The law has yet to establish a foolproof way of protecting ideas and designs. The conundrum facing designers is that once the design is recorded, ideas are then easy to copy. There are a number of different legal mechanisms for protecting designs, namely copyright, design right, rights in unregistered designs and confidential information. We will examine each of the mechanisms for protecting these legal rights in turn and then highlight some practical steps to help you protect your designs.
Copyright law protects the recorded form in which a work exists, not the idea itself. In order to enjoy copyright protection the work must be original, so not copied and created by the author’s own skill and effort.
Copyright protection arises automatically on creation of the work and no registration is required.
Copyright can protect classical works such as graphics and works of artistic craftsmanship, as well as all or certain features of 3D objects, generally regardless of their artistic quality.
Designs of any industrial or handicraft item other than a computer program can be registered. A registered design can cover both the shape and surface decoration in addition to any aspect of the appearance of a product.
The whole of a product need not be registered as a design. Expressly included in the definition are packaging, graphic symbols and typefaces.
For a design to be registrable, it must be novel and have an individual character. A design is novel provided no identical design or immaterially different design has been made available to the public before the application date. A design has individual character if the overall impression it creates on the informed user differs from the overall impression produced on such a user by any design already made available to the public.
Applications for registration of the design are made by filling out an application form, available from the UK Patent Office.
Unregistered design right
A design or part of a design may be protected by unregistered design right if it satisfies the following criteria:
the design is an aspect of shape or configuration, whether external or internal, of the whole or part of an article
the design is original
the design is not commonplace in the design field in question
Certain aspects of designs are excluded from protection, for example, surface decoration, designs which embody a method or principle of construction, and designs which ‘must fit’ or ‘must match’ another article.
Unregistered design rights arise automatically without the need for formal registration. However, in order to be protected the design must be recorded in a document or made into an article.
Parties can agree expressly (or implicitly) that information must be kept confidential. Courts will generally support obligations of confidentiality if the information is not publicly known and if the recipient has suggested that he would keep the information confidential. This allows designers scope to protect ideas.
Practical steps to protect designs
Designers should first establish what rights exist in a design and who owns them. For copyright the owner is generally the person who creates the work (unless he does so as an employee), whereas for both registered and unregistered designs the commissioner or employer will generally be treated as the first proprietor.
Ownership of these rights can be varied by an agreement in writing between the creator and the commissioner and further complications exist in an employment relationship. Therefore, it is always best to define the ownership of any designs with a commissioner before undertaking any work.
If a dispute on ownership arises you will need to demonstrate who created the design and when. It is therefore useful to maintain written and dated design documents. This really should include design documents relating to designs that were not developed, as this may help prevent others creating designs very similar to yours.
Disclosing ideas to third parties
On disclosing any copyright-protected design to third parties you should apply a copyright notice into the design as follows: [copyright proprietor] [year of first publication]. This notice will serve to put third parties on notice that the work may be protected by copyright and that you are the owner of the work, making legal action (or threats) easier.
Under registered designs, it would be advisable to mark your design with the registration number so that again the third party is put on notice of the right protecting the design. A designer can now disclose their designs for marketing and other purposes within the 12 months before applying to register the design, without harming the novelty requirement. Therefore, if you believe that your design meets the requirements for a registered design but you do not wish to register the design as yet, you can market the design without damaging the possibility of any subsequent registration.
It is important to note that disclosures made under express or implied conditions of confidentiality do not count against the novelty requirement, so it is always best to maintain confidentiality when making any disclosure.
One of the most important and effective protection measures is to enter into a confidentiality agreement before disclosing any design details. This should ensure both written and oral disclosures are treated as confidential.
In order to maximise your protection under any of the legal rights above, it is always advisable to ensure that you own the rights, you maintain a record of the design process, any disclosure of a design is in some permanent form and you keep a copy of everything that has been disclosed (including records of when and to whom).