Fordham Intellectual Property, Media and Entertainment Law Fordham Intellectual Property, Media and Entertainment Law
Journal Journal
Volume 20
Volume XX
Number 3
Volume XX Book 3
Article 5
2010
The Role of the Non-Functionality Requirement in Design Law The Role of the Non-Functionality Requirement in Design Law
Orit Fischman Afori
College of Management Academic Studies Law School, Israel
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Recommended Citation Recommended Citation
Orit Fischman Afori,
The Role of the Non-Functionality Requirement in Design Law
, 20 Fordham Intell.
Prop. Media & Ent. L.J. 847 (2010).
Available at: https://ir.lawnet.fordham.edu/iplj/vol20/iss3/5
This Article is brought to you for free and open access by FLASH: The Fordham Law Archive of Scholarship and
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847
The Role of the Non-Functionality
Requirement in Design Law
Orit Fischman Afori
INTRODUCTION ............................................................................. 848
I. THE NON-FUNCTIONALITY REQUIREMENT ............................ 848
A. The Non-Functionality Requirement in U.S. Law ....... 849
1. Copyright Law ..................................................... 850
2. Patent Law ........................................................... 853
3. Trademark Law .................................................... 855
B. The Non-Functionality Requirement in English Law .. 858
II. INQUIRIES INTO THE NON-FUNCTIONALITY REQUIREMENT ... 859
A. What Is a Functional Design? ..................................... 860
B. Separating Function from Aesthetics .......................... 862
C. Are Aesthetics Also a Function? ................................. 864
III. A PROPOSED SOLUTION FOR EASING THE PROBLEM
STEMMING FROM THE NON-FUNCTIONALITY
REQUIREMENT ....................................................................... 869
CONCLUSION ................................................................................. 873
A PDF version of this Article is available online at http://iplj.net/blog/archives/
volumexx/book3. Visit http://iplj.net/blog/archives for access to the IPLJ archive.
Associate Professor, College of Management Academic Studies Law School, Israel.
Copyright © 2010 Orit Fischman Afori.
The author wishes to thank the participants of
the Fordham Intellectual Property, Media & Entertainment Law Journal’s 20th
Anniversary Symposium, held November 20, 2009, at the Fordham University School of
Law in New York, for their helpful comments. Special thanks to Wendy Gordon, Mark
Janis, Jonathan Moskin, Susan Scafidi, and the Fordham Intellectual Property, Media &
Entertainment Law Journal’s editorial staff members for their comments.
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848 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. 20:847
INTRODUCTION
Industrial design law protects the appearance of useful articles.
A key requirement for eligibility is that functional features of the
design cannot receive protection.
1
This requirement pursues an
important public interest objective, “namely that a shape whose
essential characteristics perform a technical function and [are]
chosen to fulfill that function may be freely used by all.”
2
The
requirement is fundamental in design law, and it exists in many
legal jurisdictions, although it manifests itself differently in each
system. Regardless of the form the non-functionality requirement
takes, applying it poses severe difficulties, because it is difficult
(and sometimes impossible) to draw a clear line between
functional and non-functional features. Consequently, this area of
law tends to be complex, which in turn creates greater uncertainty.
The purpose of this Article, therefore, is to examine the drawbacks
of the non-functionality requirement and to propose a mechanism
for applying the requirement that may make it more workable.
I. THE NON-FUNCTIONALITY REQUIREMENT
One of the requirements for receiving design protection is that
such protection will not cover functional elements of the article.
3
In this Part, I will present a short overview of the requirement in
different legal systems.
Functional elements, in a strict sense, are those features
included in the article or device which enable it to perform its
1
See Richard G. Frenkel, Intellectual Property in the Balance: Proposals for
Improving Industrial Design Protection in the Post-TRIPS Era, 32 L
OY. L.A. L. REV.
531, 534 (1999) (“Because copyright law protects only the aesthetic and creative
expression of authors, the protected features of design—the parts that would be created
by an artist or author—must be physically or conceptually separable from the product’s
features.”).
2
See Case C-299/99, Koninklijke Philips Elecs. NV v. Remington Consumer Prods.
Ltd., 2002 E.C.R. I-05475, ¶ 80.
3
It should be noted that under the TRIPS agreement, this requirement is voluntary.
See Agreement on Trade-Related Aspects of Intellectual Property Rights art. 25(1), Apr.
15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C
[hereinafter TRIPS Agreement] (“Members may provide that such protection shall not
extend to designs dictated essentially by technical or functional considerations.”).
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intended function.
4
The basic justification for the non-
functionality requirement is that the external appearance of the
article—and not its functional aspect—is protected in design law.
5
The function of the article or device is covered by patent law,
6
which establishes extensive thresholds in order to balance, on the
one hand, creating incentives for the development of new
inventions
7
against, on the other hand, securing maximum benefits
for the public.
8
The aim of industrial design law, however, is not
to encourage the development of new technologies, but rather to
encourage the development of their external appearance.
9
Accordingly, the threshold for eligibility refers only to appearance,
without consideration of the functional elements, so as not to
undermine the delicate balance established in patent law.
10
Therefore, technical features which are not protected by patent law
are open to all, and thus the public’s interest is promoted.
11
This is
a fundamental principle of design law, and it is maintained
regardless of the manner in which designs are protected.
A. The Non-Functionality Requirement in U.S. Law
In the United States, there are currently three major legal routes
for protecting industrial designs: copyright law,
12
patent law
13
and
trademark law,
14
all of which normally provide protection only to
4
See infra Part II for a discussion of what exactly functional elements are.
5
Orit Fischman Afori, Reconceptualizing Property in Designs, 25 CARDOZO ARTS &
ENT. L.J. 1105, 1107 (2008).
6
See 35 U.S.C. § 102 (2006).
7
See id.
8
See Bonito Boats, Inc. v. Thundercraft Boats, Inc., 489 U.S. 141, 148–49 (1989)
(“Sections 102(a) and (b) operate in tandem to exclude from consideration for patent
protection knowledge that is already available to the public. They express a
congressional determination that the creation of a monopoly in such information would
not only serve no socially useful purpose, but would in fact injure the public by removing
existing knowledge from public use.”).
9
See id. at 148 (“To qualify for protection, a design must present an aesthetically
pleasing appearance that is not dictated by function alone, and must satisfy the other
criteria of patentability.”).
10
See id.
11
See supra note 8 and accompanying text.
12
See generally 17 U.S.C. § 102(a)(5) (2006).
13
See generally 35 U.S.C. §§ 102–03, 171.
14
See generally 15 U.S.C. §§ 1114, 1125.
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non-functional features. Since there are inherent complexities in
applying the non-functional requirement, all of these intellectual
property regimes must address this issue.
1. Copyright Law
Of the three legal routes for protecting industrial designs,
copyright law is the most complex.
15
Currently, the Copyright Act
provides protection for designs by including “applied art” in the
subject matter of the Act and by including the requirement that the
protected features are non-functional:
“Pictorial, graphic, and sculptural works” include
two-dimensional and three-dimensional works of
fine, graphic, and applied art, photographs, prints
and art reproductions, maps, globes, charts,
diagrams, models, and technical drawings,
including architectural plans. Such works shall
include works of artistic craftsmanship insofar as
their form but not their mechanical or utilitarian
aspects are concerned; the design of a useful article,
as defined in this section, shall be considered a
pictorial, graphic, or sculptural work only if, and
only to the extent that, such design incorporates
pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of
existing independently of, the utilitarian aspects of
the article.
