Modifying the design piracy prohibition act to offer "opt-out" protection for fashion designs

Journal of the Copyright Society of the U.S.A.

Volumn 56, Issue 2-3, 2009, Pages 505-541

  McNamara, Joseph E ^a  

^a WIDENER UNIVERSITY   (United States)

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EID: 67650093253     PISSN: 08863520     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (340)

1. Kal Raustiala & Christopher Springman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 VA. L. REV. 1687, 1728-29 (2006).
2. Id. at 1728-29; see also Melissa Hoyer, From Catwalk to Boutique, We Love Purple, SUNDAY TEL. (New South Wales), Apr. 20, 2008, at 29, available at 2008 WLNR 7331845 (noting the rise in popularity of the color purple in mainstream fashion after it was featured heavily in fashion shows in autumn of 2006).
3. Richard Bourdreaux, In Italy, It's Survival of the Fakest: Illegal Counterfeits Yield $1.5 Billion Annually in Leather Goods Alone, L.A. TIMES, Oct. 6, 2000, at El, available at 2000 WLNR 8364816.
4. Filus, Sarah, Fashion Fission over Anti-Knockoff Bill: L.A. Manufacturers Break with N.Y. on Reform Effort, L.A. Bus. J., Sept. 10, 2007, at 1, available at 2007 WLNR 21795735.
5. See id.
6. S. 1957, 110th Cong. (2007) (the "Design Piracy Prohibition Act"). An almost-identical bill was introduced in the House by Representative Delahunt of Massachusetts. See H.R. 2033, 110th Cong. (2007) (the "Design Piracy Prohibition Act"). The single substantive difference between the two versions of the bills was the standard for similarity to be used in infringement. See H.R. 2033, 110th Cong. § 2(d)(2);
7. S. 1957, 110th Cong. § 2(d)(2). A bill almost identical to H.R. 2033 was introduced in the 109th Congress by Rep; Robert W. Goodlatte, but was not brought to a vote. See H.R. 5055, 109th Cong. (2006). The House Subcommittee on Courts, the Internet, and Intellectual Property held a hearing on H.R. 5055 on July 27, 2006. See A Bill to Provide Protection for Fashion Design: Hearing on H.R. 5055 Before the Subcomm. on Courts, the Internet, and Intellectual Property of the House Comm. on the Judiciary, 109th Cong. (2006) [hereinafter DPPA Hearing]. The information provided at the hearing on H.R. 5055 is also relevant to S. 1957 and H.R. 2033, as the three bills were substantially the same.
8. See 15 U.S.C. § 1114 (2006). As described by Representative Bob Goodlatte of Virginia: "Trademarks only protect brand names and logos, not the clothing itself. And the Supreme Court has. refused to extend trade dress protection to apparel designs. Thus, if a thief steals a creator's design, reproduces and sells that article of clothing, and attaches a fake label to the garment to market it, he would be violating Federal law. However, under current law, it is perfectly legal for that same thief to steal that same design, reproduce and sell the article of clothing if he does not attach a fake label to it." DPPA Hearing, supra note 6, at 4 (statement of Rep. Bob Gbodlatte, Member, Subcomm. on Courts, the Internet, and Intellectual Property).
9. See supra note 7; infra Part II.A.I; infra Part II.A.2.
10. See infra Part II.
11. Samantha L. Hetherington, Fashion Runways Are No Longer the Public Domain: Applying the Common Law Right of Publicity to Haute Couture Fashion Designs, 24 HASTINGS COMM. & ENT. L.J. 43, 45 (2001).
12. Cynthia Robins, Star Powered, S.F. CHRON., Mar. 13, 2000, at E7, available at 2001 WLNR 5753062 (discussing the business model of "Knock Off King" Allen B. Schwartz).
13. Olivera Medenica, Fashion Police: Pending Bill Would Offer Limited Copyright Protection to Fashion Designs, RECORDER (SAN FRANCISCO), Oct. 4, 2006, at 4.
14. Danico Lo, Designer Sues "Evil" Twin - Von Furious At "Copycat, " N.Y. POST, Mar. 29, 2007, at 3, available at 2007 WLNR 5945654 (internal quotations omitted).
15. DPPA Hearing, supra note 6, at 2 (statement of Rep. Lamar Smith, Chairman, Subcomm. on Courts, the Internet, and Intellectual Property).
16. Id.
17. Filus, supra note 4, at 1 (discussing that "the nature of the fashion industry is to feed off of itself). In a statement to Congress, Professor Christopher Sprigman raised a similar point: "To remain healthy, the fashion industry depends on open access to designs and the ability to create new designs that are derivative of them." DPPA Hearing, supra note 6, at 88 (prepared statement of Christopher Sprigman, Associate Professor, University of Virginia School of Law). In describing how design protection might affect the fashion industry, journalist Robin Givhan offers the following: "Fashion design has gone unprotected in part because it can be difficult to distinguish between a copy and a homage. After all, part of the nature of fashion is cross-pollination: one designer's work starts a trend that inspires another." Robert Givhan, The End of "Gown in 60 Seconds"?, WASH. POST., Aug 10, 2007, at C2, available at 2007 WLNR 15467249.
18. DPPA Hearing, supra note 6, at 78 (testimony of Susan Scafidi, Visiting Professor, Fordham Law School) (describing H.R. 5055 as a "groundbreaking example of how copyright law can be narrowly tailored, and carefully designed to serve the creators and the public interest"); see also infra Part II.
