Making Sense of Intellectual Property Law

Christopher Buccafusco - Chicago-Kent College of Law

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Imagine three designers working separately from one another but each producing the same thing: a ball made from floppy, elastomeric filaments that radiate from a central core region. The first designer, an engineer, creates the ball because she thinks it will be easier for small children to catch. The second designer, a visual artist, creates the ball because he believes the visual appearance of the ball symbolizes human and natural “energy.” And the third designer creates the ball because she wants to express certain ideas and emotions through the tactile feel of the ball while it rolls through a person’s hands. All three have designed the famous KOOSH ball, albeit for very different reasons. Although they have each created the exact same work, if they seek legal protection for their creations through the United States’ intellectual property (IP) laws, they will receive different treatment. When the first designer seeks to protect the ball’s usefulness as a training device for young children, she will file for a utility patent. She will have to prove that the ball is useful, novel, and nonobvious. If, after review, she convinces the Patent Office that she has met these requirements, she will receive a set of IP rights that will last for twenty years from the date she filed her application. The visual form of the second designer’s sculpture, however, will receive federal copyright protection from the moment it is fixed in a tangible medium of expression. He may, in rare instances, have to prove that the sculpture is original (i.e., not copied from another source) and minimally creative. If he clears these low hurdles, he will be entitled to a set of exclusive rights that will last for the rest of his life plus an additional seventy years.

If the third designer wants to protect the tangible feel of her design by preventing others from making similar balls, she will likely have to file the same utility patent application as the first designer and clear the same high hurdles of usefulness, novelty, and nonobviousness. Should she instead seek copyright protection for the tactile features of the design, she would likely be unsuccessful. While copyright law protects the visual “aesthetic” form of works of authorship, it does not extend to the “functional” features of those works. The tactile sensations associated with grasping the design are likely to be treated as functional, and thus non-copyrightable, features of the design. Although the second designer’s sculpture contains the identical features, in his work they serve only an aesthetic purpose of portraying the visual form of the work and are entirely copyrightable.

The distinction between copyright and patent has been the subject of considerable judicial and scholarly commentary, often with limited success. Both regimes are designed to improve the quality of life by promoting the “Progress of Science and useful Arts.” At a basic level, patent law is the domain of the useful and functional, while copyright law is the preserve of the aesthetic. But it is often difficult to determine whether a given work deserves copyright or patent protection. Copyright law struggles to distinguish protectable aesthetic components from unprotectable functional ones, while patent law worries about the incorporation of “subjective” aesthetic standards in the realm of the purely useful. The example of the KOOSH ball offers a novel way of reframing these issues.

In this Article, I argue that, in its attempt to distinguish aesthetics and utility, IP law has established a dichotomy between works appealing to the different human senses. Works that appeal to the senses of sight and hearing—those that produce visual or aural sensation—are potentially subject to copyright protection. Works that appeal to the sense of touch—those that produce tactile, haptic, proprioceptive, or otherwise embodied sensation—are potentially subject to utility patent protection. Classic examples demonstrate this dichotomy: a painting creating visual sensation or a song causing aural sensation are appropriate subjects for copyright protection, while an ergonomically designed chair is an appropriate subject for patent protection.

Of course, many objects incorporate features that appeal to multiple senses, but those features will be eligible for either copyright or patent protection only to the extent that they are directed at visual/aural sensation on the one hand or tactile sensation on the other. Attempts to elide this sensory dichotomy are likely to meet with confusion and rejection. Predictably, so-called “useful articles” in copyright law—where functional and aesthetic features are combined in works of authorship—and design patent law—which provides protection for the visual ornamental features of utilitarian objects—are among the most confused and contested in IP law.

Part I of the article establishes the descriptive claim that IP1 can be understood, in part, as establishing a dichotomy between works that generate visual and aural sensation and those that generate tactile, gastronomic, or olfactory sensation. The former are appropriate for copyright law, while the latter are appropriate for utility patent law. Perhaps the best way of making this argument involves looking at cases where one sense attempts to break out of its appropriate legal container and invade the other. When this occurs, implicit assumptions become apparent, and courts struggle mightily to keep things in their rightful places. The most confused and least satisfactory areas of IP law—copyright’s useful articles doctrine and design patents—are examples of these deviants and misfits.

