Design patents serve the important function of providing protection for a design during the time when that design is acquiring secondary meaning and thus becoming actionably strong under the trademark laws.
An important point lost on tireless detractors of basic design patent protection.
28
A design patent is a convenient mechanism that bridges the gap between a design and the time it takes to acquire secondary meaning under trademark law.
But that is a realization requiring at least a modicum of legal acumen. No wonder poseur Mooney never gets this subtle but important nuance.
It must be far too trivial.
27
“As I recall, Bartholdi was merely commissioned to produce the sculpture; accordingly it should be a work[] for hire.”
I’m not familiar with copyright law in the 1870s, but under current law it’s not that simple. Some works simply cannot be works for hire, and you must instead prepare a written agreement obligating the author to assign his or her copyright at the conclusion of the project.
17 U.S.C. 101 defines a “work made for hire” as
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas…
Attorneys and tax accountants will recognize that ‘hiring’ someone for a project does not necessarily make that person an ’employee’ as opposed to an ‘independent contractor.’ While it’s not impossible for an artist to be an employee, it would be difficult to argue that Bartholdi was acting as an employee when he created his various renditions of Liberty.
More importantly, the statute divests an independent contractor of copyright in only nine specified categories of works, and then only if there is an written instrument expressly stating that the work is a work for hire. You can neither assume that there was such an agreement, nor assume that a work like the Statue of Liberty is a “collective work” — the only category of the nine which even potentially encompasses it.
Once you’ve blundered through those obstacles, you are in for a very messy and fact dependent fight if the issue of copyright ownership should ever arise.
26
Max –
While the lower corner of the tablet you can see, and which is not resting against anything, is arguably below the top of the hip bone (or where the top of the hip bone would be, if Lady Liberty actually had a hip bone) the lower edge of the tablet inclines upwardly and backwardly from there. Which portion of said lower edge is “resting” on the “body” is difficult to tell. However, the rear lower corner may indeed be resting above the hip, and hip bone for that matter, on the back porch, assuming baby-got-back.
25
As I recall, Bartholdi was merely commissioned to produce the sculpture; accordingly it should be a works for hire. However, I cannot recall who hired him to do so.
24
A Flock of Seagulls? Someone remembers A Flock of Seagulls?
Monsieur Lunaire, did you or did you not cop your soubriquet from the man from Can?
23
Bloke, I think we can agree that 1)anatomically, on any definition of “hip”, no part of the “hip” is above the waist and 2) the specification is defining where the tablet shall “rest” against the body, the inclining major front face of the tablet being (of course) above that point of resting against the body. The tablet in the drawing rests against the body a good distance below the waist. I’m done (but it was fun debating the point).
22
David – I think you’re right that the two protections aren’t necessarily coterminous. However, I think the policy point is that if copyright and design patent do overlap to an appreciable degree, then we are giving two protections/rights of action to one endeavor. Is there a policy reason why designs ought to get multiple bites at injunctions and damages? Do we really want to encourage design creation twice as much as functional invention or fine art? Perhaps we are simply encouraging aesthetic invention over merely functional invention and functional art over merely fine art?
I would note that trademarks can also be copyrighted; however, those rights offer more different protections such that the encouraged behaviors differ. Although the overlapping protection does perhaps encourage creative/expressive trademarks, which makes consumerism all the more fun.
21
Max
“It has already slipped hopelessly below the hipbone”…dude doesn’t that beg the question?
Where does the hip start and stop (not hip bone)?
Besides, clearly the tablet is at rest and from my eyes the majority of the tablet is next to the body below the breasts and above the hip.
…she is no Palin but she does have a sexy look, maybe it is just all this hip talk.
20
Yawn.
19
Mooney may not be an article of manufacture, but he’s certainly a piece of work.
18
“Neither your head nor your hair is an article of manufacture.”
A surgeon manufactured Michael Jackson’s face. When does my face cease to be “my” face? What if my hair is made into a wig? What if it is then plugged back into my head?
“obtaining further protection through a design right is comparatively inexpensive”
Compared to what? And why should that be the case? i.e., why is examination of design patents practically non-existent?
