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Do you hide your work?

There's a local store/chain that considers one of my designs their
"signature piece". It was in the newspaper for a couple of years. I
care, but not enough to get legal about it. I sell it myself, quite
often, because it's mine (and I can prove it). I'm a little
flattered about the success of it, more than anything. If someone
huge and corporate took it, I might do something - then it would be
worthwhile. I.E. I could make some money on it.

If you have allowed your work to be used by the local store/chain
for a couple of years have you not allowed your work to go into
public domain? Then when the huge and corporate entity uses it, you
already donct own the design anymore. You will have no claim against
them.

If you have allowed your work to be used by the local store/chain
for a couple of years have you not allowed your work to go into
public domain? Then when the huge and corporate entity uses it,
you already donct own the design anymore. You will have no claim
against them. 

Not at all true. The copyright doesn’t go away simply because
someone violated it. There are no “squatter’s rights” for copyrights.

Al Balmer
Sun City, AZ

have you not allowed your work to go into public domain? Then when
the huge and corporate entity uses it, you already donct own the
design anymore. 

That is simply not true. The design is mine to do with as I wish,
until if and when I should explicitly transfer the rights to someone
else. That includes not suing someone who uses the design - it is
all at my discretion. If the above statement were true, you could
make a Mickey Mouse, sell it at a flea market, and Disney would lose
their rights because they didn’t sue you. Believe me, that is not
the case. A design only enters the public domain when the copyright
expires or the owner dies - until then, somebody owns it even if you
don’t know who.

In this particular case of mine, I know just exactly how the design
came to be in the store - it went to a now-defunct retail store, who
sent it to a now-defunct casting shop, who sold it to the store in
question, which store bought it in good faith. That doesn’t alter
the fact that it’s still my design, I just choose not to raise a
stink over it, and any money I made would be less than the loss of
goodwill here in the SF jewelry business. Now, if they should
somehow discover me selling the design, and come after me thinking
it’s their own, they would be in deep doo-doo…

http://www.donivanandmaggiora.com

have you not allowed your work to go into public domain? Then when
the huge and corporate entity uses it, you already donct own the
design anymore.

The design is mine to do with as I wish, until if and when I should
explicitly transfer the rights to someone else.. A design only
enters the public domain when the copyright expires or the owner
dies - until then, somebody owns it even if you don't know who. 

This only holds true for origional works, and only to a certain
extent. Now if you have a design that you are producing on a regular
basis and in any sort of quantity that is the same design only in
different sizes (rings for example). You have a finite time frame to
get yourself a design patent on that particular piece. IIRC that
time frame is one year from being presented into the public domain
(or first sale, not sure which, its been a while since Ive checked
into this)…if you doubt this, does David Yurman ring any bells?

If the origionator has not filed for a design patent within that
time frame the piece then falls into a public domain status and
ANYONE is can use that design…its the artists responsibility to
get their patent, or if its an origional one of a kind, to apply for
a registered copyright. Anything less is uncivilized…

www.uspto.gov is the place to go for the US peeps on this.

P@
www.patpruitt.com

If the origionator has not filed for a design patent within that
time frame the piece then falls into a public domain status and
ANYONE is can use that design....its the artists responsibility to
get their patent, or if its an origional one of a kind, to apply
for a registered copyright. Anything less is uncivilized...

As I understand it copyright and patents are two completely different
things. Registering the copyright with the Feds is not necessary to
claim copyright. It may help in a court of law, but copyright exists
from the time the design is created (in the real world, not your
head—I think it was Bruce who reminded me of this last time) and it
is absolutely not necessary to have registered it to pursue copyright
violation. This, incidentally, is pretty clearly spelled out in the
US government laws regarding copyright. Perhaps you should carefully
reread them. Patents are, as I said, an entirely different thing, but
patents are also not issued for designs in and of themselves.

Daniel R. Spirer, G.G.
Daniel R. Spirer Jewelers, LLC
www.spirerjewelers.com

A design only enters the public domain when the copyright expires
or the owner dies - until then, somebody owns it even if you don't
know who. 

