Design Ideas v. Things Remembered, 3:07-cv-03077 (C.D. Ill. Filed March 16, 2007)
Perry Saidman is a frequent contributory to Patently-O — especially when the topic turns to design patent law. In a recent case, his firm used copyright law to protect its client's wire-flower design. The flowers were incorporated into candle holders and other small useful objects.
Although cheap ($35), early copyright registration is important for collecting infringement damages. Registration is also helpful in establishing priority and ownership. In this case, the designer registered early and was awarded $750k for willful infringement.
Notes:
Case: Design Ideas, Ltd., v. Things Remembered, Inc., Case No. 3:07-cv-03077 (C.D. Ill. Filed March 16, 2007) (Garfield Goodrum served as lead attorney for the plaintiffs).
Jury Verdict Form: 2000005312.pdf
The original complaint also included charges of trademark and utility patent infringement. The broadest claimof the utility patent (No. 6,398,058) includes a limitation that "loops formed to simulate a flower" are used to connect the base to the top:
1. A container constructed of metal wires, comprising:
a base including a lower support wire bent to establish the predominant shape of said base;
a top including an upper support wire bent to establish the predominant shape of said top;
a plurality of wire figures, each of said wire figures having a first wire forming a central body and a second wire forming a plurality of loops outwardly extending from the central body and circumferentially offset from one another, said central body and said plurality of loops formed to simulate a flower, wherein said first wire and said second wire are separately formed and coupled together; and
a sidewall connecting said lower support wire and said upper support wire to space said lower support wire from said upper support wire, said sidewall comprising said plurality of said wire figures.
How charming,
6 running to the rescue of fellow examiner Mooney. And we know how well the 6 ethical clock ticks. How about another case of gleeful N-wording 6?
To the point about understanding law (and ethics) Isn’t “operating properly” a subjective position? Doesn’t that position in any regard fall apart once one realizes that the types of protection are different, such that there really is NO ethical obligation as you state? These are rather simple questions 6.
“but your ethical obligation to achieve both types of protection at your clients’ bequest as well.”
You might also recognize your ethical obligation to stand up and say that the system isn’t operating properly (even while you go about your business of abusing it). Oh wait, he already does that.
broje,
This is a public blog and you are using a pseudonym. The IANYL TINLA is a bit like typing in all caps.
Inspector Mooney, get back to work.
No self-respecting attorney would desire to conflate copyright and patent law as you so earnestly attempt. Of course, were you a real lawyer you would recognize not only the difference, but your ethical obligation to achieve both types of protection at your clients’ bequest as well.
That is also assuming you have ethics, but such easy slips of yours as fondling cats does seriously question that point.
Remember that it is not enough to show that the flowers are similar to those of some prior art. You must also show that the copyright owner actually copied those elements from that prior art. Good luck with that.
I think I get it know. If a four year old watches a Mickey Mouse cartoon, then draws a circle with two circles on top (ears), two dots for eyes and a nose (another dot) and a straight line (mouth) and then sells it to his friend, then Disney can sue for damages and should win even if the picture looks no more like Mickey Mouse than something Heller Keller drew after fondlig her cat.
What a great law! What’s especially remarkable is that this generous law is still not enough for the pro-software patent crowd. They demand more. But oh wait, they already got more in the form of the DMCA. Still not enough? Damnn, that’s greedy.
*****What do you mean by “works” ? You mean the text in the original handwriting of the bubble boy?
Once in the public domain, you can’t claim all rights to the words themselves.****
But if another person who had never even heard of Shakespeare actually copied the miraculous survivor’s work, then he would be liable for copyright infringement. He could not admit that he copied the miraculous survivor’s work, then point to the works of Shakespeare as a defense that the arrangement of words is in the public domain.
The elements of copyright infringement are existence of a copyright and actual copying. Existence of copyright stems from origination of creative elements. Actual copying can be proven by showing access and substantial similarity, but that’s not the only way to prove it.
However, the example of the miraculous survivor points up that it does not matter whether or to what degree the original creative aspects of the copyrighted work differ from those of previous works.
Here is a counter example. Suppose someone writes a derivative version of the public domain work, Dracula. It is exactly the same as the original except for the end at which Dracula goes to Paris and becomes a supermodel. That derivative work is entitled to copyright protection for that new ending only. Now suppose someone else, who has never read the original Dracula, copies the derivative work, but changes the end to something else so that none of the creative aspects that originated from the author of the derivative work are present. He admits that he copied all of the first part of the story from the copyrighted work. Did he commit copyright infringement? No.