17
“I continue to be confused as to why copyright isn’t sufficient to protect most of the subject matter of design patents. (I.e., pictorial, graphical, or sculptural works that are nonfunctional).”
It isn’t “sufficient” (remember, that is a value judgment) because copyright (1) prohibits only copying and (2) extends only to expressive elements, not an underlying idea. Consequently, if someone were to create a PGS of a Roman woman holding a torch and a tablet, without reference to Barthaldi’s work, it would not necessarily be an act of copyright infringement. Barthhaldi didn’t create the Statue of Liberty out of whole cloth – it is a representation of the goddess Libertas – so it’s not inconceivable that someone could create a work that was not a copy of Barthaldi’s work but sufficiently close to infringe a design patent. Someone could also have commissioned a work based on a vague description such as “Libertas bearing an upraised torch and an inscribed tablet,” and then attempted to rely upon the idea/expression distinction to defend the work from claims of copyright infringement.
The ultimate point is: the ordinary observer test is different from the test for copyright infringement. You may argue that the the chances of a work infringing a design right but not a copyright are low, but obtaining further protection through a design right is comparatively inexpensive. You should also consider the magnitude of that particular project, and the various fundraising efforts that were being considered in order to support it.
16
I shoudl add–design patent on a wig with the Flock of Seagulls haircut, sure. As applied to a person’s own hair, no.
15
Mooney–
No the Flock of Seagulls haircut couldn’t have been the subject of a design patent. Neither your head nor your hair is an article of manufacture. 35 USC 171.
14
“Mooney, let’s hear your usual rant about how ridiculous this design patent is.”
I agree with poster upthread: what’s the matter with copyright laws for this sort of thing?
Also makes me wonder: if I get plastic surgery on my face, can I get a design patent on my face and image thereof? That Flock of Seagulls haircut could have been patented as a design patent, no? Probably could have gotten a utility patent on the method of cutting/shaping, too.
13
By the way, I’m not sure that a “Statute” of Liberty exists. Maybe you meant the Bill of Rights?
12
Wow. That’s an impressively fast reaction time. And I’m even more impressed, that you haven’t anything better to do, Dennis, than read our scribblings in this blog. Keep up the great work.
11
I’m working on the Next button. It was unintentional. DC
10
Dennis, I second the request from Next Button. What we have to do now is not only “ridiculous” but also very time-consuming. We have better things to do. Besides, it takes all the fun out of contributing to a long thread.
9
Bloke, imagine the tablet as a toddler. It has already slipped hopelessly below the hipbone, and is no longer sitting stably. Besides, the specification says “above” the hip. To persons having ordinary skill in the art of the female form, does “hip” mean the same thing now as in 1879? I would think it very likely that evidence would easily establish that proposition, and that proving the converse would be tough.
But argue the case, by all means. That’s what this blog is for. Fun.
8
D, for the love of god, please take the “next” button away and make it so that the comments all load at once just like they used to. Having to scroll down, hit next, scroll down, hit next… 5 times is ridiculous. At least make comments per page 50 or 100 please.
7
Max
How do you know the tablet is below the hip, are you saying you’ve seen Miss Liberty naked? All I see are flowing robes.
Does “hip” mean the same thing now as it did back in 1879…beside just where does a hip start and stop?
IPBloke
6
Too bad Bartholdi didn’t have someone like Mr. Saidman to put some of that stuff in phantom lines and get broader patent protection.
5
Whereas it is commonplace for those applying for utility patents and trademark registrations to apply outside their domestic jurisdiction, it is relatively rare for proprietors of designs to apply to register outside the home jurisdiction. Dennis, what proportion of holders of US patents are aliens in 1) utility patents and 2) design patents. What does this tell us, about the international importance of design patents?
4
I continue to be confused as to why copyright isn’t sufficient to protect most of the subject matter of design patents. (I.e., pictorial, graphical, or sculptural works that are nonfunctional)
3
“Cottin”
L O L
2
Mr Saidman, I’m a bit confused. In the representation, the tablet rests against the body below the hip, but the specification definitely says that the tablet rests “above the hip”. Is Liberty getting tired? I hope not. Did the PTO examine the application thoroughly enough? Does it matter to validity, that the text and the drawing are inconsistent?
