©2017. Published in Landslide, Vol. 9, No. 5, May/June 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Perspective
Protecting Industrial Designs: Is the U.S. Behind the World?
Donna P. Suchy
The protection of industrial designs has long been a popular subject for intellectual property (IP) experts, legislators, actual designers, and those that employ them.1 Some argue that protecting industrial designs will foster more creativity and innovation.2 Others believe that extending or expanding protection will harm our economy, causing consumer goods prices to rise.3 Not surprisingly, with such diverse views, U.S. lawmakers have been reluctant to change the current laws as they apply to protecting industrial designs.4 As a result, many feel that the United States does not adequately protect industrial designs, especially when compared to protections offered by other nations.5
What Is an Industrial Design?
An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines, or color.
From technical and medical instruments, architectural structures, vehicles, housewares, and electrical appliances to textile designs, watches and jewelry, and leisure goods—industrial designs are applied to a wide variety of products of industry and handicraft. Industrial designs enhance a product’s attractiveness and appeal, adding to its commercial value and increasing its marketability.
What Options Do American Innovators Have?
- Copyright if there is an exact copy;
- Trademark and trade dress to protect source; or
- Design patents.
So How Does the Rest of the World Protect Industrial Designs?
Other countries have a registration process and/or modes for protecting utility design patents.6 Industrial design protection primarily focuses on protecting an aesthetic aspect, i.e., protecting the “look” of an article, and does not protect any technical features of the article to which it is applied. Many of the world’s iconic products are good examples of items whose “look” is protected: Apple Inc.’s iPhone, chairs by Charles and Ray Eames, and Volkswagen’s Beetle.
Protection of industrial designs helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large by promoting fair competition and honest trade practices. Further, protecting industrial designs helps economic development by encouraging creativity in a country’s industrial and manufacturing sectors while contributing to commercial expansion and increasing export of national products. To qualify for protection under most national laws, an industrial design must be new and original. Novelty or originality is determined by comparing the applied-for design to products or protected designs already in existence. The Hague System for the International Registration of Industrial Designs, administered by the World Intellectual Property Organization (WIPO), provides a mechanism for registering designs in countries and intergovernmental organizations that are members of the Hague Agreement, currently numbering 60 contracting parties. The system allows owners of industrial designs to obtain protection in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.
The Hague System simplifies the management of an industrial design registration, because it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO. While WIPO provides a single filing system among 60 contracting parties, there are still many differences in national filing regulations among WIPO’s 186-nation membership, and a proposed new treaty aims to harmonize many of them by 2018. International filing regulations for patents and trademarks are already covered by similar treaties, overseen by WIPO.
What Can We Do to Keep Up with the World?
Over the years, the United States has taken a lead in enacting policies and laws that protect the fruits of entrepreneurial innovators. A few years ago, the United States adopted the America Invents Act (AIA), which redefines and protects innovative entrepreneurial rights, provides ways to obtain low-cost applications, and provides quicker access and results with respect to courts and administrative agencies, like the United States Patent and Trademark Office (USPTO).
Unfortunately, we are letting those very same innovators down in the current, fast-paced, visual-orientated world. Other countries are adapting to current needs of entrepreneurial innovators by putting in place new ways to protect industrial designs and other innovations that have a very quick adoption cycle. In contrast, we are trying to make old rules fit a new-world paradigm shift. Our current strategy to address this new-world paradigm shift reminds me of an old Fortran-based program I was in charge of adapting, which became increasingly awkward after 20 years of “fixes.” Ironically, our “fixes” actually slowed execution and adaptation, often creating new challenges and requirements.
Economic data shows, and the results of our recent election confirm, that many Americans agree that the American manufacturing industry is declining at an alarming rate. According to a report issued by the U.S.-China Economic and Security Review Commission, the United States was losing between 70,000 and 100,000 jobs to Mexico, China, India, and other Asian countries even as far back as 2005, and those jobs included the production of products like bicycles, engines, generators, and computer components.7 Many blame these losses on the lower wages and cheaper facilities available in other countries, but what are we doing to protect the designs used to create these outsourced jobs?
I question whether industrial designs are adequately protected in the United States by our current version of design patents, copyrights, and trade dress. To maintain our status as a leader in protecting entrepreneurial innovators, to legitimize the applied arts as a real driver of our economy in this new era, and to guarantee protection at least equal to that available around the world, we need to protect innovative designs. I believe that strong design protection with appropriate requirements and a limited period of protection will increase innovation and creativity by incentivizing innovative designers to design great new products and investors to fund these endeavors to the betterment of our economy and society as a whole.
Endnotes
1. Richard G. Frenkel, Intellectual Property in the Balance: Proposals for Improving Industrial Design Protection in the Post-TRIPs Era, 32 Loy. L.A. L. Rev. 531, 532–33 (1999); J.H. Reichman, Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976, 1983 Duke L.J. 1143, 1153 (1981).
2. Frenkel, supra note 1, at 532–33.
3. Mark P. McKenna & Katherine J. Strandburg, Progress and Competition in Design, 17 Stan. Tech. L. Rev. 1, 3–4 (2013).
4. Steve W. Ackerman, Protection of the Design of Useful Articles: Current Inadequacies and Proposed Solutions, 11 Hofstra L. Rev. 1043, 1051 (1983).
5. Frenkel, supra note 1, at 533–34.
6. Ackerman, supra note 4, at 1051.
7. Kate Bronfenbrenner & Stephanie Luce, The Changing Nature of Corporate Global Restructuring: The Impact of Production Shifts on Jobs in the US, China, and Around the Globe 3, 76 (2004), available at https://www.uscc.gov/sites/default/files/Research/changing%20nature%20of%20corporate%20global%20restructuring.pdf, cited in Regan E. Keebaugh, Intellectual Property and the Protection of Industrial Design: Are Sui Generis Protection Measures the Answer to Vocal Opponents and a Reluctant Congress?, 13 J. Intell. Prop. L. 255, 256–57 (2005).