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Can I do this

Posted: Thu Feb 20, 2020 8:16 pm
by Ian07799
Hi, new to the forum. Looking for information on wether I could make something without infringement on copyright or other protection.

Basically I would like to make some furniture. I would like to make the furniture in the shape of other things i.e a star wars tie fighter chair or a sofa in the shape of a car also a sofa in the shape of games consoles.

I wouldn't be using names/logos just the shape of said objects and would not be advertising them as genuine or official products.

Would this be legal.



Re: Can I do this

Posted: Fri Feb 21, 2020 11:25 am
by AndyJ
Hi Ian,

Welcome to the forums.

It is less likely that copyright will be an issue since the shape of practical objects is usually not protected by copyright. There is one exception which I will cover at the end.

The main right which might come into play is design right. This comes in two main varieties: unregistered and registered. Both of these types can exist under UK law or EU law. Obviously the EU law will cease to apply as far as UK based works are concerned at the end of this year.

UK design right is covered by two different pieces of legislation, Part III of the Copyright Designs and Patents Act 1988 and the Registered Designs Act 1949. The latter Act was substantially amended by the Registered Design Rules 2006. You can read more about Design Right here.

As its name implies, Unregistered Design Right (UDR) comes into being automatically, much like copyright, as an design object is created. UDR applies to any aspect of the shape or configuration of the whole or part of an article. To qualify, there needs to be a design drawing or a prototype or model made to the design, and it must be original in the sense that it has not been copied from another design. However the protection afforded to UDR is fairly limited: it lasts for which ever is the shorter of 15 years from the date the design was created, or 10 years from the date the manufactured article first went on sale to the public. It is not a monopoly right, in the sense that it does not prevent others from making articles to the same design in all cases cases; it only prevents the commercial manufacture of copies. UDR does not protect the surface decoration (eg pattern or colour) of an article. A compulsory licence to manufacture copies comes into force during the last 5 years of the period of UDR protection. Infringement of UDR occurs when an article is made exactly or substantially to the original design. The way the degree of similarity is assessed is by visual inspection and the objective opinion of the average consumer of the type of product concerned. There is a defence of independent creation, that is to say the second design was created without any knowledge of the first design, but this is difficult to prove in court.

Registered Design Right (RDR) comes into being once a design has been successfully registered with the IPO. In theory all RDR applications are scrutinised to ensure they comply with the eligibility criteria (the examination stage), but in practice this is generally only a relatively superficial check which does not look at whether there are similar products already on the market, and registration then follows. Once the registration has been completed other parties may then challenge the validity of the registration, on the grounds of non-originality for instance. The level of protection is somewhat greater than UDR in that the period of protection is 25 years from the date of registration (provided certain renewal fees are paid), and there is a 12 month grace period while the registration process is underway. Unlike UDR, RDR also protects the overall appearance of the article as well as more specific contours or shape. This means that a 2D pattern can be protected and so an object which was entirely different in concept might still be afforded some protection if an RDR pattern was applied to it. For this reason a number trade marks are registered as RDRs as this supplements the protection offered by trade mark law. Infringement of RDR is easier to prove as there is no need for an article protected by RDR to have as much distinctiveness as would apply in UDR cases, the test being whether or not the alleged infringing article creates a different overall impression in the mind of an informed user. This means that the question of scale can be important. Take for example a toy replica of a full sized car. Because the impression of the informed user would be 'that's the same design' infringement might well be proved if the toy was made without permission. This might be significant in your case. However there are some defences: firstly the infringement needs to take place within the UK; an act done for purely experimental or teaching purposes would not infringe provided that the source design was cited, and the resulting copy article was not disposed of commercially.

As I mentioned at the start, copyright can apply to one specific group of works, namely works of artistic craftsmanship. Previously if more than 50 articles were manufactured to a particular design, copyright ceased to apply and protection had to come from UDR or RDR. However that part of the law (Section 52 of the Copyright, Designs and Patents Act 1988) was repealed in 2016. To date there have been no court cases to test the boundaries of the sort of articles which might now be given copyright protection. The intention was that only items showing significant artistic merit (eg classic furniture designs) would be considered, but in theory, since the courts are reluctant make judgments based on aesthetic quality, it is hard to see how the boundaries can be set. Much more detail about this topic in this pdf published by the IPO.

So to summarise, I think it is unlikely that UDR will have any effect on what you want to do because obviously a sofa and a games console are utterly different types of object. RDR is much trickier, and you would do well to check and see if any of the objects you want to use as inspiration are registered designs and if the RDR is still current (RDR doesn't automatically last for 25 years; it needs to be renewed periodically). However, RDR is not an insurmountable barrier, as there still needs to considerable conceptual overlap between the two objects for infringement to be found. And then lastly you need to weigh up whether you think copyright might apply to an object exhibiting artistic craftsmanship. The most likely candidate as far as I can see would be the Star Wars fighter, since these were props made specifically for the films. Add to this the fact that both George Lucas and Disney, who now own the franchise, are known to actively protect their intellectual property, and so I would strongly advise caution with that particular project.

Re: Can I do this

Posted: Mon Feb 24, 2020 7:04 pm
by Ian07799
Thank you Andy. Really informative.