1
OK, Mooney, let’s hear your usual rant about how ridiculous this design patent is.
Let’s try this again,
Design patents serve the important function of providing protection for a design during the time when that design is acquiring secondary meaning and thus becoming actionably strong under the trademark laws.
An important point lost on tireless detractors of basic design patent protection.
A design patent is a convenient mechanism that bridges the gap between a design and the time it takes to acquire secondary meaning under trademark law.
But that is a realization requiring at least a modicum of legal acumen. No wonder poseur Mooney never gets this subtle but important nuance.
It must be far too trivial.
“As I recall, Bartholdi was merely commissioned to produce the sculpture; accordingly it should be a work[] for hire.”
I’m not familiar with copyright law in the 1870s, but under current law it’s not that simple. Some works simply cannot be works for hire, and you must instead prepare a written agreement obligating the author to assign his or her copyright at the conclusion of the project.
17 U.S.C. 101 defines a “work made for hire” as
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas…
Attorneys and tax accountants will recognize that ‘hiring’ someone for a project does not necessarily make that person an ’employee’ as opposed to an ‘independent contractor.’ While it’s not impossible for an artist to be an employee, it would be difficult to argue that Bartholdi was acting as an employee when he created his various renditions of Liberty.
More importantly, the statute divests an independent contractor of copyright in only nine specified categories of works, and then only if there is an written instrument expressly stating that the work is a work for hire. You can neither assume that there was such an agreement, nor assume that a work like the Statue of Liberty is a “collective work” — the only category of the nine which even potentially encompasses it.
Once you’ve blundered through those obstacles, you are in for a very messy and fact dependent fight if the issue of copyright ownership should ever arise.
Max –
While the lower corner of the tablet you can see, and which is not resting against anything, is arguably below the top of the hip bone (or where the top of the hip bone would be, if Lady Liberty actually had a hip bone) the lower edge of the tablet inclines upwardly and backwardly from there. Which portion of said lower edge is “resting” on the “body” is difficult to tell. However, the rear lower corner may indeed be resting above the hip, and hip bone for that matter, on the back porch, assuming baby-got-back.
As I recall, Bartholdi was merely commissioned to produce the sculpture; accordingly it should be a works for hire. However, I cannot recall who hired him to do so.
A Flock of Seagulls? Someone remembers A Flock of Seagulls?
Monsieur Lunaire, did you or did you not cop your soubriquet from the man from Can?
Bloke, I think we can agree that 1)anatomically, on any definition of “hip”, no part of the “hip” is above the waist and 2) the specification is defining where the tablet shall “rest” against the body, the inclining major front face of the tablet being (of course) above that point of resting against the body. The tablet in the drawing rests against the body a good distance below the waist. I’m done (but it was fun debating the point).
David – I think you’re right that the two protections aren’t necessarily coterminous. However, I think the policy point is that if copyright and design patent do overlap to an appreciable degree, then we are giving two protections/rights of action to one endeavor. Is there a policy reason why designs ought to get multiple bites at injunctions and damages? Do we really want to encourage design creation twice as much as functional invention or fine art? Perhaps we are simply encouraging aesthetic invention over merely functional invention and functional art over merely fine art?
I would note that trademarks can also be copyrighted; however, those rights offer more different protections such that the encouraged behaviors differ. Although the overlapping protection does perhaps encourage creative/expressive trademarks, which makes consumerism all the more fun.
Max
“It has already slipped hopelessly below the hipbone”…dude doesn’t that beg the question?
Where does the hip start and stop (not hip bone)?
Besides, clearly the tablet is at rest and from my eyes the majority of the tablet is next to the body below the breasts and above the hip.
…she is no Palin but she does have a sexy look, maybe it is just all this hip talk.
Yawn.
Mooney may not be an article of manufacture, but he’s certainly a piece of work.
“Neither your head nor your hair is an article of manufacture.”
A surgeon manufactured Michael Jackson’s face. When does my face cease to be “my” face? What if my hair is made into a wig? What if it is then plugged back into my head?
“obtaining further protection through a design right is comparatively inexpensive”
Compared to what? And why should that be the case? i.e., why is examination of design patents practically non-existent?
