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Selling a design idea that already exists.

 
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mistercod
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PostPosted: Tue Aug 27, 2013 7:57 pm    Post subject: Selling a design idea that already exists. Reply with quote

Hi Everyone.

I am uncertain about the possibility of selling the design of an item with regards to copyright, patent, etc.

The following is just an example and not the actual design I have in mind, however, instead of keep having to say "for example", I will just type it here as if it is the design I wish to sell/create.

So, I have designed a lampshade in the shape of a wellington boot. A very brief search for a "boot lampshade" on the Internet has come up with only two similar items, designed by the same designer. The differences between mine and theirs is that mine is a non-electrical lampshade and I think theirs is an actual light with wiring, etc. Due to the nature of the shape (a wellington boot), the general shape is the same for both mine and theirs, however, the colour, patterns and embellishments are different. I think the designer's name sounds Italian, so it is possible that they may be based in Italy, if that's of any relevance. Their item is, however, available to purchase in the UK.

During my research, I keep coming across the phrase 'must be original/unique'. I find this confusing because I keep thinking that millions of items are made by different manufacturers which have the same shape, etc., so why does this phrase keep popping up everywhere?

I have had a look at the 'Do I need to register my design?' page of the ipo.gov website, but am still unclear.

If anyone could provide any advice about what would be involved if I wished to sell my design and what other options are available to me in terms of making money from this it would be very much appreciated.

Thanks.
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AndyJ
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PostPosted: Wed Aug 28, 2013 8:10 am    Post subject: Reply with quote

Hi Mistercod,
I will try and keep this as short as possible, but it's a complicated subject because of the different types of protection which may be available for designs. I think we can discount copyright or patents as having any relevance here.
First it is important to stress that design rights only apply to the shape and appearance of an article, and not its functional aspects. Hence with your example, whether something is electric-powered or not, doesn't matter as far as design right is concerned.
Your main question was about originality. For UK Unregistered (UDR) and Registered Design Right (RDR) the definitions differ slightly. However under both regimes, an article must not be identical in appearance to another which is already on the market. For RDR the article must not be materially the same and must possess individual character so that an informed user* would appreciate that the design was different to any other on the market. With UDR, the appearance must not be copied and must not be commonplace for articles of that type already on the market.
But the major difference between UDR and RDR is that surface decoration (so for instance, colour and patterning) are not protected under UDR. Thus if the difference between two similar articles relied on their differing shapes or contours then UDR might be sufficient protection, but if the difference was entirely or mainly due to the colours used to decorate the otherwise similar shapes, then RDR would be the better protection.
The problem is that no-one applies a test for the originality until there is a dispute. UDR comes into being as soon as a design is created in some material form, such as a design drawing or prototype model, while RDR requires a formal submission of a design document, but the IPO does not carry out a review of other articles on the market to test for originality (as would happen with a patent application for instance).
Community design rights are quite similar to their UK equivalents, but provide protection throughout the EU. There are some difference though, but in order to keep this short, I won't expand on them now. (Afternote: A lot of extra detail can be found on this site: Pinsent Masons)
You mention that lots of articles on sale generally have the same or similar shape, so how are they protected? The answer is that if a shape (or other detail) is commonplace then it won't be protected. An example might be to take toothbrushes. The conventional long straight handle with bristles all of the same length sticking out at 90 degrees to the head is too commonplace to attract any sort of design right. But a handle with a specially contoured shape and bristles which are shaped to match the shape of the teeth might well attract UDR, while another brush which employed bright colours and different coloured bristles might be protected using RDR. With RDR the differences between one article and another can be quite narrow, so long as that all important 'different impression' is created in the mind of the informed user.


