Abstract
This chapter provides an overview of the history of design protection in the United States of America (US), in particular, the historical development of the design patent system. The chapter first looks at the background and legislative process leading up to the enactment of the 1842 Act, the first design protection law in the US. The features of the 1842 Act are described and discussed, its various revisions are outlined, and design practice is briefly considered as background to the legislation. This history shows us that the development of design patent law—especially in relation to utility patent law—has had many twists and turns. The final section of the chapter provides an overview of current design patent law and briefly mentions other design protection laws, namely copyright and trade dress.
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Notes
- 1.
15 U.S.C. §1051 et seq. Trademark and unfair competition laws under relevant state law are also relevant.
- 2.
- 3.
See Pulos (1983), p. 133: ‘By 1840 manufacturers had realized that what Bishop refers to as the “Polite, Fine and Ornamental Arts” had become an indispens[a]ble ingredient in the success of domestic furnishings. They realized that, although the consumer might not always understand the mechanism or construction of a manufactured product, he felt that he could always depend upon what his senses told him about it. They realized that the consumer would always seek to elevate his taste by purchasing fashionable products that reflected a higher level of aesthetic appreciation. […] Many others […] began to pay particular attention to the notion that artistic values applied to utilitarian manufactures might also increase their saleability’. See also Du Mont and Janis (2013), p. 851. Jason J. Du Mont and Mark D. Janis point out that industry in general, not only manufacturers in the field of iron casting, had begun to pay more attention to industrial design.
- 4.
See Pulos (1983), p. 134: ‘It would seem that American manufacturers were too dependent upon imported inspiration to tolerate any interference with their practice of borrowing and putting out for sale any newly imported design, especially in the area of fabrics, as soon as it became or threatened to become popular. American mills, operating behind a shield of domestic tariffs, were so adept at copying foreign designs and so quick to get them to market that the best of the imports were quickly beaten out of their fair market’.
- 5.
An Act to Secure to Proprietors of Designs for Articles of Manufacture the Copyright of Such Designs for a Limited Time, (1839) 2 Vict, c. 17.
- 6.
- 7.
- 8.
See Du Mont and Janis (2013), pp. 848–873.
- 9.
JORDAN L. MOTT ET AL., PETITION OF A NUMBER OF MANUFACTURERS AND MECHANICS OF THE UNITED STATES, PRAYING THE ADAPTION OF MEASURES TO SECURE TO THEM THEIR RIGHTS IN PATTERNS AND DESIGNS, S. Doc. No. 154 (2d Sess 1841) (Manufacturers’ Petition).
- 10.
It was Senator Ruggles who presented the petition to Congress (Cong Globe, 26th Cong., 2nd Sess., 139 (1841)): Du Mont J and Janis M (2013), p. 858.
- 11.
Manufacturers’ Petition, p. 1.
- 12.
Du Mont and Janis (2013), p. 856.
- 13.
Mueller and Brean (2010), p. 449.
- 14.
Du Mont and Janis (2013), pp. 858–863.
- 15.
REPORT FROM THE COMMISSIONER OF PATENTS, SHOWING The operations of the Patent Office during the year 1841, S. Doc. No. 169, p. 2 (2d Sess. 1842) (Report from the Commissioner).
- 16.
Report from the Commissioner.
- 17.
Hudson (1948), p. 380.
- 18.
- 19.
Report from the Commissioner.
- 20.
- 21.
Du Mont (2009), p. 542.
- 22.
Mueller and Brean (2010), p. 451.
- 23.
Act of 29 Aug 1842, Ch 263, §3, 5 Stat. 543, 543–544 (1842).
- 24.
Du Mont and Janis (2018), pp. 345–346.
- 25.
McKenna and Strandburg (2013), p. 36.
- 26.
McKenna and Strandburg (2013), p. 36.
- 27.
Mueller and Brean (2010), p. 453.
- 28.
Mueller and Brean (2010), p. 454; McKenna and Strandburg (2013), p. 32: ‘Thus, at the time the design patent statute was enacted, the patentability standard appears to have required only rather minimal advances and, most importantly, paid no attention to whether the invention went beyond what the market would have produced in the ordinary course’.
- 29.
Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1850): ‘unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor’.
- 30.
Burstein (2012), p. 177.
- 31.
- 32.
Du Mont and Janis (2013), p. 868.
- 33.
Du Mont and Janis (2013), pp. 866–868.
- 34.
Jason J. Du Mont has made the same point: Du Mont (2009), p. 544.
- 35.
Du Mont (2009), p. 546.
- 36.
Act of 2 Mar 1861, Ch 88, §11, 12 Stat. 246, 248 (1861).
- 37.
