BRINGING DESIGN RIGHT INTO LINE WITH COPYRIGHT INFRINGEMENT

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The Alliance Against IP Theft puts ACID’s lobbying issues in main strategy for 2011 onwards

  • Design right to have parity with copyright
  • Increase in exemplary damages for IP infringement

Scope of Protection

•    Copyright is a property right subsisting inter alia in “artistic works” –see Section 1(1) (a) CDPA.
•    Design right is a property right subsisting in original designs (S.213 (1) CDPA).
•    So copyright and design rights are exactly the same type of legal right
•    The copyright protection of artistic works is usually restricted to 2 dimensional works but it does also protect 3 dimensional works. Section 4 CDPA states that artistic works means
(a)-a graphic work (2D), photograph (2D), sculpture (3D) or collage (2D or 3D) irrespective of artistic quality
(b) a work of architecture being a building (3D) or model for a building (3D)
(c) a work of artistic craftsmanship (3D)
•    Graphic work is further defined to include any painting, drawing, diagram, map, chart or plan (2D)
•    Sculpture is defined to include a cast or model made for purposes of sculpture (3D)
•    The case law on works of artistic craftsmanship (unsurprisingly) requires a number of criteria to be met before a work will be considered as one of artistic craftsmanship and mass produced articles will not qualify.
•    Design Right only subsists in 3D. The word “design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article (S. 213 (2) CDPA).
•    Some 3D objects are therefore protected by both artistic work copyright protection and design right so long as they can be classified either as sculptures or as works of artistic craftsmanship but most 3D objects will be protected by design right alone.

Offences

•    Copyright infringement is in certain circumstances a criminal offence (see Ss 107-110 CDPA, S.198 CDPA. Trade mark infringement is also a criminal offence S. 92 TMA). These crimes are punishable by up to ten years imprisonment.
•    Infringement of design right is not a criminal offence and can be dealt with by way of civil proceedings only.
•    This gives rise to anomalies and inequality of treatment.
•    For example 2D design drawings are protected by copyright as artistic works. If these drawings are copied or a 3D object is made from the design drawing in circumstances where the person making the object knows or has reason to believe that he is making an infringing copy of a copyright work a criminal offence is committed.  But if that same person takes the 3D object and copies that rather than the design drawing then unless the 3D object qualifies for copyright protection as either a sculpture or as a work of artistic craftsmanship no criminal offence will be committed.
•    In the first case an offence punishable by ten years imprisonment is committed and the infringer gets a criminal record. If the infringer is a company S.110 CDPA confers criminal liability on directors, managers, secretary and other similar officers.  Police and Trading Standards can be deployed to disrupt the business of the suspected criminal and to arrest and / or search premises. The suspect can be interviewed under caution.
•    In the second case (on almost identical facts and certainly with no lesser harm caused to the victim) there is no criminal offence committed, neither the Police nor Trading Standards will be interested and disclosure of information and search of premises can only be obtained through expensive civil litigation remedies  . This is unfair.
•    Given that in nearly all cases the infringer will copy from the 3D design not from the 2D design document, and that this is perhaps a more serious problem for the design right owner, it is clear that weaker legal protection is currently provided for  more serious infringing behaviour .
Why the inequality of protection?

•    There is no obvious reason for the disparity of protection. This may have been overlooked during the frenzied last minute lobbying and amendments made to the CDPA in 1988 as it was passing through Parliament. Design right protection was a relatively late innovation in 1988 and at the time it was probably felt that it was a step too far to extend to design right the new improved protection introduced for copyright in 1988. Certainly no rational basis for the inequality has been advanced by Government.

Solution

•    The legal solution is to introduce into the CDPA two new Sections to mirror S.107(1) and 110 CDPA. The wording would be pretty much identical to Sections 107(1) and 110 and would be designed to criminalise the infringement of the design right subsisting in 3D designs. This can be done very simply by replacing the word “copyright” every time it appears in Sections 107(1) and 110 with the words “design right” and the words “copyright work” with the word “design.”  It would then be necessary to make consequential amendments to mirror Sections 107 (4), 107 (5) 107A, 108 and 109 CDPA.
•    It is necessary to specifically spell out what is required. Simply to point out the inconsistent treatment might lead to attempts to water down the protection available to copyright owners of artistic works rather than increase the protection for design right proprietors.

Nick Kounoupias
Legal Counsel – ACID (Anti Copying in Design) LOBBY
Partner, DMH Stallard

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