Another Aspect of Design: Trade Dress

{4:30 minutes to read} In my last post, I discussed the design patent, a form of protection available under the Patent Act to protect designs that are “primarily ornamental” rather than those which – like most inventions one normally thinks of in connection with the Patent Act – are “primarily functional.” Design patent protection can coexist simultaneously with copyright protection for the design as a graphic or sculptural work.

In addition to patent and copyright law, non-functional designs can also be protected under the federal Trademark Act (also known as the Lanham Act), and under state trademark and unfair competition law.

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Copyright and Patents

Copyright and Patents by Joshua Graubart{3:06 minutes to read} As discussed previously, in the United States, copyright and patent law are explicitly anticipated in Article I, section 8, clause 8 of the U.S. Constitution, which accords to Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

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Termination Rights Update: The (British) Empire Strikes Back

{7:12 minutes to read} OK, the U.K. isn’t the British Empire of yore, but I couldn’t resist the title.  Termination Rights Update: The (British) Empire Strikes Back by Joshua Graubart

In a prior post, we discussed a perennial problem faced by copyright legislators. Creators often have little bargaining power at the outset of their careers, and neither creators nor production companies (here meaning the industry gatekeepers: publishers, production companies, record companies, etc.) have a reliable method for measuring the commercial success of a work before it’s published. Consequently, if copyright legislation allows irrevocable transfer of the copyright in a work, creators will inevitably grant to production companies for a pittance masterpieces with massive commercial upsides, in which they rarely share.

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The Blurry Boundaries of Copyright


{3:54 minutes to read} My practice—and accordingly this blog—focuses on copyright, or at least on what we call The Blurry Boundaries of Copyright by Joshua Graubart “copyright” in the United States. However, “copyright” is only one segment of a broader spectrum called “intellectual property,” and—as is often the case with segments of a spectrum—the boundaries are somewhat arbitrary, and the subject matter can bleed across from one segment into the next. Just so with intellectual property.


Indeed—and just to illustrate the fuzziness of even the concept of “copyright”—what we commonly describe as “copyright” subject matter in the United States encompasses segments which much of the rest of the world labels “authors’ rights” (i) and “neighboring rights” or “related rights.” Copyright in the Anglophone world begins with literary property: books and pamphlets. Over time, the realm of copyright expanded to cover maps, charts, graphic art, and more, as technology and culture required. The current definition of works covered by the Berne Convention, the oldest and largest multilateral treaty on copyright protection, includes:

… every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.(ii)

This definition—which is also incorporated into the TRIPS Agreement, the general intellectual property treaty to which countries who wish to enter the World Trade Organization (WTO) must adhere—more or less covers the “authors’ rights” subsegment. The keen-eyed, however, will note what is not covered: sound recordings; live performances of actors or musicians; computer programs; database compilations, to name a few examples. Many of these are covered under the rubric of “neighboring rights” or “related rights” in other countries’ laws, or are absorbed into “copyright” under US law.

But certain other categories do not easily fit in either the “authors’ rights” or the “neighboring/related rights” boxes. Among the most ambiguous is “industrial design,” a category which can include—among other things—fashion design, vehicle design, and furniture design. In a future post, I will discuss the difficulties of intellectual property protection for industrial design.

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(i) “Authors’ rights,” incidentally, usually includes a subsegment called “moral rights,” which in the United States is so restrictive in scope as to raise the question whether it exists at all except with respect to certain works of “fine art.”
(ii) Berne Convention, Art. 2(1).



Termination Rights, Part 3: The British Commonwealth

Termination Rights, Part 3: The British Commonwealth by Joshua Graubart{4:18 minutes to read} In a prior post, Termination of Transfer – Part 1, I talked about Congress’s implementation of a two-term copyright structure, of 28 years each, in the US Copyright Act of 1909 (the act which governs copyright in works dated before 1978). The stated purpose was to permit authors a “second bite at the apple,” whereby they could profit anew from the exploitation of their works once the first term expired. As noted in that post, the structure failed to achieve its purpose.

However, while Congress went out of its way to justify its 1909 Act structure, the structure certainly wasn’t novel. It was, in fact, the same structure that had been used in prior American copyright acts, and it can be traced back ultimately to the Statute of Anne, [1] the 1709 British statute celebrated as the forebear of modern copyright legislation in the English-speaking world.

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Valuing a Copyright Infringement Claim

Valuing a Copyright Infringement Claim by Joshua Graubart{4:12 minutes to read} “How much is my claim worth?” This vexing question returns every time I consider a client’s copyright infringement claim. Attempting to predict a court verdict is a fool’s game, but there are some basic markers to guide us in valuing a claim.

Section 504 of the US Copyright Act provides 2 alternative methods of calculating damages.

  1. “Actual damages” – familiar to litigators the world over
  2. “Statutory damages” – an unusual method, often intriguing to non-U.S. claimants – that can be quite valuable to copyright holders

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