In 1989, a Florida federal court relied upon a “relevant buyer group” composed of wholesale customers to determine if the shape of Remcraft’s Swedish Modern Bullet, Cylinder Bullet and PAR Holder had “acquired secondary meaning” or implied their maker. According to Weisz, the judge refused to grant the defendant, Maxim Lighting, a summary judgment asserting no case. There is no record of a trial, so Weisz believes the case was settled.
Residential Lighting: Give us a primer on product infringement.
Edward Weisz: There are three areas. One is patent law. A utility patent protects the way something functions, regardless of its appearance, like a new transformer or a new type of lightbulb. A design patent protects the actual appearance of a useful article.
The second area is trademark. This can protect the physical appearance of an article through a “trade dress configuration”—a certain style Waterford Crystal vase or Tiffany & Co. flatware.
The third is copyright law. Copyrights protect an expression of an idea, but in residential lighting it needs to have some “threshold of creativity,” as the copyright office likes to say. It needs to be ornate. A copyright examiner once told me, “If it’s simple and elegant, you don’t have a chance. If it’s gaudy and ugly you have a better shot.”
RL: How strong is copyright protection?
EW: It’s limited. All it does is protect your original creation of authorship. If someone comes up with a similar design, and they didn’t copy you or don’t even know you, there’s no infringement.
RL: Explain trade dress.
EW: [That’s when] the shape of a product could function as a [recognizable] indicator of its source. If a lamp has become well known, and there is only one manufacturer known for it, that manufacturer can establish trade dress rights.
Unfortunately, today competitors [can] look over your shoulders and copy before you can establish a foothold for your style. The U.S. doesn’t have a mechanism to prevent such copying.
RL: What should a showroom do if, unknowingly, they sold a copy of a protected product?
EW: Anybody who makes, uses, sells or offers for sale a patented article is liable for patent infringement. So, the showroom is definitely on the hook. Most of the time, this situation is handled through an indemnity arrangement between the showroom and its supplier. The showroom will contact the supplier and say, “We’re not supposed to sell this item, and if we have to pay a royalty on the sales we made to the patent owner, we’re going to reduce what we owe you by that amount.”
RL: What should a manufacturer do if someone knocks off its product?
EW: A design patent is a good way to go if they have [introduced] a new shape. It is fairly inexpensive, and if someone makes a direct copy, a design patent has some teeth.
Edward Weisz is a partner at the intellectual property law firm of Cohen Pontani Lieberman & Pavane (www.cplplaw.com) in New York City. Weisz’ focus is on U.S. patent prosecution.