Scotland based Designer copied our design

If you are worried about infringement or your work has been copied and you want to take action.
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Scotland based Designer copied our design

Post by karanag »

Hello Everyone,

I am an India based oriental area rug designer and manufacturer. In March 2016 a Scotland based designer visited our booth in a trade show and selected one of our designs. Subsequently she placed an order for the design and we fulfilled that order by October 2016.

In January 2017 she wanted to place another order, but due to pricing conflicts we refused to accept the same. Today I noticed on her instagram that she has been getting these designs made from another producer (not sure in which country) . We have the right to refuse a sale but she does not have the right to get it produced from another manufacturer.

I have several emails in which we have discussed this design in-depth and many of the design descriptions that I sent her in my emails are published on her website verbatim.

This is a design of our own creation, we worked very hard on it and it has been popular over these past 2 years. Now she has shared the design with another producer who will not only eat into my business but may infringe upon my other customer's area exclusivity that I provide (I only work with one customer in one regional area to help them maintain exclusivity)

As I understand Scotland falls under UK , so I am assuming this is the right place to post my grievance and look for advice. If I am wrong in this , please tell me and I will remove my post.

What options do I have against that designer ? I want her to cease production immediately, destroy existing products and provide me a list of customers she may have sold this design to , so that I can inform my customers of the same and protect my brand name.

I am not actively seeking any monetary compensation - however, who denies money if it is readily available.

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Post by AndyJ »

Hi karanag,

First of all on the subject of Scotland and its legal system, yes, it is part of the UK and operates under the same law as far as copyright and design right is concerned. The difference (which is small) lies in the way the court system operates, compared to England and Wales or Northern Ireland. However, hopefully you won't have to resort to the courts to resolve this matter.

From what you have said, it certainly sounds as if there has been an infringement of the copyright in the design of your rugs. I think it is also possible that a separate form of Intellectual Property right may also have been infringed. This is known as unregistered design right (see Afternote below). However since copyright law is probably simpler to deal with, I suggest you just look at the issue from the point of view of copyright infringement.

As you are mainly interested in getting this person to stop manufacturing and selling copies of your rugs, I suggest that you send a formal letter demanding that she ceases and desists from manufacturing and selling these copies with immediate effect, and that she destroys all remaining unsold stocks of such copies. Ideally such a letter should be drafted by a lawyer (either in India or Scotland), but the important point to make is that if she fails to comply with your demand, you have good grounds for suing her for copyright infringement, and if you are forced to do this, there will be very much more significant financial consequences for her because, in additon seeking an interdict (the Scottish equivalent of an injunction in English and Indian law) to prevent any further sales etc, and the seizure and destruction of her stock, you will also be seeking damages, and she will also have to bear most* of the costs incurred by you in bringing a claim to court.

The specific grounds for your complaint are:

a. Copying your design without permission, contrary to section 17 of the Copyright Designs and Patents Act 1988,
b. Making the infringing copies available for sale to the public, contrary to section 18 and
c. Authorising another person to manufacture the said copies, without permission, contrary to section 16(2).

Alternatively, it is possible that there may be a criminal offence (see section 107) involved here, especially if she is having the rugs manufactured outside the UK and imported for sale. The main determinant will be the scale on which the infringing goods are being manufactured. If there are grounds for believing a criminal offence may have been committed, then you should contact the office for Trading Standards in Scotland, and ask them if they will investigate** and also if they will inform the customs authorities, so that they can seize any imported goods while in transit. You may wish to test the water on this issue before sending a Cease and Desist letter, as the threat of criminal proceedings would almost certainly get this designer to immediately stop selling her copies of your design.

* Although not any actual costs of hiring a lawyer.

** This is one area where Scotland is different to England and Wales. In Scotland, trading standards officers still have a legal duty to investigate offences under section 107, but they do not have the authority to bring criminal proceedings themselves; that decision has to be left to the office of the procurator-fiscal (effectively, the public prosecutor).

Afternote (added 25 September 2017). Thinking about this aspect a bit more, Unregistered Design Right protection would not in fact be available in this instance. This is because one of the requirements (see section 217) for UDR is that the designer or the person who commissions the making of the design is a 'qualifying person'. This means that they are a citizen or habitual resident of the UK, another EU member state or one of a handful of mainly UK overseas territories and dependencies stipulated by an Order in Council. Since the Scottish lady who features in the story cannot be said to have commissioned the design as it was already in existence when she attended the trade show, UDR would only apply if India was one of the qualifying nations which enjoys reciprocal protection. While India does qualify with regard to Registered Designs (see SI 2007/277) unfortunately it doesn't as far as Unregistered Design Right is concerned. If Karanag has registered his designs in India, then he would be able to claim reciprocal protection in the UK.
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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