Design Patent or Copyright for Jewelry?

CL_DesPat
Design patent issued to Harry Winston

Question: I am a jewelry designer.  A store in Chicago has placed a fairly large order (at least for me) for one of my items. I was thinking I should do something to protect the design. Should I file a copyright or a design patent? 

Answer:  Copyright will probably work best for you. We discuss this issue in some detail in this article but we imagine you’re too busy filling your order to read the details, so we’ll summarize here. (BTW, we’ve also written about this subject here.)
What’s the diff? The rights you get with a design patent are considered to be broader or more powerful than a copyright. That’s because you don’t need to prove that an infringer saw your work and copied it — all that matters is the works are the same. But that advantage may prove more valuable for big companies with a lot of money to obtain the design patent and to enforce it. The design patent application and filing process can take a year or more and costs one-two thousand dollars. A copyright is automatic — it exists once you create the work — and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs under $35 – $55 (if you file electronically). Copyright will last for your life plus 70 years; a design patent lasts for 14 years (15 years after May 13, 2015). In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published prior to filing your design patent application, you cannot now file for a design patent unless it qualifies under a very limited one-year grace period for certain disclosures or sales by the inventor. Not all designs are protected under design patent law. The USPTO will not issue design patents for ‘surface ornamentation’ (i.e. two-dimensional illustrations such as drawings). So, if you’re only decorating the surface of an object, you may not qualify. For all these reasons, we’d suggest passing on design patent protection. By the way, we’ve been working on a website explaining design patent basics … check it out at www.mydesignpatent.com.

Etsy Pulled My Upcycle

Question: I just had some items pulled from my Etsy shop at the request of a band’s attorney citing intellectual property rights violation. From what I grasp the offense is taken mostly from the public displays of the bands name and logo in the picture listings as well the attorney’s assumption I am financially gaining off the logo and not my labor/seamstress skills.

Answer: We’re sorry to hear that your Etsy items were pulled. As for your copyright question, not much has changed since we last discussed this issue. Repurposing legitimately-acquired t-shirts should not infringe copyright.  However, the trademark rules are not as clear.

Etsy and trademarks. An Etsy shop owner is at the mercy of two outside forces: Etsy and the offended trademark owner. Apparently Etsy will turn off access to shop items or even close down shops if a trademark owner provides sufficient notice for an “Intellectual Property Infringement” (as defined in Etsy IP guidelines). We’re a little confused by this policy because the term “trademark” never appears in the guidelines and the guidelines mirror DMCA requirements which are strictly for copyright. In addition, this 2011 statement by an Etsy in-house atorney states that Etsy doesn’t intercede between the shop owner and trademark owner; they just establish contact between the two. Nonetheless, there appear to be cases of Etsy closures and shutdowns based on trademark complaints. Considering the volume of complaints and Etsy’s desire to avoid liability for the site itself, we assume it makes more business sense to shut down an item first and ask questions later.
Trademark law. Upcyclers are in a gray area of trademark law. On one hand, anyone can resell authorized trademark goods under the principle known as trademark exhaustion. For example, a band can’t stop you from selling a collection of their used t-shirts. But upcycled goods — because they deconstruct legitimate goods to create new products — are not in the same category as recycled goods. For example, if the new products reflect poorly on the brand or if they trigger product liability issues — for example, a chair made from Sherwin-Williams paint cans — the owner may have a gripe that consumers will be confused or harmed. On the other hand, goods with no liability issues — for example, refrigerator magnets, kitchen aprons, or upcycled underwear — that are obviously not created by the trademark owner, are unlikely to be infringements. Bottom line dept. Even if you’re convinced you fall safely in the latter category (we think you do) we don’t recommend fighting the trademark owners. The battle will turn into a black hole and your store will suffer. We only wish more trademark owners would at least consider licensing before asking Etsy to close down stores.

Can I Sell Clothing From © Fabric?

silk fabric weaving circa 1914

Question: Can we purchase copyrighted fabric or ribbon from a store, make it into a dress or handbag and then sell those items legally? There is a “For personal use only” statement on the salvage of the fabric. My understanding is that First Sale Doctrine would cover the resale of the fabric along with a proper listing and disclaimer? Answer: You’re correct. Thanks to the first sale doctrine, if you bought copyrighted fabric, you’re free to make it into a product and resell that product. You’re also free to photograph that product and reproduce that photo as part of an ad when selling the item. A disclaimer won’t hurt but it’s not required.
What about the statement on the fabric? The statement — for personal use only — is wishful thinking on the manufacturer’s part. Unless you affirmatively agreed (signed something, clicked “I Agree” or made some other indication of assent) at the time you purchased the fabric, such a statement would not be binding on you.
What you can’t do … If the fabric is an infringement, that is, an imitation made without permission of the manufacturer, you’ll run into problems. In that case, the copyright owner can stop your uses whether you knew or should have known it was infringing. You may also run into problems if you create fabric from found imagery that is still protected under copyright. In that case you’re infringing the image owner’s right to create derivatives.