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What You Need to Know About Copyrights & Patents

Furniture World Magazine
Volume 151 NO. 5 September/October


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Next Level

It is very important for manufacturers and retailers to understand the scope of protection afforded by copyright laws, because the wrong side of a copyright lawsuit is not a good place to be.

The furniture industry has a longstanding preference for copying competitive furniture designs. This is true of furniture manufacturers and also retailers seeking to capitalize on style trends and useful functions of furniture.

You’ve probably seen press releases from manufacturers seeking ways to legally protect their designs from direct copies or overseas knockoffs. Brick-and-mortar and online furniture retailers, even if they do not themselves “copy,” are not immune from direct or indirect infringement claims of a manufacturer’s copyright, trade dress, or patent. These intellectual property rights may apply to furniture designs and prevent others from copying.

Is Copying Illegal?

Despite complaints that copying a competitor’s furniture designs is ethically wrong, not all copying is illegal. Copying design aesthetics and styles is usually permissible. Unlike in other jurisdictions such as the European Union, the United States, as a matter of policy, decided that absent special circumstances, neither copyright law nor trade dress law is available to protect furniture product design. While patent protection for furniture designs is available, obtaining it is relatively expensive and rare. So, generally speaking, copying is part of marketplace competition in the United States. There are, however ways to protect certain designs or configurations.

Intellectual Property Law

Manufacturers need to appreciate intellectual property law guidelines so they can compete lawfully without violating another company’s rights. For example, copying furniture designs becomes unfair competition when original features are protected by copyright law or a design feature or “marking” identifies a particular company as the sole source. Less than a year ago, a court held that the iconic Herman Miller Aeron and Eames chairs had acquired distinctiveness and were protectable trade dress. That, the court ruled was because over time the public had come to associate those products with Herman Miller as the single source of origin.

In the rest of this article, we will cover the basic “do’s and don’ts” of copying and protecting intellectual property regarding furniture products.

Signature Designs

A brand name or logo is your commercial signature. It identifies who you are and allows you to prevent others from using similar names or logos. This is, of course, fundamental trademark law, which prevents consumers from becoming confused as to the source of products. The name Herman Miller, for example, is the trademark.

However, since furniture brand names and logos are often not displayed on the physical product, manufacturers can adopt other identifying designs or features as commercial signatures for their brands. That’s why it’s a good idea, especially if your company is well known by consumers, to incorporate a signature design or nonfunctional feature into your furniture that customers associate with you only.

From there, a manufacturer needs to use those features exclusively and promote them in advertising. Brand recognition is a huge marketing tool that can help sell products and build loyalty. Based on this recognition, consumers know that a product will deliver the quality they expect. Therefore, when you include nonfunctional features that indicate to consumers that a piece of furniture was manufactured by you, your product will have the potential to acquire distinctiveness as a brand.

This acquired distinctiveness for product design features is referred to as “secondary meaning.” Trade dress law, a subset of trademark law, protects these kinds of designs because they enable consumers over time to identify a product’s maker. To be clear, however, it is not the novelty of the design choice that is important. Even the most unusual furniture designs are not viewed by consumers as inherently distinctive or immediately associated with only one company. The United States Supreme Court recognized over 20 years ago that consumers of furniture, fashion, and other products are predisposed to view product designs as either appealing or useful. That means that they do not equate a feature with only one company upon the moment of creation.

To help establish consumer recognition, it is first important to define which non-functional features you claim are exclusive to you. Herman Miller was able to accomplish this, in part, with the help of expert witness testimony. Then, it is important to consistently focus advertising and marketing to draw consumers’ attention to specifically “look for” those features as your brand. If you can obtain exclusivity over time, achieve a sufficient volume of sales, and engage in efforts to display those non-functional features, then trade dress law may protect against others copying those features. While trade dress protection is difficult to obtain, it is a powerful tool to establish your presence in the furniture world.

