Do you design products or packaging? Following a recent High Court decision (in a case brought by Lambretta1), now is the time to review your strategy to achieve maximum value for your business. The Lambretta decision has implications for all product/packaging designers, particularly those whose designs include "surface decoration" (such as clothing, ceramics or packaging designers).
What legal rights might protect my designs?
Your designs may be covered by one or more of a whole "family" of intellectual property rights. Some of these rights need to be registered, including registered designs and patents. Other rights may arise automatically, including copyright and "design right".
Historically, designers relied on copyright law to prevent unauthorised copying of their articles. However, that changed with the introduction of "design right" in the Copyright, Designs and Patents Act 1988.
Design right protects an original design of any aspect of the shape or configuration of an article. It comes into existence as soon as you either record your design in a "design document" (such as a drawing or photograph) or make an article to the design. Design right gives you a right to prevent copying of your designs for 10 years from first marketing. However, not every design, or every aspect of a design, qualifies for design right. For example, "commonplace" designs and "surface decoration" are excluded.
If your design is excluded from design right, can you rely on copyright to protect it? Following the Lambretta case, as a rule designers can no longer allege infringement of the copyright in their design documents. Design documents are only protected by design right, registered designs and/or other areas of law such as passing off and breach of confidence – not by copyright.
In the Lambretta case, Lambretta claimed that Teddy Smith and Next had infringed its design right and/or copyright in the design of a track top incorporating blocks of different colours. The Court held that there was no design right in the track top design (because it was "commonplace") and that it was not open to Lambretta to claim copyright infringement.
What does this mean for me as a designer?
Whenever you make a design (preferably, before you do so), ask yourself the following questions:
1. Am I making a "design" (meaning any aspect of the shape or configuration whether internal or external - of the whole or part of an article, but not including – amongst other things - surface decoration)?
2. If "yes", will my design attract design right protection?
3. If not, will it attract copyright protection? (Usually no – unless it is "art").
4. Is my design adequately protected? Should I consider registering it?2
Keep careful records and copies so that you can prove when your design was first recorded and when articles made from the design were first made available for sale or hire. This will be useful if someone challenges your rights in the design or if you believe your rights have been infringed.
Ensure you understand the potential protections available to your designs under UK law. If you do, and you act promptly and effectively, then UK law should still offer adequate protection to your original designs.
1
Lambretta Clothing Co Ltd –v- Teddy Smith UK Ltd and Next Retail plc2. See, Pictons' article entitled "Protect your logos and designs at a price you can afford".
©Pictons 2003. First published in Pictons' "In the Know" email newsletter.
Pictons Solicitors is regulated by the Law Society. The information in this article is correct at the time of publication in December 2003. Every care is taken in the preparation of this article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.
