Following a successful legal challenge by Anti Copying in Design members Booth Design, a German company, Ovibell have agreed that they will no longer sell the lookalike Booth Design chalk boards and also agreed to pay £7500 in compensation and costs.  Ovibell had supplied the chalkboards to ALDI who have also confirmed that they no longer intend to sell these products in the future. 

David and Ann Booth trade as Booth Design and their highly successful business revolves around the creation, design and manufacture of a range of chalkboards and giftware primarily for use in kitchens. They supply their chalkboards in the UK but also into Germany through a distribution agreement with a German Company. They were shocked to discover via their German distributor that ALDI were offering for sale a number of chalkboards in Germany. Some of these were identical to the Booth Design boards and others incorporated various elements of the boards but which constituted the taking of a substantial part of the copyright works. Various pieces of artwork are applied to the Booth Design chalkboards which individually and then in combination together, constitute an original artistic copyright work.  

Niall Head Rapson of ACID Accredited law firm, McDaniel & Co said, “Booth Design were entitled to enforce the copyright in the chalkboards in Germany by virtue of the Berne Convention of which most countries in the world are signatories. This is good news because it provides for reciprocal copyright protection and minimum standards between signatory states, so for example a painting created in France would be entitled to be protected by copyright in the UK if someone were producing copies in the UK”.  

David Booth of Booth Design added, “I hope that this settlement will send a clear message out to our competitors that we intend to fiercely guard the intellectual property in the products we design and create, after all, originality is the lifeblood of our company”.

The French Tribunal de Commerce has ruled that eBay must pay £31 million pounds to luxury goods maker Louis Vuitton Moet Hennessy (LVMH) for failing to block sales of counterfeit LVMH products.

eBay has also been ordered to block sales of genuine LVMH perfumes under the brands Christian Dior, Kenzo, Guerlain and Givenchy and these brands alone were awarded £2.5m. This ruling follows another order from a French court to pay 20,000 euros to Hermes for offering counterfeit bags for sale.

eBay has stated that they will appeal the ruling and a spokesperson claimed that LVMH were attempting to “protect uncompetitive commercial practices at the expense of consumer choice and the livelihood of law-abiding sellers that eBay empowers every day.” However, they also stated that they were investing over $20 million a year to tackle counterfeiting. LVMH welcomed the ruling as a way to protect brands from “parasitical practices”

ACID has previously had feedback from its members concerning copied products being offered for sale through eBay and welcomes the award to LVMH. Both eBay and YouTube claim protection from the Digital Millennium Copyright Act, which protects companies from claims of IP theft as long as they identify fake items and remove them from the site. ACID applauds these major luxury brands for taking action against the increasing problem of counterfeiting and this new ruling would appear to suggest that internet companies need to be far more proactive in monitoring for illegal activity and counterfeit products.

To read the full press release from LVMH click here

ACID is holding an interactive seminar in a joint initiative with ACID Trade Association Partner the British Contract Furnishing Association and DMH Stallard, an ACID Accredited Law firm, at the Design Council on Thursday 9th October 2008. 

Focusing on intellectual property issues within the contract interiors sector, discover how to capitalise on your intellectual property assets and maximise the earning potential of your designs, with additional advice on design protection and interactive case studies.

Copying is rife within the creative industries and none more so than the contract interiors industry, so it is important to understand which intellectual property rights offer you protection and learn what to do if you are copied and how to maximise your commercial opportunities.

If you would like to reserve places for this event, download the booking form by clicking on the link below and return it to Jane Stephenson at ACID via fax, post or e-mail.

IP SEMINAR BOOKING FORM

Much has been made in the press recently about theft of personal data but confidential data stolen from your business can also cause untold damage. Most employees are not unscrupulous; but a small minority are and will not hesitate to steal confidential information belonging to your business and use it for their own benefit, regardless of the damage it may cause.

Sarah Birkbeck of ACID Accredited law firm DMH Stallard recently worked on a case which highlighted just how much damage this type of action could potentially have done, had the employer not acted swiftly to put a stop to it.

Case History

John had worked for a successful recruitment agency for several years but had no written contract of employment, they had just never got around to formalising the paperwork. The agency’s biggest asset was its database costing thousands to which John had access. John had become unhappy and, unbeknown to his bosses, plotted to set up in competition, using confidential information and copying a large part of the database giving him the unfair advantage of the agency’s assets to damage the agency.

