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Spot The Difference…. How do you Deal with Copying?

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neon sign copy MGD©In the previous “general introduction to IP” article, we discussed various different intellectual property or “IP” rights. This time, we are examining two of these rights in more detail, the two rights invoked most commonly when encountering instances of copying of products, packaging or promotional materials: Copyright and Design Right. As noted before, these articles are designed as (brief) primers to highlight some particular elements of the subject area.

Subsistence

Copyright will subsist in the tangible expressions of your ideas and creativity. Examples of copyright works are paintings, photographs, sound or film recordings, drawings and written works, such as the scripts appearing on your product packaging or websites. Copyright does not apply to single names or titles.

The main requirement for the subsistence of copyright in a work is originality: the work must not be copied from another third party. However, providing this requirement is met, any tangible or recorded expression of your thoughts and creativity, regardless of artistic or literary merit will attract protection; even a child’s drawing of a stick man can be subject of copyright.

Design rights can be both registered and unregistered and apply to the shape and visual appearance of both three dimensional products, ranging from articles of clothing to bottle openers, and two dimensional designs, including textile patterns and video game characters.

Unregistered design right (at both UK and EU level) applies automatically to designs which are new and which have individual character.  To fulfil these conditions, it is essential that no identical design has been made available to the public previously and that the design produces a different overall impression on the user to any other design made available to the public previously. The degree of freedom of the designer in relation to the product in question is relevant in making the assessment. For example, a designer of wine glasses has a more limited degree of freedom and than a designer of textile patterns in that smaller differences between the new design and those already on the market are sufficient to create a difference ‘overall impression’ on the user.

These requirements pertain equally to registered designs but registration must be sought through the official intellectual property office of the territory of interest.

Whilst a registration provides prima facie evidence of ownership of rights in a design, the reliance on copyright or unregistered design protection necessitates proof of ownership of the rights asserted. Providing the required proof is not always a straightforward task.

Ownership

If you are the author or artist responsible for creating the copyright ‘work’, or the designer of the product in which unregistered design right is claimed, the case should be fairly simple and you will be the owner of the right in question.

However, many business owners do not have the time to produce their own product designs, advertising materials or website copy and choose to delegate the task to their employees or to outsource the work to a third party, such as a design agency.

In these cases, it is important to ensure that all parties are clear as to who is the owner of the intellectual property rights in the works created.

Where designs or copyright works are created by an employee during the course of their employment, the rights subsisting in the designs or works will vest with the employer automatically. However, it is good practice to insert clauses into employment contracts to ensure that there is no doubt or future disagreement regarding intellectual property ownership.

The situation is different where a business has commissioned a third party to produce articles in which design or copyright subsists. In this case, the owner of the unregistered design right or copyright will be the designer and not the commissioner. It is therefore vital to ensure that all contracts between your business and third party designers include clauses which ensure that the copyright and unregistered design rights in the materials or products created are assigned to the business on completion of the project.

Should you wish to enforce your copyright or unregistered design right against third parties, or, indeed, licence the use of the rights to a third party, documentary evidence establishing the ownership of the right in question is helpful. It is therefore important to keep records of the dates of creation of all designs or copyright works of value to the business and to educate all employees to do the same. All assignment documents relating to commissioned articles should be kept safe and detail the dates of creation of the articles as well as the date of the assignment of the rights therein.

Copying

Copyright and unregistered design rights are limited in both their scope and their duration.

In the UK, the longest term of protection available to three dimensional designs (aspects of their shape and configuration) which are not subject of registrations is 15 years from the date of creation. The maximum term of protection for two dimensional designs is 3 years.

This contrasts with registered design rights which can apply for up to 25 years from registration.

Copyright subsists in original works for much longer; generally, for 70 years from the date of the author’s death or, for sound and music recordings, 70 years from the date of first publication.

Both copyright and unregistered design right are limited to the extent that they protect their owners from copying by third parties and not from the independent, innocent creation of a highly similar article. To succeed in asserting these rights against third parties, it must be established that the third party in question has copied. Very often, concrete proof is not available but copying can be presumed, on the balance of probabilities, from evidence demonstrating the availability of the work to the third party in question. To be prepared for this eventuality, it is recommended that businesses retain records of their customers or any visitors to showrooms or exhibitions, as well as trails of orders or invoices.

It is also worth pointing out that a finding of infringement can apply to the use of the whole of a design or copyright work or to part of it. The quality or importance of the part of the material that has been taken or copied is the relevant factor rather than the quantity of the work. Thus, it is not possible for a competitor to avoid infringement by simply making a set number of changes to the design or copyright article.

Best Practice

In summary, the following factors should be taken into account in your business strategy and planning to ensure that you are in the best position to take action against third parties who you believe have copied your designs or copyright works:

  • Maintain records of the creation of designs and copyright works, demonstrating the route to (for example, working drawings, sketch books, drafts) and date of creation;
  • Update employment contracts to include clauses relating to the ownership of intellectual property created during the course of employment;
  • Ensure that all contracts with third party contractors or designers include provision for the assignment of any unregistered design right or copyright subsisting in the article or work created;
  • Keep records of all assignments of copyright and design rights to and from the business;
  • Keep logs of all visitors to your offices, show rooms and exhibitions;
  • Keep records of all orders or invoices relating to sales of articles and products attracting copyright or design protection;
  • Put third parties on notice of the existence of copyright in any of your copyright works (e.g. your website) by using the © symbol in conjunction with the year of creation of the work and your full business name.

Finally, remind those in your business not copy or use third party designs, pictures, written materials, jingles (or other musical works), recordings or graphical layouts without authorisation to avoid being on the receiving end of a threat of infringement yourself!

Joanna Lucas Munce 29 April 2015

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