Much has been written about the design of the blue polka-dot dress that Kate Middleton wore when she emerged from the hospital carrying baby Prince George. (See NY Times Fashion & Style) Less attention has been given to another recent design breakthrough in Britain – an intellectual property bill that passed through the House of Lords at the end of July. (It now proceeds to the House of Commons.)
The new legislation is aimed at simplifying and strengthening protection for design rights, which are a distinct form of intellectual property in the United Kingdom, apart from copyrights, trademarks, and patents. As a 2011 review of British Intellectual Property law explained: “Design rights protect the physical appearance and visual appeal of products. Registered designs can be maintained up to 25 years subject to the payment of a renewal fee every five years. Unregistered designs are automatic and only protect three dimensional aspects of a design, excluding surface ornamentation. They last for up to 15 years.” (See Digital Opportunity A Review of Intellectual Property and Growth, An Independent Report by Professor Ian Hargreaves May 2011) Under both the current and new legislation, design protection does not extend to a method of construction or surface decoration.
The new legislation includes a number of changes, perhaps most notably it:
- Adds criminal penalties of up to 10 years in prison for blatant copying of registered designs. So, for example, if the designer of Kate Middleton’s blue polka-dot dress (Jenny Packham) registered the dress’s design, infringers who produced dresses “exactly or substantially to that design” would be subject to criminal penalties. However, the accused can raise the defense that he “reasonably believed” he was not infringing a registered design.
- Changes the presumption of ownership to the designer. Again taking the example of Kate’s blue polka-dot dress, under the current British system, if Kate commissioned Jenny Packham to design the dress, then Kate would own the design rights. Under the new legislation, by contrast, the designer Ms. Packham would presumably own the rights. This harmonizes U.K. and E.U. law.
- Streamlines the resolution process. The new legislation creates a “Design Opinions Service” to provide low-cost, non-binding rulings on whether a design is infringing, which will allow designers to get an early opinion and potentially avoid expensive litigation.
- Paves the way for the United Kingdom to join the Hague system. As part of the new legislation, the U.K. will join the Hague international design registration system.
Both the newly proposed and current U.K. design legislation offer protection that is somewhat analogous to that provided by U.S. design patents. Under U.S. law, “the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” (See USPTO Design Patent Application Guide) Unlike in the U.K., where designs are protected regardless of whether they are registered, obtaining protection under a U.S. design patent requires the designer to file an application and go through the patent examination process. U.S. law also provides a shorter term of protection for registered designs – 14 years from the grant date of the patent (versus up to 25 years in the U.K.). However, in contrast to U.K. design protection, which expressly excludes “surface decoration,” U.S. design patents can protect “surface ornamentation.” Recently, there have been a number of high-profile U.S. lawsuits by fashion companies seeking to enforce their design patent rights. (See Design Patents and Lululemon: A Way Forward in Fashion?)
The new U.K. design legislation bears less resemblance to recent U.S. efforts to protect apparel designs. Namely, the “Innovative Design Protection Act of 2012,” which was introduced in the Senate last fall, proposed a 3-year term of copyright protection for fashion designs. It would create a right of enforcement against designs that were “substantially identical,” defined as “so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.” (See S. 3523)
With the advantages offered by U.K. design law, perhaps Ms. Packham is lucky that she created her most recent iconic dress for the Duchess of Cambridge.
Given the complex web of laws dealing with protection of design patents, working with a knowledgeable lawyer has become even more important.