Copyright issues

[EnglishRosey]

Hi guys, would love some help if at all possible. About 15 years ago my partner made some product designs for a friend's company. He wasn't paid for this he just did it for fun and was never an employee of the business.
The business was sold shortly after and the company is still using the designs despite never having paid for them and the designs were not part of the sale as the copyright remains with my partner and we were not consulted about the sale nor given the opportunity to buy.
This company are now using the designs all over their socials and passing them off as theirs. They have a lot of listings on their website that belong to my partner. Is there any way to stop them using the designs without a hugely expensive court case? We do have proof of ownership as we have pics of the items during the design process in our house.
I should also add that in 2013 we started a company doing a similar thing and those designs are competing with our products which is really annoying as they belong to my partner anyway.

 

[fisicx]

Have you spoken to the new owners? They may not even be aware of the copyright. Pictures showing the design process isn’t proof of anything. You need to prove the designs were not given freely to your friend to use however they wanted 15 years ago.

 

[Gyumri]

You have no case. If your friend did the designs for free and stood back while they were exploited then he can't now claim to have any case. If he feels that it was not his intention to pass copyright over at the time then your friend had six years to bring a claim for copyright infringement although it might even be less - I havent checked.

 

[DontAsk]

You have no case. If your friend did the designs for free and stood back while they were exploited then he can't now claim to have any case. If he feels that it was not his intention to pass copyright over at the time then your friend had six years to bring a claim for copyright infringement although it might even be less - I havent checked.

It's not so hard and fast. Copyright is automatic and, unless he transferred the rights, he has a case.

The problem will proving that he only ever intended to grant a license to use, rather than transferring the rights. The Copyright should have been registered at the time to prevent these problems down the line.

The friend may need to agree that they had a license but then the new owner may be upsaet that this wasn't brough to their attention.

The only people to gain out of this will be the solicitors.

 

[FreddyG]

Here is where you get the necessary info on registering a design - Google "gov uk register a design timeline" and there is a PDF with everything you need to know right there!

First, make sure that the design has not been registered by the user/abuser. Normally a reg mark will appear on the design somewhere. If not, check with the IPO on their website.

My advice would be to register one or more of the designs and then wait a while, in case the user of the design objects. When the objection period of two weeks times out, start using that design.

No doubt, the present user/abuser will object. They may even send a 'cease and desist' letter. Point out that you created the design back in 49BC (or whenever it was) and that you have subsequently registered the design. Now you send them the 'cease and desist' letter!

No need to "lawyer-up" just yet.

 

[fisicx]

@FreddyG - you can’t retrospectively register a design. It’s only from today and the objection would probably win as they have evidence of prior use.

 

[Gyumri]

Any copyright claim given the OP's facts and no matter how meritorious is time-barred by the Limitation Act 1980. End of story at least on that point.

 

[DontAsk]

Copyright vests in the creator automatically and lasts way longer than 15 years.

It all comes down to whether it was transferred or licensed.

 

[fisicx]

Any copyright claim given the OP's facts and no matter how meritorious is time-barred by the Limitation Act 1980. End of story at least on that point.

Not sure you are correct about this as we don’t know the timeline.

 

[Panoramix IP]

Hi guys, would love some help if at all possible. About 15 years ago my partner made some product designs for a friend's company. He wasn't paid for this he just did it for fun and was never an employee of the business.
The business was sold shortly after and the company is still using the designs despite never having paid for them and the designs were not part of the sale as the copyright remains with my partner and we were not consulted about the sale nor given the opportunity to buy.
This company are now using the designs all over their socials and passing them off as theirs. They have a lot of listings on their website that belong to my partner. Is there any way to stop them using the designs without a hugely expensive court case? We do have proof of ownership as we have pics of the items during the design process in our house.
I should also add that in 2013 we started a company doing a similar thing and those designs are competing with our products which is really annoying as they belong to my partner anyway.

In England and Wales, copyright protection for product designs is limited and generally does not extend to functional designs. Under the Copyright, Designs and Patents Act 1988 (CDPA 1988), section 51(1) specifies that it is not an infringement of copyright in a design document or model to make an article to the design, unless the article itself qualifies as an artistic work. Artistic works are defined under CDPA 1988, section 4(1)(a) to include graphic works, photographs, sculptures, collages, works of architecture, and works of artistic craftsmanship. We would need to know details of the product design before it can be established whether copyright applies, or not.

It is more likely that the designs would have been protected through unregistered design right. UK unregistered design right (UDR) is an automatic intellectual property right that protects the shape and configuration of the whole or part of an article. It does not cover surface decoration or aesthetic features such as patterns. UK unregistered design right lasts for the shorter of 15 years from the end of the year of creation or 10 years from the end of the year of first sale or hire. During the last five years of this term, the right is subject to a licence of right, meaning others can use the design in return for a reasonable royalty.

Given the amount of time that has passed, UDR will have expired.

Happy to have a chat with you and advised further if needed.

 

[Gyumri]

Not sure you are correct about this as we don’t know the timeline.