In the realm of copyright law, attempts to protect works that appeal to the senses of touch or taste have been unsuccessful. For example, an attempt to protect the KOOSH ball via copyright was rejected by the Register of Copyrights and two federal courts, because, as the district court found, “the authorship involved in designing the work so that it functions to produce a certain touch is essentially the design of a utilitarian aspect of the work.”2 Copyright law’s treatment of gustatory sensation closely tracks its treatment of tactility.3 Recent attempts to secure copyright protection for recipes failed in part because authorities have treated the creation of gustatory sensations as functional. In the realm of patent, an attempt to secure protection for an “aesthetically pleasing” graphical user interface was rejected as too subjective, while patent descriptions referring to “comfortable” tools or “smoky flavor” gave the courts no problem.4

The critical tradition in academia teaches that differences typically imply hierarchies, and this is as true for the senses as it is for race and gender. Recent work in the history of aesthetic theory has shown how philosophical accounts of the differences between the senses almost invariably attribute different values and potentials to the senses. Writers on the senses from Plato and Aristotle to modern aestheticians have distinguished between the “high” senses of sight and hearing and the “low” senses of touch, taste, and smell. While the sensations afforded by sights and sounds are deemed aesthetic, those derived from the touch, taste, and smell of objects are merely functional. While the former are capable of producing art and enabling transcendence of the body, the latter cannot aspire to truly artistic expression because they are mired in physical desires of the flesh.

Part II argues that this hierarchy between sight and sound on one hand and touch, taste, and smell on the other is also evident in IP law. IP law’s sensory dichotomy recapitulates the tradition in Western aesthetic theory that ascribes different values to the human senses. Copyright is the realm of aesthetic production, while patent protects creations that are merely utilitarian. Thus, because works appealing to the low senses can be only useful, non-expressive, and functionally and biologically constrained, they are unsuited for copyright protection.

The distinction between the aesthetic and utilitarian is most apparent in copyright law’s treatment of useful articles, especially those that include appeals to the senses of touch, taste, and smell. The courts have treated the tactile feel of the KOOSH ball and the taste of dishes as functional components of the works, which must be separable from any aesthetic features before copyright protection attaches. By contrast, in Gay Toys the court explicitly distinguished the visual pleasure of contemplating a painting or playing with a toy airplane from the intrinsic utilitarian function of industrial products, writing, “[o]ther than the portrayal of a real airplane, a toy airplane, like a painting, has no intrinsic utilitarian function.”5 Unlike tactile or gustatory pleasure, visual pleasure is per se nonfunctional.

In Part III, I draw on recent research in contemporary and evolutionary aesthetics and haptic and culinary communication to challenge this sensory hierarchy. Traditional aesthetic theory views people’s preferences for visual art and music as culturally relative, non-functional, and unconstrained. Over the last two decades, the strong version of this view has become increasingly unsupportable in light of discoveries in the emerging field of evolutionary aesthetics. According to this line of research, just as humans tend to prefer sweet and fatty foods because preferences for sweet and fatty foods generated survival advantages for our ancestors, humans will tend to prefer visual and auditory stimuli that conferred evolutionary advantages on our ancestors. This hypothesis finds support in cross-cultural studies, experiments with “pre-cultural” infants, and neuroimagining techniques that have found widespread preferences for many fundamental features of the visual and musical arts. As Denis Dutton writes, “[c]heesecake speaks to innate pleasure preferences, but so does Wagner’s Der Ring des Nibelungen.”6

As evolutionary aesthetics has highlighted the functions and constraints imposed on visual and auditory pleasure, other new research is undermining the notion that the low senses are incapable of expressive and aesthetic communication. Research on interpersonal touch and on haptic technologies (those designed to enable tactile engagement with objects and people) demonstrates the ways in which touch can be used to create meaning. Similarly, work on cuisine has shown how both elite and more mundane cooking can produce aesthetically meaningful and expressive combinations of tastes and aromas. Tactile and gustatory works now appear to fit well within traditional paradigms of aesthetic theory.

