A Trademark Justification for Design Patent Rights

I have posted a new draft-article to SSRN entitled A Trademark Justification for Design Patent Rights. The article is currently in the editing process and will hopefully be published later this year in the Harvard Journal of Law & Technology.

As the title suggests, I argue that trademark theory offers the best modern justification for ongoing design patent rights. I suggest that design patents serve as an alternative rule of evidence for trade dress rights and are especially useful when trade dress rights are unavailable (or not yet available).

The Abstract: In a series of cases spanning more than one hundred years, courts and the US patent office have made clear that design patents are not to be justified by a fact that the newly invented ornamental design aids in distinguishing a company's product from those of its competitors. This article reverses that conclusion and argues instead that the trademark-like distinctiveness function that helps eliminate customer confusion is the most compelling policy justification for the continued protection of design patent rights in the US.  In cursory language, a number of courts have suggested that the foundation of design patents policy follows the same incentive-to-create approach of copyright and utility patent law. I tentatively reject this traditional incentive model as unlikely to be important in most situations involving ornamental designs.  Rather, I suggest the better justification for design patent doctrine lies in the notion that design patent rights serve as an alternative rule of evidence for trade dress protection.  However, design patents are not merely a parallel alternative to trade dress.  Rather, the existence of practical differences between the doctrines means that design patents rights are available in situations where trade dress protection is unavailable or uncertain.

This article presents a new set of empirical results to support the theoretical construct that design patents fill a gap in trade dress law protection.  Based on the data, I tentatively reject the oft-stated conventional wisdom that design patents are worthless for many because procurement is too slow, expensive, and difficult.  Rather, based on an analysis of the prosecution history files of a large sample of recently issued design patents, I conclude that the current design patent examination system operates as a de facto registration system.  Notably, more than ninety-eight percent (98%) of the patents in my study were issued without the Patent Office challenging their inventiveness. The dramatic rise in the number of design patents being issued indicates that designers find value in design patent protection, and a study of parallel design patent and trade dress litigation suggests that design patents are serving as a back-up or replacement for trade dress rights.

Notes:

  • Download the article at http://ssrn.com/abstract=1656590 and click on “One-Click Download”.
  • E-mail comments to me dcrouch@patentlyo.com.
  • If you think my conclusions are obvious, it may be because I have been making similar suggestions on Patently-O for the past few years. Or else your standards are too high. :)

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

74 thoughts on “A Trademark Justification for Design Patent Rights

  1. IANAE, although it pains me to agree with His Pingness — “What He Said”.

    Your InsANe[A]E denials just keep adding to your ludicrosity.

    P.S. Yes, I do enjoy making up new words like “ludicrosity” (or maybe it is a word; too busy to look `er up) to fit your twist-in-the-ether-winds expressions of nonsensicality.

  2. Which of those parts do you have the legitimate moral authority to complain about? Not the wipers, the tires, or the engine, because they work fine.

    I gotsa problem with your assignin of moral authority here. O course ther be more than one part that we can be complaining about – there be functional and there be aesthetic – I have a moral authority to complain about both.

    The functional/aesthetic merge is a red herring. Some parts have both and both be important and both be protected – that the way it is and that the way it should be. Design protects appearance. It don’t matta if the tires perform the same, they be something that be seen. Don’t be tellin me I don’t have moral authority to complain about how my ride look.

    And I don’t know why you be all “This really isnt complicated” in your maynard voice-over – thise trying to change the law be the ones trying to make it complicated (oops that right – you getting thrashed in your other arguments – my bad, Iza got ya).

  3. What some people routinely do or don’t do is immaterial.

    Of course it’s material. What people routinely do when things break is precisely how you identify what counts as a “repair”.

    Where is it in the language of the proposed law that would prevent the public from claiming that their fancy as-provided tires and/or fancy as-provided wheels and/or fancy as-provided wiper assemblies are being replaced with (what would otherwise be infringing) knock-offs that look exactly the same, because they want their car to look the same as it did originally?

    “if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance.”

    Use your head for a second. Suppose you get in a car crash and the entire front end of your Camry is mangled. You take the car to the shop (not your Toyota dealer, let’s say) and ask for it to be repaired. Your insurance company is paying.

    You get the car back, and it doesn’t quite look right. The mechanic put on an Accord hood, Mazda 6 headlights, random wiper blades, and he replaced all four of your Michelin tires (two of which needed it and the other two of which were pretty worn) with same-sized new Pirelli tires. Also, the engine looks different but performs the same.

    Which of those parts do you have the legitimate moral authority to complain about? Not the wipers, the tires, or the engine, because they work fine. But you’re sure as heck going to have a problem with that hood and those headlights, even if they’re new OEM parts and they work exactly as intended.

    Why is that? Because some of those parts were put on solely to restore the car’s appearance, and some of those parts were put on to make the car work.

    This really isn’t complicated.

  4. >> That’s precisely what the design patents on those parts are meant to protect, and they still would. But clearly other people aren’t. You don’t have to be an expert in car manufacture or repair to know that people routinely buy different brands or styles of replacement tires, and don’t go specifically looking for the exact same tires that came with the car. Another easy way you can tell that wheels and tires aren’t must-have aesthetic parts is that lots of people drive around all winter on ugly steel rims with winter tires that sometimes aren’t even the same size as their summer wheels and tires. << What some people routinely do or don't do is immaterial. Where is it in the language of the proposed law that would prevent the public from claiming that their fancy as-provided tires and/or fancy as-provided wheels and/or fancy as-provided wiper assemblies are being replaced with (what would otherwise be infringing) knock-offs that look exactly the same, because they want their car to look the same as it did originally? Without a long string of definitions and listings of exceptions, the language as proposed allows this sort of "gaming".

