Wants to Protect Sneaker Design?

Dear Rich: I wanted to know if you can copyright a sneaker design. I have a few designs that I would like to protect, and is it legal to use the style of Converse Sneaker but with your own designs sort of like what Ed Hardy did with their designs? If you're talking about a two-dimensional design printed on a sneaker -- for example, somebody screens a photograph or artistic design on the fabric of the shoe -- you can protect the artwork under copyright law. To fortify your claim, you could register it with the Copyright Office and chase anyone who infringes it, whether it's reprinted on sneakers, sheets, or bed pans. By the way, we believe Converse licensed the images from Ed Hardy. Anyone who reproduces the Converse style (such that it imitates or conjures up the Converse brand) without permission is likely to hear from Nike (the owners of the Converse brand).
When copyright isn't enough ...  Copyright canot protect useful objects, so if by "design," you're talking about the design of the sneaker, itself -- toe patterns, side stripes, stitching, tips, number and placement of ringlets, appearance of the tongue, color of the laces, etc. --  then you want to consider the protection afforded by design patents. That's the approach taken by shoe makers such as Nike, Reebok,  AVIA, Asics, LA Gear, Rockport, Sketchers, Wolverine, Keds, Louis Vuitton, Timberland, Berluti, and Kangaroos.

Bird Feeder: Patent or Copyright?

Dear Rich: I have a design for a bird feeder which hasn't been made by anyone else yet. I want to pitch the idea to a company but don't want them to steal my idea. Is a copyright on the design good enough to stop them, or should I apply for a patent? Copyright won't protect useful objects, so we don't think that would be the best choice (unless you want to stop others from copying your bird feeder's imagery). Instead, consider one of the following methods of protection:
Design patents. Inventors use design patents to protect the appearance or design of a functional object. Some examples of bird feeder design patents are this one and this one. Read more about design patents.
Utility patents. Inventors use utility patents to protect bird feeders with unique functional features -- for example, this squirrel-repelling feeder or this squirrel-repelling feeder or this squirrel-repelling feeder (whoa that's a lot of repelled squirrels). Read more about utility patents. (Also you can preserve your place in line at that Patent Office without filing a full patent application by filing a provisional patent application.
Trade secret. Some inventors seek to protect their rights when submitting ideas by using nondisclosure agreements (NDAs), thereby preserving trade secrets. The problem for inventors is that often the evaluating company won't sign the NDA because of concerns that they'll be precluded from developing similar ideas. Read more about NDAs and trade secrets.

Developed Auto Ideas: Now What?

Dear Rich: In 2004, I drew up two sketches with written descriptions for two different automobile ideas, one of which I designed as an enhanced safety feature, and one of which I designed as an enhanced security feature. I sealed the works in an envelope, mailed them to myself, and had the envelope notarized. I have a renewed interest in learning how to go about further protecting and getting the designs in front of the appropriate department of an automotive company. There are two ways to protect your undisclosed automobile ideas: (1) as trade secrets (in which case you'll need to use NDAs when disclosing); or (2) by obtaining patents.
Design patent or utility patent? Although you're using the word "design" to describe your innovations, they don't sound like design patent material (which is reserved for the appearance of functional objects). If your innovations enhance safety or security, then they are functional and may be the subject of a utility patent. Read up on utility patents to decide whether your ideas will qualify. Keep in mind that the date of your invention -- 2004 -- is less relevant now that the new patent law will go into effect in March. And if you've made any public disclosures of your idea, that will likely kill any patent hopes. As for the notarized envelope, don't expect that to provide any protection. It's sometimes referred to as a "post office patent" or "poor man's patent." But whatever you call it, alas, it doesn't prove anything.

How Hard Is it to File a Design Patent?

Type/Status Drop Down Menu from Google Patents

Dear Rich: After looking at the sample design patent filing at your design patent site, it appears as though this is fairly easy. Is it really as easy as it appears?  Yes, we believe that with the aid of a draftsperson (someone who can do technical patent drawings), most people can file a design patent application. You can peruse some examples of design patents to see for yourself by using this search page at Google Patents. Enter the type of work you've created -- for example "table," "earrings," etc. -- then choose "Design (D)" from the drop down (see left). Examining the results, you'll see that no writing skill is required; it's all a matter of depicting your design accurately. However, after you file, you may need legal assistance if the design patent examiner determines that your design does not meet the standards of novelty and nonobviousness as described at our site. Keep in mind we're talking about design patents, not utility patents, and you will be getting protection only for the ornamental design of a useful object.

Copyright or Design Patent?

