by Richard Stim

When Nature Meets Art
Do you own the design used in your work?

n 1995, Lisa Graves sued Pottery Barn, claiming that the company had stolen her copyrighted design for bird nest napkin rings. Pottery Barn’s lawyer denied the company’s made-in-India napkin rings were copies. He also argued that Graves’ work was not entitled to copyright, claiming her design was based on real-life bird nests. After all, he contended, no one can claim legal rights to something created in nature.

Exact copies of nature not protected

As Lisa’s attorney, I contacted ornithologist Kimball Garrett at the Natural History Museum of Los Angeles County. Garrett examined Lisa’s napkin ring and stated that the design was not similar to any existing bird nest, and that without a bottom, the design could never function as a nest anyway. In other words, Lisa had created something artistic — not something copied from nature. Soon after, Pottery Barn settled with Lisa Graves and stopped selling copies of her napkin ring.

But what if Lisa had copied her bird nest from the natural world? What if it was an exact replica of a bird’s nest? In that case it would have been more difficult to stop copiers because copyright law doesn’t allow anyone to have a monopoly on something that occurs in nature.

For example, Vickery Design, a candle manufacturer, sold candles shaped like corn. In 1999, Vickery tried to stop another company from making corn-shaped candles. The judge ruled that that Vickery’s candle, because it accurately reflected the way corn occurred in nature, was not copyrightable.

The basis for this rule is that the birds, bees, flowers, etc., are in the public domain. You can’t copyright the spotted pattern of a leopard; a taxidermist can’t copyright a stuffed leopard; and a Hollywood model maker couldn’t protect a synthetic head that perfectly replicates a leopard’s.

Modifications to nature must be obvious

Unless a craft artist can demonstrate some trivial variation on what occurs naturally, for example, a corn candle in which individual kernels were artistically modified, you can’t stop someone from using or copying nature under copyright.

For many craft artists who borrow from nature, this isn’t an issue since transformations and variations on nature occur inherently in the creative process. In fact, these artists might argue that their goal is to transform or process nature.

The more the work replicates nature, the more difficult it is to protect (even if you register it with the Copyright Office). For example, in 1987, Peter Rachel, a maker of synthetic animal heads, could not stop Banana Republic from using similar but not identical animal heads in their retail stores. On the other hand, the makers of plush animals that combine fanciful and representational elements of animals have consistently stopped infringers.

In a 1993 case, for example, the company Wildlife Express created and sold duffel bags that had heads and tails resembling bears, pandas, ducks and elephants. The company sued to stop Carol Wright Sales from selling similar duffel bags. The court ruled for Wildlife because the animal heads and tails contained imaginative artistic expressions and were not lifelike representations.

Design patents provide broader protection

Keep in mind that some works that can’t be protected under copyright might still be “protectable” under design patent law. In general, design patents are more expensive and time consuming to acquire but they provide a broader scope of protection for craft art. (See Can’t Prove a Copycat Copied? A Design Patent Could Stop Them Anyway, The Crafts Report, July 2001).

Design patents have proven friendly to replications of nature. In one of the earliest reported cases, Wood v. Dolby (1881), a jeweler was awarded monetary damages when a competitor copied his patented design featuring a bird, a twig and diamonds.

In 1997, Alan Philipson and his son, Andre, acquired a design patent for a decorative bead shaped like a woman’s breasts. The Philipsons sold the patent to a New Orleans company, Superior Merchandise, and the design quickly became the best-selling bead in the company’s line — especially popular during Mardi Gras when celebrants on floats throw thousands of beads to parade watchers.

Superior later sued a competitor, M.G.I. Wholesale, who had begun selling a similar bead. In defense, M.G.I. argued that the USPTO made a mistake granting the design patent to the Philipsons arguing that nature — in this case, the human anatomy — can’t be appropriated by one person.

The judge didn’t buy M.G.I.’s argument. The Philipsons were not claiming rights in the human anatomy, said the judge, they were only claiming rights for their anatomical design on beads. There was no evidence of a previous bead with a similar design and if it was obvious, the judge asked, why was M.G.I. copying the Philipsons’ design? The judge upheld the patent and declared M.G.I. an infringer.

File design patents within year of first sale

In summary, if you’re concerned about stopping others under copyright, don’t make exact replications of naturally occurring flora and fauna. If you want to create works that replicate nature and you create functional crafts, consider filing for a design patent. To acquire a design patent, your design must be a new ornamentation for a functional object — for example a new design for a candle or a jewelry box. You must file your design patent application with the U.S. Patent and Trademark Office within a year of your first sale or public disclosure. If you’re in doubt, contact an attorney specializing in intellectual property law.

Finally, be aware that copyright and design patent law protect your designs and expressions, not your ideas. For example, if you created a fanciful bee pin, you could stop others from making copies of the pin, but you could never stop others from using the idea of a pin in the shape of a bee or the idea of a jewel encrusted bee.

FYI, my former client Lisa Graves, designer of the Bird’s Nest napkin ring, has forsaken art for nature. She’s sold her crafts business and works full time as a landscape designer.