hearings, supra (statement of Christopher Sprigman, Associate Professor, University
of Virginia School of Law).
102 Id.
103 Olson, supra, at 177.
104 17 U.S.C. § 1301(b)(4) (2006). The statutory definition expressly excludes “masts, sails,
yards, and rigging” from the definition of “hull.” Id.
105 See Maverick Boat Co. v. American Marine Holdings, Inc., 70 USPQ2d 1493 (2004),
aff’d, 418 F.3d 1186 (11th Cir. 2005).
106 Olson, supra, at 180.
107 In particular, the word “hull” is defined in part as “the exterior frame or body of a
vessel,” while the word “deck” is defined in part as “the horizontal surface of a vessel that
covers the hull....” S. 1640 at § 1(c).
108 Id. at § 1(b) (“The design of a vessel hull, deck, or combination of a hull and deck,
including a plug or mold, is subject to protection . . . .”).
the process through which industrial design protection can be obtained in many
countries.109 Under current law, U.S. designers must file separate applications for
intellectual property protection in each jurisdiction where they seek to obtain
rights.110 This process is potentially complex and may involve multiple languages,
currencies, and local legal representatives.111
The Geneva Act to the Hague Convention would instead provide U.S. designers
with the option of filing a single English-language application at the U.S. Patent and
Trademark Office (USPTO). The application would then be forwarded to the World
Intellectual Property Organization (WIPO), which then publishes the application.
The intellectual property authorities of each designated member state then have a
maximum of 12 months to provide notice that the application has been refused. In
the event of a refusal, further efforts to obtain intellectual property protection in that
design would occur in keeping with national laws.112 If a member state does not give
notice of a refusal within 12 months, then the application is deemed to be granted.113
The Senate gave advice and consent to the ratification of the Geneva Act to the
Hague Convention on December 7, 2007.114 The United States has not yet deposited
its instrument of ratification with WIPO, however. As explained by President Bush’s
letter of transmittal to the Senate:
In the event that the Senate provides its consent to ratify the Agreement, the
United States would not deposit its instrument of ratification until the necessary115
implementing legal structure has been established domestically.
The USPTO has testified before Congress that a number of changes would need to
be made to render U.S. design patent law compatible with the Geneva Act to the
Hague Convention, including increasing the term of protection from 14 to 15 years
and providing limited rights to patent applicants between the date their international
109 World Intellectual Property Organization, Hague Agreement Concerning the International
Deposit of Industrial Designs, July 2, 1999, 2279 U.N.T.S. 156 (available at
[ h t t p : / / w w w.wipo.int/export/sites/www/ hague/en/legal_texts/pdf/geneva_act_1999.pdf]).
110 See Fryer, supra, at 662.
111 See CRS Report RL31132, Multinational Patent Acquisition and Enforcement: Public
Policy Challenges and Opportunities for Innovative Firms, by John R. Thomas.
112 See World Intellectual Property Organization, “The Hague Agreement Concerning the
International Registration of Industrial Designs: Main Features and Advantages” (available
at [http://www.wipo.int/freepublications/en/designs/911/wipo_pub_911.pdf]).
113 Id.
114 Treaty No. 109-21 (December 7, 2007).
115 Message from the President of the United States Transmitting the Geneva Act to the
Hague Convention Concerning the International Registration of Industrial Designs
(November 13, 2006).
applications are published and the date the patent issued.116 This implementing
legislation has not yet been introduced before Congress.
Automobile Spare Parts
The use of design patents to protect automobile aftermarket or collision repair
parts has long been debated.117 Some observers believe that allowing intellectual
property rights to cover “must-match” spare parts on complex products overly limits
competition. Others believe that distinguishing between primary and secondary
markets for the protected design would be unprecedented and unnecessarily limit
protection for designers.118 This debate has proceeded overseas as well. On
December 12, 2007, the European Parliament approved a proposal to end design
protection for automobile spare parts and other machinery components.119
Recent legal controversies have renewed this debate domestically. In In re
Certain Automotive Parts,120 the International Trade Commission held that certain
third-party replacement automobile parts, designed for use in the 2004 Ford F-150
pickup truck, infringed design patents owned by the Ford Motor Co. As a result, the
ITC banned the importation of these component parts into the United States. In
response, a coalition of automobile part manufacturers called on Congress to add a
“repair” infringement exemption to U.S. design patent law.121
116 See “Intellectual Property/Treaties: PTO Urges Senate Foreign Relations Committee to
Ratify Three IP Treaties,” 74 Patent, Trademark & Copyright Journal (Bureau of National
Affairs July 20, 2007), 346.