*'informed user' means not an average shopper or an expert designer, but rather someone with specific knowledge of articles available in that particular field, so perhaps someone like a buyer for a major supermarket chain or their equivalent in other markets.
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Last edited by AndyJ on Wed Aug 28, 2013 7:06 pm; edited 2 times in total
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AndyJ
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PostPosted: Wed Aug 28, 2013 1:39 pm    Post subject: Reply with quote

I am conscious of not having answered your final question. Assuming that your design is over the threshold to benefit from design right, then you should make sure any drawings or other documents you are relying on are dated and record your name as their originator. Keep the originals safely and use copies to show to potential backers.
If you do not intend to exploit your idea yourself, then finding someone who might can be quite complex and is really outside the scope of this forum. There are a number of internet sites which operate like the Dragon's Den, if you think this is the route to go down.
However even though you may be confident that you own the intellectual property in your design, it is as well to provide extra safeguards against anyone whom you approach ripping off your idea. Before you disclose the details which make your design unique, make sure you get the other party to sign a Non Disclosure Agreement (NDA). You can find a number of standard forms for this online and you don't need a solicitor if you are reasonably confident doing it yourself. The important thing about an NDA is that it formally creates a state of confidence between you and the potential backer, and so if he later uses your design without paying you, even in a modified form which might evade a claim under design right law, there may be a cause of action for breach of confidence. But perhaps more importantly it may indicate to the potential backer that your are serious about doing business and not a time-waster.
The next step is to decide if you want to sell your rights once and for all, or merely licence them, possibly on an exclusive basis for a fixed period of time. This may come down to a choice between getting a lump sum payment on completion of the sale or royalties based on sales of the prduct spread over a longer period. But bear in mind both UDR and RD only have relatively short terms of protection (see the link to Pinsent Masons in the previous posting). There are advantages and disadvantages to both options, and much will depend on the type of product and its potential market. But again it is too difficult to go into specific details here, and again there are better places to get that sort of advice.
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mistercod
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PostPosted: Thu Aug 29, 2013 5:53 pm    Post subject: Reply with quote

Hi AndyJ.

WOW, what a reply! Very much appreciated!

I'm sure I will have further questions after I have digested all the information provided.

Thanks.
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mistercod
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PostPosted: Sat Aug 31, 2013 2:27 pm    Post subject: Reply with quote

Hi AndyJ.

When you say that we can discount copyright or patents, do you mean that I would not be breaching these or do you mean that I wouldn't need to copyright or patent my design? Or both?

I have taken another look at the similar item on the web and the designer seems to be British; don't know where I got the 'Italian' impression from! I have also just discovered that his items are sold by one of the main stores I would have pitched my idea to, which is located in a concession consisting of several other stores I would have intended to approach!

I have had another quick web search and there seems to be items that exist which look almost exactly like those of the original designer. These appear to be from China, etc.. so I have no clue who's copied whom or if any licensing was involved.

I do not wish to tread on any designer's toes and am not sure how comfortable I'd be if I went ahead with this. Or am I being overly diplomatic?

Thanks.
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AndyJ
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PostPosted: Sat Aug 31, 2013 7:03 pm    Post subject: Reply with quote

Hi Mistercod,
The reason I said I didn't think either copyright or patent law applied in this case was because, firstly, copyright cannot normally apply to utilitarian goods which are manufactured in quantity, that is why design right was created. This is not always the case: some articles can have such a high degree of artistic craftsmanship that a limited number of copies of the original may attract copyright as explained in this extract from section 52 of the Copyright Designs and Patents Act:
Quote:
52 Effect of exploitation of design derived from artistic work.
(1) This section applies where an artistic work has been exploited, by or with the licence of the copyright owner, by—
    (a) making by an industrial process articles falling to be treated for the purposes of this Part as copies of the work, and
    (b) marketing such articles, in the United Kingdom or elsewhere.
[...]
this section was further expanded on by The Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989 SI 1989/1070
I have not quoted the whole section because it is due to be repealed by the Enterprise and Regulatory Reform Act 2013.
Secondly, patents apply to industrial processes and devices which show an inventive step forward from previous knowledge relating to that area of technology. Devices in this context tends to mean something with a practical function rather than an aesthetic function. Thus to take you earlier example of a lamp shade, for it be patentable it would need to introduce a completely novel way of 'shading' light. As you mention that something similar to your article is already on the market, it doesn't sound as if there is a anything sufficiently novel in functional terms with your device.
As for whether or not to go ahead with trying to market your idea, really only you can make that decision because only you know the degree to which your device is better/cheaper/more attractive/easier to use etc than the existing products on the market, and therefore their potential appeal to the buying public.
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mistercod
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PostPosted: Tue Sep 03, 2013 6:55 am    Post subject: Reply with quote

Thanks again, AndyJ.