  5. I didn’t want to lose sight of giving out kudos to miss Theresa with her post at Aug 18, 2010 07:00 PM:

    With regards to overlapping copyright and design patent rights… See Franklin Pierce IP Mall, Copyright Review Board decisions, Design of a Wristwatch at 18 (May 26, 2005).

    Very interesting stuff – and quite telling for the reason that both Fed agencies came around –
    There apears to be no statutory or other justification for [having to choose between patents and copyrights]We agree.

  6. but when replacing them you really have no option but to go for a replacement part having the exact same appearance

    Ya always have options – Oh wait, thats right you want the option that someone has earned a legal right to control under our current laws you hold so dear – that’s cause it’s the law itself and the policy behind it that’s important.

    Oh wait – your answer means squat because you are the one wanting to change the law. I get it, you were just funnin cheap cheap cheap with somethin that sounded good cause all your other arguments were gettin trashed – Ima with ya – took me a minute, seein as Ima not that sharp.

    sharp – Im still LOLing me- it be the simple things.

  7. IANAE, as far as I can tell, your reply appears not to address the fact that the proposed text gives people the right to copy the tires or wipers mentioned.

    I did address it. The tires and wipers are not within the proposed text, because they are not replaced to restore the appearance of the vehicle. Same as if you replaced the radio or the engine block. Those are functional parts, and are routinely replaced with similarly functional parts that have a different appearance.

    How do you know people aren’t getting the same tires as were originally provided because they really really like how they look?

    Maybe some people are. That’s precisely what the design patents on those parts are meant to protect, and they still would. But clearly other people aren’t. You don’t have to be an expert in car manufacture or repair to know that people routinely buy different brands or styles of replacement tires, and don’t go specifically looking for the exact same tires that came with the car. Another easy way you can tell that wheels and tires aren’t must-have aesthetic parts is that lots of people drive around all winter on ugly steel rims with winter tires that sometimes aren’t even the same size as their summer wheels and tires.

    Anybody who has ever owned a car should be able to readily identify which parts can or can’t be replaced by different-looking parts when they break, and it’s disingenuous for you to say the proposed law is unworkable because we can’t read minds.

    Second, isn’t the bumper of a car more than solely an aesthetic part?

    Leaving aside the fact that bumpers are currently designed to perform less function than ever, the fancy sheet metal or plastic panel on the outside of the bumper that fits flush with the rest of your car is obviously a purely aesthetic component. The shocks and other structural members inside are clearly not. Come on, you know this stuff. You can’t be this oblivious.

    A car’s hood and front fenders are also not solely aesthetic, designed to be (and serving as) energy dampers, not to mention the impact on fuel economy.

    They may not be solely aesthetic (I suppose any aesthetic component of a car will almost inherently affect aerodynamics), but when replacing them you really have no option but to go for a replacement part having the exact same appearance. When you replace the front left fender, you deliberately do it in such a way that you restore the car’s original appearance. You don’t ask for whatever part dampens some energy. You wouldn’t, for example, put a Camry fender on your Accord, even though it has similar energy damping properties and is similarly aerodynamic.

    They didn’t game Congress to get special exceptions carved out solely to benefit their financial interests. Quite the contrary – they are working within the framework as is already set.

    So… your distinction is based on whether they asked for the law to be set up that way or whether they’re gaming the system that already existed? How is that relevant to whether the law ought to be changed? It’s obviously an unjustified windfall for them the way it’s set up, so let’s fix it.

  8. It be funny though how you say it be the importance of the law itslef and the policy behind it, given as you don’t give crrp about both when it comes to design patent law (cause they aint real patents – right?)

  9. Ouch IANAE – ya seem out maneuvered here. Iza just glad that this be one of those areas that I think you be a little wack to begin with, so it don’t lessen my appreciation of your awesomeness none.

  10. IANAE, as far as I can tell, your reply appears not to address the fact that the proposed text gives people the right to copy the tires or wipers mentioned. All one has to say is, I want my car to look exactly like it originally did.

    …free to choose any other tires that fit on your wheels, even non-Michelin tires, and your car will still look fine.

    WHAT? When did we go from “original appearance” to “looks fine”? If it was enough to say, “Hey, Joe, your car now looks “fine”, even if it doesn’t look like it originally did”, we wouldn’t even be having this conversation. The proposal is, it will not be an infringment of design patents to restore the article to its original appearance. Making one’s car “look fine” doesn’t factor in at all.

    You also make arguments that tires or wipers are actually functional components, not aesthetic, and that people don’t replace them for aesthetic reasons.

    First, how do you know the motive behind everyone’s purchase of their replacement parts? How do you know people aren’t getting the same tires as were originally provided because they really really like how they look? Nice white raised lettering, braided shoulderwall design, etc., all coverd by those (to be) worthless design patents.

    Second, isn’t the bumper of a car more than solely an aesthetic part? Clearly it has a safety function, and once the bumper’s bumped, its safety function must also be replaced.

    For that matter, even if the bumper still looks the same (no visible damage), it must normally be replaced if the resistance shocks have been compressed more than a certain percentage of their allowed travel length. How about this particular case – is the design patent on the bumper still unenforceable? Even though the bumper is a design part but is being replaced for reasons other than appearance?

