I am a designer: what do I need to know about IP?
Published 16.05.11 at 14:42
Various aspects of a design can qualify for different IP protection. Below are the main IP rights that may be relevant to a designer's work:
- UK Registered Design
- UK Unregistered Design
- Registered Community Design
- Unregistered Community Design
Design rights deal with the way things look and with the appearance of a manufactured design. There are two categories of protection for design: unregistered and registered design rights. For any of these rights to arise, there needs to be a 'design' that is 'new' and has 'individual character'.
The scope of protection differs, with Community Design Rights providing protection across the whole of the geographical EU rather than just the UK.
Does my design need registering?
Some 3-dimensional shapes and configurations get automatic protection from being copied. These unregistered design rights which only apply in the UK last for a maximum of 15 years.
Community unregistered designs protect the lines, contours, colours, texture and materials of a design. They last for 3 years and are intended to be used to protect registrable designs in the period prior to registration. However, it should be borne in mind that both UK and Community unregistered design rights protect only against copying. If a competitor can show despite apparent similarity that it created its design independently, then it will not infringe an unregistered design right.
For further information on unregistered design rights please read our factsheet: http://www.own-it.org/knowledge/unregistered-designs
Registering your design can provide additional cover and gives the registered proprietor the exclusive right to use the design. The owner can take action against any use of the design whether or not the infringer knew of the design. Both Community and UK Registered design rights enjoy up to 25 years of monopoly protection (i.e. it is unnecessary to prove copying).
How do I register my design?
For a UK registration, the design must be registered with the UK Intellectual Property Office (the "UK IPO") within 12 months of the design being marketed. An application form must be completed including a filing fee of £60 for a single design.
The application process requires submission of illustrations, which will be recorded and used to prove the design is unique. The UK IPO has published a useful booklet explaining the process which is available online at: http://www.ipo.gov.uk/d-howtoapply.pdf
Alternatively you can apply to the Community Design Registry in Alicante, Spain (the Office for Harmonisation of the Internet Market, or "OHIM") for a registered Community Design. Further information is available from OHIM's website at: http://oami.europa.eu/ows/rw/pages/index.en.do
Who owns the IP rights?
In the UK, Ownership is the same for both registered and unregistered designs. The rule is that first ownership belongs to the 'author' i.e. the actual designer. However, if the design is created in the course of employment, the design belongs to the employer. Similarly, if the design is created as a result of a commission then the ownership belongs to the commissioner, not to you.
However, in contrast to UK law, where a Community design is created in pursuance of a commission, the commissioner will not be the first owner of any design right, ownership rest with the 'author' i.e. the actual designer. This highlights the need to ensure that outsourced designs are clearly and expressly covered by contract. Without a clear contract, Community design right in a given work may well end up in different hands to UK registered or unregistered design right in the very same work.
In addition to design rights, a designer's work may also attract copyright protection. Copyright operates to protect physical results or expressions of creative ideas, rather than the content of these ideas.
What does copyright cover?
The work must be 'original' and not copied from somewhere else. The following works are covered by copyright protection:
- Literary work - any piece of writing
- Artistic work - photographs, collage, paintings, drawings, diagrams, sculptures
- A work of artistic craftsmanship is a three-dimensional item which is not a sculpture, but which results from a combination of artistic and craft skills (e.g. hand made furniture). The intention of the designer is an important factor i.e. did you intend to create an artistic work art rather than a purely functional item? Most industrially manufactured items will be considered to lack any craft skills.
Do I need to register in order to have copyright protection for my work?
It is not necessary to register your work to benefit from copyright protection; once your idea is put down on paper or is made into something tangible, copyright may automatically arise to protect the way in which that original idea has been expressed.
Generally, the person who created the work will be the first owner of any copyright attached to it. However, if the work was created in the course of employment, your employer will be the first owner of any copyright attached to the work, unless you and your employer agreed otherwise.
If the work is commissioned then copyright rests with the author, not with the person commissioning the work. A properly drafted agreement would include a clause providing for an assignment, or license, of the copyright to the commissioner. In the absence of such a clause, a licence may be implied by the courts as otherwise the commissioner would be prevented from using the work he/she has paid for. Joint ownership of copyright will occur if the work was created through collaboration, provided that the contribution of each collaborator is distinct from one another.
How long does copyright protection last for?
Copyright protection usually lasts for the creator's lifetime plus 70 years after the creator's death.
If the design has been mass-produced industrially i.e. made into more than 50 copies, the period of copyright protection is limited to 25 years.
NOTE: It is very important to distinguish between copyright and design right work - it will determine, who owns the rights to the work when a designer is commissioned and how long the work is protected. Read our article on Copyright or Design Right? for further information.
Once you start marketing your designs, trade marks will play an important role in establishing your brand identity in the industry and protecting the goodwill and reputation that you have built up for your design business. Further information on trade mark creation, management and protection is available on the Own-it website at:http://www.own-it.org/knowledge/what-is-a-trade-mark. Information on how to register a trade mark in the UK is available on the UK IPO website at: http://www.ipo.gov.uk/types/tm/t-applying.htm
How do I prevent or deal with infringement of my IP rights?
If you find that someone else is infringing your IP rights, it is always advisable to obtain legal advice. In the first instance, you may send a "cease and desist" letter to the person in question, detailing your ownership of the IP rights and the alleged infringements. If the infringement continues, you might be able to initiate legal proceedings, depending of course on the individual circumstances.
Confidentiality agreements may also offer a degree of protection in certain business situations e.g. where you may present your work or design to potential business partners. A confidentiality (or "non-disclosure agreement") is a legally binding agreement between you and the other parties that they will not disclose, or use the information that you have provided (i.e. key features of your idea) for unauthorised purposes. Own-it members can download standard form Confidentiality Agreements from the Own-it website.
As copyright and unregistered design rights arise automatically (i.e. there are no registration requirements) there is no central register stating when or if a work obtained protection. It will be up to you to keep good records which help prove that (i) protection exists; and (ii) you own the copyright / design right. It is good practice to keep records of the development of your designs, in case any disputes may arise in the future, for example, when you may need to enforce your unregistered rights or copyright against someone else, or when you are faced with potential claims.
Practical steps you can take include:
- keep a document trail that records the creation process. This is important to show the existence and ownership of rights in the original work. A good document trail will show the originality of the work, record the date of first creation and reveal any subsequent amendments. It should also demonstrate how the idea evolved into a tangible product.
The types of documents that might be produced during the creative process could include:
- sketch books which date and demonstrate the evolution of the design;
- notes / records of meetings and attendance notes of significant telephone conversations which relate to the design process (if any); and
- copies of emails, letters, faxes and handwritten notes which suggest amendments and/or improvements
How do I profit from my IP rights?
You can either sell or license (for a fee) your IP rights, allowing others to use the designs. See How Do I Profit From My IP?
Content supplied on behalf of Own-it by College of Law students at the Moorgate Centre supervised by a lecturer at the College of Law's Moorgate Centre.
Photo/Design: some rights reserved by 8BitKid
Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.