117 See Erica Pruetz, “Protecting Car Design Internationally: A Comparison of British and
American Design Laws,” 24 Loyola of Los Angeles International and Comparative Law
Review (2002), 475.
118 For further discussion reflecting different views in this debate, see Kenneth Enborg,
“Industrial Design Protection in the Automobile Industry,” 19 University of Baltimore Law
Review (1989-90), 227; James F. Fitzpatrick, “Industrial Design Protection and Competition
in Automobile Replacement Parts — Back to Monopoly Profits?,” 19 University of
Baltimore Law Review (1989-90), 233.
119 European Parliament legislative resolution of 12 December 2007 on the proposal for a
directive of the European Parliament and of the Council amending Directive 98/71/EC on
the legal protection of designs (available at [http://www.europarl.europa.eu/oeil
/file.jsp?id=5201742]). See Joseph Straus, “Design Protection for Spare Parts Gone in
Europe? Proposed Changes to the EC Directive: The Commission’s Mandate and its
Doubtful Execution,” 27 European Intellectual Property Review (2005), 391.
120 No. 337-TA-557, 2007 WL 2021234 (ITC May 4, 2007).
121 See “Legislation/Patents: Auto Parts Coalition Asks Lawmakers for Design Patent
Infringement Exemption,” 74 Patent, Trademark & Copyright Journal (Bureau of National
Affairs September 21, 2007), 611.
On March 13, 2008, legislation was introduced before the House of
Representatives that would introduce a new subsection (j) to the “Infringement of
patent” provision at § 271 of the Patent Act.122 That subsection would read:
It shall not be an act of infringement to make, use, offer to sell, or sell within the
United States or import into the United States any article of manufacture that
itself constitutes a component part of another article of manufacture, if the sole
purpose of the component part is for the repair of the article of manufacture of123
which it is a part so as to restore its original appearance.
It should be appreciated that this exemption appears to extend beyond automobile
spare parts and design patents. Rather, proposed § 271(j) of the Patent Act would
apparently apply to all industries with respect to any patent.124
Observers vary as to the merits of this proposal. Supporters of the legislation
assert that design patents on automobile replacement parts “increase repair bills,
block competition, and threaten the safety of consumers who may forego necessary
repairs because of their high cost.”125 However, not all concerned parties agree.
Design patent attorney Perry Saidman reportedly has stated that the legislation would
ignore “the rationale behind design patents” and opined that “any company whose
business is predicated on copying the original designs of others will . . . beat a path
to Congress’ door, claiming that their knockoff products increase competition and
reduce prices for consumers.”126
Judicial Developments Concerning Design Patents
Some legal experts have drawn attention to recent judicial opinions with respect
to design patents, with some expressing concern that their impact has been to
diminish the effectiveness of design patents in promoting innovation.127 One of these
opinions, Arminak and Associates, Inc. v. Saint-Gobain Calmar, Inc.,128 concerned
the identity of the “ordinary observer” in design patent infringement determinations.
In order to decide that an accused design infringes a design patent, a court must
122 H.R. 5638 was referred to the House Committee on the Judiciary on March 13, 2008.
This bill would amend 35 U.S.C. § 271 (2006).
123 H.R. 5638 at § 1.
124 See “Legislation/Design Patents: Lofgren Introduces Bill Exempting ‘Repair’ Parts from
Infringement Liability,” 75 Patent, Trademark & Copyright Journal (Bureau of National
Affairs March 21, 2008), 527.
125 See “Patents/Legislation: Labor, Auto Safety Groups Oppose Provisions in Patent Reform
Measure,” 74 Patent, Trademark & Copyright Journal (Bureau of National Affairs August
126 See “Legislation/Patents: Auto Parts Groups Lobby for Bill to Exempt Repair Parts from
Patent Infringement,” 75 Patent, Trademark & Copyright Journal (Bureau of National
Affairs April 25, 2008), 674.
