Professor Burstein Says The Sky is Not Falling…Really, Where is The Proof?
In her recent Patently-O article, The Sky is Not Falling, Professor Burstein goes to great length to argue that Columbia Sportswear v. Seirus is nothing to be concerned about, despite the vigorous protestation of many amicus briefs. However, it seems the esteemed professor has actually proven the reverse or at least has demonstrated a profound lack of self-awareness in terms of her conflicting prior opinions and inaccuracies.
Specifically, it wasn’t so long ago that Professor Burstein was singing a different tune. Here is what she wrote on Oct 31, 2018 in a Patently-O article titled, Conflating Design Patent & Trademark Infringement – Can you just not?: “Thus, factors like labeling, marketing, etc. are (at least in theory) relevant to the question of product-design trade dress infringement. But they’re not relevant to the question of design patent infringement.“
Perhaps her previous arguments were just dicta too???…So, which is it? Failing to be aware of her own prior positions demonstrates a worrisome lack of academic rigor, if not demonstrating outright shoddy analysis.
There is more…Professor Burstein states, “In Columbia v. Seirus, the claimed design was for surface ornamentation only.” Wrong. The D’093 patent was not for surface ornamentation only. Rather, the patent claims a three-dimensional ornamental appearance of a heat reflective material. See Figs. 1-3 of the patent. Her entire argument crumbles with this misunderstanding of the facts of the case.
There is yet more…Professor Burstein cites USPTO policy to grant design patents with labeling as support for her argument that the Columbia Sportswear opinion isn’t problematic. Her argument totally misses the mark. Of course, patentees can CLAIM labeling. And, in such circumstances, labeling on the accused product would certainly be part of the infringement analysis. The issue here, however, is that the patentee did NOT claim labeling. Thus, labeling on the accused product should be irrelevant.
And finally…Professor Burstein argues that the portion of L.A. Gear in debate is mere dicta, not a holding. This is a weak attempt to avoid the importance of L.A. Gear. The panel in Columbia Sportswear sure didn’t think it was mere dicta; rather it referred to L.A. Gear as a “precedent from this court.” Further, this portion of L.A. Gear is regularly cited by courts without qualification as mere dicta. She is out on a limb.
I now turn briefly to the effusive thank you posted by Dennis Crouch to Prof. Burstein in appreciation of The Sky is Not Falling post. Patently-O has developed a reputation for high-quality, well-reasoned and researched reporting. The fact that Prof. Burstein recently posted directly conflicting opinions on the Patently-O site does not seem to meet the standards widely assumed to be at play with Patently-O submissions. Perhaps in that context, the sky is falling.
Charles L. Mauro CHFP
President / Founder