Part IV turns from the descriptive to the normative and argues for a change to IP law in order to recognize the unity of the senses. I propose that the features of works that appeal to any of the senses in such a way as to express or communicate ideas, pleasures, or emotions should be considered potentially7 copyrightable—at least as a matter of formal IP doctrine. Patent law should remain the appropriate regime for features of works that have non-expressive and non-communicative utilitarian value.

Returning to the KOOSH ball creations of the three designers, the first designer’s ball would remain an appropriate subject for patent protection, and the second designer’s ball would still be recognized as copyrightable. To the extent that the third designer’s work appeals to the sense of touch in such a way as to express or communicate ideas, pleasures, or emotions, it should fall within the province of copyright. Additionally, these categories should hold for works whose features are the combination of both aesthetic and functional features, and the law will have to fall back on some method for separating the aesthetic from the functional. But at least it will be putting things in the correct categories. The article concludes with examples of how such an analysis might productively be applied to fashion design, physical activities such as yoga, and culinary dishes.

By focusing on the formal structure of IP law, I intend to set aside fundamental issues about the utilitarian welfarist consequences of altering IP law.8 As I have argued in a previous paper, with respect to copyright protection of recipes, the law gets the right answer but for the wrong reason.9 Copyright law does not recognize culinary creations as suitable for protection because it deems them either functional or unoriginal. I argue that this ruling reflects a misunderstanding of the nature of gustatory communication and that culinary dishes are capable of meeting the formal demands of copyright law. Nonetheless, the lack of recognition is the right result. Other features of culinary industry perform the same creativity-protecting roles that formal law does. Accordingly, the application of copyright to dishes would be economically inadvisable.

The same may be true for the fields discussed here. There are good reasons to think that fashion design and yoga may not need the benefits of copyright protection to thrive creatively.10 Nonetheless, such a conclusion only reflects the current state of those fields. Should things change and some form of copyright protection become desirable, the article clears the way for their recognition.


Christopher Buccafusco is an Assistant Professor of Law at the Chicago-Kent College of Law.

This essay is based on Christopher Buccafusco, Making Sense of Intellectual Property Law, 97 CORNELL L. REV. 501, 548 (2012).

Copyright 2013 Cornell Law Review.

  1. References to IP in this Article only refer to copyright and patent law. At present, I am ignoring the interesting ways in which trademark law treats the different senses.
  2. See OddzOn Prods., Inc. v. Oman, CIV. A No. 89-0106, 1989 WL 214479, *1 (D.D.C. Oct. 3, 1989), aff’d, 924 F.2d 346 (D.C. Cir. 1991).
  3. See Christopher J. Buccafusco, On the Legal Consquences of Sauces: Should Thomas Keller’s Recipes Be Per Se Copyrightable?, 24 CARDOZO ARTS & ENT. L. J. 1121, 1127–30 (2007) (discussing lack of copyright protection for recipes).
  4. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345 (Fed. Cir. 2005).
  5. Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983).
  7. I include “potentially” because they will still have to clear copyright hurdles associated with originality and creativity. See Feist Publ’ns Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345 (1991).
  8. See Christopher Buccafusco & Christopher Jon Sprigman, The Creativity Effect, 78 U. CHI. L. REV. 31, 31 (2011) (arguing that cognitive biases associated with creation and ownership of IP may generate substantial inefficiencies in markets); Christopher Buccafusco & Christopher Sprigman, Valuing Intellectual Property: An Experiment, 96 CORNELL L. REV. 1, 25 (2010) (summarizing the results of a set of empirical studies designed to test the conditions under which creation and ownership inefficiencies would occur).
  9. See Buccafusco, supra note 5, at 1155-56.

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