Prime Minister David Cameron used a keynote speech to the business community in Shoreditch to announce a review of the UK’s intellectual property framework. “We are reviewing our IP laws, to see if we can make them fit for the internet age. I want to encourage the sort of creative innovation that exists in America.” The review, which will report next April, will recommend changes to UK law, as well as long-term goals to be pursued by the British government on the international stage.

Dids Macdonald, ACID’s CEO said, “The IP review is a welcome initiative which I hope will focus on a relevant and robust framework to encourage IP creators and ensure that protection and enforcement are key priorities. For the majority of the UK’s SME’s the costs and difficulties associated with enforcing IP infringement are prohibitive. Bringing IP to the top table as a significant contributor to the UK’s growth and recovery will be a welcome boost for UK businesses”.

IP Minister Baroness Wilcox, said, “The future of the economy lies in the highly skilled, technology sectors. For many of those companies their intellectual property is their most valuable asset. We must ensure the intellectual property system helps not hinders those companies. This review will look at what changes can be made to our intellectual property system to ensure it helps firms grow. The internet has fundamentally changed the business landscape. Some sectors, such as the creative industries, have been transformed by the internet. The intellectual property framework must keep pace. An IP system created in the era of paper and pen may not fit the age of broadband and satellites. We must ensure it meets the needs of the digital age.

The review will look at:

• Barriers to new internet-based business models, including the costs of obtaining permissions from existing rights-holders
• The cost and complexity of enforcing intellectual property rights within the UK and internationally
• The interaction between IP and Competition frameworks
• The cost and complexity to SMEs of accessing services to help them protect and exploit their IP
• What the UK can learn from the US’ “fair use” rules covering the circumstances in which copyright material may be used without the rights-holder’s express permission
• Making recommendations on the changes the UK can make as well as the long-term goals to be pursued through the international IP framework. It is expected to report in April next year

Following ACID’s  (Anti Copying in Design)  petition to introduce criminal sanctions for design right infringement The Government  has responded by saying the current civil-based provisions provide a suitable IPR framework  despite the fact that copyright infringement (which requires no substantive examination) attracts criminal sanctions.  This gives rise to anomalies and inequality of treatment which are very damaging to hundreds of small businesses and designers across the UK and restricts the level of legal protection and support they can expect to receive.

Class 99, the website for design law, in Europe and worldwide and written by a team of design experts and fans has commented on ACID’s press release:

On Friday Class 99 reported on the UK government’s unenthusiastic response to the proposal, backed by ACID’s petition, to introduce criminal sanctions for design right infringement.  According to the government, the current civil-based provisions provide a suitable IPR framework — even though copyright infringement (which requires no substantive examination) attracts criminal sanctions. As ACID points out, this gives rise to anomalies and inequality of treatment which, the organisation states, “are very damaging to hundreds of small businesses and designers across the UK and restrict the level of legal protection and support they can expect to receive”.  A press release in response to the government’s reiteration of its current position reads as follows:

“Dids Macdonald [ACID CEO], commenting on the Governments’ response and, in particular, the statement that unlike trade mark and copyright disputes, design right can often be inadvertent said, “In my 20 years personal experience as a designer and latterly as CEO of a 1,000+ member organisation (the majority of whom have joined because of design infringement threats), copying is generally deliberate and blatant rather than inadvertent [If it were not, one might expect commercially unsuccessful and unpopular designs to be copied as frequently as successful ones]. I would be interested to learn more about the Government’s evidence to support their statement [the UK government has committed itself to "evidence-based" IP policy formulation -- though one suspects that this only applies to proposals to change the law, not proposals to leave it as it is ...]. However, I am encouraged to continue the debate via the recently announced review of the UK’s IP and by the Government’s commitment to explore any (and all) suggestions for improving the designs framework for the benefit of the UK design industry.”

Nick Kounoupias, ACID LOBBY’s legal counsel and an expert in IP infringement said, “We are only suggesting that design rights should be criminalised where there is actual knowledge like copyright. 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 [Copyright Patents and Designs Act] 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.” [Nor has it been suggested that, since deliberate design infringement is not criminal; corresponding types of copyright infringement should be decriminalised too]

The simple legal solution would be to introduce into the CDPA two new Sections to mirror S.107(1) and 110 … The wording would be almost 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. As with copyright infringement this would criminalise blatant and deliberate copying but not copying inadvertently.

