Presentations & Webinars

During our recent webinar on IP protection for Surface Pattern and 2D designers we received a wealth of questions from the audience which we did not have time to answer. Niall Head Rapson of McDaniel & Co has kindly taken time to respond to your queries and we are pleased to share with you the following Q & A’s. We hope you find them helpful but do remember you can always contact us for IP queries at [email protected] or if you are an ACID member, contact a legal affiliate directly through our online contact form.

Question 1
I mainly make bespoke design for clients. I understand the copyright rests with me? What should I be particularly aware of with one-off-designs?

Answer
When you create a one off design for someone they will have the right to use it but they won’t own the copyright unless you assign it them. It really depends what bargain you have struck with the client and also what you want to do going forward. If you assign the copyright then you can’t base future designs on that work. If you aren’t bothered then it may well be a way of creating an extra income line; selling exclusivity if you like. If you do want to base future designs on the work as it is, for instance, a signature piece, then you give your client a licence. The thing you should have is clear terms of business so that what clients can do with the work is agreed beforehand.

Question 2
What is the benefit of relying in unregistered designs that last for 10 years, when actually the copyright law covers you for life +70 years?

Answer
It is not what choice you get to make but the choice the law gives you. Design right covers the shape of a product and applies usually when the product is utilitarian. Copyright covers artworks by contrast and which benefit you get is not really one of choice but is defined by the work that is created. So if you are creating surface patterns they will more than likely be covered by copyright and so you should be getting the benefit of copyright subsistence and that is life of the author (you) plus 70 years after your demise.

Question 3
How do designers balance the ‘need’ to be on social media with protecting their designs?

Answer
It is more that you really have to have an IP strategy and know what you want to do to support your designs. Social media, as well as other mediums, allow one to promote one’s designs to a much wider audience. That in itself opens up more sales avenues. If you are copied then you are clearly producing what people like but it is how you react to the copying that is key. If you create a strategy one of the things you should adopt is clear communication as to what is yours and what others can or can’t do with your work and understand what the impact will be, if any, on your business. If you let the concern of copying outweigh the benefit then you will not sell and that is a detriment. Be positive, have confidence in your creations and do so alongside a clear and thought out IP strategy.

Question 4
There are now many opportunities for designers to provide their designs direct to consumers on Society6 and other similar platforms. How is ACID adapting their offerings to protect creatives? How can creatives protect themselves on these platforms?

Answer
I don’t have any knowledge of Society6 but platforms like those have been around for many years, particularly photo libraries which are very prevalent. I have personal experience of working with art and card libraries and what you need to be clear before you sign up is what they will do and what they expect you to do. The art house licences the image and then sub licences it on for a fee; they keep a proportion and pass the remainder back to the artist. What you need to understand is what other
services they will provide; those that I have worked with have undertaken the enforcement on behalf of the artist for instance. So it is simply the case that if you are thinking of licensing your designs in this way that you establish what services will be provided by the house in question.

Question 5
A fast fashion designer told me if designs are changed in 8 (or maybe 9) ways it’s considered different enough to be unique, and so can be used without causing infringement. Is this true?

Answer
It’s just simply not true. The test for infringement is, in layman’s terms, ‘is the design being complained of the same or similar enough to amount to an infringement?’ You can make 1 change and it can be fundamental enough to amount to a new design or you can make any number of changes and the fundamentals of the design haven’t changed. If you look at the Fiesta example from the talk, the ornate tiles, there are much more than 8-9 differences and you can see that the complained of tile is substantially the same and as such, a copy.

Question 6
Where do we stand on people copying concepts? We produce an illustrated artwork featuring your own personal car history under our brand Carvolution® at www.yourlifeincars.com – We have a number of people copying us but one in particular copies our concept and pricing structure. How do we combat this?

Answer
Concepts are covered by patents; what copyright and design cover is the expression of the idea. I have had a look at your web site. What you won’t be able to stop is someone creating a business on similar lines; a pictorial history in a mounted frame. What you may well be able to stop is if others undertake their business in a similar way. I see you have a registered trade mark (well a series of 4) and so if someone uses that name or something confusingly similar then you can take them to task over that. If they copy the way you have drawn the cars (subject to them being your own creations), copied the text of your site or even the layout of the offerings then you may well be able to enforce your copyright. And if they use the look and feel of your business that may well give rise to a claim for passing off. What you can’t object to is someone selling images of the same subject matter. That isn’t protectable in itself.

