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2014 Symposium

Privacy Challenges in the Internet Age

By STLR Editors

The Stanford Technology Law Review will be holding a symposium on Friday, April 11, 2014 addressing privacy challenges and legislative issues in the digital age. Topics will include the impact of the 2013 California Online Privacy Protection Act, Internet torts and cybercrimes, and the recent push by Internet activists and industry to reform the federal Electronic Communications Privacy Act. Registration is free.

For more information, please visit 2014 Symposium: Privacy Challenges in the Internet Age.

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April 1, 2014


Volume 17, Issue 1 of the Stanford Technology Law Review

By STLR Editors

We are pleased to announce the publication of Issue 1 of Volume 17 of the Stanford Technology Law Review. The Articles in this issue are leading scholarship on design patents, on topics ranging from the doctrine’s theoretical underpinnings, to the scope of design patent protection, to the proper remedy for infringement. These Articles were originally presented at the Design Patents in the Modern World conference held at Stanford Law School last April.

The complete Issue includes the following articles:

Progress and Competition in Design
Mark P. McKenna & Katherine J. Strandburg

Functionality and Graphical User Interface Design Patents
Michael Risch

Virtual Designs
Jason J. Du Mont & Mark D. Janis

(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
William J. Seymour & Andrew W. Torrance

A Rational System of Design Patent Remedies
Mark A. Lemley

Overlapping Intellectual Property Doctrines: Election of Rights Versus Selection of Remedies
Laura A. Heymann

Design Patents: Law Without Design
Peter Lee & Madhavi Sunder

Moving Beyond the Standard Criticisms of Design Patents
Sarah Burstein

The entire issue is available here as a pdf.

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March 5, 2014


Progress and Competition in Design

By Mark P. McKenna & Katherine J. Strandburg

This Article argues that applying patent-like doctrine to design makes sense only for a design patent system premised on a patent-like conception of cumulative progress that permits patent examiners and courts to assess whether a novel design reflects a nonobvious step beyond the prior art. If there is a meaningful way to speak of such an inventive step in design, then design patent doctrine should be based on that conception. But if nonobviousness has no sensible meaning in design, then a patent system cannot work for design. At present, design patent doctrine is in disarray because it is unmoored from any conceptual underpinnings. Design patents are not needed to incentivize technological innovation, because that kind of innovation is the subject of utility patent law. Because aesthetic expression is not susceptible of an “inventive step” judgment, progress in aesthetic expression is not appropriately incentivized by a patent-like system. Indeed, copyright long has rejected the very possibility of incentivizing aesthetic progress with a “creative step” requirement because it has found no metric along which to measure aesthetic progress. If there is any type of cumulative progress to be sought in design it must therefore involve the interplay between aesthetics and utilitarian function. Aesthetics and utility intersect at the integration of form and function and that, we argue, is where design patents must be justified, if they can be justified at all. Once stated, this point is intuitively appealing. The integration of form and function is what distinguishes industrial design both from purely artistic expression (for which we have copyright) and from technological invention (for which we have utility patent). The converse also follows: if there is no workable means to assess the nonobviousness of a given design’s integration of form and function, there can be no sensible design patent system.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev. 1 (2013)


Functionality and Graphical User Interface Design Patents

By Michael Risch

Modern designers of graphical user interfaces, or GUIs, have obtained design patent protection for creative computer software displays, a realm previously limited to copyright. The difference in protection is important because design patents do not traditionally allow the same defenses—like fair use—associated with copyright. Apple’s nearly billion-dollar judgment against Samsung, which included such a GUI patent, brought this issue to the forefront.

This Article answers three emerging questions:

1. Aren’t GUIs something that should be protected by copyright only? Why should there be a patent? The answer is relatively simple: the law has, since 1870, contemplated dual protection. This Article traces the history to explain why the law could have evolved differently, but simply did not.

2. Display screens change, both before and after sale. How can someone patent an ephemeral screen design? It also turns out that ephemeral designs have been protected for some time. Even so, this Article proposes some limitations on the protection of GUIs that should address the special nature of GUI design patents.

3. There are many differences between Apple’s patent and Samsung’s product. How can Apple own the idea of square icons in a grid with a dock bar at the bottom? This last question is the most intractable: determining when a design is infringing, and the role that functionality should play in that consideration. The bulk of this Article is dedicated to answering this question.

To answer the third question, this Article draws on lessons from prior copyright disputes about GUIs. It first suggests that courts must act as gatekeepers, rather than allowing juries to determine which elements to disregard as functional. It then develops economic factors that can help the court determine whether a design element is functional, and whether to allow reuse by a competing program.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev. 53 (2013)


Virtual Designs

By Jason J. Du Mont & Mark D. Janis

Industrial design is migrating to the virtual world, and the design patent system is migrating with it. The U.S. Patent and Trademark Office (USPTO) has already granted several thousand design patents on virtual designs, patents that cover the designs of graphical user interfaces for smartphones, tablets, and other products, as well as the designs of icons or other artifacts of various virtual environments. Many more such design patent applications are pending; in fact, U.S. design patent applications for virtual designs represent one of the fastest growing forms of design subject matter at the USPTO.

