Be Original Americas is a trade association committed to informing and educating manufacturers, artisans, design professionals, and consumers about the economic, ethical, and environmental value of authentic design. I periodically write articles for BOA, on topics of interest to its members. My most recent article addressed the differences between patents, trademarks, trade dress and copyright, and how each type of IP can be used to combat counterfeit designs. I’m sharing it with my audience, here.
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As knockoffs have become rampant in the design industry (and all industries), businesses should be aware of all of the tools available to them. Knockoffs harm creators by free riding on their labor, and by diluting the reputation and uniqueness of businesses and goods. They harm consumers by deceiving them into purchasing inferior products, diminishing consumer confidence and increasing search costs associated with finding legitimate goods.
Patents, trademarks, trade dress and copyright are types of intellectual property. Each is different, and may protect different aspects of a design.
Patents
Two types of patents can apply to design: utility patents and design patents.
Utility patents protect the functional and mechanical aspects of novel inventions, such as a new reclining mechanism or the “single central column” support for the Saarinen Tulip table and chair (Patent No. 648,804; granted 1960, expired 1977).
Utility patents are limited to useful inventions. Protection only covers how the product functions, not its design, shape or decoration. Protection under utility patents lasts for 20 years from the date of filing.
Design patents, on the other hand, protect where utility patents do not – the actual design. They protect the non-functional, decorative elements of a product, such as the visual appearance, shapes and other unique aesthetic components of furniture design. For example, the iconic Herman Miller Aeron office chair design was protected under a design patent (Patent No. 346,279; granted 1994, expired 2008).
Design patents don’t protect functional elements of an object, but do protect the aesthetic aspects of the design. Design patents last for 15 years from the date of filing.
Some furniture may qualify for both utility and design patents, especially when the utilitarian and decorative features are intertwined and not easily separable. However, some furniture may only qualify for a design patent if it doesn’t include a novel mechanical invention.
For both, an application must be filed within one year of the design/invention’s public disclosure, or else it loses its right to patent protection.
Trademarks and Trade Dress
Trademarks protect anything that distinguishes one company’s goods from another – typically names, logos, and slogans.
Trade dress is an extension of trademark protection that covers the overall image and appearance of a product, including its size, shape and color combinations. Examples of trade dress include Tiffany & Co.’s classic robin blue box, and the décor and environment of a store or restaurant (think of the similar look and feel of an Apple store).
Trade dress must be distinctive in order to gain protection. Product design only rises to the level of trade dress when it becomes so well known that it is inherently associated with a single source.
In other words, it must, over time, acquire secondary meaning in the eyes of consumers. Essentially, trade dress is a design that has become so well known that it is a brand. An example is the distinctive Cassina LC2 armchair, created in 1928 and registered with the United States Trademark Office in 2013 (Reg. No. 4266765).
A major advantage to trade dress is longevity. It lasts as long as the design remains in use and continues to be a source identifier, which could be well beyond period of protection afforded to patents.
Importantly, like design patents, trade dress protection only applies to non-functional aspects of the design. Utility patents provide limited monopolies for functional features to encourage and reward innovation, so giving functional features trademark protection would result in unlimited monopolies, something the law doesn’t want.
Copyright
Copyright protects original works of authorship that are fixed in a tangible medium of expression, such as artistic works, books, plays and films. Copyright protection for furniture designs is limited.
While copyright protects two-dimensional drawings of furniture, it doesn’t extend to the three-dimensional manufacture of the furniture itself. Creators cannot stop others from building or constructing the piece based on the drawing.
However, some designers can look to copyright protection for the artistic elements of their work under the applied arts doctrine, which covers aesthetically pleasing designs that are married to useful objects. Again, protection is limited to the design elements that are separable from the object’s utilitarian aspects to avoid any overlap with patents. For example, in a classic case, a sculpture on the base of a lamp was deemed separable from the utility of the lamp itself therefore was eligible for copyright protection as a work of artistic craftsmanship.
Once obtained, copyright lasts for the life of the author plus 70 years.
Conclusion
Each form of intellectual property has its pros and cons.
Copyright protection is often difficult to obtain for furniture and its protection is limited. Design patents require designs to be novel and non-useful, while trade dress requires secondary meaning. Both patents and copyrights only last for a certain number of years, whereas trade dress can last indefinitely as long as the mark is in use. For this reason, securing a registration for trade dress can be a very valuable asset for designers.
Of course, when there is a dispute, designers will make as many claims as possible. For example, the complaint in the Judd Foundation case against Kim Kardashian and Clements Design makes claims of trade dress infringement (the designs), trademark infringement (the name DONALD JUDD), unfair competition, and copyright infringement (for making unauthorized use of a photograph).
Design firms would be well advised to consult with their lawyers to determine what, if any, forms of intellectual property area available to them, and to perfect their rights. In this way, they will be best situated to try to combat infringers.
