Design Patents in the Modern World

A recent conference at Stanford Law brought together intellectual property scholars, representatives from USPTO and WIPO, litigators, and in-house counsel for a rousing discussion of emerging issues in design patents.

EamesIn contrast to an ordinary utility patent, a design patent is granted to an inventor of a “new, original, and ornamental” design for an article of manufacture, and lasts for 14 years rather than 20.  35 U.S.C. 171, 173. A design patent contains only a single claim, and photographs or drawings that follow certain drafting conventions and PTO rules. 37 CFR 1.84, 37 CFR 1.152.

Recent cases affirm the “ordinary observer” standard – but application in context of prior art is inconsistent

Design patents began to get increasing attention in 2008, when the Federal Circuit issued a game-changing decision in Egyptian Goddess v. Swisa, 435 F.3d 665 (Fed. Cir. 2008), holding that the “ordinary observer” test is the sole test for design patent infringement. The court looked back to the standard first stated in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), but clarified that the test is to be conducted in the context of the prior art. The ruling did away with the “point of novelty” test, freed district courts from issuing detailed verbal descriptions of the design claims when verbal elaboration would not be helpful, and placed the burden of production of prior art for any affirmative defenses on the accused infringer. This has made it much easier to prove design patent infringement, and consequently made design patents much more valuable, as Paris Hilton recently discovered in launching her shoe line. Experts recommend that inventors obtain design patent protection for any product with novel and unique visual appearance.

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Network Copyright Wars: “The Hopper,” Ad-Skipping DVR, In and Out of Court

The embittered battle between Dish Network and American Broadcasting Companies has given a public face to the struggle between the entertainment and technology industries over the role of copyright in media.

In this battle, however, theoretical copyright interests are secondary to networks’ central business concern: profit. The future of advertising in major network television could seriously impact the bottom line.  The ad-skipping and mobility features of Dish Network’s product “The Hopper” are a challenge to both advertising revenue as well as the revenue from services such as Hulu Plus, which, unlike The Hopper, provide the networks with licensing fees for mobile services.

The Hopper

In March 2012, Dish rolled out the hopper with a slate of entertaining (if not widely-played) ads.  It received largely positive reviews in the ensuing year.  Hopper users can record and watch their shows as played on live television, the critical difference from most digital recording devices being that the Hopper skips advertisements automatically.  The Sling feature, “Primetime Anytime”, enables customers to simply plug in the Sling device to view recorded content on iPads, iPhones, and the like: the service much easier to use than other versions of Sling which are not integrated into dvr devices, at least according to one review.

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Online Gambling in America

Three states have recently passed legislation authorizing online gambling within their borders.  Proponents of online gambling are drafting similar legislation in other states and even in Congress.  In addition to examining these recent legalization efforts, this post takes a look at the complicated history of online gambling in the United States and speculates as to its future.

The History

In 1999, there were over 250 websites accepting money bets from US players on card games, sporting events, and lottery tickets.  Was any of it legal?  There isn’t a clear answer to this question.  These websites frequently advised players to check the laws in their jurisdiction to ascertain the legality of participation.  As of 1999, only two states had statutes explicitly forbidding online gambling.  Roughly half of the remaining states had laws—usually passed sometime before the invention of the light bulb—making it a crime to place a bet.  The most pertinent federal legislation was the Federal Wire Act of 1961.  This act banned interstate and foreign wagering with the use of a wire device like the telephone.  It was passed primarily to prevent bookies from getting the results of horse races before bettors.  Many believed the government might use this act to punish online gambling operators.

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2013 Symposium: “With Untired Spirits and Formal Constancy”: Berne-Compatibility of Formal Declaratory Measures to Enhance Title-Searching

BTLJ is excited to welcome Jane C. Ginsburg of Columbia Law School on April 18–19, 2013 to the 17th Annual BTLJ/BCLT Symposium: Reform(aliz)ing Copyright for the Internet Age?.

This is a summary of Professor Ginsburg’s topic of discussion and forthcoming article:


Copyright formalities are back in fashion, but their acolytes have divergent objectives.  While some celebrate formalities’ confiscatory consequences and would enlist them to populate the public domain, others would rather populate the public record.  Declaratory obligations like notice, registration and recordation inform the public of the author’s claims and, by facilitating rights-clearance, help the author disseminate and derive compensation from her work.