The Alliance Against IP Theft representing 20 organisations (of which ACID is a member) has recognised the need to ensure legal parity across IP rights as a key campaigning principle with a need to address the inconsistency in protection for design rights agreed as a specific objective. …

In 2008 there were only 2,798 designs registered in the UK and in 2009 2,111. Most of the UK’s 250,000 designers would appear to rely on unregistered rights. This is contrary to the Government statement that IP, including design rights, should serve to stimulate an environment in which new design ideas can flourish, whilst also providing a robust means of protection for existing design rights. ACID receives approximately 30,000 designs per year to its Design Data Bank for unregistered designs”.

The government’s reluctance to remove the anomaly may have, at base, a fear that if deliberate trade mark, copyright and design infringements were all criminalised, the controversial proposal to criminalise patent infringement might again be raised.

After a 4 year battle Baker Street Clothing has won trademark battle in the quest to register the word “alligator” despite a hard fought battle by leading international clothing brand Lacoste. QC Geoffrey Hobbs decided that the word “alligator” written on their designs would not be confused with Lacoste’s well known crocodile graphic logo.

View the full story from the Independent here

Private and business use of technology seems to be becoming increasingly blurred. Gone are the days when all employees are office-based and work from computers belonging to the business. Many businesses now allow or indeed encourage employees to work from home occasionally or as a matter of course. The use of private mobile devices at work is also on the increase. How can the employer remain in control of the employee’s activities?

Our technology group has seen an increase in enquiries from businesses seeking to deal with the new challenges arising from misuse of technology by their employees. Concerns may arise from the amount of time (read the business’ money) employees are wasting on Facebook, or Twitter, and also from the content of postings by employees and how that reflects on the business.  Technology may also be misused by a disgruntled employee in a far more calculated way to harm the business – by deliberately berating the business in a public forum (perhaps anonymously) or by downloading a database onto a memory stick to set up in competition, for instance.

Whilst you cannot prevent all forms of harm, there is actually a lot that businesses can do to minimise the misuse of IT by the employees. These are just a few thoughts:

1.    Do you know who is using business equipment and who is using personal equipment to carry out their duties?
2.    Do you have an adequate monitoring policy in place which allows the business to monitor email communications?
3.    Do you have a social networking policy? Some businesses prefer for instance to only allow employees to access Facebook for an hour at lunchtime.
4.    What is the business’ culture in relation to the use of private mobile devices at work?  Good old-fashioned floor-walking by line managers with appropriate and clear penalties for misuse can go a long way towards encouraging appropriate behaviour at work.
5.    Are misusers of IT disciplined – are the right messages being sent out?
6.    Are employees subject to adequate and appropriate restrictive covenants in their contracts of employment?
7.    Is access to confidential information appropriately restricted and password-protected?

Prevention is always better than the cure, but occasionally a crisis arises and has to be dealt with. For instance, a disgruntled employee blogs anonymously about the business, perhaps revealing confidential business information.  This activity can cause real commercial and reputational damage. Steps can be taken to bring it to a halt, and to seek redress. Generally speaking, in a crisis situation where real harm has been done or is suspected businesses should:

1.    Escalate the problem immediately to the highest level and confine discussion of the issue only to those who “need to know” – usually the senior management team.
2.    Not attempt to secure electronic evidence without first taking advice in case it is inadvertently damaged, potentially rendering it useless for the purposes of any subsequent criminal or civil case.
3.    Protect customer/supplier relations – if an employee has done something to damage the business and third parties could be affected, the business must invest at a high level immediately in restoring the confidence of those third parties.
4.    Take legal advice immediately so that the situation can be assessed at an early stage and an appropriate legal and commercial strategy implemented.

Should you require any more information about our extensive experience in this area please contact Partner Sarah Birkbeck via sarah.birkbeck@dmhstallard.com or on 01293 605078.

For more information please visit the DMH Stallard website

Are you Protecting this Enough?

One of the many challenges and responsibilities facing companies in a customer facing business is that we receive personal data of the people we are selling to, much of which can be highly confidential.  The law protecting those who entrust us with this information is g overned by the Data Protection Act.  How often do we hear that we cannot be given information because of the Data Protection Act?  A recent example demonstrates the importance that businesses should place on ensuring that people’s personal data is protected. The consequences of not protecting the personal data of others are clearly wide reaching.