Don’t Confuse Customers

The flip side to creating commercial brand recognition is to refrain from copying another’s identity. If you copy a company’s brand name or logo, you are in trouble. But if you plan to copy design features of another company’s furniture product, it is important to avoid copying any protectable trade dress features, as discussed above. Using a private label on furniture is helpful, but is not always enough to avoid trade dress infringement. In other industries, labels that are prominent and conspicuous will usually avoid trade dress infringement over the shape of a product because consumers will not be confused regarding the source. Furniture is unique in a sense, because the use of labels is not often prominent or conspicuous.

When it comes to furniture design or marks, the key is to avoid consumer confusion regarding the source. If you know that a non-functional design is exclusively associated with a particular manufacturer, it may be best to avoid using it or a similar design even if you have your private label. On the other hand, if that design primarily serves a function, then it is not protectable, no matter what the manufacturer might say, unless it is covered by, and marked with, a patent. In addition, don’t assume that consumers automatically associate the design with some other manufacturer.

If you plan to copy design features of another’s furniture product, it is important to avoid copying any protectable ‘trade dress’ features.

Do Your Research

Try to figure out what the consumer perception of a particular design or configuration is. If you were to design something similar, determine if consumers would be puzzled about where the piece of furniture came from. Just because a design is highly attractive or performs well, that does not mean it is associated with only one company. Generally speaking, the law allows competitors to copy product designs. But, if you copy and then attempt to pass off your goods as those of another—by false advertising, using another’s trademark, or misleading consumers in some way—the law will not allow it. Many “house brands” or “store brands” will copy colors and packaging and then use their private labels to distinguish the products. There is no reason why furniture companies cannot implement similar marketing strategies. For example, a retailer should be allowed to engage in comparative advertising and promote their private label furniture over a higher-end competitor’s similarly designed piece of furniture. Again, in the absence of a patent, the retailer must remember not to attempt to deceive consumers regarding the source.

When in doubt about copying furniture product designs, it is always best to consult with an intellectual property attorney to decide on an appropriate plan of action and minimize the risk of liability.

Copying Functional Designs

If you see a new design that affects the way the furniture operates or looks, you are generally okay and encouraged to incorporate that design into your products. Functional aspects of furniture are not protected by trade dress or copyright. While you cannot protect them yourself, the law promotes reproduction to foster marketplace competition. Using other furniture’s functional aspects can enhance your designs and keep you out of legal trouble.

Functionality can be hard to define in practice. One type of functionality can be thought of as the parts of furniture products needed for them to be used properly. This definition may include chair legs, a lampshade or a table top. Even a piece of furniture’s aesthetics can be functional depending on the reason for its looks. If the aesthetic design of a product is itself the “mark” that a company is trying to claim protection for, then trade dress law—concerned only with source identification—will not provide any legal protection. The reasoning for not extending trade dress protection to aesthetic product features applies when the right to use those features would place competitors at a significant non-reputation-related disadvantage. Consumers of furniture, like fashion, deserve to purchase aesthetically pleasing products from various manufacturers and brands. Marketplace competition supports this notion and provides consumers with options. Keeping this in mind, you can reuse someone else’s aesthetically functional designs for furniture in most situations when doing so relates primarily to design aesthetics, not source identification.

Role of Patents

DON’T copy furniture designs that are covered by a patent. While this protection is rare, a patent will fully protect the furniture and its ornamental or useful features. Therefore, if you plan to copy a design, it is important to do a quick search to make sure that the design or configuration is not covered by a patent.

The purpose of a patent is to protect new and useful inventions. They can be used to protect new furniture designs if they meet these criteria. In addition, design patents can protect the overall configuration or look of furniture. However, this expansive protection is limited. For utility patents (ones that cover useful features), the coverage is 20 years from the filing date of the original application. A design patent has a time frame of 15 years from the date of grant. It is important to keep this in mind while searching because a patent may have already expired. As previously mentioned, patents are difficult to obtain. In addition to requiring a novel concept, obtaining a patent is expensive and takes a significant amount of time. For instance, the USPTO’s website indicates that the average time to obtain a design patent is around 21 months.

