Maschoff Brennan



Choosing between Design Patent and Copyright Protection? Sometimes You Don’t Have To

April 20, 2016

If you are considering protecting your intellectual property, the choice between copyright and design patent protection is not always mutually exclusive.  In certain cases, your intellectual property may be protected by both copyright and design patent protection.

Copyrights, in general, are meant to protect original works of expression.  See 17 U.S.C. § 102.  Such works include novels, poems, paintings, sculptures, artwork and photographs, to name a few.  A work of expression may qualify for copyright protection where three conditions are met: (1) the work must be original—meaning that the work was created by the author instead of merely copied from another source; (2) the work must be fixed in a concrete or tangible medium of expression—meaning that your novel, painting, etc., appears, for example, on a canvas or is expressed on paper; and (3) the work must exhibit a minimum level of creativity—meaning that some amount of human intellect and ingenuity has been applied to create the work, since the copyright law does not protect mere facts or ideas, but may protect the unique expression of facts or ideas.  See id.

For example, merely listing scores from last night’s sporting events is not eligible for copyright protection as sporting scores are facts, but listing these facts along with commentary that demonstrates creativity as part of an article or blog may be subject to copyright protection.  Additionally, copyright protection is not available for “useful articles” which have an intrinsic utilitarian function.  See 17 U.S.C. § 101.  For example, a t-shirt is a useful article because it is worn to provide protection, warmth, etc., and as a useful and utilitarian article is not copyrightable.  However, to the extent that a t-shirt contains an artistic design, the design may be copyrightable separately from the t-shirt.

Design patents, on the other hand, are intended to protect new, ornamental and non-obvious articles of manufacture.  See 35 U.S.C. § 171.  An article of manufacture includes manufactured items such as a watch, running shoe, smartphone, and automobile parts, to name a few.  However, a design patent will only protect the ornamental and non-functional aspects of an article of manufacture.  For example, if a watch has a new and unique watch face, a design patent could be filed to cover the ornamental appearance of the watch face, but to the extent that the remaining portions of the watch (such as the band) are functional, a design patent would not provide protection for the additional functional aspects.

Where intellectual property qualifies for both copyright and design patent protection, it may be advantageous to utilize both forms of protection.  In choosing whether one or both forms of protection are best, the following factors should be considered.  First, a copyright comes into existence the moment the work is fixed in a tangible medium (there is no requirement to obtain a federal copyright registration, but such registration confers significant benefits apart from automatic copyright rights (see, while a design patent exists only after a patent application has been filed, successfully prosecuted, and a patent registration has been granted.  See 35 U.S.C. § 173.

Second, after receiving a design patent registration, the design patent lasts for a period of 15 years (if filed on or after May 13, 2015 (see id.)), whereas a copyright registration generally lasts for the life of the creator plus an additional 70 years.  See 17 U.S.C. § 302.

Third, copyright registrations are available for only certain types of work as defined by the copyright laws (see 17 U.S.C. § 102), whereas there is virtually no limit on the nature or number of ornamental items that may qualify for design patent protection.  However, for U.S. protection, a design patent application must be filed within one year after the first offer for sale, public disclosure or public use of the ornamental article of manufacture.  See 35 U.S.C. § 102.  There is no such one-year rule for filing a copyright registration.

Fourth, the design patent registration process can take a year or more and is more expensive than obtaining a copyright registration, which currently can take up to 8 months.  See (current application processing times); (copyright application fees); (patent application fees).  Finally, in general, enforcement of a copyright registration requires a showing that the infringer had access to your original copyrighted work and created a work with probative similarities, whereas under a design patent infringement analysis, infringement occurs where an ordinary observer would think the allegedly infringing design is substantially the same as the patented design.  Thus, in enforcing a copyright, independent creation is a defense to infringement, but it is not a defense in design patent infringement.

Whether copyright, design patent or both forms of protection is best for your intellectual property depends on a number of factors including the nature of the intellectual property, your budget and the considerations discussed above.

Kirk R. Harris

Rachel Jacques