magazine | Mar 16, 2018 |
Knock it off: The impact of counterfeits

One of the hazards of innovation is having your great idea stolen. Industry experts unpack the legal protections for designers when copycat products hit the market, the ethical issues at stake, and the far-ranging impact of counterfeits.

If Hans J. Wegner’s Wishbone chair had but one wish, it would likely be to never again be knocked off. The internet is chockablock with faux versions of it and other oft-copied pieces—consider Philippe Starck’s Louis Ghost chair (that try as it might, can’t seem to “ghost” copycats) and Eero Saarinen’s Womb chair (which has been birthed, again and again, by counterfeiters). These are only the tip of the iceberg. According to U.S. Customs and Border Protection, 42 shipments of unauthorized replica furniture were apprehended in 2016—enough merchandise that its seizure helped protect more than 8,000 jobs. The number of shipments that squeaked past inspection is anybody’s guess.

Although scoring a bargain on a well-priced fake may feel like a victory in the moment, buying the real thing is more worthwhile in the long run because the value of authentic products often increases over time. “Although consumers think they’re getting a deal, they’re getting something that has almost no value,” says John Edelman, the CEO of Design Within Reach, which sells all three of the aforementioned chairs.

“With large-scale manufacturers who are targeting mass consumers, it can be hard to draw the line between inspiration and duplication.”

But how do consumers—and ethical interior designers—determine what’s a straight-up rip-off and what’s simply “inspired by” a particular piece? In short, it’s complicated. “Big players in the marketplace know how to play in the gray area and have the money to defend themselves—to them, paying to defend [copyright] infringement suits is just a cost of doing business,” says David M. Adler, founding partner of the Adler Law Group, who considers educating designers on their rights one of his soapbox issues. As he sees it, the increasing commercial availability of interior design has made it harder than ever for product designers to protect their work. Adler helps his clients snuff out knockoffs via a variety of legal means. But that doesn’t mean it’s easy: “With large-scale manufacturers who are targeting mass consumers, it can be hard to draw the line between inspiration and duplication,” he says. 

Global manufacturing has only made it more difficult to ward off copycats. “Years ago, a designer of a high-end sleigh bed bought a knockoff of his own design and set it on fire for a photo shoot,” recalls Scott Braun, a faculty member at the New York School of Interior Design. “I’m guessing he hadn’t found any satisfying legal recourse!”  

The Legal Options Designers have several avenues for pursuing protection, a registered copyright being the most straightforward option, and an inexpensive one at that. (The filing fee is $55, plus attorney fees.) “The way copyright law works is that the moment you create something, you own the copyright—but what registration gets you is proof of creation,” Adler explains. “The beauty of copyright registration is the right to seek statutory damages and costs, as well as recoup attorney fees.” Other avenues, like trademarks (see “Legalese for Laymen,” below), are more difficult and expensive to obtain but give designers safeguards and remedies that make enforcing those rights easier, or at least less onerous. The most expensive type of protection—patent law—is also the most powerful. “It’s an investment,” says Adler, “but the protection is there.”

It’s a little bit like playing Whac-A-Mole. A cease-and-desist letter will stop them for a short period, but they come right back up. They’re shameless.

While legal protections can have teeth, it is incumbent upon the patent holder to defend it, says June Lockhart-Triolo, marketing manager and art director at J. Robert Scott. The company has patented more than 150 of founder Sally Sirkin Lewis’s designs since she launched the company in 1972. Lewis has also received a utility patent for a unique ombré finish process. “The patents are one of our marketing endeavors, so I’m watching the market at all times to see what’s out there that looks a little too familiar,” explains Lockhart-Triolo, who has been at the company for more than 20 years. “We have to get on the phone with a lawyer, who may issue a cease-and-desist,” she says. “In some cases, the offending company may be ordered to destroy any inventory that has been built and not sold. A judge may also subpoena sales records, which can lead to compensation for every piece they did sell. But if you have to go down that road to protect your design, you should expect that there will be a sizable legal expense.” 

The process, Edelman agrees, is anything but straightforward. “It’s a little bit like playing Whac-A-Mole,” he says. “For these online guys with zero overhead who blindly sell you an image online, a cease-and-desist letter will stop them for a short period, but they come right back up. They’re shameless.” 

The high quality of photography available these days means that offenders can effectively shop online for designs, according to Lockhart-Triolo. “There are companies in southeast Asia that are very fond of our designs. We have to ask ourselves, ‘How much are they making on these knockoffs? And how much have they already sold?’ If they’re mass-producing what is essentially our design and selling it for half the price, we’d step in—because that negates all of the research and development, the hand labor, even the marketing.” 

The often-copied American furniture brand Herman Miller actively works with customs agents to help them identify fakes—and to understand why they should care. “We provide jobs to about 8,000 people globally and 4,000 domestically,” says Sam Grawe, the company’s global brand director. “When an agent keeps knockoffs out of the country by spotting them in a container, you’re able to protect those jobs.” He recognizes that, as a multibillion-dollar corporation, Herman Miller has more experience and influence than an individual or small firm. “There are avenues one can take to protect one’s designs, but it’s a much more difficult endeavor—and a question of resources—as an independent designer.”