19. Raustiala & Sprigman, supra note 1, at 1727 (arguing that "piracy is paradoxically beneficial for the fashion industry"); DPPA Hearing, supra note 6, at 197 (prepared statement of the U.S. Copyright Office) (indicating that "there may be merit" to H.R. 5055, but that the Copyright Office had not been "provided with sufficient information to come to a conclusion" on whether it is actually needed); Kristi Ellis, AAFA Rules Out Copyright Protection Deal, WWD, Mar. 11, 2008, at 3, available at 2008 WLNR 6205775 (explaining that "there has been widespread opposition among apparel brands and vendors" to the DPPA).
20. See, e.g., Megan Williams, Fashioning a New Idea: How the Design Piracy Prohibition Act is a Reasonable Solution to the Fashion Design Problem, 10 TUL. J. TECH. & INTELL. PROP. 303 (2007);
21. Laura C. Marshall, Catwalk Copycats: Why Congress Should Adopt a Modified Version of the Design Piracy Prohibition Act, 14 J. INTELL. PROP. L. 305 (2007);
22. Lynsey Black-mon, The Devil Wears Prado: A Look at the Design Piracy Prohibition Act and the Extension of Copyright Protection to the World of Fashion, 35 PEPP. L. REV. 107 (2007).
23. Protection under the DPPA would commence for a design only when (1) a registration for a design publishes or (2) the design is "made public." 17 U.S.C. § 1304. If a design is "made public" prior to registration, registration must be applied for within three months, else all protection under the DPPA would be lost. H.R. 5055, 109th Cong. § 2(b) (2006);
24. S. 1957, 110th Cong. § 2(b), (e); H.R. 2033, 110th Cong. § 2(e) (2007). This is closer to design patent law, where protection is achieved only through an elaborate application process, and distinguishable from copyright law, where protection begins at creation. See also Pamela Brannon, Reforming Copyright to Foster Innovation: Providing Access to Orphaned Works, 14 J. INTELL. PROP. L. 145, 147-48 (discussing how copyright changed from an "opt-in" to an "opt-out" system).
25. H.R. 5055, 109th Cong. § 2(b) (2006);
26. S. 1957, 110th Cong. § 2(b), (e) (2007);
27. H.R. 2033, 110th Cong. § 2(e) (2007).
28. 17 U.S.C. §§ 1307, 1322, 1323 (2006).
29. See infra Part III.D.
30. See Blackmon, supra note 19, at 120-32;
31. Williams, supra note 19, at 307-11;
32. Marshall, supra note 19, at 311-18. Part II does not compare the DPPA in detail to trademark or trade dress law as other commentators have. See, e.g., Emily S. Day, Double-Edged Scissor: Legal Protection for Fashion Design, 86 N.C. L. REV. 237 (2007) at 248-51. This is because trademark and trade dress are not as close to the DPPA in purpose or effect as copyright and design patent law. Trademark protects fashion design only as far as logos that appear in the outward design of clothing, id. at 248-49, and trade dress offers meaningful protection to most fashion design only in rare instances. Id. at 249-50.
33. 17 U.S.C. § 102 (2006).
34. Feist Publ'ns, Inc. v. Rural Tel. Serv. Go., 499 U.S. 340, 345 (1991).
35. Id. at 345.
36. Id.
37. 17 U.S.C. § 102 (2006);
38. see also Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand, J.) ("[T]here can be no copyright in the 'ideas' disclosed but only in their 'expression.'").
39. 17 U.S.C. § 102 (2000);
40. In re World Auxiliary Power Co., 303 F.3d 1120, 1131 (9th Cir. 2002) (recognizing that "copyright is created every time people set pen to paper, or fingers to keyboard, and affix their thoughts in a tangible medium").
41. 17 U.S.C. § 302(a) (2006). In the case of a work with more than one author, the copyright term extends to seventy years after the death of the latest-surviving author. Id. § 302(b).
42. Id. § 102.
43. Id. § 101.
44. Celebration Int'l v. Chosun Int'l, 234 F. Supp. 2d 905, 912 (S.D. Ind. 2002).
45. H.R. REP. NO. 94-1476, at 55 (1976).
46. 17 U.S.C. § 101 (2006).
47. H.R. REP. NO. 94-1476, at 55 (1976).
48. The relevant language from the House report states: "A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like." Id. It is well-accepted that fabric patterns, for example, are protected by copyright. See Spectravest, Inc. v. Mervyn's, Inc., 673 F. Supp. 1486, 1491-92 (N.D. Cal. 1987).
49. H.R. REP. NO. 94-1476, at 55 (1976) (stating that protection is not intended for the "shape of [a] ⋯ ladies' dress.")
50. Id. A useful article must include "some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article." Id.
51. Celebration Int'l v. Chosun Int'l, 234 F. Supp. 2d 905, 914 (S.D. Ind. 2002).
52. Id.
53. Pivot Point Int'l, Inc. v. Charlene Prods., 372 F.3d 913, 931 (7th Cir. 2004) (internal citation omitted).
54. PAUL GOLDSTEIN, COPYRIGHT: PRINCIPLES, LAW AND PRACTICE § 2.15.2, at 99 (1989). "Of the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectible pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design." Id.
55. Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1144 (2d Cir. 1987).
56. Id. at 1145.
57. Id. at 1146.
58. Id.
59. Id. at 1145.
60. Id.
61. id. at 1147.