The OP's friend passed over the design 13 years ago. There are time limits given under the Limitation Act 1980 which apply to all types of claims.

 

[Panoramix IP]

The OP's friend passed over the design 13 years ago. There are time limits given under the Limitation Act 1980 which apply to all types of claims.

That is not necessarily true when it comes to intellectual property infringement claims. In England and Wales, the statute of limitations for copyright infringement is six years from the date on which the cause of action accrued, as per section 2 of the Limitation Act 1980. That much is true.

When dealing with repeated or ongoing infringements, each act of infringement gives rise to a new cause of action. Therefore, for ongoing infringements, a claimant can only recover damages for losses that occurred within the six years immediately preceding the issuance of proceedings.

Given that the product is still being sold by the other company, the Limitation Act 1980 does not apply to instances of infringement within the past 6 years. Therefore, if the design is protected by copyright (which may, or may not, be the case), it would still be possible to issue a valid claim for copyright infringement. Any damages or an account of profits awarded would be limited to the previous 6 year period only.

Additionally, in cases where facts relevant to the cause of action have been concealed, the limitation period may be postponed until the claimant discovers the concealment or could have discovered it with reasonable diligence.

As you can see, it is not a simple case of claims being time barred if there has been ongoing infringement of intellectual property rights for an extended period of time.

 

[eteb3]

Copyright is automatic ….

… The Copyright should have been registered at the time

The first statement is true, the second false: copyright arises by operation of law, not by registration, and there is no way to register it.

 

[DontAsk]

The first statement is true, the second false: copyright arises by operation of law, not by registration, and there is no way to register it.

Perhaps it would be clearer if I had said "could have been registered!

There are a number of organisations that will help in registering your copyright and licensing.

We often have threads about PRS and music, for example.

 

[fisicx]

Yes, but you don’t need to register copyright. It’s yours as soon as it’s created.

 

[eteb3]

There are a number of organisations that will help in registering your copyright and licensing.

I guess such registration might help *prove* ownership; but as fisicx says, the copyright exists anyway. These aren’t definitive registries, for all they have a prominent place in particular industries - so one could still mount a claim that a registrant had no ownership in the registered work. (Contrast registered trademarks, where registration both constitutes the right and is conclusive evidence of it.)

 

[FreddyG]

The business was sold shortly after and the company is still using the designs despite never having paid for them and the designs were not part of the sale as the copyright remains with my partner and we were not consulted about the sale nor given the opportunity to buy.

It sounds as if he may have assigned the economic rights to the company that then used them, that is the same as any other gift. If I give one of my grandchildren a box of Lego, I cannot object if they then sell the Lego. I have transferred the rights of ownership to them.

The fact that 15 years went by without an objection does make it sound as if this was an unconditional gift.

But he does still have the moral rights, i.e. he has the right to be identified as the creator of the artwork. They may not want to use those patterns/artwork if they have to attach his name to them! A great deal here will depend on the details. Having a full command of the details is always the problem with issues dealing with copyright disputes.

The issue here is if the whole thing is worth going to a copyright lawyer over. We could be dealing with bald men fighting over a comb. Or we could be talking millions.

 

[ctrlbrk]

I'm sorry but I've got to laugh: in my experience 10-20% of posters create a thread and never bother checking any of the replies.

In this case OP "Joined Wednesday at 5:20 PM" and was "Last seen Wednesday at 5:59 PM".

Ozzy should institute a "can of worms" or "Pandora box" award for getting the most engagement on threads whose OP never bothers to check back in

 

[FreddyG]

Happy to have a chat with you and advised further if needed.

Now there's an offer I would "Clasp unto my soul with hoops of steel!"

 

[Gyumri]

Therefore, if the design is protected by copyright (which may, or may not, be the case), it would still be possible to issue a valid claim for copyright infringement

The cause of action accrued in 2013 and is thereforr time-barred - but as the OP seems to have flown the nest the point is rather academic.

 

[eteb3]

The cause of action accrued in 2013

Surely the action accrues repeatedly on every use of the material, just as an action on a loan accrues on the last date part-payment (or other acknowledgement of the obligation) is made?

 

[Gyumri]

Surely the action accrues repeatedly on every use of the material, just as an action on a loan accrues on the last date part-payment (or other acknowledgement of the obligation) is made?

The cause of action accrues when all the facts giving right to the claim exists. The loan position is as you state - it accrues (or rather comes into existence) when the breach occurs. You can't then sit back and say that it "accrues" on each successive day so that you can wait for as long as you like before issuing a claim. The breach continues but the cause of action starts from when the breach first occurred. A borrower can restart the clock after six years by acknowledging the debt in say resuming payments - which is why a borrower shouldn't acknowledge the debt by making further payments if the time limit of six years has expired.

 

[fisicx]

However…

In this case there may be some benefit in investigating the terms of initial use. I suspect there is more to this than @EnglishRosey originally posted but alas they haven’t returned to flesh out the facts.

Copyright law isn’t always simple and straightforward.