Difficult, but not impossible. “Designers often don’t understand the intellectual property rights they have,” says Adler. “They get to the point where there is a knockoff or copy of their work and they say, ‘That looks like my idea!’ The first thing a lawyer is going to ask is, ‘What did you do to protect that idea?’” He encourages designers at every level to seek protection for their work—but also to determine whether or not to pursue legal action against the offending knockoffs with their business, not emotions, in mind: “I ask my clients, ‘Are you losing business because of it? Have you experienced tangible harm that’s worth going after?’ If it just upsets your moral sense of right and wrong—it’s very expensive to be right, and often not worth the expense.”  

The Fine Lines One major question on both sides of the argument is precisely how different designs need to be in order to be considered “influenced by” or “in homage to” rather than a facsimile. In cases of claimed infringement, the works are examined side by side. “The line varies by product and by industry,” says Adler. “In the marketplace, it’s difficult to be unique and distinctive enough that your signature style is protectable.” That’s not to say individual design isn’t protectable—but, according to Adler, “you have to go through infringement analysis to prove there’s been copying.” What, exactly, gets analyzed varies from case to case. (As Adler said, “It’s too much to go into in an article.” Read: If you’re concerned, consult an expert lawyer for the nitty-gritty.)

At NYSID, Braun takes a reflective, long-term view. “We all seem to agree that a knockoff of an Eames chair is a knockoff of an Eames chair, right? If it’s true for the icons, why isn’t it true for all?” he asks. “But it gets nebulous when we start to acknowledge the elements of inspiration and the various ways a good designer responds to history. We don’t have the IKEA Poäng chair without Alvar Aalto, but is it a ripoff?”

“I said, ‘I want you to buy 12 of the real thing at $24,000 each and destroy the fakes.’ And they did.”

Even wildly successful designers like Jonathan Browning and Marco Heithaus, the founders and owners of Jonathan Browning Studios, Inc., encounter challenges determining which infringement issues are worth pursuing. Though the duo have grown accustomed to dealing with knockoffs, their first experience was the most gut-wrenching: A Las Vegas hotel ordered eight of the studio’s sconces for model rooms—then went right to the company’s factory to commission thousands of knockoffs for the whole project. “They were so brazen, they even ordered the sconces under the name I had given my products,” says Browning. “We deserved to make millions on that many of my designs being on display.” The company sued the hotel for copyright infringement—and even though they had a strong case, it was a long, arduous process that made it all the way to the Ninth Circuit Court of Appeals before the two parties reached a settlement. (Had they not reached one, the next stop would have been the Supreme Court.) In subsequent cases, Browning says, people have been more inclined to do the right thing. For example, when he heard there were replicas of his sconces in a lobby of another high-end Las Vegas hotel, he sent a letter “asking them to address it immediately—and we got an immediate, friendly response,” he explains. “I said, ‘I want you to buy 12 of the real thing at $24,000 each and destroy the fakes.’ And they did.”

Innocents Abroad
So what happens when you’ve copyrighted a design in the United States, only to see something remarkably similar for sale in, say, Malta? “If you’re registered in the U.S., the work will be protected in most other jurisdictions,” says Adler. “But you have to be protected in the U.S. first.” Similarly, your rights exist in Italy first if you are exclusively selling in Italy. And, while he calls China “the land of rip-offs,” Adler notes that although Hong Kong has access to Chinese markets, its legal system is based on common law. “If you protect your rights domestically,” he says, “you will be able to ensure protection internationally.”

Cassina managing director Gianluca Armento notes that the brand’s furnishings are protected by copyright in Italy—which is compliant with European Union regulations that recognize copyright protections on works for the entire duration of the creator’s life and 70 years after their death. “Outside of Europe, it becomes more difficult to protect these works,” he says. “Every country applies its own intellectual property laws or copyright protections, so we work closely with an international legal network in order to defend our collections.” DWR’s Edelman says that there are stronger repercussions for knockoffs in Europe. “Europeans have a more forward-thinking system to protect design.” Case in point: In 2016, the EU tweaked the Copyright, Designs and Patents Act to increase the duration of design copyrights from 25 to 70 years, rendering them akin to those that protect other creative works, like songs and novels.

Having an on-call legal team helps Lockhart-Triolo manage all of J. Robert Scott’s international patents and protections. “When you apply for European registration, you may have to have every single document translated into the language of each country in order for that country to agree to give you the patent—some countries will accept French or English, but some won’t,” she explains. “We work with a firm in Texas that specializes in intellectual property law, and they liaise with our European attorneys. They’re wonderful advocates who appreciate the artfulness of this endeavor.”

