In comparison to functionality doctrine in trade dress cases, scholars have paid relatively little attention to the role of functionality doctrine in design protection systems such as the U.S. design patent system and the EU Community Design regime. Yet functionality considerations potentially affect many validity and scope determinations in the design protection area. In this Article, we critically evaluate judicial application of the functionality doctrine in design protection systems, focusing on the U.S. design patent and EU design protection regimes. We argue that the doctrine as applied in these settings is too often aimless and inconsistent. Some simple doctrinal refinements would help, particularly in the U.S., where the Federal Circuit should definitively adopt the “dictated by” standard and should distinguish explicitly between functionality for invalidity purposes and functionality for scope purposes. Ultimately, a more carefully-considered theoretical justification for the functionality doctrine in design protection systems is needed, one that recognizes that trade dress functionality and design protection functionality serve different goals.
Available at: http://works.bepress.com/jason_dumont/1/