Actually, the copyright is in effect for 70 years after the death of
the author. It can also pass into the public domain if that status
is explicitly declared by the copyright holder.

Al Balmer
Sun City, AZ

have you not allowed your work to go into public domain? Then when
the huge and corporate entity uses it, you already donct own the
design anymore.

That is simply not true. The design is mine to do with as I wish,
until if and when I should explicitly transfer the rights to
someone else. That includes not suing someone who uses the design -
it is all at my discretion. 

IANAL (“I am not your lawyer”). but probably partly truth and partly
fiction. Unlike a trademark, a copyright doesn’t just go public
domain due to unstopped misuse, BUT there ARE time limits after which
the (presumed) owner CANNOT bring their civil action (criminal is
very unlikely to apply and benefits you nothing anyway).

Quote from the law, part b being the relevant one: "Section 507,
Limitations on actions

(a) Criminal Proceedings. Except as expressly provided otherwise in
this title, no criminal proceeding shall be maintained under the
provisions of this title unless it is commenced within 5 years after
the cause of action arose.

(b) Civil Actions. No civil action shall be maintained under the
provisions of this title unless it is commenced within three years
after the claim accrued."

If the above statement [the one about "public domain"] were true,
you could make a Mickey Mouse, sell it at a flea market, and Disney
would lose their rights because they didn't sue you. Believe me,
that is not the case. A design only enters the public domain when
the copyright expires or the owner dies - until then, somebody owns
it even if you don't know who. 

But then I believe it starts getting into the realm of case law and
fairness and away from the clear(?) “black letter law.” Looking only
at copyright and not at any possible trademark issues, if you were to
sell your Mickey Mouse knockoffs at the flea market for 3 years
running then get bold and go big-time and start selling them through
Wal-Mart (unlikely scenario), Disney would for certain shut your and
Wal-Mart’s knockoff sales down through a court injunction. Any of
your copyright violating sales more than 3 years ago Disney couldn’t
do anything about but most likely they could come after you for
statutory damages and/or profits and/or attorney fees when they
prevail for anything within the last 3 years.

For that 3 years though additional factors I’m certain will be
considered. Did Disney know about your infringements and NOT act? Or
were they totally in the dark? If the latter likely they’ll get the
courts to award them more than if the former. And they will be
entitled to statutory damages and attorney fees, they did have their
registrations all in long before your infringement began.

In this particular case of mine, I know just exactly how the
design came to be in the store - it went to a now-defunct retail
store, who sent it to a now-defunct casting shop, who sold it to
the store in question, which store bought it in good faith. 

Now suppose they, under this good faith assumption (which you have
now publicly stated you agree is valid), license the design to
Tiffany and it takes off and starts making them filthy rich. You,
we’ll assume, have known they’ve been selling “your” design as theirs
for over 3 years and you have not acted—you (most likely) don’t
even have a copyright registration filed.

You file your registration and sue. What exactly will the courts do?
What exactly will Tiffany do? What can the courts make them do? Your
attorney, wisely, asks for payment up front and advises you that when
all is over your costs are likely to be $250,000 - $500,000. You
believe the “good faith” firm and Tiffany have made and will continue
to make “millions” so you go for it. The instant they get the suit
paperwork both Tiffany and your local “good faith” firm suspend sales
of the design AND choose to vigorously defend themselves.

$398,000 and change later your lawyer “proves” your case. The “good
faith” seller and Tiffany are forever banned from selling your design
without your permission. Since you didn’t file your registration
timely (within 3 months of first “publication” of it [Section 412])
you aren’t entitled to any statutory damages or attorney fees, only
"Section 504(a) Damages and Profits. The copyright owner is entitled
to recover the actual damages suffered by him or her as a result of
the infringement, and any profits of the infringer that are
attributable to the infringement and are not taken into account in
computing the actual damages."