This paper addresses the Berne Convention’s prohibition of imposing “formalities” on the “enjoyment or exercise” of copyright, and the compatibility with that cornerstone norm of declaratory measures to enhance title-searching. Voluntary provision of title-searching information on a public register of works and transfers of rights is fully consistent with Berne, and should be encouraged.  But may a member State impose sanctions or disabilities on foreign authors for failure to supply that information?

The first Part of this paper establishes that “formalities” prerequisite to the initial attachment or persistence of protection, or limiting the scope of minimum rights or the availability of minimum remedies, violate the norms of Berne and subsequent multilateral instruments.  And while it may be permissible to condition “Berne+” subject matter protection, rights, or remedies on compliance with declaratory measures, that path risks descending into controversies of characterization and line-drawing.

The second Part of this paper suggests imposing declaratory measures going to ownership of rights under copyright as an alternative approach.  Because the Berne Convention generally does not address questions of copyright ownership, conditions on who may enjoy or exercise rights—including sanctions for failing to provide information about transfers of rights—should be Berne-compatible.  Thus, the paper proposes making the validity of copyright transfer depend on the transferee’s recordation with the Copyright Office of “a note or memorandum of the transfer” containing sufficient information to permit third parties to ascertain who owns what rights in the work.  The paper concludes by identifying and attempting to resolve practical problems that such an obligation might engender.

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2013 Symposium: Land Recording and Copyright Reform

BTLJ is excited to welcome Molly S. Van Houweling of Berkeley Law on April 18–19, 2013 to the 17th Annual BTLJ/BCLT Symposium: Reform(aliz)ing Copyright for the Internet Age?.

This is a summary of Professor Van Houweling’s topic of discussion and forthcoming article:


Intellectual property scholars often contrast tangible and intangible property schemes on the basis of how much information is readily available about the identity of property owners and the nature of their rights.  Typically, the comparison holds up tangible property—real property in particular—as the model of successful information provision.  Physical signs can provide clues that a piece of land is owned by someone (often the person in possession).  Public records indicate exactly who that someone is and reveal details about the physical dimensions of the parcel, how its ownership has changed over time, and whether express encumbrances (liens, servitudes, etc.) complicate ownership.  These sources of information help to prevent inadvertent trespass by those who wish to avoid invading private land; they facilitate consensual transactions for those who seek permission to use or buy it.

Intellectual property rights, by contrast, do not so neatly correspond either to physical things in the world or to public records signifying ownership and identifying owners.  Of course physical objects can embody intellectual works—a book can embody a copyrighted story, for example.  But ownership of the physical object does not necessarily (or even usually) correspond to ownership of the intellectual property right or vice versa.

Indeed, readily observable indicia of ownership of physical objects (possession of books, for example) are more likely to mislead than to inform about ownership of the embedded intangible rights.  And although some such objects are marked with signs of copyright or patent ownership, a practice which is encouraged by the relevant federal statutes in the United States, marking is not a prerequisite for protection.  In many cases neither the physical object nor any record to which it is expressly tied provides much indication about whether the intellectual work is owned or by whom.  A story embodied in a book may be copyrighted or it may be in the public domain; the copyright may be held by the author or by an employer, heir, devisee, or transferee; some elements of the story may be free and others owned (by the author or by someone else from whom the author copied with or without permission); etc.  In the patent realm there is at least a centralized record of all issued patents.  There is no comprehensive list of copyrights.

Anxiety about the inadequacy of information about intellectual property rights has increased in recent years due to statutory changes that have made the situation worse (e.g. the elimination of registration and notice as prerequisites for copyright protection), and technological changes that have raised the stakes and thickened thickets of (often hidden) rights.  In the copyright context this anxiety is manifest—for example—in policy debates about the status of “orphan works” whose owners cannot be identified and located, and the (related) fate of the Google Book Search project.  In the patent context critics are alarmed when innovators’ investments are jeopardized by allegations that they have infringed unclear and thus difficult-to-avoid patent claims—especially in the new-fangled realms of software and Internet business methods.  In both the copyright and patent contexts, informational inadequacies can contribute to inadvertent infringement and then to surprising and costly disputes; or fear of potential infringement—combined with the inability to identify, locate, and negotiate with relevant rights-holders—can chill productive endeavors.

