Advice on how to protect my design?

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Sheila H wrote
on Nov 21, 2010 8:22 AM

Okay, this is a long story so I will try to shorten it down to the quick version!

I had a craft show yesterday. I took some sewn items as well as jewelry. The attendance was down and while I covered my expenses, it wasn't by a whole lot. However, I was approached by a lady who asked if I would customize a design for her. I told her I would do my best.

Long story short, she gave me her idea and wants me to design this accessory. This is something that has the potential to be very popular. She is wanting to take this large scale if I can design something that fits her needs. Her thought is to make this a partnership and we would protect the design. She is prepared to approach investors and apply for grants, get funding, etc and do all that leg work, which is the part that I hate. She knows people who could very easily make this a very large scale, mass production thing or even licensing deals.

So, I have my idea and am going to start working on it today. The thought is that I will send her a prototype and she could use it and give me feed back to make adjustments before we approach the necessary people.

So at what point do you think I need to protect myself? I have my drawings from yesterday and I am going to take meticulous notes, measurements and take photos prior to shipping them to her. I thought I could mail it to her with a signature required to show proof that I mailed them to her. I got a great feeling/vibe from this lady, but I also don't want to get taken advantage of. I figure just keep everything documented and keep copied of all coorespondence.

I did ask my sister if she knew this lady and my sister didn't. But there was another lady that we discussed getting information from at the craft show and my sister said that the 2nd lady was legit, and would not have entered into a discussion if the first lady was not legit. ( Hope I did not confuse you! ). But the second lady is the first connection that could be a great benefit.

So do any of you have any thoughts, ideas, advice, as to how best to protect myself. Granted it is her idea, but my design. Is what I am doing now enough of a protection? I hate to contact an attorney at this point and complicate the matter even more since there is really nothing yet.

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SCB1 wrote
on Nov 21, 2010 9:06 AM

My advise would be to first and foremost have a legal partnership written up by a business lawyer. This will protect the two of you in the event that one wants to run away with everything for themselves. I wouldn't even send her a sketch till everything is in writing and signed.

Is this lady not in your town? If not I am sure you have a contact number or address. Inform her of your intentions to make it all legal and up and up. She will either agree to sign a partnership or you may never her from her again. This would not necessary be a bad thing if you never hear from her again, because that would mean that she never intended to come through on her end of the deal. So get everything in writing and have it filed wherever it needs to be filed to make it all legal. The first thing of order is to protect your design and your rights. I know it is her design idea sort of, but she is asking you as the artist to actually come up with a design that will work for what she wants. 

Good luck,

Happy Beading!!

Sue,

Temperance,Michigan

 

 

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MysticP wrote
on Nov 21, 2010 9:22 AM

Sheila, there are a couple of things you can do, and there are a couple of caveats I have to give you.

First of all, protection on fashion designs only lasts for 3 years under the copyright laws, so long-term protection just isn't there. I would seriously consider hiring a lawyer with some experience in copyrights, specifically fashion (because the rules are different for us). Also, plan on doing any enforcement of your ownership by yourself. Since the onset of YouTube and other similar websites, there are a LOT of violations of copyright laws that no one can really go after. Court cases can be long and expensive.

First of all, one thing you can do is establish the date that you two came up with the design. One good way to do this is to take a copy of any sketches and perhaps the prototype of the finished work. Seal this well, and mail it to yourself via registered mail. When you get it, do not open it. This is your evidence in court.

Draw up a contract between you and the woman you're working with. The more formal the contract is, the better it will stand up in a court case, so get some help with that also. There are several places online that will help you draw up contracts. Having the signing of the contract witnessed by a notary public will also help.

I need to point out here that I am no expert on copyright law ... I simply took a course on it a couple of years ago, but it's complicated and many layered. Get all the legal help you can. Having that sealed letter and a notarized contract will help to establish WHEN you did this, which would be helpful only when you got to court. These steps are IN ADDITION TO the regular steps you would take to apply for a copyright.

Here is a website with a bunch of the basic steps to filing for your copyright:

http://www.ehow.com/how_5013155_copyright-design.html

It involves several steps, including making sure no one has come up with this design before you, and there's a $35 application fee. 

I hope this helps!