127 Perry J. Saidman, “The Crisis in the Law of Designs,” 89 Journal of the Patent &
Trademark Office Society (2007), 301.
128 501 F.3d 1314 (Fed. Cir. 2007).
conclude that “in the eye of an ordinary observer, giving such attention as a purchaser
usually gives,” the patented and accused designs “are substantially the same, if the
resemblance is such as to deceive such an observer, inducing him to purchase one
supposing it is the other.”129 The Supreme Court has held that “ordinary observers”
should not be viewed as experts versed in the designs used within a particular
industry, but rather “those who buy and use” the product that bears the particular
design . 130
In the Arminak decision, the Court of Appeals for the Federal Circuit (“Federal
Circuit”) held that under the facts of that case, an industrial purchaser was the
appropriate “ordinary observer” for assessing infringement. The design patent in
Arminak depicted the top portion of a trigger sprayer, which is commonly termed a
“shroud.” Both the patent proprietor and the accused infringer sold trigger sprayers
to producers of liquid household products. The Federal Circuit concluded that
ordinary consumers, who do not purchase shrouds by themselves, but rather
household cleaning products with trigger sprayers, could not be judged the “ordinary
observer.” Rather, “the purchaser of the patented and accused designs in this case
is the purchaser of one of a retail product’s component parts that is thereafter
assembled with other parts to make the retail product.”131 The Federal Circuit
therefore affirmed the district court’s finding of noninfringement.
The ruling in Arminak has been criticized due its potential impact upon design
patent holders. As industrial purchasers are considerably more sophisticated than
ordinary consumers concerning the nuances of particular product designs, a finding
of infringement is much less likely when the standard of the “ordinary observer” is
raised beyond the level of the lay public. Although the Arminak holding may
potentially be justified under its particular facts, design patent attorney Perry
Saidman has viewed this ruling as inconsistent with governing Supreme Court
cases.132 Mr. Saidman has further concluded that the Arminak holding effectively
renders “a holding of design patent infringement virtually unattainable, . . . indeed
destroying all the protection for designs that Congress intended to give.”133
Another judicial opinion, Egyptian Goddess, Inc. v. Swisa, Inc.,134 raised two
issues of current controversy with respect to design patents. In Egyptian Goddess
and other decisions, courts have engaged in a process of “claim construction” with
respect to design patents.135 Because the claims of design patents consist of visual
images of the protected design, this “claim construction” process consists of putting
into words the visual appearance of the designs shown in the patent’s drawings. This
textual description is then compared to the accused product under the “ordinary
129 Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
130 Id.
131 501 F.3d at 1323.
132 Saidman, supra, at 301.
133 Id. at 314.
134 498 F.3d 1354 (Fed. Cir. 2007).
135 Id. at 1356.
observer” standard in order to determine whether the design patent was infringed or
not. For example, the asserted design patent in the Egyptian Goddess case concerned
an “ornamental nail buffer.” One of the patent’s seven figures appeared as follows:
The claim construction associated with the design patent was as follows:
A hollow tubular frame of generally square cross section, where the square has
sides of length S, the frame has a length of approximately 3S, and the frame has
a thickness of approximately T = 0.1S; the corners of the cross section are
rounded, with the outer corner of the cross section rounded on a 90 degree radius
of approximately 1.25T, and the inner corner of the cross section rounded on a
90 degree radius of approximately 0.25T; and with rectangular abrasive pads of
thickness T affixed to three of the sides of the frame, covering the flat portion of
the sides while leaving the curved radius uncovered, with the fourth side of the136
frame bare.
Some observers believe that the judicial claim construction inquiry potentially
provides a more fair and predictable method for determining the scope of patent137
protection. However, others have asserted that this “verbalization” of the claimed
design overly limits the scope of design patents and does not adequately allow for the138
judgment of the “ordinary observer” in design patent infringement determinations.