62. Pivot Point Int'l, Inc. v. Charlene Prods., 372 F.3d 913, 915 (7th Cir. 2004).
63. Id.
64. Id. at 917 (internal quotations and citation omitted).
65. Id. at 931.
66. Id. at 932.
67. Galiano v. Harrah's Operating Co., Inc., 416 F.3d 411 (5th Cir. 2005).
68. Id. 413.
69. Id. at 419 (internal quotations and citation omitted).
70. Id. at 421.
71. Id. at 422.
72. DPPA Hearing, supra note 6, at 79-80 (testimony of Susan Scafidi).
73. See id. at 19 (testimony of David Wolfe, Creative Director, The Doneger Group).
74. 35 U.S.C. § 171 (2006). Utility patents are issued for new, non-obvious, and useful inventions. Id. §§ 101-103.
75. Id. § 173.
76. See id. §§ 101, 171;
77. U.S. PATENT & TRADEMARK OFFICE, U.S. DEPT. OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE § 1502.01 (8th ed., 6th rev. 2007) [hereinafter MPEP].
78. In re Dubois, 262 F.2d 88 (C.C.P.A. 1958);
79. see also MPEP, supra note 65, § 1502.01.
80. MPEP, supra note 65, § 1504.01 (citing Ex parte Donaldson, 26 U.S.P.Q.2d 1250 (Bd. Pat. App. & Int. 1992)).
81. in re Hruby, 373 F.2d 997, 1000 (C.C.P.A. 1967) (quoting Riter-Conley Mfg. Co. v. Aiken, 203 F. 699, 703 (3d Cir. 1913)).
82. MPEP, supra note 65, § 1504.01.
83. 35 U.S.C. § 171 (2006).
84. Spaulding v. Guardian Light Co., 267 F.2d 111, 112 (7th Cir. 1959).
85. See Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 106 F.2d 554, 559 (6th Cir. 1939) ("In order for one to be entitled to a design patent, his creation must be the product of inventive skill.")
86. 35 U.S.C. § 103 (2006);
87. see also Sidewinder Marine, Inc. v. Starbuck Kustom Boats & Prods., Inc., 597 F.2d 201 (10th Cir. 1979).
88. In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982).
89. In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996).
90. In re Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956). It is important to note, however, that the Supreme Court has, in the context of utility patents, cautioned against "rigid" application of the requirement for a suggestion to combine. KSR Infl Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
91. Daniel H. Brean, Enough is Enough: Time to Eliminate Design Patents and Rely on More Appropriate Copyright and Trademark Protection for Product Designs, 16 TEX. INTELL. PROP. L.J. 325, 338 (2008) ("The standards of novelty and nonobviousness in design patent law are much more stringent than the standard of originality in copyright. The final requirement to obtain a design patent is nonobviousness, and it is the most difficult requirement to meet⋯ it can be 'exceedingly difficult'for designers to prove nonobviousness unless their designs are truly extraordinary, outstanding, or remarkable.").
92. Application of Zahn, 617 F.2d 261 (C.C.P.A. 1980).
93. L.A. Gear, Inc. v. Thorn McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir.1993).
94. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (Fed. Cir. 1989).
95. In re Carletti, 328 F.2d 1020, 1022 (C.C.P.A. 1964).
96. Id.
97. MPEP, supra note 65, § 1504.01(c) (citing Smith v. M & B Sales & Mfg., 13 U.S.P.Q.2d 2002, 2004 (N.D. Cal. 1990)).
98. See 28 U.S.C. § 1295(a) (2006).
99. L.A. Gear Inc. v. Thorn McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir.1993).
100. Id.
101. See, e.g., Christine Magdo, Protecting Works of Fashion from Design Piracy 8 (2002), available at http://leda.law.harvard.edu/leda/ data/36/MAGDO.pdf; Brandon Scruggs, Should Fashion Design Be Copyrightable?, 6.NW. J. TECH. & INTELL. PROP. 122, 134 (2007).
102. Magdo, supra note 87, at 10-11.
103. Day, supra note 24, at 251.
104. See L.A. Gear, 988 F.2d at 1123; Avia Group Int'l v. L.A. Gear California, Inc., 853 F.2d 1557 (Fed. Cir. 1988) (holding that design patents covering ornamental design of athletic shoe were valid and enforceable); Rockport Co., Inc., v. Deer Stags, Inc., 65 F. Supp. 2d 189 (S.D.N.Y. 1999);
105. see also Gold Seal Importers, Inc. v. Morris White Fashions, Inc., 124 F.2d 141 (2d Cir. 1941) (court found design patent covering a women's handbag invalid due to lack of inventiveness, not because handbag was improper subject matter).
106. U.S. Patent No. D566, 928 Fig. 1 (filed Aug. 16, 2007; issued Apr. 22, 2008).
107. U.S. Patent No. D547, 927 Fig. 3 (filed Oct. 6, 2005; issued Aug. 7, 2007).
108. See infra Part II.A.3.
109. The DPPA provides that "fashion design" would be subject to protection under Title 17, Chapter 13. S. 2(a)(1). Chapter 13 does not extend copyright protection of Title 17, Chapter 1 to fashion design; rather, design protection is a sui generis protection created by Chapter 13. See 17 U.S.C. § 1301(a) (2006).
110. H. R. 2033, 110th Cong. § 2(a)(2)(B) (2007);
111. S. 1957, 110th Cong. § 2(a)(2)(B) (2007).
112. H. R. 2033, 110th Cong. § 2(a)(2)(B) (2007);
113. S. 1957, 110th Cong. § 2(a)(2)(B) (2007).
114. 17 U.S.C. § 1302(4) (2006) (emphasis added).
115. Id. § 1302(1).
116. Id. § 1301(b)(1).
117. Id. § 1302(2).
118. Id. § 1302(3).
119. Id. § 1303.
120. Id.
121. H.R. 2033, 110th Cong. § 2(c) (2007);
122. S. 1957, 110th Cong. § 2(c) (2007). The date of commencement is the earlier of the date on which the design is first made public or the date on which registration is published. 17 U.S.C. § 1304 (2000).
