Intellectual Property

'Is it legal', 'can I do this' type questions and discussions.
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Intellectual Property

Post by Carlessd »


Im Not sure where i stand

I run website that sell Prducts, i buy them off a local supplier and apparently my supplier has been making copies of resin products but in a concrete version and selling them to myself and others locally.

the original owner of the resin versions is threatening to take our company to court for Intellectual Property rights that they have on there products.

can they do this as we only purchase the products?

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Post by AndyJ »

Hi Darren,
If the original products qualify as artistic works (possibly sculptures) then your supplier will have infringed the copyright in the products by copying them, even if he used a different material to make his copies
17 Infringement of copyright by copying
(1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows.
(2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form.
(my added emphasis)
And you would then be liable for secondary infringement for dealing in these copies
23 Secondary infringement: possessing or dealing with infringing copy.
The copyright in a work is infringed by a person who, without the licence of the copyright owner—
  • (a) possesses in the course of a business,
    (b) sells or lets for hire, or offers or exposes for sale or hire,
    (c) in the course of a business exhibits in public or distributes, or
    (d) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright,
an article which is, and which he knows or has reason to believe is, an infringing copy of the work.
However as you can see this would only be the case if you knew copyright existed in these products.
The second, and possibly more likely form of protection is something called Design Right, which makes it an offence to copy someone else's design for a product. There can be secondary infringement of design right in much the same way as with copyright, and again there is a defence of innocent infringement as explained here
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.
But design right has a fixed duration: if the design has been registered then the term of protection can be no more than 25 years from the date the item was first designed or the first prototype was made, whichever is the earlier. If the design is of the unregistered type, then it is protected for 10 years from the date it was designed.

In both cases, copyright and design right, the first product which it is alleged was copied, must be 'original' in the sense that it itself was not copied from an earlier work. Depending on how commonplace these items are, that may be difficult for the claimant to prove.
If the owner who claims there has been infringement wishes to negotiate before taking you to court, he needs to explain what right he thinks has been infringed and what remedy he is seeking. Given the defence of innocent infringement which is available to you, all he may be able to do is stop you from selling these products in the future and seizing any remaining stock you may have if the claim concerns copyright, or if it is about design right, then he may only be due a reasonable royalty for the items you have already sold. If this would amount to a serious financial loss then you should certainly consult a solicitor, and you should also do that if you receive a claim form from the court, which means that he has begun proceedings. Ideally the solicitor you consult should be one with experience in IP matters. You can use the Law Society website to find a suitably qualified solicitor by looking under the heading Business: Media, IT and Intellectual Property.
Good luck.

(all 3 of the above quotes are from the Copyright Designs and Patents Act 1988. If the designs have been registered, then you may also need to consult the Registered Designs Act 1949)
Last edited by AndyJ on Tue May 20, 2014 9:02 am, edited 1 time in total.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Post by AndyJ »

Hi again Darren,
Just for the sake of completeness, if the items which it is alleged have been copied, are in fact entitled to protection by copyright, then under the law as it currently stands, and if these articles have been made by an industrial process (as seems likely) then Section 52 of the Copyright Designs and Patents Act 1988 will have the effect of limiting how long any protection lasts. Normally for copyright, it is the lifetime of the artist plus 70 years (so quite a long time!) but if s52 applies then this term comes down to 25 years from when the articles were first put on sale:
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.
(2) After the end of the period of 25 years from the end of the calendar year in which such articles are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work.

(3) Where only part of an artistic work is exploited as mentioned in subsection (1), subsection (2) applies only in relation to that part.

(4)The Secretary of State may by order make provision—
  • (a) as to the circumstances in which an article, or any description of article, is to be regarded for the purposes of this section as made by an industrial process;

    (b) excluding from the operation of this section such articles of a primarily literary or artistic character as he thinks fit.
(5) An order shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

(6) In this section—
  • (a) references to articles do not include films; and

    (b) references to the marketing of an article are to its being sold or let for hire or offered or exposed for sale or hire.
It is quite possible this will have no bearing on your circumstances, if the original product has been on sale for less than 25 years.
The reason I say that this is the law at the moment, is because an amendment to repeal section 52 was made in the Enterprise and Regulatory Reform Act 2013 although so far this hasn't been implemented. Until we see the text of any secondary legislation on this issue, we cannot be sure if the repeal will affect any alleged act of infringement which occurred prior to the repeal.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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