UK: Criminalising The Copying Of Designs

Last Updated: 16 July 2014
Article by Nick Kounoupias

It was George Orwell, in his iconic book Animal Farm, who claimed that all animals are created equal, but that some are more equal than others. And so it is with Intellectual Property rights – for whilst creators such as songwriters, journalists, painters and designers should in theory all be afforded equal protection before the law, this has not been the case for many years.

Unfortunately, furniture designers simply do not possess the same legal protection as the others. However, there is some good news on the horizon, and this discrepancy will be reduced – although not completely eliminated – by the introduction of new legislation in the shape of the IP Bill, which is currently awaiting Royal Assent.

The legal regime for the protection of designs in the UK is very complicated, but in essence furniture can be protected under UK and EU law as either a registered or an unregistered design. Most new furniture is protected in law as an unregistered design. Three-dimensional industrially-produced designs are protected by these design laws, whereas the drawings and design documents from which they are made are protected by copyright law, which generally offers far stronger protection.

For many years, this has created a curious anomaly which has still not been fully addressed in the IP Bill. If a competitor copies drawings of furniture or design documents they will be infringing copyright laws, and in certain cases infringing copyright can be a criminal offence.

However, if the competitor instead attends an exhibition and views the new furniture there and then copies the finished three dimensional product, then it is infringing a design which is protected by design laws, whether registered or unregistered. Whilst the IP Bill will for the first time make it a criminal offence to copy a registered design in certain circumstances, it will not do so for unregistered designs.

Anti-Copying in Design (ACID) and DMH Stallard have been campaigning for many years to address this anomaly, and the IP Bill goes some way to redress this wrong. Although the implementation date is not fixed yet, it is likely that from 1st October 2014 intentionally infringing a registered design and producing a copy that differs from an original in only immaterial respects will become a criminal offence, punishable by up to 10 years in prison.

This is a significant development for designers, but for the time being the change in the law will only assist those designers who have registered their designs at either the Intellectual Property Office in England or at the Community Design Office in Alicante.

Registration gives added protection including a longer period of protection, but it comes with a cost for registration, which is payable to Government. The cynic might suggest that the only reason that the Government has chosen to extend the protection of the criminal courts to registered designs but not to unregistered designs is to encourage registration and so gather in more fees. However, whatever the reason, the changes only offer a partial solution to the problem faced by furniture designers.

We have never come across a case of design copying where the drawings or design documents were used to create a competing product. In every case the infringer takes the finished product and copies it, perhaps in the process trying to make sufficient changes to it to argue that it has created a different product. It seems odd, therefore, that the criminal offence of copyright infringement is committed in unrealistic circumstances, whilst the true harm is not criminalised.

Whilst we welcome the criminalisation of registered design infringement, the vast majority of new furniture is not registered and is thus protected only by unregistered design right, and not protected by the criminal laws at all. Flagrantly infringing a creation protected by copyright or trade mark law in full knowledge of the infringement constituted a criminal offence punishable, in theory at least, with a prison sentence of 10 years. However, copying a design was something that only the civil courts could deal with.

Not everyone is enthused by these changes. Some sectors of the design industry – mainly retailers but also, surprisingly, iconic design companies – have complained that these changes to the law will criminalise them. If that which they are doing constitutes flagrant copying and the theft of competitors' designs, then frankly we see nothing wrong with them facing the full weight of the criminal courts.

Another concern is that these changes will provide a charter for small independent designers to blackmail large companies with the threat of criminal action to get their own way. This is an unrealistic concern. The experience of those industries which are protected by copyright and trade mark laws suggests that prosecutions only occur where there is clear evidence of copying, and where it is in the public interest to prosecute.

Prosecutions only occur as a last resort, as in the criminal courts a case needs to be proven beyond all reasonable doubt, which is a justifiably high hurdle. Accordingly, prosecutions are only likely to be brought where there are realistic prospects of conviction.

Whilst these changes will benefit the furniture industry, they are only part of the solution. Not until all design theft is protected by the criminal law will designers achieve parity with their cousins in other IP industries.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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