Silvia Baumgart, the Own-It Programme Coordinator, presented at a Design Trust webinar in March 2012 about copyright and design rights, tips to protect yourself, and what you should do if somebody copies your design.

Here are Silvia’s notes for the webinar.  At the bottom of this (epic!) blog post you also will find some great questions from the people who attended the webinar, plus Silvia’s answers, which really put copyright and design right into context.

(please note these should only be used for personal and educational purposes – not for any commercial use or publication other than the Design Trust website):

What is intellectual property (IP)?

Intellectual property (IP) protects the products, results and rewards of human intellectual and commercial endeavour. From the music we listen to and the books that we read, to the computer software and products we use in our daily lives, most of the world’s creative output and content can be classified as IP.

Although IP is an ‘intangible’ property right, it is an asset and can be compared to owning a house. It can be

• valued (by a specialist accountant)
• sold by assigning IP to somebody else for an agreed sum of money
• given away or donated (e.g. Great Ormond Street Hospital has got the rights to Peter Pan)
• rented (or licensed, to keep within the terminology of IP) either to just one party or more than one party. The owner can grant an exclusive license and cannot live in his/her house anymore (although he/she would still own it), or can reserve the right to keep a room to him/herself just in case the owner wants to rent this to somebody else or use it him/herself (non-exclusive license). A license is for a set period of time, for a certain territory (such as the whole of Europe, or only North America, or worldwide etc.) and can be terminated just as a rental agreement can be terminated.

IP affords to its creator the legal right to stop others using the property without his or her permission and, in some cases, to give a monopoly right to exploit that property commercially to make money.

However, as IP is an intangible property right, it can be difficult to establish legal ownership and the extent of the right in the case of a dispute. While the ownership of houses is normally registered in the land registry, some IP rights such as copyright, design right, trade mark and related rights don’t necessarily require formal registration in order to exist.

Why is it important to keep your design or copyright?

You don’t have to keep it but your IP rights allow you to control your rights, and potentially to make you a lot of money as they can be sold or licensed, especially if you are able to create commercially successful work and license this to a successful retailer or manufacturer.

Both Copyright and Design Rights can make an important contribution to a company’s reputation and brand, which will also enhance the company’s value. It is therefore important to protect your copyright and design rights as you would valuable assets.

As the law can be really complicated (especially if you are working with international companies, work as a freelancer or work in partnership)  make sure that the copyright and design right situation is made crystal clear in a legal contract.

However, if you want to give them away you can do so.

What does copyright protect?

The following categories can be protected by copyright:

• Original works: literary, artistic, dramatic or musical works
• Derivative works: based or derived from pre-existent original work i.e. films, photographs, translations, editions, collages, adaptations etc.
• Others: typographical arrangements, sound recordings, broadcasts, performances

Initially, copyright only applied to the copying of books and was over time extended to include other original works such as paintings, scores of music, sculptures, architecture, photographs, illustrations, maps (irrespective of artistic quality) etc.

Remember: copyright does not protect ideas, concepts or styles!

Derivative works are works that are based on or derived from a pre-existent original work such as a painting based on a photograph, a collage, a musical work based on an existing piece or samples, a screenplay based on a book.

Unless you are the copyright owner of the original work, you will probably need the permission of the copyright owner before creating a derivative work.

For a derivate work to be itself original and therefore acquire new copyright, it must be sufficiently different from the pre-existing original work. In the case of a film or video, the material on which the film/video is based must have been altered substantially as otherwise, the creator would infringe somebody else’s copyright.

Typographical arrangements include for example the layout/cover of a book, presentation, letter, website design etc. The producer of a sound recording may have copyright in his/her sound recording. Performing artists (such as musicians and actors) have copyright in their performances and broadcasters have copyright in their TV and radio programmes.