- 38.
Du Mont (2009), p. 547.
- 39.
Du Mont (2009), p. 548.
- 40.
Act of 8 July 1870, Ch. 230, §§71–76, 16 Stat. 198, 209–210 (1870).
- 41.
Chisum (2021), §23.02, n. 4.
- 42.
Du Mont and Janis (2013), p. 873: ‘Consistent with protectionist ambitions, the Senate amended the pending 1842 design patent legislation in order to limit design patent protection to citizens or aliens who resided in the United States and intended to become citizens.[…] The citizenship provision was likely far more important to the ultimate passage of the legislation than the suggestion to incorporate patent law rules.’
- 43.
Magliocca (2003), p. 876: ‘There is no legislative history to indicate why Congress made the alteration, and it does seem unlikely that such a major policy shift would have been undertaken without any discussion at all’. Du Mont (2009), p. 565 n. 203: ‘Unfortunately, there is very little legislative history for this Act’.
- 44.
McKenna and Strandburg (2013), p. 38.
- 45.
Act of 8 July 1870, Ch. 230, §§86, 16 Stat. 198, 212 (1870).
- 46.
Mazer v. Stein, 347 U.S. 201, 209 (1954): ‘The Act of 1870 defined copyrightable subject matter as: “[…] any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statue, statuary, and of models or designs intended to be perfected as works of the fine arts.” (Emphasis supplied.) The italicized part added three-dimensional works of art to what had been protected previously.’
- 47.
Du Mont and Janis (2018), p. 361.
- 48.
- 49.
Even before the 1870 Act, the Crane case provides an example of this: Ex parte Crane, 1869 Dec. Comm’r Pat. 7 (1869) reprinted in Simonds (1874), pp. 59–61.
- 50.
Gorham Mfg. Co. v. White, 81 U.S. 511 (1871).
- 51.
81 U.S. 511, 524. However, this reference does not necessarily support the adoption of a patent-like system ‘since analogous constitutional language would be used to justify a design copyright scheme’: Du Mont and Janis (2013), p. 845.
- 52.
81 U.S. 511, 528: ‘We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other’.
- 53.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008).
- 54.
Hudson (1948), p. 384.
- 55.
Act of 8 July 1870, Ch. 230, §71, 16 Stat. 198, 209–210 (1870).
- 56.
Revised Statutes of the United States, Passed at the First Session of the Forty-Third Congress, 1873–’74, §4929, at 954 (2d ed. 1878).
- 57.
- 58.
Du Mont (2009), p. 575.
- 59.
Northrup v. Adams, 18 F. Cas. 374, 374 (C.C.E.D. Mich. 1877).
- 60.
Du Mont (2009), p. 578.
- 61.
Revised Statutes of the United States, Passed at the First Session of the Forty-Third Congress, 1873–’74, §4933, at 954 (2d ed. 1878).
- 62.
Du Mont (2009), pp. 581–582.
- 63.
- 64.
Lehnbeuter v. Holthaus, 105 U.S. 94, 96 (1881): ‘The design patented by the complainants differs essentially from any other which has been called to our attention. It is not covered by the other patents which are set out in the record. Whether it is more graceful or beautiful than older designs is not for us to decide. It is sufficient if it is new and useful’.
- 65.
- 66.
Smith v. Whitman Saddle Co, 148 U.S. 674, 679 (1893).
- 67.
148 U.S. 674, 681.
- 68.
Mueller and Brean (2010), p. 477.
- 69.
Mueller and Brean (2010), p. 477.
- 70.
Mueller and Brean (2010), p. 477.
- 71.
Du Mont (2009), p. 586; Burstein (2012), p. 177: ‘By the twentieth century, most courts recognized an “invention” requirement for patentable designs’.
- 72.
Act of 4 Feb 1887, Ch. 105, §§1–2, 24 Stat. 387, 387–388 (1887).
- 73.
Act of 4 Feb 1887, Ch. 105, §1, 24 Stat. 387, 387 (1887).
- 74.
Act of 4 Feb 1887, Ch. 105, §1, 24 Stat. 387, 387 (1887).
- 75.
Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885); Dobson v. Dornan, 118 U.S. 10, 6 S. Ct. 946 (1886).
- 76.
Chisum (2021), §23.05 [1][a].
- 77.
18 Cong. Rec. 834 (20 Jan 1887).
- 78.
Chisum (2021), §23.05 [1][a].
- 79.
Lemley (2013), pp. 223–224.
- 80.
Ringer (1959), p. 25.
- 81.
Ringer (1959), p. 25.
- 82.
