Design Inspiration or Trademark Infringement?

Imitation might be the sincerest form of flattery — but when it comes to trademark law, it can land you in legal hot water if you’re not careful. Whether you’re a fashion designer, graphic designer, or your company works with a creative team to develop new products, it’s crucial to be aware of the fine line between inspiration and infringement. While inspired designs can boost your business and bottom line, infringed-upon designs can result in a lawsuit. Dealing with a design infringement claim isn’t only time-consuming and costly, but it can also harm your company’s reputation among consumers.

What’s the Difference Between Design Inspiration and Infringement?

Every designer seeks inspiration from other sources. However, whether a design has been “inspired” by another source lends itself to the question of whether their new design has been changed enough to be considered “original,” instead of “derived.” In making this determination, it must be determined whether the trademarkable elements of both designs are “substantially similar.” This can be done by looking at the designs side-by-side and comparing them.

It can sometimes be difficult to ascertain the outcome of a design infringement claim in advance since designers and judges often have differing views as to what constitutes a substantial similarity. Importantly, design infringement occurs when a person or company uses a trademark without authorization in a way that would be likely to confuse or deceive consumers regarding the source of the product.

Trade Dress Protections for Jewelry Designs

Notably, when it comes to “inspired-by” designs in jewelry, trademark issues usually arise in connection with a particular “trade dress.” Trade dress can include the overall appearance of a product’s dressing or packaging, in addition to the design of a product itself. Courts will consider the “total impression” of a product when it comes to determining whether trade dress has been infringed upon.

To prevail in a claim for trade dress infringement, a plaintiff must prove (1) the design is nonfunctional and (2) the design is distinctive or has acquired a secondary meaning before the alleged infringer entered the marketplace. In other words, it must be shown that the design serves no useful purpose. Additionally, the combined elements must identify the plaintiff’s brand as its source and the general public must identify the specific design with the brand.

Do Parodies Violate Trademark Law?

Parody imitates an original work in a humorous or irreverent manner. Since there would be no likelihood of confusion among consumers, “parody” is a statutory defense to dilution claims recognized under trademark law. Unlike with dilution claims, there is no automatic parody defense for infringement claims codified by statute. However, it can still be asserted as a defense to trademark infringement under the right circumstances.

While a parody is a humorous take or a spoof of an original design, it is not meant to be purported as the original — or even taken seriously. Nevertheless, it must be clear that the parody design is not associated with the original design to avoid infringement.

In order to successfully defend a trademark infringement or dilution claim involving a parody, certain elements must be met, including the following:

• There must be an original work
• The original work must be famous or known to the intended audience
• The parody’s creator must only take as much of the original work as necessary to bring the original work to mind
• The derivative work which brings the original work to mind must result in an original new work

Parody cannot be used as a defense in the event a defendant attempts to capitalize on a famous mark for their own use. A defense will also not be successful if an actual likelihood of confusion exists between the parody and the original.

What Damages Can a Plaintiff Recover in a Design Trademark Infringement Case?

A design trademark infringement lawsuit can have a substantial economic impact on your business. The Lanham Act allows a prevailing plaintiff to recover several categories of damages in these cases. Not only can actual damages be recovered, but they may also be entitled to disgorgement of the defendant’s profits and attorney’s fees in exceptional cases. Courts have a considerable amount of discretion in determining what award is appropriate.

Actual damages are also known as compensatory damages — this is the amount of monetary loss suffered by the plaintiff. This type of damages can be established through evidence of diverted sales. Disgorgement of profits is an equitable remedy in design infringement cases that require an accounting of the profits the defendant made as a result of the design infringement. The purpose of this award is to prevent the defendant from being unjustly enriched by their infringing activity.

Contact an Experienced Trademark Attorney

If you’re a designer, it’s crucial to know how to avoid inadvertent trademark infringement. At the Trademark Lawyer Law Firm, PLLC, we are committed to providing knowledgeable counsel regarding trademark matters, including infringement cases. Located in Ann Arbor, Michigan, our attorneys work with designers, entrepreneurs, and business owners throughout the country. Contact us today to schedule a free 15-minute consultation.