    A car’s hood and front fenders are also not solely aesthetic, designed to be (and serving as) energy dampers, not to mention the impact on fuel economy.

    And no, the current law is not a “gimme” for Ford or any other patentee. They didn’t game Congress to get special exceptions carved out solely to benefit their financial interests. Quite the contrary – they are working within the framework as is already set.

  11. When mangled in a wreck, replacement of the tires will serve to restore the original vehicle appearance.

    Yes, but you are free to choose any other tires that fit on your wheels, even non-Michelin tires, and your car will still look fine. You can even get completely new wheels. You’re not even limited to the size of wheel that came with your car.

    The tires don’t need to match the rest of your car. Besides, they’re both a functional part and a wear part, which makes them completely different from what we’re talking about. You don’t buy them to restore your car’s appearance, you buy them to restore your car’s functionality.

    As for, “there’s ample room for design-around”, the point is, if the proposed text should pass, then there is no need to design around. The patent is unenforceable.

    Well, maybe it is. But who cares? Nobody buys replacement wipers for the sole reason that they look like your car’s factory-installed OEM wipers anyway. You buy them for their function, and your next consideration will probably be price. In other words, you don’t replace them to restore your car’s appearance. You replace them to restore your car’s functionality.

    Then rather than this tack-on exception to the rule, it’d be better to amend so as to abolish design patents.

    Well, no. People do buy new cars for their looks, you know. And the OEMs want some form of protection before the cars go on the market, so trade dress is out.

    But the above-proposed exception is too much of a gimme for State Farm et al.

    And the current law isn’t too much of a gimme for Ford?

    It doesn’t matter who is making money off the amendment. Every law shifts the balance of the economy somewhat. Somebody gains, somebody loses. What’s important is the law itself and the policy behind it.

  12. >> Europe has been convulsed for the last 20 years with the subject of Registered Design protection for auto parts… << Convulsed! My goodness, tres dramatique! 😉

  13. >> And yet, your entire argument depends on the very fact you know you have no evidence for. What’s next, a rant about terror babies? < < Well now, that was nice and rude. Ranting about terror babies? Anyway, hey, think on this. The sidewall design of my tires is covered by D483,324, which is owned by Michelin and not an auto maker. These tires came with the car as-sold by the auto maker. When mangled in a wreck, replacement of the tires will serve to restore the original vehicle appearance. >> [windshield wiper is a] primarily functional part, and not one that’s likely to be damaged in a crash that leaves the car worth repairing. The OEM part may have a distinctive look to it (for all I know), but there’s ample room for design-around and healthy market competition …. < < Please. All you need to do is whack a tree branch while off-roading (had to replace the windshield, too). Or let your children "help" wash the vehicle. As for, "there's ample room for design-around", the point is, if the proposed text should pass, then there is no need to design around. The patent is unenforceable. The language covers all design-patented component parts of the whole article, so long as the purpose of the replacement of the component part is "so as to restore its original appearance". >> Actually, it goes back to designs being a poor fit for 35 USC. Novelty and inventiveness are not appropriate metrics for ornamental features. They’re not really inventions. << Then rather than this tack-on exception to the rule, it'd be better to amend so as to abolish design patents. I wouldn't actually complain much (if any) about that. But the above-proposed exception is too much of a gimme for State Farm et al.

  14. With regards to overlapping copyright and design patent rights — there was a copyright office regulation until 1995 (not sure when it began) that prohibited copyright protection for an object that was already protected by a design patent. See Franklin Pierce IP Mall, Copyright Review Board decisions, Design of a Wristwatch at 18 (May 26, 2005).

  15. Europe has been convulsed for the last 20 years with the subject of Registered Design protection for auto parts that “must fit” or “must match”. Is this terminology ever used, in the USA?

  16. I can’t guarantee that any given OE part supplied is also one of those that are being patented by the suppliers.

    And yet, your entire argument depends on the very fact you know you have no evidence for. What’s next, a rant about terror babies?

    But I think it strains credulity that only their non-patented parts go to the auto factory,

    Reminding you yet again that we’re confining our analysis to design patents, what in the world makes you think Ford would completely outsource any aspect of the outward appearance of their cars, without at least doing enough to get an inventor named on the patent?

    It doesn’t strain credulity at all that any part of how a Ford looks is determined at least in part by Ford, and you won’t find a whole lot of design patents for factory Ford parts assigned solely to Bosch or to any outside supplier. Especially since all of those outside suppliers are well known to also sell after-market enhancements, upgrades, and other sorts of custom parts, which they can sell without accountability to Ford, and which they are therefore more likely to want to design-patent.

    note at least that wiper assemblies seldom have to fit into a confined space other than broad limitations around full transverse height if the stop position intends to nest somewhat between the hood and windshield.

    That’s true. But then we’re in the same situation as with toothbrush replacement heads. It’s a primarily functional part, and not one that’s likely to be damaged in a crash that leaves the car worth repairing. The OEM part may have a distinctive look to it (for all I know), but there’s ample room for design-around and healthy market competition as long as you build a set that also works on that size of windshield with those axes of rotation.

    Headlamps? I dunno.

    Headlamps have to fit flush with the surrounding body panels, though that’s a relatively recent design trend. You could change the 3-D shape of the transparent surface, but then you’d have to replace left and right together when one breaks.