Dear Rich: I was paid to design jewelry for someone's wedding and now I'm afraid the client thinks she owns the design. I'd like to figure out how to best protect so it won't get stolen. Should I get a design patent or a copyright? First, check any written agreements you may have with the client (and yes, electronic agreements count) to be sure you haven't assigned your rights in the design. If you're unsure, review this article and this one, too.
Copyright or design patent? The rights you get with a design patent are considered to be broader or more powerful than a copyright. That's because you don't need to prove that an infringer saw your work and copied it -- all that matters is that the two works are the same. But that advantage may prove more valuable for those designers who can afford to obtain the design patent (as well as to enforce it). The design patent application and filing process can take a year or more and cost one to two thousand dollars. A copyright is automatic -- it exists once you create the work -- and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs approximately $50 to $65. Copyright will last for your life plus 70 years; a design patent lasts for 14 years. In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published more than a year ago (referred to as the one-year rule), you cannot now file for a design patent. (Note these rules will change on March 16, 2013, when the U.S. moves to a first to file system.) Finally, not all art can be protected under copyright and not all designs are protected under design patent law. Copyright law does not protect functional designs; and the USPTO will not issue design patents for 'surface ornamentation' (that is, two-dimensional illustrations such as drawings). So, if you're only decorating the surface of an object, you may not qualify. Here's more on design patents.

Can We Use Photos for Design Patent?

Dear Rich: We're getting ready to file a design patent for some gaming gloves and have not been able to get formal drawings done. We're in a hurry. Can we use photos instead of drawings? As a general rule, it's best to submit drawings. They can be prepared fairly quickly by many patent drawing services (or at least so they claim on the web). Type "patent drawings" into your search engine. As for using photographs in a design patent application, you can use them under the following circumstances:

• Color photos. The USPTO only accepts color design photos on "rare occasions" if they are the only practical way to show the design. You must file a petition explaining why the color photographs are necessary. 
• Black and white photos. You can use black and white photos if they are "the only practicable medium for illustrating the claimed [design]." We can't tell you if your gloves qualify under this standard but you can read more about the USPTO's standards for patent drawings. 

Also, you can furnish informal drawings with your application although the USPTO will not examine your application until formal drawings are furnished. By the way, we've created a design patent site where you can read more about design patent drawing rules.

Protecting Shoe Designs

Dear Rich: I recently did some creative painting on high heel shoes and got a great response.  Suppose I create 12 individual painted designs and want to see if I get orders.  In order to preserve my designs what do I need to do?
If you're applying surface ornamentation to a shoe, (imagery like this, that is considered separable from the footwear) your best protection is probably copyright law because it's automatic and because you can stop others from reproducing the image on anything, not just shoes. You should register the work if you're concerned about it being ripped off because copyright registration provides some advantages in a lawsuit. You can register all your designs as a group but if one of your designs is more popular than the others, you should probably register it separately. You can find help online, and if you need more assistance, check out our book, The Craft Artists' Legal Guide.
Protecting the shoe's design. If you want to stop the specific use of your image in connection with shoes, (or for some reason you want to protect the design of the shoe itself -- the shape, proportions and "sculptural" elements), you might consider filing a design patent. Design patents protect shape, design and ornamentation for useful objects.  Companies with large design patent portfolios, such as Nike, successfully use design patents to stop others from making similar shoe designs. We discussed the differences between copyright and design patents in a recent post. The big difference is that design patents are more expensive and take longer to acquire.
PS Good news for those who can't find what they want at Zappos: design your own shoes.

Design Patent or Copyright? Which is Better for Jewelry?

Dear Rich: I design jewelry and a store in Chicago has placed a fairly large order (at least for me) for one of my items. I was thinking I should do something to protect the design. Should I file a copyright or a design patent? Short answer dept.: Copyright will probably work best for you. We discuss this issue in some detail in our crafts law book but we imagine you're too busy filling your order to read the details, so we'll summarize here. (BTW, we've also written about this subject here.)
What's the diff? The rights you get with a design patent are considered to be broader or more powerful than a copyright. That's because you don't need to prove that an infringer saw your work and copied it -- all that matters is the works are the same. But that advantage may prove more valuable for big companies with a lot of money to obtain the design patent and to enforce it. The design patent application and filing process can take a year or more and cost one-two thousand dollars. A copyright is automatic -- it exists once you create the work -- and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs under $50. Copyright will last for your life plus 70 years; a design patent lasts for 14 years. In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published more than a year ago (referred to as the one-year rule), you cannot now file for a design patent. Not all designs are protected under design patent law. The USPTO will not issue design patents for 'surface ornamentation' (i.e. two-dimensional illustrations such as drawings). So, if you're only decorating the surface of an object, you may not qualify. For all these reasons, we'd suggest passing on design patent protection. By the way, we've putting together a website explaining design patent basics ... check it out at www.mydesignpatent.com.