When we last visited Donnie Designer, a producer of expensive accessories, he had been talking with his advisor, Manny Lawsuits. They resumed their talk a few days later:
Donnie: So what you should I do? As I learned, if someone independently came up with a design similar to mine, that is, he created something without copying it from me or anyone else, there is no copyright problem. I also hear that some copyright laws don’t permit registration of fashion designs.
Manny: Use design patents (a.k.a. Registered Design Rights). With a registered design right, you pretty much have a total monopoly on a design.
Donnie: I heard about those, aren’t design patents a big part of the fight between Apple and Samsung is about?
Manny: Yes.
Donnie: Wait a minute, as I understand, to register a design correctly the design has to be new and of sufficiently individual character, but that’s a hard thing to do in fashion – which is the business I’m in. I mean, how am I supposed to convince some government guy that my designs are new? How am I supposed to protect my designs that are already out there, they’re not new? And by the time I go through the registration process, the fashion season’s over.
Manny: Then get a trademark. My lawyer tells me you can get trademarks for colors, the way Tiffany has gotten a trademark for its Tiffany Blue or the surface shape the way Louis Vuitton has trademarks for its Epi leather design.
That way you can nail a guy who copies your design even if they don’t include your logo.
Donnie: Isn’t all this a bit sneaky?
Manny: Well look at the kind of people you’re dealing with. Have you seen this, it’s a clone of someone’s 3D printer? The 3D printer people are ripping each other off. If they are willing to disregard the intellectual property rights of their own community, what will stop them from mass producing copies of your products on 3D printers?
Donnie: Mass producing on 3D printers? I think that’s a ways off, after all my geek son told me it takes something like an hour to 3D print a phone case so I think mass production of my handbags on 3D printers is not going to happen tomorrow. A couple of years from now? Maybe, but not tomorrow.
COMMENT:
Is Manny correct that a design patent / registered design right gives you a monopoly?
Well, technically a holder of a registered design right can stop people from making, offering, putting on the market, importing, exporting, using or stocking products to which his or her design is applied. You can protect two-dimensional designs or surface patterns as well as shape and configuration with a registered design right.
However, some laws (e.g. the UK’s Registered Designs Act 1949) have exemptions for non-commercial copying – that is if a design is copied for ‘purposes which are not commercial’ there is no infringement. Furthermore, the design may not be registerable if it is dictated by technical function, or the element being duplicated is a component part not normally visible.
As for Donnie’s comments, while copyright protection is automatic, you do need to register your copyright in some places (such as the U.S.) to get maximum protection. Donnie is correct that U.S. law does not permit the registration of fashion designs and while he is correct that many clothing makers have not favored design patents/registered design rights because of the requirements to getting a design patent, makers of athletic shoes have been able to obtain design patents and have been responsible for much of the design patent litigation in the fashion context.
With regards to other types of patents (i.e. those covering inventions) there are many objects that can be replicated on a 3D printer that could be protected by a patent.
Epilogue
Donnie Designer recognized that although Manny was being a bit alarmist, 3D printing would improve over time and that attempts to litigate would be expensive an ultimately futile.
He also could see that today’s 3D printers did have certain limitations and thus posed no immediate danger to his business. Donnie realized that he could redesign his products such that they could not be easily replicated with current 3D printing technology and set out to do so.
At the same time, he also recognized that he could use 3D printers to prototype new designs more quickly or customize existing designs, for instance through customized 3D-printed name tags or other accessories.
This was an article in the series: 3D Printing and Intellectual Property Rights
- An overview of potential legal matters with 3D printing
- An introduction to and perspective on Intellectual Property Rights
- An Introduction to IPRs (finally)
- Copy is a four letter word
- War or Peace?
- more in the pipeline…