The Egyptian Goddess litigation also raised issues concerning the operation of
the “point of novelty” standard in design patent infringement determinations.139
136 Id. As described below, the Court of Appeals ultimately determined that the accused nail
buffers did not infringe the asserted design patent.
137 See Kyle J. Fiet, “Restoring the Promise of Markman: Interlocutory Patent Appeals
Reevaluated Post-Philips v. AWH Corp.,” 84 North Carolina Law Review (2006), 1291
(noting these views).
138 See Locke, supra; Perry J. Saidman and Allison Singh, “The Death of Gorman v. White:
Killing It Softly with Markman,” 86 Journal of the Patent and Trademark Office Society
(2004), 792.
139 See Daniel Adam Nadel, “The Elusive Point of Novelty Test Leaves Design Patent
(continued...)
Under this standard, “no matter how similar two items look, the accused device must
appropriate the novelty in the patented device” that distinguishes it from earlier
designs in order to prove infringement.140 The Federal Circuit has explained that the
patent proprietor must set forth either a single novel design element or a combination
of known elements that collectively present a “non-trivial advance over the prior
art.”141 If the design element or elements asserted by the patent proprietor do not
meet this standard, then the court will reach a judgment of noninfringement.
In the Egyptian Goddess case, the patent proprietor’s asserted point of novelty
was the combination of four of the claimed design’s elements: (1) an open and
hollow body, (2) square cross-section, (3) raised rectangular pads, and (4) exposed
corners. The court determined that an earlier design patent directed towards a nail
buffer disclosed all of these elements, with the exception that it was triangular, rather
than square in cross-section. Observing that a number of other references illustrated
nail buffers with square cross-sections, the court rejected the asserted “point of
novelty” and rendered a judgment of noninfringement.142
As it has come to be applied by the Federal Circuit, the “point of novelty”
standard has been criticized on a number of grounds. Some commentators believe
that this approach confuses validity and infringement standards for design patents and
also results in a narrow scope of design patent protection.143 However, other
observers explain that design patents contain general illustrations that do not specify
the distinctions between the patented design and the state of the art. They favor a
rule that ensures that there will be no finding of infringement when the accused
design has the same overall appearance of both the design patent and earlier designs,
particularly because they both use features found in well-known predecessors.144
Perhaps in response to critiques of the current state of design patent law, the
Federal Circuit recently decided to rehear the Egyptian Goddess appeal. In so doing,
the Court of Appeals specifically requested briefing with respect to claim
construction and the appropriate “point of novelty” standard.145 Because the Federal
Circuit possesses national jurisdiction over appeals in patent cases,146 its rulings will
be determinative with respect to design patents absent Supreme Court intervention.
139 (...continued)
Infringement in Limbo: A Critique of Lawman Armor Corporation v. Winner International,
LLC,” 17 Federal Circuit Bar Journal (2008), 343.
140 Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citation
omitted).
141 Egyptian Goddess, 498 F.3d at 1357.
142 Id. at 1358.
143 See Aaron Cook, “Points of Novelty, Lawman Armor, and the Destruction of Design
Patents,” 12 Journal of Technology Law & Policy (2007), 103.
144 See Amicus Brief of Elite Group, Inc. and Sensio, Inc. in Egyptian Goddess, Inc. v.
Swisa, Inc., No. 2006-1562, 2008 WL 545143 (Fed. Cir. 2008).
145 256 Fed. Appx. 357 (Fed. Cir. 2007).
146 28 U.S.C. § 1295(a)(4) (2006).
Issues in Innovation and Competition
Current congressional interest in industrial designs spans a number of different
issues and industries. This breadth of interest in strengthening intellectual property
rights for industrial designs arguably reflects the changing nature of the U.S.
economy. Given the increasing sophistication of foreign manufacturing, the
protection of industrial designs provides one mechanism for sustaining competitive
domestic design-based industries. As attorney Regan Keebaugh explains, “[i]f
economic reality means the United States can no longer compete in the production
side of manufacturing, then one way to maintain jobs in the manufacturing industry
is through developing a strong design industry to ensure that products made overseas147
are designed in the United States.”
