Copyright or design patent – how do I protect my product in the United States?

Manufacturers spend a significant amount of time and money bringing their products to market. Many products will fail to capture the attention of consumers, but when a product clicks the profits from that product can make up for all the failed products. Successful products also attract the attention of competitors that wish to make a profit. These competitors attempt to create knock-off products and benefit from the research and development of the manufacturer that originally created the product. Therefore it is in the best interest of all manufacturers to guard their products designs as best they can. Two forms of intellectual property can help a manufacturer protect their product designs are copyright and design patents. These two forms of intellectual property are similar but there are distinct differences. To choose the best form of protection for a product it is important to understand the similarities and differences between design patents and copyright.

Copyright is a set of exclusive rights granted to the creator of a new work of expression. Copyright typically applies to artistic works such as paintings and music, but certain product designs and patterns can qualify for copyright protection. See 17 U.S.C. § 102 A copyright is granted the moment a work is created. Registering the work the the United States Copyright Office will grant the copyright owner additional rights, but registration is not a condition precedent to the creation of a copyright. If someone other than the copyright owner reproduces, distributes or displays a product which is subject to a copyright, that can be considered copyright infringement. A copyright lasts the life of the author plus 70 years or for 95 years in the case of a work made for hire.

Copyright protection is not available for “useful articles” which have an intrinsic utilitarian function. Something like a sports uniform would not qualify for copyright protection because it has a utilitarian function, however the design on the sports uniform could be eligible for copyright protection. Copyright also protects two- or three dimensional artistic features incorporated into the design of a useful article, if those features are separable from the useful article. A lamp is a considered a useful article, because it has an intrinsic utilitarian function, namely, to provide lighting. By contrast, a three-dimensional floral design affixed to the base of a lamp or a two-dimensional garden design painted on a lamp shade does not have an intrinsic utilitarian function. Therefore, the U.S. Copyright Office may register those design features if they are separable from the functional aspects of the lamp and if they are sufficiently original and creative. See Star Athletica, 137 S. Ct. at 1007, 1011-12.

Design patents are intended to protect new, ornamental and non-obvious articles of manufacture. See 35 U.S.C. § 171. An article of manufacture includes manufactured items such as a shoe, a watch smartphone, a drinking glass and a drink bottle. A manufacturer obtains a design patent by filing a design patent application with the United States Patent and Trademark Office. To be granted a design patent, the applicant must demonstrate that the design is new and original, if similar designs already exists a design patent may not be granted. A design patent lasts for a period of 15 years. Infringement of a design patent occurs where an ordinary observer would think the allegedly infringing design is substantially the same as the patented design.

For example if a manufacture develops a new shape for the body of a smart phone, the design of the body could qualify for design patent protection. However, the design patent would not cover the internal workings of the smart phone, or prevent competitors from making smart phones that have a different shape.

When a product design qualifies for both forms of protection, it is in the best interest of a manufacturer to use both methods of protection. Design patent law and copyright law offer slightly different methods of protection and have different advantages.

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