16
This route for protecting applied art through copyright law
reflects codification of the Supreme Court’s 1954 landmark
decision in Mazer v. Stein,
17
which granted copyright protection to
statues of dancing figures despite their industrial use as lamp
bases.
18
Soon after Mazer, the U.S. Copyright Office adopted new
regulations that introduced the concept of “separability” into
15
See Fischman Afori, supra note 5, at 1018–22 (summarizing the copyright path for
protecting industrial design in the United States).
16
17 U.S.C. § 101.
17
347 U.S. 201 (1954).
18
See id. at 218.
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American copyright law.
19
Under these regulations, the standard
for copyrighting applied art was whether “the shape of a utilitarian
article incorporates features such as artistic sculpture, carving, or
pictorial representation, which can be identified separately and are
capable of existing independently as a work of art.”
20
Thus, the
non-functionality doctrine has, in American copyright law, turned
into a test of “separability,”
21
which not only prohibits protection
of functional features, but also requires that those non-functional
protected features be separated from the functional aspects of the
object.
22
The problem that this creates is obvious: non-functional
features that cannot be separated from the functional ones are
deprived of protection.
23
This outcome cried out for a judicial
resolution of the problem through a creative interpretation of the
“separability” test, since many worthy designs combine functional
and non-functional components in a non-separable way. Courts
have therefore developed two tests for measuring the separation
between “artistic” and “utilitarian” features: a physical test, and a
conceptual test.
24
The physical test simply asks whether the
ornamental element can be separated from the functional device or
component.
25
For example, registration was precluded for lighting
19
See 37 C.F.R. § 202.1 (2009).
20
Fischman Afori, supra note 5, at 1119 (citing 37 C.F.R. § 202.10(c)).
21
See, e.g., 17 U.S.C. § 101 (“[T]he design of a useful article, as defined in this
section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the
extent that, such design incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing independently of, the utilitarian
aspects of the article.” (emphasis added)); Pivot Point Int’l, Inc. v. Charlene Prods., Inc.,
372 F.3d 913, 922–32 (7th Cir. 2004); Brandir Int’l, Inc. v. Cascade Pac. Lumber Co.,
834 F.2d 1142, 1143–49 (2d Cir. 1987); Carol Barnhart Inc. v. Econ. Cover Corp., 773
F.2d 411, 414–19 (2d Cir. 1985); Esquire, Inc. v. Ringer, 591 F.2d 796, 803–05 (D.C.
Cir. 1978).
22
Fischman Afori, supra note 5, at 1121.
23
Id.
24
For the physical test, see Esquire, 591 F.2d at 803–05. For the conceptual test, see
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980).
25
See Robert C. Denicola, Applied Art & Industrial Design: A Suggested Approach to
Copyright in Useful Articles, 67
MINN. L. REV. 707, 730–31 (1983). Denicola criticizes
the physical test derived from Mazer v. Stein and relies on legislative history to argue that
Congress conceived of a more abstract conceptual test in § 101:
Because Mazer provided the focal point for the congressional
analysis, it is tempting to approach the separability test in essentially
physical terms. In Mazer, the dancing figures at issue could be
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fixtures since all of the design elements were directly related to the
useful functions of the article and the fixtures did not contain
elements, either alone or in combination, which were capable of
existing independently as a copyrightable pictorial, graphic, or
sculptural work apart from the utilitarian aspect.
26
By contrast, the conceptual test asks whether there is a
potential aesthetic purpose for the design as a whole, which is
different from the functional one.
27
One such example is a belt
buckle that is worn for ornamentation other than on the waist.
28
In
the case in question, the court stated that
the primary ornamental aspect of the . . . buckles is
conceptually separable from their subsidiary
utilitarian function. This conclusion is not at
variance with the expressed congressional intent to
distinguish copyrightable applied art and
uncopyrightable industrial design. . . . [T]hese
buckles may be considered jewelry, the form of
which is subject to copyright protection.
29
“While the physical separation test reflects a narrow, literal
interpretation of the statute, the conceptual separation test is
physically separated from the utilitarian objects into which they had
been incorporated by the twist of a socket and a sharp tug on an
electric cord. Reliance on this simplistic notion of physical
separation, however, is misplaced. The legislative history
unequivocally indicates that pictorial works adorning useful articles
are entitled to copyright, yet the pattern dyed into a bolt of cloth or
painted on a china cup cannot be physically detached from the object
itself. In addition, some features of utilitarian objects that can be
physically separated are clearly not intended to fall within the scope
of copyright. An ordinary television cabinet may be physically
removed from the set itself, yet protection will not be forthcoming.
Physical separability is a poor touchstone, inaccurate as a descriptive
concept, and devoid of normative implications. The legislative
history acknowledges the necessity of a more esoteric approach,
referring at one point to “some element that, physically or
conceptually, can be identified as separable.”
Id. at 730 (emphasis in original) (quoting H.R.
REP. NO. 1476, at 55 (1976)).
26
See, e.g., Esquire, 591 F.2d at 798.
27
See Kieselstein-Cord, 623 F.2d at 993.
28
See id.
29
Id. (citations omitted).
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broader” and allows for extensive protection of industrial designs
through copyright.
30
As a result, there has been considerable
criticism of the “separability” criterion as unclear, impossible to
carry out, arbitrary, and subject to manipulation.
31
A recent article
summarizing the ongoing debate over the conceptual separability
test concluded that the “separability [test] has caused conflict
among circuits even twenty-five years after Congress codified the
doctrine. This suggests that the currently available tests are both
confusing and unable to effectively determine the copyrightability
of useful articles.”
32
2. Patent Law
Patent law also provides for the protection of designs through a
specially-tailored “design patent right.”
33
This provision is
intended to fill the gap between copyright and patent protection
and encourage the development of decorative arts.
34
To this end,
an additional requirement of an ornamental design
35
was added to
the standard patent requirements of novelty
36
and non-
obviousness,
37
provided that the “ornamentality” was not dictated
by functional considerations.
38
At the same time, the utility
30
Fischman Afori, supra note 5, at 1121.
31
See PAUL GOLDSTEIN, COPYRIGHT, PRINCIPLES, LAW AND PRACTICE § 2.5.3(b)–(c)
(Little, Brown & Co. 1989); M
ELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON
COPYRIGHT § 2.08(B)(3) (2005); Eric Setliff, Copyright and Industrial Design: An
“Alternative Design” Alternative, 30 COLUM. J.L. & ARTS 49, 63 (2006); see also J.H.
Reichman, Design Protection After the Copyright Act of 1976: A Comparative View of
the Emerging Interim Models, 31 J.
COPYRIGHT SOC’Y 267, 350–65 (1983) (explaining
that the separability framework was rendered ineffective by the absence of a special
design law).
32
See Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding
Conceptual Separability in American Copyright Law, 69 OHIO ST. L.J. 109, 111 (2008).
33
35 U.S.C. § 171 (2006).
34
ROBERT P. MERGES, PETER S. MENELL & MARK A. LEMLEY, INTELLECTUAL
PROPERTY IN THE NEW TECHNOLOGICAL AGE 357 (Supp. 2006) (internal citation omitted);
see also D
ONALD S. CHISUM, CHISUM ON PATENTS § 1:1.04(1) (2005).
