CustomMade Ventures (which owns CustomMade.com) has created a cyber-marketplace that connects customers seeking (you guessed it) custom made furniture and other custom items to the artisans who make these creations. Their target audience is a growing population of people who have discovered that custom built furniture, cabinetry, home décor, and other custom items are often less expensive and as good as – if not better than – the more mass-produced items. (The Wall Street Journal recently published an online article entitled, “Business Plans that Rest on Imitation”.) Because CustomMade.com enables consumers to adapt mass-market furniture and other items to their own tastes, the small furniture maker and the artisan more generally might be making a comeback.
The obvious implication is that artisans might be asked to create adaptations of – or, more likely, imitations of – some major manufacturers’ designs. The question becomes whether artisans can fill these requests without violating another manufacturer’s intellectual property rights. A second question is whether the artisans on CustomMade.com retain any such rights in their own works that would prevent others from making copies.
As intellectual property counsel to CustomMade, Michelle Rosenberg of Patent GC LLC advises on these issues. The short response is to say that, with some exceptions, artisans and customers may play in the CustomMade.com marketplace without fear of legal liabilities. Intellectual property law simply does not give furniture designers much of a leg to stand on.
Ironically, copyrights, which protect most manifestations of artistic design and expression, are available to protect sketches of furniture designs, and photographs contained in a furniture catalog, but do not provide much, if, any intellectual property protection to the physical furniture built based on the designs in those photographs. Thus, an artisan is prohibited under copyright law from making a copy of a manufacturer’s own photo, but is not necessarily prohibited from recreating the piece of furniture shown in the photo, unless that furniture design incorporates some kind of sculpture work or graphic print embellishment that is in itself a design separate from the piece of furniture. This is what the law calls “conceptual separability.” Absent a plausible argument that the overall design of a piece of furniture can, in effect, exist by itself as a work of art apart from its functionality as a piece of furniture, copyright law is unavailable to guard against wholesale copying of the article. For example, an artisan cannot obtain copyright protection for a fabric-covered chair per se, but may copyright the design of the fabric that covers that chair or the elaborate sculpture work that adorns the back or leg of the chair .
All that being said, copyright protection for furniture is relatively easy to perfect if the legal standards are satisfied. Of all the different types of intellectual property protection, copyright is the easiest to claim – all the furniture artisan need do is build the piece of furniture. Federal registration of copyright – which confers upon the copyright holder the right to bring an infringement action – is also very easy and inexpensive. Online registration of a basic claim is only $35 does not generally require an attorney’s assistance.
Patents can protect what copyrights cannot – the functional aspects of furniture, or else the ornamental design of furniture, so long as both are new and nonobvious. Nonetheless, the furniture industry has historically been reluctant to pursue patent protection, in part because of the cost and time investment that patents require. Utility patents – which protect functional inventions – can cost many thousands of dollars in attorney fees plus additional fees to the U.S. Patent and Trademark Office (USPTO). In addition, a typical utility patent takes several years from the initial application date to grant. The time investment, which might be shortened if certain petitions are filed with the USPTO, is most relevant as compared to the life cycle of a particular piece of furniture or furniture design. (Although, the functional aspects of designs are less prone to be overwhelmed by trends than are the ornamental aspects). In general, utility patents remain enforceable for 20 years from the date an application is filed.
Design patents cover (you guessed it again) the ornamental design of a piece of furniture. The scope of protection is based on drawings of whatever piece of furniture the artisan seeks to protect and extends to any piece of furniture that adopts the image of the protected drawing – whereas copyright protection would generally extend not to the article but only to the drawings themselves. However, design patents present a much narrower scope of protection than utility patents. In general, the test for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design. Thus, a potential infringer may avoid infringing the patent by making by making small variations to the design.
Design patents also cost less than utility patents. Attorney fees run around $1500, plus about another $700 in fees to the USPTO. However, due to the limited scope of protection, furniture makers may have to file many design patents in order to prevent imitations. Furniture makers also have to decide which pieces in their lines to protect. While an individual design application costs much less than a utility patent, the fees start to add up quickly if a furniture maker has many different pieces in a line and multiple lines to protect. The period of enforcement for a design patent is 14 years from the date of issue.
A third form of IP protection potentially applicable to furniture is trade dress. Trade dress is an overall look that functions like a traditional trademark – once the overall visual impression of something becomes so powerful and distinctive as to create an association between that image and the manufacturer it becomes protectable. (See section 43(a) of the Lanham Act 15 U.S.C. §§1051-1127). (A trademark, on the other hand, is a word, name, symbol, color, sound, smell, device, or a combination of them that indicates the source of goods or services and helps to distinguish the products or services of one business from those of others in the same field.) Any plaintiff attempting to prove that another artisan has misappropriated its protected trade dress must prove that its product’s design is so inherently distinctive as to identify the plaintiff-artisan, and that consumers are likely to confuse the alleged infringer’s products for those of the plaintiff.
Few furniture designs are so distinctive as to actually identify the manufacturer. Generally, those seeking to buy a certain sort of furniture cannot determine the manufacturer of a piece or set of furniture simply by looking at it. For example, many manufactures produce Victorian or Shaker-style pieces. Most furniture manufacturers do not carve or emboss their names or trademarks on the exterior of their furniture; instead they rely on tags and emblems inside drawers to identify their goods. Often, retailers do not identify the manufacturer or the name of the design to the consumer; advertisements to the consumer might include pictures furniture they offer in flyers, but again these advertisements may not include any reference to the manufacturer. This is all to say that trade dress is not easily cultivated in the furniture context.
However, it does happen. For example, in Imagineering, Inc. v. Van Klassens, Inc. 53 F.3d 1260 (Fed. Cir. 1995), the Court of Appeals for the Federal Circuit found that Imagineering’s Weatherend outdoor furniture was inherently distinctive, as required for trade dress protection, after witnesses testified that the furniture possessed coherent “total image,” comprising wide slats, scooped seatboards and arms, rounded edges, notched and curved legs, and angled backrests. Design magazines and trade journals had published editorials which commented on the line's “novel” features, and witnesses testified that line was unlike any other furniture yet produced. Furthermore, the record showed that design magazines and trade journals had published many editorials commenting on the Weatherend line, using photographs of the Weatherend furniture and hailing that furniture as “novel,” “exclusive,” and “outdoor classics.” Finally, the Weatherend line was recognized in an interior design competition and was featured in the Cooper-Hewitt Museum.
That’s distinctive design. But even so, the section of the Lanham Act creating the cause of action for trade dress infringement doesn’t prohibit copying the distinctive furniture design per se; rather, the statute only prohibits a copy that will be passed off as the product of the originator. (Ashley Furniture Industries, Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363 (4th Cir. 1999))
In summary, while an initial reaction may be that furniture designs must be well protected from imitation by intellectual property, in fact, the scope of protection is quite limited, and may not be available at all for many designs.