Note that the above categories are important:

• if you can’t find a category for an item, then copyright will not subsist in it.
• the rules relating to the subsistence, duration, ownership and infringement of the copyright can vary greatly for the different types of work
• if there is more than one type of work in relation to an item, the different copyright may be owned by different people. For example: a film or TV production might need to take account of a large number of copyright owners.

How long does copyright last?

The standard copyright duration for ‘classic’ copyrights (original literary, dramatic, musical and artistic works) is the life of the creator plus 70 years.

If the author is not known (a so-called ‘anonymous’ or ‘pseudonymous’ work), then the duration is 70 years from publication or creation (if unpublished).

Who owns copyright?

In most circumstances, it is the original creator of the work, who will own the copyright. Exceptions to this apply where a work has been created in the course of employment.

If work has been created in the course of employment, usually during working hours and within the usual requirements of the employee as outlined in the job description, it is the employer that owns the copyright, not the employee. Take for example, an English teacher, who writes a successful novel in her spare time. She will still be the author and copyright holder and not the school she works for, even if she teaches English grammar and literature.

This exception does not apply if the work was created by a freelancer (i.e. on commission), unless the contract of commission assigns copyright to the commissioner.

Notes:

Moral rights do not apply where ownership of a work originally vested in an author’s employer. This means that if a work is created in the course of employment – as described above – the author cannot object to derogatory treatment and cannot insist to be named as the author of the work.

What happens to copyright if more than one person contributes to the creation?

When two or more individuals collaborate to create a work, the rights may vest in them jointly; however, shared or joint ownership is a tricky concept in IP law.  To be a joint author, a significant creative contribution as an author has to be made to the production of the work. A joint author has to do more than simply contribute ideas, and has to participate actively in the writing or creation of the work. In addition, each individual’s contribution must be indistinguishable from the work of the other collaborator(s).

Let’s take for example a photographer who takes portraits of famous people. Let’s assume the photographer has employed an assistant, who adjusts the light, helps to arrange the set and suggests position of the sitter.  Somebody might argue that the creative impact of the assistant was at least as big as the impact of the photographer, who just pushed the button.

So, who owns the copyright of the picture and is subsequently named as the author? If the assistant was indeed employed by the photographer, then the photographer is the only copyright holder as the assistant has worked on the photograph in the course of his/her employment. If however, the assistant is a freelancer and commissioned by the photographer to help, it can still be argued that all the assistant did was directed by the photographer, who pressed the button after he/she was satisfied with what s/he saw in the display. The experience of a professional photographer is arguable much greater than the experience of the assistant and unless there is an agreement that the photograph was created by two individuals jointly, it is probably always the photographer, who directs the picture, who owns sole copyright in the picture. However, it is always advisable for the photographer to get his assistant to assign copyright to him/her and waive his/her moral rights in the assignment.

This is probably, while we only see the photographer named as the copyright holder in fashion magazines, architecture magazines etc. while the assistant is hardly mentioned (although assistants are sometimes mentioned as well especially, if they do their work for free to build up their reputation in the industry).

As you can see joint ownership can be a tricky area of law, as issues may also arise as to pre-existing IP, which each party contributes to the project. Disputes frequently arise over whether a collaborator has the right to continue using the other party’s pre-existing IP once the project is complete.

It is therefore advisable for businesses to enter into an agreement before work begins that expressly sets out how the rights in any new work will be owned and can be exploited by each collaborator, and what rights (if any) each party gets over the other’s pre-existing work.

What are Design Rights?

Design law deals with the way things look, and with the shape or appearance of manufactured articles or handicraft items, e.g. fashion design or the case design of a mobile phone.

Design Rights are:

• Appearance of whole product or part of the product, e.g. shape or decoration.
• External only

What is protected with a Design Right?

Design right protects the external shape of the whole or part of a product (3D) or surface pattern (2D), which are generally external features of a product that make it more attractive to consumers and invite them to chose one product over another, despite them having the same functionality.

For example, the pen manufacturer, Mont Blanc, has managed to build a very strong brand and many people would chose one of their pens over others if they had the money to pay for them – they are items of luxury – not least because of the quality of their design.