35
35 U.S.C. § 171 (stating that “[w]hoever invents any new, original and ornamental
design for an article of manufacture may obtain a patent therefore, subject to the
conditions and requirements of this title”).
36
Id. § 102.
37
Id. § 103(a).
38
CHISUM, supra note 34, § 1.04[2][c]; see also 35 U.S.C. § 171.
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requirement, which is otherwise compulsory for patents,
39
was
dropped.
40
Thus, unlike “regular” inventions, a patent-covering
design consists of aesthetic features, such as “surface
ornamentation,”
41
although most other patentability requirements
are maintained.
42
The result is that design patents protect only the
ornamental aspects and not the functional aspects of the design,
43
leading to the same problem that we saw in copyright law: how are
ornamental aspects distinguishable from the functional aspects in a
product whose design incorporates both? Consequently, when
aesthetics and function merge, patent design protection does not
offer full protection for many designs.
44
For example, a design
patent was registered for the ornamental design of a golf glove,
45
a
chair,
46
and a jewelry ring.
47
A design patent was also issued for
the original Coca-Cola bottle.
48
The question in all such registered
design patents is how the ornamental feature can be separated from
the functional features, and how such separation will affect the
protection given to the design patent as a whole.
39
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements of this
title.”).
40
See id. § 171; CHISUM, supra note 34, § 1.04[2][c].
41
MERGES ET AL., supra note 34, at 357.
42
35 U.S.C. § 171; CHISUM, supra note 34, § 1.04[2][c].
43
See L.A. Gear, Inc. v. Thorn McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993).
44
See Anne Theodore Briggs, Hung Out to Dry: Clothing Design Protection Pitfalls in
United States Law, 24 HASTINGS COMM. & ENT. L.J. 169, 169–71 (2002) (arguing that
clothing design is often viewed as a useful art and thus denied design protection); Ralph
S. Brown, Design Protection: An Overview, 34 UCLA
L. REV. 1341, 1356–57 (1987)
(stating that design patents are often held invalid based partly on the subjective nature of
the validity inquiry); Frenkel, supra note 1, at 534, 555–58 (describing various problems
with design patents, including the hurdles encountered when applying a conceptual
separability test); 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, 260–63 (2005) (arguing that the
non-obviousness and non-functionality requirements of design patents prevent protection
from being given to designs).
45
U.S. Patent No. D308,436 (filed Sept. 22, 1986) (issued June 12, 1990).
46
U.S. Patent No. D371,251 (filed July 28, 1995) (issued July 2, 1996).
47
U.S. Patent No. D302,954 (filed Sept. 21, 1987) (issued Aug. 22, 1989).
48
U.S. Patent No. D48,160 (issued Nov. 16, 1915).
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3. Trademark Law
The third route for protecting designs in the U.S. is through
trademark law, or a trade dress claim. Trade dress is “the
appearance of a product when that appearance is used to identify
the producer” or the origin of goods.
49
The trade dress may
include the product’s exterior design.
50
The use of this third route
for design protection has become increasingly popular and
troublesome because unlike the other two routes of protection, it
potentially allows for a limitless period of protection.
51
Courts
approve trademark protection for a product’s design if it acquires
sufficient distinctiveness (secondary meaning) in order to function
as a trademark.
52
In other words, the design must function as a
means to identify the origin of goods.
53
Another important requirement for protection of a trademark in
general is that the mark does not contain functional elements.
54
The non-functionality requirement was first developed in common
law,
55
and was finally codified as part of federal trademark law in
49
See Publ’ns Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998).
50
See Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1541 (11th Cir. 1986) (explaining
that the trade dress at issue is the packaging of ice cream bars).
51
See Graeme B. Dinwoodie, Reconceptualizing the Inherent Distinctiveness of
Product Design Trade Dress, 75 N.C. L. REV. 471, 478–79 (1997); Graeme B.
Dinwoodie, The Death of Ontology: A Teleological Approach to Trademark Law, 84
I
OWA L. REV. 611, 624 (1999) [hereinafter Dinwoodie, The Death Of Ontology]; Judith
Beth Prowda, The Trouble with Trade Dress Protection of Product Design, 61 ALB. L.
REV. 1309, 1324–25 (1998) (explaining several problems that arise when using trade
dress to protect products designs).
52
See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212 (2000) (“The
attribution of inherent distinctiveness to certain categories of word marks and product
packaging derives from the fact that the very purpose of attaching a particular word to a
product, or encasing it in a distinctive packaging, is most often to identify the source of
the product.”).
53
See id.; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); J. THOMAS
MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7.25 (4th ed.
2006).
54
See 15 U.S.C. § 1125(a)(3) (2006) (“In a civil action for trade dress infringement
under this chapter for trade dress not registered on the principal register, the person who
asserts trade dress protection has the burden of proving that the matter sought to be
protected is not functional.”); see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,
164 (1995).
55
JEROME GILSON, GILSON ON TRADEMARKS § 2A.04[1] (2009).
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1998.
56
The codification of the non-functionality requirement was
written broadly, so as to encompass the range of definitions that
had been provided by courts.
57
The analysis of functionality by a
court requires it to determine whether the word, term, symbol, or
device is “essential to the use or purpose of the article or if it
affects the cost or quality of the article.”
58
This analysis can cause
considerable complications when it comes to protecting design as a
trademark because of the difficulty in distinguishing between the
function of a product’s design as an aspect that is intended to
attract customers to the product itself, and its function as an
indication of the product’s source of origin.
59
In fact, only
designed trademarks which could be separated from the designed
device could reach this test of both not being “essential to the use
or purpose of the article” and not affecting “the cost or quality of
the article.”
60
As a result, the unintended consequence of this
analysis is that if the purpose of a design is achieved, and the
design is unique and enjoys success in the market and therefore
acquires the ability to function as an indication of source of origin,
then it would be deprived of protection because the design had
affected the cost of the product. However, if the design fails, in the
sense that it has no market success, then though it may be
acknowledged as a trademark from the functionality test’s
perspective, it will not develop the ability to function as an
56
See Trademark Law Treaty Implementation Act, Pub. L. No. 105-330, tit. II, §
201(a)(4), 112 Stat. 3064, 3070 (1998) (codified as amended at 15 U.S.C. § 1064(3)
(specifying the requirements for trademark protections as including non-functionality)).
57
See GILSON, supra note 55, § 2A.04[1] (discussing Congress’s attempt to unify the
various functionality tests that had existed within the circuit courts).
58
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 24 (2001).
59
See Dinwoodie, The Death of Ontology, supra note 51, at 624.
60
See id. at 639. For example, a design of a lemon press may present a considerable
development of the aesthetic appearance of lemon presses in general, and hence be sold
for a higher price. At the same time, it could function as an indication of its source of
origin due to its substantial success in the market. Under the functionality requirement,
which includes a parameter of effect on the cost or quality of the article, the design of
such a press will not be protected as a trademark, since there is no separable symbol apart
from the product’s design. For an example of this scenario, see Alessi, Juicy-Salif,
Citrus-Squeezer, http://www.alessi.com/en/2/110/kitchen-accessories/psjs-juicy-salif-
citrus-squeezer (last visited Mar. 18, 2010).