Hudson (1948), p. 390. See Du Mont and Janis (2018), p. 373: ‘The 1902 Act was not intended to shrink the scope of subject-matter […] but it may have had that effect for some types of subject-matter. […] the Patent Office may have considered itself to have more discretion to extend design patent protection only to those statues and busts that were created for large-scale reproduction’.
- 83.
- 84.
Revised Statutes of the United States, Passed at the First Session of the Forty-Third Congress, 1873-'74, §4929, at 954 (2d ed. 1878).
- 85.
Act of 9 May 1902, Ch. 783, §4929, 32 Stat. 193 (1902).
- 86.
Du Mont (2009), p. 590.
- 87.
Du Mont (2009), p. 590. See ANNUAL REPORT OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1902, H.R. DOC. No. 324, at viii (2d Sess. 1903): ‘The operation of the new design patent law, which was approved upon the 9th day of May, 1902, has been to decrease by 1191 the number of applications for design patents, for this law has operated, as it was intended to operate, to make clear the fact that mechanical devices of little importance unaccompanied by the development of new mechanical functions were not to be protected by design patents. These patents are now restricted to those ornamental characteristics of manufactured articles which were intended primarily to be the subject for the application of this law before its employment had been widened beyond its originally-intended scope’. Hudson (1948), p. 392; Mueller and Brean (2010), p. 459.
- 88.
Du Mont (2009), p. 592.
- 89.
Mueller and Brean (2010), p. 461.
- 90.
Mueller and Brean (2010), p. 461.
- 91.
Mueller and Brean (2010), pp. 462–463.
- 92.
Act of 19 July 1952, Ch. 950, §§171–173, 289, 66 Stat. 792, 805, 813–814 (1952).
- 93.
Du Mont (2009), pp. 595–596. See Act of 19 July 1952, Ch. 950, §171, 66 Stat. 792, 805, §171: ‘Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.’
- 94.
L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993): ‘A patented design must meet the substantive criteria of patentability, including non-obviousness in accordance with the law of 35 U.S.C. §103’. In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996): ‘Design patents are subject to the same conditions on patentability as utility patents, including the non-obviousness requirement of 35 U.S.C. §103’. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996): ‘Pursuant to 35 U.S.C. §171 (1994), one may obtain a design patent for “any new, original and ornamental design for an article of manufacture.” To obtain such a patent, however, one must satisfy the patentability requirement of 35 U.S.C. §103 (1994)’. Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380 (Fed. Cir. 2009): ‘Design patents are subject to the non-obviousness requirement of 35 U.S.C. §103. See 35 U.S.C. §171’.
- 95.
See Act of 19 July 1952, Ch. 950, §103, 66 Stat. 792, 798 (1952), §103: ‘A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.’
- 96.
Du Mont (2009), p. 596.
- 97.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966): ‘We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability’.
- 98.
Burstein (2012), p. 181.
- 99.
97 P.L. 247, 96 Stat. 317.
- 100.
112 P.L. 211, 126 Stat. 1527.
- 101.
Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016).
- 102.
137 S. Ct. 429, 432.
- 103.
137 S. Ct. 429, 435.
- 104.
Ishōhō [Design Act], Act No. 125 of 13 Apr 1959 (Design Act), Art. 14.
- 105.
However, there is no unregistered design right system as under European Union law: COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1–24.
- 106.
17 U.S.C. §102 (a)(5).
- 107.
17 U.S.C. §101.
- 108.
17 U.S.C. §101.
- 109.
For example, Chosun Intern., Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 329 (2d Cir. 2005): ‘when a component of a useful article can actually be removed from the original item and separately sold, without adversely impacting the article's functionality, that physically separable design element may be copyrighted’.
- 110.
Afori O (2008), p. 1121.
- 111.
Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).
- 112.
137 S. Ct. 1002, 1009.
- 113.
137 S. Ct. 1002, 1013–14.
- 114.
137 S. Ct. 1002, 1016.
- 115.
15 U.S.C. §1125(a)(1) and (3).
- 116.
McCarthy (2021), §8:4.
- 117.
Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000).
- 118.
- 119.
Beebe (2018), p. 577.
- 120.
See discussion on the 1842 Act above.
- 121.
See, for example, Brean (2008), p. 380: ‘Ultimately, it might be more shocking and difficult to impose even a few of the above recommendations on the design patent system than it would be to abolish the system altogether’.
- 122.
See Du Mont and Janis (2018), p. 382: ‘Today, the design patent system is in its ascendancy’.
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Suemune, T. (2022). History of Design Protection in the United States of America. In: Aso, T., Rademacher, C., Dobinson, J. (eds) History of Design and Design Law. Springer, Singapore. https://doi.org/10.1007/978-981-16-8782-2_22
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