Design patent protection-H.R. 20 protection cannot exist at the same time. Other unfair competition protection-same as for trademark law. III. SUBJECT MATTER PROTECTED BY H.R. 20. A. What is a Useful Article? H.R. 20 provides protection only for designs on useful articles. It defines a useful article in Section 901(b) as one that in normal use has an intrinsic utilitarian function. Examples of this type of article abound, such as tables, chairs. lamps, and flashlight-tweezer combinations. It excludes protection for articles that merely portray the appearance of an article,' like a painting or photograph. and excludes articles that convey information, like a newspaper or an advertising sign. The fact that an article can be combined with another useful article makes the first-mentioned article a useful article because of its associauon with a useful article.' Without more limitation, the subject matter scope of H.R. 20 would be very broad. As expected, there are further limitations that exclude significant groups of articles from protection, as discussed below. B. Ornamental and Original Requirements. Even if there is a useful article design it is not protected by H.R. 20 unless the design creates an ornamental appearance. The ornamental feature must make the article attractive or distinctive in appearance. It can be two-dimensional, a flat surface feature, or three-dimensional, or an appearance created by shape and surface features.' This requirement clearly removes from H.R. 20 protection any useful article design where the design is not seen by the public. In this respect, the term ornamental takes on essentially the same meaning as it does under design patent law." A further basic requirement for protection of a useful article design is found in Section 902(a), requiring that the author must have originated the work, not copied it from someone else. This requirement is essentially the same as the originality required for each copyrighted work.' If the designer copies an earlier design created by another person and there is no appearance difference, there can be no protection under H.R. 20. It is not an original, useful article design. 10 C. Uncommon Design and Uncommon Variation Requirements. The drafters of H.R. 20 may not have wanted "novelty” or “unobviousness" labels associated with some of its requirements, for fear that undesirable emotion or influence might come from use of terms found in the patent law." It is a fact. however, that to the list of requirements already mentioned, the useful article, ornamental appearance, and originality must be added a requirement found in Section 902(b) similar to, but not the same as, "novelty" and a requirement in Section 902(c) that is similar to but not exactly the same as "unobviousness". The useful article design will not be protected if it is a staple, or commonplaced feature." Examples of what is commonplace are given in H.R. 20. and they are a standard geometric figure, familiar symbol, emblem, or motif." An even broader category is stated, embracing all specific items just mentioned to exclude protection for any shape, pattern or configuration which has become common. prevalent, or ordinary." All these excluded designs appear to fall in the same general group. representing designs in common use and reflecting a decision not to allow design features in general use to be the subject of exclusive rights. As this broad exclusion group is nothing less than a limited form of novelty requirement. each useful article design must be examined to see if its ornamental appearance is a commonplace feature. If it is such a feature, no protection will be available under H.R. 20. A further requirement, even if the ornamental feature is not the same as a commonplace feature, is found in Section 902(c), requiring that the ornamental feature must be significantly different from the prior commonplace designs, i.e., not just an insignificant difference. This comparison of prior features must be based on a subjective opinion on how different the feature is and whether the difference creates a distinct appearance. Even if the appearance difference mentioned is significant. Section 902(c) requires that the design difference must not be a variance on a commonplace feature that is generally found in the trade. This further requirement adds to the exclusion requirement a broader range of design feature combinations. This exclusion lists under Section 902(c) for insignificant or common variations 6 appears to be narrower than under the design patent obviousness test requirement of Section 103. One could label this requirement a miniature version of the patent Section 103 obviousness standard, with all the attendant questions. like what skill of the art standard should be used. The uncommon design and uncommon variation standards should not be hard to apply. The first step is to see if the design has been used by others before. If there has been such use, the design is not novel, but its use may have been so infrequent as not to reach the commonplace level that prohibits protection under H.R. 20. The second step. if the first step is successfully passed, is to see if the difference from the prior commonplace design is either not significant from an appearance point-of-view or is a well established variation that is commonly used for this type of product. All the evidence needed to prove these points will come from persons familiar with the product market and samples of product designs showing whether this design is commonplace or is only distinguished by design features commonly used on this type of product. D. Design Features Related to Product Functions-Limitation on Protection. The intellectual property law is full of vague statements about the effect