123. 17 U.S.C. § 1329 (2006).
124. Id. §§ 102, 408(a); In re World Auxiliary Power Co., 303 F.3d 1120, 1131 (9th Cir. 2002);
125. see also H.R. REP. NO. 94-1476, at 52 (1976).
126. 17 u.S.C. § 411(a) (2006). It should be noted 17 U.S.C. § 411(a) also provides that registration is not necessary for actions brought for a violation of moral rights established for authors under 17 U.S.C. § 106A. Id. § 411(a).
127. Id. § 412.
128. Id.
129. Id. § 408(a).
130. Id. § 409.
131. Id. § 410(a).
132. Id.
133. Id. § 410(c).
134. SHAE IRVING, NOLO'S ENCYCLOPEDIA OF EVERYDAY LAW 151 (7th ed. 2008).
135. LEWIS LEE & J. SCOTT DAVIDSON, INTELLECTUAL PROPERTY FOR THE INTERNET § 4.15 (1997).
136. TIM WHITSETT, MUSIC PUBLISHING: THE REAL ROAD TO MUSIC BUSINESS SUCCESS 54 (6th ed. 2004).
137. LEE & DAVIDSON, supra note 116, § 4.15.
138. U.S. Copyright Office, Copyright Circular 4: Copyright Office Fees, available at http://www.copyright.gov/fls/s14.pdf (last visited May 28, 2008).
139. U.S. Patent & Trademark Office, U.S. Dept. of Commerce, A Guide to Filing a Design Patent Application 1, available at http://wwwl.uspto.gov/go/com/iip/pdf/brochure-05.pdf (last visited May 28, 2008) [hereinafter DESIGN PATENT GUIDE].
140. DESIGN PATENT GUIDE, supra note 120, at 5.
141. Id. A knowledgeable applicant may successfully prosecute his or her own application. However, while persons not skilled in this work may obtain a patent in many cases, there is no assurance that the patent obtained would adequately protect the particular design. Id.
142. Id. at 5; see also 35 U.S.C. §§ 102, 103 (2006).
143. Id. § 102(b).
144. Id.
145. DESIGN PATENT GUIDE, supra note 120, at 5.
146. Id.
147. Id.
148. Id.
149. DESIGN PATENT GUIDE, supra note 120, at 6.
150. See MPEP, supra note 65, § 1501.
151. U.S. Patent & Trademark Office, U.S. Dept. of Commerce, FY 2007 Fee Schedule, available at http://www.uspto.gov/go/fees/fee2007february01.htm (last modified July 31, 2007), 2008) [hereinafter PTO Fee Schedule]. Each application must be accompanied by a filing fee, search fee, and examination fee. For a "small entity," the filing fee is $100.00, the search fee is $50.00, and the examination fee is $65.00. Id. A "small entity" is a business whose number of employees does not exceed 500; all other businesses are large entities. 13 C.F.R. § 121.802 (2005).
152. PTO Fee Schedule, supra note 132. For a large entity, the following fees apply: a filing fee of $200.00, a search fee of $100.00, and an examination fee of $130.00. Id.
153. Id.
154. Id.
155. U.S. Patent & Trademark Office, U.S. Dept. of Commerce, Design Patents Report 1/1977-12/2007, available at http://www.uspto.gov/web/ offices/ac/ido/oeip/taf/design.pdf (last visited May 28, 2008) [hereinafter Design Patents Report].
156. See 17 U.S.C. §§ 1310(c), 1331 (2006).
157. Id. § 1310(d).
158. See id. § 1313(a); see also supra Part II.B.l. Congress consulted with the Copyright Office about the registration process proposed under H.R. 5055, and it was hoped that the process would be performed in the following way: "Following the European system, which is to take a digital picture of the design, front and back; have that digital picture emailed to the Copyright Office; and then it would be registered. It is just that simple. A fee would be paid. It is not obstreperous. It is not a difficult thing to do. It is not particularly time consuming." DPPA Hearing, supra note 6, at 185 (testimony of Jeffrey Banks, Fashion Designer, on behalf of the Council of Fashion Designers of America).
159. See 17 U.S.C. § 1313(a) (2006).
160. Id. § 1314.
161. Id. § 1316.
162. Id. § 1304.
163. H.R. 5055,109th Cong. § 2(b) (2006);
164. S. 1957,110th Cong. § 2(b), (e) (2007);
165. H.R. 2033, 110th Cong. § 2(e) (2007). A design is "made public" when a useful article embodying the design is publicly exhibited, distributed, or offered for individual or public sale or sold to the public. 17 U.S.C. § 1310(b) (2006).
166. 17 U.S.C. § 1321 (2006).
167. Id. § 401(a).
168. Id. § 401(b).
169. See Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853; Charles Gamier, Paris v. Andin Int'l, Inc., 844 F. Supp. 89 (D.R.I. 1994) (describing the Berne Convention Implementation Act).
170. 17 U.S.C. § 401(d) (2006).
171. Id. § 287(a). The permission to mark applies to both utility and design patents. "Upon review of statute, legislative history, policy, and precedent, we conclude that the marking requirement, § 287(a), applies to design patents whether remedy for infringement is sought under § 284 or § 289." Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998).
172. See 35 U.S.C. § 292 (2006). Care should be taken, of course, to not mark an article "patent pending" if in fact no patent applicant to cover the article has been submitted. Id.
