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inexpensive knockoff frames could give a shop more than it bargained for—a costly lawsuit

Selling knockoff frames is illegal: inexpensive knockoff frames could give a shop more than it bargained for—a costly lawsuit

Joshua Kaufman

Attention frame shop owners, next time someone offers you frames that look like those of a major manufacture but at half the price, think twice before doing business with them. Manufacturing or selling knockoff frames is illegal and can be costly to your business.

Contrary to popular belief, many frames can be protected under U.S. intellectual property (IP) laws, and selling knockoffs is illegal. While not all frames are protected by IP laws, a large percentage 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. At a minimum, an infringer can be divested of all profits made on the sale of any infringing frames and ordered to pay the lost profits incurred by the legitimate flame manufacturer, as well as the manufacturer’s attorney’s fees, which can easily run into the tens of thousands of dollars.

Defining Useful Objects

Part of the misconception about protection for frames comes from statements in the Copyright Act which say that useful articles are not copyrightable. The Copyright Act defines a non-copyrightable useful article as “an article having all 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 a useful object, and people therefore jump to the wrong conclusion that frames are not covered under copyright law. Copyright law does extend protection to useful objects if the object contains pictorial, graphic or sculptural features. For example, a plain white T-shirt might not enjoy copyright protection (it is a useful object). That does not mean that you can place copyright-protected artwork on the T-shirt and claim immunity from copyright infringement because you are selling a useful article. While the T-shirt does not enjoy protection, the artwork still does, no matter where it is used. Therefore, frames that have sculptural features that are not part of the functional 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 says, “only elements which can be identified separately from 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 Balinese 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 a useful article was entitled to copyright protection.

Carving Out Protection

That brings us back to frames. The legislative history clearly supports that carvings on a useful article are protectable. However, a minimum standard of originality in the carving must be reached. A frame that is very basic in shape or not original to the manufacturer would not be protected, and replicas of antique frames might not enjoy copyright protection due to the time limits of copyright protection. However, even if new mouldings 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 and warrants copyright protection needs to be made on a case-by-case basis. However, courts have held the level of originality required for copyright protection to be very low. A copyright notice (“Name [c] Year”) should be affixed to each piece of molding.

Protection is also available if the design is original but not sculptural in nature. Design patents cover the non-functional features of useful objects. Therefore, frames without sculptural qualities may find protection under patent law with a design patent. According to 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 patentable frame design cannot be driven solely by considerations of function, such as how the frame is secured around the artwork. [Note: A “regular utility patent” can be secured to protect the functional aspects of a frame.]

The Patent Process

Obtaining a patent can be a complicated process that should be undertaken with care. The way a patent is drafted can affect the amount of protection afforded to its owner. Frame designers can apply for a design patent in the Patent and Trademark Office in Washington, D.C. Patent protection in the U.S. is, at least initially, based on the individual inventor. The individual frame designer or designers must apply for the patent in their own name and may subsequently assign ownership rights to a flame manufacturer. Normally, a frame manufacturer will include mandatory assignment clauses in employment agreements with its in-house designers and with any outside designer it engages.

The Patent Office examines each design patent application to determine whether the design is patentable. If it 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 the Patent Office “approves” the design. During that time, the owner may enforce his or her design patent against infringers. Infringement of a design patent occurs if another article (i.e., a knockoff frame) resembles the patented design enough 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 has been infringed by the knockoff.

Protective Action

Frame manufacturers should note that under patent law certain action needs to be taken to protect frame designs:

* First, be sure that agreements with frame designers properly assign all rights in the design to the manufacturer.

* Second, seek design patent protection immediately after conceiving of the design and before showing the work to any third party. Patent laws in the United States prevent designers 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.

* Third, after applying for a design patent, the frames should be marked “Patent Pending.” This notifies frame shop owners and other resellers of the protected status and will hopefully deter them from purchasing knockoffs out of fear of being an infringer. Then, once a patent is issued, the patent number should be affixed to the molding.

A Seller’s Liability

If an infringement occurs, everyone in the chain of sale is separately and jointly liable. Therefore, the flame manufacturer can go after the knockoff manufacturer, the importer, the distributor and/or the retail frame shop. It can obtain an injunction against all future manufacturers and sales as well as obtain “actual damages” from everyone in the infringement chain, which includes 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 example, if 10 knockoff frame designs are being sold, one infringer could be liable for up to $1.5 million.

Under patent law, all the infringers are subject to give up all profits from the sale of the infringing frame. If they acted willfully and ignored a pending notice, the damages can be triple the actual profits plus attorney’s fees. So the bottom line is that selling knockoff frames at any stage in the cycle can be a dangerous and costly endeavor.

BY THE WAY …

If anyone thought that using the original manufacturers’ corners while selling the knockoff product was a good idea, they were mistaken. Doing so is an additional violation of federal trademark law (the Lanham Act Section (43(a)) by mis-designating 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 provision.

Joshua Kaufman, Esq. is a partner in the law firm of Venable, LLP, based in Washington, D.C. He is one of the country’s foremost attorneys in the field of copyright, art and licensing law and has published more than 200 articles on various topics in the field. He is general counsel to the Art Copyright Coalition, a group of artists, art publishers and art licensing agents 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.

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