Intellectual Property in Industrial Designs:
Issues in Innovation and Competition
John R. Thomas
Visiting Scholar
January 6, 2010
Congressional Research Service
7-5700
www.crs.gov
RL34559
CRS Report for Congress
P
repared for Members and Committees of Congress
Intellectual Property in Industrial Designs: Issues in Innovation and Competition
Summary
Under current intellectual property laws, industrial designs may potentially be protected through
design patents, trade dress, and copyright. In addition, the Vessel Hull Design Protection Act
established a specialized, or sui generis, intellectual property right for the protection of boat hull
designs. Some experts argue that the present intellectual property regime does not adequately
protect industrial designers.
In the 111th Congress, two bills would establish a “repair” exemption within the Patent Act.
Although potentially of broad application, H.R. 3059 and S. 1368, each titled the “Access to
Repair Parts Act,” appear to have been motivated by the enforcement of design patents that are
said to restrict competition in the secondary market for automobile replacement parts.
Also in the 111th Congress, legislation has been introduced that would establish proprietary rights
in fashion designs. H.R. 2196, the Design Piracy Prohibition Act, would provide a three-year term
of protection for fashion designs based upon registration with the U.S. Copyright Office.
The Senate has also recently provided its consent to ratify the Geneva Act to the Hague
Agreement Concerning the International Registration of Industrial Designs, an international
agreement that would allow U.S. designers more readily to obtain intellectual property protection
overseas. Accession to this international agreement would require changes to the design patent
statute, including expansion of the term of design patents from 14 to 15 years.
Recent, significant judicial developments concerning the scope of protection accorded to design
patents have also occurred.
Supporters of sui generis regimes assert that they allow for protection of subject matter, like
industrial designs, that at times fall outside traditional intellectual property paradigms. Proponents
believe that these systems can prevent levels of free riding that ultimately discourage innovation.
However, some observers are concerned that the proliferation of such systems may limit the
ability of others to compete, ultimately diminishing consumer choice.
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Contents
Industrial Designs and Intellectual Property................................................................................. 2
Copyright.............................................................................................................................. 3
Trade Dress........................................................................................................................... 3
Design Patents ...................................................................................................................... 4
Vessel Hull Design Protection ............................................................................................... 6
Current Issues in Industrial Design Protection ............................................................................. 8
Intellectual Property Rights in Fashion Designs..................................................................... 8
U.S. Adherence to the Hague Convention.............................................................................. 9
Automobile Spare Parts....................................................................................................... 11
Judicial Developments Concerning Design Patents.............................................................. 12
Issues in Innovation and Competition........................................................................................ 15
Contacts
Author Contact Information ...................................................................................................... 17
Acknowledgments .................................................................................................................... 18
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Intellectual Property in Industrial Designs: Issues in Innovation and Competition
n recent years, Congress has expressed interest in intellectual property protection for
industrial designs. In the 111th Congress, legislation has been introduced that would establish
I a “repair” exemption within the Patent Act.1 Although potentially of broad application, this
legislation appears to have been motivated by intellectual property rights in the designs of
automobile parts.2 Also in the 111th Congress, proposed legislation would provide proprietary
rights in fashion designs.3 The Senate has also recently provided its consent to ratify the Geneva
Act to the Hague Agreement Concerning the International Registration of Industrial Designs,4 an
international agreement that would allow U.S. designers to obtain intellectual property protection
overseas more readily.5 In addition to these legislative activities, industrial designs have also been
subject to notable developments in the federal courts and internationally. A review of intellectual
property issues pertaining to industrial designs therefore appears timely.
The term “industrial design” broadly refers to the creation of the form and function of objects of
everyday use.6 Virtually every manufactured product, including such items as automobiles,
clothing, computers, footwear, furniture, and telephones, embodies an industrial design.7
Industrial designers perform the tasks previously accomplished by individual artisans with respect
to mass-produced goods, commonly endeavoring to make products more convenient to use and
more visually appealing.8 As explained by the Industrial Designers Society of America:
Industrial design is the profession that determines the form of a manufactured product,
shaping it to fit the people who use it and the industrial processes that produce it. Industrial
Designers work to make our lives more comfortable, pleasurable and efficient. By studying
people at work, at home and in motion, they create products like office chairs that promote
proper posture, kitchen tools that are comfortable even for elderly hands and toys that
provide safe play and learning for all children. In particular, Industrial Designers deal with
the parts of a product that humans interact with, striving to give universal access to products
that are ecologically responsible and safe to use. Also, they give a product with distinctive
elegance that makes us want it.9
“Intellectual property” is a phrase that refers to proprietary rights in creations of the mind.10
Currently, some measure of protection for industrial designs can be found under three different
1 H.R. 3059; S. 1368 (both titled the “Access to Repair Parts Act”).
2 See ”Legislation/Patents: Auto Parts Groups Lobby for Bill to Exempt Repair Parts from Patent Infringement,” 75
Patent, Trademark & Copyright Journal (April 25, 2008), 674.
3 H.R. 2196 (titled the “Design Piracy Prohibition Act”).
4 World Intellectual Property Organization, Hague Agreement Concerning the International Deposit of Industrial
Designs, July 2, 1999, 2279 U.N.T.S. 156 (available at http://www.wipo.int/export/sites/www/hague/en/legal_texts/pdf/
geneva_act_1999.pdf).
5 Treaty No. 109-21 (December 7, 2007).
6 See, e.g., Henry Dreyfuss, Designing for People (Allworth Press 2003); Carma Gorman, ed., The Industrial Design
Reader (Allworth Press 2003).
7 Regan E. Keebaugh, “Intellectual Property and the Protection of Industrial Design: Are Sui Generis Protection
Measures the Answer to Vocal Opponents and a Reluctant Congress?,” 13 Journal of Intellectual Property Law (2005),
258.
8 William T. Fryer, “The Hague Agreement on the Protection of Industrial Designs: Strategies to Use and U.S. Choices
in Ratification of the Geneva Act,” 89 Journal of the Patent and Trademark Office Society (2007), 662.
9 Industrial Design Society of America, “What is ID?” (available at http://www.idsa.org/webmodules/articles/
articlefiles/what_is_id_brochure.pdf).
10 See Roger E. Schechter and John R. Thomas, Intellectual Property: The Law of Copyrights, Patents and Trademarks
(Thomson West 2003), 1.
