Patricia Jones, a partner at Hammonds, an ACID Accredited law firm, explains the main intellectual property rights relevant to the Hotel Design industry and the key issues it faces. Design is a USP for designers and hoteliers and when using the word “design” we must automatically think about IP rights. These rights are not just relevant to the designers but also suppliers and buyers. The key IP issues facing the industry are extensive:
• Reuse of plans without payment or permission;
• Copying of prototype rooms/designs at a much cheaper cost;
• Abuse of confidential information;
• Requests to make “something similar to this”;
• Common “contract” excuses: ‘we like your design, but it’s too expensive / can’t be delivered on time’;
• Designs being re – utilised without permission; and
• Altering designs.
So what can be done to protect your position?
There are 2 broad categories of IP right – unregistered and registered. The former arises automatically, with the latter requiring a positive step of registration. Within those categories the rights pertinent to the Hotel Design industry are Copyright; EC Unregistered Design Right; UK and EC Registered Designs; Passing Off and Confidential Information.
Copyright protects “works” recorded in any form, be it on paper, computer memory (or other media), or in a model (or full-scale prototype) of a product. The right arises automatically with no need to register anything. Key copyright works for the Hotel Design industry include:
• “artistic works” – including graphic works (e.g. plans, diagrams, designs (and design documents)) and photographs (used in the design process, in catalogues or on products) and could cover items such as carpets, furniture, soft furnishings (including the weave in fabrics), fixtures and fittings (and plans for the same).
• “literary works” – again, not “high literature”, but virtually any written information more than a few words long, including data, tables, compilations of information.
Copyright lasts a long time – 70 years after the death of the author, or 25 years where a design is exploited commercially. However, copyright only gives a right to stop others copying from you. Identical works created independently or copied from another will not infringe. Although in practice this is highly unlikely to happen, the copyright owner must bear in mind that it is he who must prove infringement every time!
EC Unregistered Design Right (“EC UDR”)
An EC UDR acts as a “back-up” to copyright and is available for designs created after March 2002. Protectable designs are defined widely, for example, the “appearance” of products, including their shape, line, contour, colour, texture, materials and surface decoration/design (like copyright). The right arises automatically without registration, provided the designs are new (i.e. materially different from prior designs) and have “individual character” (i.e. produce a different overall impression on the user to that produced by prior designs). The advantage of an EC UDR is that it covers the whole of the EC, but the down side is it lasts only 3 years from the date the design is first made public in the EC.
UK and EC Registered Designs (“RDs”)
UK and EC registered design regimes “sit on top of”, and overlap, copyright and EC UDR. These rights are available for the same “designs” as qualify for EC UDR provided the design is new and has individual character. The key point is that registered designs are infringed by “use” (applying to or incorporating in products) and there is no need to prove copying! As soon as another enters your monopoly by “using what you use”, the infringement occurs, which gives you a massive advantage in enforcement.
This is very much a “back up” to the other rights. It prevents the goodwill attaching to a business (which brings in its custom!) being damaged by misrepresentations. Typical damaging “misrepresentations” include the use of similar trade names, furniture designs, furniture coverings, “get up”, “trade dress” or marketing styles which (1) go to the origin of goods or services – for example, customers confused as to whose products or services they are buying; (2) associate some attribute with goods/services that damages the goodwill in them – for example, that they are the same as another’s (inferior) products/services; (3) impute that another’s goods/services are in some way authorised.
Confidential information is protectable provided it is kept confidential and not put into the “public domain”. Examples include manufacturing processes, uses, customer/client lists etc. However it is important to ascertain how confidential information is documented and who has access to it and knows it. Key methods of protecting confidential information are confidentiality agreements with all trading counterparties and terms of employment / engagement / commission contracts.
How to tackle the key issues
Now that we are armed with the IP knowledge, how can we tackle the key issues raised earlier?
1. Reuse of plans without payment or permission
• Be clear who owns the copyright
2. Copying of prototype rooms/designs at a much cheaper cost
• Copyright / design right ownership
• Register designs
3. Abuse of confidential information
• Confidentiality agreement
• At least agree disclosure is in confidence and confirm in writing
4. Requests to make “something similar to this”
• Make design buyers aware of the IP issues
5. Common “contract” excuses : ‘we like your design, but it’s too expensive / can’t be delivered on time’
• Register your design
• Have an upfront discussion on cost
6. Designs being re-utilised without permission
• A licence agreement upfront makes clients aware of the use they can make of designs
• Consider registering a design
7. Altering use of designs
• Think infringement!
8. Use of copyright symbol etc – tell the world about your IP!
• Always make clear on your work that the IP rights in it are owned by you
• If designs are registered, make this clear on catalogues and in samples etc
To discuss any particular concerns about any of the points raised, please contact Patricia at firstname.lastname@example.org.
1. Create a design audit trail
2. Sign and date all design work
3. Record your ideas and designs
4. Register your rights
5. Record all third party design involvement
6. Record design discussions
7. Confirm design discussions in writing
8. Insist on signed agreements
9. Confirm your IP rights ownership
10. If your products are not accepted, following an offer or bid, request that samples and design proposals are returned
1. DON’T use copies of someone’s design
2. DON’T instruct someone else to copy designs
3. DO use reputable suppliers, ask for indemnities and check design origin
4. DON’T try to skirt around existing laws
5. DO produce original designs, and educate buyers on existing laws
6. DO commission designs, DON’T copy
7. DON’T defend legal cases just for the sake of it
8. DON’T argue that other designers can’t afford to sue
9. DO sign the A©ID specifier code
10. DO be different, be original. …commission it, don’t copy it!