colman, "patents and perverts" presentation at university of quebec at montreal (may 14, 2015)

8/9/2019 Colman, "Patents and Perverts" presentation at University of Quebec at Montreal (May 14, 2015)

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Charles E. Colman

Acting Assistant Professor of Lawyering, NYU School of Law

Adjunct Professor, NYU Steinhardt, Visual Culture: Costume Studies

“Patents and Perverts”

This presentation was given at L’Université du Québec à Montréal on May 14, 2015as part of the inaugural “Droit et Contexte” conference. © 2015 Charles E. Colman.

Presentation based on forthcoming article, Design and Deviance:Patent as Symbol, Rhetoric as Metric , 55 JURIMETRICS: THE JOURNAL OF L AW, SCIENCE, AND TECHNOLOGY __ (Sep. 2015) (peer-reviewed)


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Overview of U.S. intellectual property system

Federal

! Patent law

! Copyright law (almost exclusively federal)

! Trademark and trade-dress law (federal and state)

State

! Trademark and trade-dress law (parallels federal)

! Right of publicity! Trade secret law (almost exclusively state)


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U.S. intellectual property protection available

for appearance of industrial design/applied art

! Patent law! Design patents (grant of limited term of exclusive

rights in novel, non-obvious, non-functional visual

characteristics of utilitarian articles of manufacture,beginning with U.S. Congress’ passage of 1842 Act)

! Copyright law! [Available for “separable” components of useful articles

beginning with Mazer v. Stein (1954)]

! Trademark and trade-dress law (federal and state)!

[Available for non-functional components of productdesign where “secondary meaning”/sufficient publicrecognition exists, beginning roughly in 1920s]


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L.R.C., 1985, ch. I-9, Loi sur les dessins industriels

S. 6. (1) Si le ministre trouve que le dessin n’est pasidentique à un autre dessin déjà enregistré ou qu’il n’y

ressemble pas au point qu’il puisse y avoir confusion, ill’enregistre . . .

R.S.C., 1985, c. I-9,Industrial Design Act

S. 6. (1) The Minister shall register the design if the Ministerfinds that it is not identical with or does not so closelyresemble any other design already registered as to beconfounded therewith . . .

Closest Canadian equivalent to U.S. design patents


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For much of the 20th Century, design patents were effectively a

nullity in U.S. intellectual property rights litigation. Why?

In this project, I draw on various types of historical evidence toshow that late 19th century cultural developments in the U.S.urban Northeast gave rise to a stigma surrounding the

“ornamental” and “decorative” works under the exclusive legalpurview of design-patent law. The creation and appreciation ofnon-utilitarian design grew increasingly intertwined with suchwidely disfavored notions as frivolity, effeminacy, and sexual“deviance.” Leading appellate-court judges responded by

adjudicating design-patent cases so as to “perform” and endorseprevailing gender and related norms—invalidating numerousdesign patents as “non-inventive.” Their decisions in these casescreated a large body of anti-design patent precedent that drovedesigners to other areas of IP, like “trade dress” and copyright.

Overview of my project


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D AVID K UCHTA , THE THREE-PIECE SUIT AND MODERN M ASCULINITY : ENGLAND, 1550-1850, 7 (2002):

“Manners and material culture gave shape to ideologicalprocesses; material signs formed and informed systems ofpower, rather than standing outside them in some exteriorsymbolic realm. [Footnote omitted.] Thus while ideas ofmasculine character were constructed by changing politicalideologies, political ideologies in turn were constructedaround changing notions of character . . . . [I]t is necessary toreconsider the epistemology that sees cultural artifacts as

merely symbolic of changes in other, more real realms. Wemust rethink the relationship between symbol and substance,between cultural practices and the social, political, andeconomic realities that presumably stand behind them.”

On the cultural connotations of design


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Historical evidence suggests that “deviant” sexualityserved as a lens for evaluating the morality of art genres

Yvette Greslé, Strategies of veiling same-sex desire and its publicconsumption: Aubrey Beardsley's illustration of Oscar Wilde’s 1894 Salome, 70 DE A RTE 22, 34 (2004) (emphasis added):

“‘In Wilde’s trials in 1895 his perceived position as both spokesperson

for art and example of sexual deviant resulted in a remarkable elision in

the public domain of art and sexuality and thus in the creation of a new

category of aestheticism . . . as his works were given equal time with hissexual practices during the trials, aestheticism came to represent adistinct and private realm of art and sexuality.’ [Regenia Garnier]

Wilde’s inversion of Victorian moral values and the perceived

purposelessness of his aesthetic of ‘art for art’s sake’ was equated with

the perceived immorality and assumed purposelessness of his same-sex

practices.”