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intellectual property laws: copyright, trademark, and patent.11 Perceived shortcomings with these
systems as applied to industrial designs have led to proposals to establish specialized, or sui
generis,12 regimes that apply to particular sorts of designs. Congress established such a regime for
boat hulls in 1988,13 and serious discussion is ongoing with respect to the merits of sui generis
intellectual property rights for fashion designs.14
This report identifies several current issues relating to intellectual property in industrial designs. It
begins by describing the different sorts of intellectual property protection that apply to industrial
designs. The report then identifies current issues at the interface between intellectual property and
industrial designs. The report closes by reviewing the impact that sui generis rights regimes may
have upon innovation and competition in the United States.
Industrial Designs and Intellectual Property
Industrial designs that are well-received in the marketplace may attract competition. William T.
Fryer III, a member of the faculty of the University of Baltimore School of Law, asserts that
“[o]nce an effective product design is successful, competitors rush in and copy the product,
particularly the product appearance.”15 Advocates of enhanced protection for industrial designs
therefore assert that intellectual property rights potentially provide an important mechanism for
allowing innovators to reap the economic rewards of their investments.16 On the other hand, some
observers are concerned that overly expansive intellectual property rights may raise prices and
decrease the availability of consumer goods.17
Under current intellectual property laws, industrial designs may potentially be protected through
copyright, trade dress, and design patents.18 Congress has also established a specialized, or sui
generis, intellectual property right for the protection of boat hull designs.19
11 Keebaugh, supra, at 260.
12 The term sui generis, which literally means “of its own kind,” “is used in intellectual property law to describe a
regime designed to protect rights that fall outside the traditional copyright, trademark, patent, and trade secret
doctrines.” Black’s Law Dictionary (8th ed. 2004).
13 The Vessel Hull Design Protection Act was enacted as Title V of the Digital Millennium Copyright Act of 1998 in
the 105th Congress. P.L. 304, 112 Stat. 2905 (1998).
14 See Lynsey Blackmon, “The Devil Wears Prado: A Look at the Design Piracy Prohibition Act and the Extension of
Copyright Protection to the World of Fashion,” 35 Pepperdine Law Review (2007), 107.
15 Fryer, supra, at 662.
16 Perry J. Saidman, “The Crisis in the Law of Designs,” 89 Journal of the Patent and Trademark Office Society (2007),
301; David Goldenberg, “The Long and Winding Road: A History of the Fight Over Industrial Design Protection in the
United States,” 45 Journal of the Copyright Office Society (1997), 21.
17 Keebaugh, supra at 256 (noting those views).
18 See Orit Fischman Afori, “Reconceptualizing Property in Designs,” 25 Cardozo Arts & Entertainment Law
Journal (2008), 1105.
19 See Bradley J. Olson, “The Amendments to the Vessel Boat Hull Protection Act of 1988: A New Tool for the
Boating Industry,” 38 Journal of Maritime Law and Commerce (2007), 177.
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Copyright
The Copyright Act of 1976 provides protection for original works of authorship. The types of
creations addressed by copyright range from traditional works of art, including literature, music
and visual art, to such modern forms of artistic expression as sound recordings, motion pictures
and computer software.20 Copyright protection arises automatically, as soon as the work has been
fixed in tangible form.21 Authors may register their works with the U.S. Copyright Office,
however, and obtain certain procedural and substantive advantages during copyright
enforcement.22 The copyright law affords authors the exclusive right to reproduce, adapt, and
publicly distribute, perform, and display the protected work, subject to limitations such as the fair
use privilege.23 The term of copyright is ordinarily the life of the author plus 70 years.24
The availability of copyright protection for industrial designs has been described as limited,
however.25 The Copyright Act of 1976 provides protection for “pictorial, graphic, and sculptural
works” but further explains that:
the design of a useful article ... shall be considered a pictorial, graphic, or sculptural work
only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article.26
The Court of Appeals for the Ninth Circuit has explained that “[t]his limitation is in keeping with
the notion that functional items are not eligible for the relatively long-term protections of
copyright, as opposed to the more temporary rights provided by the Patent Act.”27 Because
industrial designs are commonly integrated into a “useful article”28—such as automobiles,
handheld electronic devices, or clothing—they are often not eligible for copyright.29
Trade Dress
Protection for industrial designs may also occur under the trademark law in the form of “trade
dress” protection. The term “trade dress” refers to the overall visual image that a product presents
to consumers, including its design.30 To be entitled to trademark protection, a significant number
of consumers must perceive the trade dress as denoting the product of a particular manufacturer,
rather than being arbitrary or merely decorative, after the trade dress has been used in the
20 17 U.S.C. § 102 (2006).
21 Id.
22 17 U.S.C. §§ 408—412 (2006).
23 17 U.S.C. §§ 106, 107—122 (2006).
24 17 U.S.C. § 302 (2006).
25 Emily S. Day, “Double-Edged Scissor: Legal Protection for Fashion Design,” 86 North Carolina Law Review (2007),
245-47; Keebaugh, supra, at 264-65.
26 17 U.S.C. § 101 (2006).
27Chosun, Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (9th Cir. 2005).
28 The term “useful article” is defined as “an article having an intrinsic utilitarian function that is not merely to portray
the appearance of an article or to convey information.” 17 U.S.C. § 101 (2006).
29 CRS Report RS22685, Copyright Protection for Fashion Design: A Legal Analysis of the Design Piracy Prohibition
Act (H.R. 2196), by Brian T. Yeh.
30 Schechter and Thomas, supra, at 587-91.
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market.31 In trademark law, this notion of acquired distinctiveness is termed “secondary
meaning.”32
Trademark rights in trade dress may arise under state law as soon as the product is used in
commerce. However, trade dress may be registered with the United States Patent and Trademark
Office (USPTO), a step that affords significant substantive and procedural advantages.33 The
trade dress owner may prevent others from using a similar product appearance that creates a
likelihood of confusion as to the source or sponsorship of the associated goods.34 These rights
persist so long as the trade dress continues to be used and retains its distinctiveness.35
Commentators have identified a primary limitation of trade dress protection with respect to
industrial designs.36 Trade dress rights cannot be established in functional features of a product.
Courts have reasoned that such protection would overly hamper competition and undermine the
policies of the patent system.37 As a result, if the industrial design makes the product easier to
manufacture, more convenient to ship, or work better, then it may not be subject to trade dress
protection.38
Design Patents
In addition to granting so-called “utility patents” directed towards machines, manufactures,
compositions of matter and processes,39 the Patent Act of 1952 also allows for “design patents.”
