Original or Copy? Don’t take chances!

Anti Copying in Design (ACID) celebrates its 25^th anniversary this year and over the years at our IP clinics we have heard some corkers, myths and misunderstandings about intellectual property and design.

The most common is the misconception that if you alter or adapt an original design by a number of changes or a percentage of changes it becomes a new design. This is completely WRONG! We call this our worst “howler.” The reality behind carrying on a design strategy, thinking you can do this without consequences or legal challenge is foolhardy.

Case Study

Only the other day a potential corporate member was describing their business, which had grown exponentially, and how their company prided itself on its business model of sustainability, diversity, and transparency. By speaking to ACID they wanted to check their understanding of IP law so that they were compliant and ethical.

They described their current design process, which was to select designs from a supplier catalogue, in this case a Chinese supplier, make a few changes and proceed to manufacture, marketing and selling their “new” design under their own brand. We suggested that as this is completely contrary to our ethos, ACID membership was not for them if they wished to continue this business model.

What was ACID’s advice?

• We advised them against this strategy as it could lay them wide open to challenge from the original designer and, if it was a registered design and there was intentional copying, under criminal law if a registered design is used without the owner’s permission it could amount to a criminal offence. Individual directors can also be liable. A criminal record is not desirable for any company director and could seriously affect their future employment. Unregistered design infringement is not a criminal offence and is dealt with under civil procedures.
• There are many talented and innovative designers in every sector who are the zeitgeist for tomorrow’s successful products. So why not seek out a designer, brief them on what you want to create, pay them a design fee, register the design, ensure the IP rights are assigned to you and in return arrange a licence/royalty fee in an agreement with the designer for every product sold. In this way you tick all the CSR boxes:

• Tangible supporting of original design.
  • Giving opportunities to British designers.
  • Mitigating any legal challenges if the criteria for original design are adhered to.
  • Outwardly supporting IP respect, ethics, and compliance.
  • Its win-win, all around.
  • The more successful the design, the more each party is recompensed.

What is the legal rationale behind the myth?

In the case of 3D designs, It is not the number or percentage of changes that somebody makes to a design, but the importance of the elements which they have taken from the design which is important in deciding whether they have infringed rights in a design. This will always vary from case to case. Ultimately, a Judge will determine each case based on whether it creates a similar overall impression to the informed user. The test for whether a design infringes a registered design is whether it creates the same overall impression as the registered design on the informed user. It is not simply about counting the number of elements of the design which have been reproduced or changes which have been made to it.

In the case of 2D designs, copyright infringement occurs when someone copies a substantial part of a copyright protected work without the consent or authorisation of the copyright owners. In other words it could be a very small part of the whole copyright work but if it is a substantial part, it is an infringement. Again, this will always vary from case to case, so the test is not quantitative but qualitative.

Do you want to sign up to the ACID IP Charter, standing up for respect, ethics, and compliance. Then why not sign our Government endorsed ACID IP Charter now?