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indication of source of origin and therefore will not function as a
trademark.
61
The clash between the non-functionality requirement and the
function of the product’s appearance in enhancing the market value
of the product was at the heart of trade dress cases decided by the
Supreme Court. The Supreme Court held that there are two tests
for determining functionality as it applies in trade dress cases: the
traditional test,
62
and the competitive necessity test.
63
In TrafFix
Devices, Inc. v. Marketing Displays, Inc.,
64
the Court referred to
the traditional test (utilitarian functionality), according to which a
proposed mark is functional “if it is essential to the use or purpose
of the article or if it affects the cost or quality of the article.”
65
In
Qualitex Co. v. Jacobson Products Co.,
66
the Court referred to the
competitive necessity test (aesthetic functionality), according to
which a product design is functional “because of its aesthetic value
only if it confers a significant benefit that cannot practically be
duplicated by the use of alternative designs.”
67
This second test
will be further discussed below.
61
See Pagliero v. Wallace China Co., 198 F.2d 339, 343 (9th Cir. 1952) (“If the
particular feature is an important ingredient in the commercial success of the product, the
interest in free competition permits its imitation in the absence of a patent or copyright.
On the other hand, where the feature or, more aptly, design, is a mere arbitrary
embellishment, a form of dress for the goods primarily adopted for purposes of
identification and individuality and, hence, unrelated to basic consumer demands in
connection with the product, imitation may be forbidden where the requisite showing of
secondary meaning is made. Under such circumstances, since effective competition may
be undertaken without imitation, the law grants protection.” (footnotes omitted)); see also
R
ESTATEMENT (FIRST) OF TORTS § 742 cmt. a (1938) (indicating that “[w]hen goods are
bought largely for their aesthetic value, their features may be functional because they
definitely contribute to that value and thus aid the performance of an object for which the
goods are intended”).
62
See infra notes 64–65 and accompanying text.
63
See infra notes 66–67 and accompanying text.
64
532 U.S. 23 (2001).
65
Id. at 24 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)).
66
514 U.S. 159 (1995).
67
Id. at 170 (quoting RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 17 cmt. c
(1993)).
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B. The Non-Functionality Requirement in English Law
The situation in England is even more complicated than in the
United States, as industrial designs may be protected by any one of
five methods: three routes under domestic legislation, covering
registered designs,
68
unregistered designs,
69
and copyright;
70
and
two E.U. protections, covering registered and unregistered
designs.
71
All these routes share the same basic rule that no
protection is granted to functional features. For example, article
7(1) of the Design Directive provides that “[a] design right shall
not subsist in features of appearance of a product which are solely
dictated by its technical function.”
72
Similar provisions forbidding
protection of functional elements have been introduced into
national legislation.
73
With regard to the protection of designs through trademarks,
the Trade Mark Directive also specifies that there can be no
protection of “the shape of goods which is necessary to obtain a
technical result.”
74
This rule has been applied by courts through
the same legal analysis that is employed with respect to industrial
designs, namely by asking whether “the shape of the product [is]
attributable only to the technical result” and whether there are
other shapes which can obtain the same technical result.
75
However, the European Court of Justice (“ECJ”) in Koninklijke
Philips Electronics v. Remington Consumer Products Ltd.
76
held
that the ability to achieve the same technical result by other shapes
does not necessarily lead to the conclusion that the shape is not
68
See Registered Designs Act, 1949, 12, 13 & 14 Geo. 6, c. 88, § 1 (Eng.).
69
See Copyright, Designs, and Patents Act, 1988, c. 48, § 226 (Eng.).
70
See id. § 1.
71
See Council Directive 98/71, art. 7(1), 1998 O.J. (L 289) 31 (EC).
72
Id.; see also id. at art. 7(2) (“A design right shall not subsist in features of
appearance of a product which must necessarily be reproduced in their exact form and
dimensions in order to permit the product in which the design is incorporated or to which
it is applied to be mechanically connected to or placed in, around or against another
product so that either product may perform its function.”).
73
See, e.g., Registered Designs Act, 1949, 12, 13 & 14 Geo. 6, c. 88, § 1C(1) (Eng.).
74
Council Directive 89/104, art. 3(1)(e), 1989 O.J. (L 40) 3 (EC).
75
Case C-299/99, Koninklijke Philips Elecs. NV v. Remington Consumer Prods. Ltd.,
2002 E.C.R. I-05475, ¶¶ 74–83.
76
Case C-299/99, 2002 E.C.R. I-05475.
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functional, and therefore a design’s registration may still be
rejected.
77
II. INQUIRIES INTO THE NON-FUNCTIONALITY REQUIREMENT
At first blush, the review of the current legal situation both in
the U.S. and in England leads to the conclusion that the non-
functionality requirement is fundamental for the protection of
designs. However, a more probing inquiry into the requirement
reveals some complications which are hard to overcome. In the
following section, I will review some of these complications, all of
which stem from the fact that the term “functionality” is both
broad and vague.
The first complication stems from the fact that the term
“functionality” does not have a clear and unequivocal definition: if
functional features are to be deprived of protection, then the law
should define (or at least explain) what “functionality” means with
respect to design features.
78
The second complication stems from the nature of industrial
design as typically integrating function and aesthetics into one
entity, with the result that either protection over functional features
will be permitted or protection over aesthetical features will be
prohibited. Both outcomes are contrary to the basic principle of
industrial design law, which is to protect the aesthetical external
appearance of articles without protecting their functional
features.
79
77
Id. ¶ 84 (“In the light of those considerations, the answer to the fourth question must
be that Article 3(1)(e), second indent, of the Directive must be interpreted to mean that a
sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it
is established that the essential functional features of that shape are attributable only to
the technical result. Moreover, the ground for refusal or invalidity of registration
imposed by that provision cannot be overcome by establishing that there are other shapes
which allow the same technical result to be obtained.”); see also Amp, Inc. v. Utilux Pty
Ltd, [1971] F.S.R. 572, 576 (H.L.) (U.K.).
78
The Qualitex case is an example of the unclear language used by courts in defining
the term “functionality.” See generally Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159
(1995).
79
See supra note 1 and accompanying text. An illustrative example may be the design
of the lemon press described supra note 60, or other different kitchen appliances, such as
coffee makers or food processors.
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The third complication is the unclear weight of aesthetics in the
legal analysis. If aesthetics are a function, then it is clear that the
non-functionality requirement is tautological in the context of
industrial design law because the whole purpose of this law is to
provide protection for a product’s aesthetic, as opposed to its
technical features. Therefore, in such a case, the definition of the
term “functional” needs to be narrowed to refer only to technical-
physical functions, rather than including all features that serve a
purpose.
A. What Is a Functional Design?
Because “functionality” is a vague term that lends itself to a
number of definitions, the basic principle of rejecting protection
for functional features is itself unclear. The question is, therefore,
how non-functional design should be defined. As explained above,
the English law follows the Directive’s language, which states the
test as whether the design is “solely dictated by its technical
function.”
80
This definition indicates that functionality should be
examined from a technical point of view. However, this test for
assessing non-functionality of designs opens a whole range of legal
and theoretical questions relating to the “solely dictated” aspect of
the test. When should it be concluded that a design is “solely
dictated” by technical requirements? If a wholly functional article
can be formed in a variety of shapes, is its design solely dictated by
its function?