An inventor may obtain a design patent by filing an application with the USPTO directed towards
a “new, original and ornamental design for an article of manufacture.”40 Most design patent
applications consist primarily of drawings that depict the shape or surface decoration of a
particular product. They may concern any number of products, including “apparel, automobile
parts, computer products, containers, cosmetics, electronics products, textile designs, home
furnishings, home appliances, jewelry, motor vehicles, office supplies, optics and toys.”41
To obtain protection, the design must not have been obvious to a designer of ordinary skill of that
type of product.42 In addition, a design must be “primarily ornamental” to be awarded design
patent protection.43 Similar to the doctrine of functionality in trademark law, if the design is
31 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000).
32 Ingrida Karins Berzins, “The Emerging Circuit Split Over Secondary Meaning in Trade Dress Law,” 152 University
of Pennsylvania Law Review (2004), 1661.
33 15 U.S.C. § 1051 (2006).
34 See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 20.
35 Id. at § 30.
36 See Margreth Barrett, “Consolidating the Diffuse Paths to Trade Dress Functionality: Encountering Traffix on the
Way to Sears,” 61 Washington and Lee Law Review (2004), 79; see also Jay Dratler, Jr., “Trademark Protection for
Industrial Designs,” 1988 University of Illinois Law Review (1988), 887.
37 Schechter and Thomas, supra, at 610-11.
38 See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995).
39 35 U.S.C. § 101 (2006).
40 35 U.S.C. § 171 (2006).
41 Saidman DesignLawGroup, “Design Patent” (available at http://www.designlawgroup.com/
tools_design_patent.cfm).
42 35 U.S.C. § 103(a) (2006).
43 Arminak and Associates, Inc. v. Saint-Gobain Calmer, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007).
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instead “dictated by the performance of the article, then it is judged to be functional and ineligible
for design patent protection.”44 In such circumstances the designer should pursue a utility patent,
which protects the functional and utilitarian aspects of products and processes.45
Issued design patents confer the right to exclude others from the “unauthorized manufacture, use,
or sale of the article embodying the patented design or any colorable imitation thereof.”46 The
scope of protection of a design patent is provided by drawings within the design patent
instrument.47 To establish infringement, the design patent proprietor must prove that “in the eye of
an ordinary observer, giving such attention as a purchaser usually gives,” the patented and
accused designs “are substantially the same, if the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it is the other.”48 The courts also require that
“no matter how similar two items look, the accused device must appropriate the novelty in the
patented device” that distinguishes it from earlier designs.49 The term of a design patent is 14
years from the date the USPTO issues the patent.50
Intellectual property attorneys Richard Sybert and Lindsay Hulley have explained that the “best
protection for product design is likely a design patent in the United States....”51 Design patents
have been described as less expensive to prepare than utility patents, and unlike utility patents
they are not subject to “maintenance fees” that must be submitted to the USPTO during the life of
the patent.52 In contrast to copyright enforcement, design patent infringement does not require a
showing that the defendant accessed the prohibited design and copied it.53 And unlike trademark,
the design patent holder need show neither the existence of consumer confusion nor the design’s
acquisition of “secondary meaning” in order to prove infringement.54
The design patent regime has nonetheless been subject to criticism by industry representatives,
lawyers, and academics alike. Some commentators have expressed concerns that the standards of
novelty and nonobviousness, which the design patent law essentially adapted from the law of
utility patents, do not provide apt or fair evaluating criteria for industrial designs. As Gerard
Magliocca, a member of the faculty of the Indiana University School of Law—Indianapolis,
explains:
To see this point more clearly, think of these two elements as part of a broader test to
determine whether an improvement represents an “advance” over the state of the art in a
44 Id.
45 Keebaugh, supra, at 260.
46 Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116-17 (Fed. Cir. 1988); see also 35
U.S.C. § 289 (2006).
47 In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988).
48 Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
49 Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citation omitted).
50 35 U.S.C. § 173 (2006).
51 Richard Sybert and Lindsay J. Hulley, “Copyright Protection for ‘Useful Articles,’” 54 Journal of the Copyright
Society of the USA (2007), 419.
52 Scott D. Locke, “Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of
Fashion and Luxury Goods Companies,” 5 John Marshall Review of Intellectual Property Law (2005), 40.
53 Daniel H. Brean, “Enough Is Enough: Time to Eliminate Design Patents and Rely on More Appropriate Copyright or
Trademark Protection for Product Designs,” 16 Texas Intellectual Property Law Journal (2008), 325.
54 Jonathan E. Moskin, “The Shape of Things to Come—Emerging Theories of Design Protection,” 92 The Trademark
Reporter (2003), 681.
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given field. Viewed in these terms, one commentator has observed that, “[w]hereas it may
often be possible to recognize a technological innovation as an ‘advance’ because of its
efficiency in promoting economies or in achieving previously unattainable utilitarian ends,
there exist no comparable criteria of ‘advance’ for artistic creations.” Indeed, most designs
simply involve rearranging basic artistic elements (e.g., colors, shapes, and materials) into a
new pattern. The result of this reshuffling process can almost always be considered
obvious—and hence unpatentable—because any designer could have come up with the
combination at issue. Put another way, the nonobviousness and novelty requirements often
end up restricting design protection to those rare instances when an improvement establishes
an entirely new style. This leaves most designers out of luck and is at odds with the reality
that commercial art is generally incremental in nature.55
Other observers believe that acquiring design patents remains an overly costly and time-
consuming procedure. These factors may reduce the attractiveness of such protection for
products, like clothing, that remain popular for only short periods of time.56 Design patent law’s
functionality doctrine, which is similar to principles found in copyright and trademark law, has
again been subject to critique. An industrial design that successfully integrates functional and
ornamental aspects may simply be ineligible for protection.57
Vessel Hull Design Protection
In the boating industry, some manufacturers have been known to use a “plug molding” technique
to duplicate the hulls of their competitors. Some observers believe that the “boat manufacturing
industry has long been plagued by low-cost boat makers who think nothing of taking a successful
competing boat hull design to make a direct-cast mold for their own unauthorized manufacturing
use.”58 In response, the state legislature of Florida enacted legislation that prohibited certain uses
of the plug molding process.59 However, the 1989 Supreme Court ruling in Bonito Boats Inc. v.