Critics of this current state of affairs lament what they see as unnecessarily faulty information provision and suggest that intellectual property should aspire to replicate the superior informativeness of real property.  For example, copyright reformers have called for statutory changes modeled on the centralized ownership information provided by land recording systems and the title-clearing function performed by marketable title acts.  As for patents, although the public availability of issued patents (and of most applications 18 months after they are filed) already provides a relatively comprehensive centralized source of information, critics complain that vague patent claims do too little to clarify inventions’ “metes and bounds.”

I have explored various aspects of the comparison between the information infrastructures supporting intellectual property versus land in other work.  In this essay I will focus in particular on what copyright reformers can learn from land recording systems established in U.S. states and elsewhere.  Solicitude for both original owners and innocent subsequent investors has shaped the land law for centuries.  These competing interests are managed in part by the establishment of property information infrastructures that allow prior and later investors to identify each other and understand their rights.  While critics of U.S. copyright law’s abandonment of mandatory formalities lament that the copyright information infrastructure is less reliable, they are sometimes inattentive to the fact that the land law has also eschewed mandatory formalities that would result in forfeiture of unrecorded interests.  Recording is not generally required to establish interests in land—just as registration and recording are not required to establish copyright ownership.  Instead, land recording systems prioritize competing interests in ways that powerfully incentivize recording by landowners.  What are arguably the best of these systems condition their protections for innocent subsequent investors on their recording as well, thus incentivizing all actors to contribute to a formal information system that can avoid the most difficult fact-specific inquiries into actual notice and the like.  The best of the current proposals for copyright reform share this feature, and a better understanding of land law helps us to appreciate their strengths.

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2013 Symposium: Copyright Formalities for the Twenty-First Century: A Berne-compatible Approach

BTLJ is excited to welcome Daniel Gervais of Vanderbilt Law School on April 18–19, 2013 to the 17th Annual BTLJ/BCLT Symposium: Reform(aliz)ing Copyright for the Internet Age?.

This is a summary of Professor Gervais’s topic of discussion and forthcoming article:


The policy that copyright protection vests as soon as a work becomes fixed in a tangible medium has been a feature of American copyright jurisprudence for the past thirty-seven years. Nonetheless, there are many voices suggesting a return to a formalities-based copyright system. They make many valid points. First, there is little certainty regarding the ownership and terms-of-protection of creative works.  Second, formalities are required to ensure that only those works our system seeks to incentivize receive protection.  Third, in this digital age, compliance with formalities is needed more than ever due to the vast number of works being created and published. Fourth and finally, the ease of compliance in the digital environment (online registration, etc.) makes formalities much less burdensome.

Formality-free copyright was born out of necessity; it was required in order to assure global protection of copyrighted works in a time before the international harmonization of formalities was feasible. However, advocates of the current system point out that formality-free copyright was not only a means to this end. It has critical benefits. First, the message of incentivizing creativity is simplified.  Second, providing protection to all works prevents publishers and other content professionals from being able to sidestep professional creators by utilizing instead the unprotected works of amateurs, as American publishers had with English literature before copyright protection was extended to foreign works. Put differently, automatic copyright protection allows authors of all stations to create with confidence that their works will not be appropriated or exploited in a manner injurious to them.

International law also plays a role in determining the fate of formalities. Even if one were to conclude that the benefits of formality-free copyright are outweighed by the benefits of a copyright system with reinvigorated formalities, a rule prohibiting formalities as a condition on the existence or exercise of copyright is enshrined in both the Berne Convention and the TRIPS Agreement. Moreover, the re-introduction of formalities in the United States could have a disproportionate impact on authors in developing nations.

Is there a better way forward? To address the last point, one could reduce the complexity of the copyright registration process (possibly by eliminating the determination of copyrightability as a component of that process) and the related costs (to zero for authors in least-developed and a substantial discount for those in developing nations countries). However, the main suggestion of this paper is to focus on recordation of transfers as a pre-condition to a transferee’s entitlement to bring lawsuits and obtain an award of statutory damages.

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The Purpose of Copyright? Examining the Retracted Republican Study Committee Brief

Last Fall, Derek Khanna, then an intern at the Republican Study Committee (RSC) released a policy brief concerning copyright entitled “Three Myths about Copyright Law and Where to Start to Fix it.” Khanna insisted, based on a textualist reading of the constitution, that copyright has become too favorable to the interests of copyright holders rather than the public. Under the precept that a laissez faire market approach is ideal, he regards the current copyright system as an example of excessive government intervention.

