Functionality Screens

86 Pages Posted: 27 Dec 2016 Last revised: 8 Nov 2017

Christopher Buccafusco

Benjamin N. Cardozo School of Law

Mark A. Lemley

Stanford Law School

Date Written: November 1, 2017

Abstract

Among intellectual property (IP) doctrines, only utility patents should protect function. Utility patents offer strong rights that place constraints on competition, but they only arise when inventors can demonstrate substantial novelty after a costly examination. Copyrights, trademarks, and design patents are much easier to obtain than utility patents, and they often last much longer. Accordingly, to prevent claimants from obtaining “backdoor patents,” the other IP doctrines must screen out functionality. As yet, however, courts and scholars have paid little systematic attention to the ways in which these functionality screens operate across and within IP law.

We have four tasks in this Article. First, we identify three separate functionality screens that IP laws use: Filtering, Exclusion, and Threshold. Second, we illustrate the use of these different screens in copyright, trademark, and design patent laws. Each law takes a different approach to screening functionality. Third, we model the relative costs and benefits of the different screening regimes, paying particular attention to administrative and error costs and how these costs affect incentives and competition. Finally, we assess the current screening regimes and offers suggestions for how they might be improved. Among other things, our analysis provides a way to resolve the dispute currently before the U.S. Supreme Court in Star Athletica LLC v. Varsity Brands, Inc. over the copyrightability of cheerleader uniforms.

Suggested Citation

Buccafusco, Christopher and Lemley, Mark A., Functionality Screens (November 1, 2017). Virginia Law Review, Forthcoming; Stanford Public Law Working Paper No. 2888094; Cardozo Legal Studies Research Paper No. 509. Available at SSRN: https://ssrn.com/abstract=2888094 or http://dx.doi.org/10.2139/ssrn.2888094

Christopher J. Buccafusco

Benjamin N. Cardozo School of Law ( email )

55 Fifth Ave.
New York, NY 10003
United States

Mark A. Lemley (Contact Author)

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

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