My bet would be the court would, whether they found your
registration and suit “bad faith” waiting or not, not award you
anything and further that Tiffany and the “good faith” seller would
not wish to license from you any rights, after all, the craze created
when Tiffany offered the design died 4 years ago when you sued and
they took the design off the market. I.e., since you aren’t really
marketing that design yourself you haven’t sustained any damages and
neither Tiffany nor the “good faith” seller have made a nickel of
profit since the presumed “good faith” came to an end at the filing
of your suit.

Congratulations, YOU WON!!!

That doesn't alter the fact that it's still my design, I just
choose not to raise a stink over it, and any money I made would be
less than the loss of goodwill here in the SF jewelry business.
Now, if they should somehow discover me selling the design, and
come after me thinking it's their own, they would be in deep
doo-doo.. 

Um, how deep? $48,700 later you prove that it is your design (i.e.,
not a “work for hire” for the first store, etc., etc.) and they prove
you knew they were selling it without your permission yet you never
acted. They stop selling the design and keep all their "good faith"
profits. You lose $48,700 and weeks of valuable time. How deep? For
who?

My advice should they ever come knocking, get an attorney, assign
any rights you think you might have to them and promise and do stop
selling the design.

And if they license to Tiffany, you should come out with fabulously
better designs and offer Tiffany a licensing deal. Let the old one go
to the benefit of Tiffany and the “good faith” seller.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

An attempt to copy a handmade article can only produce pour
imitation. 

Leonid, this is really amusing and clever, even though I don’t know
whether you actually intended the pun of “pour” instead of “poor”.
Either way, I enjoyed it a lot. Since I already have some idea of
your views on those who would attempt to imitate fabricated work by
copying it with casting, the idea of a “pour imitation” really
tickled my funnybone! It’s very witty, if intended, and just plain
fun, even if not. Thanks for the laugh!

M’lou Brubaker
Minnesota, USA
http://www.craftswomen.com/M’louBrubaker

There's a local store/chain that considers one of my designs their
"signature piece". It was in the newspaper for a couple of years.
I care, but not enough to get legal about it. I sell it myself,
quite often, because it's mine (and I can prove it). 

That would worry me a bit. It’s much better if you never have to
prove it. Personally, I would issue them a non-exclusive,
non-transferable license to use the design in specified ways, at no
cost. If you can make that a license agreement and get them to sign
it, so much the better.

Al Balmer
Sun City, AZ

Um, how deep? $48,700 later you prove that it is your design
(i.e., not a "work for hire" for the first store, etc., etc.) and
they prove you knew they were selling it without your permission 

Thanks to James, even though he ISNAL, for taking it deeper, and also
the rubber molds. No, the design in question is my own, not work for
hire, BTW. People often ask about these issues here on Orchid. I
don’t reply much about it because IANAL and don’t want to be one. And
because my own answer to the question of, “How do I keep people from
using my designs?” is, you can’t. I largely use the old saying about
knowing what you can change and what you can’t, and gain much peace
of mind from that. You may be outraged that somebody in a booth down
the way has your very work on display. You may even voice that
concern directly to them, if it’s really exact copies - I might. But
they have $200 worth of inventory, and a lawyer will start at $5,000,
and if you win you’ll only get a percentage anyway. Sure you could
talk about exercising your rights and being outraged and who are they
to steal my design? Personally, I think about it in terms of money.
Somebody invented the modern solitaire, and now it’s everywhere.
Ideas form, and gradually the industry adopts them as their own, and
evolves. Meaning everybody’s doing it, even if it’s innocent - taking
bits and pieces of things and incorporating them. I’m just not going
to sue some little mom-and-pop jewelry store to net a thousand bucks,
and spend ten times that in the process, to soothe a buised ego. I’m
not that sensitive anyway…

http://www.donivanandmaggiora.com

attempt to imitate fabricated work by copying it with casting, the
idea of a "pour imitation" really tickled my funnybone! 

I guess that what’s called Freudian slip. I was approached few times
to reproduce Faberge. When I tell them what it would cost, and even
if they willing to pay, it will be only approximation; the answer
always is that originals are cheaper. This is absolutely true. It is
not possible to copy a work, where craftsmanship and techniques are
integral parts. Such copy always be worse and more expensive.