John didn’t realise that even though he had no formal contract he was subject to implied duties. (e.g. to act at all times towards the employer with good faith and fidelity and implied duties of confidentiality). Employers can rely on the law to protect confidential information if obtained during the course of employment. It must not be in the public domain but may be protected if it could be of advantage to a trade rival.

Following John’s resignation, a routine check of his computer post-termination revealed system and data irregularities. The agency acted quickly. John’s new business was traced and forensic experts were drafted in and provided persuasive evidence. A powerful court order was obtained resulting in the discovery of memory sticks containing the agency’s database at John’s new premises. In light of the overwhelming case against him, the matter settled shortly thereafter and John’s new business was held to account for profits as a result of the misuse of the confidential information. John was forbidden from using the unlawfully obtained data, at risk of being sent to prison for breaching the court order.

Confidential information is an extremely important business asset . Investing in its protection should be “a no-brainer”!

A few things to remember:

Ensure there are properly drafted employment or service contracts which address the issue of ownership of intellectual property rights and confidential information, the boundaries of use and the return of information/documentation/property upon termination.

Confirm the position with regards to ownership of IP rights, which is that (with some specific exceptions) in the absence of any agreement to the contrary, works created during the course of employment belong to the employer. Spelling out what you expect the position to be focuses the employees’ mind and should make it easier to pursue infringement/breach.

Ensure that all employees value and will protect your intellectual property rights.

Make it clear that access to confidential information is a privilege at an appropriately senior level with sufficient safeguards.

Do not leave confidential documents lying around or fail to pass-word protect them.

Ensure your policy includes proper exit management, and that all property belonging to the business whether in soft or hard copy is returned and signed for prior to the employee leaving. Then check (but do not potentially corrupt by trying to investigate further) the contents of laptops, blackberries, mobile phones to confirm that all is as it should be!

If you uncover anything unusual seek expert advice immediately. Tackling potential damage sooner gives the legal team a better chance of recovery.

And finally on a more positive note data stolen through electronic means by an employee is likely to be traced. Partly this is because the methods used are often surprisingly unsophisticated emails sent to a hotmail account with client lists attached are not unusual. But even for the more “sophisticated” offenders – covering tracks is difficult when experts have access to the sort of technology used by police to investigate the most serious sorts of crimes like internet child pornography .

Sarah Birkbeck of DMH Stallard

www.dmhstallard.com

ACID is delighted to announce it has joined the Alliance Against IP theft – a national body set up in 1998, the Alliance Against Intellectual Property (IP) Theft is a UK-based coalition of trade associations and enforcement organisations with an interest in ensuring intellectual property rights receive the protection they need and deserve.

With a combined turnover of over £250 billion, their members include representatives of the film/TV and video, music, games, business software industries, branded manufactured goods, publishers, retailers and designers.The Alliance is concerned with ensuring intellectual property rights are valued in the UK, and that a robust, efficient legislative and regulatory regime exists which enables these rights to be properly protected. www.allianceagainstiptheft.co.uk

ACID lobby shares many of the same objectives as the Alliance Against IP Theft and looks forward to contributing to achieving these goals which include the following:

• There is still no effective system of damages in the UK able to act a true deterrent to IP infringement;
• The government continues to delay in addressing the problem of car boot sales awash with fake goods;
• IP crime does not feature high enough on priorities of local authorities meaning trading standards do not always receive the funding they need;
• Companies still struggle in receiving redress when victims of copycat packaging.

ACID’s lobbying objectives also include the introduction of a new law of unlawful imitation and addressing the disparity of design right and copyright owners. Continued pressure both through the Alliance and through our own efforts we will prioritise on the problem of improved damages to provide a real disincentive to those that seek the fast track to market through blatant copying. This remains a high ACID priority.

Patricia Jones, Hammonds

It is common for businesses to commission third parties to design literature, software, websites, artwork or similar for them. These works will be protected by copyright and, unless the parties have agreed otherwise, it will be the third party designer that owns the copyright. This is a problem, as it will restrict how the business is able to use the copyright work.

This was the position in the recent case of Meridian International Services v Richardson [2008]. Meridian commissioned (and paid) Richardson to develop some bespoke software but the parties failed to agree who would own the copyright in the software. The High Court held that, in the absence of agreement otherwise, Richardson owned the copyright. Meridian argued that the court should imply a term into the contract with Richardson effectively assigning the copyright to Meridian or granting it an exclusive licence of the copyright. The court refused to do this.