Our project is the first comprehensive analysis of design patent protection for virtual designs. We first take up the question of virtual designs as design patent eligible subject matter, a question that has not yet been tested in the courts. We show that longstanding principles of design patent jurisprudence supply an answer to the question, with surprisingly little need for adaptation. We then present the results of an empirical study analyzing all issued U.S. design patents on virtual designs and their prosecution histories. Here we show how utility patent metrics for quality and value can be extended to design patents. Using these metrics, we show that design patents on virtual designs fare at least as well in quality and value as do design patents on other types of designs. In fact, design patents on virtual designs fare better in some respects. And, finally, we conclude by identifying issues that are likely to arise in anticipated future litigation over patents on virtual designs.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev. 107 (2013)


(R)evolution in Design Patentable Subject Matter

The Shifting Meaning of "Article of Manufacture"

By William J. Seymour & Andrew W. Torrance

Design patents protecting electronic designs, including computer-generated imagery (CGI), have rapidly become an important and valuable intellectual property asset class. Designs for CGIs have enjoyed design patent protection since 1996, when the United States Patent and Trademark Office (USPTO) reversed its original position that CGI were not design patent eligible. Previously, the USPTO consistently rejected design applications claiming CGI for failure to meet the “design for an article of manufacture” requirement of 35 U.S.C. § 171. This USPTO policy change proved prescient and important, as the focus of design innovation has shifted from traditional, tangible articles of manufacture to designs, such as CGIs, intended mainly for evanescent, electronic display. However, the USPTO’s allowance of CGI design patents continues to be hotly debated among design patent practitioners and scholars. Remarkably, no court has directly upheld the USPTO’s determination that CGI can qualify under the “article of manufacture” requirement of § 171. Furthermore, granting design patent protection for CGI has introduced tensions into the intellectual property protection for visual subject matter law by altering the balance that had previously prevailed among copyright, trademark, and design patent protection. This Article reexamines the USPTO’s 1996 determination to permit design patents claiming CGI, considers the relative benefits and costs attending the pre- and post-1996 policies, compares the treatment of CGI under the design protection laws of other countries, and analyzes whether or not design patent law allows protection for electronic (and other evanescent) designs, such as CGI. It explores the policy rationales behind the “design for an article of manufacture” requirement in § 171, and undertakes a comprehensive review of historical cases interpreting the metes and bounds of the requirement. Then, it analyzes problems raised by CGI design patents in contemporary cases, with a particular focus on Apple v. Samsung. The Article concludes by considering whether design patent protection is a socially beneficial mechanism for incentivizing and regulating innovation in electronic designs, especially CGI.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev. 183 (2013)


A Rational System of Design Patent Remedies

By Mark A. Lemley

A design patent owner who wins her suit is entitled to the defendant’s entire profit from the sale of the product, whether or not the design was the basis for buying the product. No other IP regime has this rule, and it makes no sense in the modern world, where a design may cover only a small component of a valuable product. The culprit is § 289 of the Patent Act, a provision added in the nineteenth century, when design patents were very different than they are today. We should abolish § 289 and bring rationality to design patent remedies.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev. 219 (2013)


Overlapping Intellectual Property Doctrines

Election of Rights Versus Selection of Remedies

By Laura A. Heymann

Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress.

When an overlap issue arises—that is, when an intellectual property rights holder asserts rights under more than one doctrine—the question then becomes how courts should respond. One response, of course, is that courts should do nothing, on the theory that the doctrines developed in a way that permit such overlapping rights, and so the courts should continue to enforce them. The opposing response is to argue that overlapping rights make it difficult for intellectual property users to determine the scope of another’s rights, particularly when those rights have different terms or limitations, and so the courts should require intellectual property owners to choose the right they want enforced at the outset.

Neither response is entirely satisfying. Without some signal from Congress that it intended to limit the scope of intellectual property rights when overlaps occur, the imposition of restrictions by the courts simply to achieve predictability for users seems problematic. At the same time, courts should not be blind to the difficulties that doctrinal overlap pose for potential defendants and the temptation it presents to intellectual property owners to push for even stronger protection.

This Article therefore proposes something of a middle ground. Courts should not require intellectual property owners to elect one form of protection at the outset. But they should be attentive to whether the right asserted in any litigation proceeding aligns with the harm claimed by the plaintiff and, relatedly, should try to devise remedies that address only those harms.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev 239 (2013)


Design Patents

Law Without Design

By Peter Lee & Madhavi Sunder

Design patents have recently burst onto the intellectual property stage, but they are surprisingly underdeveloped for a body of law that is more than a century and a half old. Design patents are, quite simply, a body of law without design: there is little coherent theoretical underpinning for this long overlooked form of intellectual property. Now, as design patents are poised to assume greater prominence in the legal and economic realms, the time is ripe for examining myriad justifications for exclusive rights in design in order to develop a richer theoretical foundation for this body of law. To that end, this Article draws from statute, doctrine, legislative history, and academic commentary to identify various theoretical justifications for design patents related to promoting progress, beautifying the human environment, rewarding creative labor, and reducing consumer confusion and promoting distinctiveness. We critically examine the cogency of these justifications and identify hidden tensions among them. Our ultimate aim is to help develop a body of design patent doctrine that is more accountable to theory. We conclude that even the most persuasive and defensible justifications for design patents counsel a limited right at best.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev 277 (2013)


Moving Beyond the Standard Criticisms of Design Patents

By Sarah Burstein

The U.S. design patent system has been widely criticized. Certain arguments against design patents have been made so often—and accepted so uncritically—that one might believe that the case against design patents was overwhelming and that the failure of the system was beyond dispute. These standard criticisms can be grouped into three main categories: (1) designs aren’t patent subject matter; (2) patent requirements are not “appropriate” for designs; and (3) patent protection is overbroad. This article examines each of these standard criticisms and concludes that they are not persuasive. Therefore, the case that is commonly made against design patents is not as strong as the existing literature suggests. Moreover, these standard criticisms tend to obfuscate, rather than answer, the difficult policy questions raised by any design protection scheme. In order to meaningfully evaluate the current system and proposed alternatives, these questions need to be confronted directly, not hidden behind oft-repeated litanies about the supposed evils of design patents.

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March 5, 2014 Cite: 17 Stan. Tech. L. Rev. 305 (2013)