Thunder Craft Boats, Inc. held that this legislation was preempted by the federal patent statute
and therefore invalid.60
Following the Bonito Boats decision, Congress enacted the Vessel Hull Design Protection Act.61
This 1998 statute, currently codified in Title 13 of the Copyright Act, allows for the registration of
an original design that has actually been incorporated into a fabricated vessel hull.62 Although this
system is administered by the Register of Copyrights, the protection afforded by the Vessel Hull
Design Protection Act is not a copyright, but rather a sui generis right.63
55 Gerard N. Magliocca, “Ornamental Design and Incremental Innovation,” 86 Marquette Law Review (2003), 852.
56 Keebaugh, supra, at 262.
57 See Steven A. Church, “The Weakening of the Presumption of Validity for Design Patents: Continued Confusion
Under the Functionality and Matter of Concern Doctrines,” 30 Indiana Law Review (1997), 499.
58 Olson, supra, at 178.
59 Fla.Stat. § 559.94 (1987) (repealed).
60 489 U.S. 141 (1989).
61 The Vessel Hull Design Protection Act was enacted as Title V of the Digital Millennium Copyright Act of 1998 in
the 105th Congress. P.L. 304, 112 Stat. 2905 (1998).
62 17 U.S.C. §§ 1301(b)(2), 1310(b) (2006).
63 Keebaugh, supra, at 274.
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In order to enjoy protection, the design owner must affix notice of the registration upon vessel
hulls that embody the design.64 The protected design affords its owner the exclusive right to
“make, have made, import, for sale or for use in trade, any useful article embodying that design”
and “sell or distribute for sale or for use in trade any useful article embodying that design.”65 The
statute does not extend protection to designs that are “staple or commonplace” or “dictated solely
by a utilitarian function.”66 In addition, an accused design that is “original and not substantially
similar in appearance to a protected design” is exempted from infringement.67
The Vessel Hull Design Act also creates infringement liability if a seller or distributor who did not
itself make or import an infringing article induces, or acts in collusion with, a manufacturer to
make or import the article.68 A seller or distributor may also be liable for infringement if it fails to
respond to the design owner’s request to disclose the source of an infringing article, and if that
person orders or reorders the article after receiving notice of the protected design.69 The act also
establishes a limited “innocent infringement” exemption which excuses individuals who made,
imported, sold, or distributed an article embodying the copied design without knowledge that the
design was protected.70
The design owner may bring a lawsuit in federal court against those it believes are infringing.71
Remedies available under the act include an injunction72 and damages adequate to “compensate
for the infringement.”73 The act also allows the court to increase the damages “to such amount,
not exceeding $50,000 or $1 per copy, whichever is greater, as the court deems to be just,”
provided that the damages awarded are compensatory rather than punitive in nature.74 The term of
protection is ten years.75
Some experts believe that in the decade since its enactment, the Vessel Hull Design Protection
Act had been “underutilized, no doubt in part due to the difficulty in proving infringement based
on the way in which ‘hull’ was originally defined.”76 In particular, the act currently defines the
term “hull” as “the frame or body of a vessel, including the deck of vessel....”77 This definition
required that courts consider the features incorporated into a vessel’s deck when considering what
subject matter is protected.78 As a result, the act has been said to have created a “legal loop-hole
64 17 U.S.C. § 1306 (2006).
65 17 U.S.C. § 1308 (2006).
66 17 U.S.C. § 1302 (2006).
67 17 U.S.C. § 1309(e) (2006).
68 17 U.S.C. § 1309(b)(1) (2006) (further explaining that purchasing or giving an order to purchase an infringing article
in the ordinary course of business does not of itself constitute infringement or collusion).
69 17 U.S.C. § 1309(b)(2) (2006).
70 17 U.S.C. § 1309(c) (2006).
71 17 U.S.C. § 1321 (2006).
72 17 U.S.C. § 1322 (2006).
73 17 U.S.C. § 1323(a) (2006).
74 Id.
75 17 U.S.C. § 1305 (2006).
76 Olson, supra, at 177.
77 17 U.S.C. § 1301(b)(4) (2006). The statutory definition expressly excludes “masts, sails, yards, and rigging” from the
definition of “hull.” Id.
78 See Maverick Boat Co. v. American Marine Holdings, Inc., 70 USPQ2d 1493 (2004), aff’d, 418 F.3d 1186 (11th Cir.
2005).
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for ‘knock-off’ artists to freely copy a protected boat hull design as long as they are clever enough
to modify one or more protectable elements of the ‘deck.’”79
P.L. 110-434, the Vessel Hull Design Protection Act Amendments of 2008, apparently responded
to these concerns. Enacted by the 110th Congress, that legislation clarified the distinction between
a hull and a deck.80 P.L. 110-434 also specified that protection is available for designs of hulls and
decks, either individually or in combination. President Bush signed into law the amendments to
the Vessel Hull Design Protection Act on October 16, 2008.81
Current Issues in Industrial Design Protection
Multiple forms of intellectual property protection are potentially available to industrial designs.
Some observers believe that this “ragged quilt of protection” does not adequately protect
designers, however.82 In particular, the inability of copyright, trademark, and design patent law to
protect industrial designs that have some functional component is frequently criticized.83 Others
disagree, believing that there is no compelling case for expanding intellectual property protection
for industrial designs and that doing so would limit competition and the availability of products
for consumers.84 Recent debate about the scope of intellectual property rights for industrial
designs has occurred within several specific contexts. This report next turns to a review of these
issues.
Intellectual Property Rights in Fashion Designs
Congress has recently considered legislation that would, for the first time in the United States,
provide explicit intellectual property protection for fashion designs.85 In the 111th Congress, H.R.
2196, titled the Design Piracy Prohibition Act, would have expanded the scope of coverage under
the Vessel Hull Design Protection Act to also include “an article of apparel.”86 This term is
broadly defined to include an article of clothing, including undergarments, outerwear, gloves,
footwear, headgear, handbags, purses, tote bags, belts, and eyeglass frames.87 In order to secure
protection, the designer must apply for registration within six months after the article has been
made available to the public.88 The term of protection is set at three years.89
79 Olson, supra, at 180.
80 In particular, the word “hull” is defined in part as “the exterior frame or body of a vessel,” while the word “deck” is
defined in part as “the horizontal surface of a vessel that covers the hull....”
81 P.L. 110-434, 110th Cong., 2d. sess., 122 Stat. 4972 (2008).
82 Magliocca, supra, at 845.
83 See Laura C. Marshall, “Catwalk Copycats: Why Congress Should Adopt a Modified Version of the Design Piracy
Prohibition Act,” 14 Journal of Intellectual Property Law (2007), 305.
84 See Testimony of Steve Maiman Before the U.S. House of Representatives Subcommittee on the Courts, the Internet
and Intellectual Property (February 14, 2008) (available at http://judiciary.house.gov/media/pdfs/Maiman080214.pdf).