Intellectual property laws are said to promote innovative industries by
establishing exclusive rights in new inventions, industrial designs, and other
creations. Absent such rights, “free riders” could easily duplicate and exploit the
innovative developments of others. Further, because they incurred no design and
development costs, copyists could likely undersell the original innovator. The
resulting inability of innovators to capitalize on their creations would lead to an148
environment where too little research and development occurs. Intellectual
property rights may also encourage others to design around these proprietary
interests, pointing the way to new products, markets, economies of production and
even entire industries.149
Although the established intellectual property paradigms of copyrights,
trademarks, and patents provide protection for traditional works of authorship, brand
names, and inventions, they also limit or deny protection for other sorts of subject
matter. As this report has explained, copyright, trade dress, and design patent law to
varying degrees deny protection to industrial designs with a functional component.150
Sui generis protection systems may potentially fill gaps that may not have been
anticipated by the framers of the traditional intellectual property regimes.151
Sui generis protection regimes also offer a potential advantage when compared
to the copyright, trademark, and patent statutes. Although the established forms of
intellectual property apply broadly to numerous industries and types of innovations,152
sui generis protection regimes may be more precisely tailored to meet the needs of
147 Keebaugh, supra, at 257.
148 See Rebecca S. Eisenberg, “Patents and the Progress of Science: Exclusive Rights and
Experimental Use,” 56 University of Chicago Law Review 1017 (1989).
149 Id.
150 See supra notes 24-28 (copyright); 36-38 (trade dress); 42-44 (design patents) and
accompanying text.
151 See generally J.H. Reichman, “Legal Hybrids Between the Patent and Copyright
Paradigms,” 94 Columbia Law Review (1994), 2432.
152 See CRS Report RL33996, Patent Reform in the 110th Congress: Innovation Issues, by
John R. Thomas and Wendy H. Schacht.
particular industries. For example, the acquisition of rights could be designed to fit
the perceived needs of particular industries, the scope and term of protection may be
particular product cycles, and competitors and consumers could enjoy the privilege
to use protected subject matter in certain circumstances.153
Policy makers may also appreciate that the designs of previous sui generis
regimes have tended to be based upon one of the established intellectual property
paradigms. For example, the rights established under the Semiconductor Chip
Protection Act of 1984154 are similar to copyright.155 On the other hand, both the
design and plant patent systems were incorporated into the existing utility patent laws
and therefore follow a patent-like model.156 Some observers believe that copyright-
or trademark-like protection represents the most appropriate scheme of protection for
industrial designs because neither regime requires courts or government officials to
analyze the merits of “creative expression applied to goods.”157 On the other hand,
other experts believe that the design patent law, which does entail an analysis of
whether an industrial design would have been obvious to a skilled artisan,158 has
historically served as the “best option” for protecting industrial designs.159
Although the establishment of sui generis regimes may reduce harmful free
riding that results in reduced investment in innovation, experts have also expressed
concerns about the expansion of intellectual property rights. They observe that the
primary mechanism through which intellectual property rights create incentives to
innovate is to limit the ability of others to participate in the marketplace.160 From the
perspective of the government, such systems are inexpensive when compared to
prizes or other potential incentives.161 Yet they also limit the ability of firms to
153 See generally Mark D. Janis and Stephen Smith, “Technological Change and the Design
of Plant Variety Protection Regimes,” 82 Chicago-Kent Law Review (2007), 1557.
154 98th Congress, P.L. 620, 98 Stat. 3347 (codified as amended at 17 U.S.C. § 901 et seq.).
155 See Leon Radomsky, “Sixteen Years After the Passage of the U.S. Semiconductor Chip
Protection Act: Is International Protection Working?,” 15 Berkeley Technology Law
Journal (2000), 1049.
156 See Jonathan D. Carpenter, “Intellectual Property: The Overlap Between Utility Patents,
Plant Patents, the PVPA, and Trade Secrets and the Limitations on the Overlap,” 81 North
Dakota Law Review (2005), 171.
157 Daniel H. Brean, “Enough is Enough: Time to Eliminate Design Patents and Rely on
More Appropriate Copyright and Trademark Protection for Product Designs,” 16 Texas
Intellectual Property Law Journal (2008), 325.
158 35 U.S.C. § 103(a) (2006).
