Imitation Could be Illegal
I’ve lately seen an uptick in discussions on woodworking forums and social media regarding protecting one’s own furniture design. And while it’s possible that some laws have changed since 2008 when attorney and woodworker Jon Shackelford wrote the article below, I think his explanation remains a good starting point for those concerned with the topic – whether it’s protecting your own rights or making sure you don’t trample on those of others.
by Jon Shackelford
From the November 2008 issue,
Many iconic designs are legally protected; research before you copy.
It has often been said that imitation is the sincerest form of flattery. Perhaps nowhere is imitation more commonplace than in furniture making. Attractive pieces from antiquity as well as the avant-garde are studied, scaled and reproduced by industrious woodworkers everywhere. But not all furniture creators and designers consider imitation a compliment – especially when it leads to lost income or damaged reputation.
In increasing numbers, furniture creators and designers are turning to intellectual property law as a means of preventing unauthorized replication of their work. Take for example the famous Eames lounge chair and ottoman, pictured above. Herman Miller, who acquired exclusive rights from Charles and Ray Eames nearly 60 years ago, has sought to stop others from reproducing the “EAMES” trademark and also the lounge’s distinctive shape (its “trade dress”), and has registered these traits with the U.S. Patent & Trademark Office.
United States commerce laws encourage competition in the marketplace, and toward this end favor a competitive landscape in which many sellers can offer the same popular products. This aim, however, is in tension with two other societal objectives: 1) encouraging innovation, and 2) preventing consumer confusion at the point of purchase.
How does a government like the United States, dedicated to free-market principles, balance equally compelling desires to foster creativity and protect consumers from fraud or mistake in their purchases? The answer, at least in part, is to limit the commercial copying of products (such as furniture) with a few carefully crafted “intellectual property” laws.
Under what circumstances is it illegal for a woodworker to reproduce someone else’s furniture design? As a practical matter, there is a difference between building furniture for sale and building for personal use. Although personal-use builders may be equally guilty of infringing someone’s intellectual property, they are far less likely than those who sell to be noticed or pursued.
Four Types of Protection
Illegal imitation of furniture is a form of trespassing – although instead of trouncing on another person’s land, the trespass is to their “intellectual” property. In the context of furniture reproduction, the most germane (but by no means the only) forms of intellectual property are: 1) design patents, 2) utility patents, 3) copyrights and 4) trademarks. For woodworkers who sell their handiwork, it may be helpful to envision these forms of intellectual property like menacing bear traps set between the workshop and the buyer. Avoiding infringement is a matter of carefully evading each trap, or seeking permission from (and often paying) the trap’s owner for the privilege of crossing over. To be caught in a trap is an expensive and exhausting process whether one is found guilty or innocent.
Design patents, common in the furniture trades, are a first variety of traps to be dodged by the reproduction furniture maker. They protect the unique (and unobvious) ornamental designs of things manufactured, and as such are ideally suited for all types of furniture. Once granted by the U.S. Patent Office, a design patent lasts 14 years and cannot be renewed or extended. Many successful furniture designers protect their creations with design patents.
Infringement of a design patent occurs when, in the eyes of an ordinary observer, giving attention as a purchaser usually gives, the reproduction piece substantially resembles the drawings in the design patent. If adjudged guilty, the infringer can be ordered to stop the infringement and pay money damages ranging from a reasonable royalty to compensation for lost profits or worse.
How can a reproduction furniture maker safely pass through the field of design patent traps? First, consider the age of the inspirational furniture design. If the piece to be copied has been known to the public for more than 18 years, then it is reasonably safe to assume any once-relevant design patents have expired. (Adding four years to the normal design patent lifespan accounts for possible delays in patent filing and examination.) For inspirational furniture designs less than 18 years old, the most reliable way to reduce the risk of design patent infringement is to conduct patent research. Patent infringement is serious business, and therefore clearance research is no job for an amateur; seek assistance from a qualified intellectual property lawyer.
Utility patents are another gang of traps standing between a woodworker and his or her customers. These legal devices provide protection for unique (and unobvious) products, as well as the machines and processes used to make things, and the materials from which things are made. Utility patents are so common in the furniture trades that the U.S. Patent Office has dedicated specific classifications to chairs, beds and other types of furniture. A utility patent lasts (typically) for 20 years from the date it is filed in the Patent Office and in this context cannot be renewed or extended.
