Furniture Intellectual Property Law

 

Trade Dress and Design Patent Protection for your Furniture Design.  Both Trade Dress and Design Patents can be great tools to protect your furniture designs in commerce.  However, when approaching the issue of protection, it is important for you to know the difference between these two types of protection.  Use these brief descriptions to help you in your approach, but be sure to contact an expert at Cislo & Thomas LLP for more thorough advice:  A particular design aspect or configuration may be protectable by trade dress (a subset of trademarks) and this protection can last for as long as the product is sold.  Trade dress does not protect purely functional elements, but design elements.  The design in question should not just be practical, but also serve as an indication of the source of the product.  As an illustration, aspects of furniture that are covered by utility patents are presumptively considered functional and ineligible for trade dress.  Advertising materials touting your products utilitarian advantages can be damaging evidence against trade dress, whereas materials highlighting your products design elements are helpful in establishing trade dress.  Design patents protect new, original, and ornamental aspects of your furniture articles.  You can protect individual design elements or the overall appearance, but the protection must be for non-functional aspects.  If your design only combines old or common elements in a non-innovative way, a third party could combine the same elements without committing patent infringement.  After submitting your design patent application, it can take six months to two years for your application to be granted and you cannot stop infringement or copying during this time.  Once granted, design patent protection enables you to exclude others from manufacturing, using, selling, or importing the protected design for fourteen years.  To establish design patent infringement, courts use an “ordinary observer” test - whether an ordinary person would confuse the accused design with the patented one.  

 

Copyright’s Relevance to Furniture Design.  Copyright protection is available for original works that are fixed in a tangible medium.  To qualify as original, they must be the work of the designer and require at least a modest amount of creativity.  Additionally, copyrighted works must be able to exist independently of the functional aspects of the related piece of furniture.  In other words, do the designs reflect the designer’s artistic judgment independent of functional influences?  When designing furniture with an aim toward copyright protection, keep a record of your inspirational sources as this could later help in proving your design’s originality.  Maintain financial records of the design process and register copyrights of your work early for the strongest possible protection.  A case which illustrates the important role of copyright in furniture design is Collezione Europa USA v. Universal Furniture International.  Two of Universal’s collections were accused of copyright infringement.  However, the designer had modified and arranged familiar decorative elements in unique ways.  Secondly, his accused design elements were separately identifiable and capable of existing independently of the furniture’s utility.  For these reasons, the court agreed that Universal’s designs had sufficient originality according to Section 101 of the Copyright Act.  Universal is an excellent example of the importance of copyright registrations for protectable matter.  Please contact the experts at Cislo & Thomas LLP for assistance in protecting your furniture designs.

 

Battle of the Bays: Casual Furniture Designs Bring Patent Infringement Claims - Pride Family Brands, a prominent outdoor furniture manufacturing company, recently filed a complaint in the U.S. District Court for the Southern District of Florida against four defendants – Carls Patio, Inc.; Carls Patio West, Inc.; Woodard Furniture, Inc.; and Scott Coogan – alleging patent infringement and other related claims.  The infringement claim is based on the similarity between both Pride’s “Coco Isle” and “Cabana Bay” furniture collections and the “Jumby Bay” collection manufactured and sold by the first three named defendants.  More specifically, Pride alleges that the Jumby Bay collection violates five of Pride’s patents: Patent Nos. D521,263S; D519,293S; and D520,767S, all of which concern chair design, as well as Patent Nos. D519,762S and D522,778S, both of which concern furniture leg ornamentation.   According to Pride’s complaint, the Jumby Bay collection contains “hand-wrapped aluminum treatment” that infringes upon the ornamentation-based patents, as well as a chair that is almost identical to one within Pride’s Coco Isles and Cabana Bay collections that employs Pride’s patented chair designs.  Pride’s claims against Coogan revolve around Coogan’s alleged divulgence of Pride’s protected trade secrets to Woodard upon resigning from his employment at Pride and becoming a Woodard employee.  Though trial likely will not commence for many months if the case is not settled, Pride is making it clear that it will vigorously pursue those companies who, from Pride’s perspective, are infringing upon its intellectual property rights.

 

Home Appliances Trade Dress Protection Enforced – Plaintiff Wolf Appliance prevailed on a motion for preliminary injunction concerning a trade dress infringement claim where the Court held that the red knobs on its ranges and range tops constituted protectable trade dress, and that Plaintiff would be irreparably harmed if Defendant Viking were permitted to continue selling its ranges and range tops having confusingly similar red knobs during the pendency of the litigation.  The Court noted that “a reasonable jury could conclude that defendant chose to offer red knobs because it wanted to undermine the association that consumers have with plaintiff and red knobs or because it wanted customers to believe that plaintiff and defendant are now affiliated.”  Wolf Appliance, Inc. v. Viking Range Corp., 686 F. Supp. 2d 878 (W.D. Wisc. 2010).  This case shows that trade dress protection may be available for features of home appliances or furniture that the consuming public associates with a particular entity. 

