Blueprint Agsinst Infring eme nt : Frequentb Asked Questions About

LEGAL EASE
O Making senseof the law
Blueprint Agsinst Infring ement:
FrequentbAskedQuestionsAbout
Intellectual Property Protection
By George Gottlieb, Esq.
We areoftenaskedquestionsaboutcopyright,trademark,
patent and trade dressprotectionissuesrelating to the
tablewareindustry.The questionsthat appearbelow area
compositeof thosemostfrequentlyasked.The answers,
naturally,cover only generalsituationsand you should
consultwith your own attorneyfor specificsituations.
a. My chief designer had a great idea for a new
patternfor our decorativestonewareline. Shedid some
initial layoutsandwe're in the middleof preparingprototypes.Now shehasinformedus that she'sjust takena
new job with a competitor,and that sincethe idea is
"hers",she'stakingit with her.
What canwe do?
A. Assumingthat the chief designeris an employee
of your company(typically,one who receivesan annual
W-2 form), your companyautomaticallyownsthe copyright for this new decorativepattern. No documentation
is neededto confirm ownership;however,it would be
advisableto promptly file a copyright application to
cover the new design.Any attempt to'manufacture,
reproduce,display,sell or distributethe new decorative
pattern,or even prepare
derivative works based
upon the samepattern,
without your company's
writtenpermissionis in
George Gottlieb is a
founding partner of the
New York City intellectual property firm of
Gottlieb, Rackman &
Reisman.P.C.. and a
frequent lecturer on
patents, trademarks,
copyrights, and trade
dress issues.
violation of the copyright laws. You can take prompt
actionto stop the process. Senda "warning" letter to
the designerandher new employer.Shouldthe designer go throughwith her plans,you may seekfrom a court
an award of the profits of the infringer, or your own
damages,and attorney'sfees,as well as an injunction
againstcontinuedsales.Further,your companymay
also attempt to obtain a preliminary or immediate
injunction, which would preventthe saleof the pattern
in questionevenbeforethe ultimatetrial of the case.If,
however,the designerwas actuallyan outsidecontractor, or free-lancer,she ls the owner of the copyright
unless a written transfer of copyright orrynership
from
her to your company,signedby the designer,is in force.
a. We manufacturea line of dinnerware featuring
sceneswith horses.A good customerjust sent us a
picturepostcardof a horsefarm in Scotland,and asked
thatwe usethatimageon an exclusiveline for his company. We would like to usethis imageto further expand
our line. We assumewe will not competewith thepostcard companybecausewe make only dinnerware,and
we could even 'credit' the original. Is this proper?
A. Transferringthe picture of the horsefarm from
the postcardonto your dinnerwareis consideredan
infringement of the postcard company's copyright.
Copyright protectionbeginsat the moment of creation,
and therefore the postcard company's picture of the
horsefarm was protectedby copyright at the time the
picture was taken; this copyright prohibits any use on
any medium,exceptwith permission.If you needthat
image, you can: have a photographertake an original
picture of the horse farm; prepare your own artistic
rendering of a horse farm; or obtain permission to
reproducethe imagefrom the postcardcompany.
Q. We've designeda new line of modern flatware in
which non-preciousgemsare set in an unusualconfiguration in the handles. We have also conceiveda way
to make the flatware dishwasher-safe,
so that the gems
won't fall out. How canwe protectthis productdesign?
benefit. It may now be too late for the manufacturerto
changeits mind. They shoqldhave enteredinto a written agreementwith the retail store if they wantedthat
option, or should have taken action earlier when the
problem first arose.
A. Considerapplying for copyright, designpatent
and utility patentprotectionfor the different aspectsof
this product design. These are all viable avenues
towardsprotection,andeachcanbe in force individually
or simultaneously.You may chooseto copyright your
design if it is unique enoughto have "artistic merit".
But remember,common geometricforms and shapes,
such as squaresand spheres,zig zagsand arcs do not
lead to copyrightabledesigns,even if the end result is
unique. If the item is not copyrightable,the next choice
would be a designpatent. The ornamentaldesignof the
flatware may be protectableby a designpatent,which
focusesonly on the look of a product, as opposedto
how it functionsor its artisticmerit. Perhapsthe unique
configuration of the gems or the special mounting of
the gems is uncommonin appearance,or the way the
handlesare shapedwould be consideredunique.To be
consideredworthy of designpatentprotection,an ornamental design would have to be both novel (it didn't
exist before) and non-obvious(sufficiently different as
comparedto prior flatware designs,in the eyes of a
designerin the field). It is important to rememberthat
you must apply for a patent within one year from the
first public availability of the product. The manufacturing processby which the flatware hasbeenrendered
dishwasher-safe,
or the systemby which the gems are
held in place, may be protectableby utility patent.
Again, the basic requirementsof "novelty" and "nonobviousness"apply to a utility patentas well.
Q. One of our most proficient designershasbeenusing
her initials prominently displayed on all her designs.
Our line of giftware has included her work, including
her initials, for several years. However,her initials are
the sameas those of a prominentfashion designer. Is
there a conflict?
Q. Five yearsago,we openeda storewhosenameis the
sameas a manufacturerof crystalgiftware we retail. At
the time we openedour store, the manufacturerwas
smaller,and told us that they were happy to have this
informal alTangementto promote their name to the
public. Now that the manufacturerhas becomemore
well known, we have beenrequestedto stop using the
name.What can we do?
A. A strong argument can be made that both
concerns,the storeandthe manufacturingentity, should
coexist. When the retail store openedfive years ago,
there was no objectionto the usageof the nameby the
manufacturer.In fact. it was to the manufacturer's
A. If the clothingdesigner'sinitialshavebeenused
for a longer period of time than the giftware designer's
and are well known to the public, probablythe clothing
designerhastrademarkrights in his initials andcan stop
all subsequentusers qn the same or related gods.
Dinnerware would be considered"related", since the
public knows that many clothing designersalso license
their designsfor dinnerwareand other merchandise.
If you have any questions regarding intellectual
property protection, address them to the Editor of
Tableware Today magazineand we will answer them
directly or through this column in the future. You may
request a reprint of this article (or any of the
articlesthat haveappearedunder the "BlueprintAgainst
Infringement" header) or our Primer, "Whet's a
Copyright/ Trademark/ Patent?", by either calling (212)
684-3900or faxing your requestto(212) 684-3999.
GeorgeGottlieb is a founding partner of the New York
City intellectualpropertyfrrm of Gottlieb, Rackman&
Reisman,P.C. and is a frequent lecturer to various
audienceson patents,trademarks,copyrightsand trade
dressissues.
Repriitedfrom:
fF
Ocbber/t{ovember
1997
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TooAY
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