The Design of Useful Article Exclusion: A Way Out of the Mess

Abstract

This article claims that the numerous approaches to the design of useful article exclusion and its central problem of separability, though varied, share a fatal common trait: They fail to examine and serve the policy rationale of the doctrine. I argue that the sole sensible policy rationale for the design of useful article exclusion is to bar copyright protection in ideas. Under the idea-expression dichotomy, the grant of intellectual property monopolies in ideas requires satisfying the more exacting novelty and nonobviousness thresholds of the patent regime. An outgrowth of the idea-expression dichotomy, the merger doctrine bars copyright in expression when protecting expression would lead to a copyright in ideas. This could occur if there exist few forms of expression capable of efficiently effectuating an idea. Useful articles are functional manifestations of ideas. Their underlying idea is what enables them to function — in short, their use. The range of possible designs for a given useful article is constrained because the design must not interfere with the article’s functionality and its mass production. Because their range is constrained, designs of useful articles are particularly susceptible to a merger problem. The only sensible policy rationale of the DUA exclusion is to address this particularly acute merger problem by policing the border between patent and copyright and channeling the protection of functional ideas from copyright to patent. DUA doctrine should be fashioned to serve this central policy rationale: The design of a useful article should be copyrightable unless copyrighting the design would inhibit the efficient production of the article in a way that preserves its useful attributes. This reading of the DUA exclusion is the only one that makes policy sense. It is also permissible as a matter of sound statutory interpretation.

Keywords: Design of useful article exclusion; useful articles; idea-expression dichotomy; merger doctrine; copyright