Intellectual Property Considerations for Designers & Artist
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Knobbe partners Jeff Van Hoosear (OC) Jason Jardine (SD) and associate Julia Hanson (SD) recently gave a presentation at San Diego Fashion week on intellectual property for designers and artists. The presentation explored what IP is, why it is important to designers, top 5 misconceptions, how to get a copyright, how to get a trademark and how to get a design patent.
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Intellectual Property Considerations for Designers & Artist
- 1. © 2021 Knobbe Martens Intellectual Property Considerations for Designers & Artists Presented By: Jeff Van Hoosear Jason Jardine Julia Hanson July 13, 2022 Knobbe Martens 3579 Valley Centre Drive, Suite 300 San Diego, CA 92130 1
- 2. © 2021 Knobbe Martens Today’s Knobbe Team 2 Jeff Van Hoosear Jason Jardine Julia Hanson
- 3. © 2021 Knobbe Martens Today’s Agenda 3 Intellectual Property What is IP? Why it is Important to Designers Top 5 Misconceptions How to get a Copyright How to get a Trademark How to get a Design Patent
- 4. © 2021 Knobbe Martens Disclaimer This presentation is for information purposes only and does not constitute legal advice. This presentation does not establish any form of attorney-client relationship. 4
- 5. © 2021 Knobbe Martens What is Intellectual Property? 5 Licensing Utility Patents Design Patents Trademarks Rights of Publicity Trade Secret Trade Dress Copyrights
- 6. © 2021 Knobbe Martens Why is Intellectual Property Important? Provides the right to exclude others from using your designs Allows you to enter into license agreements with others 3D printing
- 7. © 2020 Knobbe Martens Top 5 misconceptions 7
- 8. © 2021 Knobbe Martens Misconception 1: All IP is the Same 8
- 9. © 2021 Knobbe Martens Misconception 2: 10% Rule Brighton Collectibles v. Coldwater Creek 9
- 10. © 2021 Knobbe Martens Misconception 2: 10% Rule Crocs (D517,789) v. Various Accused Shoes 10
- 11. © 2021 Knobbe Martens Misconception 3: Fashion Designs Are Not Protectable Fetish Group, Inc. v. Express, LLC 11
- 12. © 2021 Knobbe Martens Misconception 3: Fashion Designs Are Not Protectable United States Supreme Court Case Star Athletica v. Varsity Brands, March 24, 2017 12
- 13. © 2021 Knobbe Martens Misconception 3: Fashion Designs Are Not Protectable
- 14. © 2021 Knobbe Martens Misconception 4: I Can Wait to Get IP Protection 14 COPYRIGHTS TRADEMARKS PATENTS • ONLY get statutory damages if registered before infringement OR w/in 3 months of publication • Get these EARLY and OFTEN • FILING DATE determines nationwide priority • FIRST TO FILE
- 15. © 2021 Knobbe Martens Misconception 5: If it does not have ©, I can use it 15 LAW CHANGED DECADES AGO DOES NOT NEED © TO BE PROTECTED BY A COPYRIGHT SEEK PERMISSION
- 16. © 2021 Knobbe Martens Misconception 5: If it does not have ©, I can use it 16 • BUT…
- 17. © 2021 Knobbe Martens Summary: Top 5 Misconceptions 17 All intellectual property is the same-FALSE If I change something 10% I won’t infringe somebody’s trademark/copyright/patent- FALSE Fashion designs can’t get copyright protection-FALSE I can wait to get IP protection- FALSE If it doesn’t have a copyright symbol, anybody can use it- FALSE
- 18. © 2020 Knobbe Martens How to Get a Copyright 18
- 19. © 2021 Knobbe Martens COPYRIGHT? 19 No registration necessary—it’s automatic! But, only $45, presumption of validity, must register to file suit, and opportunity to recover statutory damages and attorney’s fees if others copy Mark to provide notice: © 2020 Company Name All Rights Reserved Rebuts claim of innocent infringement Deters potential infringers
- 20. © 2021 Knobbe Martens How to Register a Copyright Visit www.copyright.gov 20
- 21. © 2021 Knobbe Martens How to Register a Copyright (cont.) 21 Fee: $45 You can easily do this YOURSELF
- 22. © 2021 Knobbe Martens Unicolors v. Urban Outfitters
- 23. © 2020 Knobbe Martens How to get a Trademark 23
- 24. © 2021 Knobbe Martens What is a Trademark? What is a Trademark? • Any symbol capable of identifying and distinguishing its owner’s products or services from those of others • Answers the Question – Where do you come from? • Conveys your reputation o Example: Do you want shirt from: 24 or
- 25. © 2021 Knobbe Martens Trademarks 25 Start marking sold goodsTM – common law For ® - register with USPTO Search before you invest! DO YOUR HOMEWORK IN THE BEGINNING!
- 26. © 2021 Knobbe Martens Choosing a Strong, Protectible Brand 26 ASPIRIN ESCALATOR
- 27. © 2021 Knobbe Martens Trademark Availability A trademark is not available if: • The mark or a confusingly similar mark is already federally registered or is the subject of a pending federal registration (assuming that the application is ultimately accepted); OR • The mark or a confusingly similar mark is already being used in the same market in connection with similar goods or services. 27
- 28. © 2021 Knobbe Martens Is the Brand Available? Conduct a Trademark Search on both the Name and the Logo BEFORE Investing $$$ • Make sure no one else is already using a confusingly similar name/logo • Make sure that the name/logo is protectable and registrable as a trademark • One resource: Trademark Electronic Search System (TESS) Once name/logo is cleared, seek a Trademark Registration—use a good attorney 28
- 29. © 2021 Knobbe Martens Federal Registration Federal Registration provides • Presumption that your company owns valid mark • Constructive use nationwide dating back to filing date • Constructive notice of the company’s trademark rights • Important in enforcing your company’s rights • Record registration with U.S. Customs 29
- 30. © 2021 Knobbe Martens Trademark Registration 30 File trademark application Cost of filing an application varies depending on the number of Classes applied for and number of jurisdictions Trademark Offices divides the universe of goods and services into 45 different Classes PTO fees alone are ~ $350 per class Unfortunately no worldwide trademark registration!