85 For a more thorough review of these proposals, see CRS Report RS22685, Copyright Protection for Fashion Design:
A Legal Analysis of the Design Piracy Prohibition Act (H.R. 2196), by Brian T. Yeh.
86 H.R. 2196 at § 2(a)(2) (2007).
87 Id.
88 Id. at § 2(f).
89 Id. at § 2(d).
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Perceived shortfalls in the established intellectual property regimes provided the impetus for this
Design Piracy Prohibition Act.90 Design patents have been described as “difficult and expensive
to obtain,” as well as entailing “a lengthy examination process.”91 Trade dress law may protect a
fashion design if that design has obtained a reputation among consumers as identifying the source
of the product.92 However, such protection is not of general applicability, and its extent is limited
to uses of the design that create a substantial likelihood of consumer confusion.93 Finally, the
prohibition against obtaining copyright for “useful articles” means that clothing most often does
not secure protection.94
Due to the limited nature of existing intellectual property rights for fashion, many designers assert
that their successful designs are “knocked off” in a matter of weeks or even days.95 This trend
may particularly impact young designers who have yet to establish reputations in the marketplace,
and in fact may be unable to do so when competitors frequently copy their work.96 Proponents of
the Design Piracy Prohibition Act further asserted that the relatively short term of protection
afforded—three years—will protect high end “haute couture” designs but not unduly impact the
public.97 Supporters of this statute also point to intellectual property rights that have been
established for fashion design overseas.98
Not everyone agrees that intellectual property rights of the sort contemplated by the Design
Piracy Protection Act would be appropriate. Opponents of the legislation explained that the
fashion industry is enjoying great success and that copying is an integral and accepted practice
within it.99 They also claim that this legislation would have led to numerous accusations of
infringement, stifling the creative production of fashion designs and reducing consumer choice.100
They further observe that substantial copying of designs continue to occur in foreign states that
have enacted fashion design protection laws, suggesting that this intellectual property right may
prove of limited effectiveness.101
U.S. Adherence to the Hague Convention
An international agreement known as the Geneva Act to the Hague Agreement Concerning the
International Registration of Industrial Designs potentially simplifies the process through which
90 See Day, supra, at 243.
91 A Bill to Provide Protection for Fashion Designs: Hearing Before the House Subcommittee on Courts, the Internet,
and Intellectual Property, 109th Cong., 2nd sess. (2006) (statement of the U.S. Copyright Office) [hereinafter
“Hearings”].
92 See supra notes 31-32 and accompanying text.
93 See Hearings, supra (statement of U.S. Copyright Office).
94 Id.
95 See Day, supra, at 241-42.
96 See Hearings, supra (statement of Susan Scafidi, Associate Professor of Law, Southern Methodist University).
97 Day, supra, at 270.
98 See Hearings, supra (statement of Susan Scafidi, Associate Professor of Law, Southern Methodist University).
99 See Hearings, supra (statement of David Wolfe, Creative Director, Donegar Creative Services).
100 See Hearings, supra (statement of Christopher Sprigman, Associate Professor, University of Virginia School of
Law).
101 Id.
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industrial design protection can be obtained in many countries.102 Under current law, U.S.
designers must file separate applications for intellectual property protection in each jurisdiction
where they seek to obtain rights.103 This process is potentially complex and may involve multiple
languages, currencies, and local legal representatives.104
The Geneva Act to the Hague Convention would instead provide U.S. designers with the option
of filing a single English-language application at the U.S. Patent and Trademark Office (USPTO).
The application would then be forwarded to the World Intellectual Property Organization
(WIPO), which then publishes the application. The intellectual property authorities of each
designated member state then have a maximum of 12 months to provide notice that the
application has been refused. In the event of a refusal, further efforts to obtain intellectual
property protection in that design would occur in keeping with national laws.105 If a member state
does not give notice of a refusal within 12 months, then the application is deemed to be
granted.106
The Senate gave advice and consent to the ratification of the Geneva Act to the Hague
Convention on December 7, 2007.107 The United States has not yet deposited its instrument of
ratification with WIPO, however. As explained by President Bush’s letter of transmittal to the
Senate:
In the event that the Senate provides its consent to ratify the Agreement, the United States
would not deposit its instrument of ratification until the necessary implementing legal
structure has been established domestically.108
The USPTO has testified before Congress that a number of changes would need to be made to
render U.S. design patent law compatible with the Geneva Act to the Hague Convention,
including increasing the term of protection from 14 to 15 years and providing limited rights to
patent applicants between the date their international applications are published and the date the
patent issued.109 This implementing legislation has not yet been introduced before Congress.
102 World Intellectual Property Organization, Hague Agreement Concerning the International Deposit of Industrial
Designs, July 2, 1999, 2279 U.N.T.S. 156 (available at http://www.wipo.int/export/sites/www/hague/en/legal_texts/pdf/
geneva_act_1999.pdf).
103 See Fryer, supra, at 662.
104 See CRS Report RL31132, Multinational Patent Acquisition and Enforcement: Public Policy Challenges and
Opportunities for Innovative Firms, by John R. Thomas.
105 See World Intellectual Property Organization, “The Hague Agreement Concerning the International Registration of
Industrial Designs: Main Features and Advantages” (available at http://www.wipo.int/freepublications/en/designs/911/
wipo_pub_911.pdf).
106 Id.
107 Treaty No. 109-21 (December 7, 2007).
108 Message from the President of the United States Transmitting the Geneva Act to the Hague Convention Concerning
the International Registration of Industrial Designs (November 13, 2006).
109 See “Intellectual Property/Treaties: PTO Urges Senate Foreign Relations Committee to Ratify Three IP Treaties,” 74
Patent, Trademark & Copyright Journal (Bureau of National Affairs July 20, 2007), 346.
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Automobile Spare Parts
The use of design patents to protect automobile aftermarket or collision repair parts has long been
debated.110 Some observers believe that allowing intellectual property rights to cover “must-
match” spare parts on complex products overly limits competition. Others believe that
distinguishing between primary and secondary markets for the protected design would be
unprecedented and unnecessarily limit protection for designers.111 This debate has proceeded
overseas as well. On December 12, 2007, the European Parliament approved a proposal to end
design protection for automobile spare parts and other machinery components.112
Recent legal controversies have renewed this debate domestically. In In re Certain Automotive
Parts,113 the International Trade Commission held that certain third-party replacement automobile
parts, designed for use in the 2004 Ford F-150 pickup truck, infringed design patents owned by
the Ford Motor Co. As a result, the ITC banned the importation of these component parts into the
United States. In response, a coalition of automobile part manufacturers called on Congress to
add a “repair” infringement exemption to U.S. design patent law.114
In the 111th Congress, legislation was introduced that would have introduced a new subsection (j)
to the “Infringement of patent” provision at § 271 of the Patent Act.115 That subsection would
read:
It shall not be an act of infringement 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.
