Introduction
There’s a new front in the intellectual property (IP) rhetoric wars. In the past, we’ve seen inflammatory words like “theft” and “piracy” applied to various acts of infringement.1 The specter of “counterfeiting” is frequently — and it seems, increasingly — invoked in discussions of U.S. design patent law and policy.2 “Counterfeiting” is a term of art in U.S. IP law.3 It refers specifically to “the act of producing or selling a product with a sham trademark that is an intentional and calculated reproduction of the genuine trademark.”4 But a design patent isn’t a trademark.5 It’s a totally different type of IP right.6
Why would someone try to conflate design patent infringement with counterfeiting? Because it’s a powerful rhetorical device. After all, “commercial counterfeiting has no apologists and no redeeming features.”7 Few would disagree “that intellectual property law should be used to its fullest extent to suppress” things like “counterfeit pharmaceuticals, counterfeit aerospace spare parts, and counterfeit food.”8 Thus, the word “counterfeiting” tends to evoke a stronger emotional reaction than the word “infringing.”
This type of emotional appeal may be necessary to convince judges and policymakers to grant design patent owners extraordinary benefits and remedies. It may also help disguise measures that benefit private rightsholders as ones that prevent public harms.9 Indeed, we’ve seen a similar rhetorical playbook used before by supporters of increased copyright protections.10 But those who write, advocate for, and make patent law and policy aren’t always aware of copyright literature and policy debates (and vice versa). This Article aims, in part, to bridge that gap.
This is not a matter of mere linguistic imprecision; it’s a case of strategic conflation.11 The problem here is not just that some people are using the word “counterfeit” outside of its specific legal meaning when they talk about design patents.12 The problem is that some people seem to be using the word counterfeit strategically to try to conflate design patent infringement with the worst kind of intentional IP infringement — actual counterfeiting. In some cases, the use of counterfeit rhetoric seems to be an explicit (and fallacious) appeal to fear, attempting to link design patent infringement to the most dangerous kinds of actual counterfeiting such as intentionally selling unsafe car parts or fake drugs.
This Article argues that commentators, policymakers, and judges should not fall for this sham rationale. Additionally, because the words “counterfeit” and “counterfeiting” are so rhetorically loaded, we should reject the suggestions — made by certain legal academics — that we import the concept of counterfeiting into design patent law.13 And whenever it is used in good faith, the word “counterfeiting” should be clearly and prominently defined.
This Article will use the word “counterfeiting” by itself only in this strict, U.S. term of art sense unless otherwise noted. When additional clarity seems helpful or necessary, this Article will use the phrase “actual counterfeiting” to describe the same. Defined this way, the word “counterfeit” means something different than it does in everyday English, where it is often used to refer to something that is “made in imitation of something else with intent to deceive.”14 This Article will refer to this type of activity as “colloquial counterfeiting.”
This Article will use the phrase “counterfeit rhetoric” to refer to situations where the words “counterfeit” or “counterfeiting” are used but where there is no actual counterfeiting at issue.15 Counterfeit rhetoric can occur in discussions of any form of IP.16 But it may be especially pernicious in connection with design patent law because it is an area of IP that isn’t taught (at least not in significant depth) at most law schools and one which is likely to be less well-understood by practicing attorneys, judges, and lawmakers. These audiences might not know, for example, that a design patent may only cover a small and insignificant portion of a product’s overall design.17 That means a product can infringe a design patent without being a replica.18
This Article proceeds in six Parts. Part I provides a brief background of the relevant law, including an explanation of the often misunderstood test for design patent infringement. Part II identifies some ways that counterfeit rhetoric has been used in the context of design patent law and policy, including the (still largely unknown) phenomenon of “Schedule A” litigation.19 Part III explains why there is no necessary legal or logical connection between design patent infringement and counterfeiting — or safety. Part IV situates the contemporary design patent counterfeit narrative in the larger context of IP lobbying and policy. Part V explains why counterfeit rhetoric matters, especially in the context of design patents. Part VI discusses some additional lessons and implications.