    Many of the design patents I looked at left me scratching my head for any evidence of inventive design work. But that goes back to actually enforcing the 35 USC as written.

    Actually, it goes back to designs being a poor fit for 35 USC. Novelty and inventiveness are not appropriate metrics for ornamental features. They’re not really inventions.

  17. “I don’t believe they’re actually designing the parts that go into the factory standard car, at least not without “inventive” (such as designs are) contributions from within Ford. If you can provide actual evidence of that, I’m open to it. It would be pretty awkward for Ford to have to design their cars around someone else’s headlights without any creative input as to the shape of those headlights, though.”

    A quick scan using Google will show you that (for example) Hella sells numerous replacement parts, where it’s stated that Hella is the original equipment (“OE”) manufacturer, and further stated that the part being sold as a replacement part is the OE part. You’ll find the same sorts of comments with Bosch’s lights and wiper blades/assemblies. (I haven’t looked at the rest of the suppliers listed.)

    But without having some way to cross index these purported OE parts with Hella’s or Bosch’s design patents (gotta find me a Ford, BMW, Bosch, Hella, other, “mole”), no, I can’t guarantee that any given OE part supplied is also one of those that are being patented by the suppliers.

    But I think it strains credulity that only their non-patented parts go to the auto factory, or stated contrariwise that their patented parts are only sold as non-OE after market enhancements and never as OE parts to the factory.

    And this does not strain your credulity. Absent a smoking gun (something stronger than the circumstantial), we’re never going to agree.

    As for the part of your post quoted above, note at least that wiper assemblies seldom have to fit into a confined space other than broad limitations around full transverse height if the stop position intends to nest somewhat between the hood and windshield. So to the extent there’s an inventive design, it need have little or nothing to do with the outer dimensions of the thing. Headlamps? I dunno. Many of the design patents I looked at left me scratching my head for any evidence of inventive design work. But that goes back to actually enforcing the 35 USC as written.

  18. They are Ford suppliers and they are getting design patents on the types of items that routinely go into Ford vehicles (head/tail lamp assemblies, wipers and wiper covers, exterior brake assembly housings, etc.).

    The types of items. In other words, they’re Ford suppliers and they generally sell car parts.

    As long as they sell a stand-alone headlight that could be used in a Ford car (the “upgrades or enhancements” you mentioned), they’re fine. If they’re selling replacement headlights of the exact same design (in the design patent sense) Ford puts in its cars, that’s a different story.

    Do you believe that they are getting design patents on the components sold only for “upgrades” or enhancements, but foregoing design patents on the items that are sold directly to Ford and/or are direct replacement parts of same?

    I don’t believe they’re actually designing the parts that go into the factory standard car, at least not without “inventive” (such as designs are) contributions from within Ford. If you can provide actual evidence of that, I’m open to it. It would be pretty awkward for Ford to have to design their cars around someone else’s headlights without any creative input as to the shape of those headlights, though.

    If those suppliers are getting design patents without Ford as an assignee or a Ford “inventor”, I’d bet money those parts are not going into Ford cars at the factory. At best, they’re dealer-installed accessories, which wouldn’t exempt them from design protection on replacements.

  19. >> With absolutely no indication that those parts form any component of any production car that you buy at the Ford dealership. << Never say die, eh? They are Ford suppliers and they are getting design patents on the types of items that routinely go into Ford vehicles (head/tail lamp assemblies, wipers and wiper covers, exterior brake assembly housings, etc.). Do you believe that they are getting design patents on the components sold only for "upgrades" or enhancements, but foregoing design patents on the items that are sold directly to Ford and/or are direct replacement parts of same? You may be right, but it "sounds highly implausible". But since I don't work for an auto company (or any of their suppliers, for that matter), I can not prove with certainty that any of their design-patent protected parts actually get used in production autos. I can only say with certainty that a company like Ford: (a) has a lot of individual company suppliers; (b) those individual company suppliers are getting design patents; (c) the design patents are for automotive parts.

  20. I’ve already provided you with links showing that small supplier companies to Ford Motor Company do have design-patent protected, exterior automotive parts.

    Yes, I’m seeing designs by such “small companies” as Hella and Bosch. With absolutely no indication that those parts form any component of any production car that you buy at the Ford dealership.

    If you actually read the proposed law, you’ll see that it applies only to parts that are components of another article of manufacture, which after-market parts are not. So, again, these are not the droids you’re looking for.

    These are design patent protected parts which, if the legislation as proposed passes, will be free for the copying for use in after-market repairs.

    No, they’re not. The law only applies to parts that are components of the original entire car.

    Small companies will also lose out.

    Small companies will lose out because they will no longer have to pay royalties to Ford to sell Ford replacement parts? Gosh, I really feel for them.

    Or will they lose out because they will have market competitors? Because that’s kind of the entire point of this. Small companies will actually be allowed to compete with the big companies that make cars. A devastating loss to those small companies, sure, but I’m confident they’ll adapt.

  21. IANAE, “Bearing in mind that we’re talking about the parts that are protected by design patents, who are these smaller companies that design parts and bring them to the automobile made by a large car maker?

    I’ve already provided you with links showing that small supplier companies to Ford Motor Company do have design-patent protected, exterior automotive parts. Those links are right up there, in the exact same post of mine from which you quoted in your most recent post.

    If you bother to access the links you will see that there are indeed design-patent protected automotive parts, that are not proprietary to the auto corp, and which are exterior parts affecting the appearance of the vehicle.