Like their design counterparts, utility patents can be infringed even if the reproduction maker does not slavishly copy the original. Utility patent infringement occurs when the reproduction piece incorporates the combination of features claimed in one of the numbered paragraphs at the end of a utility patent. In addition to spending hundreds of thousands of dollars in a lawsuit, infringers will be ordered to compensate the patent holder. The utility patent shown below is for the Balans Variable Chair, memorable for supporting the occupant in a semi-kneeling posture. In the mid-1980s, the patent owners sued a competitor alleging infringement.
To trek safely around all possible utility patent traps, the reproduction furniture maker should again consider the age of the inspirational furniture. Utility patents have a slightly longer lifespan than design patents – 20 years. Furniture commercialized more than 20 years earlier, therefore, is not likely to remain fettered by utility patents. If the furniture piece to be copied is less than 20 years old and has unique attributes that could possibly be protected with a utility patent, a qualified patent lawyer should be engaged to search and evaluate the patent records.
Copyrights are a third form of intellectual property threat to the reproduction furniture maker. Copyright can be used to protect purely stylistic elements found in furniture design, including original works of applied decorative carvings or emblems, custom finials, original paint schemes, fabric patterns and such.
Copyrights have somewhat limited application to furniture design. The law has developed so that copyright protection should not overlap the domains reserved for patents. As a consequence, there are many boundaries placed on copyrights. For example, the overall shape of the furniture piece cannot be copyrighted – that is reserved to design patents. Nor can any functional features be copyrighted, in deference to utility patents. Even truly artistic features that are inseparably integrated into the structure of furniture cannot be copyrighted, for fear of encroaching into the patent domain.
To illustrate this last point, think of a shield-back chair with particularly artistic fretwork. If the fretwork is an integral portion of the backrest, the chair may not function properly without it. Therefore, the fretwork pattern is deemed inseparable from the structure and probably not copyrightable.
Many furniture companies routinely register copyrights covering distinctive artistic elements in their furniture designs, and do not seem reluctant to enforce those copyrights.
Under current U.S. law, a copyright automatically attaches the moment the “work” is created, and endures for the author’s life plus an additional 70 years. In the case of copyrightable works made by a company employee, the duration of copyright will be 95 years from its first publication or 120 years from creation, whichever is shorter. Therefore, due to the longevity of copyright protection, the reproduction furniture maker/seller should be careful when drawing inspiration from any artistic sculptures, carvings or pictorial representations that are less than 120 years old.
However, the risk of copyright infringement diminishes considerably if the artistic element at issue is a common feature found in pieces by various woodworkers, or if it is so integrated into the functionality of the piece (like the shield-back chair example) that it is hard to imagine the feature as a stand-alone work of art.
Copyright law, like all other forms of intellectual property law, is infested with terminology, interpretations and exceptions crafted by courts and lawmakers over many years. There is therefore no substitute for consulting a qualified lawyer if you suspect your commercial activity will lead anywhere near another’s copyright.
Trademarks are a fourth category of intellectual property traps for the furniture maker. A wise maker/seller of reproduction furniture will give wide berth to other people’s trademark rights, just as they would when crossing the areas laden with patent and copyright traps. Trademarks protect consumers from mistaking the source of a product they intend to buy. Consumers rely on trademarks (sometimes subconsciously) to indicate that a product was made or sponsored by a trustworthy source. Gustav Stickley, like many fine craftsmen and women, authenticated his pieces with various forms of trademark, from a red decal with joiners compass and “Als Ik Kan,” to paper labels, and eventually a stamped maker’s mark.
Trademarks can take a wide variety of forms – from words and logos, to colors, shapes, and even sounds and smells. The woodworker reproducing someone else’s furniture design should be especially mindful not to copy any maker marks, names, logos or distinctive product shapes (when the furniture shape is protectable as trade dress). Misappropriation of names, logos and maker marks should be rather obvious – refrain from using either the same or a confusingly similar branding technique as the original. For example, if someone selling their reproduction of a Craftsman-era chair applies to it (or their advertising) any of the protected words or logos associated with Frank Lloyd Wright, the reproducer may receive a nasty letter from the Frank Lloyd Wright Foundation, which currently holds a great many trademarks associated with the late architect.