Question 7
How do we check if a company name is available or already trademarked?

Answer
Company names can be searched at Companies House;
https://www.gov.uk/government/organisations/companies-house
Trade marks can be searched, in the UK, at the IPO
https://www.gov.uk/government/organisations/intellectual-property-office
The EUIPO has a much more comprehensive search facility;
https://www.tmdn.org/tmview/#/tmview
This gives search results from countries around the world. You should also do some unregistered searches to look for people who use a brand but don’t have it formally registered anywhere (so it’s not their company name nor a registered trade mark) as that can reveal names others are using which may lead to difficulty. All of that you can do yourself but if you want a more formal search, speak to an IP lawyer and they can arrange for searches (at a price) to be undertaken.

Question 8
Is a greetings card with an image on it, which is cut to make a 3D item or object a design right item, or does it come under artists’ (c)?

Answer
Copyright; it’s a work of art.

Question 9
I am starting my own fabric pattern design business. I am completely self- taught which is why I am less confident about protecting my own work as I don’t have contacts from university etc. Is the ACID membership the best/least confusing place to start for info and support?

Answer
Yes it is. There is a great community and lots of information and contacts you can tap into to help you in your venture, and to help you improve your confidence in what you are doing.

Question 10
Is it necessary to register each design or is it enough to add a copyright symbol on the images online?

Answer
It depends what you have and whether registered design protection will enhance your IP portfolio. You should really get an IP lawyer to look at what you have and ask them what they think is registerable and then work out what the cost benefit is to you.

Question 11
I wanted to know who uses the ACID Marketplace and how much traffic do you have.

Answer
Only ACID Members can display their products and designs on ACID Marketplace which is a free service. For safer online display or pre-launch of designs, the Marketplace allows you to upload images and descriptions of your designs and invite design buyers or other potential collaborators to register with ACID as a design buyer. They can then log in and view your designs – and their movements are tracked – so you always know who has viewed your designs. A great way of establishing a paper trail if you think you may need evidence at a later date. And another promotional tool for your brand. As a result of ACID Member feedback recently this will be developed to offer further trading benefits in 2021.

Question 12
What determines a “surface pattern”? Does it have to be a repeat ‘pattern’ like might be found on curtains or a bus seat, or does “surface pattern” apply to any image applied to a surface?

Answer
It applies to an image applied to a surface and is usually a copyright work. It does not have to be a repeat pattern.

Question 13
A Chinese company is selling one of my designs wholesale on the Chinese website AliExpress. I spoke to someone from the IP office who said because China is a different territory even if I had registered my design with the IP office they wouldn’t be able to do anything because a registration in the UK doesn’t cover a copyright infringement in China & you basically have to register with every single country in the world to be covered in that territory. Is this correct?

Answer
The IPO isn’t really there to give out practical IP advice. You should first try the site itself. It has its own complaints procedure at;
https://ipp.alibabagroup.com/?spm=a2g0o.ams_81407.0.0.e74aD1COD1COuZ
This gives a link to what we discussed in the presentation which is a take down notice. The Chinese get a bad press mainly for historical reasons. They are usually quite good at taking these matters seriously. If you don’t get anywhere contact A©ID and use the SnapDragon facility as they have the capacity to talk to this and other sites in their language. Hopefully that will resolve the issue for you

Question 14
Does being an Acid Member only work if you’re based in the UK? Are the designs registered only protected in UK or worldwide?

Answer
Registered rights are territorial. If you are looking to register your designs and you want coverage abroad, then you have to register in the territories you are interested in (the same applies for Trade Marks). So you will have protection in the territories you have registrations. However, do not confuse lodging files on the ACID IP Databank with having a Registered design. Designs can only be registered at an Intellectual Property Office. ACID supports unregistered rights with dated evidence of your creations, particularly for those that find the Registration fees expensive and prefer to use the IP Databank.

