ALTHOUGH INTELLECTUAL PROPERTY LAW IS A SIMPLE CONCEPT, its details can be
as tortuous as the name implies. But a basic understanding is important to anyone purchasing,
specifying, designing, or manufacturing products for retail environments. This is true both for
protecting proprietary designs, and for the common—but illegal—practice of routing a manu
facturer’s specification and engineering drawings to competitors.
“Intellectual property” is property made up of ideas rather than things. Protected by the U.S.
Constitution and by international law, intellectual property is covered by copyrights, patents, and
trademarks. At its heart, IP law ensures free trade. It protects the holder’s right to profit from his
or her works, while preserving competitors’ rights to produce similar (but not identical) works.
Trademarks protect companies. Patents protect things. Copyrights protect artistic works such
as poems, songs, and drawings, and ideas expressed in digital form. Copyrights are awarded
automatically when a work is completed, whether or not the author knows it or ever files a paper.
For the purposes of IP law, design and technical drawings are no different from purely “artistic”
works. Both are equally protected.
Take a toaster, for instance. While the idea of a toaster can’t be patented (it’s a “useful object,”
not a unique idea), an improved heating element could be. Such inventions are protected by utility
patents, the most common kind. Aesthetic elements, such as distinctive shapes, also can be covered
by design patents. The engineering drawings for making a particular toaster are protected by
copyright. By a process called “reverse engineering,” competitors can copy elements of existing
toasters that are not patented. But unless a client has purchased the rights to the design and/or
technical drawings and has the purchase in writing, copying, or using them without the copyright
holder’s permission is copyright infringement and is against the law.
WHY REGISTERING YOUR DESIGN MATTERS
Copyright is automatic once a work (in this case a design or drawing) is completed. But to be able to
collect court fees and damages in a suit, copyrights must be registered with the U.S. Copyright Office,
part of the Library of Congress. Registration costs $35 per work (if registered online) or $50 if sent
by courier to the office with an application form. Visit www.copyright.gov for more details.
Patent filing is complex and relatively expensive. Getting a patent may take several years.
Utility patents last 20 years, and design patents are for 14 years. In general, filing a patent requires
an initial filing fee of several hundred dollars, an application fee, a complete description of the
invention (including comprehensive drawings when necessary) and one or more “claims”—state
ments about the invention or design that will determine what is protected. A patent examiner then
looks at the application. If it’s accepted, another fee is required. To maintain the patent for its full
term, additional payments are required at intervals. For more information on filing for patents
or for trademarks or service marks (which is a simpler process), visit www.uspto.gov.
However, copyright law allows for oth-
ers to make similar products, as long as
they do not copy the work exactly, which
accounts for cheap “knock-offs” of expen-
sive products made of different materials
or with different processes. According to
H+B’s lawsuit, the other vendor’s fixture
will use longer sheets of acrylic that have
a glossy finish (H+B’s fixtures had a matte
finish), will use a different type of light-
ing, and will have different electric compo-
nents. Will that be enough to avoid a court
finding “substantial similarity?”
There is no way to tell, but even if
it doesn’t, damages might be limited.
Copyright law grants automatic intellec-
tual property rights to creators, but limits
the amount of money creators can collect
if they haven’t registered their copyrights.
“You can sue under common law if your
copyright is not registered,” Katz says.
“You can sue under federal law only if it’s
Other laws and principles can also apply,
she adds. One commonly at issue is the
“statute of frauds,” which refers to require-
ments that certain kinds of contracts must
be made in writing to be enforceable under
law. These vary from state to state. H+B’s
attorney, Peter Levine, says that under
New York State’s laws, the statute of frauds
doesn’t require a written contract unless
the contract cannot be performed within
UPDATE: After the statutory deadline for
response passed at the end of May with no
acknowledgment from JCP, the Clerk for the
Southern District of New York filed a certificate of default against the retailer. JCP
then responded by asking the court to dismiss the lawsuit and to vacate the certificate
of default. With 45 days to respond to this
filing, H+B plans to “respond vigorously,”
Maharg says. “We have no intention of dropping the suit,” he says. “We intend to pursue
it aggressively—and we’ve heard nothing
but positive comments about our decision to