ACID member, Smallbone& Co (Devizes) Ltd, has successfully enforced their UK registered design and unregistered design rights in a kitchen island, part of the companies popular ‘Walnut and Silver’ kitchen.
Smallbone was surprised to find an advertisement in Devine magazine by Peter Thompson of York, Ltd promoting a kitchen which included an almost identical island. Smallbone takes the creation and protection of its designs extremely seriously and had obtained a UK design registration for the island. The products innovative design was also protected by UK design right. A letter before action avoided litigation and as a result, Smallbone obtained undertakings from Peter Thompson of York which included a witness statement confirming the extent of sales of the kitchen island in issue plus payment of its costs.
Peter Thompson Version
Commented Sally Wilkinson, Managing Director of Smallbone of Devizes, “We spend a significant amount of time creating our kitchen designs and the signature pieces of furniture within each kitchen design. We protect our designs through registered design protection and also enforce our unregistered rights. As a result, we are not prepared to allow others to take advantage of our novel designs and, as in this case, we took immediate action”.
Adds Dids Macdonald, CEO, ACID, ” Smallbone of Devizes are highly influential market leaders and their anti-copying strategy is a great model for any manufacturer committed to innovative, original design. Like Smallbone, we encourage all our members to send a clear message out to market that plagiarism will not be tolerated”.
Smallbone Knightsbridge Kitchen
The products in question were the Double Pocket Basket, Wedge Stroller Bag and Raincover Bag. A letter before claim was sent by McDaniel & Co, one of ACID’s Accredited law firms, and the products were immediately removed from the shelf but then appeared on E bay. Buggy Baskets used the VerO programme to have the listings permanently deleted.
Buggy Baskets is a highly innovative company committed to producing stylish, practical and affordable storage solutions, which are simple for parents to use. Vicky commented, “We joined ACID because we are determined to send a clear warning message out to our competitors that we will not tolerate design theft. Losing valuable sales through alleged copying is not good news and like any small to medium enterprise we cannot afford our market to be eroded in this way.”
Image reproduced by kind permission of Shepperton Design Studio Ltd.
The High Court has handed down it’s decision in Lucasfilm Ltd and others v Ainsworth and others, the “Star Wars” case. It concerned a dispute about props created for the 1977 film “Star Wars IV – A New Hope”, in particular the iconic white helmet and armour of the Imperial Stormtroopers.
In 1976, the Defendant Andrew Ainsworth, was commissioned by the Claimants to produce the helmet, armour and other items (“the props”). He produced these using vacuum-moulded plastic working from paintings of the characters, drawings and clay models produced by the Claimants.
In 2004, Ainsworth began selling his own replicas, producing these from the original moulds and tools which he had retained. His website contained statements like “made by the original prop-maker from the original moulds”.
The Claimants sued for copyright infringement, passing off and, if the UK copyright claim was unsuccessful, infringement of US copyright.
Mr Justice Mann dismissed the UK copyright claim:
The props were not artistic works. They would have to be sculptures or works of artistic craftsmanship. Regarding sculptures the Judge outlined that although no artistic merit is required, artistic purpose is. He gave an example of some bricks on display at Tate Modern which could be a sculpture. The same pile, left on his drive by workman was not. The props were produced to identify the film characters, they had no artistic purpose.
With artistic craftsmanship whilst the props were acts of craftsmanship they were not artistic. Their purpose was not to appeal as aesthetic but to convey the film characters.
Section 51 CDPA 1988 provided a defence to any copyright in the drawings and paintings as they were design documents for the props.
The Judge dismissed the passing off claim (based partly on the website) as Ainsworth was not seeking to sell his goods by reference to someone else’s goods or goodwill.
The Claimant succeeded on its US copyright claim as Ainsworth’s defence would have been that the items produced were utilitarian/functional items (under US law no infringement). It was accepted the Claimant’s had the better case on this point in reference to US jurisprudence.
Andrew Lee of ACID Accredited Law Firm McDaniel & Co commented “This ruling provides a point of general interest in that it gives guidance as to when a piece of work may be regarded as a sculpture and/or work of artistic craftsmanship. An interesting point was that the Claimants relied on drawings and paintings created in the 1970’s and some contemporaneous diary records. It also indicates the importance of creating and keeping original drawings, ensuring that all entries are dated. In this case the court had to try and piece together a timeline of when drawings were produced as some were undated.”
At the moment the maximum fine that a Magistrate can award for online copyright and trade mark infringement is £5000. The UK-IPO has recently issued a consultation on increasing the level of penalties from £5000 to £50,000. This follows recommendation 36 by the Gowers Report on intellectual property to Government. Whilst ACID welcomes all opportunities to raise awareness about IP theft and improve penalties for online copyright infringement, it still leaves designers out in the cold. There are no criminal sanctions for design right infringement.