of a design being dictated by function." Every product performs a function and some of the appearance features are inseparably combined with these functional aspects. Some design features, like an emblem. can be separated completely visually, from a functional aspect of a product. A very important part of product design is to make the useful. functional features attractive. The hard policy question to resolve is what design features of the functionally related type should be excluded from intellectual property protection. Under H.R. 20. a major step forward has been taken to offer protection for some function related useful article designs. In fact, this part of H.R. 20 may be one of the most significant differences from other forms of intellectual property protection. It is hard to analyze realistically whether function or appearance determine a particular design. There is always the argument that the new design works a little better in some respects. The tension is taken out of this analysis. somewhat, by Section 903, discussed next. E. Salvation through Revisions, Adaptations, and Rearrangements. The tension created by uncertainty in knowing what design subject matter can be protected is seemingly lessened by Section 903. This Section specifically identifies some subject matter that may have been previously excluded from coverage by too broad an interpretation of Section 902, i.e., where a similar design has been used and the difference is considered insignificant, or includes only a variation that is common with such products, or is a design dictated solely by utilitarian function. The test for salvation from exclusion is whether the design is a substantial revision, adaptation, or rearrangement." At the same time. Section 903 makes it clear that only the change, the revised part of the design is protected, and no rights are obtained for subject matter excluded under Section 902. The interaction between Sections 902 and 903 appears to make it clear that there can be protectable rights in designs that have some similar features with a common design, if there is a substantial revision of that common design to create a distinct appearance. On the other hand, minor variations or mere combinations of existing design features will not be protected." The comparison test for commonplaceness or a common variation exclude protection for designs that are generally needed for competitive activity. 18 The substantial revision test of Section 903 applies also to the excluded design related to a functional part of a product. The design dictated solely by a functional feature is never protected, but if a design is a substantial revision of a functionally dictated product design, that appearance can be protected. In other words, more than one design can be used for that utilitarian product and each product can still perform the same utilitarian function. Consequently, the substancially revised design is not solely dictated by the product utilitarian function. The substantial revision test in effect separates out designs that result from mechanical features required for operation of a product, equivalent to subject matter normally protected by a utility patent. 19 and leaves these mechanical design features excluded from protection. While all products of a given type must have these mechanical features to function, no design protection will be allowed that controls their use. If a designer is able to retain the mechanical function and create a substantially different appearance, this design will be protected under H.R. 20. The protected design for the mechanical product does not prevent competition, as other products performing the same function can be sold, using the basic product design solely dictated by the functional features. This evolution from the unprotectable product design features to the added protectable design features, leaves room for design creativity without burdening competition in the basic product. It seems to be a workable approach, especially 7 when all indications are that the terms "substantial revision" will be interpreted narrowly, to resolve doubts on whether design protection will control the use of essential functional features against awarding protection. This approach is in keeping with the proper balance that should be given between the public policy for competition and the policy to create the incentive for new product designs. F. Clothing Designs-Exclusion Dictated by Legislative History. There is a very specific exclusion in Section 902(e) for clothing designs. This fact may come as a surprise. since one would think that dress designers would be at the forefront of pushing for protection. These designers did push for protection in earlier versions of H.R. 20. but the political climate in 1975 and now, mainly due to the garment industries concern over their market for style copies. leaves this exclusion a necessary comproinise." There is the question that goes to the heart of the matter whether there is a need for protection in the clothing industry. The style setting function of the top lines seems an established relation on which the top and cheaper quality clothes depend. If there was design protection, no one knows if the designers would retain the dependency relation through not seeking protection or licensing. It may be a unique situation where no form of protection is needed by the industry, because the bulk of the clothing industry relies on seasonable design changes and the style setting function of the top brands. The problem with excluding clothing from protection under H.R. 20 is that importers are aided as well as the U.S. garment manufacturers. If U.S. business is concerned over control of import, the best way to control copying seems to be to give