ACID's latest article from the IP Doctor, Niall Head-Rapson of McDaniel & Co., covers Orphan Works & Copyright

In this latest article, IP Doctor Niall Head-Rapson of McDaniel & Co. answers questions ACID regularly receive regarding designs and products which have a combination of existing elements alongside new design input.

I paint pictures of famous people such as Audrey Hepburn, Marilyn Monroe etc. using photographs that I have obtained. Am I infringing copyright of the photographs?

Assuming the photograph is still in copyright, you could be infringing copyright. This is because photographs are specifically protected as artistic works pursuant to the Copyright Designs and Patents Act 1988 and an infringement will occur if the whole or a substantial part of the photograph is reproduced, in any material form, without the copyright owner’s permission

However, take the situation where you reproduce the photograph but in doing so you reproduce it using a degree of skill, such as the use of a mosaic technique, then you may yourself have a copyright in your finished work. In other words you might infringe copyright in the original photograph but yourself have acquired a copyright because of the skill and thought used to make the reproduction. There may then be issues as to whether your copyright is enforceable or whether you need to make terms with the photograph owner to exploit your work.

I create boxes to hold stationery - which are covered in a Laura Ashley fabric – do I have any rights in the final product and will I get into trouble for selling my product?

It is possible that the fabric purchased from Laura Ashley may have some form of copyright protection such as a print or pattern. However, provided the material you buy is genuine, and not counterfeit, you will not infringe copyright by that use as you are not making a copy of the fabric nor are you then selling it to the public for the first time. These acts were done by Laura Ashley, or through another party with Laura Ashley’s consent and therefore their rights are what are known as “exhausted” to prevent further circulation of that particular piece of fabric.

In terms of your rights in the finished product, you will not own the copyright in the pattern or print of the fabric because that is likely to be owned by Laura Ashley.  You may have rights in the other pieces of your product such as the shape of the box, provided you designed the shape. You may also sell the product under a particular brand or name which you may have unregistered rights in and which you could convert to a registered trade mark.

Whether you have any rights in the combination of your box with the fabric is debatable. It could be that the combination itself is new and of individual character and thus may be protected by European Community Design right.   However, as the fabric design would have been available before you made your product it is arguable that the product is not new or not different enough from the prior art to be considered new. It may also be possible that the owner of the copyright could object to that use, however this area of community design law is presently uncertain as the right is relatively new (2002) and there has been little case law.  You will however be in a much stronger position to claim rights in the finished product and prevent others copying if you have designed all of the relevant parts yourself.

A rival company has used one of our products as part of a photograph to publicise their own goods.  Can they do this?

It will depend on the circumstances. It could be that your product has unregistered rights in it such as copyright on the packaging and it is arguable that the photograph reproduces, without your permission, the packaging which is protected by copyright. It is likely the company has deliberately incorporated your product into the advert for the purpose it can be seen so that use cannot be said to be incidental.  Furthermore, if your product is successful, or sold under a particular brand or name for which you have developed a reputation, it could be possible to mount a passing off action on the basis that people reading the advert may be confused into thinking you have endorsed the other companies goods.  Each situation is a matter of fact which you should seek advice upon.

Surely it is OK to re-use/download a picture or video shown on a website – after all it is in the public domain?

There is an argument that people who upload material on the internet are impliedly consenting to the subsequent use of that material by others. However, the default position is that if you download a picture or a video from a website, you then make a “copy” of that work on your own computer because making a copy of a work includes storing it in an electronic form. By making that copy, on the basis that the original work is protected by copyright, then you will on the face of it be infringing that copyright.

This is then subject to whether the rights holder has consented to that download for example in their terms and conditions of use on the website, or a statement saying the content can be used provided an acknowledgment is given. In addition the purpose for which you have used that work may come within some of the special defences to copyright infringement.

However, in summary, it would be dangerous to assume you are allowed to download such material simply because it is on the internet.

I have copied someone’s work but I did not know that this was not allowed or that the person concerned was the owner of copyright. Surely that is a defence?

Unfortunately not. The primary acts of copyright infringement, such as copying a work, are acts of strict liability subject to any statutory defences. This means the ‘doing of the act’ itself is sufficient for an infringement, irrespective of your state of knowledge. Innocence is no defence.

There is a limited defence which provides that if you did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates, the other person is not entitled to damages against you, but without prejudice to any other remedy (this means that person can still get an injunction or an account of any profits you have made from using the work). However this defence is narrow and will be of limited application, likely only in circumstances where the term of protection of the copyright has run out or where the type of work copied is of such a character that it ought not to be protected by copyright.  The basic point is that if you have any doubts about what you can and cannot do, speak to a lawyer before you do them!

This article was originally published 1.3.2010