Put quite simply, what is the difference in criminality between ripping off an artist (who creates a copyright work) and a furniture designer (who creates a design)? They should both be treated equally as both input tremendous skill and effort into their creations. There exists no deterrent of criminal sanctions for those people who systematically exploit designers work.
As ever, designs fall way down on the Richter scale and are not being treated with parity in terms of the laws that protect them and the penalties they can receive.
Gowers stated, ‘The intention and impact of physical and online infringement are the same. Crimes committed in the online and physical world should not be subject to different sentence. Increasing the penalties for online infringement will therefore make the law more coherent.’
ACID comments, ‘The Better Regulation Principles maintain that Government action has to be “consistent” so BERR is clearly failing to meet that requirement. ACID has consistently, over the last 10 years, put forward arguments to Government and, subsequently to Gowers, to address the disparity between copyright/trade mark and design right holders, ACID has yet to be given the counter argument why they should not be given parity and consistency regarding criminal sanctions’.
Penalties for Copyright Infringement consultation document. Click here to download Gowers recommendation 36.
If any ACID members would like to respond to the consultation please send comments by 31 October 2008 to firstname.lastname@example.org
If members would like to indicate their support for ACID to make further submissions on behalf of its members, please email Dids Macdonald email@example.com
ACID, (Anti Copying in Design) has formed a trade association partnership with the Shop and Display Equipment Association (sdea) to help raise the profile and value of IP among its members.
This move is part of an on-going campaign by ACID to actively support trade organisations pan industry. Through IP education how to protect your designs and how to integrate IP as part of a corporate or marketing plan – ACID will advise sdea members on creating a safer trading environment by protecting their design equity through a robust IP strategy.
Lawrence Cutler, Director, sdea said “I am delighted our organisation has been invited to join ACID as a Trade Association Partner. Copying is a crime which has affected too many of my members and I hope our alliance with ACID illustrates our commitment to fighting design theft. ACID is a formidable organisation and through education and awareness will be advising our members on how they can protect their intellectual property from plagiarism.”
Adds Dids Macdonald, CEO of ACID, “sdea is the 5th trade association to take advantage of ACID’s newly launched Trade Association Partnership module. This scheme is bespoke, according to specific market sectors, 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 data bank. I strongly advise any trade association who is committed to design protection and IP education to talk to ACID.”
To learn more about sdea click here to enter the Trade Association Partners section.
FURNISHER MAGAZINE JOINS RANKS OF ACID MEDIA SUPPORTERS
The recently rebranded Furnisher magazine, (formerly Retail & Professional Furnisher) has joined 18 other key trade titles to become an ACID media partner. As a design-led interiors industry magazine, The Furnisher is totally in support of ACID’s aims and objectives in fighting design theft. Now eight years old, The Furnisher continues to reflect the whole of the interiors industry presenting products, manufacturers, suppliers and services predominantly to a readership of retailers, buyers, specifiers and interior design businesses.
Regarding copyright and intellectual property issues, Editor Richard Elford commented: “The Furnisher team has a great deal of contact with the whole of the ‘interiors’ industry. The level of suspected infringement- much of it blatant- or the lack of clarity, on occasion, between agents or importers and their suppliers, is a problem. Joining an organisation such as ACID with their vast experience and success rate in IP dispute resolution should surely be a matter of course for many individuals and businesses within the furnishing industry.”
Acid has created a new section on the ACID Newsdesk where ACID members can submit copy and images to us for posting on the newsdesk. This will ensure that your skills are communicated to a wide audience. If you would like to promote your design skills or wish to collaborate with third parties please send your copy to firstname.lastname@example.org
See our first entry from RCA trained designer Laura Fletcher (below)on the new Member Contact page.
Firm supporter and long-standing member of ACID, Elizabeth Gage, leading Jewellery designer and favourite with fine jewellery collectors world-wide, has a policy of archiving every jewel she sells. A policy heavily endorsed by ACID who encourage all their members to store copies of their designs in the ACID design data bank – which currently holds over 300,000 designs!
Gage’s dedication to keeping records has stood her business in great stead. When one of her pieces was found in a New York gutter by someone who recognised her work, the finder brought it to London on her next visit and Gage’s archive revealed its owner and the piece was returned! Says Elizabeth, ‘’I believe those who copy are in the same category as people who rob your home and I have always admired ACID’s work on behalf of all true designers’
ACID comments: ‘All designers should take a leaf out of Elizabeth’s book. Archiving copies of original work proves ownership and provides an audit trail should the originator be unlucky enough to be copied”.