Ornamental Design and Incremental Innovation

product design in the manner contemplated by copyright--Cadillac tail fins do not get put on lamps or computers unless someone is trying to evoke that specific brand. Accordingly, with respect to both their underlying rationale and their application, designs look more like trademarks than copyrights. Even advocates of broad design protection who use copyright as their model concede that the actual function of esthetic designs is closer to trademarks. One supporter of a failed design reform bill in 1987 explained the issue this way in testimony before Congress: Distinctively shaped articles and parts would be protected [by the bill] serving to establish product differentiation. It would serve a function similar to trademarks in identifying the source and quality the consumer has come to expect from the source. It would overcome the natural confusion that what looks the same comes from the same source and has the same quality. 3 99. Dratler, supra note 4, at 914. 100. Id. at 915. 101. Id. at 913; see also Denicola, supra note 40, at 742-44 (making this distinction and suggesting that a commercial motivation should be what separates unprotected designs from those that receive copyright protection). 102. See Dratler, supra note 4, at 914 ("A focus on the product as a whole and its impression in the marketplace is traditionally more a feature of trademark law than of copyright law."). 103. Id. (quoting testimony of William S. Thompson, Patent Counsel, Caterpillar, Inc., representing the Industrial Design Coalition) (emphasis added). 2003] MARQUETTE LAW REVIEW This comparison with trademark rings true when we consider that product designs sometimes do nothing more than distinguish one firm's items from another. A new style might involve a feature that is particularly appealing, but often a trend is set by something that is just different from everything else. The law of product differentiation is trademark, not copyright. Given the close relationship between the foundations of trademark and designs, it is not surprising that both also share a similar test for defining their respective scopes of protection.'°' Unlike copyright infringement analyses, where the inquiry basically begins and ends with a side-by-side comparison of the two works in question, trademark and design patent infringement focus on the commercial impact of the competing works."5 While the nuances of trademark infringement doctrine were settled only forty years ago, designs were placed under a similar framework nearly a century earlier.'O In Gorham Co. v. White, the Supreme Court articulated the design patent infringement test: [I]f, 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.0 7 The key here is the Court's emphasis on the ordinary consumer and on the purchasing decision as the guideposts for design infringement. Presented with two esthetic designs, a court does not compare them in a vacuum, as is the case with copyright, but instead attempts to determine how consumers would view the designs and the commercial impression 104. See Welkowitz, supra note 15, at 343 ("[E]ven a cursory examination of the elements of trade dress infringement for product configurations and the elements of design patent infringement reveals marked similarities."). 105. The comparison with design patent is sound in this instance even though that body of law is not well-aligned with the distinctive qualities of commercial art. Due to the consumer orientation of designs, the only infringement test that makes sense is one that takes consumer impressions into account. Besides, the main problem with design patent from the pro-designer perspective is that it does not cover enough works. That criticism does not extend to the infringement test applied to those works that do qualify for design patent protection. 106. See Gorham Co. v. White, 81 U.S. 511, 528 (1871) (analyzing design patent infringement); Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (analyzing trademark infringement). 107. Gorham, 81 U.S. at 528. [86:845