A court will generally be reluctant to imply into a contract an assignment or licence of copyright in favour of a commissioning party. It would need to be satisfied that inclusion of the term would be ‘so obvious it goes without saying’. However, if the parties had never even thought about who should own the copyright, this issue cannot really be said to be ‘so obvious’ that a term should be implied.

In any event, litigation such as this is costly and time consuming and should be a position of last resort only.

To avoid problems arising when works are commissioned, Patricia Jones of ACID Accredited law Firm Hammonds recommends the following:

DO enter into a contract with the designer

DO ensure that the contract is in writing

DO include a term in the contract making it clear that you will own the copyright (and all related rights) in the finished work

DO include an indemnity in the contract just in case the work infringes third party IP rights and you get sued. The indemnity would oblige the designer to reimburse you for any damages that you are ordered to pay

DO take legal advice on the wording of the contract if you are in any doubt.

www.hammonds.com

Exhibitions provide a terrific opportunity to show case new products. They are also the perfect environment for design thieves to see, photograph and steal your designs. A shot of your product mailed to a factory in the Far East can metamorphosise into a cheap look alike within days. So trade safe, be design safe and watch your IP! The following advice is offered to ACID Members during the exhibition season but is relevant for all exhibitors too.

ARE YOU HAPPY FOR YOUR PRODUCTS TO BE FREELY PHOTOGRAPHED?  IF NOT, HAVE A NO PHOTOGRAPHY POLICY! Remember with phone cameras, your designs can be sent across the world in seconds and could be mass-produced before you even pack up your stand! All exhibitors at Autumn Fair, Decorex and 100% Design are given an ACID No Photography sign in their exhibitor’s packs

DETERRENCE – ACID STAND SIGN – these have been created specifically to ensure all visitors to your stand know you are a member of an anti copying organisation, ACID, with a proven track record of many successful legal actions.

PROOF – ENSURE YOU HAVE DOCUMENTATION to say you own the IP rights or have a licence to market the goods that appear on your stand.

MAKE SURE THAT THIS INFORMATION IS EASILY ACCESSIBLE. In any dispute the onus is on the complainant to provide evidence of ownership, originality and date of creation.

DESIGN PROTECTION – CONSIDER APPLYING FOR A REGISTERED COMMUNITY DESIGN (RCD) www.oami.europa.eu. This is a monopoly right covering 27 member states and lasts for 25 years.

FREE ACID DESIGN DATA BANK – IF YOU HAVE NOT REGISTERED YOUR NEW DESIGNS – Don’t forget the ACID Design Data Bank is FREE and houses thousands of member’s designs – independent evidence to support your unregistered rights. 

IT’S VERY DIFFICULT TO TAKE ACTION at an exhibition if there is no design audit trail or evidence of ownership to support registered/unregistered designs.

ACID will have a high profile presence at the exhibition and will be supported by ACID Accredited Law Firms to give one to one advice at the IP clinics on a variety of subjects and help if you are unlucky enough to discover what you think may be a copy product.

 

A comparison photograph of one of the infringed products is shown above (the copy is the top image).

Simon and Katherine Lane are ACID members and trade under the name ClanArt. They design, manufacture and sell a range of fittings to compliment both traditional and contemporary Scottish and Irish dress. The distinctive feature of the products is the various decorations that are applied to them.  The decorations constitute original artistic works, being a combination of various features to produce a new design. Over the summer of 2006 ClanArt noticed a distinct change in the pattern of sales from their many customers. After 6 years of working in the market the sales patterns were very predictable and for some unknown reason sales began dropping and being erratic.

As the company had good working relationships with all their customers they decided to investigate what was causing the drop off in sales.  They believed that it was due to the influx of cheap imports from the Far East and Pakistan that was affecting their business; they decided to contact their main customers to find out what was happening.  They were told that sales were slow and the market was slowing down and that it would soon pick up and that this was due to low cost imports and also fewer visitors from the US. Accepting these comments, ClanArt continued as normal but to their surprise a few months later they started seeing copies of their products being advertised on several customers websites and eBay, these products had many similarities to ClanArt’s original designs.

