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Sarah Burstein, The Patented Design, 83 Tenn. L. Rev. ___ (forthcoming 2016), available at SSRN.

Ornamental designs of articles of manufacture have been patentable subject matter in the U.S. since 1842. About 400,000 such patents have issued in the years since the birth of this regime, two-thirds of which have been granted since 2000. Scholarly interest in design patents has historically been quite modest, but has been heating up lately. This is due in no small part to the epic battle between Apple and Samsung over Apple’s claim that Samsung’s phones infringed some of Apple’s design patents. Samsung has asked the Supreme Court to consider whether the designs at issue are really “ornamental” and thus properly covered by design patents. In addition, Samsung wants the Court to review the award to Apple of its total profits on the sales of the infringing phones in the amount of $399 million.

The Supreme Court has not reviewed a design patent law since 1894. The Court’s 1871 decision in Gorham v. White articulated a test for infringement that is still influential today. Gorham did not raise difficult issues of patent scope because the defendant in that had embodied a clearly ornamental patented design for silverware in directly competing products.

The question about ornamentality in Apple v. Samsung is important. One can only hope the Supreme Court will take the case and answer this question. Professor Burstein’s new article poses two other questions about design patent scope. One is whether a design patent can be infringed if the design is embodied in a different product than that depicted in the patent. The other is whether a design patent can be infringed by a visual representation of the design not embodied in an article of manufacture. She concludes that other-product-embodiments and visual-representations should not infringe design patents, both as a matter of statutory interpretation and as a matter of policy.

Burstein convinced me on both points. What I loved best about the article, though, was the rich discussion about what the word “design” means in the context of design patents. Burstein observes that the word design is “mercurial,” serving both as a verb and as a noun, a process as well as a product. Design has a dual meaning: the look of products and the preparation of instructions for the production of those products. Designs for articles of manufacture are about blending form and function. When articles of manufacture are beautiful, that beauty results from this blending. The product and its design are inseparable. These insights about design inform Burstein’s interpretation about the proper scope of design patents.

Burstein discusses some cases that recently posed other-product-embodiment and visual representation issues. The cases are so colorful that one might have imagined them to be improbable professorial hypotheticals.

In Kellman, the plaintiff owned a design patent on a novelty foam hat in the shape of a wing-nut so that fans of the Detroit Red Wings team could express how nuts they were about their favorite team. The wing-nut visual pun caught on. One firm printed a wing-nut design on t-shirt, and Coca-Cola impressed a wing-nut design on bottle caps. Kellman sued both entitites. Under the Gorham test for design patent infringement, neither claim was plausible.

Gorham directs the trier of fact to consider whether an ordinary observer would the designs at issue to be so substantially the same as to induce customers to purchase the defendant’s product supposing it to be the plaintiff’s. No one who wanted a wing-nut hat would be deceived into buying Coca-Cola because of the wing-nut on the bottlecap. The t-shirt claim was arguably stronger because both products are items that humans wear. Yet, it was implausible that anyone who wanted the hat would be deceived into buying the t-shirt instead.

The PS Products case was even stranger. The design patent at issue was for a stun-gun designed to be worn like brass knuckles. Its owner sued the maker of a videogame that included visual depictions of similar weapons. The District Court dismissed the case on the ground that no reasonable person would purchase the videogame believing he/she had purchased a stun-gun.

These decisions reject the view that design patents protect designs per se. Burstein argues that these cases were rightly decided and offers statutory, doctrinal, and policy reasons in support of her argument. What convinced me most, however, was her discussion earlier in the article about the inseparability of patented designs and their embodiments in articles of manufacture. If a designer thinks that a design can, in fact, be embodied in more than one kind of product, he/she should apply for more than one design patent. For it is a requirement that an applicant identify what kind of product is to embody the design.

Burstein would not, however, limit the scope of design patents to only those products specifically identified in the patent. She would favor a rule that extended design patent protection to products in the same general category. This part of the paper is less developed, but is consistent with her overall thesis.

Design patents are not copyrights; they do and should not protect designs per se. Having spent a great deal of time cogitating about the proper scope of copyright’s derivative work right, I appreciated Burstein’s project to do a comparable analysis of design patent scope. Bravo, Sarah.

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Cite as: Pamela Samuelson, What Scope for Patented Designs?, JOTWELL (February 15, 2016) (reviewing Sarah Burstein, The Patented Design, 83 Tenn. L. Rev. ___ (forthcoming 2016), available at SSRN),