ACS Law are a firm of Solicitors who were involved in acting for companies looking at, amongst other things, illegal file sharing.  They had Court Orders in place that forced internet service providers to give them personal details of people who were alleged to have downloaded material illegally.  This has caused ACS to incur the wrath of 4chan, an organisation of internet users who believe in free file sharing.  They attacked the ACS website bringing it down in what is known as a “denial of service attack”.

Unfortunately for ACS Law when the site was recovered from backup, tapes, personal data of those people who were involved in the illegal file sharing were somehow uploaded onto the site.  This was manna from heaven for 4chan who then distributed those details around the internet.  As a result ACS Law face an investigation, not only by the Solicitor’s Regulation Authority (SRA) – their own regulatory body – but also an investigation from the Information Commissioner and a fine of up to £500,000.  In addition, any of the people whose details have been posted on the internet can bring a claim against ACS Law for damages.

In short, it is not enough to say that you comply with the Data Protection Act; you must ensure positively that you are protecting the personal data of others who entrust you with this information.

For more information contact Niall Head-Rapson at McDaniel & Co

Email: nhr@mcdanielslaw.com or visit the McDaniel & Co website
Tel: 0191 212 5594

A Letter Before Action (LBA) or Cease and Desist

What are they?

A Letter Before Action (LBA), sometimes known as a “Cease and Desist”,  is quite simply a letter drafted by a qualified solicitor informing a prospective defendant that unless they settle, you intend to start legal action. In the case of intellectual property (IP) rights infringement an LBA usually sets out why you believe your rights have been infringed together with evidence of your rights ownership.

How effective are they?

Out of ACID’s 400+ settlements by its accredited lawyers on behalf of members, only 4 have reached a final Court hearing and of those, many have settled satisfactorily following an effective LBA and/or a short series of legal correspondence. To the recipient it can be perceived as an official “shot across the bows” or “last chance” before more serious letters follow, which may lead to the claim being heard in Court.

Why does the cost sometimes vary and may seem high?

Generally, the rationale for a letter before action varying in costs is that, basically, some are simple and straight forward and some are much more complicated. In ACID’s experience of many legal actions, the more effective an LBA is, the better the chances are for the least amount of protracted legal response.

Another good reason for an effective LBA (which takes time to prepare) is that there should be little scope for a lawyer on the other side to challenge any points of ownership. There are also many other variables which affect the time spent i.e. gathering comprehensive information (and evidence of rights ownership) in order to prepare an effective LBA. This can be easy or complicated, often depending on the efficiency of the ACID member in giving him/her all the relevant facts and evidence of design ownership and clarity of title. As we know too,  IP law is not straight forward and it may be necessary to look through case studies and precedents to clarify the legal position. It may also be necessary to seek a second legal opinion. Why? Because compared to other rights, there is little case history under unregistered and registered design right. This all takes time.

The amount of time taken to prepare an LBA can also vary if. For example,  a lawyer has to follow up an ACID member for more information which is not forthcoming. Most lawyers charge in 6 minute slots so it is important to ensure that your lawyer has all the relevant facts so that he/she can form a legal opinion! Typically, it is not unreasonable for a lawyer to spend anything from 2 – 5/6 hours on an LBA depending on the complexity of the issue.  Another variable may be the time it takes establishing clarity of rights’ ownership – say in a license arrangement or collaborative design etc.

Watchpoints

If you discover a copy always  be prepared and save expensive legal time by having all the following in place ( the ACID Infringement Purchase Information Sheet is a fast track checklist to ensure that you have collected all the relevant information together):

1.    Archived drawings and documents ready to prove the history of your designs

2.    If you are at an exhibition always ensure that you have evidence of your design ownership with you or have easy access to this evidence

3.    A complete set of legal documents, including contracts of employment with designers, written agreements with freelance designers, suppliers, manufacturers and customers, confirming that you own all the rights in your designs

4.    If your designs or trade marks are registered at the UK Intellectual Property Office or at OHIM (The Office for Harmonization in the Internal Market), retain and archive all these valuable certificates

Many designers do not realise that intellectual property (IP) law is based on property law. When  buying a house, most people will spend several hundred pounds on employing a solicitor to check that the house is free from any unforeseen nightmares such as the seller not actually being the original owner of the property; there is a sitting tenant; there is a public footpath running through the garden; or the land has be designated for nuclear waste. It is the same in IP law, so:

If there are any documents, which are required to PROVE the ownership of your designs, these will need to be drafted and signed before an action can commence. This is when it can be costly, however, never forget that it is never wasted money, it will cover you for the future.

