Text 2 pre-reading tasks

1. Scan the text and say: a) what is the difference between registered and unregistered design rights; b) who is a 'person with recording rights' (see section 2), c) what two types of databases are mentioned in the text?

2. Now read the text and answer the questions that follow.

Designs

A design is the external appearance of an article, including its shape, configuration, pattern or ornament. Generally, artistic designs, such as a drawing or photograph or, in three-dimensional form, a sculpture, a work of architecture or artistic craftsmanship, are protected by copyright and cannot be protected by design rights. However, if an artistic design is applied industrially, for example, a lighting design, then it can be protected as a registered design (but the copyright will cease after a period of 15 years from the moment when the article was first offered for sale or hire). Design rights are either registered or unregistered. Registered design rights protect works that have aesthetic appeal and unregistered design rights protect purely functional works, such as design drawings for car parts.

Registered designs have existed in the UK since the Registered Designs Act 1949.

Nowadays, however, businesses are overwhelmingly applying for the Community registered design, which came into existence in 2001 and which gives protection throughout all the 25 member states of the European Union. The right lasts for 25 years on payment of a renewal fee every 5 years. Since the UK registered design law was harmonised with Community design law, the provisions described below relate to both.

In order to qualify for protection a design must be a) 'new', in the sense that no identical design has previously been made available to the public, and b) have 'individual character', in the sense that it should create a different overall impression from other designs on the 'informed user'. An identical design is one that differs in immaterial detail only from the design seeking protection. Novelty will not be affected by the fact that a design was disclosed to the public in order to test its marketability within 12 months preceding the registration (but not earlier).

Registered (and unregistered) design right will not subsist:

(a) in certain articles which are designed to interface with other articles so that one or other article can perform the function which it was designed to perform (the so-called 'must fit', or 'interface', exclusion). For example, design right could not subsist in certain aspects of a stair gate designed to prevent young children from going up or down stairs because it was designed to interface with a wall or banisters (Baby Dan AS v. Brevi SRL (1999));

(b) in certain articles which are designed to match the appearance of other articles; for example, replacement car-body panels, which must match the overall appearance of the car (the so-called 'must match' exclusion). For many years this exclusion effectively prevented manufacturers from establishing a monopoly on the provision of spare parts for their products by allowing others to produce suitable replacement parts. (In the United States, this is still the position.) However, in Dyson Ltd v. Qualtex (2004) the court held that where there are alternative ways of producing suitable replacement parts, the 'must match' exclusion does not apply, so now spare parts manufacturers should ensure that the designs of their spare parts are sufficiently different from the original parts if they wish to avoid legal challenges;

(c) in the case of designs which are methods or principles of construction of an article, for example, the concept of a dovetail joint in the construction of a drawer;

(d) in surface decorations, whether added to the surface of an article, such as embroidery or a painted pattern, or applied in the manufacture of the article (it is presumed that such features would be protected by copyright).

The person entitled to apply for registration is the owner of the design, whether the author or another person who became the owner as a result of assignment, transmission or operation of law. In the case of employee-designs, an employee who creates a design in his own time using his own resources will own the design right, even though he might be employed as a designer at other times. If the designer uses his employer's resources, it is logical that the employer should own the design right.

Infringement of a registered design consists in an unauthorised use of a design which does not create a different overall impression on the informed user. The registered design creates a monopoly, therefore it is not necessary to show that the alleged infringer has had an opportunity to copy the design or knew that he was infringing. An innocent defendant, who can show that he did not know that the design was registered, has a defence to a damages award against him, but not to any of the other remedies, such as an account of profits or an injunction. The Registered Design Regulations 2001 allow unauthorised use for private or non-commercial purposes. A bona fide user who can show prior use can continue exploiting the design. Unlike with copyright, infringing a design right, whether registered or unregistered, is not a criminal offence.

Unregistered designs. Before the Copyright, Designs and Patents Act of 1988, protection for designs, whether artistic or functional, was provided by copyright and registered designs. But this system was of little use to industrial concerns where thousands of functional designs that require some level of protection are produced every year. To address this issue, the 1988 Act created an unregistered design right. Numerous differences set it apart from the Community unregistered design right created in 2001. For example, the UK designs are protec~ed for 15 years (10 if commercially exploited), while the Community protection is only for 3 years; the UK right protects only three-dimensional articles, while the Community protection is for both two- and three-dimensional designs, and so on. Since the UK unregistered design law was not harmonised with Community design law, the provisions described below relate only to the UK.