It should be appreciated that this exemption appears to extend beyond automobile spare parts and
design patents. Rather, proposed § 271(j) of the Patent Act would apparently have applied to all
industries with respect to any patent.116
Observers vary as to the merits of this proposal. Supporters of the legislation assert that design
patents on automobile replacement parts “increase repair bills, block competition, and threaten
110 See Erica Pruetz, “Protecting Car Design Internationally: A Comparison of British and American Design Laws,” 24
Loyola of Los Angeles International and Comparative Law Review (2002), 475.
111 For further discussion reflecting different views in this debate, see Kenneth Enborg, “Industrial Design Protection in
the Automobile Industry,” 19 University of Baltimore Law Review (1989-90), 227; James F. Fitzpatrick, “Industrial
Design Protection and Competition in Automobile Replacement Parts—Back to Monopoly Profits?,” 19 University of
Baltimore Law Review (1989-90), 233.
112 European Parliament legislative resolution of 12 December 2007 on the proposal for a directive of the European
Parliament and of the Council amending Directive 98/71/EC on the legal protection of designs (available at
http://www.europarl.europa.eu/oeil/file.jsp?id=5201742). See Joseph Straus, “Design Protection for Spare Parts Gone
in Europe? Proposed Changes to the EC Directive: The Commission’s Mandate and its Doubtful Execution,” 27
European Intellectual Property Review (2005), 391.
113 No. 337-TA-557, 2007 WL 2021234 (ITC May 4, 2007).
114 See “Legislation/Patents: Auto Parts Coalition Asks Lawmakers for Design Patent Infringement Exemption,” 74
Patent, Trademark & Copyright Journal (Bureau of National Affairs September 21, 2007), 611.
115 H.R. 3059; S. 1368 (both titled the “Access to Repair Parts Act”).
116 See ”Legislation/Design Patents: Lofgren Introduces Bill Exempting ‘Repair’ Parts from Infringement Liability,” 75
Patent, Trademark & Copyright Journal (Bureau of National Affairs March 21, 2008), 527.
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the safety of consumers who may forego necessary repairs because of their high cost.”117
However, not all concerned parties agree. Design patent attorney Perry Saidman reportedly has
stated that the legislation would ignore “the rationale behind design patents” and opined that “any
company whose business is predicated on copying the original designs of others will ... beat a
path to Congress’ door, claiming that their knockoff products increase competition and reduce
prices for consumers.”118
Judicial Developments Concerning Design Patents
Some legal experts have drawn attention to recent judicial opinions with respect to design
patents.119 One of these opinions, Arminak and Associates, Inc. v. Saint-Gobain Calmar, Inc.,120
concerned the identity of the “ordinary observer” in design patent infringement determinations. In
order to decide that an accused design infringes a design patent, a court must conclude that “in the
eye of an ordinary observer, giving such attention as a purchaser usually gives,” the patented and
accused designs “are substantially the same, if the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it is the other.”121 The Supreme Court has held
that “ordinary observers” should not be viewed as experts versed in the designs used within a
particular industry, but rather “those who buy and use” the product that bears the particular
design.122
In the Arminak decision, the Court of Appeals for the Federal Circuit (“Federal Circuit”) held that
under the facts of that case, an industrial purchaser was the appropriate “ordinary observer” for
assessing infringement. The design patent in Arminak depicted the top portion of a trigger
sprayer, which is commonly termed a “shroud.” Both the patent proprietor and the accused
infringer sold trigger sprayers to producers of liquid household products. The Federal Circuit
concluded that ordinary consumers, who do not purchase shrouds by themselves, but rather
household cleaning products with trigger sprayers, could not be judged the “ordinary observer.”
Rather, “the purchaser of the patented and accused designs in this case is the purchaser of one of a
retail product’s component parts that is thereafter assembled with other parts to make the retail
product.”123 The Federal Circuit therefore affirmed the district court’s finding of noninfringement.
The ruling in Arminak has been criticized due its potential impact upon design patent holders. As
industrial purchasers are considerably more sophisticated than ordinary consumers concerning the
nuances of particular product designs, a finding of infringement is much less likely when the
standard of the “ordinary observer” is raised beyond the level of the lay public. Although the
Arminak holding may potentially be justified under its particular facts, design patent attorney
Perry Saidman has viewed this ruling as inconsistent with governing Supreme Court cases.124 Mr.
117 See ”Patents/Legislation: Labor, Auto Safety Groups Oppose Provisions in Patent Reform Measure,” 74 Patent,
Trademark & Copyright Journal (Bureau of National Affairs August 3, 2007), 405.
118 See ”Legislation/Patents: Auto Parts Groups Lobby for Bill to Exempt Repair Parts from Patent Infringement,” 75
Patent, Trademark & Copyright Journal (Bureau of National Affairs April 25, 2008), 674.
119 Perry J. Saidman, “The Crisis in the Law of Designs,” 89 Journal of the Patent & Trademark Office Society (2007),
301.
120 501 F.3d 1314 (Fed. Cir. 2007).
121 Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
122 Id.
123 501 F.3d at 1323.
124 Saidman, supra, at 301.
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Saidman has further concluded that the Arminak holding effectively renders “a holding of design
patent infringement virtually unattainable, ... indeed destroying all the protection for designs that
Congress intended to give.”125
Another judicial opinion, Egyptian Goddess, Inc. v. Swisa, Inc.,126 raised two issues of current
controversy with respect to design patents. In Egyptian Goddess and other decisions, courts have
engaged in a process of “claim construction” with respect to design patents.127 Because the claims
of design patents consist of visual images of the protected design, this “claim construction”
process consists of putting into words the visual appearance of the designs shown in the patent’s
drawings. This textual description is then compared to the accused product under the “ordinary
observer” standard in order to determine whether the design patent was infringed or not. For
example, the asserted design patent in the Egyptian Goddess case concerned an “ornamental nail
buffer.” One of the patent’s seven figures appeared as follows:
The claim construction associated with the design patent was as follows:
A hollow tubular frame of generally square cross section, where the square has sides of
length S, the frame has a length of approximately 3S, and the frame has a thickness of
approximately T = 0.1S; the corners of the cross section are rounded, with the outer corner of
the cross section rounded on a 90 degree radius of approximately 1.25T, and the inner corner
of the cross section rounded on a 90 degree radius of approximately 0.25T; and with
rectangular abrasive pads of thickness T affixed to three of the sides of the frame, covering
the flat portion of the sides while leaving the curved radius uncovered, with the fourth side of
the frame bare.128
Some observers believe that the judicial claim construction inquiry potentially provides a more
fair and predictable method for determining the scope of patent protection.129 However, others
have asserted that this “verbalization” of the claimed design overly limits the scope of design
125 Id. at 314.
126 543 F.3d 665 (Fed. Cir. 2008).
