By: Sarah Boone

Associate Attorney

Companies are typically aware of the potential patent pitfalls associated with the launch of a new product or product design. However, many companies fail to consider the potential related copyright pitfalls, particularly when the product is not designed in-house. The decision to sell a product that is similar in appearance to one already on the market can be a very risky proposition.  

What Is Copyright Protection?

Copyright protection extends to “original works of authorship” including literary works, musical and dramatic works, pictorial works, and sculptural works.[1] However, even features incorporated into the design of a product may also be eligible for copyright protection.[2] Some potentially copyrightable product features include the overall design of a product, product instruction manuals (i.e., the layout and look and feel of graphs, charts, or illustrations and images), and character features.[3]

What Is Protected Under Copyright Law?

There are, however, clear limitations to copyright protection. The rule of thumb is that a product feature is copyrightable only if is capable of being envisioned separately from the product. For example, the design of a Coca-Cola bottle may have a unique, attractive and well-known shape, but the design is not copyrightable because it cannot be envisioned separately from the bottle itself. On the flipside, a character embodied in a toy or doll (like Superman or Barbie) has creative character aspects which can be envisioned separate from the toy or doll. To the extent the character features are capable of being envisioned in various mediums, such as movies, books, stickers, and illustrations, they may be protectable under copyright. And, when they are incorporated into a product, that product may be subject to copyright protection.

Therefore, certain types of games, toys, dolls, stuffed animals, building sets, etc., may be subject to copyright protection. For this reason, products of these types obtained “off the shelf” from Chinese manufacturers carry with them significant risks. For example, the infringer could be subject to “disgorgement” of all of its profits (and possibly its customers’ profits) as damages for copyright infringement, even if the copyright has not been registered by the author. Note that while copyright registration—an inexpensive and painless task which often takes mere weeks—may be required in order to commence an enforcement action, it is not required for actual damages to accrue. In addition, the Copyright Act provides for certain types of statutory damages resulting from activity occurring after the copyright has been registered.

Finally, copyright infringement is a strict liability claim, meaning that an infringer’s lack of awareness of a copyrighted work may be insufficient to evade damages. Therefore, companies should carefully assess the risks associated with selling products that are not designed in-house.

[1] 17 U.S.C. § 102.

[2] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1007 (2017).

[3] Kid Stuff Mktg., Inc. v. Creative Consumer Concepts, Inc., 223 F. Supp. 3d 1168, 1187 (D. Kan. 2016).