173. Id. § 287(a); see also Gen. Elec. Co. v. Sciaky Bros., Inc., 304 F.2d 724 (6th Cir. 1962).
174. 35 U.S.C. § 283 (2006).
175. See 17 id. § 1306(a).
176. Id. § 1306(a).
177. Id. § 1306(b).
178. See id. §§ 1307, 1322, 1323.
179. See id. §§ 1307, 1323.
180. Id. § 1307(b).
181. Id. § 1307.
182. Id. § 106.
183. Id. § 501.
184. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995).
185. Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003).
186. Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir. 1994).
187. P&G v. Colgate-Palmolive Co., 199 F.3d 74, 76 (2d Cir. 1999).
188. Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 766 (2d Cir.1991) (quoting Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977)).
189. peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).
190. Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1002 (2d Cir. 1995).
191. Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990).
192. Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).
193. Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).
194. 35 U.S.C. § 271(a) (2006).
195. Id.
196. Blair v. Westinghouse Elec., Corp., 291 F. Supp. 664, 670 (D.D.C. 1968) ("It is, of course, elementary, that an infringement may be entirely inadvertent and unintentional and without knowledge of the patent. In this respect the law of patents is entirely different from the law of copyright.").
197. 35 U.S.C. § 284 (2006);
198. see also Avia Group Int'l v. L.A. Gear California, Inc., 853 F.2d 1557, 1566 (Fed. Cir. 1988).
199. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002).
200. Door-Master Corp. v. Yorktown, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).
201. Contessa Food Prods., 282 F.3d at 1376.
202. Oddz On Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
203. Contessa Food Prods., 282 F.3d at 1376.
204. Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116 (Fed. Cir. 1998).
205. Id. at 1116.
206. Id. at 1116-17.
207. Id. at 1118.
208. Hosley Int'l Trading Corp. v. K Mart Corp., 237 F. Supp. 2d 907, 913 (N.D. 111. 2002). In 2007, the Federal Circuit stated that for a combination of known elements to constitute a point of novelty, the combination must be a "non-trivial advance over the prior art." Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed Cir. 2007). However, this decision was vacated. Egyp-tian Goddess, Inc. v. Swisa, Inc., 256 Fed. App'x 357 (Fed. Cir. 2007). The Federal Circuit later affirmed the district court. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).
209. Lawman Armor Corp. v. Winner Int'l, LLC, 437 F.3d 1383, 1386 (Fed. Cir. 2006).
210. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1287 (Fed. Cir. 2002).
211. Brief of Amici Curiae for American Intellectual Property Association in Support off Neither Party at 2, Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed Cir. 2007), available at 2008 WL 644360.
212. 17 U.S.C. §1308 (2006).
213. Id. § 1309.
214. Id. § 1309(e).
215. Id.
216. Id. § 1309(c); H.R. 2033, 110th Cong. § 2(d)(1) (2007);
217. S. 1957, 110th Cong. § 2(d)(1) (2007);
218. see also 17 U.S.C. § 1307 (2006).
219. S. 1957,110th Cong. § 2(d)(2)(C) (2007) (emphasis added).
220. H.R. 2033, 110th Cong. § 2(d)(2)(C) (2007);
221. 17 U.S.C. § 1309(e) (2006).
222. H.R. REP. NO. 94-1476, at 55 (1976).
223. 35 U.S.C. § 171 (2006).
224. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148 (Fed. Cir. 1989).
225. H.R. 2033,110th Cong. § 2(a)(2)(B) (2007);
226. S. 1957, 110th Cong. § 2(a)(2)(B) (2007).
227. 17 U.S.C. § 1302(4) (2006).
228. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
229. Spaulding v. Guardian Light Co., 267 F.2d 111, 121 (7th Cir. 1959).
230. 35 U.S.C. § 103 (2006).
231. 17 id. § 1301(b)(1).
232. Id. § 302(a).
233. 35 id. § 173.
234. H.R. 2033, 110th Cong. § 2(c) (2007);
235. S. 1957, 110th Cong. § 2(c) (2007).
236. See supra Part II.B.1.
237. See supra Part II.B.2.
238. See supra part II.B.3.
239. 17 U.S.C. §§ 102, 411 (2006).
240. Id. § 412.
241. 35 id. § 102(b).
242. 17 id. § 1321.
243. H.R. 5055, 109th Cong. § 2(b) (2006);
244. S. 1957, 110th Cong. § 2(b), (e) (2007);
245. H.R. 2033, 110th Cong. § 2(e).
246. 17 U.S.C. § 401(a) (2006).
247. Id. § 401(d).
248. 35 id. § 287(a); see also General Elec. Co. v. Sciaky Bros., Inc., 304 F.2d 724 (6th Cir. 1962).
249. 17 U.S.C. §§ 1307, 1323 (2006)
250. Id. § 1307.
251. Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1002 (2d Cir. 1995).
252. Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003).
253. p&G v. Colgate-Palmolive Co., 199 F.3d 74, 76 (2d Cir. N.Y. 1999).
254. Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 766 (2d Cir.1991) (quoting Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977)).
255. Blair v. Westinghouse Elec. Corp., 291 F. Supp. 664, 670 (D.D.C. 1968).
256. Door-Master Corp. v. Yorktown, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001).
257. Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1118 (Fed. Cir. 1998).
258. 17 U.S.C. § 1309(e) (2006).
259. H.R. 2033, 110th Cong. § 2(d)(2) (2007);
260. 17 U.S.C. § 1309(e) (2006).