127 Id. at 668.
128 Id. As described below, the Court of Appeals ultimately determined that the accused nail buffers did not infringe the
asserted design patent.
129 See Kyle J. Fiet, “Restoring the Promise of Markman: Interlocutory Patent Appeals Reevaluated Post-Philips v.
AWH Corp.,” 84 North Carolina Law Review (2006), 1291 (noting these views).
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patents and does not adequately allow for the judgment of the “ordinary observer” in design
patent infringement determinations.130
In Egyptian Goddess, the Federal Circuit concluded that trial courts possessed discretion on
whether to conduct a detailed claim construction or not. Judge Bryson explained that “[g]iven the
recognized difficulties entailed in trying to describe a design in words, the preferable course
ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by
providing a detailed verbal description of the claimed design.”131 However, “a district court’s
decision regarding the level of detail to be used in describing the claimed design is a matter
within the court’s discretion.... ”132
The Egyptian Goddess opinion also changed the way that courts will conduct infringement
analyses of design patents in the future. Previous, the Federal Circuit had used the “point of
novelty” standard when deciding whether design patents were infringed or not.133 Under this
standard, “no matter how similar two items look, the accused device must appropriate the novelty
in the patented device” that distinguishes it from earlier designs in order to prove infringement.134
The Federal Circuit had explained that the patent proprietor must set forth either a single novel
design element or a combination of known elements that collectively present a “non-trivial
advance over the prior art.”135 If the design element or elements asserted by the patent proprietor
do not meet this standard, then the court will reach a judgment of noninfringement.
In the Egyptian Goddess case, the patent proprietor’s asserted point of novelty was the
combination of four of the claimed design’s elements: (1) an open and hollow body, (2) square
cross-section, (3) raised rectangular pads, and (4) exposed corners. Applying Federal Circuit
precedent, the trial court determined that an earlier design patent directed towards a nail buffer
disclosed all of these elements, with the exception that it was triangular, rather than square in
cross-section. Observing that a number of other references illustrated nail buffers with square
cross-sections, the court rejected the asserted “point of novelty” and rendered a judgment of
noninfringement.136
As it had come to be applied by the Federal Circuit, the “point of novelty” standard had been
criticized on a number of grounds. Some commentators believed that this approach confused
validity and infringement standards for design patents and also resulted in a narrow scope of
design patent protection.137 However, other observers explained that design patents contain
general illustrations that do not specify the distinctions between the patented design and the state
of the art. They favored a rule that ensures that there will be no finding of infringement when the
130 See Locke, supra; Perry J. Saidman and Allison Singh, “The Death of Gorman v. White: Killing It Softly with
Markman,” 86 Journal of the Patent and Trademark Office Society (2004), 792.
131 543 F.3d at 679.
132 Id.
133 See Daniel Adam Nadel, “The Elusive Point of Novelty Test Leaves Design Patent Infringement in Limbo: A
Critique of Lawman Armor Corporation v. Winner International, LLC,” 17 Federal Circuit Bar Journal (2008), 343.
134 Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citation omitted).
135 Egyptian Goddess, 498 F.3d at 1357.
136 Id. at 1358.
137 See Aaron Cook, “Points of Novelty, Lawman Armor, and the Destruction of Design Patents,” 12 Journal of
Technology Law & Policy (2007), 103.
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accused design has the same overall appearance of both the design patent and earlier designs,
particularly because they both use features found in well-known predecessors.138
In response to critiques of the “point of novelty” standard, the Federal Circuit explicitly rejected
this test in Egyptian Goddess. The Court of Appeals instead concluded that “the ‘ordinary
observer’ test should be the sole test for determining whether a design patent has been
infringed.”139 Although some commentators believe this ruling is not of particular practical
significance,140 other observers believe that Egyptian Goddess had made design patents more
attractive because, in their view, it is now easier for a court to reach a conclusion of
infringement.141
Issues in Innovation and Competition
Current congressional interest in industrial designs spans a number of different issues and
industries. This breadth of interest in strengthening intellectual property rights for industrial
designs arguably reflects the changing nature of the U.S. economy. Given the increasing
sophistication of foreign manufacturing, the protection of industrial designs provides one
mechanism for sustaining competitive domestic design-based industries. As attorney Regan
Keebaugh explains, “[i]f economic reality means the United States can no longer compete in the
production side of manufacturing, then one way to maintain jobs in the manufacturing industry is
through developing a strong design industry to ensure that products made overseas are designed
in the United States.”142
Intellectual property laws are said to promote innovative industries by establishing exclusive
rights in new inventions, industrial designs, and other creations. Absent such rights, “free riders”
could easily duplicate and exploit the innovative developments of others. Further, because they
incurred no design and development costs, copyists could likely undersell the original innovator.
The resulting inability of innovators to capitalize on their creations would lead to an environment
where too little research and development occurs.143 Intellectual property rights may also
encourage others to design around these proprietary interests, pointing the way to new products,
markets, economies of production and even entire industries.144
Although the established intellectual property paradigms of copyrights, trademarks, and patents
provide protection for traditional works of authorship, brand names, and inventions, they also
limit or deny protection for other sorts of subject matter. As this report has explained, copyright,
trade dress, and design patent law to varying degrees deny protection to industrial designs with a
138 See Amicus Brief of Elite Group, Inc. and Sensio, Inc. in Egyptian Goddess, Inc. v. Swisa, Inc., No. 2006-1562,
2008 WL 545143 (Fed. Cir. 2008).
139 543 F.3d at 678.
140 See Robert Scheffel, “Clear as Mud: Federal Circuit Issues Egyptian Goddess Decision,” Intellectual Property Alert
(Sept. 22, 2008).
