A Proposal For Protection Of Useful Design

Isn’t design interesting? It is incorporated into everything we wear, ride in, work in, live in, watch, look through, look into, look over, smell, latch onto, grasp, sip from, dine in, hold up our pants with, wear under our pants, wear over our pants, walk on, walk by, catch a fly ball with, and a few things more.

Design can be simple, it can be complex, it can be subtle, and it can be blunt. Design can be so intertwined with the use and function of a product as to be functional and protectable as an invention. Or, it can be so intertwined with the use and function of a product as to be non-functional and protectable as a copyright; unless it is a source identifier, in which case it is protectable as a trademark. It can be a part of an empty bottle or a filled bottle. It can be an element of a mini-bike or a Harley growl. It can be physically nonexistent as color, overpowering as sexually stimulating scent, or overwhelming and sturdy as a building. It can be playful, hidden, mysterious, interesting, and confounding.

The many aspects of design are, separately or jointly, protecable by several distinct elements of law. Just as design can be confusing in its many iterations and elements, the law can be confounding in its multi-layered approach to protecting design [note, I am referring solely to U.S. IP law, the topic of this blog]. Patent law protects the design of a product and package provided that the design is new, inventive, non-obvious, and unpublished more than a year prior to application. Copyright law protects the design of a product and package provided the design is not a part of the product function or, if it is, the design is conceptually separable from the function, notwithstanding when the design was first published. Trademark law protects the design of a product and package whether or not the design is useful, functional, inventive, obvious, or published more than a year, so long as the design signals to the consumer the source, origin, affiliation, or characteristics of the product, and has been so used for at least five years (or has otherwise acquired “secondary meaning”).

So many rules. So much design. Can these rules dovetail into a more comprehensive and adoptive approach to protect design? I believe so. Let me suggest one possibility.

First, there is the recognition that design is important for its own purposes. A car without design (e.g., Yugo) or a car with poor design (e.g., Edsel) is not the same as a car with great design (e.g., a screaming black Porche Carrera). It’s not just the car’s transportation or mechanical function that causes a consumer to make a purchase of one model over another. It’s not just the car’s transportation or mechanical function that influences consumer demand and establishes value. It’s the design. The DeLorian my have had mechanical faults, but it had great design.

Second, there should be recognition that the subtlety of patent design to protect inventiveness, of trademark design to protect source, and of copyright design to protect creativity may no longer be practically meaningful. Indeed, if a design cannot be patented, then perhaps it can be copyrighted, or trademarked. In the end, design may be protected today under one, all, or none, of the IP theories.

Here is a suggestion dealing with new design protection in the U.S. First, a design owner can continue to avail itself of current patent, trademark or copyright law. Nothing changes. Second, and as an alternative to present law, the owner can acquire product and package design protection under a new design mechanism, consisting of the following proposed parts:

The owner may file notice with a new design agency of the U.S. Dept. of Commerce prior to publishing any aspect of the claimed design. The design notice designates in detail the specific aspects of product and package design that the owner claims is new, creative and original. Exclusive right over the designated design endures for twelve months following filing of notice. The owner is free to seek patent, trademark and/or copyright protection separately during the twelve-month period. Any person can file a notice of dispute as to a portion or all of the claimed design designated in the design notice. Following a notice of dispute, a summary determination is made as to the creativity and originality of the design by an administrative law judge in the Dept. of Commerce. If the design is upheld in the summary proceeding, then protection continues for the balance of the twelve months and this decision creates a favorable inference in any pending patent, trademark or copyright prosecution. Alternatively, if the design is overturned, then protection terminates ab initio and this decision creates a negative inference in any patent, trademark or copyright prosecution. This process would apply to all issues of design associated with physical goods and things containing a useful component, including architectural design, industrial products, mask works, vessel hulls and clothing. But this proposal would not apply to traditional artistic items that are not used for a purpose beyond enjoyment of the items themselves.

The forgoing proposal perhaps may be most useful for new, highly popular designs that have a short shelf life. In such instances, perhaps protection of limited scope and duration is all that is required to allow the creator a commercial head start. Allowing protection to drop off of the new design after twelve months may promote development of art, science and new creative design.

This proposal has its flaws, but it has advantages. It will not solve all problems associated with design protection across the board. This proposal is offered for discussion of an alternative approach to useful design protection that is simple and short term.

~ Mike Ratoza