Trade dress on the other hand, or as it is formally known “product configuration trade dress,” recognizes that the shape of a product can operate similar to a brand name or logo (as asserted by Herman Miller for the Eames lounge chair). Fortunately for the reproduction woodworker, the shape of a furniture piece must satisfy a high standard in order to acquire trade dress protection; not many furniture designs will qualify. Unless a business has been aggressive over a period of years policing its furniture designs, trade dress protection is not likely to be recognized.
In 1997, the U.S. Court of Appeals, 2nd Circuit, issued a decision stemming from a trade dress infringement suit filed by Michigan-based Landscape Forms, Inc., a designer/manufacturer of furniture used in airports, parks and shopping malls. The court reasoned that elements in the shape of furniture are sometimes fairly equated by consumers as the “stamp of their maker.” Despite the opportunity for trade dress protection to exist in any non-functional design feature, it will only arise once the shape of a product has developed substantial recognition with consumers as a reliable symbol that they associate with a single producer or source.
Under the right conditions, any trademark – be it a maker’s mark, name, logo or distinctive product shape – may continue indefinitely. (Examples of long-lived trademarks include beer brands Lowenbrau, which claims rights back to 1383, and Stella Artois dating to 1366.) Unlike patents, trademarks do not have to be registered with any government agency to be enforceable. As a consequence, it is sometimes difficult to assess when a particular furniture piece embodies protectable trade dress, and all the more reason why the prudent seller of reproduction furniture relies on professional legal support to assess infringement risks.
Assess the Situation
Countless intellectual property traps have been set by furniture designers and creators to stop unauthorized copying of their work. Reproduction woodworkers aspiring to sell their handiwork are at risk of stepping in one or more traps if they are not careful.
An honest, self-administered inquiry may help the reproduction woodworker recognize when trademark infringement could be an issue. If the answer to any of the following questions is “yes,” then you may be venturing dangerously close to trademark infringement:
■ Am I intentionally playing off the good name and reputation of someone else by adopting (or straying too close to) their name, logo or product design?
■ Is it possible that buyers might mistakenly assume my product is sponsored or approved by the originator of the furniture piece I am replicating?
■ Is the furniture piece I intend to reproduce currently available from only one particular source?
To avoid patent and copyright traps, consider the age of the piece to be copied. If it first appeared more than 120 years ago and has since been knocked off by others without apparent backlash, then it is unlikely any threatening intellectual property traps remain. If the inspirational design is somewhere between 20-120 years old, then any patent will have expired and only copyright and trademark dimensions need be considered. Here too, multiple precedents of other people copying the same furniture design suggest the coast is clear. Any inspiring furniture design that is less than 20 years old should be reviewed for patents, in addition to trademarks and copyrights, before attempting a commercial knock-off. As a general caution, the first person to knock-off a particular furniture design, even one that is greater than 120 years old, should be wary. In all cases, consult a qualified intellectual property lawyer before exposing yourself to unnecessary risk and liability.
On the flip side of this discussion, if you happen to be a furniture designer and want to protect your latest masterpiece, consider all these forms of intellectual property. Patent strategies tend to be the stronger and more easily enforced forms of intellectual property protection. However, patent protection can be expensive and the decision to file for a patent must be carried out early, at most within one year of first making the furniture design known to the public. For non-functional artistic features of furniture design, copyrights provide a lot of “bang for the buck.” They are easily registered and enjoy a long lifespan, although they are only effective against direct copiers. Trademarks are a valuable tool for any business, but require consistency in use and vigilant policing and marketing in order to maintain. PWM
Jon is an attorney specializing in intellectual property law, and is registered with the U.S. Patent & Trademark Office. He has been counseling inventors and avidly working wood in his spare time for more than 20 years. Jon lives in Chelsea, Mich.
The November 2008 issue, from which the above is excerpted, also includes: 11 dirt-simple router jigs designed and built by Glen D. Huey. Robert W. Lang and David Mathias take a tour of the non-public spaces of 10 Greene & Greene homes. Frank Klausz shows us the workhorse of the European hand-tool shop with bowsaw basics. With just five tools and a little practice, Glen D. Huey will help you with your first fan carving and Marc Adams helps you avoid kickback at the table saw.