The Art of Protecting Design

We are lucky to have another guest post from the wonderful Molly Torsen Stech: Knowing that other attorneys gracefully bridge the different bodies of intellectual property law more often than I, I recently found a post on the 1709 Blog very interesting; it considered the various ways in which interior design might be protected by intellectual property laws. In particular, it considered copyright, design rights, and trademark rights; and it generated some interesting comments.

Of course, “interior design” can comprise a wide array of meanings. Is it the totality of the look and feel of a single room in a home or is it a hotel’s overarching color scheme and atmosphere, complete with floral arrangements, wallpaper, and furniture style and placement that comprise interior design? Given that Serbia has recently amended its design law, Israel is considering a new design law, the European Commission may publish the results of an evaluation of the legal and economic aspects of its design protection in early 2016, and given the fascinating designs on view at the ongoing Expo in one of my favorite cities, some esoteric musings on the nexus of IP laws are perhaps warranted.

In struggling to understand the term “interior design,” it is also useful to spend some time parsing the term “industrial design” (and even just “design”), in an effort to understand how to differentiate design from art; and art from commercial identification, and so on. Needless to say, none of this is straightforward. As McKenna and Strandburg note, “[p]roduct design lies at the intersection of the patent, copyright, and trademark regimes. Useful articles often have both utilitarian and aesthetic aspects, and at times their features serve as source identifiers in the marketplace.” The United States handles these amorphous questions under copyright law, design patent law, and/or sometimes trademark (trade dress) law.

Unlike the European Union, and other intellectual property regimes, it does not have a sui generis design law under which to protect designs specifically, although the United States did recently implement the procedure-oriented and WIPO-administered Hague Agreement Concerning the International Registration of Industrial Designs. Given the nearly undefinable nature of “design,” and the often patentable or copyrightable objects to which design is affixed or in which it is embedded, it is of course arguable whether a domestic sui generis design law is helpful. The United States Patent and Trademark Office, in its definition of “design,” through the lens of design patents, notes:

Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.

But to obtain a design patent, the subject matter must be an article of manufacture (a tangible, man-made object); and it must be original, novel, non-obvious, and ornamental; the characteristics of these adjectives have developed through case law. U.S. copyright law does not protect design (with the improbable exception of a vessel hull design) embodied in a useful article (including clothing, furniture, and household appliances) unless the thing is expressed separately from that useful article. Fabric design, for example, can be copyrighted if it is creative enough, but a dress design made of that fabric cannot be copyrighted because U.S. copyright law perceives the dress as a useful article. 

Copyright does not protect the mechanical or utilitarian aspects of. . .works of craftsmanship. Copyright may, however, protect any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object. Thus a useful article can have both copyrightable and uncopyrightable features. For example, a carving on the back of a chair or a floral relief design on silver flatware can be protected by copyright, but the design of the chair or the flatware itself cannot, even though it may be aesthetically pleasing.

The Alessi Fior d'Olio

What, then, does a company do with something like Alessi’s Fior d’Olio, designed by Marta Sansoni, for example? What is its protection strategy in the United States versus other jurisdictions, keeping in mind that forms of protection are generally not mutually exclusive?

The Fior d’Olio is essentially an olive oil receptacle, pourer and cap. The cap “fits into the neck of the bottle, allowing you to pour only as much as you need on your food, while controlling the oxidation process that begins as soon as the bottle is opened.” While its description sounds much more functional than it does aesthetic, the Fior d’Olio’s appearance is quite charming and elegant and its lever looks like an olive leaf. Is the leaf conceptually separable from the receptacle so as to achieve eligibility for copyright protection? Perhaps, theoretically, but the leaf piece in itself may not actually cross the threshold to adequate creativity for copyright purposes. Trade dress protection is likely unavailable since a consumer is not likely to immediately recognize the receptacle as an Alessi product (in comparison, consider the shape of a bottle of Dom Perignon champagne, which is recognizable as such.)

This musing is not so timely as it is summertime food for thought. Lawyerly creativity may reach its zenith in creating a strategy for protecting these gems of manufacture that overlap IP regimes, both within a single jurisdiction, and worldwide.

Kindness or Catastrophe? Australia's experience of resale royalty rights

"Artist’s Resale Royalty in Australia: Strong evidence of a catastrophic decline in both sales and prices: Australia's Art Market Down 50%" is the title of an article in AAD (Art Antiques Design) by Australian artist and artists' resale royalty agitator John R. Walker. According to the abstract:

In this article, I shall give an overview of the highly corrosive impact, which the Artist’s Resale Royalty (ARR) has had, and is having on Australia’s Art market. The impact of ARR also appears to have had an entirely adverse reaction on the UK’s Art Market; with trade in a large proportion of valuable secondary market Art works now, quite obviously, taking flight to places like New York, Switzerland and Miami. Below, as you will see, many reputable, and governmental sources have been cited. Due to the implementation of this scheme, we, in Australia, have sadly seen our indigenous Art sector virtually wither away right in front of our eyes since the ARR was introduced back in 2010.

I’m an Australian Artist, I’m not being paid to write this, and the below is an honest appraisal of what we are facing here due to the ARR, and it is written based on my personal experience, and on factual publicly available information.

This article powerfully and persuasively puts the case for taking an urgent look at a scheme which, however well-intentioned its implementation may have been, appears to be in need of careful reappraisal.

To read this article in full, click here