The Eye Alone is the Judge: Images and Design Patents

Journal of Intellectual Property Law Volume 19 Issue 2 Article 8 March 2012 The Eye Alone is the Judge: Images and Design Patents Rebecca Tushnet Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Rebecca Tushnet, The Eye Alone is the Judge: Images and Design Patents, 19 J. INTELL. PROP. L. 409 (2012). Available at: https://digitalcommons.law.uga.edu/jipl/vol19/iss2/8 This Article is brought to you for free and open access by Digital Commons @ University of Georgia School of Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ University of Georgia School of Law. Please share how you have benefited from this access For more information, please contact . Tushnet: The Eye Alone is the Judge: Images and Design Patents THE EYE ALONE IS THE JUDGE: IMAGES AND DESIGN PATENTS Rebecca Tusknet Design patents are an area of intellectual property law focused entirely on the visual, unlike copyright, patent, trademark, trade secret, or the various sui generis protections that have occasionally been enacted for specific types of innovation.' The law's traditional bias against, even fear of, the visual2 may help explain why design patents have been of less interest to many intellectual property scholars than other bodies of IP law.3 Christopher Buccafusco has argued that "[p]atent law most directly confronts the sense of sight in the field of design patent law," but that the result has been "considerable confusion and unhappiness among courts and commentators."4 He attributes this anxiety to the discomfort that patent judges have "deciding questions of visual aesthetics," 5 and I would simply strike "patent" from his description: Judges and lawyers in general are highly uncomfortable with images, yet design patents force direct legal engagement with images. This short piece offers an outsider's view of what design patent law has to say about the use of images as legal tools, why tests for design patent infringement are likely to stay unsatisfactory, and what lessons other fields of intellectual property, specifically copyright, might take from design patent. Design patent offers a way to protect the aesthetic, nonfunctional elements of a product design. Unlike copyright, which attaches to original works automatically, design patent requires examination and registration by the Patent and Trademark Office. A design patent itself is granted based on the drawing, which defines the protected material, rather than on the written description that predominates in utility patents.6 The law requires a "written description"'7 of * Professor, Georgetown Law. Thanks to participants at Georgia's conference, including Stacey Dogan, Jason Du Mont, Mark Janis, and Mark McKenna, and to Greg Vetter, who provided helpful comments. 1 Proposals for fashion design protection in the U.S., if enacted, would add a design patentlike protection for fashion also focusing on the visual. 2 See Rebecca Tushnet, Worth a Thousand Words: The Images of Copyright Law, 125 HARV. L. REV. 683 (2012). 3 See Janice M. Mueller & Daniel Harris Brean, Overcoming the 7mpossible Issue" ofNonobviousness in Design Patents, 99 Ky. L.J. 419, 423-24 (2010-2011) (contrasting design patent's popularity with patentees with its relative judicial and scholarly inattention). 4 Christopher Buccafusco, Making Sense of Intellectual Propeny Law, 97 CORNELL L. REV. 501, 524 (2012); see also id at 527 (suggesting that "technophile" Federal Circuit judges "are particularly anxious about the 'subjective' nature of visual pleasure"). 5 Id. at 524. 6 See U.S. PATENT & TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE ( 1503.01 (8th ed. rev. Oct. 2005) [hereinafter MPEP] ("No description of the design in the 409 Published by Digital Commons @ University of Georgia School of Law, 2012 1 Journal of Intellectual Property Law, Vol. 19, Iss. 2 [2012], Art. 8 410 J. INTELL PROP.L [Vol. 19:409 patent claims, but the drawing is the written description for design patents. Though the Federal Circuit purported to reject the "linguist[ic]" distinction between drawing and writing, it then concluded that the drawing in a design patent is the key and the words are incidental: not a rejection but a reversal of the usual valuation of words over images in law.8 Words purporting to claim a design's characteristic features cannot serve as a basis for patentability; overall appearance is the key.9 The standard for infringement is also purely visual. In Gorham Co. v. White, the Supreme Court stated that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.' 0 Quoting an English case, the Court held that "the eye alone is the judge of the identity of the two things."" But what does it mean for the eye to be the judge in a legal system organized around words? How can the report of an eye be turned into a verdict, and further into a reviewable judgment? In recent years, the Federal Circuit has specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description." (citing In ra Freeman, 23 App. D.C. 226 (D.C. Cit. 1904))); Unidynamics Corp. v. Automatic Prods. Int'l, 157 F.3d 1311, 1323 (Fed. Cit. 1998) (a design patent has "almost no scope beyond the drawings"); In ae Mann, 861 F.2d 1581, 1582 (Fed. Cit. 1988) (a design patent is limited to what is shown in drawings); Application of Laverne, 356 F.2d 1003, 1006 (C.C.P.A. 1966) ('The test is inherently a visual test, for the design is nothing more than appearance, and the appearance is that of the article as a whole."). 7 35 U.S.C. § 112 (2006). 8 In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) ("It is the drawings of the design patent that provide the description of the invention. Although linguists distinguish between a drawing and a writing, the drawings of the design patent are viewed in terms of the written description requirement of S 112." (citations and internal quotations omitted)); Concept Innovation v. CFM Corp., No. 04 C 3345, 2004 WL 2812109, at *1 (N.D. Ill. Dec. 7, 2004) ("Unlike utility patents, design patents do not describe claimed designs in words: '[n]o description, other than a reference to the drawing, is ordinarily required....'" (citations omitted)); see also MPEP, supra note 6 ("[W]hile not required, such a [textual] description is not prohibited . . . ."). 9 MPEP, supra note 6, § 1503.01 (citing In ar Rosen, 673 F.2d 388 (1982)). Moreover, "if a description is presented, it must only describe the appearance of the article illustrated in the drawings and not the construction o (...truncated)