141 See Erin Coe, “Federal Circuit Examines Design Patent Test,” IP Law 360 (June 2, 2008).
142 Keebaugh, supra, at 257.
143 See Rebecca S. Eisenberg, “Patents and the Progress of Science: Exclusive Rights and Experimental Use,” 56
University of Chicago Law Review 1017 (1989).
144 Id.
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functional component.145 Sui generis protection systems may potentially fill gaps that may not
have been anticipated by the framers of the traditional intellectual property regimes.146
Sui generis protection regimes also offer a potential advantage when compared to the copyright,
trademark, and patent statutes. Although the established forms of intellectual property apply
broadly to numerous industries and types of innovations,147 sui generis protection regimes may be
more precisely tailored to meet the needs of particular industries. For example, the acquisition of
rights could be designed to fit the perceived needs of particular industries, the scope and term of
protection may be particular product cycles, and competitors and consumers could enjoy the
privilege to use protected subject matter in certain circumstances.148
Policy makers may also appreciate that the designs of previous sui generis regimes have tended to
be based upon one of the established intellectual property paradigms. For example, the rights
established under the Semiconductor Chip Protection Act of 1984149 are similar to copyright.150
On the other hand, both the design and plant patent systems were incorporated into the existing
utility patent laws and therefore follow a patent-like model.151 Some observers believe that
copyright- or trademark-like protection represents the most appropriate scheme of protection for
industrial designs because neither regime requires courts or government officials to analyze the
merits of “creative expression applied to goods.”152 On the other hand, other experts believe that
the design patent law, which does entail an analysis of whether an industrial design would have
been obvious to a skilled artisan,153 has historically served as the “best option” for protecting
industrial designs.154
Although the establishment of sui generis regimes may reduce harmful free riding that results in
reduced investment in innovation, experts have also expressed concerns about the expansion of
intellectual property rights. They observe that the primary mechanism through which intellectual
property rights create incentives to innovate is to limit the ability of others to participate in the
marketplace.155 From the perspective of the government, such systems are inexpensive when
compared to prizes or other potential incentives.156 Yet they also limit the ability of firms to
145 See supra notes 24-28 (copyright); 36-38 (trade dress); 42-44 (design patents) and accompanying text.
146 See generally J.H. Reichman, “Legal Hybrids Between the Patent and Copyright Paradigms,” 94 Columbia Law
Review (1994), 2432.
147 See CRS Report RL33996, Patent Reform in the 110th Congress: Innovation Issues, by John R. Thomas and Wendy
H. Schacht.
148 See generally Mark D. Janis and Stephen Smith, “Technological Change and the Design of Plant Variety Protection
Regimes,” 82 Chicago-Kent Law Review (2007), 1557.
149 98th Congress, P.L. 620, 98 Stat. 3347 (codified as amended at 17 U.S.C. § 901 et seq.).
150 See Leon Radomsky, “Sixteen Years After the Passage of the U.S. Semiconductor Chip Protection Act: Is
International Protection Working?,” 15 Berkeley Technology Law Journal (2000), 1049.
151 See Jonathan D. Carpenter, “Intellectual Property: The Overlap Between Utility Patents, Plant Patents, the PVPA,
and Trade Secrets and the Limitations on the Overlap,” 81 North Dakota Law Review (2005), 171.
152 Daniel H. Brean, “Enough is Enough: Time to Eliminate Design Patents and Rely on More Appropriate Copyright
and Trademark Protection for Product Designs,” 16 Texas Intellectual Property Law Journal (2008), 325.
153 35 U.S.C. § 103(a) (2006).
154 Saidman, supra, at 303.
155 See Steven Wilf, “The Making of the Post-War Paradigm in American Intellectual Property Law,” 31 Colombia
Journal of Law & the Arts (2008), 139.
156 See Michael Abramowicz, “Perfecting Patent Prizes,” 56 Vanderbilt Law Review (2003), 115.
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compete and possibly raise prices and limit the products available to the public, at least in the
short term.157
In this regard, it should be appreciated that the traditional intellectual property regimes often did
not leave certain subject matter outside the scope of protection by accident. Rather, this
circumstance resulted from a purposeful legislative choice.158 For example, the patent statute
stipulates that designs that would have been obvious to a skilled artisan should not be awarded
proprietary rights.159 The Supreme Court recently explained this rule as resulting from the
judgment that “[w]ere it otherwise patents might stifle, rather than promote, the progress of useful
arts.”160 To the extent that proposed sui generis regimes lower this threshold and award
proprietary rights in “subpatentable” innovations, they may diminish the public domain and
hamper both future innovation and competition.161
Finally, congressional award of proprietary rights to some industries may inspire additional
lobbying efforts by others. Other sorts of potentially innovative products—including databases
and other compilations of information;162 perfumes, colognes, and scents;163 and computer
software164—are among those that, at least according to some observers, do not interface well
with the traditional copyright, trademark, and patent regimes. Mark Janis, a member of the faculty
of the University of Iowa College of Law, explains that once one industry has made its case for a
sui generis regime of intellectual property rights, “[i]t takes little imagination to extend this
reasoning to justify the creation of a multitude of additional second tier ... regimes having
specialized subject matter requirements.”165 Determining which industries, if any, deserve sui
generis rights outside the established intellectual property paradigms ultimately remains a matter
of legislative judgment.
Author Contact Information
John R. Thomas
Visiting Scholar
jrthomas@crs.loc.gov, 7-0975
157 See Peter K. Yu, “The International Enclosure Movement,” 82 Indiana Law Journal (2007), 827.
158 See Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991) (explaining that the inability
of copyright to protect facts per se is not an unforeseen byproduct of the statutory scheme, but rather an essential
characteristic of the copyright system).
159 35 U.S.C. § 103 (2006).
160 KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1746 (2007).
161 See Mark D. Janis, “Second Tier Patent Protection,” 40 Harvard International Law Journal (1999), 151.
162 See Daniel J. Gervais, “The Protection of Databases,” 82 Chicago-Kent Law Review (2007), 1109.
163 See Thomas G. Field, Jr., “Copyright Protection for Perfumes,” 45 IDEA: The Journal of Law and Technology
(2004), 19.
164 See Pamela Samuelson et al., “A Manifesto Concerning the Legal Protection of Computer Programs,” 94 Columbia
Law Review (1994), 2308; but see Jane C. Ginsburg, “Four Reasons and a Paradox: The Manifest Superiority of
Copyright Over Sui Generis Protection of Computer Software,” 94 Columbia Law Review (1994), 2559.
165 See Janis, supra, at 151.
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Acknowledgments
This report was funded in part by a grant from the John D. and Catherine T. MacArthur Foundation.
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