81
After all, since there are several effective options
for shaping the article, then the choice that is ultimately made
could be based on non-technical considerations, whether aesthetic
(which design would be more appealing to the eye) or economic
(which design would be cheaper). The House of Lords discussed
this issue in Amp, Inc. v. Utilux Pty Ltd
82
and concluded that
“solely dictated” by technical-functional features means that the
designer decided on the shape of the article solely on the basis of
whether the article would function in that manner, without
80
Council Directive 98/71, art. 7(1), 1998 O.J. (L 289) 31 (EC).
81
MARTIN HOWE & A.D. RUSSELL-CLARKE, RUSSELL-CLARKE ON INDUSTRIAL DESIGNS
38–40 (Sweet & Maxwell 2005) (“Where a shape is adopted by a designer upon the sole
requirement of functional ends, i.e. to make the article work and not to appeal to the eye,
then the provision excludes it from statutory protection.”).
82
[1971] F.S.R. 572 (H.L.) (U.K.).
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considering its aesthetic appeal.
83
This did not mean, however,
that there were no other pure technical-functional possible designs
for the same article.
84
In other words, according to the House of
Lords, the question of “solely dictated” by technical-function
features is a subjective test which examines whether the designer
had in mind only technical considerations in contrast to aesthetical
considerations.
85
This test echoes the subjective test in King Features Syndicate,
Inc. v. O & M Kleeman, Ltd.,
86
which held that, in establishing
whether a design of a doll should be regarded as a copyrighted
work or an industrial design, the intent of the designer was
determinative.
87
But the subjective intent of the creator or designer
is a weak test, since it can be easily manipulated.
88
Nor does it
serve any of the goals underlying intellectual property law.
89
Whether a design is “solely dictated” by functional features should
depend on an objective test that can be judged solely on the basis
of the design itself. The fact that many designs are commissioned,
whether in the context of employment relations or not,
90
further
complicates matters if the test for functionality is the subjective
intent of the designer; it raises the additional question of whether it
is the commissioner’s or the designer’s intent that is relevant. Lord
Reid himself admitted in Amp, Inc. that the ambiguity and
controversy surrounding the eligibility of designs “has centered
around the word ‘dictated’ which is a metaphorical word out of a
place in a statutory definition.”
91
It should be mentioned that in an
earlier decision the House of Lords called for an objective test,
according to which the relevant question should not be the
designer’s intention but the effect on subsequent designers and the
83
See id. at 583.
84
See id.
85
See id.
86
[1941] A.C. 417 (H.L.) (U.K.).
87
Id. at 429.
88
For example, how can one tell whether the designer of a screwdriver had in mind
only technical goals in choosing the exact lines of the device or whether some lines were
chosen also (or only) for aesthetic reasons. See U.S. Patent No. D340,633 app. A (filed
Jan. 21, 1992) (issued Oct. 26, 1993).
89
See Fischman Afori, supra note 5, at 1166–68.
90
See id. at 1167.
91
See Amp, Inc. v. Utilux Pty Ltd, [1971] F.S.R. 572, 578 (H.L.) (U.K.).
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effective possibilities to use other alternatives in achieving the
same functional outcome.
92
Two decades later, in 2002, the ECJ
similarly held that where the essential functional characteristics of
the shape of a product are attributable solely to the technical result,
the registration of that shape is precluded, “even if that technical
result can be achieved by other shapes.”
93
However, the ECJ
refrained from construing any instructive test, whether subjective
or objective, for such judicial conclusion.
94
It seems, then, that the question of whether a design can be
regarded as “solely dictated” by functional criteria when it is
merely one chosen from among a number of possibilities, each one
of which is capable of delivering the same functional goal, is
ultimately a question of proportionality. This question should be
determined by the courts (or other relevant tribunal) by asking
whether the overall impression from the shape of the object
suggests a technical or an aesthetic basis for the choice. This “eye
of the judge” test is a common one in design law, and it is often the
ultimate test for eligibility.
95
This test has no definable
measurements and reflects the underlying preference for common
law by deciding on a case-by-case basis, according to the judge’s
reading of the specific facts of the case.
B. Separating Function from Aesthetics
Separating the functional features of a design from its non-
functional ones is an even more complicated task. The question
discussed above was how to treat cases in which a functional
92
See Stratford Auto Components Ltd. v. Britax (London) Ltd., [1964] R.P.C. 183,
189–90 (H.L.) (U.K.) (“It is of course true that the designer’s intention may greatly assist
the court in its investigation of the result consequent upon the adoption of his manner of
its performance, and in many of the cases . . . proof of intention to monopolise a function
has been accepted as sufficient to establish the non-registrability of the features designed
to secure that result. . . . None the less, as I read this sub-section, the test to be applied is
an objective one, namely whether or not the function to be subserved by the article to
which the design is applied imposes such control upon the freedom of the manufacturer
as in substance to leave him no option but to adopt a feature or features appearing in the
representation of the registered design . . . .” (internal citation omitted)).
93
Case C-299/99, Koninklijke Philips Elecs. NV v. Remington Consumer Prods. Ltd.,
2002 E.C.R. I-05475, ¶ 83.
94
See id. ¶¶ 73–85.
95
See HOWE & RUSSELL-CLARKE, supra note 81, at 37–42.
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design was motivated by obtaining a technical result but where
there were other possibilities for achieving the same technical
result. The answer presented is that there can be several purely
functional designs for the same technical goal, and the fact that
non-functional considerations led a person to choose one of the
technical possibilities does not negate the design’s purely
functional nature. A related, overriding question is, then, how the
law should treat cases in which choosing one of the purely
functional designs was made due to non-functional features which
are integrated with the functional shape: are the non-functional
features swallowed into the functional nature? Or do the
functional features become protectable because they are merged
into the non-functional features?
This overriding difficulty in applying the non-functionality
requirement stems from the fact that many contemporary designs
combine functional and aesthetical elements, and it is impossible to
separate the two. These designs follow the “Form-Follows-
Function” artistic school and the philosophy of functionalism
which originated in the 1920s,
96
and which still dominates
contemporary design.
97
According to functionalism, the best
designs are those in which the appearance springs truly from the
structure and is a logical expression of it.
98
However, achieving a
visual effect by eliminating ornamentation must not be confused
with failing to consider visual effect entirely. Functionalism is
concerned specifically with aesthetics; these aesthetics, though, are
merged with the function.
99
Thus, the requirement for not
protecting functional elements becomes highly problematic
96
Setliff, supra note 31, at 62.
97
An example of a contemporary design which follows the “Form-Follows-Function”
philosophy is Philippe Starck’s lemon press “Juicy Salif,” produced by Alessi in 1990.
See Posting of Angie to Introduction to Design, Philippe Starck—Juicy Salif,
http://introtodesign.blogspot.com/2008/06/philippe-starck-juicy-salif.html (June 24,
2008); supra note 60. Other examples are the many registered designs for chairs. See,
e.g., U.S. Patent No. D514,835 (filed Jan. 19, 2005) (issued Feb. 14, 2006).
98
Setliff, supra note 31, at 62 (“According to this Functionalist philosophy, the usual
character of any product was best determined by the internal logic of its construction and
mechanism.” (internal quotations omitted)).