 

Ornamental Features of Home Décor Items Protected by Copyright – Plaintiff is a sculptor who included certain sculpted animals in articles such as chandeliers, electric wall sconces, and candle holders, and obtained copyright protection for his designs.  Defendants were alleged to have copied and sold similar items.  Plaintiff sued for, among other things, copyright infringement.  Defendants filed a motion for summary judgment that Plaintiff was not entitled to copyright protection for his designs that were incorporated into, among other things, chandeliers because chandeliers are useful articles, and the Copyright Act does not permit registration of useful articles.  The Court denied summary judgment based on its conclusion that the artistic features of the chandeliers are “conceptually separable” from the functional/utilitarian aspects of the chandeliers, and that such separable features were entitled to copyright protection.  The Court further supported its denial of summary judgment on the fact that a fact-finder could determine that Defendants’ designs were substantially similar in appearance to Plaintiff’s copyrighted designsHuebbe v. Oklahoma Casting Co. et al., 2009 U.S. Dist. LEXIS 91824 (W.D. Okla. Sept. 30, 2009).  This case shows that utilitarian articles such as furniture or similar home décor items can be protected by copyright provided the ornamental features of such items are “conceptually separable” from the utilitarian features of the item.

 

Enforcement of Trademarks Protecting Furniture Design Against Chinese Manufacturer – Plaintiff was the seller of the trademarked Eames® lounge chair and ottoman.  Defendants included a California re-seller of alleged counterfeits of such items and the Chinese manufacturer and exporter of the alleged counterfeits.  Following proper service of process on the Chinese manufacturer, no response to the complaint was filed by the Chinese manufacturer.  The Court Clerk entered a default, and Plaintiff moved for entry of a default judgment against the Chinese manufacturer.  The Court granted Plaintiff’s motion for entry of default judgment and entered judgment against the Chinese manufacturer for trademark infringement and counterfeiting, and awarded Plaintiff a permanent injunction barring the Chinese manufacturer from exporting into the United States any counterfeit copies of the trademarked Eames® lounge chair and ottoman, $500,000 in statutory damages, and attorneys’ fees and costs, as well.  Herman Miller, Inc. v. Alphaville Design, Inc. et al., 2009 U.S. Dist. LEXIS (N.D. Cal. Oct. 22, 2009). This case is important because it shows that U.S. courts may assert personal jurisdiction over Chinese manufacturers/exporters in certain situations, and that Chinese manufacturers may not necessarily escape liability by simply ignoring a lawsuit.  Whether a judgment can be successfully enforced against the Chinese manufacturer is a different issue.

 

Officers' Liability for Infringing Acts of Corporation - Corporate officers who possess the right and ability to supervise what amounts to infringing conduct, and who have an obvious and direct financial interest in the exploitation of copyrighted or patented furniture designs, can be held personally liable for their companies’ acts of infringement.  Collezione Europa USA, Inc. v. Amini Innovation Corp., U.S.D.C., District of New Jersey, 2009 U.S. Dist. LEXIS 76411 (Aug. 26, 2009).

 

Forum Selection in Furniture IP Cases - A furniture company seeking to enforce its patent, trademark, or copyright rights in federal court may file suit in its home forum against an out-of-state or non-U.S. defendant/infringer if the complaint alleges willful infringement, the evidence demonstrates that the defendant/infringer knew that the plaintiff’s principal place of business was in the forum, and that the alleged infringement would harm the plaintiff in that forum.  Amini Innovation Corp. v. Cosmos Furniture Ltd., U.S.D.C., Central District of California, 91 U.S.P.Q. 2d 1150, 2009 U.S. Dist. LEXIS 29812 (Mar. 16, 2009); Amini Innovation Corp. v. JS Imports and Designer Furniture Warehouse, U.S.D.C., Central District of California, 497 F. Supp. 2d. 1093, U.S. Dist. LEXIS 43758 (May 21, 2007).

 

 

Legal Standard for Design Patent Infringement - The controlling test for design patent infringement is the ordinary observer test.  Egyptian Goddess, Inc. v. Swisa, United States Court of Appeals for the Federal Circuit, 543 F.3d 665, 670-71 (Fed. Cir. 2008) (en banc).  The ordinary observer test originated with the United States Supreme Court in Gorham Co. v. White, where the Court described the test as:  “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  Gorham v. White, United States Supreme Court, 81 U.S. 511, 528 (1871).  This standard applies to design patents for furniture designs, and it is improper to compare the patented and accused furniture designs element-by-element, but rather, they should be compared based on overall appearance.  Amini Innovation Corp. v. Anthony California, Inc., United States Court of Appeals for the Federal Circuit, 439 F.3d 1365, 1372 (2006).