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In our previous series of articles on the IP Bill we looked at Clause 13 which seeks to introduce criminal provisions in respect of registered design infringement. This section of the Bill attracted a fair amount of discussion since it was felt in some (many?) quarters that  the threat of criminal proceedings could be asserted via Clause 13 against designers which would have a “chilling effect” on the UK design industry.

As noted here, the IP Bill has now left the Lords on its way to the Commons and Clause 13 has been the subject of a massive amount of debate in the Lords and has been amended slightly during its passage through that House. So, what’s changed and why?

The last debates in the Lords on Clause 13 were on 23 July 2013 and 30 July and full transcripts can be found here and here. While the 23 July transcript is a lengthy document, it is quite an entertaining read and I’d encourage everyone during a spare moment to settle down with a hot brew of their choice and read it through. It is quite illuminating.

One thing that struck me when I read the transcript was the number of references to the “chilling effect” that criminal sanctions might have on the UK design industry. There are 9 separate references in the transcript!

It is worth reminding ourselves of the impact of Clause 13. As Lord Stevenson of Balmacara stated:

“Clause 13 introduces two offences: unauthorised copying of a registered design, and dealing with unauthorised copies. Although these provisions have been welcomed by a small number of sectoral groups, the vast majority of businesses and representative bodies strongly oppose the introduction of criminal sanctions for design infringements.”

That just about sums things up! What I found interesting came next when Lord Stevenson noted that many members of the Lords had received a letter from Sir James Dyson.  To quote from the letter, Sir James wrote:

In the law relating to copyright, acts of unintentional infringement are excluded from criminal sanctions. In the proposed clause of the Intellectual Property Bill relating to registered design infringement, the same is not true. If this Bill is passed unamended, innocent designers will be threatened with criminal proceedings. It is wholly wrong that a designer should go to prison for unintentional infringement. The current wording of the Bill does not exclude that possibility.

And:

I have spent decades fighting to protect my ideas; taking on competitors who have flagrantly copied my patents and designs. I abhor intellectual property infringement. It is something I feel passionately about. But the Intellectual Property Bill’s inclusion of proposals to criminalise infringement of registered designs is a serious mistake.

Strong words and opponents of Clause 13 may have hoped that this could sway matters. However, it seems that Lord Leckie was not for turning and so the debate moved on and instead of removal of Clause 13 from the Bill, an amendment to Clause 13 was proposed and added to the Bill.

A before and after comparison of Clause 13 shows that Clause 13(5) has been amended to read:

(5) It is also a defence for a person charged with an offence under this section to show that the person did not infringe the right in the design

(a) did not infringe the right in the design, or

(b) reasonably believed that the person did not do so.

and a new Clause 13(6) has been added which reads:

(6) The reference in subsection (3) to using a product in the course of a business does not include a reference to using it for a purpose which is merely incidental to the carrying on of the business.

The amendment to Clause 13(5)(b) is designed, according to Viscount Younger of Leckie, to clarify “the scope of the criminal offence further and provides greater security and confidence to the UK’s designers.”

In response to this amendment Lord Stevenson of Balmacara said:

We therefore welcome the government amendments tabled today, which propose a defence for anyone who reasonably or in good faith believes that their actions were non-infringing. We will continue to oppose the introduction of criminal sanctions for registered design infringement as a matter of principle. However, we are pleased that there will now at least be a defence for any person who reasonably believes that they are not infringing. The objective test of reasonableness should cover situations such as where someone has taken legal advice on the issue, or where an opinion of non-infringement is secured from the IPO opinion service.

The addition of Clause 13(6) is designed to”set out more precisely the scope of the term “use” within the context of business activities. The amendment will further focus the offence with the aim of ensuring that innocent infringement will not be captured” (Viscount Younger of Leckie).

So that’s what’s happened to Clause 13 in the House of Lords. If you’re still concerned with Clause 13 then console yourself with this. Amendment 9 which is discussed in the transcripts sought to extend the proposed criminal sanctions to unregistered design rights! The amendment was, after some discussion, withdrawn and not included in the Bill!

Mark Richardson 9 October 2013