99
See AUSTRALIAN LAW REFORM COMM’N, REPORT 74: DESIGNS § 2.12 (1992),
available at http://www.austlii.edu.au/au/other/alrc/publications/reports/74.
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because it is not possible to separate physically the functional
features from the non-functional features.
There are several models for dealing with this problem of
merged functional and non-functional features of a design. One
model is to preserve the rule rejecting protection of non-functional
features, and when the features are merged, to provide no
protection to the design as a whole. This is the American model,
which is governed by the separability test,
100
as described above,
and which is justly criticized as impossible to carry out, arbitrary,
and subject to manipulation.
101
Another model is the English one,
which allows registration of merged designs.
102
However, this
model also has its shortcomings; courts have limited the possibility
of registering these kinds of designs when doing so would impede
the design freedom of future designers by leaving no viable options
for alternative designs.
103
The problem created by such a court-
made rule is clear: on what basis, other than subjective impression,
is a judge to decide that a design which merges aesthetic appeal
and functionality has met the threshold requirement of limiting
future options for designers? Such a decision can always be
criticized as arbitrary.
C. Are Aesthetics Also a Function?
Another complication stemming from the non-functionality
requirement becomes apparent when we delve into the meaning of
the term “aesthetics” in the context of useful articles. One may ask
what considerable efforts and investments made in the external
appearance (as opposed to the underlying technology) of articles
are intended to achieve. The answer is that aesthetics reflect an
added value, covering everything from personal enjoyment to
100
See supra Part I.A.1.
101
See supra notes 31–32 and accompanying text.
102
See In re Wingate’s Registered Design, (1935) 52 R.P.C. 126, 131 (Ch.) (U.K.)
(“[S]o long as the design, qua design, is something which makes an appeal to the eye and
is new or original, it is properly a subject matter of registration . . . notwithstanding that it
also involves a method of construction which may be entitled to protection as a patent.”).
103
See Stratford Auto Components Ltd. v. Britax (London) Ltd., [1964] R.P.C. 183
(H.L.) (U.K.);
HOWE & RUSSELL-CLARKE, supra note 81, at 95–96.
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social status indicators.
104
All these values contribute something
real to the product and justify the consumers’ choices to buy it.
Therefore, it is arguable that aesthetics have a function in
themselves.
105
Another way of thinking about this is to redefine
the concept of “function.” If we accept the definition of function
as “a way for achieving an aim,”
106
though, then aesthetics is
indeed a function.
107
Rejecting the idea of aesthetics as a
“function” implies a narrow definition of “function” as technical
function or even physical function. This is in fact the way the E.U.
Design Directive understands the term in the context of industrial
design law, as it uses the words “technical-function.”
108
Because
aesthetics do not have a technical or a physical function, they are
not a function as the term is used in industrial design law. As
discussed above, however, aesthetics cannot be easily separated
from the technical or physical features of the article.
The development of the trade dress claim in U.S. law
exemplifies an attempt to determine whether aesthetics should be
considered a function. Trade dress, as explained above, refers to
the design or appearance of goods (or services).
109
Courts were
concerned that the product’s dress is functional, either in the strict
technical or broad aesthetic sense, and accordingly developed the
concept of aesthetic functionality. Whereas strict functionality
examines whether the dress adds something to the use of the article
104
See JULES STUYCK, PRODUCT DIFFERENTIATION IN TERMS OF PACKAGING
PRESENTATION, ADVERTISING, TRADE MARKS, ETC. 6–7, 10–11 (Kluwer 1983); see also
Fischman Afori, supra note 5, at 1110–15.
105
See GOLDSTEIN, supra note 31, § 2.5.3(c) (“[P]urchasers of artistically designed
useful articles typically have two motives: to use the article and to enjoy its design. A
consumer who pays $662 for an ornamental belt buckle clearly wants something that will
do more than hold up his pants.”).
106
Function could be defined as “the natural action or intended purpose of a person or
thing in a specific role.” The Free Dictionary, Function, http://www.thefree
dictionary.com/function (last visited Feb. 5, 2010).
107
See HOWE & RUSSELL-CLARKE, supra note 81, at 42–44 (“Provided that the shape is
capable of giving to the article to which it is applied a definite individuality of
appearance, which renders it distinguishable from the ‘fundamental’ or unadorned form
of the article, it will be registrable as a design even though some mechanical advantage
necessarily follows from the shape in question.”).
108
Council Directive 98/71, art. 7(1), 1998 O.J. (L 289) 31 (EC).
109
See supra notes 49–53 and accompanying text.
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(i.e., utilitarian functionality),
110
aesthetic functionality examines
whether the dress, in addition to its ability to function as a
trademark, makes the article more appealing.
111
Aesthetic
functionality applies when the appearance of a product has a
significance that is not easily duplicated by substitute designs.
112
A good example of aesthetic functionality is given in the
Restatement (Third) of Unfair Competition:
A is the first seller to market candy intended for
Valentine’s Day in heart-shaped boxes. Evidence
establishes that the shape of the box is an important
factor in the appeal of the product to a significant
number of consumers. Because there are no
alternative designs capable of satisfying the
aesthetic desires of these prospective purchasers,
the design of the box is functional . . . .
113
Until 2001, the approach adopted by the courts was that when
articles were bought largely for their aesthetic value, their features
could be functional because they contributed to their value and
affected their cost, thus furthering the purpose for which the
articles were intended.
114
In TrafFix, however, the Supreme Court somewhat narrowed
this approach by explaining that aesthetic and utilitarian
functionalities must be distinguished from each other.
115
TrafFix
involved an expired utility patent for a road sign, which had special
features that enabled the sign to withstand strong winds.
116
Since
the utility patent had expired, the plaintiff tried to pursue a trade
dress claim against a competitor that had copied its design.
117
The
110
See supra note 65 and accompanying text.
111
See supra notes 104–06 and accompanying text.
112
MCCARTHY, supra note 53, § 7:79. For a thorough review of the aesthetic
functionality doctrine, see GILSON, supra note 55, § 2A.04(5).
113
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 17 cmt. c., illus. 8 (1995); see
Bonazoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218, 226 (D.R.I. 2005) (finding that the
plaintiff’s heart-shaped measuring spoons were functional).
114
See Pagliero v. Wallace China Co., 198 F.2d 339, 343 (9th Cir. 1952); see also
R
ESTATEMENT (FIRST) OF TORTS § 742 cmt. a (1938).
115
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001).
116
See id. at 25.
117
Id. at 26.
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Supreme Court held that with respect to the design of the product
no trade dress could be invoked;
118
those specific features were
the same ones that had been included in the utility patent claim,
which were therefore inherently functional.
119
The term for which
protection over a utility patent was granted could not be stretched
through a trade dress claim because it would undermine the
legislature’s intent to limit the term of protection over functional
features.
120
At the same time, the Court also held that “in a case
where a manufacturer seeks to protect arbitrary, incidental, or
ornamental aspects of features of a product found in the patent
claims, such as arbitrary curves in the legs or an ornamental pattern
painted on the springs, a different result might obtain.”
121
In other
words, the Supreme Court adopted a narrow understanding of the
term “functional,” as including features of the type included in a
utility patent, while excluding ornamental features from the
functionality umbrella. In effect, the Supreme Court decided that,
for purposes of industrial design, aesthetics are not a function.
The decision thus narrows the functionality test because it
invalidates both the competitive necessity test and the effect on the
cost of the article test.
