Copyright enforcement is expensive and inconvenient. Businesses can, however, take steps to prevent copying, or at least to give themselves a good chance of succeeding in and minimising the cost of any litigation
But that’s not the only challenge they face…
There is a fair bit of confusion within the design industry as to what professional advice is available to it in the UK. This is often a function of confusing terminology adopted by the professions.
In the United States and in many other English-speaking countries, 'attorney' is a generic term referring to any legal adviser, whether involved in providing commercial advice, litigation advice or in filing and prosecuting trade mark and patent applications.
In the United Kingdom the legal world is broken down into a number of separate professions. 'Lawyers' are either 'barristers' or 'solicitors'.
- Barristers principally undertake advocacy in open court and occasionally advise on complex points of law.
- Solicitors also undertake advocacy, but more rarely do so in open court. Solicitors provide advice in relation to the negotiation and drafting of commercial agreements and the strategic and procedural aspects of disputes and litigation. They liaise with barristers on more complex points of law and instruct them to undertake open court advocacy where appropriate.
- A further profession is 'trade mark attorneys' and 'patent attorneys'. Confusingly (in view of American terminology), these are not lawyers in the conventional sense, but members of a separate profession qualified to draft, file and prosecute applications for trade marks, patents and (usually in the case of patent attorneys) registered designs. Their practices in most cases are run separately from solicitors and barristers and do not include commercial or licensing advice or litigation.
- For a design company, this fragmented profession offers a number of difficulties in seeking legal advice. They will require assistance with trade mark or patent and design right applications (the province of trade mark and patent attorneys), but will also want strategic commercial and possibly litigation-related advice from a solicitor. In some cases the advice of a barrister alone would be desirable, particularly for a business relatively sophisticated in its legal processes and able to identify where a specialist barrister-specific input would be necessary.
- Recent changes in the legal professions have made the task of the design sector slightly easier. Law firms are increasingly offering 'one stop shops', where the services of both solicitors and trade mark and patent attorneys are offered under one roof. Also, the Bar Council (the governing body for barristers) has recently voted to change its professional procedures and allow clients to instruct barristers without having to instruct an intermediary solicitor who will in turn instruct the barrister. Barristers will still be limited to advocacy and advisory work, so for complicated and lengthy cases a solicitor would still be required.
For any particular queries about choosing advisers, it is often a good idea to start at the relevant governing bodies. For solicitors this is the Law Society, for barristers the Bar Council, for trade mark attorneys ITMA and for patent attorneys CIPA.
Rights owners are now making provision to safeguard their property rights before their products are even marketed: a kind of pre-emptive protection. For example, technology exists for websites to prevent their property being unlawfully downloaded. Websites involved in the sale of images (posters, art prints) can prevent users on the website from downloading the JPEG images of the prints that they are selling, so that users cannot make copies of the images for free, protecting the website's revenue. A good examples is The New Yorker magazine's www.cartoonbank.com. Also, record companies are now releasing CDs containing microchips, to prevent the CDs from being copied or uploaded onto the internet.
Most design products don't lend themselves to the kind of measures discussed above, however, and if material is being pirated there can sometimes be no option but to go to court.
To strengthen their case, should they need to resort to legal action, businesses dealing in certain types of design products 'plant' evidence in what they sell. For instance, it is now common for software-based products to contain lines of dummy code. This is code which serves no functional purpose, and so its presence in an alleged pirate copy will catch out any defendant claiming that they wrote the code from scratch.
Traditional means of pre-emptive copyright protection are still in use as well. The Ordnance Survey map company makes minute errors in its maps as a means of helping to prove whether another company has copied its maps. This proved helpful in its recent litigation with the Automobile Association.
Design businesses face a challenge in determining the best time at which to disclose or go to market with products. What is desirable commercially can be inadvisable legally.
Early marketing of products or disclosure of work in progress can undermine legal protections for designs. Placing matters in the public domain will often prevent patent or registered design protection being granted.
New laws on registered designs allow designers a 12-month grace period in which to 'road test' their designs on the market before applying for registration. This allows designers to market and test designs without incurring the costs of registration, as well as the wasted costs of registering unprofitable designs, without losing their ability to register their rights at a later date.
Similar provisions do not yet exist in relation to patents, so potentially patentable 'inventions' (see the 'Overview' section) should be protected by a patent application before they are launched. Any pre-launch disclosure (to prospective marketing partners, development collaborators, etc) should be subject to signature of a non-disclosure agreement (NDA), or at least subject to clear oral indications that terms of strict confidentiality will apply.
Larger businesses are increasingly refusing to sign NDAs. They see a risk in accepting restrictions in relation to ideas and products which they may ultimately reject and do not want to lend documentary weight to claims arising from (sometimes long-forgotten) former pitches, alleging copying or unauthorised use of ideas.
Designers have to strike a balance between disclosing enough of their idea to attract third parties and withholding enough to retain the core confidentiality necessary for legal and commercial purposes.
An analogy is to be drawn here with the strategies adopted by designers (whether product designers or branding consultants) asked to free pitch. A written pitch will frequently comprise sufficient information to establish the nature and merit of a design (or the designer's capacity for achieving an end product), without, it is hoped, making the potentially compromising disclosures that a creative pitch might involve.
The practical and financial challenges of establishing and enforcing intellectual property rights in one territory (country or group of countries) become magnified when the relevant area takes in different jurisdictions.
Establishing rights overseas involves a concerted strategic approach and should ideally be undertaken with professional advice. Using 'priority periods' (see 'Glossary'), it is possible to spread the cost and administrative effort of establishing patent, registered design or trade mark protection over a number of jurisdictions. The net effect will, however, be broadly the same, in that filing and prosecution costs in one territory will be payable in every other territory where protection is sought.
There are mechanisms for obtaining 'once and for all' protection over wider territories, such as the European Community Trade Mark. Similar provisions for establishing European Union-wide registered designs and patent protections are on their way, although in the latter case this remains at a very early stage.
Even having established intellectual property overseas, enforcement presents a challenge for rights holders.
If a suspected infringement takes place in a territory where the rights holder has no active presence, it may be some time before that infringement comes to its attention. Delay in enforcement will always lessen the scope of remedies available and may in the worst case offer the infringer a defence on the basis of some form of 'honest concurrent use' of property.
The solution for some rights holders is to establish infringement watch services in different jurisdictions, and these are offered by numerous agencies at relatively low cost.
Once an infringement is identified, the practical task of enforcing rights overseas can be daunting. Foreign legal advice must be sought and unfamiliar cultural and legal systems contended with. Despite conventional perceptions, the legal system in the UK is fairly quick and efficient compared to that in other territories, and rights holders are often frustrated by the slowness of courts (and lawyers) overseas.
Assuming judgment can be obtained in favour of the rights holder binding on overseas infringers, the ultimate challenge is to ensure that that order is complied with. Policing infringement and bringing to bear court sanctions in remote parts of the world is, again, costly and difficult and rights holders will often have to rely on third party agencies and professionals to attend to this.
In practice, it is often only the largest organisations which can effectively run a global design protection strategy, and smaller rights holders are advised to seek legal help at an early stage to identify where rights protection can be maximised, with an eye to managing the legal and administrative burden.
For some designers, licence or joint venture arrangements with larger companies can offer access to a more established global rights protection and enforcement infrastructure.