Copyright vs. Patent…an Economical Alternative

April 2003
The Licensing Book

Manufacturers of licensed merchandise are generally more familiar with patents than with copyrights.  While not necessarily aware of all the subtleties, manufacturers generally know that it is wise to have a patent infringement search done before launching a product that involves novel construction, composition or operation.  Most also recognize the benefits of owning patents in their inventions, though they may be reluctant to invest in patenting unproven products.

Copyrights seem to garner little attention from manufacturers.  Yet copyrights can provide significant protection for important elements of merchandise at substantially lower costs than patents. 

Copyrightable Subject Matter

The U.S. Copyright Act recites a variety of categories of "copyrightable works" including literary works, musical, dramatic, pictorial, graphic and sculptural works.  Motion pictures and other audio/visual works, sound recordings and architectural works are among other categories protectable by copyright.

Manufacturers of licensed merchandise would likely be most interested in pictorial, graphic and sculptural works, inasmuch as those classifications include products frequently manufactured by licensees of entertainment, sports, and artistic properties.  Fortunately, these are among the easiest products against which to compare potential copies.  As a result, it would seem prudent that manufacturers take the extra step of obtaining registered copyrights in products that they believe likely to be copied.

Cost Differences

Patent applications can involve substantial expense associated with preparation and with the examination procedure that precedes issuance of an enforceable patent.  By contrast, under U.S. law since 1978, copyrights are created automatically and without cost as soon as a work of appropriate subject matter is created.  While copyright registration can be very beneficial, as described below, it is not essential to the existence of a copyright.  Even if registration is sought, the cost is generally a small fraction of that of an issued patent.  

Another difference between patent and copyright protection is that an invention is patentable only if it satisfies strict standards of "novelty" and "non-obviousness".  Briefly, one's invention is not patentable if it is the same as something has been done in the past, or is rendered obvious by the accumulation of pertinent prior art, to persons reasonably familiar with the technology.  By contrast, a work of copyrightable subject matter will merit copyright protection if it has been created independently by the current author, even if it is identical to a work created in the past.  For example, if the Mona Lisa were duplicated by an artist who was unaware of Leonardo da Vinci's masterpiece or, even if aware, did not copy the earlier painting, the second artist could own a copyright in the new painting.  Therefore, there is no need for any kind of search of the prior art to determine whether the work is new…for copyright purposes it simply doesn't matter.

Differences in Protection

On the other hand, copyright protection does not extend to the ideas or concepts that are incorporated in a copyrighted work, but is limited to the "expression" of the work.  For example, an artistic rendering of a pastoral scene showing a farm house, barnyard animals and vegetation under a shining sun would not be infringed by a conceptually identical artwork that rendered the same elements in substantially different forms.  Similarly, the copyright protecting a technical article that describes a process for manufacturing a product would be infringed by one who reproduces the article, but would not be infringed by one who reads the article and uses the described process.  In the latter case, a patent on the process or the resulting product would be the appropriate forms of protection.

Differences in Enforcement

While a patent owner can establish infringement merely by proving substantial similarity of a product to his or her patented concept, a copyright owner must go one step further and prove both substantial similarity and copying.  Reverting to the Mona Lisa example, if da Vinci had created his painting under the current copyright law, he would have copyright protection without the need for any additional steps.  If, as suggested above, another artist created the identical painting without reference to da Vinci's work, because of the absence of copying, da Vinci would have no recourse and the second artist would be free to exploit the painting however desired.  By contrast, had da Vinci gone a step further and obtained patent protection in his painting, the mere similarity between the two identical paintings would be enough to establish infringement.  (Of course, there is no such thing as a patent on a painting; this hypothetical is for illustration only.) 

Summarizing, copyright owners must prove copying, either directly or inferentially, while patent owners need to establish only that the offending product is covered by the claims of their patent, even if the product is created without copying and in complete innocence.

Advantages of Copyright Registration

As previously stated, registration of copyright is not necessary to establish protection.  However, a manufacturer who pursues registration enjoys significant advantages. 

The U. S. Customs Service will enforce registered copyrights against the importation of  "piratical copies" into the United States, seizing them at the port of entry.  This action requires no expenditure by the copyright owner, beyond the cost of registration and distribution of copies of the copyright to the ports of entry where knock-offs would most likely be found.  The associated expenditure is miniscule compared with the expense of litigating a claim of infringement after the knock-offs have entered U.S. commerce. 

In addition, one who registers a copyright prior to publication of the copyrighted work which is later infringed has access to enhanced monetary damages (up to $100,000 per infringement) as well as award of attorney's fees, pursuant to the Copyright Act.

An Economical Alternative

Although subject to the described limitations, copyright protection can provide effective defense against violations of those manufacturers' rights most prevalent in the licensed merchandise industry.  Most forms of original artwork and products that bear such artwork can be protected by copyright, as can be products that bear their own aesthetic imprints, shapes or patterns.  Given the inexpensive protection so readily available, prudent manufacturers would do well to give full consideration to copyright protection.