If you are an artist or designer, you may be wondering what ways you can effectively protect your creation if it has useful components. Common examples include shoes, bottles, jewelry, handbags, and clothing designs. This article will discuss some key considerations when evaluating whether a copyright or design patent may better suit your work. Of course, if you have established substantial recognition in the market with a design you may want look into trade dress protection as well. If you are seeking intellectual property protection outside of the United States, these laws and concepts may differ.
Copyrights and design patents can provide different levels of protection and will depend on the nature of your creation. Note that neither copyright nor design patents will protect a design that is functional.
Copyright
Key Takeaway: The design must be separable from the useful article and must exist alone
As discussed in an earlier post, copyright protection is generally applicable to most creative works. However, copyright protection does not extend to creative designs that are functional. Recently, the Supreme Court provided further guidance in Star Athletica, LLC v. Varsity Brands, Inc. on how the Copyright Office and federal courts can evaluate protection for creative designs that are only a part of a useful object.
Copyright protection can apply to a design if: (1) it can be perceived as a two-dimensional or three-dimensional work of art separate from the useful article; and (2) the separable design would qualify as a protectable pictorial, graphic, or sculptural work on its own or fixed in another medium. The separable design will also need to meet the minimum requirements for originality to qualify for copyright protection.
The separability test is relatively simple when applied to a pictorial design on a useful article such as a dress. The pictorial design may be imagined separately from the dress and likely able to qualify as its own pictorial or graphic artwork.
Take for instance, the Tears Dress designed by Elsa Schiaparelli and Salvador Dalí in 1938. One can hypothetically lift the pictorial design of pink and magenta tears off from the dress and see them as independent pictorial works. Here, the surrealist representation of tears would also stand the test of originality to qualify for copyright protection. The analysis becomes more nuanced if the design is a more typical, geometric pattern, such as stars or polka dots.
Consider adidas’ recent battle with the Copyright Office over its Yeezy Boost 350 Version 1 and Version 2 sneaker designs. While it was clear that adidas would not be able to copyright the actual shape of the sneaker, after an uphill battle, adidas was able to convince the Copyright Office that (1) the design of irregular blank lines of various lengths and shapes on a gray fabric with a black semi-circle in the arch and an orange dotted stripe on an off-white heel loop; and (2) the design of several grey lines in a wave pattern with a thick orange stripe on the outsole that fades toward the heel of the sneaker are both separable from the useful article (the sneaker itself) and can be independently considered as pictorial designs that meet the minimal requirements for originality.
The actual shape of the Tears Dress or the Yeezy Boost 350 would not be eligible for copyright protection. When a design relates to the shape of a useful article a design patent is usually more advantageous. In general, copyright protection does not extend to the “overall form, shape, or configuration of the useful article, no matter how pleasing or attractive it may be.” U.S. Copyright Office, Compendium of U.S. Copyright Office Practices §101 (3d ed. 2021).
Design Patents
Key Takeaway: The design is not separable from the useful article and cannot exist alone
A design patent is available for visual and ornamental characteristics that are a part of “an article of manufacture.” Unlike creations eligible for copyright protection, design patents have to meet a few more requirements, specifically, the creation must be: (1) new, (2) original, (3) ornamental, (4) nonobvious to a person of ordinary skill in the art, and (5) not primarily for the purpose of serving a functional or utilitarian purpose.
As discussed above, design patents may be available for certain cuts and shapes of useful articles that can meet all these requirements. For instance, the United States Patent and Trademark Office (USPTO) granted design patents for the below Yves Saint Laurent dresses on June 30, 2020 (D888,373; D888,372):
Here, the shape of each dress would not qualify for copyright protection because it is not separable from the functional aspect of the dress. However, since Yves Saint Laurent was able to demonstrate to the USPTO that the ornamental shape of each garment was new, original, nonobvious, and not primarily functional, it is a protectable design patent. Similarly, adidas obtained a design patent for the Yeezy Boost 350 in order to protect the shape of the shoe itself (D826,530).
Note that applicants for design patents are required to disclose any prior art (any previously issued patents and published materials) that may have inspired the design. The patent examiner will consider whether the applied-for design is new and nonobvious in the wake of the prior art.
Before filing either a copyright or design patent application, you may want to consider additional factors, including, the length of time the design will be protected and the availability of damages in the event of infringement.
Disclaimer: The information contained in this post is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls and communications. Contacting us, however, does not create an attorney-client relationship.