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Claiming Design

Design stands out among intellectual property subject matter in terms of the extent of overlapping protection available. Different forms of intellectual property usually protect different aspects of a product. In the design context, however, precisely the same features are often subject to design patent, trademark, and copyright protection—and parties commonly claim more than one of those forms. Yet, as we show, the claiming regimes of these three forms of design protection differ in significant ways: the timing of claims; claim format (particularly whether the claims are visual or verbal); the multiplicity of claims (whether and how one can make multiple claims to the same design); and the level of abstraction at which parties claim rights. These methodological differences have significant effects on the operation of each individual regime. All of the claiming regimes have significant shortcomings, particularly in terms of the quality of notice the claims provide to third parties about their scope. That notice problem is worsened, as we argue, by the frequent cumulation of rights in the same design. Claim ambiguity and parties’ ability to switch back and forth between different design claims—both within and across legal regimes—make it difficult for courts and third parties to evaluate the validity and scope of rights. There is significant irony here because intellectual property claims exist almost entirely to provide notice. Cumulation also enables design rightsholders to assert rights in one or more regimes using the claiming rules that benefit them most at a particular moment, without any risk that those claiming choices will bind them in later rights assertions.

We suggest a number of improvements to each claiming regime that would help restore internal order. We also analyze various approaches to ameliorating the amplified costs of overlapping regimes for claiming design. In particular, we focus on doctrines of election and channeling rules as alternative methods of directing designs to one regime or another. We also introduce the possibility of transsubstantive intellectual property claiming rules as a way to reduce important inconsistencies across these regimes while also allowing protection under multiple regimes. Each of these solutions would alleviate at least some of the concerns we identify, though one’s preference among them will likely depend on one’s level of concern about overlapping rights.