A historical note. In the beginning of 20th century, Cartier was
trying to break into Russian market. By all accounts his work was
more refined than Faberge’s, but he could never overcome a barrier
that his work was lacking in Russian style. Every detail of Cartier
jewellery was more refined, but as a whole it could not compete with
Faberge. Cartier had a shop in Paris, staffed with the best stone
carvers of that time, producing animal statuettes, trying to imitate
Faberge style. They produced some great work, but experts have no
troubles in separating the two.

The answer to concerns about displaying work, to prevent others from
copying, is to incorporate a technique in your design. A technique
that a very particular to your style. Nobody could copy your work
then.

Leonid Surpin
www.studioarete.com

This only holds true for origional works, and only to a certain
extent. Now if you have a design that you are producing on a
regular basis and in any sort of quantity that is the same design
only in different sizes (rings for example). You have a finite time
frame to get yourself a *design patent* on that particular piece.
IIRC that 

You don’t recall correctly. In fact the above badly mixes up design
patent and copyright law. For design patents, which certainly can be
applied to jewelry but rarely are, the limit on applying is 6 months
(in the USA) from public disclosure. And when your patent does issue
then you only get 14 years (in the USA for a design patent issued in
the USA). While your copyright rights extend for (in the case of an
individual) your life plus 70 years AND effectively exist worldwide
(at least in treaty countries–all that you really care about anyway)
without even registering. Hmmm… you pick, 14 years and around $1000
in fees versus beyond a lifetime for free or with a $35
registration…

But copyright DOES NOT extend to a right to stop someone else who
has independently created the same “expression” from their own mind.
While with a design patent, in the country that issued it, you can
stop anyone from making or importing the design even if they came up
with it themselves. Then again design patents can also be enforced
against inexact “infringers” as long as the infringing design appears
(at some indefinable level that only each court case can finally
decide) the same to the public whereas copyright can only be enforced
against copied or derived works.

Although neither a design patent or a copyright can protect any
utilitarian (i.e., non-ornamental appearance or non-expression
respectively) feature regardless of how unique it might be (in
some instances–far from all–trademark or a utility patent
might be useable to protect uniqueness—generally you can safely
assume this won’t apply to your jewelry).

And you can advertise a design patent protected item as a patented
item and impress the out of the vastly ignorant public but they’ll
(mostly) snicker at a copyright (just name a star, yes, a giant
burning gas ball in outer space just like the sun–snicker, tee hee,
only $89 and registered in book form with the Library of
Congress…).

Make your own call for each of your designs.

A thought or two though. Maybe a design patent on something, such as
a highly reflective gem cutting design, that you think others are
likely to come up with, would be a good idea. Especially if you have
a great advertising plan in mind. BUT, if light reflective
characteristics are a utilitarian function and your design is really
predicated on them rather than the ornamental appearance of the
design will your design patent hold up in court against a big player
that is willing to go to the expense. Or do you thing your own size
and (apparent) willingness to go to court is an adequate bluff.

Play the game but play the game knowing that you cannot know the
final answer in advance. PERIOD.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

I would issue them a non-exclusive, non-transferable license to use
the design in specified ways, at no cost. 