Now look at the case of the flowers. The only way the similarity of the copyrighted flowers to previous wire flowers would matter is if you are trying to show that the defendant only copied elements of the copyrighted flower that were actually copied by the copyright owner from existing works. Remember that it is not enough to show that the flowers are similar to those of some prior art. You must also show that the copyright owner actually copied those elements from that prior art. Good luck with that.
Perry,
I hear you and you’re absolutely correct in refraining. We’ll just have to wait . . . .
So let’s see: the plaintiff obtains four different forms of protection for essentially the same thing: a trademark, a copyright, a design patent and an utility patent. And no one else see anything wrong here?
In any event, copyright and patent should be mutually exclusive. So, I’d say that one way to attack the copyright at hand is to show that it is not the subject matter of copyright; enter the utility patent. It seems that the utility patent gives the structural purpose for the “flower” thereby kicking the copyright claim because the flower is functional.
And, frankly, if there were some sanction available, I’d smack the plaintiffs upside the head with it. Is it any wonder that IP law gets a bad rap publicly?
I also think that there is a law review article in this case: Belt, Suspenders, Rope, and Duct Tape… How to get copyright, trademark, design patent, and utility patent protection for a wire daisy and why parties commit fraud in doing so.
I sure wish I could comment on all these…um…interesting posts, since I have thoughts on just about each one – such teaching moments are very hard to resist! But since the case is ongoing, I must reluctantly refrain. Perhaps Dennis can dredge up this thread again when the case is over.
“Excuse my ignorance, but is there a “Best Mode” requirement, when it comes to design patents?
Max,
The “best mode” requirement should apply. See 35 USC 171: “The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” Perry S.: is that correct?
“What is the “best” daisy design, I’m wondering.”
I’m hardly an expert on design patents, but I guess it’s possible for the design illustrated in the drawings not to be the “best mode.” But given that what’s shown in the drawings determines the design patent scope for purposes of infringement, it’s hard to believe in reality that what’s shown in the drawing isn’t the “best mode.” Perry S.: any thoughts on this?
My question was about finding prior art for a utility patent on jewelry, such as noted above.
As to novelty or originality, a copyright only requires “independent creation plus a modicum of creativity.” FEIST PUBLICATIONS, INC. v. RURAL TEL. SERVICE CO., 499 U.S. 340 (1991). [But I wonder if showing a jury that a very similar item was already known the prior art [if that is allowed] might possibly reduce jury damage awards?]
“mmm, I don’t think you understand copyright law. Suppose that someone were born on a ship and promptly shipwrecked and raised on a desert island. Suppose that someone, never exposed to the complete works of Shakespeare, happened to write works that were identical, word for word, to the complete works of Shakespeare. That person would have a copyright on those works, and entitled to register them regardless of their similarity to the complete works of Shakespeare.”
I’m not entirely sure how this hypothetical is relevant except to say that you can have independent creation. But that’s not really what is being talked about here since, presumably, Design Ideas is not located on some isolated island.
My point was merely that to the extent anything was protected by copyright, it should have been pretty narrow. The wire daisy shape is common. One example: link to shoplilygirl.com
My guess is that jury was mislead into infringement because Things Remembered used a wire daisy ON A CANDLE HOLDER. The problem, of course, is that the latter part is purely functional and not the subject matter of copyright protection. Even reading the jury questionnaire you can see the problem: use of the flower motif of the candle holder. *slaps hand against face*
This is simply a case that got it wrong, at least on copyright.
Suppose that someone, never exposed to the complete works of Shakespeare, happened to write works that were identical, word for word, to the complete works of Shakespeare. That person would have a copyright on those works, and entitled to register them
What do you mean by “works” ? You mean the text in the original handwriting of the bubble boy?
Once in the public domain, you can’t claim all rights to the words themselves.
Was there a design patent involved in this case? The jury verdict is all about copyright infringement, and there is a claim from a utility patent.
Excuse my ignorance, but is there a “Best Mode” requirement, when it comes to design patents? What is the “best” daisy design, I’m wondering.
As I recall, copyright infringement has two elements: access and copying.
If an alleged infringer has never seen the registered work, then there is no access. As I also recall, there is some sort of presumption that access exists if the accused device is identical to the registered work.
Of course, access is not required for design patent infringement.
My problem with granting a design patent and registering a copyright on the same work is that the public fails to gets its part of the bargain for the design patent: namely, that the design goes into the public domain when the design patent expires.