It is not possible to protect a specific material through design right. As it is only the appearance of the product that is protected, the fact that a product is made of wood is not protectable. But if the fact that the specific texture/colour of the wood is specific to this particular design, it can be protected. Protecting such a design, doesn’t prevent competitors to manufacture similar products in wood if their design looks different and meets the requirements for protection. If they however attempt to imitate the specific appearance of the design using another material, they will be infringing the right of the owner of the design right.

Note that Design Rights (registered and unregistered) do not protect:

• a method or principle of construction;
• the shape/configuration which is required in order to enable the article to be connected to or placed against another article (for example, a plug or screw top of a bottle), or which is dependent on the appearance of another article which it is intended to form an integral part, e.g. a car door, which is dependent on the rest of the car; however, the side mirror of a car could be protected as it is an independent part of the car and an external feature.

Design Right exist because successful shapes and appearances cost money to design and can be worth a great deal to their owner commercially. However, it wouldn’t be fair or practical for one person to monopolise the shape or appearance of an object for an extensive period of time. In consequence the law has developed a difference between copyright and design right to give a range of limited rights to the owners of designs, in terms of both the length of protection and the scope of protection offered. The law attempts to balance the need to protect design owners and the need to ensure design freedom for other designers and manufacturers who may wish to use similar design features on the same, or even on different, types of articles.

Design rights can be registered or unregistered: Designs are protected throughout the EC in two ways:

1) Registered Community* Design: lasts up to a maximum of 25 years; limited to external shapes and appearances.  You can find more info about how to register your design rights and the costs on the IPO website.

2) Unregistered Community* design: a lesser, residual unregistered design right which gives a shorter term of protection (3 years) and applies to the same types of design that can be protected by RCD (Registered Community Design).

Community here refers to the European Community, of which the UK is a member state.

(note: compare the duration of Design Rights to the duration of Copyright, which is 70 years after the death of the creator!)

Be aware that there are many differences in approach between national laws within the EU, despite attempts to harmonise community law in this area with the EC Design Directive. A Community Registered Design and a Community Unregistered Design exist in addition and parallel to national rights. The latter is administered by OHIM in Alicante.

Why use an unregistered design right? And what is it?

The need for an unregistered right has arisen because some industries develop large numbers of designs. For these industries, registering a design is too costly and too slow in comparison to the speed with which they develop their products – many of which have a short shelf-life, for example:

• Textile industry: Although this industry develops large numbers of designs, registering them would be too costly and inefficient. Take for example high-street chains such as TopShop or Mango.
• Fashion industry: Here also production is seasonal and the shelf life of products short (e.g. Passing fashion fads for bags, accessories and so on).

That’s why unregistered design rights are so important. They help companies defend their proprietary rights, even if the right itself is so short as not to warrant the cost involved in protecting it. That’s why fashion companies like TopShop do not tend to register their designs. The market life of their products is too short.

Instead, the unregistered community design system provides them with protection. It only lasts for three years, but this is generally adequate given the short shelf-life of products – and the number of designs that they would need to register.

For example, a textile company, M, wants to register the designs of its new season products, but the products are changing in two weeks.In other words, the products have their highest market value just for a two-week period.

The company could choose to register the designs, but the registration period generally takes two months, at which point the design would be out of circulation.

Is it worth it? No, because, the unregistered design system automatically gives the company three years protection, which is free of charge and long enough for their needs.

The requirements for an unregistered design are the same as for a registered design, whether a national or an EU-wide right (an ‘unregistered Community design’ or UCD).

However, an unregistered design right arises automatically when a design is first made available to the public in the country or European Community.  In other words, it does not require a formal registration.  A UCD and national unregistered design rights exist parallel so if somebody feels that his/her rights are infringed, they can sue based on national and UCD rights at the same time.

