The audience in intellectual property infringement.

• Author: Fromer, Jeanne C.
• Position: I. Audiences in IP Cases D. Design Patent Law through Conclusion, with footnotes, p. 1273-1304

4. Design Patent Law

   As Jason Du Mont and Mark Janis observe, design patents occupy an awkward position in the IP pantheon. (128) They are, as their name suggests, a form of patent law, and the legal structure of the right is set up as a patent right. Design patents are granted only if the design is new, original, ornamental, and nonobvious, (129) and infringement cases proceed by comparing the claims of the design patent to the accused design. (130) But the history and motivation for design patent law is influenced as much by trademark and unfair competition rationales as by the goal of encouraging the creation of new designs as an end in itself. (131) And to the extent that encouraging new designs is a purpose behind design patent law, copyright, not utility patents, seems a more apt parallel. (132) So design patents are in some sense an amalgam of utility patents, copyrights, and trademarks.

   This doctrinal confusion is reflected in the process of selecting the audience for design patents. As we have seen, patent and trademark are virtual antipodes when it comes to the audience used to assess infringement. Patent law focuses on a hypothetical audience of experts, while trademark law ostensibly cares about both actual consumers' reactions and the defendant's subjective intent.

   The test for infringement of a design patent draws much more from trademark than from patent law. Infringement is judged "in the eye of an ordinary observer, giving such attention as a purchaser usually gives." (133) This test evokes an actual audience composed of reasonable purchasers, just as the trademark test does. But the audience is asked a different question. Despite the fact that the Supreme Court has spoken of "the resemblance ... such as to deceive such an observer, inducing him to purchase one supposing it to be the other," (134) the Federal Circuit has held that in design patent law, it is the similarity between the claimed design and the defendant's product, not the likelihood of confusion, that determines infringement. (135) The result is a hybrid: the consumer audience from trademark law, asked to make the rather more abstract assessment of expert-based technical similarity from patent or copyright law.

   Traditionally, the fact finder was required to channel the expert audience in one important respect: while the audience was composed of the ordinary observer, that observer was credited with knowledge of the prior art, which meant that only similarities that were actually original to the design patentee could form the basis for a finding of infringement. (136) But in Egyptian Goddess, Inc. v. Swisa, Inc., the court abolished this long-standing point-of-novelty test for design patents, which had required proof that the defendant copied a novel aspect of the plaintiff's design. (137) The court replaced the point-of-novelty test with the ordinary-observer test for infringement, which asks whether an ordinary observer would think the plaintiffs and defendant's designs were the same, even if the similarities were already known in the art. (138) In so doing, the court moved from an audience that was more patent-like to one that is closer to audiences used in trademark or perhaps copyright law.

   Understanding these differences is itself valuable because the different audiences lead each of the IP regimes to different tests for infringement. In focusing on the audience, we offer a lens through which scholars and courts can understand how and why different IP regimes define infringement differently. We turn to those differences in Part II.

   2. POSSIBLE INFRINGEMENT AUDIENCES

   Although other variations exist, there are--as Part I demonstrates--three principal possible audiences in IP infringement. First, the audience might be a consumer of the item that the relevant IP right protects, such as a pharmaceutical drug, classical music, or soft drinks. Second, the audience might be an expert in the particular subject matter of the IP, such as a chemist for a pharmaceutical patent, a classical musician or musicologist for a classical music composition, or a branding, marketing, or linguistics specialist or worker in the beverage industry for a soft-drink brand. Third, the audience might be some reasonable ordinary observer outside the industry, much like tort law's "reasonable person" who determines whether conduct was negligent. (139) In this Part, we explore how the choice of audience influences each regime's definition of infringement.

   It is easy to see how these different audiences might answer the same question--whether two specified items are identical or too similar to one another--differently. Consumers might readily think that two drugs are substitutes despite their different chemical formulations because they perform similarly in their eyes, while a chemist would think the drugs are different due to their dissimilar formulations. Consumers might think that two cola drinks with different branding are dissimilar despite their very similar recipes, while beverage experts focused on the ingredients might disagree. (140) Classical-music consumers might think two compositions sound relatively similar, while an ordinary reasonable observer might yet more readily find similarity and a classical-music expert considerably less similarity. The choice of audience can thus be outcome determinative.

   Why do IP regimes choose one audience group as a reference point over another? And why do they differ?

1. Consumer

   One possible audience choice for assessing IP infringement--as seen in varied ways in trademark, copyright, and design patent law--is the consumer of the product or service associated with the particular IP right. Some other areas of law are directly concerned with how consumers behave. Antitrust law, for instance, cares about real-world markets. Conduct by a monopolist is illegal if it helps the company acquire or maintain a monopoly. (141) The question is not whether a person would consider the conduct to be bad or outside the range of acceptable corporate conduct. Rather, the question is whether the conduct will in fact have negative effects in the marketplace. (142) The actual market is the audience against which we measure an antitrust violation. (143)

   Choosing a consumer to measure whether an IP right has been infringed makes sense when IP law is concerned with protecting rights holders from substitutions in the marketplace. (144) Consumers will find that particular works are substitutes if they would tend to buy either one interchangeably. (145) Oftentimes, consumers will identify two works as substitutes if they function in much the same way. (146) For example, consumers will likely find two pharmaceuticals similar enough if they achieve the same effect with similar side effects. They will find two songs similar enough if the songs sound alike and are similarly enjoyable. They may find two tablet designs similar enough if they look the same. Consumers will find two soft-drink marks similar if the marks sufficiently resemble each other such that the consumers might purchase the respective products thinking that they both come from the same source. Notably, market substitution may or may not depend on the technical similarity that an expert would measure between the two works. Two drugs that both treat heart disease might be chemically similar, but drugs that are chemically different might still serve the same function and thereby work as market substitutes. By contrast, two sodas may be virtually identical chemically and still not serve as market substitutes if customers are conditioned to choose one over the other based on their prior experiences with the brand. (147)

   Because consumers as a class tend to focus on whether the uses for two products are interchangeable, the consumer is likely to be the audience that most directly measures whether the plaintiffs work and the defendant's work at issue in IP litigation substitute for one another in the marketplace. When the consumer is the audience for IP infringement, then, market substitutes are more likely to be deemed infringing and thus third parties will be discouraged from producing substitutes without permission from the rights holder. For this reason, the consumer is an ideal audience choice for assessing IP infringement when that form of IP law seeks to discourage third parties from creating or distributing market substitutes of works protected by an IP right.

   Interestingly enough, this means that when the consumer serves as the audience in IP infringement and substitution is the test for similarity, consumers ultimately enjoy the fewest market choices for a particular type of work. That is, because market substitutes are more likely to be considered infringements, in theory only one protected work per market is allowed. If a consumer sees plastic pipes as interchangeable with metal pipes, an IP right that prevents market substitution would allow the owner of one type of pipe to prevent sale of the other. Choosing the consumer as audience, then, is not highly protective of consumers themselves.

   The consumer is not an ideal audience choice in IP infringement when the IP law at issue is only intended to provide protection against copying the protected thing and not against competition from another thing. If we think society benefits from having multiple drugs to treat pain that work in different ways, for example, the consumer audience is not well suited to reach that result. Even if there are already pharmaceutical formulations for pain relief, society as a whole might benefit greatly from a new formulation that accomplishes similar results because it might be helpful to a subpopulation that does not respond to the preexisting formulations. (148) Even if this is not the case, the new formulation might generate further scientific research and yield helpful results in other ways in the future. (149) Or the formulation may work by a completely different mechanism...