Friday, April 5, 2013

Classic Design Patent Scholarship

Just in time for Stanford's Design Patents in the Modern World Conference (on Twitter at #designpatents2013), we have a new addition to the Classic Patent Scholarship Project on design patents written by Professor Sarah Burstein (Oklahoma Law). Her scholarship is available here, and she frequently Tweets about design law as @design_law.

It might seem strange to have a list of classic design patent scholarship that consists largely of articles that do not really focus on design patents. But the literature is sparse. And even if it wasn’t, these articles would still be important because they each address issues that we are still debating today—including the fundamental question of how (or if) we should protect designs using intellectual property law.

Barbara A. Ringer, The Case for Design Protection and the O’Mahoney Bill, 7 Bull. Copyright Soc'y U.S.A. 25 (1959).

This article, by the future Register of Copyrights, is short but provides a good summary of all of the arguments that had been (and continue to be made) against design patents. This piece is also notable for its thoughtful consideration of the problems of applying the full copyright regime to designs.

Matthew Nimetz, Comment, Design Protection, 15 Copyright L. Symp. 79, 111 (1967).

In this piece, Nimetz engages in what is (at least as far as I’ve seen) the first economic analysis of design patents. Nimetz ultimately concludes that design patents are “particularly harmful” from an economic perspective. But he also concludes that limited protection may be justified for certain types of ornamental designs—a conclusion that is particularly interesting in light of the observations made later by Professor Brown.

Ralph Brown, Copyright-Like Protection for Designs, 19 U. Balt. L. Rev. 308 (1989).

This article (like the Reichman piece listed below) was published in connection with a 1989 University of Baltimore School of Law symposium. All of the articles from that symposium are well worth reading. Professor Brown’s contribution, however, deserves recognition as a “classic” because it is a cogent, concise argument against the passage of a 1985 sui generis design protection bill. This piece is also notable because Professor Brown argues that the 1985 bill represented “a significant shift in emphasis” in a “perennial” lobbying effort—namely, a shift from seeking protection for “ornamental” designs to “industrial design” more generally.

Jerome H. Reichman, Design Protection and the New Technologies: The United States Experience in a Transnational Perspective, 19 U. Balt. L. Rev. 6 (1989).

Really, all of Professor Reichman’s design-protection articles should be on this list; I’d recommend them to anyone who is interested in design patents or design protection more generally. But this one is a good example. In this article, Professor Reichman provides an extensive history of design protection in the United States, including the relatively recent legal recognition of product-design trade dress. He also argues (as he has elsewhere), that design patent protection has created a cycle of over- and under-protection that will not stop until the U.S. enacts a sui generis design law. This is, in many respects, the strongest argument that has been made in favor of a sui generis design law and it deserves careful consideration.

Jay Dratler, Jr., Trademark Protection for Industrial Designs, 1988 U. Ill. L. Rev. 887 (1988).

In this article, Professor Dratler argues that neither design patents nor copyright are a good fit for design protection; instead, he argues that trademark law would be the best regime. This piece is particularly notable for its critique of copyright as a design-protection regime and for its consideration—and ultimate rejection—of the argument that federal trademark protection would be barred by patent policy.

David S. Welkowitz, Trade Dress and Patent—The Dilemma of Confusion, 30 Rutgers L.J. 289 (1999).

Professor Welkowitz takes up the issue of whether protecting designs using trademark law conflicts with federal patent policy. Unlike Professor Dratler, however, he concludes that “trademark law is being made to serve the wrong role and that its use is not serving the public interest.” Although Professor Dratler’s view seems to have won in the courts (at least for now), Professor Welkowitz’s arguments remain compelling.

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