I think I now understand the "must be original" issue better with regards to patents.

I'll understand if this is not the correct place to ask my next question, but I'll go ahead and ask just in case you may have come across relevant knowledge whilst working within your area of expertise.

When selling a design, would I have to state the specific materials every part of the item should be made of and the method of making every part of the item or is it possible to leave the material and method to them? If the latter is possible, would they then hold any design rights, etc. for part of the item themselves? I have only made one item and it was not originally made for the purpose of selling so some parts of the item are made from everyday domestic materials which I wouldn't use for an item for sale and some of the methods of putting the various parts together aren't ideal either. The finished item does, however, look almost exactly the way I would want it to look.

As an example, say I would like to have a muddy effect on the 'wellington boot' and on my actual item, I have simply used crumpled up ordinary tissue paper that's been coloured black and stuck it on with ordinary glue. The tissue paper also sags and would not stay rigid as I would like it to. Would I need to find the specific material that should be used as well as find a way, myself, of making the tissue stay rigid or can these details be left to the eventual manufacturers? If the latter is possible, wouldn't this then mean that they actually design some parts of the item meaning that I wouldn't wholly own my design any more? Also, what about aspects such as the adhesive or type of adhesive that should be used?

Another example would be if the item required a part such as a rigid plastic frame in the shape of a shoe sole. There is no way I could make this myself or have any knowledge of how it could be made. Are figuring out and implementing things like this the manufacturer's job or is it supposed to be mine?

As mentioned, it's OK if the above questions cannot be answered here. They do seem as if they could be outside the 'copyright' nature of the boards.

Thanks.
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AndyJ
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PostPosted: Tue Sep 03, 2013 8:48 am    Post subject: Reply with quote

Hi Mister C
I think those sort of considerations are probably ones you could leave to the manufacturer. Certainly as far as design right is concerned, there are no specific stipulations as to what constitutes a design drawing or a prototype model.
As far as infringement of a design is concerned, making an article to the design without permission is what constitutes infringement, and so on that basis I would think that choice of materials etc was part of the manufacturing process and not part of the design process per se.
Remember, too, that since design right only covers the aesthetic elements of the product, things like colour, texture and light diffusion of the materials will be protected and so you should state these on the drawings if you you think they are important in order to get the effect you want. For other aspects, you could mark the drawings to indicate the general type/quality/thickness/heat resistance etc of the materials but leave the final choice, which may be determined by the actual manufacturing process itself, to the manufacturer.
I think it is inevitable that there will some differences between a prototype model and a fully manufactured product ready for sale, so you shouldn't need to worry about that aspect.
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mistercod
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PostPosted: Tue Sep 03, 2013 1:08 pm    Post subject: Reply with quote

OK, thanks again for a very helpful response. All the advice received has been greatly appreciated!
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mistercod
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PostPosted: Sat Sep 14, 2013 3:59 pm    Post subject: Reply with quote

Hi AndyJ.

In short, what do I need to do (or not do) to make 100% sure that there is no way I could be sued by anyone or be in any position where I could incur any expenses such as legal fees, etc.? I CANNOT afford to have to pay anything to anyone at the moment and would rather give up the whole idea altogether than have to pay someone's legal expenses, etc. I would be lying if I stated that I would not mind if someone else copied my design, however, my main concern at the moment is making 100% sure that there is not ANY possibility of my infringing anyone else's rights and being subjected to any legal issues or expenses.

Here is what I understand so far from your kind responses.

Copyright does not apply to my lampshade because it is an item that can be 'used' (not just as a decoration) and would be manufactured in quantity. This means that I am free to sell my design/product because no one else will already be holding any copyright for any similar item. Similarly, I will not be holding any copyright either so anyone else is also free to sell a similar design/product.

Patent does not apply to my lampshade because it is a 'normal' lampshade made of the usual lampshade material. This means that I cannot 'patent' it, so anyone can freely make/design a similar item. Similarly, I am free to sell my design/product, as there will not be a patent existing for the usual lampshade material (or the design of the metal ring thing that holds lampshades to bulb fittings), etc., because these are things that won't be protected due to being commonplace.

