Re: Re: When Infringement Begins

Architectural plans are the only schematics I can think of under the Copyright Act, for which making constitutes a "copy" and therefore an act of infringement. In evaluating state-based remedies you should think about whether you have to take a look at Sears v Compco and progeny -- I seem to recall that was a key functionality and preemption case about trying to protect lighting fixture design.

There may be a remedy but client may be well advised not to pursue it.

In the systems integration industry, potential customers frequently accept proposals and then have a third-party vendor implement them (and the third party is usually able to quote less, precisely because he doesn't staff and pay the pricey designer/consultant to come up with the overall design solution.) In such cases quantum meruit could be an appropriate remedy (although it's going to be severely de minimis in comparison to the lost profit on the entire contract if awarded). Unfortunately, this cure kills the patient--potential clients will find out that others are getting sued for using "free" design work, then client won't even get the initial sales foot in the door.

What do places like Ikea and Home Depot do, when someone takes their kitchen layouts and hires Joe's Corner Reno to execute them? I think this is just written off by them as a cost of doing business. If treating this as a cost of the sales process can't be absorbed by your client's business model, then your client may have to change the business model--ie, contract for payment up front for design. This is standard in custom software development--design and specifications is "Phase I" and is pay-as-you-go, and then implementation is Phase II and that's another project and another pile of money. At least that way, client consistently gets paid for Phase I design work. (And when the customer pays for the design, the customer is far more likely to stick with the design firm for implementation.)

The moral of the story is, depending on the custom in a particular industry, market forces may be at work and the client may be forced to 'fuhgedaboutit'.

Carol Shepherd

Elizabeth T Russell wrote:
>
> First consideration is whether the fixtures are copyrightable at all.
>
> Beth Russell
> www.erklaw.com
>
> -----Original Message-----
> From: CNI-COPYRIGHT -- Copyright & Intellectual Property
> [mailto:CNI-COPYRIGHT[_at_]cni.org] On Behalf Of Mike Phillips
> Sent: Wednesday, August 10, 2005 4:51 PM
> To: CNI-COPYRIGHT -- Copyright & Intellectual Property
> Subject: [CNI-(C)] When Infringement Begins
>
> Client designed some decorative fixtures for a retail store and submitted
> them along with a proposal to manufacture them. Store took the
> drawings/plans to another company and had that company build the fixtures.
> The store is now open to the public and is using the infringing articles.
> When did the store's infringement begin? When they delivered the drawings to
> the substitute contractor, when the contractor delivered the finished goods
> to the store, when the store installed the displays, or when the store
> opened to the public? The date could be critical to filling an application
> to register the copyright in the designs "before the infringement begins."
> Any thoughts welcome.
>
> Mike Phillips
>
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-- 
Carol Ruth Shepherd 
Arborlaw Associates PLLC 
business, technology, entertainment and media law 
Ann Arbor, Michigan USA 
734 668 4646 v  734 786 1241 f 
"practical legal solutions for creative people" SM
http://www.arborlaw.com