Attack is the only form of defence

Designers must assert their intellectual property rights and be willing to fight for them

Having your designs ripped off is never pleasant and fighting back can be a daunting experience, but recent successes against intellectual property infringement should offer designers some cheer, even if the practice does not seem to be any less prevalent.

In recent weeks two more cases of alleged infringement have come to light. The UK’s biggest tourism campaign for years, UK OK, ran into accusations of plagiarism within days of launch when Sprout.uk.com founder Keith Williams pointed out he had won a competition to create a brand identity for Britain with a UK OK graphic last summer (DW 31 January). Bisque Radiators noticed something it thought similar to its Hot Spring radiator, designed by Priestman Goode director Paul Priestman, at a recent trade show and took immediate action to have it withdrawn from the show. Neither case is yet concluded. However, other cases have been concluded successfully.

Designer Nicola Barry’s company St Nicolas had supplied Christmas tree decorations to Harrods for many years when she confronted Harrods in 1997 for selling for what she considered to be a copy of a St Nicolas Christmas decoration.

Harrods responded by saying it would rework the decoration as a gesture of goodwill but, later that year, she discovered what she considered to be copies of three further St Nicolas designs.

Barry, with the support of trade association Anti Copying in Design and advised by Acid lawyer Theodore Goddard, wrote to Harrods to allege infringement of her intellectual property rights. It took Barry four and a half years to reach an out of court settlement amounting to £60 000 (DW 10 January).

Simon Clark, partner in the intellectual property department at Theodore Goddard, says Barry’s experience sends out a positive message to the design industry and a warning to companies that want to rip off designers’ work.

‘It’s possible to take on companies like Harrods, even as a sole trader, but be prepared to go the whole way,’ says Clark. ‘Had Harrods appreciated what it did was wrong it could have saved a lot of time and money.’

Further good news for designers is that the time it took to settle Barry’s dispute is exceptional. Few cases get to court and most are settled beforehand.

‘With most companies you can expect things to be resolved within days and weeks. Barry’s case says more about Harrods,’ says Clark.

Disputes that go all the way to trial take about 18 months. However, the cost can be prohibitive, particularly for independent designers, with a likely outlay of £50 000 to £100 000.

The importance of moving quickly in any dispute where infringement of copyright is alleged is highlighted by Bisque Radiators’ on-going tussle with rival distributor MHS Group.

Bisque saw the radiator made by Gruppo Ragaini exhibited by MHS at the Kitchens, Bathrooms and Bedrooms Show at the NEC Birmingham last month.

The design of the product, Hot Spring, is registered to Priestman. ‘I went to the [MHS] stand before the show opened and as far as I was concerned the [Gruppo Ragaini] product was a direct copy of Priestman’s design. [The MHS managing director] wouldn’t remove it so I felt under obligation to talk to the lawyers for

direct infringement of the design registration. MHS [then] agreed to remove it from the stand and stick labels across the product in all its brochures,’ says Bisque managing director Peter Peirse-Duncombe.

‘It was very good that we were able to act so quickly and is a good example of how design registration works,’ says Priestman.

The incident ends round one of the dispute, with Bisque currently seeking further assurances that MHS will cease selling the product.

An MHS spokesman says, ‘We are awaiting advice from our patent agents.’ No one at Ragaini was available for comment.

A quick and satisfactory result was achieved by designer Neville Brody in his wrangle with the FPO Vienna Party over its use of an image on a poster during the 2001 regional elections that was deemed ‘similar’ to an image created by Brody.

‘From when we raised the issue to the time the poster was withdrawn was around four weeks,’ says Keir Gordon, partner at Charles Russell Solicitors. FPO was forced to make a statement, published by the Austrian Press Agency, acknowledging it had not received consent to use the image.

Brody, as an international designer, was informed quickly of the use of the poster. ‘Small designers may be less fortunate as they would not necessarily be made aware [their registrations have been infringed]. Brody wanted to take a stance against infringement on behalf of designers,’ says Gordon, who acted for him.

Gordon says designers facing an infringement dispute should seek professional advice quickly. Acid offers legal advice through its website and has a legal hotline.

Steps to protect your ideas

While it is not possible to copyright an idea, there are steps designers can take to assert intellectual property over concept work:

Use Acid’s free central design registration database, which provides independent evidence of the date on which a design was created. Or post designs to yourself, but remember not to open the envelope.

Keep all original drawings, prototypes or samples and all those generated at each stage of the design process; sign and date them as they are created.

Make design drawings as detailed as possible and ensure that every aspect is included.

Provide a written record of how you came to an idea. Bullet point the creative process.

Use insignificant, but readily identifiable features in your designs to help trap copiers.

Add the following statement to pitch documents: All copyright, design rights in our designs and products and in the images, text and design of this website/presentation/brochure are and will remain the property of (name of designer/ creator). Any infringement of the rights will be pursued vigorously.

Members can add Acid’s logo, which can be hyperlinked to Acid’s website, www.acid.uk.com, to documentation to show would be copyists that you know your rights and are prepared to defend them.

Use a confidentiality agreement before any meeting to discuss design proposals and make it part of standard terms and conditions of business. If you are parting with ideas/designs/ prototypes without a meeting, make sure the recipient has signed an agreement first or send materials with a licence tape agreement, which is a special packing tape with a warning printed on it that the recipient is bound by the terms and conditions contained therein. Acid offers a re-useable generic confidentiality agreement for £40

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