- 31. © 2021 Knobbe Martens Proper Trademark Use 31 Ensure that all marketing materials properly display trademarks Provide proper notice using ™ or ® Use trademarks as an adjective, not a noun “Hand me a Kleenex tissue” vs. “Hand me a Kleenex” Use the brand consistently with how it is filed
- 32. © 2021 Knobbe Martens 32 Loss of Trademark Rights
- 33. © 2021 Knobbe Martens Important Trademark Tips & Considerations 33 Do not accidentally steal someone else’s copyrighted work or trademark to use as your trademark If using a designer, obtain copyright to your logo/icon Control authorized usage via appropriate licensing
- 34. © 2021 Knobbe Martens Domain Names and Social Media 34 Register as trademark “Defensive” domain names Watching services Monitor domain name renewal deadline Obtain Trademark as Name on Popular Social Media Sites (even if not going to use) Facebook, Twitter, etc.
- 35. © 2021 Knobbe Martens Final Thoughts on Trademarks 35 Choose a Strong Brand (Word and Logo) Choose Conduct a Trademark Search Before Investing in the Brand Conduct Seek Trademark Registrations •Think about long term product and geographic expansion Seek Properly Use the Brand Use Ensure Quality Control •Distributors/licensees/certification programs Ensure Secure Domain Names Secure
- 36. © 2020 Knobbe Martens How to Get a Design Patent 36
- 37. © 2021 Knobbe Martens Why Get a Design Patent? Investors look at this as a valuable asset Get this for your “iconic” designs Provides time to acquire secondary meaning required for a trade dress 37
- 38. © 2021 Knobbe Martens Why Get Design Patents? 38 Lower Costs ($2500-$3500) Foreign Strategies (6 months) Reduced Time to Registration (Average 12-18 months) Allowance Rate About 90% (~82% first action) Enforcement Damages – Infringers Total Profits Apple v. Samsung, ~$700M on 3 design patents
- 39. © 2021 Knobbe Martens What is a Design Patent? Configuration, Shape, Surface Ornamentation or Color Only the Appearance, Not Structural or Utilitarian Features Novel/Non-obvious Not offensive 39
- 40. © 2021 Knobbe Martens Drawings – Hidden Lines for Jimmy Choo 40
- 41. © 2021 Knobbe Martens Summary 41 Determine which brand assets are most valuable to your business and designs Be proactive about protecting those assets Prioritize IP protection early and often Seek attorney advice when possible
- 42. © 2021 Knobbe Martens Questions? jeff.vanhoosear@knobbe.com jason.jardine@knobbe.com 42
Editor's Notes
- There are conferences and expos held worldwide on 3D printing, including its impact in the fashion industry. Dutch designer Iris van Herpen has created a line emphasizing graceful, florid shapes thanks to 3D printing technology. Introduced at the 2018 Paris Fashion Week, her Spring/Summer 2018 collection of 21 pieces resorts to advanced digital technology such as laser-cutting, parametric design, and 3D printing. Balenciaga took 3D scans of models’ bodies to create jackets with only two seams: at the side and at the arm hole. Shoe companies are competing for who can create the best shoes using 3D printing. Nike has partnered with HP to speed up their 3D printing technology. Adidas, New Balance, and Underarmour also have innovative 3D printed shoes. Adidas is using technology from a silicon valley start-up, Carbon, for the creation of its new 3-d printed mid-soles. “Digital Light Synthesis” technology uses light and oxygen to make plastic objects like the sneaker midsoles from a pool of resin, without any messy waste or need for injection molding. Despite its immense benefits, 3D technology also comes with its challenges. Just as designers will be able to create a shoe at the click of a button, infringers can do the same. It will not be long before a 3D printer will allow anybody to produce an exact replica of any design made via 3D printing technology. The decreasing time required to design and produce shoe replicas will increase the importance of IP protection. Soon Anybody Can Have an Exact Replica Of Any Design, Custom Made, at the Click of a Button…
- Jury found Substantially Similar—awarded $7.39 million
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010). In one of several decisions involving design patents for CROCS shoes, the Federal Circuit held in favor of the plaintiff Crocs, finding that, when viewing the accused shoe designs side-by side with the patent drawings, the accused shoe designs were substantially similar to and, thus, infringing on plaintiff Crocs’ design patent The Federal Circuit also reminded lower courts about the “misplaced reliance” on detailed verbal descriptions in design cases, which “risks undue emphasis on particular features of the design rather than examination of the design as a whole.” Crocs, 598 F.3d at 1302.
- What was not decided was whether these designs were original enough to qualify for copyright protection—modicum of originality. Unfortunately, the Star Athletica case was settled by the insurance carrier and dismissed
- Talk about Why register on same slide
- The point of the pictures is that the red-sole of Louboutin’s shoes and the design of the birkin bag are not trademarkable without secondary meaning. Thus, one strategy that both Louboutin and Hermes employ is that they file design patents on their products and this gives them time to acquire that secondary meaning required to register a shoe color or a product design as a trademark. Both Louboutin and Hermes have numerous registered design patents. Louboutin red sole: U.S. Trademark Registration No. 3,361,597 Hermes, Birkin Bag: U.S. Trademark Registration Nos. 3,936,105 and 1,806,107
- Obtain exclusivity in your market niche, design=appearance