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Judicial language in influential design-patent

decisions was highly gendered

Franklin Knitting Mills Inc. v. Gropper Knitting Mills,15 F.2d 375, 375 (2d Cir. 1926), cert. denied , 273 U.S.761 (1927) (emphasis added):

“[Ties] are bought, not only because of their utility tothe wearer and their attractiveness to others whenworn, but also because of the appeal, as novel,ornamental, and pleasing, that the design makes tothe aesthetic sense of the purchaser, offtimes [sic ] thewife, sweetheart, or female relative of the man who isto wear it.”


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This judicial language also alluded to notions ofaesthetic hierarchies and morality

Charles Boldt Co. v. Turner Bros. Co., 199 F. 139 (7th Cir.1912) (emphasis added):

“Whether or not the device of a design patent satisfies the

requirements of the statute is a matter to be determined fromthe impression it makes upon the mind through the eye. If itis pleasing, and found to be new and original, upon aninspection of the disclosures of the prior art and use, and, inaddition, leaves a distinct sensation of an unusual anddesirable form or arrangement of forms upon the mind, whileat the same time its suggestions are wholesome and proper,then, as a rule, it may be sustained as a device within thestatute, even though the elusive ‘spark of genius’ may haveassumed the humble luminosity of the glowworm.”)


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What wasn’t “wholesome and proper”?

ELIZABETH E. GUFFEY , RETRO: THE CULTURE OF REVIVAL 34(2006) (“In Britain, the [Art Nouveau] style was increasinglyassociated with aestheticism and particularly with OscarWilde, who had been imprisoned for homosexuality in 1895.‘Pillory, L’Art Nouveau at South Kensington,’ an articlepublished in 1901 in the Architectural Review , dubbed thestyle a ‘fantastic malady.’ Interviewed in a Magazine of Artarticle in 1904, architect Charles Voysey identified ArtNouveau with ‘a debauch of sensuous feeling,’ calling thestyle ‘distinctly unhealthy and revolting.’ By 1930 the

American historian Lewis Mumford recalled Art Nouveau asdominated by a ‘meaningless stylistic exuberance.’ WhenJohn Betjeman surveyed the style in the same year headmitted that it had produced ‘many a hideous little sidetable, many a sickly front door.’”)


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On “performative” pressures among (male) judges

GEORGE CHAUNCEY , G AY NEW Y ORK : GENDER, URBAN CULTURE, AND THE M AKING OF THE G AY M ALE WORLD,1890-1940, 100, 44 n.29 (1994) (emphasis added):

“Even as queer men began to define their difference fromother men on the basis of their homosexuality, ‘normal’ menbegan to define their difference from queers on the basis oftheir renunciation of any sentiments or behavior that mightbe marked as homosexual . . . .

A sympathetic and unusually well informed doctor writingin 1918 confirmed the validity of such concerns, noting thatin respectable society, ‘the accusation of perversity[homosexuality] . . . means ruin.’”


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Phase 1: Early design-patent casesas reference point (1842-1870)

“The [plaintiff’s] patent is granted under the act of August 29, 1842(5 Stat. 543, § 3), which authorizes the granting of the same for anynew and original design for a manufacture, or any new and useful

pattern, or any new and original shape or configuration of any articleof manufacture, not before known or used by others. The inventionin this case falls within the first clause of the section , if within any,as a ‘new and original design for a manufacture’—a design for themanufacture of an ornamental button.”

Booth v. Garelly , 3 F. Cas. 883, 884 (C.C.S.D.N.Y. 1847)


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Phase 3: Distancing via rhetoric of reluctanceand emphasis on design’s importance solely to

other men (1870-1912)

“Those who have devoted time and study to the subject, who havespent their lives in dealing in articles similar to those in controversy,may see at a glance features which are wholly unimportant, and

unobserved by those whose pursuits are in other directions, and whoare attracted only by general appearances. If the resemblance is suchthat a purchaser would be deceived, it will not aid the infringer toshow that he has deviated slightly from a straight line in one placeand from a curved line in another, or that he has added or omittedsomething which an expert can discover . . . . Tested by this rule, I am

constrained to say that the defendant infringes.”

Tomkinson v. Willets Mfg. Co., 23 F. 895, 896 (C.C.S.D.N.Y. 1884)(emphasis added)


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Phases 3 and 4: Distancing through rhetoric ofreluctance and dismissal of the “invention”required to produce design(s) (1900-1930)

“The eyes of the court cannot be closed to the fact that in the courtroom itself are electric light fixtures, placed there long before thedate of the patent, which show a sphere with a neck and rim sonearly identical with those of the patent that the difference is a merematter of immaterial proportions . . . The court must take judicialnotice of the oblate spheroid and neck common to the whole field ofeveryday arts, and must hold that this design is merely a double use, — is, at most, the adaptation of an old form to a new purpose . The

defense of want of patentable novelty is sustained.”

