Copyright infrigement

If you are worried about infringement or your work has been copied and you want to take action.
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Micheal
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Copyright infrigement

Post by Micheal » Mon Aug 02, 2010 11:53 am

Hello, I have a copyright issue and wondered if you could advise me i design and make my own products and sell them mostly on the web, and I have had a company who I have done work for in the past copy some of my products about 15 of them, some of them he was selling under licence and paying me royalties, but when the contract finished he carried on selling them but has stopped the royalties payments, I register all my designs with a third party, I have had a the cease and desist letter sent out by a solicitor which he has ignored, now I need to go to the next stage but the person stealing my designs is quite wealthy and he knows I will find it hard to fund I am worried about taking it further ? is it possible if proceedings are issued for him to drag it out so it would be impossible for me to continue.

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Post by AndyJ » Mon Aug 02, 2010 8:05 pm

Although you mention that this is a matter of copyright infringement, it is also probable that it is one of design infringement. You can pursue the matter under either strand, always assuming that the articles which are the subject of the design have sufficient artistic craftsmanship to attract copyright. More on this later.
Design rights can be protected in two ways. The first is Registered Design Right (RDR) which as the name suggests, requires you to have registered the design with the UK Intellectual Property Office (www.ipo.gov.uk). You say that you have registered your design "with a third party" which sounds to me as if you have just recorded a copy of your design with a copyright registration service, not the IPO. If that is the case then your design only has Unregistered Design Rights (UDR).
Just assuming you meant that the designs were RDR, it is important to re-register with the IPO every 5 years or the rights lapse. You have a 6 month period after the end of a registration period in which to renew the registration, up to a total of 25 years. If your designs are correctly registered and up to date, taking the matter to court should be fairly straightfoward, since most of the defences are not available to the other party because, through the licensing agreement you had, they cannot plead ignorance of the existence of the RDR and it would be hard for them to argue the registration was in some way invalid having agreed to the licence. The remedies include an injunction to force the other person to stop production and sale of the disputed goods, damages or an account of profits, and delivery up or destruction of any infringing goods. The court also has the discretion to award costs to you. If you have RDR you can pursue a copyright infringement claim in parallel with a RDR claim, and could in theory also receive damages under that claim.
A word of warning. If your designs do not have RDR status, it is a criminal offence to claim that they have, and it is also an offence to make groundless threats of litigation.
UDR. If I am right in my interpretation of your remarks, and your designs do not have RDR, then under most circumstances you automatically have UDR. There are various tests as to the eligibilty of designs to attract UDR, but they are fairly wide. The main one is originality. I think that fact that this company was willing to pay royalties for a period of time suggests that the designs had originality otherwise why would they have entered into the agreement? UDR lasts for which ever is the shorter: 15 years from the date the designs were made or 10 years from when the articles were first made available to the public. Usually this means just 10 years of protection. Furthermore during the last 5 years of the period, anyone can apply for a licence to use the design and subject to fair terms being agreed, you have to grant the licence. If you and the other party cannot agree terms of this compulsory licence, the Comptroller-General of Patents, Designs and Trademarks can adjudicate (contact through the IPO).
The remedies for infringement of UDR are the same as for RDR, except that if the defendent undertakes to take a licence in the last 5 years of the UDR period, no injunction or order for delivery-up will be made, and the amount of damages (or account of profits) will not exceed double the amount which would be payable as royalties. And the other difference is that you cannot pursue parallel claims for UDR and Copyright infringement.
So where to go from here? If your designs are eligible for copyright (ie they possess sufficient artistic craftsmanship) it might be possible for this to be pursued as a criminal matter under Section 107 - Dealing in Infringing Copies by Way of Trade. This would mean reporting the matter to Trading Standards or the police and letting the CPS take the matter forward. However I think that since this is a case of previous commercial dealings which have broken down, a criminal case is less likely, but it would do no harm to contact Trading Standards about it. The other advantage to using copyright is that the period a copyright operates for is not a problem (the whole of your lifetime plus 70 years!).
Since you have already consulted a solicitor and there are a number of options open to you, I suggest you speak to an experienced IP lawyer about what to do next. I think from the facts you have given, there is a good chance of winning a claim and getting reasonable damages awarded. And because this is a business matter you should be seen to be defending your IP rights, or others may be tempted to take advantage of you.

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Copyright infringement

Post by Micheal » Wed Aug 04, 2010 7:37 am

Thank you for your reply and advice, I am dealing with experienced IP lawyer, he suggests that it is a copyright issue, my designs do only have unregistered design rights, the copyist has made changes to one of the items but not enough to really be noticed, but all the rest are direct copies. You are right I do need to take action, a company i supply have started buying these copies and under cutting my prices because all these copied items are being produced in India for a fraction of the price it costs me to hand make them myself, the reason I are dragging my feet is because these lawyers are very expensive I feel the copyist may have more power than me because he has the money to exhaust me of funds, and he is quite experienced in copyright theft, he has done this two or three times to my knowledge to other people, it is something he does quite frequently. I have work very hard for the last eight years trying to build my business by making all these patterns and it is only just staring to pay so I worried about losing it all.

