Advanced Copyright Issues on the Internet - Fenwick & West LLP

(7) Standard of InfringementUnder Section 1309(a), to establish infringement, a design owner must prove that an“infringing article” has been made, imported, sold or distributed without the design owner’sconsent. Section 1309(e) defines an “infringing article” as one embodying a design that was“copied” from a protected design, and provides that an infringing article “is not an illustration orpicture of a protected design in an advertisement, book, periodical, newspaper, photograph,broadcast, motion picture, or similar medium.” The statute does not directly define what itmeans to “copy” a design. However, Section 1309(e) provides, “A design shall not be deemed tohave been copied from a protected design if it is original and not substantially similar inappearance to a protected design.” 1028 Strictly speaking, this provision enumerates only one wayin which an alleged infringer can rebut an allegation of copying, and it does not state that this isthe only way. However, it is unclear what happens when an accused design is, by coincidence,substantially similar to a protected design but can be shown to have been independentlydeveloped. Such a showing of independent development would be sufficient to avoid liabilityunder copyright law, and it seems logical that it should be sufficient to prove that the design wasnot “copied” under the design statute as well.(8) Benefit of Foreign Filing DateUnder Section 1311, an applicant for registration of a design in the United States canclaim the benefit of an earlier filing date in a foreign country for registration of the same designif (i) the foreign country extends similar design protection to citizens of the United States, and(ii) the application is filed in the United States within six months after the earliest date on whichany such foreign application was filed.(9) Vesting and Transfer of OwnershipUnder Section 1320, design rights vest in the creator of the design, or, in the case of adesign made within the regular scope of the designer’s employment, in the employer. Propertyrights in a design may be assigned or mortgaged by an instrument in writing, and any suchconveyance is void as against a subsequent purchaser or mortgagee for valuable considerationunless it is recorded in the <strong>Copyright</strong> Office within three months after its execution or before thedate of such subsequent purchase or mortgage.and Destruction(10) Remedies of Injunctive Relief, Damages, Attorneys’ FeesSection 1322 permits a court to award preliminary and permanent injunctive reliefagainst infringement of protected designs. Under Section 1323(a), the owner of a protecteddesign may recover “damages adequate to compensate for the infringement,” but the damages1028 It is unclear what the relationship is between the standard of “substantially similar” for infringement purposesand the standard of “distinguishable variation” (in the definition of “original”) for purposes of protectability.However, Section 1309(f) provides that if an accused infringer introduces an earlier work which is identical toan allegedly protected design or so similar as to make a prima facie showing that such design was copied, thenthe burden shifts to the owner of the allegedly protected design to prove its originality.- 236 -