    And that was from a small sampling of only 2 of the ~ 50 supplier companies on the Ford Motor Company preferred supplier list.

    These are design patent protected parts which, if the legislation as proposed passes, will be free for the copying for use in after-market repairs.

    It is not only the auto manufacturers who are read on by the proposed language. Small companies will also lose out.

    Maybe you think that is OK so long as you’re getting your car fixed less expensively. And surely the people who proposed the legislation agree with this point. What will be, will be, once the legislation passes or does not pass.

    But you can’t pretend it will not affect others than the intended auto-maker targets.

  22. cheap cheap: You’d have found that many different companies supply parts for an automobile.

    I know that. Everybody knows that. But those companies don’t supply the non-functional parts that are protected by design patents. Or if they do, they do so under license or with the constant risk of infringement litigation.

    cheap cheap: I’m talking about smaller companies who bring their own designed (and design patented) parts to the automobile.

    Okay. Bearing in mind that we’re talking about the parts that are protected by design patents, who are these smaller companies that design parts and bring them to the automobile made by a large car maker? Where are the companies designing a front fender and selling it to Honda so Honda can design the rest of the CR-V around it?

    cheap cheap: Yet, whenever you’re in a wreck, your insurance company is likely to be paying for a lot more new parts than just the fender.

    Yes, but the inside parts are different because (1) they’re functional, and (2) nobody cares how they look. Those are obviously not the parts we’re talking about, because they don’t raise the design infringement issue. They do what everyone here says patents are supposed to do – they encourage competitors to design around them and come up with workable alternatives.

    Good day to you too. I hope you had a safe drive home.

    Anon: Most people are uncomfortable broadcasting their opinions on topics about which they are ignorant

    I’m glad you’ve overcome your discomfort, even if it’s only to the point of repeating “you’re wrong”, “you don’t know anything”, and “lalala I can’t hear you”.

    One step at a time.

    cheap cheap: So, any patentee who seeks to stop infringers from infringing their patent, which they are legally entitled to do, is acting like an arse?

    Not any patentee, but some of them. Anti-trust law is just one example of how it’s possible to “act like an arse” even though you’re asserting your valid legal rights. Equity is another, with its subclass of inequitable conduct. Acting within the letter of the law is not an excuse for bad conduct, and it’s not unheard-of for laws to be changed when it turns out they don’t do what we want.

  23. Freedom? ya going to start talkin about freedom?

    Why that be just plain silly – ya only goin to invite the political talk with words like that.

    And purposive (? – although I must say it grows on ya) intellectual dishonesty is merely one man’s devil’s advocate. And we need to stay sharp with our dishonesty skills, don’t we?

  24. Anon says, “Most people are uncomfortable broadcasting their opinions on topics about which they are ignorant – you just seem to relish that type of broadcasting here.”

    Well, to be fair, we’re all pretty Anon(ymous) here, which gives a certain amount of freedom to act silly.

    My writings here are not even proofed prior to posting, something I never allow myself to do when writing in my name.

    But what does get me is the purposive intellectual dishonesty. At least, that’s what it looks like.

  25. 6 says, “If they’re going to be an arse about providing replacement parts then they deserve what comes to them.”

    So, any patentee who seeks to stop infringers from infringing their patent, which they are legally entitled to do, is acting like an arse?

    What’s your job again, sixie? You’re feeding at that trough but have no belief in the system that’s paying your rent?

  26. IANAE,

    Not to pile on what cheap cheap cheap has to say, but my amusement, and your foolishness, are not mitigated by whether you are “interested” or not, nor whether you find car company practice “relevant” or not.

    Most people are uncomfortable broadcasting their opinions on topics about which they are ignorant – you just seem to relish that type of broadcasting here.

  27. “But exist they do, and a proposal such as described will indeed take their property from them.”

    Meh, who cares? If they’re going to be an arse about providing replacement parts then they deserve what comes to them. If they don’t want to get legislatively smacked around then they should get their acts together.

  28. IANAE, you clearly, truly don’t have a clue.

    With just a tiny bit of research on these here intertoobs you’re using, you could have found that you’re way off base. You’d have found that many different companies supply parts for an automobile.

    And puh-lease leave off with disingenuousness of replies like, “If companies outsource the manufacture, that doesn’t entitle the manufacturer to a “patent”, since he’s not the “inventor”.” As I’ve stated multiple times, I’m not talking about outsourcing of automaker designed parts. I’m talking about smaller companies who bring their own designed (and design patented) parts to the automobile.

    You act as if the only thing at stake here is the fender or wheel-well assemblies that are, arguably, designed by the auto maker itself. Yet, whenever you’re in a wreck, your insurance company is likely to be paying for a lot more new parts than just the fender.

    Since you’re too lazy to verify the accuracy of your assertions, here’s 30 seconds worth of investigation that easily rebuts your position.

    The first link goes to some Ford preferred suppliers. No, it’s not an exhaustive list, but it’s some of them. Those who have signed a particular supplier framework agreement.

    The next few links go to design patents owned by some of those suppliers. I just picked a couple of names and did a quick query against the PTO database. These are design patents for automotive components they’ve designed, and which will be made into worthless patents if the proposed text becomes law.

    Whether you think there should exist design patents is a different matter. But exist they do, and a proposal such as described will indeed take their property from them. The law is what it is, not what you want it to be. And when it is what you think you want it to be, the results will be much farther reaching than you appear capable of realizing.

