Wednesday, May 23, 2007

The Crisis in the Law of Designs

The Crisis in the Law of Designs is the title of Perry Saidman’s latest article that was published in vol. 89 of the Journal of the Patent & Trademark Office Society, April, 2007, pp. 301-338. This article explains the causes of this crisis, and provides a suggestion for turning the tide towards better design protection. More particularly, Section I describes the problems with attempts to protect industrial designs through trade dress and copyright laws. Section II expounds on how recent design patent decisions, and some long-standing problems, have made this once useful option problematic at best. Section III resurrects a long-forgotten legal reform that provides a design protection system that actually makes sense in the 21st century.

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Graeme Dinwoodie said...

It is an important day when Perry Saidman, who for years was almost evangelical about the value of design patents for industrial designs when others were touting reliance on trade dress protection, writes that “design patents are a best under attack”! The Crisis in the Law of Designs will I hope start (yet another, long-overdue) conversation about how best to protect designs.

I think that Perry's analysis of design patent law, as well as recent trends in both copyright and trademark law, are spot on. But should we be trying to mend a trademark law that was being overused to make up for the deficiencies of our desirable, or try to improve understanding of the separability concept which seems to defy rational explanation? Perhaps, as Perry suggests, the answer is to create a design law rather than adapt other intellectual property regimes to fill the gap.

I have long argued that the European Union design right regime provides a useful model on which Congress could build. In particular, protection is available on terms (initially unregistered) that reflect the reality of modern industrial design. But the EU legislator was quite conscious of the need to include in the design law express exceptions deal with the potential overprotection that might flow from a generous approach to protectable subject matter and thresholds to protection. That allows the EU system legitimately to claim (with some caveats) that it responds to the needs of designers while respecting the rights of competitors. That's not to say that the EU system is perfect. But it is a model on which US legislators could build.

Of course, Congress is showing interest again in design protection. This time, having previously protected boat hulls, it is tackling the problems of fashion designers. Perry advocates that we foreswear special-purpose design protection laws and create a sui generis design law that is not industry-specific. This is an issue that goes beyond design law. In the patent context, there is a growing sense that different industries need different types of patent laws. Might this be true of design industries as well, such that the industry by industry approach should be followed? Perhaps it is in answering this question that the European Union model offers the best guidance: adopt a generous approach to initial protectability and let's have a discussion about the types of problems with potential overprotection that occur in different industries and which might warrant the enactment of tailored exceptions.

Unknown said...

It is pretty shocking that there isn't legislation to protect designs in the U.S., especially since we've been living in such a design-centric society since the rise of IKEA in the '90s.

I'm thinking, for example, of the packaging of the I-Pod (shuffle, I'm cheap like that), which to me is a paragon of melding aesthetics and function. Obviously research and creative capital went into the design of that packaging. As with any other kind of intellectual product, industrial designs should be protected by law.