THE EVOLUTION OF IP DESIGN PROTECTION
By Carma Gorman
A designer, or team of designers, works hard to come up with a distinctive look for a product. It could be an item of furniture, or high-tech equipment, or even clothing. But if those designers work in the United States, their design might not be what they first envisioned, because copyright law in the U.S. doesn’t provide the same kind of protection for designs that other countries do. The peculiarities of this country’s intellectual property laws have shaped American design in subtle but important ways over the last century, especially in the “decorative arts” fields of furniture, tableware, and lighting.
In the last quarter century, the U.S. has amended many of its distinctive national laws to harmonize with international intellectual property (IP) agreements. But historically, its copyright and patent laws differed markedly from those of most European countries. Even though both the U.S. and Denmark, for example, are signatories of the Berne Convention on copyright and the Hague Agreement on industrial design protection, the scope of protection each country offers differs markedly. Danish designers have been able to copyright modern, unornamented designs for furniture, lighting, and tableware for over a century; American designers have not, because U.S. law does not allow designers to copyright designs for functional products. (There are a few exceptions: printed textile designs can be copyrighted, and so can certain other kinds of ornament that are separable from and/or applied to functional products, but with the exception of boat hull designs, designers generally cannot copyright the overall configuration of a product).
Rather than extending lengthy copyright protection to functional goods—in the U.S., copyright protection spans the artist’s lifetime plus 70 years—U.S. law instead affords designers a much more modest 15-year span of protection in the form of a “design patent.” Design patents are different from utility (“regular”) patents; they protect the novel appearance, rather than the novel technology, of a functional product. Congress created design patents in 1842 in response to pressure from designers and manufacturers of cast-iron stoves, whose highly ornamented products could easily be disassembled and copied by competitors. Although Congress enacted the law during an era when products festooned with columns, curlicues, flowers and cherubs were the norm, the original 1842 text of the law afforded designers the opportunity to secure a design patent for “any new and original design for a manufacture.” However, Congress changed the phrasing of the statute in 1870 and again in 1902 so that by the outset of the twentieth century, it specified more narrowly that a design patent could be secured for “any new, original, and ornamental design for an article of manufacture” (emphasis mine). As a result of this change, the design patent statute did not readily accommodate the modern, unornamented products that became increasingly fashionable in Europe by the early 1920s and in the U.S. by the early 1930s. Worse, for most of the twentieth century, design patents were hardly worth they paper they were printed on: Jerome H. Reichman (1983) has observed that the Second Circuit upheld only two design patent infringement cases tried between 1922 and 1974.
The U.S.’s weak design protection laws at mid-century had both pros and cons. Design critics mostly noticed the cons. From the 1930s through at least the 1970s, they lamented the poor taste of American designers, who they felt inexplicably lavished their designs with “borax” (exaggerated non-functional forms such as the tail fins on a 1959 Cadillac) and “rosebuds” (unnecessary decorative patterns such as the iconic blue cornflowers adorning the side of a CorningWare baking dish). What the critics failed to understand was that
the U.S.’s copyright and design patent laws—or at least the courts’ interpretation of them from the 1920s to the 1970s—made it relatively difficult to protect and thus profit from unornamented design. In contrast, non-functional shapes and decorative patterns could much more readily be protected with design patents, copyrights, or occasionally both.
Although most designers, manufacturers, and critics have understood the U.S.’s weak design protection laws as a con rather than a pro, Congress and the courts take a different view. Rather than favoring the intellectual property rights of designers and manufacturers, as European countries tend to do, Congress and American courts have deliberately limited the scope and duration of U.S. design protection laws in order to favor consumers, in the belief that the social good is ultimately best served by making useful designs available at competitive prices as quickly as possible, to as wide a swath of society as possible.
In addition to helping democratize well-designed products, the peculiar configuration of U.S. IP law has arguably also encouraged American designers and manufacturers of decorative arts to be more technologically innovative than their European counterparts. In contrast to the Scandinavian modernists, who used conventional wood and joinery to make sleek, unornamented furniture, American mid-century modernists often designed technologically and materially innovative forms out of bent plywood, Fiberglas, and aluminum. Florence Knoll, Eero Saarinen, and Charles and Ray Eames, for example, seem to have deliberately designed in ways that would qualify their works for utility—rather
than design—patent protection (fig. 1). They had good reasons to pursue this strategy: utility patents had a vastly better record in U.S. courts than design patents did, and were also far broader in scope.
However, the design protection landscape has shifted seismically just since the turn of the twenty-first century. In contrast to the traditional strategy of filing a single design patent to cover a product configuration as a whole, companies such as Apple have recently employed a strategy of filing multiple design patents per product, each of which protects only a single facet of the product’s design (fig. 2). This approach makes it much easier to win design patent infringement suits against competitors who copy even one aspect of a product. And the payoff for winning a design patent infringement suit is potentially huge, because (in contrast to utility patent infringement suits) the winner receives all profits from sales of infringing designs. Commenting on the May 18, 2015 decision by the U.S. Court of Appeals for the Federal Circuit on the Apple v. Samsung appeal, prominent design patent attorney Perry Saidman observed that design patents are “now the strongest form of design protection in the U.S.,” which represents quite a remarkable turnaround in their value.
U.S. IP laws and the courts’ interpretations of them have changed in significant ways over the last century. But many of their peculiarities have persisted. The U.S.’s lack of copyright protection for product design, and its historically weak level of design patent protection for unornamented designs, has played an important role in shaping the national character of American design. In order to secure protection for their works, American designers have typically used more ornament, and/or pursued technological innovation more doggedly, than have their European counterparts. But even more subtly and significantly, US IP law has shaped the national character of American design by framing design as a social good whose benefits can and should be rapidly democratized through copying and competition.
Carma Gorman is an Associate Professor and Assistant Chair of Design in the Department of Art & Art History at the University of Texas at Austin. She is an associate editor of the journal “Design and Culture” and a past president of the Design Studies Forum.