    Good day to you.

    link to media.ford.com

    link to patft.uspto.gov

    link to patft.uspto.gov

    link to patft.uspto.gov

    link to patft.uspto.gov

  29. inexperience with automobile manufacturing

    Unless you have enough experience to explain what I’ve gotten wrong, I’m really not interested.

    If it’s “car companies rely on design patents to make extra money on replacement parts”, I haven’t overlooked that. I just don’t find it relevant.

  30. IANAE,

    I cannot figure out which is more humorous, your inexperience with automobile manufacturing, or your clear disdain for Design Patents and the complete disregard for their legal standing.

    I would suggest that you stop giving your opinions on both because you are quite foolish on both.

  31. And non-obvious? Doesn’t that matter?

    Not really. It’s much the same consideration when it comes to designs. Either they look kinda the same or they don’t.

    Electric toothbrush manufacturers have numerous design patents for their toothbrush head brush placement design.

    They probably also have utility patents on the brush heads.

    Also, replacing wear parts is a whole other issue from replacing damaged parts that would otherwise have been perfectly good. When you buy the brush, you fully expect to have to buy replacement heads as needed. You know you’ll replace them with a certain frequency, and you can cost the part before buying the original brush and make a reasoned decision. It’s more akin to replacing your car tires (ornamental though they may be) than your dented bumper.

    But I will concede that nobody cares how much their toothbrush replacement heads cost, because you feel the impact much more on a per-part basis when you go to get your car fixed, and you’re already annoyed because someone hit your car and it’s not your fault you need it fixed.

    What I was referring to was the case where the original part supplied with the automobile IS ITSELF made by the little guy (components manufacturer) and supplied to the auto maker for inclusion into the new automobile.

    For a design component? Sounds highly implausible. Cars are designed as a whole, and sold as a whole. It’s not like Mazda went with their creepy grin front grill because some tiny manufacturer somewhere pitched them on the design. If companies outsource the manufacture, that doesn’t entitle the manufacturer to a “patent”, since he’s not the “inventor”.

  32. >> ..the contour of each fender is bound to be novel.< < And non-obvious? Doesn't that matter? (Little experience re design patents, in case you haven't already formed that opinion.) >> Legal protection for purely aesthetic replacement parts has no place in the auto industry < < Electric toothbrush manufacturers have numerous design patents for their toothbrush head brush placement design. These are disposable/replaceable items. In your view, then, they should not be able to stop knock-offs during the term of their patent? >>I have no idea what you’re talking about, and I suspect neither do you. If the “little guy” obtains valid design protection, that means (1) his part must be novel over the OEM part, << Clearly you don't. What I was referring to was the case where the original part supplied with the automobile IS ITSELF made by the little guy (components manufacturer) and supplied to the auto maker for inclusion into the new automobile. Sorry if this wasn't clear from the statement, "say you're a small business owner and luck into the big time - GM and/or Ford or others decide to incorporate your patented widget into a number of their vehicle lines". Unless you think that the auto manufacuters design and make all of the parts of the auto in-house? There are numerous small companies involved in the provision of all those (replaceable) parts that go into the original auto.

  33. I agree in principle but the problem to be fixed is to have the PTO actually examine (vice essentially register) design patents for patentability.

    That’s not the answer. If you design a car from the pavement up, the contour of each fender is bound to be novel. So is pretty much any arbitrary length of that contour.

    The real problem is that when someone dents your car, what’s actually damaged is the aesthetic look of your plastic or sheet metal fender. Nothing functional. Your car still drives fine. The car owner wishes to repair the damage, which is purely aesthetic, by substituting a part identical in appearance to the corresponding part of the whole car he bought. Legal protection for purely aesthetic replacement parts has no place in the auto industry.

    Including the little guy who is not the auto manufacturer, but is instead providing a neat widget for which he happens to have a design patent. The little guy often can not afford money and time it takes to get a utility patent on his neat little widgets, so opts for design protection instead.

    I have no idea what you’re talking about, and I suspect neither do you. If the “little guy” obtains valid design protection, that means (1) his part must be novel over the OEM part, and (2) it’s his own problem if he didn’t secure a utility patent. Design patents are not a poor man’s utility patent. If you want utility patent protection, you have to ask the PTO for it.

  34. Of course, since design patents are real patents (that is they still have real legal rights), we have to take IANAE’s wishful comments and integrate real law back into them.

  35. >> See, this is what happens when you give trademark-esque protection to articles like car parts that have no distinctiveness. << I agree in principle but the problem to be fixed is to have the PTO actually examine (vice essentially register) design patents for patentability. I also agree with all you have written above, but what I complain of is that the proposed text captures your concerns, plus potentially much more. Including the little guy who is not the auto manufacturer, but is instead providing a neat widget for which he happens to have a design patent. The little guy often can not afford money and time it takes to get a utility patent on his neat little widgets, so opts for design protection instead. Now it is entirely possible, I suppose, that in no autos are there any parts provided by little guys who have design patent coverage for their parts, in which case my complaint is completely moot.

  36. Why should after market companies get to use your invention for free?

    They don’t. This is only for design patents, not for the real patents you get when you invent something.

    This is completely about the repair doctrine. If you design a new vehicle you can get design patent protection on pretty much any arbitrary subset of its external shape. If you throw enough money at the patent office, you can preclude any repair of that vehicle (as the owner of the vehicle would understand it) as a replacement or re-creation of an “article” covered by a design “patent”. Including most significantly the outline of the replacement part that makes it fit flush with all the other replacement parts.