Educate Your Buyers
One way to slow the steady stream of knockoffs is to teach consumers exactly why the real piece is worth the money. This is what the nonprofit Be Original Americas has focused on since it launched five years ago. “The organization was created because of the significant lack of awareness on product and furniture design,” says Herman Miller’s Grawe, who is also the former president of Be Original Americas. “I’m one of few people who sees a chair and says, ‘That’s designed by Sam Hecht for Herman Miller.’ The majority of people see a piece of furniture and say, ‘I bought that at Design Within Reach.’ It’s not necessarily only saying knockoffs are bad, but also saying that organizations that promote new ideas and creativity, and investing in the future are the kinds of companies you might want to be putting money behind. Not organizations that ride on the coattails of others.”

“Knockoffs are illegitimate competition.”

Like many other major brands, Cassina is constantly developing educational programs. “The most compelling cultural message we can provide is the history of our icons, like Le Corbusier, Charlotte Perriand and Gio Ponti, to name just a few,” says Armento. “Look-alike products can destroy the quality perception of the ‘original icon’ as a category in itself, in that they miseducate consumers by suggesting that there is no original, that the creative rights have expired—by propagating nonsense.”

“Knockoffs are illegitimate competition,” agrees Edelman, who took over for Grawe as president of Be Original Americas this year. “The worst thing is that they’re not upfront about it—the consumer may not even know that they’re buying a knockoff.” 

The issue isn’t solely about protecting businesses—it’s also about protecting the consumer’s investment. “When pieces are stamped ‘Carl Hansen,’ ‘Design Within Reach’ and ‘Herman Miller,’ it gives consumers confidence,” says Edelman. DWR is known for celebrating its designers—telling their stories in catalogs, online and in stores, to reinforce the value of authentic design. “We’re telling people about the provenance of the designs on a daily basis, not just saying, ‘Okay, this table seats eight!’ By educating consumers about the marketplace and the identifiers of an authentic product, we equip them with the tools to make an informed decision.”

But what about the educated consumers (designers included) who do their research but still decide to do buy fakes? It directly affects the future of the industry. “When a client buys a knockoff, it slowly chips away at the opportunity to produce new, original design,” says Edelman. “For every piece that’s fantastic, you’ll make three or four pieces that aren’t. Somehow, you have to finance all of that research and development.” 

On top of the business implications, Grawe notes that while knockoff pieces can provide an adrenaline rush (“I’ve attained the look I wanted for my dining table!”), the pieces can introduce more problems than they solve, including issues around quality, safety, sustainability and warranty—not to mention ethical labor practices. “I believe that it’s about more than helping the industry,” he says. “It’s important to support companies that provide a reliable product, use safe materials that are sound and sustainable, engage in fair practices and provide living wages to their employees.”

Keep Your Eye on the Prize
One of Browning’s current tactics is to stay far ahead of the competition. “How one feels about being ripped off and what one does about it—those can be very different things,” he says. “What we’ve chosen to do is document our work: We pay a fortune for photography and make tearsheets on heavy stock. We have a gorgeous website and we post everything to it immediately. We don’t casually introduce something—instead, we make it very clear that it is ours.” Equally important is his willingness to defend his designs. “If you feel your work is original, you have to stand up for it,” says Browning. “It’s not just about me. Our firm has 14 employees to keep employed, so I’m not going to let others be parasites.”

Braun’s advice for designers is the same he gives his NYSID students: Just keep working. “If your work is good, people will copy it,” he says. “So of course fight them wherever possible, but also stay a step ahead of them. Make the most you can of each design, then keep moving.” 

And then there’s the old ‘imitation is the sincerest form of flattery’ approach, practiced by designer and ceramist Jonathan Adler—no stranger to having his work appropriated. “The only thing worse than being copied,” he says, “is not being copied.”  

Legalese for Laymen
The lingo you need to know.

Intellectual property: An umbrella term for “any product of human intellect” that is protected by law. There are four categories of intellectual property: copyright, patent, trademark and trade secrets.

Patent: This is the strongest protection of creative work—preventing others from making, using or selling the design. But it’s also the most difficult to obtain. For a utility patent, eligible subject matter includes any “new and useful” process, machine, manufactured product or composition of matter (think: chemical compounds). Designers may also be eligible for a design patent, which protects the aesthetics of a design and, unlike a utility patent, is not required to be functional.

Copyright: Gives you the exclusive right to reproduce, distribute, display or license a “tangible medium of expression” (not an idea, procedure or process). Registering it with the U.S. Copyright Office is completely voluntary, but a copyright must be registered if you want to initiate legal proceedings for copyright infringement.

Trademark: Protects distinctive words, phrases, logos and symbols that identify a maker or brand from use by competitors. Shapes, sounds, fragrances and colors may also be trademarked.

Trade secrets: Any information that gives you an advantage over your competitors by remaining a secret. Famous trade secrets include the Google search algorithm and the the McDonald’s Big Mac secret sauce.

This article originally appeared in Spring 2018 issue of Business of Home. Subscribe or become a BOH Insider for more.

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