Is It Okay to Clone?
Read the Disclaimer

There are 3 basic principles involved when we consider cloning a pedal that some other person has designed and produced:

  • Legality: as authorized or permitted by law
  • Ethics: of or dealing with the principle of right or good conduct governing a group
  • Morality: acting in accordance with the standards of good behavior arising from conscience
For the purposes of this discussion we will deal with legalities only and set aside ethics and morals. As a starting point, let's have a brief description of the types of intellectual properties that may be involved when you intend to clone a commercially available circuit.

Patents

A patent is a property right issued to the inventor by the Patent and Trademark Office for the right to exclude others from making, using, duplicating or selling an invention.

A utility patent protects the process of making, using, and selling of a specific product or device, and is the type of patent most commonly considered when discussing patents. Design patents are used to protect the ornamental design of a device - this covers the appearance of the device only and not its functioning or working design.

A patent cannot be obtained upon a mere idea or suggestion. A patent is granted on a new device, manufacture, etc., and not upon the idea or suggestion of the new device. A complete description of the actual device or other subject matter for which a patent is sought is required.

There are very few current patents on the circuits used in effects boxes. Most of the popular circuit designs are designed by putting together common circuit fragments from electronics texts. The most commonly cloned circuits such as the Fuzzface and TS-808 are not patented nor have they ever been. The patent number covering a device must be marked on it or damages for infringement will not be allowed. Note that just because there is no patent number on a device doesn't mean it isn't covered, but it does mean that if there is a valid patent the only remedy the patent holder can obtain is to prevent you from continuing to copy it but no monetary damages will be awarded (unless you persist copying after being notified).

The U.S. Patent Office is very liberal in granting patents these days, and has awarded patents for some very questionable items. For example, any patent that makes a claim based on merely providing a switch to go between two ciruits is probably not valid because it is "obvious" to a hypothetical "person of ordinary skill" in the relevant art. Obvious solutions or circuits are not patentable, though several have been granted.

The Mesa-Boogie patent to switch between solidstate and tube rectifiers is a classic example of a circuit that is plainly obvious and of questionable validity. I was involved (as a consultant) in a patent dispute similar to this where a patent was issued for an obvious product use, and we filed a claim against the patent holder and subsequently had the patent invalidated on appeal. Although patents are sometimes granted for obvious applications it does not mean they will hold up under closer examination by experts in the field if they chose to challenge the patent.

Patent Pending is a term that is used to indicate that a patent has been applied for with the Patent Office but has not yet been granted. It is a violation of the law to make this claim without having actually filed for patent protection.

Bottom line: if there is no patent number plainly shown on the product, it probably is not covered but you should do a patent search just to be sure.

Trademark

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

A trademark is used to identify the source of a product (or service).

This is a fairly easy one to avoid infringing. The name of the original effect and the name of the manufacturer should not be used on your clone or your marketing materials. Period.

Fair Use doctrine says that a registered trademark can be used by someone other than the owner for certain limited purposes; criticism and commentary, news reporting, research or technical works, non-profit educational use, or parody. Fair use is an area that can lead to trouble especially when motivated by commercial gain. It is best to stay away attempting fair use of a trademark without the advice of an attorney that specializes in intellectual property law.

Another somewhat nebulous area that can lead to trouble is the concept of "dilution" of the trademark, which means the lessening of the capacity for a customer to identify and distinguish goods, regardless of whether there is competition between the owner of a trademark and the other goods -or- the likelihood of confusion, mistake, or deception with the registered mark verses the other goods. This will be more of a problem if the trademark is quite famous and well known. As an example, if I named a pedal "The Playboy Fuzzbox", I probably would be getting a letter from Mr. Hefner's attorney claiming that I was infringing his trademark through dilution (though it's not a bad name on second thought...)

Trademarks cannot directly describe the characteristics of goods or services. For example, you cannot file a trademark for "Fuzz Tone" because that describes what the circuit does, is widely used and fairly generic. I could file a trademark for "AMZ Fuzz Tone" and it would be valid but Roland could file a trademark for "BOSS Fuzz Tone" and it would also be acceptable.

In the U.S., just because a trademark is not officially registered does not mean that it is not guaranteed some protection. The terms "ZVex" and "Fuzz Factory" are not registered with the USPTO but that does not mean that they are not protected by either state or Federal laws governing first use of the trademark in commerce. Another example of a current item is the term "Beano" which is being used on treble boosters from two different manufacturers (both Rangemaster derivatives), neither of whom has a registered claim on the mark for effects use. The pedal maker who first used the term (and could prove it) would likely prevail even if the second user filed a registration for "Beano".