If the existing item I have seen is protected under RDR, I am not infringing because:

1. My item is not 'identical' to the one which is already on the market. It doesn't matter that it is the same item, i.e. a wellington boot.
2. The main material is different.
3. It possesses individual characteristics, for example, the existing boot is tapered at the bottom, whereas mine is straight, the existing boot has a curled up toe area, whereas mine is flat and the sizes of both are different.

If the existing item I have seen is protected under UDR, I am not infringing because:

1. My item is not 'identical' to the one which is already on the market. It doesn't matter that it is the same item, i.e. a wellington boot.
2. The appearance is not copied.
3. The appearance is not commonplace for items of this type currently on the market.

If I wish to protect the shape/contours of my item and not the colours/patterns/decorations/embellishments, I use UDR.

If I wish to protect the colours/patterns/decorations/embellishments and not the shape/contours, I use RDR.

Is my understanding of all the above correct?

Regarding step 3 of the RDR section above, are the stated 'individual characteristics' acceptable/sufficient?

Regarding step 2 of the UDR section above, the EXACT appearance is not copied, but I am unclear about what it means. How can I ensure that the 'appearance is not copied'? After all, both are wellington boots, so of course the general appearance will be the same, as it is the same item. Also, from a previous reply, I understand that surface decoration (colour/patterning) is not protected under UDR, so what else could the 'appearance' that must not be copied refer to?

My item has differing contours, colours, main materials and additional surface embellishments/patterns.

Sorry for such a long post; as mentioned, I really need to make sure I understand everything correctly before proceeding.

Thanks.
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AndyJ
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PostPosted: Sat Sep 14, 2013 10:00 pm    Post subject: Reply with quote

Hi Mister C,
Unfortunately I don't think there is any way to guarantee that you won't get sued! If your aim was not to be successfully sued, then you are very much stronger ground.

Your analysis seems largely correct. The additional point about copyright is that you haven't deliberately set out to copy someone else's work, and so even if copyright was applicable you would have the defence of independent creation, ie the designs are similiar through coincidence.

The same defence cannot be used with design right, although with UK UDR and RDR, innocent infringement would prevent damages being awarded against you. Innocent infringement would apply if you did not know and could not reasonably be expected to know that one or other design right existed in the other product. Since RDR designs are registered it is relatively easy to check to find out if it applies to the other product. And if you chose to register your design, part of that process would be the opportunity for an existing manufacturer to object to the registration. This, while not definitive proof of infringement, would at least indicate if you were likely to have a fight on your hands if you proceeded.

You may be misleading yourself if you rely too heavily on the word 'identical' when comparing the design of two products. For RDR the key is the impression formed by the informed user:
Quote:
The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.
Section 7 Registered Designs Act 1949

For UDR, infringement occurs where there is
Quote:
Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design
Section 226(2) Copyright Designs and Patents Act 1988

And just one correction to your analysis: RDR encompasses both the surface decoration and the shape/contours of a design.
And so as far as your final questions are concerned, for RDR the effect of the individual characteristics must be to create the different impression on the informed user. The differences must be significant to the extent that they are not trivial and express the creativity of a different designer. With UDR the emphasis is far more on the same dimensions and contours, which might occur if the same design drawing or moulds were used for both articles, even if their surface decoration was very different. So if your article has different contours or overall dimensions and the concept was not copied from the other product, the chance of it infringing any UDR in the other design is reduced.

However, your competitor may not analyse the situation as I have done, and he may commence litigation based on his gut reaction that your product does infringe his design. Should he do that, then irrespective of what a court might ultimately find, you could receive a solicitor's letter which sets out his complaint. That is how things are. None of us can make ourselves immune from the perceived wrongs that others imagine they have sustained. However you do have one protection in this situation: it is illegal to make groundless threats to commence proceedings in respect of either RDR or UDR, although it is permissable to notify someone that a design is protected by design right.
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mistercod
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PostPosted: Sat Sep 21, 2013 2:27 pm    Post subject: Reply with quote

Thanks again, AndyJ, for the helpful reply.

