Copyright or design right?

Many designers assume their creations will be protected by copyright. Simon Clark points out the latest issues and gives advice

So you thought your designs were protected by copyright? A recent High Court decision has highlighted the limited protection available to product designers under existing copyright laws. While the case concerned the protection of designer clothing, the potential ramifications extend far beyond clothing designers and could affect designers of any three-dimensional product.

Many designers assume that their creations will be protected by copyright. In fact, the amount of protection available varies widely. For example, graphic designers will automatically obtain copyright protection for any two-dimensional design they create regardless of the quality or artistic merit of the resulting design. That copyright protection will last for 70 years after the death of the designer. No problems there. However, the designer of a three-dimensional product can only obtain copyright protection for their design if the court decides that it is “a work of artistic craftsmanship”.

If no copyright protection is available, then the designer must fall back on design right protection. While this offers much the same protection as copyright, in most cases, it only lasts for ten years after the design was first marketed. Worse still, anyone can copy that design during the last five years of that protection period, provided that they agree to pay the designer a reasonable royalty on their sales.

For product designers, who can typically spend three years developing a design from initial conception to launch on the market, five years is an extremely short period of time in which to recoup that investment and make a healthy profit.

After five years, the designers’ competitors are entitled to compete with an identical product, but without any of the development time and expense.

So what is a work of artistic craftsmanship?

As we saw above, for any three-dimensional product design to be protected by copyright as opposed to design right, it must be a work of artistic craftsmanship. Many designers would assume that their designs naturally fall into this category. Unfortunately, the courts do not appear to agree. Cases which have had to consider this issue are few, but in February a clothing designer asked the court to decide whether her clothing designs were, in fact, works of artistic craftsmanship.

Case study

Shirin Guild vs Eskandar Nabavi

Shirin Guild and Eskandar Nabavi were both interested in designing clothing based on the large, square styles worn by Iranian peasants. In 1991 Guild, who had had no previous experience in the production of garments, formed a partnership with Eskandar Nabavi to produce a range of luxury ladies fashion garments. The garments were almost 1m2. While the designs were of a simple shape when laid out flat, when worn they draped and flowed around the body of the wearer.

The parties soon fell out with each other, and Guild subsequently accused Nabavi of making garments for his own range which were copies of her designs.

In support of her argument that her designs were works of artistic craftsmanship, Guild told the court that each of her garments sold for about £1000, and that samples of them had been exhibited at the Victoria & Albert Museum. However, the judge was not persuaded, and found that because of the simplicity of their shape and the fact that the garments were mass-produced, they were not works of artistic craftsmanship.

Having decided that the garments were therefore not protected by copyright, the judge found that they were protected by design right, and that Nabavi must have copied Guild’s designs because of the substantial similarity between their respective garments.

However, because her designs were created in 1991, they were now within the last five years of design right protection. This meant that she could not stop Nabavi from continuing to sell copies of her designs, subject to his paying her a royalty on each garment sold.

What does this mean for other designers?

The judge appears to have been influenced by the very simple nature of the designs. But many designer garments are of a simple design – it is their originality and aesthetic appeal that makes them attractive, rather than the complexity of design. Why should the simplicity of a design have any bearing on whether or not the article is a work of art? Why should even a random scribble on a piece of paper (being two-dimensional) attract the full protection of copyright, whereas a luxury designer garment costing £1000 only receives five years protection under design right?

The judgement will have an effect far beyond the field of clothing designs. Exactly the same issues apply to any three-dimensional design. It may be that the case can be distinguished on its facts, and that a designer with more experience who designs a slightly less simplistic design will persuade a judge that his or her creations are works of artistic craftsmanship. But until another designer is brave enough to bring a case to court, the prudent designer should be aware that they may only have five years in which to exploit their designs before cheaper, lower quality copies flood the market.

Advice on protecting your designs

Designers can extend the protection afforded to their designs by obtaining Registered Designs at the Patent Office (www.patent.gov.uk). Registered Designs can be obtained for any new design which has some element of eye appeal. The advantages are:

Protection can be obtained for up to 25 years

There is no need to prove that an infringer has copied your design – as long as the other design is very similar to the registered design, it makes no difference that the similarities are purely coincidental

Putting the registered design number on the article and on packaging can act as a deterrent against copying

Simon Clark is a partner in the Intellectual Property Department at Theodore Goddard. He is also a director of the design trade association, Acid (Anti Copying In Design)

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