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Jerry Cohen

Design Patents, Copyrights and Trade Dress

Manufacturers and designers are fed up with knock-offs and they’re not taking it any more. Let’s discuss how manufacturers and designers can arm themselves against the copycats, and how retailers can stay out of trouble.

Three popular tools that manufacturers and designers have at their disposal to protect their product designs against pirating are design patents, copyrights and trade dress:

Design Patents protect the ornamental appearance of a product and allow the owner to prevent others from importing, manufacturing, using or selling the patented design for 14 years. Although you must file your design patent within a certain period of time, design patents are relatively easy and inexpensive to obtain. The advantages are many: (a) unlike copyright there is no technical requirement that the appearance of the product can be identified separately from, and exists independently of, its functional aspects (the concept is too involved for this post), and the patent owner does not have to prove “copying” of the original elements in order to win the infringement action. The patent owner only needs to show that the patented design and the infringing design are substantially the same; and (b) unlike trade dress, an owner does not have to show that the product is distinctive or has obtained “secondary meaning” (meaning recognition through long use and exposure in the marketplace).

Copyrights allow the “author” of “original works” to prohibit others from copying the work for the life of the author plus 70 years (and a longer term for “works made for hire” by an employee or independent contractor). There are some hurdles including showing that the designed appearance of the product can be separated from its functional use (in other words the design elements reflect artistic judgment rather than functional influences). Whew, that’s a tough concept to explain in a few words, but you get the gist. “Copying” can be proved indirectly by showing that the infringer had access to the copyrighted work and that the infringing product is substantially similar to the copyrighted work.

Trade Dress under the Lanham Act protects a product design perpetually, provided that the design is not a “functional” operation of the product. However, a product design can be protected only if it acquires a “secondary meaning” which means that the public has come to associate and identify the product with the designer. To show infringement, the designer needs to show that there is a “likelihood of confusion.” 

Remedies. The remedies for product design infringement are similar under the three theories: injunctions, recovery of damages in the form of the defendant’s profits or the plaintiff’s actual damages, and/or attorney’s fees under certain circumstances. 

Retailer Beware. As Ray mentioned in a recent column, retailers that purchase pirated designs can look forward to a cease and desist letter and exposure to a lawsuit for damages. Although we are a huge industry, we’re also a tight-knit bunch and usually know a knock off when we see one. I can assure you that being on the receiving end of an infringement claim is no fun so “let’s be careful out there.”