In the UK, the unregistered design right will subsist in a design that is a) 'original' (has not been copied from another design) and b) is not 'commonplace' in the design field in question at the time the design was created. The relevant design field is usually interpreted broadly rather than narrowly, for example the field of lighting designs generally and not a special, narrower category of standard lamps. Provided these criteria are met, the unregistered design right will subsist in any three-dimensional article. whether that design is functional or decorative. It is possible for one article to be protected both by copyright and unregistered design right, or both by the UK and the Community design right. The right arises automatically as soon as a design is created.

The first owner of design right will be either the designer or his employer (in the case of employee-designs), or the commissioner (if a design was commissioned), or the person who was exclusively authorised to put the articles on the market in the United Kingdom. Whqever that person is, he must be a qualifying individual from a qualifying country (design right does not extend to countries which do not have an unregistered design system, such as the USA). During the last five years of protection, the design owner cannot refuse to grant the licence to offerors (this is known as a 'licence of right').

An article will infringe design right if it is made to substantially the same design. Primary infringement covers making an infringing design or manufacturing infringing articles. The UK unregistered design right is not a monopoly right and it is therefore necessary to show that the infringer has had an opportunity to copy the design directly or indirectly, even if only subconsciously, and that there is a substantial similarity between the two designs. Secondary infringement covers selling or offering for sale, importing or exporting to and from the UK infringing products for commercial purposes, etc. For the acts of secondary infringement the claimant must show that the defendant knew that he was dealing in infringing copies. Acts of infringement that take place outside the UK are not actionable; it is not even possible to take to law someone who authorises the manufacture of potentially infringing articles from the UK if the manufacture of those articles takes place outside the UK. But action can be taken if the infringing article is imported into the UK. Where someone is threatened with infringement proceedings, there is a right to claim damages or other remedies for groundless threats.

Performance Rights

The definition of performance in the 1988 Act includes dramatic and musical performances, readings and recitations of literary works, variety shows and circus acts. To attract protection the performance must be a live performance, given by a qualifying person or in a qualifying country. Since live performances are regularly recorded or broadcast, it is only natural that the performer should have the right to authorise such recordings or broadcasts. Performers' rights arise automatically. The law also protects a person to whom the performer has granted an exclusive right to make a film or sound recording from the live performance, broadcast or another recording of it. Such a person has the right to commercial exploitation of a recorded performance to the exclusion of everyone else, including the performer. Hence, the rights of performers protect the artistic creation, while the rights of the person with a recording right are purely economic rights created by contract. Both these rights do not oust copyright in the work performed or in the film or sound recording of it. The Performances (Moral Rights, etc.) Regulations 2006 also created moral rights for performers akin to those of copyright holders. Protection lasts for 50 years from the year of performance or release of a recording of it.

Performance rights are infringed if any unauthorised person records or broadcasts a live performance or makes a recording directly from a broadcast; knowingly shows or plays in public or communicates to the public an illicit recording of the performance; knowingly imports into the UK or possesses or deals in an illicit recording in the course of business. Both performers and persons with recording rights can take civil action against the infringer. In addition, performers have a right to equitable remuneration if a commercially published sound recording of their performance is played in public or included in a broadcast. Most infringing acts are also criminal offences and can be punished by fines and/or imprisonment. Permitted acts, such as recording for private purposes, etc. and legal remedies are broadly paralle! to the permitted acts in respect of copyright works.

Database Rights

A database is any collection of data organised for rapid search and retrieval by electronic or other means. Examples of commercial databases would be airline reservations or medical records in hospitals; reference databases contain bibliographies or indexes that help locate information in books, etc. Traditionally they have been protected by copyright as compilations; however, this type of protection did not prevent certain types of commercial use of the contents of the database. The Copyright and Rights in Databases Regulations 1997 (following a EU Directive) created a new database right where there has been substantial investment in obtaining, verifying or presenting the contents of the database. The investment has to be in seeking out already existing independent data and compiling it into a database. Thus, lists of football fixtures, for example, would not be covered because the investment is made in the creation of the data in the first place. It is possible for certain databases to be protected both by database right and copyright, but copyright protection is only available if a database amounts to an intellectual creation of the author, that is, if it has a sophisticated form of organisation and method of retrieval of information.

Database right comes into existence automatically, as soon as a database is created. It runs on for 15 years from the end of the year of creation of a database or making it available to the public. The owner of the copyright in a database is the author, while the owner of database right is the initiator or the investor, or both (exceptions about employees apply in either case). The database right will only subsist if the maker is a qualifying individual from a qualifying country. Database right prevents unauthorised extraction and re-utilisation of the contents of a database, but it is not an infringement to use it for fair dealing purposes. The same remedies as for copyright infringement apply.

Date: 2016-03-03; view: 774