Al, that’s very good advice. It’s difficult to put it all into
words, but it’s true that my own case is an excellent example of the
issue. Not just some bozo knocked off my work, but a commercial
enterprise molded it for sale. It is a unique solitaire - channel
set with flowing, asymmetrical sides. Like a wave with a diamond in
the center. And it’s not a knockoff, it’s a mold of my very piece -
I can see my own hand. My attitude is that I don’t care much, unless
it’s a situation where there is money to be made. Many people and
surely all lawyers will disagree with that, with reason, but it’s
true. I’m an artist, not a lawyer. I possess the design for my own
purposes, which is what I care about. I’m a professional jewelry
designer in the sense that I’ve been doing it many, many years -
it’s just a job and I have little if any ego about it. I could,
indeed, have them sign a no-cost license agreement, probably that
would be legally prudent. But I see no purpose in it beyond
antagonizing my own collegues. That’s the artist in me - I have many
thousands of unique designs behind me, and around 4000 molds.
Chasing down petty arguments is not my idea of a good life. Now if
Coca-Cola adopted it on national tv, that would be an entirely
different situation. I just don’t care much if somebody takes my
design and makes a few bucks on it, mostly because there’s nothing I
can realistically do to stop it, anyway. On a large scale, yes - I
wouldn’t be the least surprised if an Orchidian went to my portfolio
and pinched all or part of my ideas, though. Doesn’t bother me…

http://www.donivanandmaggiora.com

First of all, I must admit that my mistake was confusing a copyright
and a trademark. Aspirin is a famous example of a trademark that
went to public domain because of generic usage.

Next I was wondering about the feasibility of a business model of
creating original work and making it easy for others to steal. The
real profit will come later as large companies sell the design that
appears to be in public domain and you sue them. I think your letter
answered that issue too.

Thank you.

First of all, I must admit that my mistake was confusing a
copyright and a trademark. 

Admitting a mistake is very appreciated–too many mistake makers
just grind themselves (and the whole list) to death.

Aspirin is a famous example of a trademark that went to public
domain because of generic usage. 

Oops! Aspirin as a trademark for a certain medication, namely
acetylsalicylic acid, is, you are correct IN THE USA no longer
valid. However Aspirin IS a valid trademark in the USA for cuff
links—you can look it up!-- and it IS a valid trademark owned by
BAYER AKTIENGESELLSCHAFT in Canada and Germany at least and most
likely a lot of other countries for acetylsalicylic acid. Amazing,
trademarks and patents are country specific!

Next I was wondering about the feasibility of a business model of
creating original work and making it easy for others to steal. The
real profit will come later as large companies sell the design
that appears to be in public domain and you sue them. I think your
letter answered that issue too. 

I think the courts are going to frown so hard on such a business
model that you’d hear polite titters as you left the courtroom a
broke loser then maybe loud guffaws after the door shut behind you.
If you intend to enforce any IP right you should take steps to do so
ASAP after discovering the presumed infringement. Waiting till the
time is “riper” most likely would get your head spinning with a whole
world of terminology that wouldn’t be favorable to you such as “bad
faith”, latches, and estoppel. I’d certainly be interested in letting
you fund the experiment and tell us all in 10 or 20 years how it
worked out.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

Ok, Elaine has brought up a great topic for conversation and after
sitting back and reading the comments I thought I’d add my 2 cents
worth. I think the positives of showing your work far outweigh the
negatives. Hearing Charles Lewton-Brain largely influenced my
opinion. He was keynote at the Metal Clay World Conference speak. He
talked about the value of photographing your work - documenting it
and showing it. After hearing him I was quite inspired.

Take for example all the people you admire in the field – well had
they not shown their work in some way you’d have nothing to admire
because there would be nothing to see, you might not even know who
they were. Take this thought one step further and think about how
they got to being admired – yep, by showing their work. And how did
they gain a following? – Showing their work. And how did they gain
credibility in the field? – By being seen and heard and showing
their work. Obviously, it goes without saying that when you show your
work, you want that image to be great, anything less can have adverse
affects. Imagine highlighting a flaw and sending it out to thousands
of people.

The flip side of the coin is the influence your work has on others.
People cannot “unsee” your eye-catching piece. And as someone
mentioned in a previous post your work may influence other work. I
think this may be how trends of fashion start. But is it so bad being
a trendsetter?! This can actually help your sales and the popularity
of your style. Yep, it’s a double edge sword, but this is also the
factor that pushes us along and helps us evolve onto the next great
development.

And of course there are the legal issues. I think those have been
covered so I won’t go there. So my last thoughts are show your work,
proudly. Make it worth being seen. Set some trends. Take someone’s
breath away.