261. S. 1957,110th Cong. § 2(d)(2)(C) (2007).
262. Act of Mar. 4, 1909, Pub. L. No. 60-349, §§ 10, 12, 35 Stat. 1078.
263. See 17 U.S.C. §§ 102, 401, 408 (2006);
264. see also Richard A. Epstein, The Dubious Constitutionality of the Copyright Term Extension Act, 36 LOY. L.A. L. REV. 123, 124 (2002) (describing the transition from "opt-in" to "opt-out," and bemoaning that the copyright system "has flipped over from a system that protected only rights that were claimed to one that vests all rights, whether claimed or not"); Kahle v. Gonzalez, 487 F.3d 697, 699 (9th Cir. 2007) (in arguing a First Amendment challenge to changes in copyright law, plaintiffs noted the shift from an "opt-in" to an "opt-out" system).
265. See Act of Aug. 29, 1842, ch. 263, § 3, 5 Stat. 544 (announcing that any person Seeking a patent to cover a "new and original design for a manufacture" should "make application in writing to the Commissioner of Patents expressing such desire"); 35 U.S.C. § 171 (2006);
266. MPEP, supra note 65, § 1503. The Act of Aug. 29, 1842 was the first U.S. design patent law. Tyler T. Ochoa, Patent and Copyright Term Extension and the Constitution: A Historical Perspective, 49 J. COPYRIGHT SOC'Y 19, 86 (2001).
267. See, e.g., 35 U.S.C. § 102(b) (2006). Similarly, the Canadian Patent Act provides that prior art which can be used to determine patentability includes information made "available to the public" by the applicant "more than one year before the filing date" of an application. Prior art therefore does not include disclosures made by the applicant within the year prior to application. Canadian Patent Act § 28.3 (1993).
268. See, e.g., European Patent Convention of 1973 art. 54(2). The European Patent Office explains that, except in rare instances, "any disclosure of the invention before the date of filing may be cited against the applicant as forming part of the state of the art, even if the applicant himself was responsible for the disclosure." European Patent Office, How to Get a European Patent, http://www.epo.org/patents/law/legal-texts/html/guiapp1/ e/ga-b-ii-l.htm (last visited May 28, 2008).
269. Patrick J. Barrett, New Guidelines for Applying the On Sale Bar to Patentability, 24 STAN. L. REV. 730,733 (1972) ("Thus, actual or attempted sales of an invention may cause the public to reasonably rely on the belief that the information disclosed is in the public domain. If, on the basis of such disclosure, members of the public do start making, using, or selling the invention, the granting of a patent on the invention will be to their detriment. The patentee ⋯ can prevent them from using the invention further, causing them to lose a portion or even all of their investment."). See also William C. Rooklidge, The On Sale and Public Use Bars to Patentability: The Policies Reexamined, 1 FED. CIR. B.J. 7, 17 (1991).
270. For example: under current U.S. copyright law, if the public is exposed to a work, the work is either protected or protection has expired. See 17 U.S.C. §§ 102, 302, 408(a) (2006). It should be noted this is true with respect to current law, and with respect to new works created under current law. In 1994, Congress enacted 17 U.S.C. § 104A, which restored U.S. copyrights in some foreign works whose U.S. copyrights had expired. William Gable, Restoration of Copyrights: Dueling Trolls and Other Oddities Under Section 104A of the Copyright Act, 29 COLUM. J.L. & ARTS 181, 182 (2005). It is possible that Congress could (or at least could attempt to) restore copyright protection to domestic works whose terms of protection have expired. Id. at 187-88. If Congress were to do so, then those who have relied on works as being in the public domain could be adversely affected, for reasons similar to those mentioned in supra note 237.
271. 17 U.S.C. §§ 102, 302, 408(a) (2006).
272. See supra note 30 and accompanying text.
273. Christopher Sprigman, Reform(aliz)ing Copyright, 57 STAN. L. REV. 485, 516-17 (2004) (stating that "tales of hardship arising from accidental noncompli-ance abound in the historical copyright literature," and acknowledging that "many would prefer that noncompliance with formalities reflect an informed decision, rather than a mistake"); Shira Perlmutter, Freeing Copyright from Formalities, 13 CARDOZO ARTS & ENT. L.J. 565, 582 (1993) (mentioning that authors could lose protection for failing to comply with formalities, even where "their failure to comply is the result of ignorance, mistake or impossibility"); Kenneth D. Hurwitz, Omission of Copyright Notice Under Section 405(a): What Kind of Oxymoron Makes a Deliberate Error?, 60 N.Y.U. L. REV. 956, 957 (1985) ("[L]oss of copyright may result from ignorance of the notice requirements or of the formal elements of notice necessary to comply."); see also infra note 258 and accompanying text (pointing out cases involving the "on sale" bar of 35 U.S.C. 102(b)).
274. See supra note 17 and accompanying text.
275. H.R. 5055,109th Cong. § 2(b) (2006);
276. S. 1957, 110th Cong. § 2(b), (e) (2007);
277. H.R. 2033, 110th Cong. § 2(e) (2007).
278. 17 U.S.C. §§ 1307, 1323 (2006).
279. Id. § 1321. This Part does not argue that this formality be removed, because it would not have an adverse impact on designers but does serve a valuable public purpose. The registration process would likely be straightforward and inexpensive, similar to the registration for copyright. See supra Part II.B.1; supra Part II.B.3. While it is foreseeable (if not likely) that designers would lose protection due to the three-month "made public" bar, see supra note 242, it is difficult to believe that a designer who (with the aid of an attorney) is preparing to file a lawsuit will not have the resources or wherewithal to register their design before filing the suit. In a copyright lawsuit, registration serves the valuable evidentiary purpose of allowing a determination of whether the work which the plaintiff claims to have been infringed is the same work in which copyright was originally claimed. Nat'l Conference of Bar Examiners v. Multistate Legal Studies, Inc., 692 R2d 478, 486 (7th Cir. 1982). The value of the this requirement would far outweigh the minor inconvenience it would impose on designers.