159 Saidman, supra, at 303.
160 See Steven Wilf, “The Making of the Post-War Paradigm in American Intellectual
Property Law,” 31 Colombia Journal of Law & the Arts (2008), 139.
161 See Michael Abramowicz, “Perfecting Patent Prizes,” 56 Vanderbilt Law Review (2003),
compete and possibly raise prices and limit the products available to the public, at
least in the short term.162
In this regard, it should be appreciated that the traditional intellectual property
regimes often did not leave certain subject matter outside the scope of protection by
accident. Rather, this circumstance resulted from a purposeful legislative choice.163
For example, the patent statute stipulates that designs that would have been obvious
to a skilled artisan should not be awarded proprietary rights.164 The Supreme Court
recently explained this rule as resulting from the judgment that “[w]ere it otherwise
patents might stifle, rather than promote, the progress of useful arts.”165 To the extent
that proposed sui generis regimes lower this threshold and award proprietary rights
in “subpatentable” innovations, they may diminish the public domain and hamper
both future innovation and competition.166
Finally, congressional award of proprietary rights to some industries may inspire
additional lobbying efforts by others. Other sorts of potentially innovative products
— including databases and other compilations of information;167 perfumes, colognes,
and scents;168 and computer software169 — are among those that, at least according
to some observers, do not interface well with the traditional copyright, trademark,
and patent regimes. Mark Janis, a member of the faculty of the University of Iowa
College of Law, explains that once one industry has made its case for a sui generis
regime of intellectual property rights, “[i]t takes little imagination to extend this
reasoning to justify the creation of a multitude of additional second tier . . . regimes
having specialized subject matter requirements.”170 Determining which industries,
if any, deserve sui generis rights outside the established intellectual property
paradigms ultimately remains a matter of legislative judgment.
162 See Peter K. Yu, “The International Enclosure Movement,” 82 Indiana Law
Journal (2007), 827.
163 See Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991)
(explaining that the inability of copyright to protect facts per se is not an unforeseen
byproduct of the statutory scheme, but rather an essential characteristic of the copyright
system).
164 35 U.S.C. § 103 (2006).
165 KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1746 (2007).
166 See Mark D. Janis, “Second Tier Patent Protection,” 40 Harvard International Law
Journal (1999), 151.
167 See Daniel J. Gervais, “The Protection of Databases,” 82 Chicago-Kent Law Review
(2007), 1109.
168 See Thomas G. Field, Jr., “Copyright Protection for Perfumes,” 45 IDEA: The Journal
of Law and Technology (2004), 19.
169 See Pamela Samuelson et al., “A Manifesto Concerning the Legal Protection of Computer
Programs,” 94 Columbia Law Review (1994), 2308; but see Jane C. Ginsburg, “Four
Reasons and a Paradox: The Manifest Superiority of Copyright Over Sui Generis Protection
of Computer Software,” 94 Columbia Law Review (1994), 2559.
170 See Janis, supra, at 151.
Legislation
H.R. 2033 (Delahunt)
Design Piracy Prohibition Act. To amend title 17, United States Code, to
provide protection for fashion designs. Introduced on April 25, 2007. Referred to
the House Subcommittee on the Judiciary on April 25, 2007. Referred to the
Subcommittee on Courts, the Internet, and Intellectual Property on May 4, 2007.
H.R. 5638 (Lofgren)
To amend title 35, United States Code, to create an exception from infringement
for certain component parts used to repair another article of manufacture. Introduced
on March 13, 2008. Referred to the House Committee on the Judiciary on March 13,
S. 1640 (Leahy)
Vessel Hull Design Protection Amendments of 2007. A bill to amend chapter
13 of title 17, United States Code (relating to the vessel hull design protection), to
clarify the definitions of a hull and a deck. Introduced on June 18, 2007. Reported
by Senator Leahy from the Committee on the Judiciary on October 4, 2007. Passed
the Senate on October 4, 2007, and was received in the House on October 5, 2007.
S. 1957 (Schumer)
Design Piracy Prohibition Act. A bill to amend title 17, United States Code, to
provide protection for fashion designs. Referred to the Committee on the Judiciary
on August 2, 2007.