Holly

Play the game but play the game knowing that you cannot know the
final answer in advance. PERIOD. 

Ah, the voice of wisdom. This question comes up so often on Orchid,
in one form or another, that it’s pretty important.

I’m on the list of a market research company. Periodically they need
bodies for focus groups or whatever - in my case it’s usually been
politics or something, not “Coke or Pepsi?” The last time was a mock
trial for a patent infringement case that I can’t discuss, but it
was a major medical device, and the players were the household names
of the industry. They were testing their arguments against us,
basically. Our job was to decide if the patent was, indeed,
infringed, and believe me it wasn’t easy. I calculated the cost of
the group and figured each trial cost around $25,000. Just the pay
that the jury (me) got was around $10k.

So, reality check. As is often said, you have a copyright on a design
the moment it is made. As James points out, you can also register it
for $35. That’s all well and good. The real point is, what happens
after that? If I were to register all my designs, it would have cost
me $100k to date. If your friend down the showcase knocks off your
idea, there are no IP police to go after them, you have to sue them,
and I know that I don’t have anywhere the legal knowlege to represent
myself. Then, as in my trial above, you have to prove that it is not
just similar, but EXACTLY the same in every way. Maybe you see
yourself in the work, but don’t assume a judge will. Many people who
are in the artsy business have either inflated and/or fragile egos,
but everybody just needs to get over that. Are you such a fool as to
burn $30k to soothe your widdow feelings? That’s a $5k judgement
against $35k in legal fees…And people waste much energy trying to
police the marketplace against the thought that somebody used their
precious design. As Dr. Phil (yeah, so what…) said about infidelity,
you can’t make a fence that big, you can’t watch that closely -
again, get over it.

Everybody here who has never read Metalsmith/any magazine and said,
“Ooh, cool idea, I’m gonna try that myself”, raise your hand…To
some degree jewelry and design becomes public by default when it
goes public - that’s not a legal statement, it’s a practical one.
You just can’t stop it in any financially practical way. And you
need to ask yourself the question of whether your desgin is truly
unique, anyway, if you are to be honest. Almost all jewelry is
derivative of something…

None of this is to say that we should sit idly by while somebody
makes a million with our exact design on the HSN. It’s just to
understand reality and choose your battles. Yes, you get a copyright
the moment your piece is finished. That and a dollar will buy you a
cup of coffee, in most practical cases. IMO the best defense is to
be excellent and prolific and don’t sweat the small stuff.

http://www.donivanandmaggiora.com

Next I was wondering about the feasibility of a business model of
creating original work and making it easy for others to steal. The
real profit will come later as large companies sell the design that
appears to be in public domain and you sue them 

I didn’t see this before, I’m assuming it’s at least a bit
tongue-in-cheek, and James the much-more-expert-than-I has addressed
it. It’s pretty easy to see that the above is the pretzel logic that
sinks businesses. Just a bit of a rewrite:

Next I was wondering about the feasibility of a business model of
creating original work and making it easy for others to buy. The
real profit will come later as large companies sell the design 

Gives you a healthy business model. Why fund the legal business and
also risk failure in the courts?

http://www.donivanandmaggiora.com

Take for example all the people you admire in the field -- well
had they not shown their work in some way you'd have nothing to
admire 

Holly’s very healthy attitude goes even farther than that, if you
think about it. It’s really a matter of “where are the lines?” There
is a point where somebody stole your design and went worldwide with
it - unlikely but possible. On a more genuine level, though - how
many of you make tuna fish sandwiches, how many play Beatle’s music
on your chosen instrument, how many used the original Napster, put a
book on a Xerox machine…on and on and on? None of those things
are original to you, and yet we all avail ourselves of many or most
of them. You could argue that Madonna “owned” the concept of
lingerie on the outside, yet millions flocked to the look, for a
time. There is a point where it is the normal response to the world
around us, and there’s a point where it’s IP theft. There’s a point
where it’s reasonable protection against IP theft, and there’s one
where it’s shrill paranoia. I copied 50 music Cd’s and sent them to
Italy as a thank you gift. Wasn’t going to happen for $500 retail,
so I burned them. I know that’s illegal, and I did it anyway. Not to
rationalize it, but there’s low harm, it’s not for profit, etc. We
all do things that are not strictly kosher, at times - that doesn’t
make any of us the evil one. Most of us jaywalk now and then - or
frequently… If you’re going to be a part of the jewelry world, you
need to be a part of it, and act reasonably. You may want to point a
finger, at times, but there’s little doubt somebody else could point
it right back at you… Collective consciousness and all that…