U.S. business the choice of protection, by including the opportunity in H.R. 20. The garment industries interest may have changed with increased foreign competition. It should also be considered whether other countries provide such design protection, restricting importation of U.S. clothing copying designs originating in the foreign country. If there is effective use of such protection in a foreign country, U.S. business may want a bargaining position by adding clothing protection to H.R. 20, whereby cross-licensing arrangements can be used to open up the foreign market. G. Protection of Typefaces. A significant part of the 1975 hearing on one earlier version of H.R. 20 was taken up with the desire to obtain protection for typefaces." The typeface is a set of artistically drawn letters, numbers, and symbols that visually create a pleasing appearance together. There are many designs for typefaces. The Copyright Office express the view that these typeface designs were protectable under the proposed version of H.R. 20. In all significant respects relating to subject matter protection of typeface. H.R. 20 is the same as the bill debated in 1975. A concern was expressed that the linotype machine manufacturers would dominate the printed world by protecting a typeface design, or at least they would impede the flow of knowledge by requiring publishers to use unprotected typeface. There was no proposal or solution presented on how to settle this dispute, except the casual mention of some form of compulsory license for typeface protection." Since that time, the Copyright Office has denied copyright registration to typefaces and no new proposal is embodied in H.R. 20 to solve the dispute. As there was considerable public concern over this issue, one solution would be to add an exclusion for typeface designs to Section 902 of H.R. 20 and wait for the completion of the technological change that is even now making the printing industry capable of instantly varying character design through digital computer control, so that everyone would have a wide choice of typeface. At that time, the argument that protection of typeface design would control the flow of printed material would substantially disappear. Another alternative would be to hold a hearing specifically on typeface protection under H.R. 20, to find out where the balance should be drawn under present technology and the public concern. This hearing could be held promptly and appropriate action taken based on its results. In the interest of not delaying the protection needed now for many product designs from H.R. 20. it may be the wisest decision to insert the exclusion provision and move the bill to final congressional action unless the hearings on typeface protection can be held prompty. IV. INFRINGEMENT UNDER H.R. 20. A. General Provisions. The basic requirement to infringe a design protected under H.R. 20 is copying, as provided in Section 908(d). In this respect, the copyright laws and H.R. 20 are essentially the same. A broad range of rights are given the design registration owner under Section 908(a)(1). 8 B. Infringement by Seller. Distributor, or Manufacturer. The history of H.R. 20 showed a singular concern over innocent infringement by sellers, distributors, and manufacturers. The scenario most often raised was that a small retailer receives a notice of infringement and being unfamiliar with the design law may be forced to destroy all its inventory because of the alleged infringement, and generally it may be harassed in other ways. H.R. 20 specifically addresses this situation and attempts to give the innocent seller. distributor, and manufacturer a fair break. The solution under Section 908(ax 3) is to only require a seller or distributor who did not make or import the goods to reveal the source of the alleged infringing goods, even if the alleged infringing goods are reordered. A seller or distributor who makes the goods or who imports them is not given this escape. The seller-maker or importer, however, is immune from infringement if it does not know a protected design is being copied. As soon as notice is received that the design is protected. the importer or maker becomes an infringer." The innocent person who sells or distributes a product with a component part that has a protected design under H.R. 20 is free to continue business as usual if the source of infringing goods is revealed. In the same way, an innocent infringer who makes an infringing product for another, or possesses an infringing product, will be free to continue selling and/or making the product if the source of the product or the designation of the manufactured product, as appropriate. is revealed.33 C. Infringement by Illustration or Picture. Another exclusion from infringement is found in Section 908(d) for the person who takes a picture or makes a sketch of a protected design. This exclusion avoids infringement by newspapers and magazines, for example. There is a warning in this approach to some who would manufacture a product design from a picture. innocently assuming that there is no protection, since the picture is freely circulated. This picture copier-manufacturer would be an innocent infringer until an infringement notice is received, as provided in Section 908(b). D. Have the Sellers, Distributors, and Manufacturers Legitimate Concerns Been The overall impact of Section 908 in most situations is to free from infringement all but the product manufacturer who has been notified of the protected design infringement. It is hard to imagine a more fairminded approach. The target of H.R. 20 is the manufacturer who knows there is infringement and has initiated this infringement. The infringement and validity dispute is litigated at one time where the greatest economic interest exists and probably a higher degree of sophistication in appreciating the line between infringing and non-infringing copying. This narrow focus, while protecting the legitimate interest of a protected design owner. appears to answer the earlier concerns from the market place. V. ADMINISTRATIVE MATTERS. A. General. The normal administrative details are included in H.R. 20 for this kind of government function, very similar to the administration of the patent and copyright laws. These administrative details can be appreciated easily from an inspection of Figure 1 in Topic II above, and will not be repeated here. They appear effective and where there is an unanswered procedural problem the administrator has authority to exercise rule making power. 