Can I Copyright My Design? Distinguishing Utilitarian Features from Artistic Elements

There are four main ways to protect intellectual property rights in design: copyrights, trademarks, trade dress, and design patents. Specifically, this article will discuss the use of copyrights to protect an individual's design. Generally, the difficulty does not arise in getting the Copyright Office to register your work, but rather enforcing your rights against potential infringers at a later time.

Section 102(a) of the Copyright Act states that copyright protection extends to original works of authorship fixed in any tangible medium of expression. Section 102(a) defines works of authorship as "pictorial, graphic, and sculptural works," among others. Pictorial, graphic, and sculptural works include 2-dimensional and 3-dimensional works of graphic or fine art, prints, photos, models, and works of craftsmanship. 17 U.S.C. § 101.

There is no question that sculptures are protected works from reading the statute. However, copyright law does not extend to useful items. Therefore, complications may arise when sculptural works are also "useful" items. In these instances, copyright law will protect purely artistic elements of a useful article as long as the useful item can be identified and exists independently of the utilitarian aspects of the article (this concept is sometimes called the "separability test"). 17 U.S.C. §. A "useful article" is an article that has a purpose beyond pure aesthetic value.

In Mazer v. Stein, 347 U.S. 201 (1954), the Supreme Court determined that a sculpture of a dancer that also served as a lamp base was copyrightable in its form, but not in regarding its mechanical or utilitarian aspects of the lamp. In Mazer, the Court was persuaded by the fact that the lamp base could easily exist in a form other than the sculpture, and therefore the sculpture had independent aesthetic value. This concept applies to other works of art and designs that may be embodied in useful objects including artistic jewelry, tapestries, belt buckles, and glassware.

Examples of designs that were found to be not protectable by copyright include measuring spoons and a bicycle rack (though patent law protections may be available instead). There are several tests used by courts to determine whether the artistic elements are separable from the utilitarian functions of the object, and which test will be applied depends on the jurisdiction. While there is no hard and fast rule that fashion designs cannot be protected by copyright law, the designs often fail the separability test. Thus, women's purses, for example, may not be protected by copyright law (though trade dress protections may apply).

In order to determine whether your work of art is copyrightable, ask yourself "is the work a useful item?" If not, apply the regular standards for determining whether a work is copyrightable (original and fixed in a tangible medium). If it is useful, ask whether you can separate the creativity from the utilitarian functions of the object. If it is separable, the useful item is copyrightable so long as the other copyright requirements are met .

If you need assistance in determining whether filing a copyright for your design is right for you, or if you are facing a challenge based on the utilitarian aspects of your work, call the Law Offices of Roland Tong, at 949-298-7840 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, and copyright protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.