Author:Fromer, Jeanne C.

Design stands out among intellectual property subject matter in terms of the extent of overlapping protection available. Different forms of intellectual property usually protect different aspects of a product. In the design context, however, precisely the same features are often subject to design patent, trademark, and copyright protection--and parties commonly claim more than one of those forms. Yet, as we show, the claiming regimes of these three forms of design protection differ in significant ways: the timing of claims; claim format (particularly whether the claims are visual or verbal); the multiplicity of claims (whether and how one can make multiple claims to the same design); and the level of abstraction at which parties claim rights. These methodological differences have significant effects on the operation of each individual regime. All of the claiming regimes have significant shortcomings, particularly in terms of the quality of notice the claims provide to third parties about their scope. That notice problem is worsened, as we argue, by the frequent cumulation of rights in the same design. Claim ambiguity and parties' ability to switch back and forth between different design claims--both within and across legal regimes--make it difficult for courts and third parties to evaluate the validity and scope of rights. There is significant irony here because intellectual property claims exist almost entirely to provide notice. Cumulation also enables design rightsholders to assert rights in one or more regimes using the claiming rules that benefit them most at a particular moment, without any risk that those claiming choices will bind them in later rights assertions. We suggest a number of improvements to each claiming regime that would help restore internal order. We also analyze various approaches to ameliorating the amplified costs of overlapping regimes for claiming design. In particular, we focus on doctrines of election and channeling rules as alternative methods of directing designs to one regime or another. We also introduce the possibility of transsubstantive intellectual property claiming rules as a way to reduce important inconsistencies across these regimes while also allowing protection under multiple regimes. Each of these solutions would alleviate at least some of the concerns we identify, though one's preference among them will likely depend on one's level of concern about overlapping rights.

Introduction 125 I. Claiming Designs in the Law 133 A. Design Patent Claiming. 135 B. Trade Dress Claiming. 146 C. Copyright Claiming. 160 II. Internal Consequences of Claiming Design. 169 A. Claim Timing and Information Available to Shape the Claim 170 B. The Elasticity and Multiplicity of Claim Formats 177 1. Central Claiming, by Exemplar and Characteristic 177 2. Claim Timing 179 3. Visual and Verbal Claiming 180 C. Adequacy of Notice. 183 D. Claim Scope and Litigation Framing 188 E. Internalizing Validity and Scope. 191 III. Overlapping Protection and Claiming Design 194 A. Overlapping Protection for Design. 194 B. Exacerbating Notice Problems 197 C. Obscuring Overlap 200 IV Fixing Claiming Variance 202 A. Eliminating Overlap. 202 1. Doctrine of Election 203 2. Channeling 206 B. Transsubstantive Claiming 208 Conclusion 210 INTRODUCTION

Beautiful and thoughtful design is striking. Design is also ascendant. From the iPhone to Christian Louboutin shoes to Eames furniture, design occupies an increasingly influential role in our culture and economy. (1) The intellectual property laws that protect design are also striking, but for a different reason: the extent of overlapping protection they permit.

To be sure, design is not the only subject matter that implicates multiple forms of intellectual property protection, which are each thought to promote creation, innovation, or fair competition in their respective realms. In other cases of overlapping protection for a product or service, however, each form covers a different aspect of the subject matter. Software, for example, is potentially subject to both utility patent and copyright protection. (2) But utility patent protects only the functional aspects of software, whereas copyright law protects only its nonfunctional, expressive aspects. (3)

Design is different. Unlike the complementary use of different forms of intellectual property for different aspects of other sorts of subject matter, parties commonly claim multiple forms of protection for precisely the same features of a design. For example, Puma recently sued fast-fashion retailer Forever 21, asserting design patent, trademark, and copyright infringement; Puma alleged that Forever 21 copied the same features of three footwear designs that it had developed in collaboration with singer Rihanna, one of which is shown in Figure 1. (4)

Each relevant legal regime--design patent, trademark, and copyright--makes some effort to channel protection of design's functional features to utility patent law. But intellectual property law is largely comfortable with overlapping protection for design's nonfunctional aspects. The various forms of design protection can have complementary or cumulative economic effect, as each legal regime might imbue the claimant with somewhat different substantive rights and make different remedies available. As a result, strategic parties are often able to use design patent, trademark, and copyright laws cumulatively or as substitutes.

One of us has elaborated elsewhere on the problem of cumulation of intellectual property rights. (6) But even those not disposed to regard cumulation as problematic in principle (7) ought to be concerned about the considerable differences in claiming methodologies across design patent, trademark, and copyright. At the very least, those differences undermine notice and create worrisome opportunities for strategic behavior.

Take, for example, the plaintiff's claim in Two Pesos, Inc. v. Taco Cabana, Inc. (8) In that landmark trademark case, Taco Cabana, a fast-food Mexican restaurant chain, claimed as its trade dress the exterior and interior design of its restaurants, (9) which it characterized as consisting of

a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme. (10) The generality of that description is remarkable, particularly in light of the photographs Taco Cabana entered into the record. As shown on the left in Figure 2, the most visually striking aspect of Taco Cabana's restaurant design is its primarily pink color. Had Taco Cabana been forced to articulate the elements of its trade dress prior to and independently of its dispute with Two Pesos, it seems likely that the color pink would have featured prominently in that description. But because Taco Cabana could enforce its rights without having to register the trade dress, (11) it was never forced to delineate its claim before the dispute. Once it confronted Two Pesos' blue design, Taco Cabana surely was not going to emphasize the pink color scheme. Instead, it strategically claimed its trade dress to capture Two Pesos' specific design choices, highlighting a more general "festive eating atmosphere" and "festive and vivid color scheme." (12)

There are good reasons to allow parties to assert rights in unregistered trademarks. (14) Registration favors large, sophisticated companies, which generally are familiar with the registration system and have the resources to seek registration for each new potential trademark. (15) The availability of unregistered rights makes it easier for smaller, less sophisticated companies to claim rights without significant expense. Unregistered rights are also substantially more flexible. A party that goes to the expense of registering a mark has some incentive to stick with that mark over longer periods of time, whereas unregistered rights are better suited to marks that might be adapted or used in connection with different goods or services over time. Recognition of unregistered rights is also consistent with foundational American trademark principles because trademark rights have always arisen out of use rather than registration. (16)

Still, the flexibility of unregistered rights can have real costs. One obvious cost is a lack of notice regarding the scope of rights claimed by a party. Before litigation, Two Pesos could only have observed Taco Cabana's use in the marketplace and made an educated guess as to the features of any trade dress owned by Taco Cabana. Based on its observation, Two Pesos might reasonably have believed that, if Taco Cabana had any rights to the design of its restaurants, the color pink was an essential--and central--part of the trade dress. Indeed, Two Pesos might have chosen to use blue in its restaurant design precisely to avoid infringement.

Relatedly, the flexibility of unregistered rights enables strategic behavior on the part of claimants. Because it was able to defer claiming until it asserted its rights against Two Pesos, Taco Cabana was able to define its trade dress to encompass Two Pesos' design. It might not have been able to do so if it had been forced to claim earlier and independently of the particular dispute. In addition, trademark law has no rules fixing the level of generality at which trade dress must be described. (17) Taco Cabana was thus able to claim without referencing specific features that might have contrasted with corresponding features of the Two Pesos design or invited comparisons to the designs of the many other Mexican restaurants whose restaurants predated Taco Cabanas. As a result, Taco Cabana was able to leave...

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