Question 15
I have just launched a new service of commissioned cake decoration at Jenncard Fine Arts UK. Could I advertise online for sale with impunity copyrighted images, for example, of Noddy and Tessy Bear?

Answer
The opposite I am afraid. You can’t use copyright works without the owner’s permission.

Question 16
I produce greetings cards. Can anyone sell products produced from original works of art which are out of copyright (i.e. beyond life plus 70 years)? I reproduce works by my father who died in 1986. Could I, for example, copy works by old masters like Leonardo da Vinci?

Answer
Yes you can; copyright has expired. Your Father’s works won’t expire until 2056.

Question 17
Could you clarify for reference the IP status of original work I might place on an Instagram or Facebook page?

Answer
If the work you place on social media is an original work and qualifies for, say, copyright protection, then the status doesn’t change; it will be a protectable original work.

Question 18
What advice can ACID offer individuals to ensure legal costs are kept to the absolute minimum in the event of a Passing Off or Infringement Claim.

Answer
Lawyers charge on a time spent basis. Work up a relationship with your lawyer where you are clear about what it is you want your lawyer to do and ask them how long they think a particular task will take. Ask them how much they think something will cost. But also understand that if you want something else undertaken outside of the scope you agreed you will incur further charges. See what aspects of the work you can undertake yourself and what work you require the lawyer to do. Ensure that you gather together all your evidence and examples of copying prior to contacting a lawyer so that you are prepared and do not waste time or cause delays through lack of evidence.

Question 19
Does ACID recommend to take out “Intellectual Property Protection Insurance” and is the insurance policy assessed for individuals or SME, or assessed on each separate design project and how do I assess the amount of IP Insurance protection required.

Answer
Yes, in short, if you can afford IP insurance we would recommend that this is taken up. However, premiums vary from company to company and it would be sensible to shop around to see what cover is available before you commit, as you would with, for example, car insurance. ACID has tried for many years to introduce IP Insurance, sadly unsuccessfully, because the premiums were too high and the threshold of acceptance for claims too difficult to navigate. However, we do keep researching this area because we believe it would make a significant difference in deterrence and prevention against IP theft.

Question 20
What would be the average cost from an ACID legal affiliate to prepare and send an initial claims letter?

Answer
It depends (there you go again) on what the question is and what it is that you are asking the Affiliate to do. It basically will be dictated by how much work there is for the Affiliate to undertake. Costs will also vary depending on the legal team you approach but all ACID Legal Affiliates offer discounts on fees for ACID Members who enter into a client relationship after their period of initial free advice.

Question 21
Do ACID Legal Affiliates offer a win fee / success fee scheme?

Answer
No. No win no fee and related schemes are common in areas of law where there is a high volume of claims and where there is a significant defendant who will pay if they win and where the lawyer can make a profit on that claims volume where the costs are usually low. Areas where such arrangements are common are Personal Injury (Defendants are usually Insurance companies, government organisations of some sort) Medical Negligence (NHS) and Road Traffic Accidents (Insurance Companies). In such arrangements the lawyer takes the risk that they won’t get paid, usually for an 18 month period but once they reach that threshold the volume of claims will be such that delay in payment will be worth the delay. There are far, far fewer IP claims than in those areas. So in those circumstances a lawyer will require that you pay normally double the hourly rate if you win. You will only be able to recover from the opponent the normal hourly rate which will leave a significant shortfall. There are also restrictions in a lot of IP cases over what can be recovered from the opponent as most claims are IPEC claims where recovery is restricted to £50,000 maximum. So you may end up with a huge bill significantly higher than normal which is what you were probably trying to avoid in the first place.

Question 22
Do ACID Legal affiliates have any association with either a) The Intellectual Property Enterprise Court (IPEC) pro-bono scheme b) Chartered Institute of Trade Mark Attorneys (CITMA) Intellectual Property Office pro-bono Scheme?

Answer
Not as far as I am aware, The schemes tend to be ‘sign posting’ schemes so formal representation is not offered and there are restrictions on who they will help; so if you turnover more than 100k for instance the IP Pro Bono scheme won’t help you at all. You can find out more about this option here;
https://www.ipprobono.org.uk/#

Niall Head Rapson
Director, McDaniel & Co
www.mcdanielslaw.com