Requirements for unregistered design protection:

1. To be able to be protected, the design must be new: it must not have been made public anywhere in the world prior to the date of filing (for registered design applications) or the date of first disclosure to the public (for unregistered design).

There is a 12-month Grace Period for any disclosure made by the designer. So, if your client has exhibited or marketed the pens in the last year, she can still apply for registration without her own disclosure jeopardising its novelty.

It is crucial to note, however, that if a third party has independently created and disclosed a similar design prior to your client’s application date, then this disclosure will prevent registration, even if it was inside the Grace Period.

Another exception to the above requirements is that prior disclosures, which could not have become known before the effective filing date in the European Economic Area (EEA) in the business sector concerned are disregarded. This provision is thought only to exclude obscure disclosures whether by virtue of the extent, location or time of disclosure.

2. The design must have ‘individual character’: While the Mont Blanc pens might differ in appearance from other pens, do they differ enough? This judgement is made through the eyes of an “informed user”, who doesn’t need to be a design expert but someone familiar with the products, usually the end user.

Where does an Unregistered Community Design (UCD) give protection?

As with a registered Community design, an Unregistered Community Design subsists across the entire European Community.  National rights only protect designs within the country of creation; for example, an unregistered design right created in the UK only protects the design within the UK.

How long does an Unregistered Community Design (UCD) last?

The UCD lasts for only three years from the date it arises.

However, the term of protection for unregistered national design rights varies from country to country but usually, is longer. However, it is crucial to seek advice from your national Intellectual Property Office if you want to be able to enforce an unregistered design right beyond the 3-year period awarded by UCD (remember, if your design fulfills the requirements of an UCD it is automatically protected within the EU – national unregistered design rights exist parallel).

An UCD right commences when the design is deemed to have been made available to the public within the European Community. This happens when the design is published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community.

How can I proof ownership of an Unregistered Design Right?

Designers should keep records of their design process (including any initial sketches and proof of sale), just in case they need to enforce their unregistered design rights.

Keep good records, original documentation, prototypes of when the design was first recorded and/or produced. All should be dated and signed by the creator and certified and corroborated by a third party.

Unless the designer has created the design in the course of employment, the designer (that is to say the person who created the design) is the first owner of an Unregistered Community Design.

Where a design is created in the course of employment, the employer will own the right. Unless otherwise stipulated in a contract, ownership of a design created on commission by an independent contractor will stay with the designer, who has been commissioned.

An unregistered Community design may be assigned or licensed in broadly the same way as a registered Community design or copyright. However, the transfer of ownership doesn’t need to be recorded in a register; a written assignment or licensing contract is sufficient.

What if somebody infringes my Unregistered Community Design Right?

Not only provides an UCD a shorter term of protection, the owner of the design also has to prove that:

• the design right exists i.e. that it fulfills all the requirements for an unregistered design right, e.g. being novel and with individual character
• he or she is the rightful owner of the design: it’s therefore crucial to keep records of the development of design (see above)
• direct copying has taken place: The infringing designer may argue that he or she has developed the design independently from the original. This is different from the protection awarded by a Registered Community Design right, which protects the owner even when a design has been created independently. If it is very similar or the same, it is infringing RCD.

As with copyright, a distinction is drawn between primary and secondary infringement:

Primary infringement is doing or authorising anything that is the exclusive right of the design right owner; for example, making articles to a design automatically means copying the design so as to produce articles exactly or substantially the same to the design.

Secondary infringement includes importing into the territory where the right exists for commercial purposes, possessing for commercial purposes or selling, letting for hire, offering or exposing for sale or hire in the course of a business, an article, which is (and which the person doing that act knows, or has reason to believe to be,) an infringing article.

The owner may also prevent unauthorised dealing, e.g. by importation, possession, sale, hire, offer to sell or hire, in infringing articles provided the party who does so has knowledge or reason to believe they are dealing in an infringing article.