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MysticP wrote
on Nov 21, 2010 9:55 AM

More caveats ... sorry

I pasted this directly from the US Copyright Offices Website, here's the link:

http://www.copyright.gov/docs/regstat072706.html

"First, copyright protection for the designs of useful articles is extremely limited. The design of a useful article(11) is protected under copyright “only if, and only to the extent that, 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.”(12) According to the House report accompanying the copyright revision bill, the test for separability can be met by showing either physical or conceptual separability.(13) The purpose of the test is “to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design.”(14) In keeping with this congressional intent, courts have applied the separability test in a way that excludes most industrial designs from copyright protection.(15) The Copyright Office has been similarly restrictive in its registration practices.(16)

Second, design patents are difficult and expensive to obtain, and entail a lengthy examination process. An applicant for a design patent must meet the generally applicable standards of invention(17)e.g., novelty and non-obviousness.(18) Many original designs that provide a distinguishable and appealing variation over prior designs for similar articles will fail to meet these standards. Even under the reduced fee schedule for small entities, the filing fee for a design patent is $100, the issue fee is $400, and the maintenance fees over the life of the patent are $3,500. This does not include attorneys' fees for prosecuting the application. It is our understanding that the process of applying for a design patent can take several years, which exceeds the life expectancy of the market for many designs.

Third, trademark law does not provide general protection for designs as such. Rather, it protects certain product configurations that serve to identify the source of the product.(19) Aspects of product design that do not serve to identify source are not protected.(20) Even to the extent that a product configuration qualifies for protection under trademark law, the protection is only against uses of the design that confuse or mislead consumers, or create a substantial likelihood of such confusion.(21)

Fourth, supplementary protection is not available at the state level. Boat hull design serves to illustrate the point: As noted above, in order to curb a practice known as “plug molding,” whereby an impression of a boat hull is taken and used to reproduce the hull design, some states enacted anti- plug molding statutes. In Bonito Boats, the Supreme Court held that Florida's anti-plug molding statute was invalid under the doctrine of federal preemption. The Court reasoned that Congress' decision to leave the subject matter in the public domain under federal intellectual property law precluded states from enacting such a prohibition.(22)"

I'm putting this in here not to put you off, but so that you have a clear idea of what you're up against - also it points out here that design copyrights have a different fee schedule, and it will cost $100 for the application and $400 to issue the copyright. 

 

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Sheila H wrote
on Nov 21, 2010 10:59 AM

Thanks for the info everyone! Yes, we have exchanged information. I gave her my name, phone number & e-mail ( I was an idiot and forgot my business cards ). She gave me one of hers that has her home info, phone and e-mail. We have already exchanged e-mails today. I know that the date is the key point.

Well, I wanted to stop back in to see what everyone was saying. I appreciate everyones thoughts and advice ( I understand that this is not legal advice, just personal thoughts ) and I really do appreciate it. I hope that this works out. I did tell her that my one thing was to keep this product at a price point that people could afford it as it would be something that could really benefit a lot of people. ( Sorry I am not giving tons of specifics but you all understand! ).

THANKS!

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KipperCat wrote
on Nov 22, 2010 8:54 PM

Sheila,

I hope it all goes well! 

Most lawyers offer a free initial consultation.  If you're near a large metropolitan area, I think you should be able to find one knowledgeable in copyright law and practice.  I would guess this would be a specialty area of practice in many states.  In that case, a qualified attorney would have a certification from their state bar association.  I certainly don't mean to knock small town general practice attorneys - my Dad was one!  I just don't know if copyright law is something that comes up in an everyday practice.

Liz

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Sheila H wrote
on Nov 23, 2010 6:09 AM

I think that I am going to schedule an appointment with someone close to me ( in the same town that I work ) in regards to just the business partnership of things. Once we get to the point of discussing copyright or trademark etc, we will have to go to a larger town that is about 1 1/2 north of me. And that is ok. But I figure having a local lawyer will be nice so that I can have him review any paperwork etc in regards to the business partnership prior to signing it. 

Hubby and I talked about that last night and we feel that even if I have to pay ( I too thought a lot of times they will give free first visit consult ) it will be worth it in the long run!

 

Again, Thank you to everyone for your thoughts!

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Sheila H wrote
on Nov 23, 2010 8:39 AM

I have scheduled an appointment with an attorney in my town for general information about the partnership etc ( as that is his field ). I figure the more information I have the better decisions I can make. I will keep you all posted!

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on Nov 24, 2010 7:55 PM

SCB1:
My advise would be to first and foremost have a legal partnership written up by a business lawyer.

I suggest you get a Limited Liability Partnership.

Stan B.

Lakeland, MN

USA

Ignorance is curable; Stupidity has neither cure nor excuse.

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JSmaz wrote
on Nov 24, 2010 8:54 PM

I had the same thought Stan, though I only know a little about it from business bank accounts.

Jeni

Oklahoma City

ArtFire Studio & blog  |  Gallery 

 

 

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Sheila H wrote
on Nov 25, 2010 4:42 AM

Stan and Jeni - That is the term that the lady I will be working with stated. So that is what she is thinking as well. I will be sure to ask about this specifically but luckily the gentleman I am seeing this is his area. I will keep you posted.

Thanks!

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