Bevin Bros. Mfg. Co. v. Starr Bros. Bell Co., 114 F. 362, 363(C.C.D. Conn. 1902) (emphasis added)


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Phase 4: Distancing through dismissal of theappeal of design and the “invention” inherent

in the design endeavor (1900-1930)

“ A design may be wholly insignificant in value and importance ascompared with the value of the article to which it is applied. A designfor a piano, for instance, may be beautiful in itself (though not more

beautiful than other designs), but may still be very trifling incomparison with the piano . . . . Indeed, it is quite conceivable that adesign may be patented which, when applied in practice, may turnout (owing to changes in fashion) an absolute detriment to an article ,so that any sale effect may be in spite of rather than inducedby the design.”

Frederick Betts, Some Questions under the Design Patent Act of1887 , 1 Y ALE L.J. 181, 189 (1892) (prominent member of the bar writinin law review of influential institution; reflects growing adherenceamong normatively masculine men to “utilitarian” aesthetic ethos)


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Phase 4: Distancing through dismissal of the

appeal/importance of design and the “invention”inherent in the design endeavor (1900-1930)

“[The contested lantern design] represents nothing more than . . .an article always purchased and used for what it will do—not forits looks.”

R.E. Dietz Co. v. Burr & Starkweather Co., 243 F. 592, 594(2d Cir. 1917)

“[Anyone] starting to design sad irons with the art before him,and governed only by considerations of proportion and plan,would have had no difficulty in making the plaintiff’s iron.”

Strause Gas Iron Co. v. William M. Crane Co., 235 F. 126,131 (2d Cir. 1916).


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Phase 4: Distancing by dismissing the appealof design and the “invention” inherent in the

design endeavor (1900-1930)

“How such a design involves invention is beyond my comprehension,especially in view of what has been recently [by the Second Circuit.]Can it conceivably involve patentable novelty to draw a few spacedapart parallel lines on a gown, a parasol, a shirt, a shawl, a rug, orthe many other articles made up of textile fabrics? To so hold wouldundignify the whole theory of invention[.]”

Mallison v. Ryan, 242 F. 951, 952 (S.D.N.Y. 1917) (emphasis added)

Compare Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 495 (1900)(cautioning lower courts that if a utility-patent case involve “a questionof fact, as of anticipation or infringement . . . , the parties are entitledto put in their evidence in the manner prescribed by the rules . . . .”)


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Phase 4: Distancing by dismissing the appealof design and the “invention” inherent in the

design endeavor (1900-1930)

“It is true that invention may reside in a new combination of oldelements. Every new combination of old elements, however, is not

patentable . . . . In order that there may be novelty, the thing mustnot have been known to any one before. Mere novelty of form isinsufficient.”

Knapp v. Will & Baumer Co., 273 F. 380, 382 (2d Cir. 1921)(emphasis added)

By this point, the Second Circuit—whose decisions on design patentswere generally followed by its sister circuits— had crystallized its aversionto decorative design into doctrine that nearly guaranteed invalidation.


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Indeed, between 1926 and 1959, the U.S. Court

of Appeals for the Second Circuit did not upholdthe validity of a single contested design patent

“Not every new idea in decorating can be considered an‘invention’. Each merchandising season produces, in the field of

women’s garments, new and varied designs. In fact, it has beensaid that to invent anything in the way of a new dress design,however temporarily attractive such design may be, becomesalmost impossible . . . . It may be that it is for reasons similar tothis that there has not been a design patent upheld by the

Court of Appeals in the Second Circuit subsequent to 1926 . . . .”

H. W. Gossard Co. v. Neatform Co., 143 F. Supp. 139,143 (S.D.N.Y. 1956) (appearing to contradict itself on “newness”)


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The tide began turn (back) in the late 1950s,for a variety of reasons I have explored in my work

“As regards the combination of references in design cases . . . .almost every new design is made up of elements which,individually, are old somewhere in the prior art, but the factthat the individual elements of a design are old, does not provewant of invention in assembling them.”

In re Glavas , 230 F.2d 447, 450 (C.C.P.A. 1956)

“[The test of ‘obviousness’] must be applied in a way which willimplement the legislative intent to promote progress in the

field of industrial design by means of the patent incentive. Thiswill not be done by denying patents to everything competentdesigners produce by the skill of their calling.”

In re Laverne , 356 F.2d 1003, 1005-06 (C.C.P.A. 1966)


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Questions or comments?

Please feel free to e-mailme at [email protected]

colman, "patents and perverts" presentation at university of quebec at montreal (may 14, 2015)

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