“I continue to be confused as to why copyright isn’t sufficient to protect most of the subject matter of design patents. (I.e., pictorial, graphical, or sculptural works that are nonfunctional).”
It isn’t “sufficient” (remember, that is a value judgment) because copyright (1) prohibits only copying and (2) extends only to expressive elements, not an underlying idea. Consequently, if someone were to create a PGS of a Roman woman holding a torch and a tablet, without reference to Barthaldi’s work, it would not necessarily be an act of copyright infringement. Barthhaldi didn’t create the Statue of Liberty out of whole cloth – it is a representation of the goddess Libertas – so it’s not inconceivable that someone could create a work that was not a copy of Barthaldi’s work but sufficiently close to infringe a design patent. Someone could also have commissioned a work based on a vague description such as “Libertas bearing an upraised torch and an inscribed tablet,” and then attempted to rely upon the idea/expression distinction to defend the work from claims of copyright infringement.
The ultimate point is: the ordinary observer test is different from the test for copyright infringement. You may argue that the the chances of a work infringing a design right but not a copyright are low, but obtaining further protection through a design right is comparatively inexpensive. You should also consider the magnitude of that particular project, and the various fundraising efforts that were being considered in order to support it.
I shoudl add–design patent on a wig with the Flock of Seagulls haircut, sure. As applied to a person’s own hair, no.
Mooney–
No the Flock of Seagulls haircut couldn’t have been the subject of a design patent. Neither your head nor your hair is an article of manufacture. 35 USC 171.
“Mooney, let’s hear your usual rant about how ridiculous this design patent is.”
I agree with poster upthread: what’s the matter with copyright laws for this sort of thing?
Also makes me wonder: if I get plastic surgery on my face, can I get a design patent on my face and image thereof? That Flock of Seagulls haircut could have been patented as a design patent, no? Probably could have gotten a utility patent on the method of cutting/shaping, too.
By the way, I’m not sure that a “Statute” of Liberty exists. Maybe you meant the Bill of Rights?
Wow. That’s an impressively fast reaction time. And I’m even more impressed, that you haven’t anything better to do, Dennis, than read our scribblings in this blog. Keep up the great work.
I’m working on the Next button. It was unintentional. DC
Dennis, I second the request from Next Button. What we have to do now is not only “ridiculous” but also very time-consuming. We have better things to do. Besides, it takes all the fun out of contributing to a long thread.
Bloke, imagine the tablet as a toddler. It has already slipped hopelessly below the hipbone, and is no longer sitting stably. Besides, the specification says “above” the hip. To persons having ordinary skill in the art of the female form, does “hip” mean the same thing now as in 1879? I would think it very likely that evidence would easily establish that proposition, and that proving the converse would be tough.
But argue the case, by all means. That’s what this blog is for. Fun.
D, for the love of god, please take the “next” button away and make it so that the comments all load at once just like they used to. Having to scroll down, hit next, scroll down, hit next… 5 times is ridiculous. At least make comments per page 50 or 100 please.
Max
How do you know the tablet is below the hip, are you saying you’ve seen Miss Liberty naked? All I see are flowing robes.
Does “hip” mean the same thing now as it did back in 1879…beside just where does a hip start and stop?
IPBloke
Too bad Bartholdi didn’t have someone like Mr. Saidman to put some of that stuff in phantom lines and get broader patent protection.
Whereas it is commonplace for those applying for utility patents and trademark registrations to apply outside their domestic jurisdiction, it is relatively rare for proprietors of designs to apply to register outside the home jurisdiction. Dennis, what proportion of holders of US patents are aliens in 1) utility patents and 2) design patents. What does this tell us, about the international importance of design patents?
I continue to be confused as to why copyright isn’t sufficient to protect most of the subject matter of design patents. (I.e., pictorial, graphical, or sculptural works that are nonfunctional)
“Cottin”
L O L
Mr Saidman, I’m a bit confused. In the representation, the tablet rests against the body below the hip, but the specification definitely says that the tablet rests “above the hip”. Is Liberty getting tired? I hope not. Did the PTO examine the application thoroughly enough? Does it matter to validity, that the text and the drawing are inconsistent?
OK, Mooney, let’s hear your usual rant about how ridiculous this design patent is.
Comments are closed.