280. See supra note 242 and accompanying text.
281. H.R. 5055, S. 1957, and H.R. 2033 were very well-publicized, receiving attention in newspapers from the L.A. Times to the N.Y. Post. If the DPPA were to be enacted into law, that event - as well as details of the protection offered by the DPPA - would have also likely be well-publicized. See, e.g., Emili Vesilind, Under the Label: The New Pirates, L.A. TIMES, Jan. 1, 2007, at 6;
282. Robin Givhan, Time to Wear More Than One Hat, WASH. POST, Feb. 1, 2008;
283. Lauren Falcone, Tim Gunn Shares Passion for Fashion, BOSTON HERALD, Sept. 9, 2007, at 28;
284. Alexis Miller, Knocking off Knockoffs: Congress Takes Aim at Counterfeit Couture, PROVIDENCE J.-BULL, Aug. 14, 2007, at F2;
285. Proposed Bill Would Limit Availability of Knockoffs, POST-TRIBUNE (Northwest Ind.), Aug. 13, 2007, at D3;
286. Karen Matthews, Designers Want Fashion Copycats'to Knock It Off, CHI. TRIB., Aug. 9, 2007, at 9.
287. Serena French, Knoctilt Offl - Fashiön Fight's Back at the Year of the Copycat; Counterfeit Counterattack, N.Y. POST, May 1, 2007, at 41.
288. see H.R. 5055, 109th Cong. § 2(b) (2006);
289. S. 1957," 110th Cong. § 2(b), (e) (2007);
290. H.R. 2033, 110th Cong. § 2(e) (2007);
291. 35 U.S.C. § 102(b).
292. See Patrick J. Barrett, New Guidelines for Applying the On Sale Bar to Patentability, 24 STAN. L. REV. 730, 733 (1972);
293. see also William C. Rooklidge, The On Sale and Public Use Bars to Patentability: The Policies Reexamined, 1 FED. CIR. B.J. 7, 7 (1991).
294. Gen. Elec. Co. v. United States, 654 F.2d 55, 60 n.6 (Ct. Cl. 1981).
295. See supra note 238 and accompanying text.
296. Barrett, supra note 249, at 733. "An inventor would certainly have the best of two worlds if he could commercially exploit his invention without disclosing it for an indefinite amount of time before he applied for a patent, giving him an additional seventeen years of exclusive rights." Id. at 734.
297. See also Bo-nito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (Fed. Cir. 1989) ("The federal patent system thus embodies a carefully crafted bargain, for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.").
298. See supra note 247 and accompanying text.
299. An example of this would be U.S. Patent No. 6,013,863 (filed Apr. 21, 1997), entitled "Fertile Transgenic Corn Plants." This patent does not claim a transgenic corn plant, but claims a method for producing a transgenic corn plant. It would be possible to sell the product of this method - the corn plants - without disclosing the method of producing the plants to the buyer.
300. H.R. 2033, 110th Cong. § 2(b), (e) (2007);
301. S. 1957, 110th Cong. § 2(b), (e)(2007).
302. See Pamela Pun, Ports Proves Fashion Winner, STANDARD (China), Sept. 18, 2002, available at 2002 WLNR 7600604 (a spokesman from Ports International, a fashion design house, mentions that his employer has a legal department' for enforcing intellectual property rights); Lisa J. Hedrick, Tearing Fashion Design Protection Apart at The Seams, 65 WASH. & LEE L. REV. 215, 258 (2008) (discussing how a company may be inclined to "file registrations for hundreds of designs that vary only slightly to ensure protection of a design and its derivatives").
303. See Katherine E. White, A General Rule of Law is Needed to Define Public Use in Patent Cases, 88 KY. L.J. 423 (2000) (citing examples of cases involving the 102(b) "public use" bar); Frank Albert, Reformulating the On Sale Bar, 28 HASTINGS COMM. & ENT. L.J. 81 (2005) (also citing examples of cases involving the "on sale" bar); Jason Smith, The Interaction of the 35 U.S.C. § 102(b) On-Sale Bar and IP Licensing: Differentiating Licenses from Commercial Sales, 11 J. TECH. L. & POL'Y 313 (2006) (again, citing examples of cases involving the "on sale" bar). A quick survey of recent cases reveals that 35 U.S.C. § 102(b) is alive and well. See, e.g., Cognex Corp. v. VCode Holdings, Inc., slip op, Civ. No. 06-1040 (JNE/JJG), 2008 WL 2113661
304. (D. Minn. May 19, 2008) (at summary judgment, invalidating a number of claims of U.S. Patent No. 5,612,524 due to violations of both the "on sale" and "public use" bars); Zenith Elecs. Corp. v. PDI Commc'ns Sys., Inc., 522 F.3d 1348, 1357-59 (Fed. Cir. 2008) (affirming district court conclusion that claim 1 of U.S. Patent No. 5,495,301 is invalid due to violation of the "on sale" bar); Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361 (Fed. Cir. 2008) (invalidating claim 32 of U.S. Patent No. 6,834,603 due to violation of the "on sale" bar).