    And all that despite the fact that the car company didn’t really “invent” a new UPPER LEFT PORTION OF FRONT LEFT FENDER or MIDDLE BIT OF TOP CONTOUR OF RIGHT HEADLIGHT – they invented a car. You bought a car, and repairing it means no less to you than restoring its original appearance – since the damage is virtually always to the car’s appearance alone.

    Real patents don’t have that problem, because if you want patents covering replacement of ten different sub-components of a car, you need to actually make ten different inventions.

    See, this is what happens when you give trademark-esque protection to articles like car parts that have no distinctiveness. Bonus question: what happens when you need to fix the highly-distinctive back end of your Corvette because the Camry behind you couldn’t stop in time?

  37. They’re proposing to rip off patentees.

    Yeah, but it’s policy driven, cause the beneficiary is the public who don’t have to deal with the patentee.

    whooo – channeling Willton.

  38. >> Fixed that for you. << I disagree. Under the proposed language, I gets to replace the entire patented article (the super hot looking design-patented designer frame front part) without paying the patentee him- or herself for it. This is not exhaustion or even really the repair doctrine we're talking about. They're proposing to rip off patentees. Say you're a small business owner and luck into the big time - GM and/or Ford or others decide to incorporate your patented widget into a number of their vehicle lines. Why should after market companies get to use your invention for free?

  39. Mr. Saidman offered some tidbits of proposed language in the PRA, >>It shall not be an act of infringement of any design patent 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 of which it is a part so as to restore its original appearance.<< Danke Gott! Now when I break my new designer sport sunglasses, I can buy new clip-on knock-off frames on the cheap. After all, it's just the front part that's covered by the design patent.

  40. If you are inclined to participate in a discussion on a professional blog, then at least consider the advantage of acting professionally.

    Interjecting humor is always a welcome diversion. Rude behavior is not.

  41. Mikey,

    I can appreciate your no-nonsense demeanor and earnestness.

    Of course, there are those of us who can have substnative discussions of legal issues, be correc tinour views and successfully challenge those with opposing views and not be perched on a long thin sharp object.

  42. I have no interest in ever engaging in barb tossing discussions/competitions. My interest lies in substantive discussions of legal issues.

    Michael (not Mikey) Slonecker

  43. Dennis,

    I downloaded and scanned through your draft article. A very interesting proposition about the connection between design patents and trade dress.

    You also mention the very relevant “overlap” trifecta between design patents, trademarks/trade dress, and copyright, what I call “IP at the interface.” I noticed one case you don’t have in your draft article, namely In re Yardley, 493 F.2d 1389 (CCPA 1974)(commonly known as the “Agnew Watch Face” case) where the CCPA confronted the doctrine of “protection election” and ruled that there was no election prohibition. In Yardley, the design patent applicant has also applied for and gotten copyright registration which the CCPA ruled didn’t preclude getting a design patent as well. See also MPEP 1512 which discusses the Yardley doctrine. You might want consider including Yardley somewhere in your discussion of “overlapping” rights.

  44. Mikey,

    Ida like to get into a barb tossing competition with you, but I think that we are on the same side of this issue.

  45. Theresa,

    I would appreciate learning more about the draft you mention and where, if possible, I might be able to eventually secure a copy.

    If you have any information you can share you can reach me at slonecker@earthlink.net.

    Perhaps you share my sentiment that “out of the box” discussions about matters of law we have routinely taken for granted are quite important for one’s professional growth. I have seen far more than my fair share of such matters, and expect many more to arise in the future.

    Copyright a technical document and submit best editions that are totally blank? Been there. Done that (to the complete consternation of the Copyright Office General Counsel). Invalidate an issued patent on the basis of a printed publication that was completely unavailable to the public at large because of a high level security classification by the USG? Same “been” and “done”. The list goes on.

  46. Michael:

    A design is considered a “writing” under the broad definition of that term. It’s discussed and characterized that way in Mazer v. Stein. In Justice Douglas’ dissent in that case he takes issue with whether a design is a writing and suggests further study is needed. Said study was conducted a few years later by NYU law school students under the direction of Walter Derenberg as part of the studies for the Copyright Revision Act. It affirmed that designs could be construed at writings.

    I have a draft paper about whether the constitutional authority for a design registration system should be found under the IP Clause or Commerce Clause. I came out on the side of the Commerce Clause but it presents its own set of problems. Surely an interesting discussion in light of this new article.

  47. IANAE hopes that “someone” will pass legislation, and I’m wondering who that someone is. Europe is currently having just as much difficulty passing patent legislation as the USA. I think the patent courts and the Patent Offices of the democracies of the world have given up on the legislature and are now intent themselves on doing all they can to condense what order they can from the fog of chaos. The stream of new rule-making from the EPO is staggering, and, behind the curtain, inter-PTO file-sharing is burgeoning. Work-sharing is close behind. Wonder when the European Union Trademarks and Designs Office (In Spain. No connection with the non-EU EPO in Munich) will start co-operating with the USPTO.

  48. David French: Of course design rights are akin to trademark rights.

    In Canada they’re more akin to copyright, are they not? At least that would have kept them within Clause 8.

