What unregistered protection do designs have in the UK?

Unregistered UK rights

Copyright and UK design right are two unregistered rights that may be relied upon to protect designs in the United Kingdom. They both have a number of features in common.

Firstly, both copyright and UK design right may arise automatically once a work or design is recorded, and provided that certain qualifying conditions relating to nationality are fulfilled (the basis for qualification is narrower for UK design right). Secondly, both copyright and UK design right are only infringed by acts involving copying. This is in contrast to the protection afforded by registered design rights which can be infringed without any copying having occurred.

As details of copyright and UK design right are not recorded on a register, it is necessary in infringement proceedings based on copyright or UK design right to prove the subsistence and ownership of the right.

The criteria for protection by copyright or UK design right are different to the requirements for protection by a registered Community design, unregistered Community design or UK registered design. The interaction between copyright and UK design right is complex and we can advise on whether either of these rights are relevant in terms of offering protection for a particular design. However, for those who would like more information, this section provides a brief introduction to artistic copyright (which protects artistic works) and UK design right. Given the complex nature of the topic, this section is quite technical.

Artistic Copyright

Artistic copyright is a form of copyright. It subsists in original artistic works. It can arise automatically once an original artistic work has been fixed in a permanent form.

There are three types of artistic work: (1) photographs, sculpture, collage and graphic works such as drawings, paintings, plans, diagrams, engravings and etchings; (2) works of architecture such as buildings and models thereof; (3) works of artistic craftsmanship which can include items such as jewellery, cutlery, furniture, toys etc.

An artistic work is regarded as original if it has not been copied and a minimum level of skill, labour and judgement has been expended in its creation. For the first category of artistic works, there is no requirement for any level of artistic skill. For the second and third categories, a threshold level of artistic merit is required. For example, a drawing will be protected regardless of its artistic quality but artistic copyright will only subsist in a piece of furniture if is deemed to possess the requisite level of artistry (and craftsmanship).

The basic principle is that artistic copyright expires at the end of the seventieth year after the death of the author of the work. A different term may apply if the nationality of the author and the country of origin of the artistic work both lie outside the European Economic Area. However, if copies of the artistic work are made by an industrial process and marketed by or with the consent of the copyright owner, the duration of copyright protection will be considerably reduced. Articles will generally be considered to have been made by an industrial process if more than fifty articles are made. In these circumstances, the term of artistic copyright protection is reduced to twenty-five years from the end of the year in which the work was first marketed.

Infringing acts include making a copy of the whole or a substantial part of an artistic work. Copying can be direct or indirect, and includes making a copy in three dimensions of a two-dimensional artistic work, or making a copy in two dimensions of a three-dimensional artistic work. Remedies available include damages and an interdict to stop future infringements. An interim interdict may also be available.

From the above, it would be expected that making a three-dimensional copy of design depicted in a drawing, either directly from the drawing, or from a model made from the drawing, would always constitute infringement of the copyright in the drawing regardless of whether or not the design was for an artistic work. However, a decision was made that copyright should not be relied upon to provide “backdoor” protection of this type for three-dimensional design features of non-artistic works.

To this end, the Copyright Designs and Patents Act 1988 included a provision that it would not be an infringement of any copyright in a design document or a model recording or embodying a three-dimensional design for anything other than an artistic work, to make an article to the design, or to copy an article made to the design. Instead, a new right, UK design right, was introduced to protect three-dimensional designs for non-artistic works, and it is this right which tends to be more relevant than copyright in respect of industrial designs for items such as pumps, tools etc.

UK Design Right

UK design right subsists in original designs for the shape and configuration (whether external or internal) of the whole or part of an article (i.e. in original three-dimensional designs of the whole or part of an article). However, the following are excluded from protection: (1) surface decoration; (2) methods or principles of construction; (3) design features enabling an article to fit with another article so that either can perform their function (“must-fit” exception); or (4) design features which are dependant on the appearance of another article of which the article is intended to form an integral part (“must-match” exception) e.g. body panels for cars.

To fulfil the requirement for originality, a design must not be copied and must not be commonplace in the relevant design field.

UK design right comes into existence when a design is recorded in a design document (e.g. a blueprint, drawing, computer file or written description), or when an article is made to the design. The duration of UK design right is shorter than that of artistic copyright. UK design right expires either (1) fifteen years from the end of the calendar year in which the design was first recorded in a design document or an article was made to the design, whichever is earlier, or (2) ten years from the end of the calendar year in which the design was marketed anywhere in the world, if first marketing occurred within five years of the design first being recorded or made.

During the last five years in which UK design right exists in respect of a design, licences of right become available i.e. any other party is entitled to take a licence from the owner to make and sell copies of the design.

Infringing acts include copying a design so as to make articles exactly or substantially to the design, or making a design document in order to make such articles. Available remedies include damages and an interdict to stop future infringements. An interim interdict may also be available.

Relationship between Copyright and UK Design Right

Where copyright subsists in a work which consists of or includes a design in which UK design right subsists, copyright will take precedence over UK design right. It will not be an infringement of UK design right to do anything which is an infringement of copyright in the work. For example, an original sculpture of a hand will be an artistic work in which artistic copyright subsists. UK design right would also subsist in the original design of any aspect of the shape or configuration of the sculpture. However, as copying the sculpture would be an infringement of copyright, there will be no infringement of UK design right.

On the other hand, it is held not to be an infringement of copyright in a drawing of a non-artistic work, such as a pump, to make a copy of the pump from the drawing. As there will be no infringement of copyright, making a three-dimensional copy of the pump will infringe UK design right subsisting in the original design of any aspects of shape or configuration of the pump, and recorded in the drawing (design document).