RSC removed the brief from its website after less than 24 hours and promptly fired Khanna at the bequest of some Republican Congress members, but by then the post had garnered significant attention. Critics of copyright lauded the paper’s conclusion that the current system had overstepped its bounds, and Khanna’s Linkedin profile reveals an appearance on Fox News as well as positions with Yale Law School and the Department of Defense.

The brief also became a topic of discussion at CopyHype, Terry Hart’s blog devoted to an explanatory approach to copyright issues. Hart took on a fact-checking role regarding Khanna’s brief over the course of a blog post, as well as this statement about the role of evidence in copyright law.

In particular, Hart rebutted Khanna’s textualist reading of copyright’s purpose by focusing on legislative and judicial intent. Hart argues that, in fact, the purpose of copyright laws are the protection of artists and that intervention is in fact consistent with the government’s role in protecting personal property to support the existence of a free market.

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Kirtsaeng v. John Wiley and Sons: Jet Lag and the First Sale Doctrine

The Supreme Court recently handed down its decision in Kirtsaeng v. John Wiley & Sons, a copyright exhaustion case concerning the sale of “gray-market” works published outside the United States and imported for sale.  In a surprisingly decisive 6-3 decision, the Court reversed the Second Circuit’s decision and held that the first sale doctrine applies to copyrighted works lawfully produced abroad.

The facts of the case center around the actions of a student by the name of Sarap Kirtsaeng, who sold “gray-market” textbooks imported from Thailand beginning in 1997.  Kirtsaeng, who did business on eBay under the handle “Bluechristine99,” set up a very lucrative online business wherein his relatives sent him textbooks from Thailand that he then sold to students in the U.S.  Since textbooks are significantly less expensive in Thailand than in the U.S., Kirtsaeng was able to realize a tidy profit of roughly $100,000—and effectively subsidize an undergraduate degree from Cornell University and a Ph.D. in math from the University of Southern California.  U.S. publishers caught wind of Kirtsaeng’s business and were not amused.  John Wiley filed suit and won in federal district court; the Second Circuit later affirmed, setting up a showdown in the Supreme Court.

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Broad Covenant Not To Sue Does Away With Invalidity Counterclaims In Trademark Litigation

In Already LLC. v. Nike, Inc. the Supreme Court recently held that a broad covenant not to sue hinders defendant’s counterclaims of trademark invalidity. Therefore, by choosing to proffer a covenant not to sue, Nike eliminated any legal controversy between the parties such that Already was not able to raise counterclaims of invalidity and cancellation of Nike’s trademark. This trademark case grapples with the “case or controversy” requirement under Article III, Section 2, Clause 1 of the United States Constitution, as well as the Declaratory Judgment Act. It also gives trademark holders pointers for drafting effective covenants that can shield them from defendants’ challenges to the trademark validity and potential loss of the mark. However, this may not be an entirely helpful litigation strategy in every context, and trademark holders should proceed with caution if they choose to take advantage of such covenants as they may give rise to naked licensing and abandonment of the trademark.

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U.S. v. Cotterman: Ninth Circuit Holds Reasonable Suspicion Required for Forensic Laptop Search at the Border

The Fourth Amendment generally requires that government searches must be reasonable, which typically can be satisfied via a warrant. Searches at the border, however, traditionally occupy a special status in connection with U.S. Fourth Amendment law. Recognizing that “the government’s interest in preventing the entry of unwanted persons and effects is at its zenith at the international border,” border searches are generally deemed “reasonable simply by virtue of the fact that they occur at the border.” While the Ninth Circuit has stated that the border is not an “anything goes” zone, the court has nevertheless previously held that reasonable suspicion is not required before searching electronic devices at the border. As a result, laptops and other electronic devices are commonly subject to cursory searches at the border. For some individuals, these searches can move beyond cursory review and include detailed forensic analysis that can reveal not only every file stored on the device, but also files that have previously been deleted.

Recently, however, the Ninth Circuit issued an en banc decision requiring that reasonable suspicion exist before boarder agents engage in forensic computer searches. The court also noted that password protecting an entire electronic device is not a factor that can be used to trigger reasonable suspicion. The decision is likely to impact law enforcement’s ability to engage in border searches of digital devices. Civil liberties groups have recognized the decision as providing some important additional 4th amendment protection for international travelers. 

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