Selling copyright design products

'Is it legal', 'can I do this' type questions and discussions.
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s_esteoule
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Selling copyright design products

Post by s_esteoule » Tue Jan 26, 2010 11:17 am

Hello everybody,

Our shop sells a beautiful mirror which apparently was originally designed by an American company. They own the copyright in this design.
The UK distributor for this US company has contacted us saying we shouldn't be selling this mirror.
We do not manufacture it. We only buy it from an importer/distributor, and sell it in our shop. Our supplier probably buys it from a manufacturer that has copied the original design.

Can the owners of the copyright go after us just because we sell this item? We buy the mirror legally and sell them legally (in my opinion).
Are we doing something wrong?
Shouldn't they go after the manufacturers or distributors of the copied mirror?

Please help.

Thank you in advance!

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AndyJ
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Post by AndyJ » Sun Jul 18, 2010 9:14 pm

As far as UK and EU law is concerned, there are possibly two separate forms of intellectual property at play here: copyright and designright. Each offers slightly different advantages and protections for the owner. If the mirror is manufactured in quantity, as seems likely, designright is the more appropriate form of protection, because copyright is more concerned with the expression of ideas. That is not to say that a mirror can't be a work of craftsmanship, or that some sort of inlaid pattern isn't artistic, but designright was specifically created to cover this sort of manufactured goods. Having said that in regard to UK law, US law treats the protection of designs in a different way, by making them a form of patent. As such they need to be registered with the US Patents and Trademarks Office. (www.uspto.gov). This is different to the system in the UK (and EU) where both registered and unregistered designs have protection.
So having said all that, if the mirror you are selling does infringe someone else's copyright or design patent, it is up to them to take the matter further. This is where the difference between the US and UK legal systems make matters more complicated. For the US manufacturer to pursue the matter under the UK Registered Design Right (RDR) process, they would need to nominate a UK agent to register it on their behalf. If they rely on the Unregistered Design Right (UDR) method the product must have been designed or first produced on sale after 1989. UDR protection only lasts for 10 years from the point when it is first offered to the public anywhere in the world. If the design qualifies under the UDR rules, and the designer is not (or was not at the time of creation) resident in the UK, then the person who first markets the design into the UK is the owner of the designright. Thus it is possible that assuming the design is not more than 10 years old, the UK importer may have the right to take action against you in the UK. The US company cannot bring a case under UK UDR law, because the design was created outside the UK/EU. It is possible that if the miror you are selling is either a 'grey' import or is being manufactured by a company not authorised to use the design, then HMRC and/or Trading Standards could be invited by the importer to investigate, but unless the US company wants to make an issue of it, it doesn't sound like a case Trading Standards would want to become involved in because there is no issue of passing off here. Normally they become involved when high-prestige fake goods (think perfimes and designer sunglasses) are being traded.
As for legal remedies, UDR only offers fairly weak protection to the rights holder. Also, assuming that it can reasonably shown that you did not know that you were selling articles with UDR protection, the court can only award reasonable roylaties against you (and injunct you from continuing to sell the infringing items). But there is an informal route to arbtration via the UK IPO which is much simpler and cheaper.

Edit: the text in blue has been added in place of part of the earlier entry to simplify the reply.

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