Enforcement is usually conducted by bringing an infringement case before a court of law, either in the specific country or within the European Member State in which the infringement takes place. The court can order to stop infringement, deliver or destroy the infringing goods or pay damages to the rightful owner, if there is evidence that business has suffered either through loss of revenue or loss of reputation. Infringement cases are normally dealt with in civil courts, however, where the infringement is severe and involve severe criminal intend, such cases may go through a criminal court.

What are the benefits of registering a design right?

Registered designs are administered by the Office for Harmonization in the Internal Market (Trade Marks and Designs) in the EU, as well as national patent and trademark offices.  In the UK you can register your designs through the IPO or through specialist IP lawyers.

The benefits of a registered design are:

• A registered design may be applied for to provide additional cover over and above any design right or copyright protection that may exist in an unregistered design.
• If registered, a design may enjoy prolonged protection from copying, although this protection would only be available in countries or territories where the application was made. Up to 25 years protection is available for a Registered Community Design.
• Registered designs are monopoly rights which give greater protection. While unregistered design protects the owner only against copying (and not against independent creation of a design), a registered design can be enforced against any design, which is substantially similar or a copy of the registered design even when it was created without knowledge of the registered design.

However, even when your design is registered it may be contested in court and you may need to prove that all requirements have been fulfilled to register the design in the first place. As it is relatively simple to register a design and no detailed examination takes place, registration doesn’t automatically prevent the owner of a registered design from having to prove that the design is actually protectable.

However, registration is a good deterrent for potential infringers and registered designs provide stronger protection than unregistered designs.

 

Summary of Design Rights:

	Registered Community	Unregistered Community	Registered UK	Unregistered UK
What does it protect?	• Appearance of whole or part of a product, which may be shape or decoration. •External only	• Appearance of whole or part of a product, which may be shape or decoration. •External only	• Appearance of whole or part of a product, which may be shape or decoration. •External only	•Shape or configuration •Not surface decoration! •Internal or external
Is protection automatic	No – registration required	Yes	No – registration required	Yes
Duration	25 years from registration	3 years from being made available to public	25 years from registration	15 years from creation – or 10 years from first sale

Questions from the webinar participants:

I am confused, I am a sole trader and design and make small collections of jewellery which I sell in shops and galleries. Is that work then Design Right or Copyright?

You may be protected under copyright (works of artistic craftsmanship) or design right! It depends on the context you create your jewellery in. If you see your work as artistic you may be protected by copyright. If you produce larger quantities it would be design right. The two different rights overlap and it’s sometimes not easy to determine what right applies.

Should I use © on my product labels?

Yes, always, and include your name/year of creation or first publication.

Is there an icon for design right like the © icon for copyright?

There is no sign for design right and as it’s closely associated with copyright you can use it for your design work.

Is surface decoration covered under copyright or design right?

It’s normally covered under design right if it’s created for industrial application for a fashion product for example.

However, an illustration on a T-shirt is still covered under copyright as it’s not a surface pattern… the two rights overlap and it’s therefore advisable to clarify, who owns the right to the work with your commissioner or client.  Please feel free to contact our organisation Own-it for an opinion.

If I were to incorporate a commercially made texture/image into my ceramics, would I be entitled to design rights?

You own design rights in your ceramics but the images you use may be covered either by copyright or design right (see above) and you would need to ask the copyright/design right owner if you want to use the work on your ceramics – unless you create the surface design yourself.

Thinking about an illustration context, what kind of areas of industry are particularly likely to ask for your copyright in their commissions? And what can an illustrator expect in addition to sell their copyright? Is it ever worth it?

Please go to the Association of Illustrators’ website for further information.  Also have a look at the Pro-Action website who represents the interests of professional visual artists. It is intended to help artists protect their copyright and get just rewards for their creativity and hard work.

What should an illustrator do to protect their copyright if they feel that a company is using their work in ways not covered in the original agreement?

You should write a letter to the concerned company asserting your rights and if you are a professional illustrator and illustration is your main income, join the Association of Illustrators (see above).

