And the Brand Played On
Frank J. Martinez, Esq.
Now that almost every human activity has become a branded experience, designing commercial interiors offers particular challenges. Chances are, a casual reading of a design brief won't reveal whether your client’s two-dimensional trademark can be converted into three dimensions on hardware, or whether colors associated with trademarked packaging will enjoy the same protection when they're applied to an office's walls. Architects and designers schooled in the basics of intellectual property law are more likely to recognize potential problems.
“Intellectual property” is the general term for ownership rights in ideas and inventions. Copyright, trademark, patent, and trade secret laws are the legal methods by which such rights are protected. Interior design presents some special problems under these laws because it can cut across several legal theories, incorporating brand-sensitive or trademarked elements as well as creating new design features that may be protectable in their own right. For instance, the contracts following the design brief may say nothing about who would own the intellectual property rights should customized lighting fixtures or seating be created. Therefore, a designer must take care not to diminish or “dilute” any existing legal rights that clients possess, while being mindful that the designer's own work may itself be a protectable asset.
The Architect‘s Handbook of Professional Practice contains basic information concerning copyrights, which are created when an original work is “fixed an a tangible medium of expression.” Original drawings, sketches, and photographs are eligible for copyright protection. At $30, the application to register copyright is a bargain; forms are available from the U.S. Copyright Office and may be downloaded at www.loc.gov/copyright/. Note that the Copyright Office examines an application only to determine that the subject matter is appropriate for copyright and that the right form was used and filled out correctly.
Copyright is restricted to nonfunctional creative works rather than utilitarian objects like hardware and furniture. For such objects, design patents are the correct legal method to protect creative rights. Unlike copyrights, which can be filed at any time, an application to register a design patent must be filed within one year from the date the design is disclosed to the public. Otherwise the design will fall into the public domain, and its inventor will lose all power to license it. Disclosure can inadvertently occur by publishing a drawing or a sketch of the object, so care should be taken to preserve confidentiality.
For small companies and individual inventors, a design patent application and issue fees total as little as $370. Though the application is a bit more complex than the one required for copyrights, the U.S. Patent and Trademark Office’s Web site (www.uspto.gov/) offers information and forms, as well as a place for researching designs and trademarks. Take special care when preparing drawings for the application, because these form the basis for the patent claim. The more general the drawings, the broader the scope of protection. Drawings that show excessive nuance and detail will result in a patent that can be easily designed around.
Examiners who review applications for design patents determine whether the invention is novel – in other words, new and non-obvious (in view of preexisting designs in the field). Unlike a trademark, which remains good for as long as the mark is used in commerce, a design patent lasts 14 years from the date of issue, after which the design falls into public domain.
At their heart, trademarks indicate the source and ensure the quality of manufactured goods. This is why interior designers working for companies whose trademarks are widely recognized should take care not to blur the marks’ distinctiveness, say, by using a trademark in connection with goods or services not planned or offered by the client. Even employing broad design features reminiscent of or confusingly similar to another’s trademark may constitute an infringement, as occurred in Two Pesos, Inc. v. Taco Cabana, Inc., a recent case heard in the U.S. Supreme Court, which held that a “festive eating atmosphere decorated with murals and artifacts” was a valid trademark.
The growth of leisure and entertainment enterprises will fuel the branding trend across many different goods and services. For interior designers, this trend presents great opportunities as well as some risks. While complex projects may require the assistance of an attorney who specializes in intellectual property law, simpler projects can be undertaken alone so long as the designer communicates with clients and does his or her research.
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