When lawyers ask you to PROVE YOUR CASE you are being asked to ‘prove your case’ to the Court and the other side – it is your lawyer’s job to make sure that the rights are in place at the start so that the strength of your case is not damaged.

Joanna Potbury from DHM Stallard stresses the importance of getting the letter of claim spot on in terms of setting out the claim accurately; not leaving and gaps, and also setting the right tone.  “A good letter of claim can set the scene for much of the pre-action stage and can put you in control of the debate from the off.  If there are any weaknesses or gaps, they will be exploited by the opponent, which inevitably gives the potential defendant a psychological boost, it is our job as effective lawyers to get this right.”

JK Rowling and Bloomsbury Publishing may well face a 10-day High Court trial following a ruling by Mr Justice Kitchin in the claim brought against them by Paul Allen, the trustee of the estate of Adrian Jacobs deceased. Mr. Jacobs was the author of a wizard adventure novella entitled ‘Willy the Wizard’. Mr. Allen claims in proceedings brought in 2009 that copyright in Willy the Wizard has been infringed by ‘Harry Potter and the Goblet of Fire’, the well known book written by JK Rowling and published in the UK by Bloomsbury.

Both JK Rowling and Bloomsbury deny all of the claims. However, after an interim hearing in July, lasting three days, the Judge decided that the claim against JK Rowling and Bloomsbury Publishing may succeed and would not be dismissed at this early stage.

Nick Kounoupias, acting on behalf of Mr. Allen said; “Mr. Allen is delighted with this decision, although this is precisely the result we expected. We were surprised that any attempt was made to dispose of the claim at this stage and before all the relevant documents had been made available. Even at this early stage, the judge has concluded that the claim may succeed at a full trial. If the claim does proceed then JK Rowling and Bloomsbury will be required to explain how the similarities between the two works came about, when to date there has been a refusal to disclose key manuscripts and notebooks despite our request that they do so.”

The proceedings are being handled by a team at law firm DMH Stallard LLP led by Nick Kounoupias. DMH Stallard LLP are experts at handling complex disputes relating to intellectual property infringement and reputation management.

For Media Enquiries please contact James Caulfield of DMH Stallard on 07841 065604 or james.caulfield@dmhstallard.com

For more information please visit the DMH Stallard website

Why should designers register their designs? There is little commercial value in shouting that you’ve got a good idea, or the latest new design “gismo”, but if you have numbered design registration, stating that you effectively own the design, then you have a tangible, tradable IP asset. Registration details included on marketing literature and websites may also act as a strong deterrent against copying. If a designer is unlucky enough to be copied, but has a registered Community design (RCD), it is much more cost and time effective for an IP lawyer to write a powerful letter before action which will be more difficult to legally challenge. Investors, too, are more likely to be persuaded if they can see tangible evidence of tradable IP assets. Another key benefit of an RCD is that, for a small sum, publication (public disclosure) can be delayed (in the UK by 12 months and in the EU by 30 months) so that competitors cannot see a new design/design range before its official launch. This gives originators a clear and fair lead in the marketplace plus the added protection assurance of an RCD.

Is RCD cost an issue? How can unregistered rights be used effectively to decide on registration?

Many micro enterprises and SME’s find that registration is still too expensive. ACID’s advice in most cases is to always try to register new designs. However, if cost is an issue, there is a useful option of a year’s grace period to register allowed by OHIM. Designers can therefore, rely on unregistered rights to test the market during this period and then invest in the registration of any products identified as clear market leaders. However, there is a down side. Those who seek the fast track to market through IP infringement may seize on a new design and register it themselves. This can lead to a messy legal debacle to prove clarity of ownership, especially if an alleged infringer’s registration in another country.

Are designers generally aware of the benefits of design registration?

Design is everywhere; everything we use has gone through some sort of design process in its creation to a greater or lesser degree. Yet despite designers having access to the relatively new registered Community design (RCD) (introduced in 2003) there has been a slow uptake of registrations. The Office for Harmonization (OHIM) up until this year held only 400,000 registrations. So across 27 member states, over 7 years, this represents an approximate annual average of 2116 design registrations per country. To put this into perspective, in the UK, for example, there are 232,000 designers. The good news is that EU design registrations are finally picking up and increasing by 80,000 per year (or an average of an additional 2962 per year, per country).