What do I need to do to get a design right?  Where do I register? Can I do this online? What are the costs?

Unregistered design right is automatic, so you don’t have to do anything.

You can register your design at the Intellectual Property Office website, and their fees are on their website.

If I design a jewellery collection but don’t register it under design right, how could I prove that the design is mine if it gets copied? What kind of records should I keep?  How do you proof the date you created something?

Keep records of your sketches, development work, and also keep emails to people you sent images of your work to. It’s wise to date the works, use © and your name/year of creation, and keep a digital archive (digital files show when they are created and modified).

If I work with a client to create a one off design for them, do I keep the design right?

It depends, whether the work you do is protected by copyright or design right. If it’s a copyright work you are the owner of copyright. If you created it for a commissioner but if it’s a design right, the commissioner owns it, but as it’s not so clear as under EC law and other jurisdictions you may own it. It’s therefore advisable to get a written agreement that clarifies ownership of the design work.

If I create work for an exhibition which subsequently sells, do I retain the copyright? 

Yes, copyright is an intangible right and you own copyright in your work even when you sell the tangible object. The owner of the artwork doesn’t automatically own copyright in the work unless you assign it to them (through a contract).

Is there a standard commission contract example that I can use to maintain the design right / copyright of my jewellery when working on commissions?

There needs to be a term in your contract saying that you own the IP right in the work you have created and the commissioner is not allowed to exploit the right without your permission.

I don’t think we have such a contract on the Own-It website but you could use our enquiry system to discuss this with a lawyer, who would be able to advise you on the appropriate term.

I took my work to be photographed recently. Do I have the copyright of the photographs or the photographer?

Copyright in the photographs is with the photographer. See Own-it’s short film about trade shows, where jeweller Angie Boothroyd and Own-it’s lawyers talk about the importance of good photography and commissioning a photographer The photographer normally assigns his or her copyright to the commissioning client, which needs to be in writing. It is good practice to allow the photographer to use some images to promote him or herself.

I photograph my own jewellery, so is the jewellery covered under design right and the photo images under copyright?

Yes, correct. Your jewellery could be covered under copyright if it is a work of artistic craftsmanship.

Would it infringe copyright to publish a commissioned artwork for self-promotion? for example on my portfolio, website, Facebook

If it’s an artwork you have commissioned and it’s protected by copyright you would need to ask for permission from the artist/designer you have commissioned.  If you created the work then it is your copyright, but the photo is the photographer’s copyright.

In illustration would derivative works also include works created from stock images vectorised in Adobe Illustrator?

It is an infringement to copy an image or a substantial part of an image. The test is not quantitative (so, it’s not sufficient to make just 5 changes you have a new original work) but qualitative. And quantitative so a substantial part can be a very small part as long as it’s the part that somehow defines the original. The court decides case by case and there is no formula.

What happens if you ‘pay hommage’ to another artist by doing a new original and ‘witty take’ on that original piece? My piece is completely original as an ‘idea’ but wouldn’t have been arrived at without the original artist’s piece, as some poster designs have done.

Copyright law in the UK doesn’t provide an exception for ‘parody’ just yet but it’s currently discussed and may be introduced following Prof. Hargreaves report and consultations. So, you would need to ask for permission from the copyright holder if your work clearly reproduces the original even as a witty take on…

I am working with Graphic Design and Illustration students in Russia. Obviously there will be different regulations, but do you know of any general trends in Russian copyright that are different UK and EU?

Sorry, Own-it and most other IP advisers can only advise on UK legislation and are not familiar with IP law in Russia.  Unfortunately, they are not part of the EU so we can’t even advise on the general principles they follow.  Have a look at the World Intellectual Property Office (WIPO) website to find out more about countries outside of the EU, and what treaties they have signed.

 

If you have any intellectual property questions, you can find more information about intellectual property on the following websites, or contact them directly with your questions:

Own-it

Intellectual Property Office

British Library Business & IP Centre

ACID

Creative Barcode

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