Knock-offs are rampant in the design industry, and many industrial designers usually do not have the time or resources to police the marketplace for knock-offs. To make matters worse, the industry moves so rapidly that by the time a designer finishes trying to enforce their design rights, the damage may already be done. Luckily, there are legal tools industrial designers can use to protect their designs.
Intellectual property (IP) is the area of law dealing with issues related to creativity such as music, literature, art, inventions, photographs, and designs. The basic idea behind IP protection is promoting innovation by giving IP owners limited monopolies in their designs. Under current IP law, manufacturers and designers of industrial designs may protect their product designs through (1) design patents, (2) trade dress, and (3) copyright. Each protection serves a different function, and each has its benefits and limitations. Keep in mind that IP protection is country-specific, meaning that obtaining IP protection in one country such as the United States does not mean that the designer automatically obtains IP protection in other countries. The focus of this article is on U.S. protections.
A patent gives a designer the right to prevent others from importing, manufacturing, using, or selling a patented design in the U.S. for a limited period of time. To obtain a patent, the designer files a detailed application with the U.S. Patent & Trademark Office (USPTO), and then “prosecutes” that application through the USPTO examination process. This process can take some time and generally requires attorney assistance.
There are two important things to know about patents: (1) the invention must be “new, ” i.e., not an obvious modification of a previous invention; and (2) the owner must file an application within one year of the first commercialization or public disclosure (such as selling or offering to sell). Patent rights are gone forever unless filed within a year. “Provisional” patent applications establish an earlier filing date, and do not mature into registration unless a formal patent application is filed within a year.
There are generally two different types of patents for industrial designs:
- Design Patent. The design patent is the best protection for product designs. It protects the aesthetic or “ornamental” appearance of products. Examples include auto parts, computer products, cosmetics, electronics products, textile designs, home furnishings, home appliances, jewelry, motor vehicles, office supplies, optics and toys. These must be filed within a short period after creation, , but they are relatively easy and less expensive than a utility patent. The patent claim is established by line drawings and photographs that you file with the application, showing what is “new” about your invention.The benefits of a design patent have to do with the application and enforcement: (1) it is cheap; (2) there is no need to show that the “function” of the product is different from the appearance; (3) you only have to show that the design and a knock-off is “substantially similar” in order to prove infringement; and (4) unlike trade dress below, there is no need to show that the design has become recognized in the marketplace.
- Utility Patent. Utility patents protect the “functional” aspects of a product or the process to make that product (generally machines and more scientific patents). These also must be filed a short period of time after creation. The patent claim is established by written descriptions that appear at the end of the patent, showing what is “new” about your invention.
Trade dress is the overall visual image of a product, including its design. Trade dress is protected under U.S. trademark law and to be entitled to trade dress protection, you must demonstrate: (1) that a significant number of the public associates the product with the designer; and (2) that the design is not a “functional feature” of the product, meaning that it can be separated from the purpose that the product serves. To prove trade dress infringement, you have to show that there is a “likelihood of confusion” between your design and the trade dress of the knock-off.
A copyright is automatically created in any “original work of authorship”, which can include music, software, photographs, art, books, movies, etc. Designers can also obtain copyright protection for “useful articles” such as products so long as the designed appearance of the product can be separated from its functional feature. This protection is cheap and allows designers to prevent others from copying, adapting, publicly displaying, making “derivative” copies or knock-offs, or unfairly copying the works. A copyright is extremely limited for industrial designs because it is difficult to establish that the design can be separated from the function (i.e., a sofa). Copyrights do not protect ideas such as a lamp with two bulbs – they protect only the specific work itself. In addition, to prove copyright infringement “indirectly” you have to show that the infringer (1) had access to the copyrighted product, and (2) that the infringing product is substantially similar to the copyrighted work.
Copyrights, patents and trade dress protect industrial designers’ designs, but the bigger question is whether they protect designers in the marketplace. Each of the protections have their limitations, and the general problem is that design infringement is difficult to prove unless direct, and most industrial designs have some functional component.