If a product sells successfully, it is only a matter of time before a competitor copies the design of the product and begins selling a competing version. If the copying is exact, design patents and copyrights on the original design can provide a fairly straight forward avenue for stopping the copying competitor. However, if the copying isn’t exact, the question of whether copyrights and/or design patents on the original design will help stop the copying competitor depends largely on what type of design is being copied. If the design is functional, design patents and copyrights may not always stop the copying competitor when copying isn’t exact.
After years of litigation, Lanard Toys Unlimited (“Lanard”) recently lost their bid to stop competitor Ja-Ru (“Ja-Ru”) from selling a similar toy chalk holder pencil because Lanard’s copyrights and design patents did not cover the Ja-Ru design. The Middle District of Florida granted summary judgment to Ja-Ru because the toy chalk holder was a functional design and Ja-Ru had not exactly copied the design of the Lanard pencil. Ja-Ru admitted to using the Lanard pencil as a starting point, but had changed features of the pencil purposefully to make them different from Lanard’s pencil. The Court reasoned that as functions are not covered by design patents or copyrights, when the non-functional aspects of the Lanard pencil were compared to the non-functional aspects of the Ja-Ru pencil, there were clear differences between the two designs. Thus, the Court held there was no copyright infringement or design patent infringement.
While Lanard’s design patents and copyrights did not stop Ja-Ru in this instance, that does not mean design patents or copyrights on functional designs cannot be useful. Rather, different approaches to design patent and copyright protection should be pursued for functional designs than may be typically used when protection is for purely ornamental designs. If your design or product is functional, the attorneys at the Marbury Law Group would be glad to explore design patent and copyright strategies with you for protecting your design or product.
Read the Lanard decision here.