How To Protect Your Design? Design Patent vs. Copyright

By: Wisu Sul

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Think about it. Pablo Picasso came into your office. He was shocked because his works were copied and used on postcards, T-shirts, even cell phone cases. He has decided to protect his artistic works, but he has no idea which intellectual property is proper for him. Design patent or copyright? Design patents and copyrights both cover aesthetic features of articles. What is the difference? We will look at design patents and copyrights briefly, and then find the differences between them.

1.) Design Patents

A design patent is a type of patent that protects an ornamental appearance of an article. It does not protect functions of an article. It protects any new, non-obvious, and ornamental design for an article of manufactures.[1] Design patents do protect general ideas or concepts. They protect the overall appearance what is shown in drawings.[2]

A design patentee has the right to exclude others from making, using, or selling their designs.[3] A design patent is infringed if the overall appearance of the patent and accused designs are substantially same in the eyes of an ordinary observer.[4] The ordinary observer is generally deemed to be the retail purchaser of goods of that particular type rather than an expert.

2.) Copyright

Copyright is a different type of intellectual property. Copyright protects any original work of authorship that has been fixed in a tangible medium of expression, such as poetry, novels, movies, songs, computer software, and architecture.[5] It does not protect ideas, procedures, principles, titles, names, short phrases, and slogans.

All pictorial, graphical, or sculptural works can be copyrighted.[6] However, useful articles are generally not copyrightable unless there are artistic aspects that are separable.[7]

A work is automatically protected by copyright when it is created. A copyright holder has exclusive rights to reproduce, distribute, display or perform the copyrighted work, or to make derivative works.[8]

Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright holder.[9] But to sue for copyright infringement, copyright registration with the U.S. Copyright office is required. Also, others can fairly use the copyrighted work such as criticism, comment, news reporting, education, or research.[10]

3.) Design Patent vs. Copyright

Now, we understand design patents and copyrights. But, choosing design patent, copyright, or both forms of protection is still hard for your client. Here, we will compare two intellectual properties in six ways.

i.) Registration

First, design patents are granted after successful prosecution.[11] A copyright exists automatically when the work is created and fixed in a tangible medium.[12] But once again, to file copyright infringement, a federal copyright registration is required.

ii.) Limitations on registration

Second, both design patents and copyright each have its own limitations on registration. Design patent applications must be filed within 1 year after the first offer for sale, public disclosure, or public use of design works.[13] But, copyright registration does not require the same one-year period.[14]

However, copyright law limits copyrightable subject matter.[15] For example, titles, names, short phrases, slogans, and fonts are not copyrightable subject matter, whereas they are subject matters for design patent.

Functional designs cannot be registered under all design patents and copyright.[16] Under design law, if overall design is dictated solely by function, it cannot be registered.[17] Under copyright law, useful articles as a whole are not copyrightable.[18] Design of useful articles can be copyrightable only if it can be identified separately from, and are capable of existing independently from, the utilitarian aspects of the article.[19]

iii.) Time for registration

Third, generally, the design patent registration process is longer than that of copyright. Generally, obtaining design patent rights requires more than one year. But copyright registration normally takes 3 to 6 months.

iv.) Fees

Fourth, filing copyright is cheaper than filing design patent applications. Basic filing fees for design patents are $ 200.00.[20] Moreover, design patent maintenance fees can total $1,600 to $7,400.[21] However, basic registration for copyrights costs $35 to $85.[22] Copyright does not require maintenance fees.[23]

v.) The Term of Right

Fifth, design patents last for 15 years from issuance, if it was filed on or after May 13, 2015.[24] If it was filed before that day, the design patent lasts for 14 years from issuance.[25] In contrast, copyrights last for the term of the copyright holder’s life plus 70 years.[26]

vi.) Infringement – Independent Creation

Finally, independent creation is a defense to copyright infringement, but it is not a defense to design patent infringement. In general, copyright infringement requires actual access to copyright work and substantial similarity between the copyrighted work and accused work.[27] But, a design patentee need not prove an accused infringer’s access to his or her design. To determine design patent infringement, courts have used the ordinary observer test: whether the overall appearance of the patented design is substantially the same as the overall appearance of the accused design in view of the prior art.[28]

4.) Conclusion

All design patent and copyright will provide the meaningful protection on designs. Choosing design patent, copyright, or both forms of protection depends on the fields of use of the works, the competitiveness in the fields, your budget, and other factors. Keep in mind that not all designs are protected under design patent law and not all designs are protected under copyright. Neither design patent nor copyright may give you the protection desired.

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[1] See 35 U.S.C. §§ 101, 102, 171.

[2] See OddzOn Prods. v. Just Toys, 122 F.3d 1396, 1405 (Fed. Cir. 1997).

[3] 35.U.S.C. § 271 (2010).

[4] Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 668 (Fed. Cir. 2008) (en banc).

[5] 17 U.S.C. § 102 (a).

[6] 17 U.S.C. § 102 (a)(5).

[7] 17 U.S.C. § 101 (2010).

[8] 17 U.S.C. § 106 (2002).

[9] Id.

[10] 17 U.S.C. § 107.

[11] See 35.U.S.C. § 173.

[12] 17 U.S.C. § 102 (a).

[13] 35 U.S.C. § 102 (b).

[14] 35 U.S.C. § 102.

[15] 17 U.S.C. § 102.

[16] See 17 U.S.C. § 101; Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 668 (Fed. Cir. 2008).

[17] Egyptian Goddess, Inc., 543 F.3d at 668.

[18] 17 U.S.C. § 101.

[19] Id.

[20] See USPTO Fee Schedule, USPTO, (Jan. 16, 2018), http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (last visited Mar. 18, 2018).

[21] Id.

[22] See Fees, Copyright Office, (May. 1, 2014), http://copyright.gov/about/fees.html (last visited Mar. 18, 2018).

[23] Id.

[24] 35 U.S.C. § 173.

[25] Id.

[26] See 17 U.S.C. § 302 (1998).

[27] Funky Films, Inc. v. Time Warner Entm’t Co., Ltd. P’ship, 462 F.3d 1072, 1076 (9^th Cir. 2006).

[28] Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 668 (Fed. Cir. 2008).