    In the US, I don’t think designs really know what they are. They are granted under the patent law to protect ornamental features normally subject to copyright law, and infringed as trademarks. They are not meaningfully examined for novelty (patent/copyright), obviousness (patent), actual use (trademark) or distinctiveness (trademark), and are infringed based on confusion with something that is only presumptively novel and admittedly not distinctive (if the public has even seen it at all).

    I’m glad Dennis has taken the time to deconstruct the policies and reasons for design protection. Someday, someone will hopefully decide what they really are (sui generis, probably) and pass legislation to that effect. Until that time, we might as well register whatever we can. It’s cheap, and you can get a scope of protection you wouldn’t deserve under patent, trademark or copyright.

    In short, “To me the answer is anything but clear.

  49. I have only “skimmed” Mr. Crouch’s paper, so in no way can it be said that I have assimilated the nuances contained therein.

    Nevertheless, design patents being a part of Title 35 and governed by all other provisions of the Title, I have always been intrigued by the fact that design patents do not appear to merry up with the provisions specified in Sections 100 and 101. Perhaps someone who has studied this issue can elaborate on congruency between an article of manufacture and associated ornamentation/design.

    Are designs truly “inventions” as that term is defined and used in 100 and 101, thus falling within the power of Congress re the useful arts under Article 1, Section 8, Clause 8, or is instead a design patent more akin to sui generis rights dependent upon congressional exercise of it powers pursuant to the Commerce Clause, or perhaps even copyright law as a work of authorship?

    To me the answer is anything but clear.

  50. David French writes:

    In the long run, trademarks are more important to the health of the nation than patents. Trademarks symbolize the commitment of manufacturers to deliver value to their customers. How many schlock products do you see coming into the country from abroad that bear well-known trademarks? Japan for a long time made second-rate goods, but they weren’t marked “Sony”.

    Of course design rights are akin to trademark rights. That’s why I tell clients that they should obtain design registrations.

    I look forward to seeing Dennis’s paper achieve the status of Frank I. Schechter’s 1927 Harvard Law Review paper: “The Rational Basis for Trademark Protection” – link to jstor.org oh

  51. ping,

    See H.R.3059 and S.1368.

    The bill would create a new Section 271(j) in the Patent Act, stating as follows:

    >>It shall not be an act of infringement of any design patent 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 of which it is a part so as to restore its original appearance.<<

  52. Abroad the industrial design regime seems to be copyright based with a more limited term. I don’t see any problem with rewarding industrial designs with a limited monopoly having earmarks of property, which is what I suppose design patents are.

    I haven’t read your article Dennis and I may be too constrained by conventional thinking, but I don’t see much overlap in design patents and trademarks doctrinally.

  53. Yes, because that bill was looking out for consumers – um, Willton, is that your policy argument?

    It kinda sound like your typical policy argument, cause it sure don’t have facts and it sure don’t have law on its side.

    IBP – touche

  54. Yes, Ping, there was a bill introduced or considered which would do away with design patent rights for automotive replacement parts in the wake of Ford’s successful campaign to protect its designs. Why? “Because it would hurt consumers” was the answer sponsors gave. So because the public wants to copy something, it should be allowed? That should resolve the music copying issue.

    Yes, God forbid we actually develop policies that would benefit consumers. We should be doing more to encourage rent-seeking behavior. [/sarcasm]

  55. IBP,

    He is just expressing, in his own way, the frustration felt…

    B A R F

    You aint talkin about the same Malcolm we all know and love. Dan’s smack was on the money.

  56. Dan–

    Give Mooney a break. He is just expressing, in his own way, the frustration felt by many in the patent field regarding various aspects of the jurisprudential mess it’s currently in.

    BTW, your response is no more worthy than his original comment–in fact, it was Mooney who was the more eloquent.

  57. Dan: “useful” includes uses that enhance the aesthetic commercial value of the thing.

    Malcolm: I think this argument blows,

    Well, actually, commercial success is an even more significant factor in the validity analysis for trademarks than it is for patents. But if you can make out commercial success you don’t need to waste money registering a design.

  58. Happy to help, Malcolm. Maybe “this argument blows” or “I totally thought of that too and have a response but I’m not going to tell anyone except my girlfriend, she’s from Canada, you don’t know her” are persuasive arguments where you’re from, but I personally like to see a little more depth.

  59. Dan Well, Malcolm, the design of something is certainly an art, and under Juicy Whip, “useful” includes uses that enhance the aesthetic commercial value of the thing.

    Kudos to you, Dan. I think this argument blows, but it was the exact rebuttal I was thinking of when I typed my comment.

  60. Why? “Because it would hurt consumers” was the answer sponsors gave.

    That’s the “answer sponsors gave” that the opponents gave.

    It’s actually the car companies that have very strong feelings about this bill based on “this is bad for us economically”.

  61. Robert S – and tht bill was part of the patent reform bills in either the House or Senate…?

    Do you have the Bill #? Iza got to see that piece of legislation.

  62. Yes, Ping, there was a bill introduced or considered which would do away with design patent rights for automotive replacement parts in the wake of Ford’s successful campaign to protect its designs. Why? “Because it would hurt consumers” was the answer sponsors gave. So because the public wants to copy something, it should be allowed? That should resolve the music copying issue.

  63. Well, Malcolm, the design of something is certainly an art, and under Juicy Whip, “useful” includes uses that enhance the aesthetic commercial value of the thing.

  64. for the continued protection of design patent rights in the US.

    Was there a question of discontinuing protection of design patent rights?

    Funny, I didn’t notice any such language in any of the patent bills at the House or Senate.

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