122
This could have resulted in a flood of trade dress cases seeking
to protect ornamental features added to utilitarian products, which
would have undermined the Supreme Court’s declared policy not
to allow over-extension of trade dress.
123
Nevertheless, TrafFix
did not refer to the inability to separate the ornamental or
aesthetics of a design from its utilitarian functional features. It
thus may be understood as allowing trade dress protection only
when the ornamental part can be separated from the functional
elements, therefore closing the floodgates of the trade dress
route.
124
In reality, however, in a number of cases after TrafFix,
118
See id. at 30.
119
See id. at 32.
120
See id. at 34–35.
121
Id. at 34.
122
See Kerry S. Taylor, TrafFix Devices, Inc. v. Marketing Displays, Inc., 17
B
ERKELEY TECH. L.J. 205, 217 (2002).
123
TrafFix, 532 U.S. at 29; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
213 (2000).
124
See Taylor, supra note 122, at 219.
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courts did recognize a trade dress claim in cases of merged
ornamental and utilitarian features,
125
and consequently the precise
boundaries of the trade dress route are unclear.
126
Thus, even if there is a clear rule that aesthetics are not a
function, and functionality in industrial design law is narrowly
interpreted to mean technical, physical, or utilitarian function,
there is still a fundamental problem in the actual application of the
non-functional requirement. This is because the aesthetics of an
article often merge with its technical, physical, and utilitarian
features. Given the limitless range of possible designs, a bright-
line rule cannot be formulated. This is the fundamental obstacle in
industrial design law, which has resulted in considerable ambiguity
and in an illogical development of this branch of intellectual
property law. Yet, it is clear that it is not possible to drop the non-
functionality requirement because it is critical for separating patent
law from industrial design law.
125
See, e.g., Eco Mfg. v. Honeywell, 357 F.3d 649, 653 (7th Cir. 2003) (affirming the
district court’s determination that the shape of the trademark holder’s round thermostat
would likely be found functional at trial on the merits, and therefore declining to issue a
preliminary injunction that would block the competitor from bringing its product to
market; however, the court did not reject the possibility that in a final decision the
functional trade dress may be protected due to the court’s factual finding of mixed
ornamental features); Logan Graphic Prods. Inc. v. Textus USA Inc., 67 U.S.P.Q.2d
1470, 1473 (N.D. Ill. 2003) (“Because the TrafFix decision dealt with trade dress
protection sought for the exact mechanism covered by an expired utility patent, and
because the features sought to be protected here are not covered by expired patents, the
TrafFix decision is not controlling. However, that does not mean that Logan is relieved
of the burden of showing that the features it seeks to protect are non-functional. . . . The
magistrate judge recognized that Logan retained this burden and found that Logan met its
burden.”); Metrokane, Inc. v. Wine Enthusiast, 160 F. Supp. 2d 633, 638 (S.D.N.Y.
2001) (“The structure of the Rabbit corkscrew is clearly derived from that of the expired
Screwpull utility patent. . . . However, dicta in the Traffix decision suggest that a party
seeking trade dress protection can overcome the functionality presumption. . . . The
Rabbit corkscrew fits this narrow exception.”).
126
This instability in identifying the ornamental and utilitarian features is demonstrated
in one of these cases, in which the Seventh Circuit held with respect to a design of a
thermostat that potentially “what was once functional may half a century later be
ornamental.” Honeywell, 357 F.3d at 653.
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III. A PROPOSED SOLUTION FOR EASING THE PROBLEM STEMMING
FROM THE
NON-FUNCTIONALITY REQUIREMENT
For over a century, industrial design laws have created
confusion by trying to make a clear distinction between functional
and non-functional aspects of design.
127
The question is whether
there is a way to resolve this problem and make the non-
functionality requirement more workable. The proposal presented
here is a pragmatic one. Since it is impossible to define accurately
when a design is purely functional, and since the problem of
designs that combine both function and aesthetics is acute, it might
be more practical not to resolve the problem at the registration
stage, but rather to postpone it to a later stage, when a case of
infringement is brought before a court. Thus, whenever the
question of the functionality of a design is raised and the answer is
not clear-cut, the design will nonetheless be registered. Should,
however, the registration of the design be challenged in court in an
infringement claim, the court will determine which features of the
design are indeed protected. This proposed method has a number
of significant advantages which will be discussed below.
First, this method should not have a chilling effect with respect
to innovative/creative endeavor. One possible objection to the
proposed method of registering these functional designs is that
doing so would hinder the innovative/creative market; designers
might avoid using the functional features of the registered design,
on the assumption that registration reflects conclusive
protection.
128
This problem can be easily solved by attaching a
reservation to the registration, stating that the registered design
raises a question of functionality, which will be decided by the
127
Non-functionality first appeared as a requirement in the English design law from
1919, which limited registration of mechanical contrivances. See Patent and Designs Act,
1919, 9 & 10 Geo. 5, c. 80, art. 93 (Eng.) (“Design means only the features of shape,
configuration, pattern, or ornament applied to any article by any industrial process or
means, whether manual, mechanical, or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but does not include any mode
or principle of construction, or anything which is in substance a mere mechanical
device.”); see also H
OWE & RUSSELL-CLARKE, supra note 81, at 35–45.
128
But to some extent this claim can be raised against the current legal situation too
because some functional designs are nonetheless registered, due to the problematic
definition of “functional design.”
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court. Thus, registration of partially functional designs will not
hinder innovative/creative efforts. This kind of reservation accords
with the existing system which already provides for “notes” with
respect to limitations or clarifications attached to registered
intellectual property rights.
129
According to this practice, the
eligibility of registered intellectual property rights can be
challenged at any time up to the end of the statutory period of
protection, and a clarification with respect to such legal possibility
will be attached to the design’s registration.
130
It is well known
that competitors challenge the validity of registered rights
indirectly, by simply using or copying the needed features and
reserving the argument over eligibility to the courts.
131
Moreover, in many jurisdictions there is no real prosecution of
designs, and the registration of designs can be characterized more
accurately as a deposition system.
132
This scheme of deposition
instead of prosecution has also been adopted in the E.U.
registration system
133
and by the Hague International Registration
System.
134
The deposition system is aimed at achieving probative
goals, which promotes more certainty in the relevant market.
However, it is not intended to function as a constitutive registry of
proprietary rights. Thus, in a deposition system, the mere act of
129
See Council Directive 98/71, art. 11, 1998 O.J. (L 289) 31–32 (EC).
130
Id. at art. 11(9).
131
For example, in cases of a license to use a patent, the licensee can simply stop
paying the royalties. In such cases, the patent’s validity often arises as a defense to an
infringement suit against the licensee for breach of contract. Due to this practice, patent
owners insert a “no-challenge” clause in the license agreements, according to which the
licensee undertakes not to challenge the patent. See M. Natalie Alfaro, Barring Validity
Challenges Through No-Challenge Clauses and Consent Judgments: Medmmune’s
Revival of the Lear Progeny, 45 H
OUS. L. REV. 1277, 1278–82 (2008).
132
See Fischman Afori, supra note 5, at 1141 (“Accepting this as the main purpose of a
design registration system means that deposit rather than comprehensive examination
suffices: there is no waste of resources, and the designer can market the design
immediately after creating it; registration will serve as a means to prove originality, non-
copying or prior use.”).