ClanArt discovered two companies – their main competitor – Dalman & Narborough Limited and one of their main customers, Margaret Morrison Limited, were offering for sale identical products with decoration applied to them that reproduced the whole and/or a substantial part of ClanArt’s copyright works. After doing almost eight months of research ClanArt had eventually gathered enough evidence to decide to take the companies that were infringing their rights to court. A cease and desist letter was sent to the two companies, who denied infringement, on the basis that Mr and Mrs Lane’s works were not original, as they featured Celtic knot work that had allegedly been around for centuries. However they had failed to appreciate that a new combination of antecedent features can result in a new, original work.

Proceedings were issued and served upon the two companies, who then agreed to cease manufacture of the infringing items as well as paying ClanArt a 5 figure sum in damages and ClanArt’s legal costs.  As part of the settlement they also agreed to send all the masters, moulds and any remaining castings to ClanArt.

Simon commented that “It was a risky thing for us to do, but when two companies are taking away your business and livelihood, you have to fight or flight! After speaking with several solicitors and business friends, many of whom told us to avoid litigation at all costs, we decided that we wanted to show that we would not just roll over”, he continued “as we are members of ACID, an organisation fighting for protection of creative rights with access to specialist IP lawyers and barristers, we decided that we would protect our rights. As a designer, when you see someone copying your designs you get a sick feeling in your stomach, which rapidly turns to anger that someone has violated your work. Your instinct says that you will go after them whatever it takes, but my feeling is that you then have to step back and look at the situation logically and clearly, before thinking what action to take – then research, prepare, plan and fight – or forget it and get on with your life!”

Peter Hunt, CEO of the Lighting Association with Dids Macdonald, CEO of ACID.

At a fantastic exhibition of the best in new and exciting light design held at The Annual Lighting Association AGM at Rugby, ACID sponsored the four winners with the presentation of free ACID support and membership. The winners also received a Safe Pitch kit designed to help form collaborative design relationships with commercial partners. The Safe Pitch kit includes several industry standard agreements and guidelines for responding to pitches or tenders. Loic De Buic responded to his award saying “The one year membership of ACID is really a nice thing to get, I really value the benefits that it gives me and I think I will stay a member after this year.”

This was the first event to consolidate the relationship between the Lighting Association and ACID as trade association partners. The Lighting Association also hosted a Design Protection seminar where Dids Macdonald, ACID’s CEO and Jo Alderson from ACID Accredited law firm Hammonds outlined the basis of a sound IP strategy and offered help and guidelines to those wishing to protect and exploit their intellectual property. Peter Hunt, incoming CEO said, “We are committed to supporting bright new talent within the lighting sector and to raising awareness of UK design and protection. This is the first event of many with ACID which we hope will help those within the lighting industry to develop their own IP strategies.”

The award winners are shown below receiving their prizes from Bruce Davidson, President of the Lighting Association.

Student Lighting Designer 2008 Loic De Buck winner with his ‘AirLight’ design.

Energy Efficient Student Lighting Designer 2008 Luke Dixon – ‘Switch’

Second Place Laura Hibbert – ‘Cara’

Third Place Jason Cooper – ‘Ceejay’

Phillips award Daniel Ward – ‘Lloyd The Bankers Light’

Highly Commended Chooi-leng Tan – ‘Pouring Light’

Highly Commended Christopher Harkin – ‘Honeycomb’

ACID, (Anti Copying in Design) has formed a trade association partnership with the IGI (International Wallcovering Manufacturers Association) to raise the profile and value of Intellectual Property among its members through education, support and deterrence.

This move is part of an on-going campaign by ACID to work alongside trade organisations pan industry. Through IP education on how to protect your intellectual property effectively and how to integrate IP as part of a corporate or marketing strategy – ACID will advise IGI members on creating a safe trading environment by safeguarding their IP equity when tendering or pitching for business. ACID will also work with IGI on strengthening respect for intellectual property within corporate responsibility. Says Geraldine De Limelette, Secretary General, IGI,  ‘We have spent the last year working closely with ACID to promote the value of IP within membership. As an ACID trade association partner we can now offer our members the depth of expertise and experience ACID has in fighting design theft while helping our members develop individual IP strategies to underpin their commercial objectives’. Adds Dids Macdonald, CEO of ACID, ‘The wallcoverings industry is the 5th trade organisation to take advantage of ACID’s Trade Associations module. The module is bespoke according to the market sector and includes a discounted group membership fee, seminars, tailored IP advice through regular web and newsletter features, standard tender agreements, and IP clinics plus over 30 ACID membership benefits including IP legal advice and the use of the free ACID design bank. I strongly advise any trade association who is committed to design protection and IP education to talk to ACID’.