Bottom line: Don't use any trademarked company names or effect names in connection with your clone.

Copyright

Copyright is a form of protection provided to the authors of original works of authorship including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The owner of copyright has the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the work, to perform the copyrighted work publicly, or to display the work publicly.

A "copyright" is the exclusive right to copy. Copyrights grant an artist control over how his work can be exploited. A copyrighted work can be a literary work, musical work, dramatic work, pantomime, choreographic work, pictorial work, graphic work, sculptural work, motion picture, audiovisual work, sound recording, architectural work, mask works fixed in semiconductor chip products, or a computer program. A circuit schematic is a graphic work.

Facts, ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries cannot themselves be copyrighted.

Since we are discussing cloning of effect boxes in this article, I'll limit the discussion of copyrights to that area. A schematic drawing can be copyrighted... the copyright then protects the drawing (schematic) from other people displaying, selling, distributing, copying or making derivatives of it without your permission. It provides no protection whatsoever for the circuit depicted therein - anyone can take the schematic, build a box from it and sell it without violating the copyright on the schematic.

Posting a schematic drawing that someone else made on your web site without their permission is infringement and an illegal act. Scanning a copyrighted schematic and using it in any manner is infringement. Even re-drawing the schematic to use on your web site is an infringement if it significantly resembles the original! (so says my IP lawyer)

If you alter a schematic drawing that you got from another person's web site to show your mods to the circuit, that is a copyright violation, even if you leave their copyright notice intact. Taking off their copyright, or adding yours on to a modified drawing is not cool, so don't do it... besides, it is illegal without the original artist's permission.

One thing to watch for is that a pc board layout may be copyrighted. If you clone a pedal and duplicate the pc board exactly, you may have violated the copyright on the board design even though there is no patent on the circuit design. Make your own pcb layouts if you decide to clone.

Let's look at a different example of a derivative work. You go to the drugstore and buy a nice postcard that is copyrighted by an artist, and then cut up the postcard and glue the pieces to the front of your pedal as decoration. This is a derivative work and a copyright infringement since you have used someone else's work and affixed it permanently to your item. Contrast that to merely putting the postcard in a frame and hanging it on the wall of your house, which is not derivative. (United States Court of Appeals, Seventh Circuit Sept. 18, 1997)

Copyright notices are not required! Everything is copyrighted! (or so you should assume) Once you have created the computer file, drawn the schematic, scribbled the design on paper or otherwise fixed the design (art) in some reproducible medium, it is automatically copyrighted and protected.

More information is available on the Copyright Information page.

Trade Secret

A trade secret is a business information, ideas or processes that are held closely confidential by the owner of the information. Typically, employment contracts and confidentially or non-disclosure agreements are used to protect trade secrets. It is protected only as long as the company can prevent disclosure of the information and once it has been revealed, it is no longer considered to be a trade secret.

A device that can be reverse engineered is not protected as a trade secret. The trade secret that is discovered independently without using illegal means or violating agreements or state laws may be used in commerce. For example, it is not a violation of trade secret law to analyze (or "reverse engineer") any lawfully obtained product and determine its trade secret. Even if there is goop on the circuit board covering part of the components, there is no protection since in the process of reverse engineering the circuit, the goop can be easily removed.

Summary

Patents protect the circuit designs - copyrights on schematics do not. If there is no patent it is okay to clone, but do not use the name or trademarks of the original on your pedal. If you mention the original pedal name or company as a means of explaining that your pedal is a clone or based on its design, it would be good to include a disclaimer stating that you did not manufacture the original so that it cannot be claimed that you are trying to confuse the consumer or steal their business.

This article has not touched on the ethical implications of cloning. I've looked in lots of boutique boxes and many builders are borrowing ideas or even stealing designs outright. It happens... this is where the ethics and morals come into play, but it is up to you and your conscience.

Disclaimer: The author of this article is not an attorney, and this article is not legal advice. You should consult an attorney if you have legal questions before you start selling your projects. This article is based on United States law and the laws of your country may be different.


Copr. 2003-2004   Jack Orman
All Rights Reserved

This page last modified on Sunday, 14-May-2006 06:24:55 PDT

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