OK, so there's no guarantee of being sued, but if I decide that I would concede to any challenge made, would there any possibility of any situation arising in which I would have to pay any costs? What I am trying to say is that would there always be a chance given to me to concede before I can incur any costs or can costs be incurred even before I am given the chance to concede, for example, just by the person having his legal team send me a letter or something?

Unfortunately, I cannot claim that the item is similar through coincidence. It has been over two years since I decided to make the shade so I cannot recall it 100% but I think it may be that I saw their 'boot' first and then got the idea to make a boot myself. I just made it for personal use, however, after receiving several compliments for it and being urged to sell it, I thought that would be a good idea.

If I have known that the design existed, this means that the UDR automatically existed.

Does any of this change anything? The appearance, colours, contours and main material are all still different, but it IS the same item.

Thanks.
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AndyJ
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PostPosted: Sun Sep 22, 2013 7:31 am    Post subject: Reply with quote

Hi Mister C
If the company which makes or imports this other article is upset by your entry into the market with your shade, and they know about Unregistered Design Right (a lot of people don't) then I think their most likely first reaction would be to send a Cease and Desist letter. If this is drafted by a solicitor it will probably cost them several hundred pounds, and they may seek to recover their costs from you, even if you comply completely with the letter. But they can't force you to pay anything - only a court could order that, and that would be an expensive move.
Plus, if they know you have no money, they may decide it would be throwing good money after bad to go to court to get judgment against you, if you didn't have the means to pay. For instance if you were operating as a limited company, this could be wound up only needing to settle with any creditors up to the limit of the company's liability. While this wouldn't protect you from being sued as an individual (as the directing mind behind any infringement by your company) it would certainly make the whole prospect of litigation less attractive, if their sole purpose is to remove your product from the market place.
The issue of prior knowledge of their design is not that significant. It might assist their case if they could prove you had knowledge of their design, perhaps helping to narrow the gap between similarities and dis-similarities in the two designs. And if you lost on the infringement issue, the matter of damages would be based on whether you knew or could be reasonably be expected to know that UDR existed in their design, as set out in Section 233 of the Copyright, Designs and Patents Act 1988:
Quote:
233 Innocent infringement.
(1) Where in an action for infringement of design right brought by virtue of section 226 (primary infringement) it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that design right subsisted in the design to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.
(2) Where in an action for infringement of design right brought by virtue of section 227 (secondary infringement) a defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act complained of.
(3) In subsection (2) “innocently acquired” means that the person acquiring the article did not know and had no reason to believe that it was an infringing article.
However the operation of this section is not quite as straightforward as it might appear. It does not rest entirely on whether there was actual knowledge of the original design, but on whether you knew that it was protected by design right. Since you do know that UDR is automatic, and covers the shape and configuration of an article (a very wide category) then the only realistic defences would be that either the article was too commonplace (lacks originality, in the wording of the Act) to benefit from UDR, or that its term of UDR protection had expired because it had been designed more than 15 years, or had been on the market for more than 10 years (whichever is the shorter), before the act of infringement occurred. However since both of these facts would have been established during the main trial, the only way this section can work in your favour is if you could show you reasonably believed that one or other of them was the case, even if it subsequently transpired that your honest belief was wrong.
Sorry if this is a somewhat long and complicated explanation, but at 8am on a Sunday morning with just one cup of coffee to get me going, my mind is perhaps less agile than it might otherwise be.
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mistercod
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PostPosted: Sun Sep 29, 2013 2:48 pm    Post subject: Reply with quote

No need to apologise; thanks for yet another helpful response, AndyJ.

I think they may well be aware of all the various kinds of design rights, etc., because they are a 'proper' designer and their item has been available in posh, well-known places. They (or their lawyers) will know a lot more than me, that's for sure!

I can't afford to pay several hundreds of pounds. As I stated before, if there is a remote risk of this, I would be better off not pursuing the project in the first place. I am not a company; just an individual working a normal part time job.

From what I've understood so far, UDR is automatic, so I now obviously know that a UDR must exist for their item, as you have mentioned. The shape of the item is definitely not commonplace. As I've mentioned before, there are only about two items I have found on the Internet. This designer may have started designing about 8 - 9 years ago, so I don't think the item will have been designed over 15 years ago.

Thanks again; your advice is much appreciated.
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