Before implementing a new feature into your furniture, running a quick patent search can save you from a later headache. More likely than not, there will be no patent coverage. Nevertheless, it is better to be sure than to find yourself in a legal battle. The quickest way to check is to run a quick internet search somewhere like Google Patents.

Copyright Protection

The last form of protection you can try to implement is copyright protection. Copyright law protects original design features that are conceptually separable from the functional parts of furniture. These creative aspects are protectable. Consider, for example, a lamp that has a cat statue as the lamp-stand. Since the cat statue can be imagined separately from the lamp and still be considered a creative statue, the cat statue portion of the lamp is protectable. Other examples might include carvings on furniture pieces or artistic designs in a metal door.

Copyright can be useful for protecting designs, but it is not without its limits. It cannot protect the overall configuration or design of furniture, because typically furniture is considered a “useful article” unprotectable under U.S. copyright law. Only conceptually separable creative “original” elements are protectable. This means that if an element is normally part of a useful article such as a piece of furniture, it is still considered an unprotectable useful article. However, as mentioned above, artistic carvings are not normally part of the furniture so those ornamentations are conceptually separable and may be protectable if they are original.

Implementing creative designs that are conceptually separable from furniture can be very beneficial. If you design furniture with these characteristics, it may be a good idea to try to register with the U.S. copyright office. It is a simple process that affords you the most protection. Plus, it will make enforcing your rights much easier.

If you can enforce your copyrights the law will provide you with remedies. On the other hand, if you are caught duplicating a copyrighted work, you will be at risk of being forced to destroy your inventory, pay damages, disgorge your profits, and potentially pay the owner’s attorneys’ fees. Even an “innocent” retailer who purchased furniture from a manufacturer may be on the hook for infringement if the retailer purchased furniture from a manufacturer who violated another’s copyright. In the fashion industry, for instance, retailers are often sued for copyright infringement even though the retailer merely purchased goods from a vendor or supplier. Furniture retailers can and should include indemnity provisions in purchase orders sent to manufacturer/suppliers.

Conclusion

Furniture manufacturers are allowed to protect certain design features as well as lawfully compete by copying designs under appropriate circumstances. U.S. intellectual property laws provide the guideposts for determining what can and can’t be protected. Trademark law can protect marks and certain configurations but is limited to those that identify the source of the furniture. Patents cover functional and ornamental designs; however, they face heavy costs and lengthy waiting periods. Copyright is another possible avenue for protecting conceptually separable original design features. It, like trademarks, is also limited to nonfunctional aspects of the furniture. Understanding these laws can help you decide how to protect your furniture and how to lawfully compete by copying unprotectable design features.

Buying, selling, and advertising furniture without understanding the intellectual property laws is a risky business. If the boundaries are unclear to you in a particular situation, it is best to consult with an intellectual property attorney. Intellectual property lawsuits in furniture cases can be challenging, confusing, and at times overwhelming. Securing a favorable judgment may appear difficult given the legal hurdles, but filing a lawsuit may be the only way to protect a company’s intellectual property rights and prevent others from mass copying. Not all companies have the resources to protect intellectual property in litigation or to defend against such claims, so careful strategic consultation with legal counsel is the best approach before making any decisions.

 

 


About Scott P. Shaw

National intellectual property (IP) attorney Scott P. Shaw specializes in litigation and licensing within the furniture manufacturing and retail industry—from design and technology to eCommerce and counterfeiting. He is the Managing Partner of Merchant & Gould’s Los Angeles office. As an experienced IP trial attorney, Scott focuses his practice on litigation, supporting clients in protecting their IP and defending against infringement allegations. His experience includes matters involving copyrights, trademarks, trade dress, patents, trade secrets, false advertising, unfair competition, contract and licensing, and class actions. Throughout his career, Scott has handled numerous lawsuits from inception through trial, including many trials as the first-chair lead trial attorney. He can be reached at sshaw@merchantgould.com or 949.330.0202.


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