http://www.donivanandmaggiora.com

myself. Then, as in my trial above, you have to prove that it is
not just similar, but EXACTLY the same in every way. Maybe you see
yourself in the work, but don't assume a judge will. Many people
who 

Good post except for that human frailty of trying to put bright
lines where there aren’t any. “Exact” is not relevant in copyright,
trademark, or patents. How about that!

In copyright to infringe it must be a “copy” (even a badly attempted
one) or a derived work even if it doesn’t look like the original.
Where “derived” ends and “inspired” begins is for each jury or judge
to decide. A recent popular case was the lexicon derived from the
Harry Potter books where the judge ruled against the lexicon
publisher. While the lexicon was available free online it was not an
issue (though it could have technically been, just economically
stupid) but when it was to be published in print for profit then it
was made a legal issue and the publisher lost. So far. The publisher
thinks (and they m-a-y be right) they will be better off appealing
the ruling and (hopefully) winning in court rather than hammering out
(maybe politely negotiating?) some kind of licensing royalty deal
with J.K. Rowling and her publisher. I think I’d have aimed for the
royalty deal ASAP—giving up a percent of the profits for whatever
number of copies sells seems a better deal than unknown costs to be
recouped later, MAYBE, by unknowable sales!!!

Your copyright in a design/item is NOT infringed by an "exactly"
identical (or even any shade of similar) item that was created wholly
out of the mind of another author. And that “another author” has full
rights to license duplication for sale of such items even if you
don’t want such copies made. You have to prove copying—or at least
possibly unknowing copying. It is much much harder for you to argue
that someone (far across the country or seas) unwittingly “copied”
(not created out of their own mind) your
only-seen-in-your-display-case necklace than it is for David Yurman
to argue (and win with) exactly the same argument for his many
worldwide advertised designs.

In trademark and design patents the general rule is the trademark or
design cannot be confusingly similar to the appropriate “public”. For
an oil well drilling gizmo the appropriate “public” is pretty easy to
define. For a cut gem design patent should the public be everyday
buyers, jewelers, gemologists. Tain’t so clear. How about for a
jewelry piece itself? Also entering into the confusion is that
numerous (plus or minus) other “similar” (more or less) designs or
trademarks will make it far more difficult for the design patent or
trademark holder to extend the breadth of “similar” beyond “really
close.” Where any case falls is again a jury or judge decision based
on all the facts.

And in utility patents the look of an item is totally irrelevant,
the only thing that counts is whether or not at least one claim of
the patent reads on the alleged infringer. I.e., each described
element, regardless of how it looks, is in the infringing item or
process. (And, of course, also totally regardless of how many other
elements may be tacked onto the infringing item or process.)

Are there cases where there are bright lines. Sure. The flaws of the
original molded right into the copy by a person who bought the
original by credit card or check. Can you reasonably prove it was you
that created and sold that original to them? Not just “something” but
THAT thing? Or is it an I said/he said contest? The copier sells the
copy via a bit-for-bit copy of the jpg file lifted right off of your
web site! Can you prove your case and not that it was the other way
around, you did the copying? What’s it worth versus what’s the cost?
If they are down the street? If they are in country X? If they are on
HSN? (HSN, BTW, will almost certainly withdraw an alleged infringing
item from their lineup until after, if then, resolution of the case.
They most certainly will ignore what appear to be idle threats too,
you’ll need to have your evidence in order.)

Hope that’s at least as clear as mud.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com