If I design for a customer a one of a kind honey onyx stone mantel, can a competitor use my drawings to duplicate?

You own the copyright in the design you created, and your customer bought the fireplace mantel and can do whatever they want with the mantel, but your fabricator/competitor doesn't have the right to use your design to make a "knock off" mantel.

If the customer paid you for the mantel you made, I don't think you have any damages from this misuse of your design, since you didn't lose a sale to this competitor. If you're concerned that this competitor will continue to misuse your design by making the same mantel for other customers, you may want to assert your exclusive rights to this design.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

The below does not constitute legal advice, does not form an attorney-client relationship, and should not be relied upon to take or refrain from taking any action.

Query: If I design for a customer a one of a kind honey onyx stone mantel, can a competitor use my drawings to duplicate?
Answer: Yes, if the design of the mantel does not qualify for copyright protection. No, if copyright attaches to the mantel design.

Unless your mantel designs are “signature” designs recognized in the fireplace marketplace as being unique to your business, the only legal protection that could attach to your designs is under copyright law (a design patent being highly unlikely). Assuming copyright does NOT attach to your mantel designs, I don’t think that even general unfair competition law could be used to stop your competitor from using your mantel design drawings.

As for copyright protection, I think it very likely that copyright does NOT attach to your “one of a kind honey onyx stone mantel.” The issue is whether the design of the mantel is protectable — it is irrelevant what material is used to make the mantel, or what color that material is, when considering whether the design is protectable under copyright law.

There are at least two barriers to copyright protection for mantel designs: the rule that functional aspects of a three dimensional work are not copyrightable and the “merger” rule which states that if there is only a small, finite number of ways to express an idea (such as the idea behind each of the mantel’s various elements) then those ideas merge with their expression (in the physical form of the mantel) and are not copyrightable. A third barrier that may apply is the rule that copyright attaches only to original creations (original to the particular creator) — but because there are many, many mantel designs out there if you claim copyright to your allegedly “one of a kind” mantel design it may be met with a claim that it is not so original after all. See e.g., http://tr.im/peQ1

In short, stripped of their ornamental features, most (if not all) elements of mantels are inherently functional (and so not protectable under copyright law) and by necessity include features that are common to all mantels (and therefore also not protectable).

As for your mantel’s potentially protectable ornamental features it sounds like they consist of the “pattern in the stone.” The question is whether copyright attaches to the visual appearance of just that pattern (apart from the mantel as a whole).

As in furniture and house design cases, this raises the issue of what to evaluate: the work as a whole (the work as a “compilation” such as the whole mantel or an entire piece of furniture of entire house design) or just portions of the work at issue (the work’s individual “elements” such as your pattern or nonfunctional furniture add-ons or particular configurations of a house window for example). Copyright law does not mandate either analysis. In your case, it makes the most sense to me to evaluate your mantel design as a whole — the rationale being that what motivates the mantel buyer is the need for a mantel, not the need for an ornamental rock pattern around a fireplace.

Your mantel design, therefore, is likely not protectable under copyright law. Assuming that’s true, my answer is that your competitor may freely reproduce your design drawings for the mantel and install identical mantels elsewhere.

HOWEVER, this is simply an off-the-cuff analysis without the benefit of many facts that may dramatically change my conclusion. If stopping your competitor is important, then spend some time with a copyright attorney so he or she can provide you with a meaningful and useful analysis.

Whether or not you have any legal rights in this circumstance, I hope this experience will prompt you to change your contract with clients and to require a fee for the design that is separate from the fee for fabrication and installation.