I would change the law so that a creator/inventor has to choose between copyright protection and design patent protection.
mmm, I don’t think you understand copyright law. Suppose that someone were born on a ship and promptly shipwrecked and raised on a desert island. Suppose that someone, never exposed to the complete works of Shakespeare, happened to write works that were identical, word for word, to the complete works of Shakespeare. That person would have a copyright on those works, and entitled to register them regardless of their similarity to the complete works of Shakespeare. However, if someone else made a movie called Macbeth based on the Shakespeare play, which is in the public domain, then they would not be liable for copyright infringement because they copied the public domain work, as opposed to the work copyrighted by the miraculous survivor.
In this case, the jury apparently found that Things Remembered apparently copied the Design Ideas’ product. I don’t know the case, but I do know that it does not matter how similar the Design Ideas’ flower is to any that came before in terms of “scope of coverage.” In fact, the infringing copy can be quite different and still be a “derivative work.” All that really matters is whether that design was actually copied, and whether a publication occurred. Even if Things Remembered produced a flower from ages past exactly like the one they produced, the jury would still need to believe that they did not actually copy the one from Design Ideas.
I’m just going to say, wow. I’m not sure that there is much else to be said. The copyright on a metal wire flower should have been so, so narrow. Metal wire flowers are millenia old. A daisy is about the most basic shape out there. A search through google images for “wire metal flower” and “flower made of metal circles” reveals patterns and shapes that are all relatives of the ones at issue here.
Agreed. Seems like a ridiculous result, given the obvious disimilarities between the flowers.
The “utility” patent is also rather bizarre. If the only difference between an old wire container and an allegedly new wire container is an ornamental design, then how is the new container non-obvious?
I’m just going to say, wow. I’m not sure that there is much else to be said. The copyright on a metal wire flower should have been so, so narrow. Metal wire flowers are millenia old. A daisy is about the most basic shape out there. A search through google images for “wire metal flower” and “flower made of metal circles” reveals patterns and shapes that are all relatives of the ones at issue here.
And even at first blush, while both are flowers and both daisies, they don’t even share the same basic structures.
If anything, this is yet another example of our practice getting it wrong.
Thanks, Perry. Now that I think of it during a reasonable hour of the morning hear in LA, you are absolutely correct: under copyright law neither actual damages nor statutory damages can be increased despite the wanton willfulness of the infringer. I hope you let us know the results of your fee application.
Some people in Europe want patent infringement to be a criminal offence. One can see that counterfeiting (copying every detail) is tantamount to criminal activity,. From there it’s easy to see why sanctions for infringing copyright (ie copying a substantial part) can be harder than for being adjudged merely to have strayed within the metes and bounds of a valid patent claim.
I’m troubled by the extent to which one can be adjudged a willful infringer of a patent claim, even though one didn’t copy.
Perry–
Hope you had a good Thanksgiving!
Still awaiting your response to the other design patent thread…
Ira,
In copyright law, a district court has discretion to enhance statutory damages for willful infringement, but the plaintiff in this case sought recovery of the infringer’s profits, instead of statutory damages.
However, willfulness does strongly favor an award of attorneys fees, for which an application to the court is being made.
As with design patents, disgorgement of the infringer’s profits is a powerful remedy in copyright law, and is not available with utility patents. Copyright law is in certain respects more powerful than design patent law in that the former offers the possibility of an award of infringer’s profits plus plaintiff’s actual damages e.g.,lost profits.
Is prior art searching needed for copyright protection? I guess the defendant might say they copied the older design, not the newly copyrighted one. Or were you talking about design patents?
What’s the remaining term of protection for this copyright? Another hundred years? Maybe they can register it as a trademark and get protection that never expires. Maybe they already have?
Since metal wire filigree jewelry is several thousand years old, I wonder if, how and/or where defendants do prior art searching in such cases? Museum curators?
Congratulations to Perry Saidman and his firm.
The jury awarded about $770,000 as the profits obtained by the infringer, regardless of the willfulness of the infringement. Did the court increase the award, and, if so, by how much?
Also, did the court award attorney fees, and, if so, how much?
Thanks.
Ira
I must say, “Things Remembered” is a cute name for somebody who copies the designs of others. I wonder where they got it from. Finding a clever and apt title for a work is not easy.
Depending on the business plan they had in mind though, I bet they were pleased with themselves, when they fell upon this name for their business.
I wonder how much money the plantiff got after fees and expenses.
Very nicely done. However it is possible to protect a patented design with copyright protection after the 14 years has passed?
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