Seeing With Your Third Eye

Because almost everybody wears glasses of some kind, part of the pathway of the ascent of a designer will quite often include an eyewear line. Personal optics is a field in which design must coexist with the demands of mechanics, durability and, for vision eyewear, medical requirements. With those few exceptions that inevitably come along, if what you find fits, does the job and, just maybe makes you look cool or at least not uncool–you will generally be content.

Of course, there are unique eyewear designs, but intellectual property law is tough on those who claim design rights for functional objects. Patent protection is reserved for the kind of innovation that rises to the level of the better mousetrap–meaning, by metaphor, that the new trap indeed should catch mice in a way not previously practiced or commonly anticipated. For the non-functional design elements of eyewear, protection can sometimes be obtained by design patent, copyright and either a trademark or trade dress. (Trade dress protection on the features of an object of any kind, rather than the packaging it came in, is a challenge for a different discussion.) There are particular requirements for each form of protection, meaning it is possible that one style of eyewear may qualify for one form of protection, for more than one form or for none at all.

By way of some exaggeration for a point, should you wish to protect a new eyewear design, you might have a credible chance of having the law support your claim if it were for sunglasses with not two but three lenses. That is to say, try designing frames on which a third, completely useless lens would be placed smack in the middle, over the bridge, to shade an imaginary third eye. To improve your chances, across the top of the frames place an original, melancholic relief illustrating a tragic moment from Longfellow’s “The Wreck of the Hesperus.” Along each temple add a declaratory statement such as: “Some People Will do Anything for Attention.” I am not going to speculate on your likely sales of that item during the fall-winter season, but some elements may prove to be protectable, as may a combination of elements.

This is not to suggest that you have to go quite that far to obtain rights for eyewear. All exaggeration aside, I have been quite successful doing so over the years for more mundane but far more elegant original variations on eyewear construction and design. And I have been able to defend those elements against infringement. The point is that, for something as common as glasses, whether for reading, vision or protection against the sun, you have to be inventive to come up with something strongly protectable. When you do, you would be well-advised to consult with your attorney about what elements, alone or in combination, can be protected by copyright, design patent, trademark or trade dress. You do not need to add the third lens to make that happen. You simply need to know enough to ask your lawyers whether what you have created is legally protectable, as well as being, of course, something both functional and beautiful.

Credit: Alan Behr


Patent Falls In Spiderman’s Web: Are You Paying Royalties Unnecessarily?

Spiderman

While the Supreme Court’s recent healthcare and marriage equality rulings garnered a lot of attention, there was another decision at the end of the Court’s term that may be more meaningful to the business of fashion – Kimble v. Marvel Entertainment, the Spiderman patent litigation. Steven Kimble secured a patent for a Spiderman toy that shot the character’s “webs” from a hand. Marvel, owner of the character, purchased the patent to resolve a claim of patent infringement, promising to pay royalties on sales of the toy.

The popularity of the toy outlived the twenty-year patent term. Under a fifty-year-old Supreme Court decision, the obligation to pay royalties under a contract ends when the patent term expires, even if the agreement contains no termination date. Court decisions have applied the same rule to copyright licenses and assignments.

The Spiderman case called for the Supreme Court to reconsider the rule and permit the continued collection of royalties as provided in the contract. Although conceding that the fifty-year-old case might have been wrongly decided, as a number of courts and commentators have noted, the Court declined the opportunity to overrule it. Instead, it advised that, if the rule is to be changed, it is up to Congress to do so. Spidey is now free to cast his web without writing any more checks.

The decision is a reminder to licensors that patent and copyright rights do not last forever. In contrast, trademarks last as long as they are used and protected and trade secrets last as long as their secrecy is maintained. Joining a license for patents and copyrights with related trademarks or trade secrets can be a good way to maintain royalties after the patents and copyrights have expired. Licensees, on the other hand, should periodically investigate whether they are paying royalties under patents or copyrights that may have expired.

Credit: Helene M. Freeman