Does this mean that the RCD benefits are being more widely publicised and acknowledged or that infringements are on the increase? Or does it mean that designers are finally waking up to the fact that registration is a key component of a healthy intellectual (IP) strategy? Maybe it is a combination of all these factors? Why don’t designers register more, is it still too expensive? At €350 per single design, maybe it is, although there are reductions for volume.

National registrations granted in the UK amounted to 2976 in 2008 and 2111 in 2009, a decrease of 29.1%. However, on the other side of the coin, for those relying on unregistered rights,  ACID’s Design Data Bank receives approximately 30,000 designs per year indicating, that by the sheer volume, many of the UK’s designers are still relying on unregistered rights. If a designer relies on unregistered rights, by creating an independently held IP audit trail this provides compelling evidence and can reverse the burden of proof against an alleged infringer. Out of ACID’s 400 settlements, the majority have been settled by designers relying on unregistered rights.

The UK used to be a nation of shopkeepers and manufacturers. If a shopkeeper’s stock is stolen, they can’t trade. Now the UK is a knowledge economy. If an IP originators tradable knowledge is stolen, their capacity to continue to market and sell designs may be seriously eroded. EU and National policy makers should seriously consider reducing registration fees and making cost and time effective legal redress a priority in a significant policy shift change. Introducing accessible IP enforcement with meaningful exemplary damages wouldn’t be a bad start.

© Dids Macdonald is the Chief Executive of ACID (Anti Copying in Design)

ACID member UK-based Robert Welch Designs is delighted to announce that its Signature knives have won the Excellence in Housewares ‘Cutting Edge’ category for the second year running. The complete range of Signature knives and the knife block won the award in 2009 and in 2010 the 20cm cooks knife, the 16cm flexi utility knife and the 10cm vegetable knife (the new additions to the range) have also been successful in the same category.

The Excellence in Housewares Awards are owned and organised by Progressive Housewares magazine in conjunction with the Cookshop and Housewares Association and are considered to be the ‘Oscars’ of the housewares industry.

Speaking about the win just after the awards ceremony in London, Rupert Welch, Managing Director of Robert Welch Designs, said:

“Our initial reaction was surprise, swiftly followed by delight that the quality of the Signature knife range has been recognized yet again by an awards panel. We understand that until this year it was unprecedented for a product/extension to a product range to win this award in two consecutive years. This is a wonderful endorsement of the Signature range and we are very proud to have won.”

Key facts about the Signature knife range:
•    The Signature knife block and knives were designed in-house by Paul deBretton Gordon and Rupert Welch.
•    The 2010 Excellence in Housewares ‘Cutting Edge’ award is the latest success for the Signature knives which have also won an iF design award (Germany), the GOOD DESIGN™ award (from the Chicago Athenaeum: Museum of Architecture and Design), a red dot design award (Germany), the Excellence in Housewares ‘Cutting Edge’ award (UK) 2009 and a Gold accolade in the ‘Product of the Year’ awards organized by Housewares and DIY week magazine (UK). The knives have also achieved the highest possible rating from the Craft Guild of Chefs.
•    The knives have been performance-tested by Sheffield’s leading test establishment and found to be in the world’s top 1% (of all knives tested) for initial sharpness and edge retention.
•    Each blade is honed and tempered to razor sharpness using World Edge Geometry™ inspired by master sword craftsmen from Japan to produce a precision blade.
•    Each block contains the innovative, patented Robert Welch Signature knife sharpening mechanism designed to care for the knives, simply and effectively.
•    The block has been designed for ease of use when inserting and removing the knives. A magnetic locator in each slot prevents damage to the blade edge when inserting or removing the knives.
•    The full range includes fourteen knives, two carving forks, a sharpening steel and a hand-held knife sharpener.

For more information view the Robert Welch Website

Drawn to the Light XL by Dominic and Frances Bromley

Motivated by exciting possibilities for large scale installations the Drawn to the Light china form has been re-sculpted to a larger 180mm diameter scale. Drawn to the Light, launched at 100%Design 2003, was Dominic and Frances Bromley’s first fine bone china chandelier. This now iconic sculpture inspired the design of their acclaimed Shoal. Scabetti’s 10th year exhibiting at 100%Design London, saw Drawn to the Light XL presented for the first time and taking centre stage on the Scabetti stand. In a 2m tall sculptural arrangement, 150 fine bone china forms surrounded their central light source in a striking diamond shaped composition.

For more information visit the Scabetti website