Selling Knockoff Frames Is Illegal: Protecting Frame Designs
By: Joshua Kaufman, Esq. and Dan Vivarelli, Esq. © 2003
Frame shop owners, next time someone offers you frames that look like those of a major manufacture, but at half the price and come from a different source, you might find this gift horse worth looking in the mouth. Contrary to popular belief many frames can be protected under our intellectual property (IP) laws and that selling knockoffs is illegal. While not all frames are protected by IP laws, a large percent of frames, particularly ornate frames and those with interesting patterns and designs, are covered. Liability for dealing in knockoffs can stem from copyright and design patent law. By the way, if anyone thought that using the original manufacturers corners while selling the knockoff product was a good idea they were very mistaken. Doing so is an additional violation of federal trademark law (the Lanham Act Section 43(a)) by misdesignating the source of goods, and/or an association and affiliation. Also in most jurisdictions showing one person’s product and then selling another’s violates various state and federal consumer fraud provisions. At a minimum, the damage will be the disgorgement of any and all profits that are made on the sale of any infringing frames and the lost profits incurred by the legitimate frame manufacturer. As well as liability for the manufacturers attorney’s fee (which can easily run into the tens of thousands of dollars). So the next time someone comes into your shop offering cheap knockoffs of established manufacturers’ goods and promising higher profits, showing them the door might not only be the ethical thing to do, but can also be the most profitable.
Part of the misconception in regard to the availability of protection for frames comes from statements in the Copyright Act which state that useful articles are not copyrightable. The Copyright Act defines a non-copyrightable "useful article" as "an articles having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally part of a useful object is considered a useful object." A frame is certainly a useful object. People therefore jump to the erroneous confusion that frames are not covered under copyright law. Copyright law does extend copyright protection to useful object to the extent that the object contains pictorial, graphic, or sculptural features. Just as a plain white T-shirt might not enjoy copyright protection (it is a useful object) that does not mean that you can place a copyright protected artwork on the T-shirt and claim immunity from copyright infringement because you are selling a useful article, the T-shirt. While the T-shirt does not enjoy protection the artwork still does, no matter onto what media it is applied. Therefore, frames that have sculptural features that are not part of the function component of the frame can enjoy copyright protection. The definition of pictorial graphic and sculptural works which are afforded copyright protection include, "works of artistic craftsmanship, insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article…shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic or sculptural features that can be identified separately from, and capable of existing independently of, the utilitarian aspect of the article." A review of the legislative history of the Copyright Act illustrates the distinction as follows, " …although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee’s intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies’ dress, food processor, television set, or other industrial product contains some elements that, physically or conceptually, can be identified as separable from the utilitarian aspect of that article, the design should not be copyrighted under the bill. The test of separability and independence from ‘the utilitarian aspect of the article’ does not depend upon the nature of the design - - that is, even if the appearance of an article is determined by esthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately form the useful article as such are copyrightable. And even if the three dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver ware), copyright protection would extend only to that element and would not cover the over-all configuration of the utilitarian article as such." In one landmark case the court held that lamp bases in the form of a Balinese male and female dancers were copyrightable, despite the fact that the lamps were useful articles. The Court recognized that the incorporation of a work of art into the design of an useful article was entitled to copyright protection.
That brings us back to frames, clearly carvings on a useful article are protectable. This is clearly referenced in the legislative history of the law when they were used carvings on the back of a chair or on silverware as an example of what is protected by copyright . In case law where carvings were part of a lamp base copyright protection was also found. Therefore, frames which contain carving can, in many instances if not most, enjoy copyright protection.
There is, of course, a minimum standard of originality in the carving that must be reached. A frame that is a very basic shape or not original to the manufacturer would not be protected. Replicas of antique frames, might not enjoy copyright protection due to the time limits of copyright protection. However, even if new moldings are based on antique frames, but have been modified, the modifications might be copyrightable. Whether or not the specific carving in a frame is sufficiently original to rise to the level of a sculpture and be the beneficiary of copyright protection needs to be made on a case by case basis after viewing the individual frames. However, courts have held the level of originality required for copyright protection to be very low. A copyright notice (Name © Year) should be affixed to each piece of molding.