9 B. A Novel Approach to Ownership Determination. The authorship confusion that occurs without fault in many situations due to the large number of people working on a project has been resolved effectively in H.R. 20. Section 909g) allows an employer to use its name in the application for registration where there is uncertainty over which employeets) authored a design. Normally the author must be identified by name and sign the application. This change reflects a progressive approach to resolving the frequently unresolvable problem of authorship determination. There is one clear concern with H.R. 20 that many who practice patent law will recognize immediately. There is no provision for a complete. new authorship designation on a registration. The D.C. Circuit Court of Appeals has held that under existing patent practice an application naming a sole inventor can be amended. where no fraud is involved, and a new inventor name." Section 909(g) specifically prevents that practice. A more progressive approach. following the recent change in patent law, is strongly urged to remove an unfair burden on an applicant at the time of filing. C. What Organization Will Administer the Law? 36 37 An unresolved aspect is what executive or congressional organization will administrate H.R. 20. The Copyright Office started out in a non-committal mode. leaving it up to Congress and willing to take it on if asked. The Patent and Trademark Office wanted to administrate H.R. 20 and said so. Later testimony reflected the Copyright Office's desire to take responsibility, arguing the process is more similar to copyright procedures." This minor dispute has not dissipated the cooperative effort of these departments, and each organization has continually and generally supported the enactment of useful article design protection, with some proposals along the way for amendment.” It is interesting to note that two branches of government are involved, since the Copyright Office is under the Library of Congress, a congressional organization, and the Patent and Trademark Office is part of the Department of Commerce in the executive branch. One would not be surprised that Congress would favor its own organization. The Copyright Office choice would not be a bad one, since it has been very effective in adapting to the 1976 Copyright Act and generally has a very good public image. As H.R. 20 stands now, it is the discretion of the president to select the administering organization. Since the president controls only the executive branch, the Patent and Trademark Office probably has the job unless Congres changes the designa tion. D. Protection Starts on Registration. H.R. 20 incorporates a significant change from the design bill considered in 1975. Under the earlier version, protection started at the time of publication, as with a copyright. The Patent and Trademark Office urged that the publication not be required for protection, to prevent loss of possible foreign rights in countries where publication creates an absolute bar to protection. There seemed to be no general opposition at the 1975 hearings to this change, even though its forced a race to file, to preserve some foreign rights. H.R. 20 initiates protection upon registration, as shown in Figure I under Topic II.A. above.. The relative increase in pressure and expense on applicants by this change is not as much as one might expect, since most businesses will want to fill before making a decision public to protect some foreign rights. In addition, the six month statutory bar after making a decision public requires a business to coordinate its design promotion and filing procedures anyway to prevent loss of design rights. VL. JUDICIAL PROCESS AND REMEDIES. A. Combined Registration and Infringement Determination." The judicial process is expedited somewhat under H.R. 20 in the case where a registration has been denied and an infringement registration exists. The applicant would like to expedite the infringement suit, but the process would require two court actions, one to determine registerability and the other infringement. Under Sections 922 and 923, a court can review the registration issue and if registration is authorized, the court can decide the infringement issue. This combined proceeding appears to have a decided advantage for efficient judicial administration and to aid the parties in resolving the conflict quicker than experienced in similar design patent situations where separate court actions are required. B. Penalty for Fraudulent Misrepresentation. There is always the possible abuse of a registration system. to harass a competitor with suits on registrations obtained by fraud. The possible effect on an attorney who knowingly participates in such misconduct is a deterrent to this abuse. H.R. 20 does not add much else to discourage such misconduct by business. A maximum penalty of $1.000 is all that is provided." It would seem that a greater penalty amount would be a better deterrent. 10 |