305. In the DPPA as proposed, a design can be made public in a number of ways, including if the design is "publicly exhibited" or "publicly distributed." 17 U.S.C. § 1310(b) (2006). The DPPA does not, however, further define "publicly." In the copyright context, the term "public" in the context of public performances has managed to evade a bright-line definition. See Daniel Cantor, How Many Guests May Attend a Wedding Reception Before ASCAP Shows Up? Or, What Are the Limits of the Definition of Perform "Publicly" Under 17 U.S.C. §101?, 27 COLUM. J.L. & ARTS 79 (2003). While Congress and the courts will likely provide guideposts as to uses of designs that are clearly "public" and those that are clearly not "public," the term "public" generally does not lend itself to clear and exhaustive definition. In copyright, the definition of "publicly" can in turn depend upon the rather fuzzy concept of a "normal circle of a family and its social acquaintances." Cantor, supra, at 95-97. A "family circle" has been defined by the courts in a number of different ways, including: a family unit parents living with their children; a group of people living under one roof as a "family" regardless of blood relations; a family with grown children living on their own; and a broad set of relations living apart. Id. at 97-98.
306. Blackmon, supra note 19, at 135 n.165 ("In the fashion world, the use of an article in a fashion magazine, a runway show, or an appearance on a red carpet would be enough to constitüte publication.").
307. Some fashion shows are labeled by the fashion industry as "private," but would likely be considered "public" for, the purposes of copyright. See, e.g., Kate Monahan, Homecoming Queen, WAIKATO TIMES, NOV. 14, 2007, at 3, available at 2007 WLNR 22736867 (reporting that New Zealand designer Yvonne Bennetti was asked, to do a "private" fashion show for Audi); Le-ane Bell, Milan: The Event Planner's Guide to ⋯ the Best of Milan, CONF. & INCENTIVE TRAVEL 73, Nov. 13, 2007, at 73, available at 2007 WLNR 22429063 (reporting that tourist groups can arrange for "private" fashion shows in Milan); Robert Khan, Fashion Week: Spring '08. NEWSDAY (Long Island), Sept. 7, 2007, at F04, available at 2007 WLNR 17464528 (mentioning a "private" fashion show given by Donatella Versace); supra note 258 and accompanying text.
308. 17 U.S.C. §§ 1307, 1323 (2006).
309. In the patent context, the Federal Circuit has identified a number of purposes for the marking requirement, including the purpose of aiding to identify to the public whether an article is protected. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998). Similarly, when U.S. copyright law was an "opt-in" system, publication without notice was seen as evidence of "an author's intent to forego legal title to the work and to 'dedicate' the work to the public domain." Hurwitz, supra note 241, at 956.
310. The House Report accompanying the 1976 Copyright Act explained one of the rationales of the mandatory notice requirement: "[A] person acting in good faith and with no reason to think otherwise should ordinarily be able to assume that a work is in the public domain if there is no notice on an authorized copy or phonorecord and ⋯ if he relies on this assumption, he should be shielded from unreasonable liability." H.R. REP. NO. 94-1476, at 148 (1976).
311. 17 U.S.C. § 1309(c); H.R. 2033, 110th Cong. § 2(d)(1) (2007);
312. S. 1957, 110th Cong. § 2(d)(1) (2007).
313. See supra note 247 and accompanying text.
314. See 17 U.S.C. §§ 1307, 1323 (2006).
315. See 17 U.S.C. §§ 1307, 1323 (2006).
316. See 17 U.S.C. §§ 1307, 1323 (2006).
317. It should be noted that this Part does not argue that marking should not be permitted. Rather, marking should be purely permissive and remedies should not depend on marking.
318. DPPA Hearing, supra note 6, at 84 (testimony of Professor Susan Scafidi).
319. Id. at 210 (prepared statement of the U.S. Copyright Office). The Copyright Office felt that a three-year term was "modest" and "reasonable," although was not convinced of the underlying idea that the DPPA is necessary. Id.
320. Blackmon, supra note 19, at 156.
321. Leslie J. Hagin, A Comparative Analysis of Copyright Laws Applied to Fashion Works: Renewing the Proposal for Folding Fashion Works into the United States Copyright Regime, 26 TEX. INT'L L.J. 341, 347 (1991).
322. 35 U.S.C. § 173 (2006).
323. Council Directive 98/71 art. 10, 1998 OJ. (L 289) 28 (EC).
324. S. 1957, 110th Cong. § 2(d)(2) (2007) (emphasis added).
325. H.R. 2033, 110th Cong. §2(d)(2) (2007);
326. 17 U.S.C. § 1309(e) (2006).
327. See supra note 16 and accompanying text.
328. Selle v. Gibb, 741 F.2d 896, 901 (7th Cir. 1984).
329. Id. at 903.
330. Id. at 904 (internal quotations and citations omitted).
331. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002).
332. Id. at 1376.
333. Hosley Int'l Trading Corp. v. K Mart Corp., 237 F. Supp. 2d 907, 913 (N.D. 111. 2002).
334. Brief of Amici Curiae for American Intellectual Property Association in Support off Neither Party at 2, Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed Cir. 2007), available at 2008 WL 644360.
335. See Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1287 (Fed. Cir. 2002).
336. See supra notes 14-16 and accompanying text.
337. Ellis, supra note 18, at 3 (reporting that the American Apparel & Footwear Association disagrees with the Council of Fashion Designers of America as to whether the DPPA as proposed should pass).
338. See Benjamin T. Hickman, Can You Find a Home For This "Orphan" Copyright Work? A Statutory Solution For Copyright-Protected Works Whose Owners Cannot Be Located, 57 SYRACUSE L. REV. 123, 131 (2006) (noting that while copyright formalities were in some ways helpful, "many owners believed they were unfair").
339. See supra note 241.
340. DPPA Hearing, supra note 6, at 84 (prepared statement of Professor Susan Scafidi).