133
See Council Directive 98/71, art. 11, 1998 O.J. (L 289) 31–32 (EC).
134
See Geneva Act of the Hague Agreement [of 6 November 1925] Concerning the
International Registration of Industrial Designs art. 10(1), art. 14(1), July 2, 1999
(extending the Hague Agreement Concerning the Deposit of Industrial Designs of 1934,
amended in 1960).
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registration does not imply that the registered design is valid, and
its eligibility is subject to a court’s examination at any time.
135
There are many other advantages to reviewing the functionality
of a design in the context of an infringement claim. As stated
above, there is no clear test for whether a design is eligible or not,
other than the “eye of the judge” test.
136
This test is arbitrary by
nature, and consequently, the whole system of industrial design
law suffers from uncertainty. Yet, as mentioned above, in practice
the validity of registered rights is usually challenged by simply
using or copying the needed features and reserving the argument of
validity as a defense in court. Therefore, an indirect challenge of
intellectual property rights eligibility is subject to a case-by-case
determination, according to the judges’ best understanding, and
thus does not suffer from a different level of uncertainty than any
other case discussed by a common law court. The common law
system, by nature, creates a mechanism which calls for shifting
complicated decisions which are derived from a factual basis to the
courts.
137
Such a case-by-case resolution is the traditional common
law method and is less disruptive than advance determination of
eligibility with respect to proprietary rights.
Generally speaking, this kind of solution is common in
intellectual property law and particularly in copyright law. The
most problematic questions in copyright law, such as eligibility,
scope of rights, exceptions, and limitations, where clear and certain
rules are impossible to formulate, are resolved by applying an open
standard on a case-by case basis in the courts.
138
This pragmatic
135
See Council Directive 98/71, art. 11, 1998 O.J. (L 289) 31–32 (EC).
136
See HOWE & RUSSELL-CLARKE, supra note 81, at 35–37, 39.
137
Compare Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767 (1992) (holding
that the trade dress of a restaurant found to be inherently distinctive may be protected
under section 43(a) of the Lanham Act without proof that the trade dress has secondary
meaning), with Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215 (2000)
(holding that, “in an action for infringement of unregistered trade dress under section
43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectable, only
upon a showing of secondary meaning”).
138
For example, the fundamental threshold for acknowledging copyright is
“originality,” however this threshold is not defined by statute. Courts therefore develop
different mechanisms and tests for applying the threshold on a case-by-case basis. See
Elizabeth F. Judge & Daniel Gervais, Of Silos and Constellations: Comparing Notions of
Originality in Copyright Law, 27 C
ARDOZO ARTS & ENT. L.J. 375, 377–78 (2009)
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approach should be used in the industrial design realm as well.
The non-functionality requirement could therefore function as an
open standard to be applied on a case-by-case basis.
Thus, in light of the difficulty stemming from the non-
functionality requirement, specifically when it is impossible to
decide in advance whether a design’s features are functional, this
decision should be assessed in the context of a specific use. It may
be that with respect to a specific counter-claim some features
would be held as functional and in another different case would be
held as non-functional. Putting the question of the functionality of
a specific design in a concrete factual situation and discussing a
competitor’s need to use a concrete feature of the design may help
explain a court’s decision which in any case is based on the “eye of
the judge” test. Courts may ask for evidence regarding the need to
use particular features of a registered design, and accordingly
consider whether there are effective alternatives for designing the
article.
139
In this way, the test is focused on specific competing
needs and is not theoretical, and the specific competitor will enjoy
a legal response to his or her specific need. In other words, the
decision whether a feature is or is not functional would be made on
a practical, rather than a theoretical, basis, based on evidence that
is provided on whether protection for a design would close off
practical alternatives for future designers.
Finally, this proposal has the merit of eliminating the “all or
nothing” consequences of the non-functionality requirement: the
decision is always made in a specific context of a competing use,
and future designers may re-open the question, leading to a
different result, whether due to technological developments or
(“Under the orthodox interpretation of originality for purposes of copyright law, there are
four different families of standards, speaking broadly, which, ranged from most
restrictive to most generous, are the European Union’s (‘E.U.’) personal intellectual
creation, the United States’s Feist minimal degree of creativity, Canada’s CCH standard
of non-mechanical and non-trivial exercise of skill and judgment, and the United
Kingdom’s skill and labour standard.”).
139
For example, with respect to the screwdriver design patent discussed supra note 88,
if another designer wishes to use the same lines of the edge of the handle for a different
working tool, the court will need to focus only on that specific feature and examine its
degree of functionality in light of the specific need to combine such feature in another
product.
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simply due to differences in the facts at issue. There is no a priori
rejection of eligibility due to some functionality merged with the
appearance of the design, and each case-by-case decision does not
necessarily block future decisions with a different result because
all decisions are referring only to the specific factual situation at
stake. Indeed, such decision will be eventually an in personam
one.
For all these reasons, shifting the non-functionality requirement
to an open standard rule that is determined on a case-by-case basis
would be a pragmatic solution to the unending debate over how to
apply the non-functionality requirement.
CONCLUSION
Industrial design law protects the appearance of useful articles
but not the functional features of the design.
140
This non-
functionality requirement is a key element of design protection,
and it is in fact a universal feature of such laws. Its underlying
rationale involves the desire to avoid undermining patent law
provisions, which under certain strict conditions provide protection
of functional elements.
141
In practice, however, the non-functionality requirement is
difficult to apply. Three major reasons for these difficulties are
explored in this Article: the first is that it is hard (or perhaps even
impossible) to determine definitively that a design feature is purely
functional.
142
The second is that contemporary design tends to
combine functional and aesthetic elements, with the result that it is
often impossible to separate between the two.
143
The question then
becomes whether the design as a whole should be deprived of
protection. The third reason is that functionality is an abstract
concept that covers everything from the narrow meaning of
“serving a technical goal”
144
to the broader (and vaguer) one of
140
17 U.S.C. § 101 (2006); see supra text accompanying note 16.
141
35 U.S.C. §§ 101–03.
142
See supra Part II.
143
See supra notes 104–06 and accompanying text.
144
See supra Part II.A.
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“achieving a purpose.”
145
To the extent that functionality is
understood broadly, it could reasonably be argued that aesthetics
are also a function. This broad reading of the non-functionality
requirement would empty it of meaning, however. Consequently,
a more narrow understanding of the term “functional” is
preferable—one that circumscribes functionality within technical
and physical aspects.
After analyzing the various difficulties that arise from the non-
functionality requirement, the Article discusses a proposed
solution, under which non-functionality would no longer be simply
treated as a threshold requirement for eligibility for design
protection. Instead, in cases that are not clear-cut, the issue would
be left to courts to resolve when claims of actual design
infringement are brought. This is because a court would be better
placed to determine whether a particular feature of the design was
functional or not on a case-by-case basis in the context of a
competing use. Such decisions would avoid the “all or nothing”
rule of rejecting registration of functional designs and would
accord with the rule allowing challenges to the eligibility of
registered intellectual property rights at all times, whether directly
or indirectly. The non-functionality requirement would thus
function as an open standard norm, similar to many other
intellectual property doctrines that are employed when it is
impossible to impose a single rule to cover a virtually limitless
range of factual possibilities.
145
See supra Part II.B.