What if there is an original design but it is not sculpture in nature. Is any protection available? Yes. Design patents cover the nonfunctional features of useful objects. Therefore, frames without sculptural qualities may find protection under patent law; specifically, with a design patent. Under the patent law a frame designer may obtain a patent for a new and ornamental design for a frame. To be eligible for a design patent, the design of a frame must be primarily ornamental, meaning the design of the frame must be the product of aesthetic skill and artistic conception. A design patentable frame design cannot be driven solely by considerations of function, namely how the frame is secured around the article to be framed (Note: a regular utility patent might be secured to protect the functional aspects of a frame). The frame design does not need to meet the copyright standard of separate identification and independent existence to be patentable. The non-functional aspects of an original design can qualify for a design patent.
Obtaining a patent can be a complicated process that should be undertaken with care because the way a patent is drafted can affect the amount of protection afforded to the design patent owner. To obtain design patent protection, frame designers can apply for a design patent in the United States Patent and Trademark Office ("the Patent Office" in Washington D.C.). Patent protection in the U.S. is, at least initially, based on the individual inventor. The individual frame designer(s) must apply for the patent in their own name and may subsequently assign his or her ownership rights to a frame manufacturer. Normally, a frame manufacturers will include mandatory assignment clauses in their employment agreements with their own in-house designers and with any outside designer they engage.
The Patent Office examines each design patent application to determine whether the design is patentable. If the design is found to be patentable, the owner of the design patent is granted a 14 year right of exclusivity that is presumptively valid in court. This 14 year right of exclusivity begins at the time that the Patent Office "approves" of the design. During that time, the design patent owner may enforce his or her design patent against infringers. Infringement of a design patent occurs if another article (i.e., a knockoff frame) so resembles the patented design as to deceive the ordinary observer. In other words, if an ordinary observer would be induced into purchasing a knockoff believing it to be the patented frame, the patented frame is infringed by the knockoff.
Frame manufacturers should note that under patent law certain action needs to be taken to protect the designs of your frames. First, be sure that your agreements with your frame designers properly assign all rights in the design to you, the manufacturer. Second, seek design patent protection immediately after conceiving of the design before you show the work to any third party, because the patent laws in the U.S. prevent you from obtaining a patent on a frame design that has been on sale or otherwise in the public domain for more than one year. In many foreign countries showing a design patent to third parties at all before an application is filed can cause the loss of patent protection in those countries. Third, only after applying for a design patent, you may and should mark your frames "Patent Pending." Marking your frames "Patent Pending" puts the frame shop owner on notice of the frames protected status and deters them from purchasing knockoffs out of fear of being an infringer. Once a patent is issued the patent number should be affixed to the molding.
If there is an infringement what are the damages? Everyone in the chain of sale is separately and jointly liable. Therefore the frame manufacture can go after (at its choice- - all or just some) the knockoff manufacture, the importer, the distributor and/or the retail frame shop. They can obtain an injunction against all future manufacturers and sales. The can obtain "actual damages" from everyone in the infringement chain i.e. all of the infringers profits and their own losses. Under copyright law if a copyright registration has been recorded in the U.S. Copyright Office before the infringement, then statutory damages of up to $150,000 per infringement and attorney’s fees or lost profits are available as well. For examples, if ten knockoffs are being sold the exposure of each Defendant is up to $1.5 million ($150,000 x 10). Under patent law all the infringers are subject to the disgorgement of all profits from the sale of the infringing frame(s). If they acted willfully and ignored a pending notice the damages can be triple the actual profits plus attorney’s fees.
Do the math. Dealing in knockoff frames can be quite costly. One should really think twice before selling a knockoff frame. Manufacturing or selling knockoffs frames is wrong, illegal and can be an expensive proposition.
Joshua Kaufman, Esq. is a partner in the law firm of Venable, LLP. While he is based in Washington, DC, his practice is national in scope. He is one of the country’s foremost attorneys in the field of copyright, art and licensing law. He has published over 200 articles on various topics in the field. He is general counsel to the Art Copyright Coalition, a group of artist, art publishers and art licensing agent who collectively enforce members’ copyrights against infringement. He is also an adjunct professor of law at American University Law School. A large number of his articles can be read and downloaded from, www.jjkaufman.com.
Dan Vivarelli is an associate at Venable, LLP and specializes in patent law.