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Post by AndyJ » Wed Aug 04, 2010 4:59 pm

Micheal,
I'm pleased you are getting professional advice on this. I know it is expensive but depending on what your lawyer advises about the chances of success, you stand to gain either damages or an account of profits, ie an award based on the profits this person has made from selling your work. Obviously if it goes to court, your counsel should ask for your costs to be awarded against the defendant
I wish you the best of luck, and hope that the matter can be resolved quickly.
Andy

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Post by Micheal » Wed Aug 18, 2010 11:57 am

Hi, I am not getting very far with this, maybe I need a new solicitor, the initial letter cost me just under £300.00, ok there was a bit of paper work to be done, so I contacted the solicitors and asked for a quote to take the mater forward to the next stage, I had a reply by email it was quite basic quote, and then also they sent another invoice for £330.00 for this service, and I am told this is discounted because I am a member of a design registration company, is this normal it makes it very difficult to pick up the phone and discuss the mater in detail with them, do you think i should I look for another solicitor.
Thank You,
Micheal

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Post by AndyJ » Thu Aug 19, 2010 7:06 am

£300 for a letter (albeit with some background work) does seem quite high. Obviously you have to balance up the advantages and disadvantages of switching solicitors if it is necessary to go on to the next stage, ie taking the matter to court. Ideally you need a solicitor who not only has IPR experience but also has a right of audience in the High Court so that he can represent you, without the need for separate counsel to be briefed. That might help to keep the costs down.
I would certainly check with other solicitors and get a few quotes. This shouldn't cost you anything. Many solicitors will give you a free half hour consultation so that you can outline your case, and they are then in a postion to provide a realistic estimate of the likely costs ahead.

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Post by Micheal » Mon Dec 06, 2010 10:48 am

Hello again,
I would just like to keep you updated, since I contacted you last, another local company I have been supplying and one I thought I could trust, have been coping my designs, you were right to tell me to contact trading standards they are being very helpful, although there are a few problems, one of them being they do not seem to know much about copyright, a couple of piece of my work have been altered without my permission and trading standards have asked me if I could find or put them in touch with someone who can advise them that the work is a copy, can you advise me please.

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Post by AndyJ » Mon Dec 06, 2010 9:42 pm

Hi Michael,
Firstly an apology for not recognising that it was you who sent me a pm the other day (the different signature threw me!). I'm glad that Trading Standards are being helpful. I think that given the blatant and industrial scale of the copying which is going on, this could well result in it becoming a criminal matter* so Trading Standards are the right agency, and you would not bear any of the costs of bringing a prosecution.
I'm not entirely clear what guidance the Trading Standards need. I would have thought they need to obtain one of the alleged infringing copies under evidential rules and once that has been obtained, by comparing it with one of your originals, make a judgement whether or not the former is a copy of the latter. Assuming there is prima facie a very strong resemblance that should be sufficient to launch a criminal investigation. They can if necessary obtain a warrant to search the other person's premises and seize as evidence any other copies. At some stage you will need to produce your designs which were previously registered, to prove when the design was first recorded and so establish your claim to the copyright, in order that the other person cannot claim that you in fact copied his design. And of course there is the fact that the other person has previously licensed your design, so clearly establishing that you were the copyright owner, and removing the defence that he did not know these were infringing copies.
The rest is basically down to the CPS to say whether there is a strong enough case to bring the matter to court. I'm sure the Trading Standards will have their own in house legal advisors who will be able to guide them on the early stages. Criminal infringement under Section 107 is relatively straightforward since you can prove you own the copyright, and that the other person knew that that was the case. The fact that the items he was importing and selling were not obtained from you or under licence from you can be established relatively easily, so really the only major obstacle to securing a prosecution is the degree to which the one is a copy of the other: totally, substantially, or not substantially. Unfortunately only the court can decide on this fact, although clearly the prosecutors are unlikely to proceed unless they are pretty sure on this point.

*it is worth pointing out that there are disadvantages to a criminal prosecution. The first is that damages will not normally be awarded although you would have the satisfaction of seeing the other person face a jail sentence or hefty fine, plus destruction of all his counterfeit stock, if found guilty. The second is that the burden of proof in a criminal trial is higher: beyond reasonable doubt, whereas in a civil case it's decided in the balance of probabilities. If the CPS decline to take the matter to court, you can of course bring a civil action on your own initiative (hopefully using some useful evidence already having been gathered by Trading Standards in the early stages).

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Post by Micheal » Thu Dec 16, 2010 1:02 pm

Hi Andrew
I don’t know wether I made it very clear, but one of the pieces of work that is being copied is with a company who was buying this item from me, they actually asked me if I would give them permition to have the item made in India, they said would pay me royalties, when I said I did not want to do this, they went ahead and basically just made a few changes, were mine was flat on the top the put a round top, and maybe altered the size slightly, they have told trading standards that they have proof it is theirs because they have registered it with a solicitor. I also suspect they are selling direct copy’s of the same item, they have even copied my pdf files of my website with all the dimensions for customer information without my permition to go with the items.
Thank you again for all your help

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