Paradies IP Reports by Chris Paradies
May 2015

Can You Copyright a Floor Design?

YES! So says the 11th Circuit, a regional federal appellate court that includes Florida, where I practice. In fact, floor designs are protectable under patent, trademark and copyright law. 

Not only copyright, but trade dress and design patents can be used to protect designs like those on Mannington's flooring. Each of these types of intellectual property (IP) serves a different function, but overlap exists among them. Trade dress protects against consumer confusion over the source of goods or services.  Design patents protect against making, using and selling of articles having a non-functional, ornamental design infringing a patented design.  Copyrights protect against copying of original creative expression.  There is overlap in the level of protection afforded by these different types of IP, but each serves a different function.

The period of protection varies significantly among these types of IP, also. Trade dress must acquire distinctiveness, which can take years, even with million dollar marketing budgets. Once acquired, however, trade dress protection can exist forever, if used consistently and continuously in commerce. Forever is a long time, but with the rapidly changing economic environment today, so is the years that it can take to acquire distinctiveness.  A design patent can issue in less than a year and expires in a maximum of 15 years. This is long enough for most companies to establish trade dress protection. So design patents are great. The cost is usually less than $2000 per design. In contrast, to trade dress and design patents, copyright in design is immediate. The term for a work made for hire, like Mannington's flooring design, is 95 years! Best of all, it's free!  Yes, free! There are advantages to registering a copyright (e.g. right to legal fees and statutory damages), but if the cost of registration can be as low as $35.  So, you can see why copyright of designs is powerful. Paradies IP Solutions provides a step-by-step tutorial on filing your own application for copyright registration, which is available free to our paid members. Why not join now!

Now turning back to the decision, the 11th Circuit stated that a compilation expressing original selection and creative coordination of elements, as the court puts it, is copyrightable, even if it serves some functional purposes. Let me explain that phrase. A "compilation" is a collection of various elements in a design, and the appellate court is saying that selection and coordination of the elements by Mannington was sufficiently original and creative to be protected under copyright law. 

The decision hinged on an interpretation of section 101 of the Copyright Act that a “…design of a useful article, … shall be considered … [copyrightable] only if … such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Simple. Right? Not really?  OK, let me explain. A design is copyrightable if it is an original, creative expression that exists, in some way, separate from the useful features of the product. The appellate court found that the selection and arrangement of the design on Mannington's flooring could be both physically and conceptually separable from the flooring. The same design might be applied to wallpaper, for example. And other Mannington flooring for the same type of wood existed without the particular design at issue in this case. The appellate court distinguished other cases where a design was merely a "slavish reproduction" of wood and the sufficiently original selection and arrangement of elements made by Mannington. So, copyright law protects the original creative expression of Mannington's designs.