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Last week in the context of Clause 13 of the Intellectual Property Bill we posted some comments on the suitability of a criminal court to hear registered design issues. I mentioned in that earlier post that there were other reasons why we thought the clause should be deleted and some more of these are discussed below.

Remember, if you feel that Clause 13 of the IP Bill should be deleted or amended to restrict its scope then you should lobby your MP. Find your MP here.

Today’s mini rant  topic of discussion looks at whether the intent of the legislation has been captured in the Clause as drafted and also looks at the acts of copying and infringement. Finally there are some musings on the how the criminal provisions could be used in practice.

Intent of the legislators

The explanatory notes to the Bill can be found here. Paragraph 49 of the notes states that (emphasis added, comments in [square brakets]):

“The clause [i.e. clause 13] inserts a new section, section 35ZA, into the RDA [Registered Design Act]. This makes the deliberate copying of a UK or EU registered design a criminal offence…”

Paragraph 50 states that: “for a criminal offence to take place deliberate copying in the course of a business needs to be proven.”

Clause 13 however states that:

“A person commits an offence if— (a) in the course of a business, the person copies a registered design so as to make a product exactly or substantially to that design,..”

The intention of the Bill therefore does not appear to be reflected in the current draft of the clause as there is no reference to copying needing to be a deliberate act. It is also noted that the explanatory paragraphs above refer to “copying” and not copying “exactly or substantially to that design.” It therefore seems to be that the acts that fall within the clause as drafted appear to be broader than those envisaged in the explanatory notes.

This last point also has relevance within the context of pro-Clause 13 bodies, such as ACID, suggesting that only “slavish” or “blatant” copying will be within the scope of the clause.

The act of “copying”

In the Samsung v. Appeal decision in the Court of Appeal Sir Robin Jacob opened his judgment by saying:

“Because this case (and parallel cases in other countries) has generated much publicity, it will avoid confusion to say what this case is about and not about. It is not about whether Samsung copied Apple’s iPad. Infringement of a registered design does not involve any question of whether there was copying: the issue is simply whether the accused design is too close to the registered design according to the tests laid down in the law.”

So it is clear that registered design infringement does not revolve around copying. The legal test for infringement – the scope of protection – is set out in Art. 10 of the Community Design Regulation EC 6/2002, which states:

Article 10 Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration

Registered design infringement cases therefore involve determining the informed user, design freedom, the design corpus and the overall impression produced on the informed user.

The criminal provisions covered by Clause 13, however, introduce a requirement to assess the act of copying in the context of registered design infringement. Since the act of copying is not part of the RDA then we may need to look to copyright law to determine whether there has been copying. In this context it is noted that there are cases where unconscious copying has taken place and infringement has been found. Additionally copying could include instances where someone has had a product described to them and they have never seen the original. Copyright caselaw on copying would suggest that infringement could still occur in these circumstances.

Given the fact that issues such as copying and infringement and validity of registered designs may occur in a case that is to be heard by a non specialist criminal court (see last week’s post) it does not seem beyond the realms of possibility that the various tests will either be confused or incorrectly applied leading to situations where an alleged infringer is found to have copied a design (when he only took inspiration from it) and is found to infringe the registered design when a specialist civil court would have found there to be no infringement (which would be a defence under Clause 13).

Defences

It is also noted that the prosecution in a criminal registered design case does not have to show that there has been infringement of the registered design. Instead the onus is shifted onto the defendant who has to show that there has been no infringement as part of his defence.

Reasonable belief

Within Clause 13, it is a defence to show that an alleged infringer reasonably believe the registered design either not infringed or invalid. It may therefore be the case that this “reasonable belief” defence is the defence that is most commonly used. However, what will constitute “reasonable belief”? Will designers be required to seek legal advice in respect of every design they wish to release? Will designers be required to obtain an opinion on infringement from the IPO under the new opinions service?

If reasonable belief requires designers to seek opinions on registered designs then surely this will increase costs for them and ultimately for consumers?

Here come the trolls?

Potentially a bit of a stretch this one but will the provisions envisaged by Clause 13 make it easier for “design trolls” to allege design infringement and “negotiate” a fee for use of their design under the threat of a criminal offence?

A tool for big players?

At the Westminster forum in October it was suggested that larger companies may look to bring private prosecutions in parallel or instead of a civil action for infringement. Does Clause 13 therefore make the design enforcement landscape less favourable for the small designer? It has been suggested by pro-Clause 13 groups that it is rare for larger organisations (such as High St vendors) to bring actions against small designers and that consequently Clause 13 will not overused. However, if the tool is added to the toolkit surely larger organisations with shareholders to answer to will have an obligation to use all the means at their disposal to protect their assets?

Solution?

In an ideal scenario Clause 13 would be deleted from the IP Bill and the issues encompassed by this clause revisited again before any further action is taken. As written last week there are other options for improving design enforcement for designers (e.g. access to small claims track at IPEC, formal mediation services etc.) that could be explored instead of introducing criminal registered design provisions to the UK.

However, removal of Clause 13 from the IP Bill seems unlikely at this stage and so it is suggested that the clause should be amended further. For instance, the offences could be restricted to deliberate acts, the clause could be amended to only cover copying and not “substantial” copying and it could be a requirement to show that the copying relates to an infringed registered design.

The committee stage in the House of Commons for the IP Bill seems likely to occur in early January 2014. If you want to try and contribute to the debate then find your MP here and let them know!

Mark Richardson 10 December 2013