Note: This is an edited version of a talk given by Ian Gill on “Practical Advice for the Creative Industries” with a particular focus on designs and copyright at the UK-China IP Symposium on 22 September 2017
When considering what to discuss I looked for input on what the creative industries want and I found a helpful strategy document from Creative Industries Council which was prepared in 20141 and updated in 20162. This document covers a number of areas including finance, education and infrastructure but also includes a section on IP. The importance of IP is clear – the creative industries want:
A strong, clear and actively enforced IP framework is essential to the future health of the creative industries.
The report notes “IP is a fundamental mechanism through which individuals and businesses generate value from their creativity”.
There are a number of recommendations relating to IP, including a focus on an increased awareness of IP rights and the provision of strong and clear rights to create legal certainty.
I then looked at some of the clients that we work for in the creative industries, such as Jimmy Choo, Paul Smith and Primark, and considered what they want from IP.
I think it is correct to say that they would endorse the recommendations of the Creative Industries Council, but what is interesting is how that manifests itself in their business and their own strategy relating to IP. This is interesting because all of our clients have different strategies. Some are aggressive – they will protect everything they can and challenge anything that they feel encroaches on their rights – others are more focussed on avoiding infringement.
These are all successful businesses with very different strategies and that highlights the fact that there is no one single “correct” strategy. Each business needs a strategy that is tailored to their needs.
So for the first piece of practical advice – work out what strategy suits your business from a registration and enforcement point of view – this will simplify your decision making process and over time give you a consistent and clearly structure portfolio which will add value to your business.
The recommendations of the Creative Industries Council include increasing the awareness of IP rights. It is clear that government has a role to play in this and the UK IPO and Chinese IPO are pro-active in this area. But each business also needs to take steps to ensure that their staff are “IP aware”. This can take the form of occasional seminars which help to build a base of knowledge but in my experience people learn best by example and brief but frequent sessions looking at new designs and discussing IP issues relating to those designs help to build a base of expertise within the business. Almost invariably the first step in the education of designers is to correct what they are taught in college – if they make a specific number of changes, generally 5 or 7, then there will be no infringement. However with some effort to educate the designers this quickly moves on to informed discussions of the differences between copying an idea and copying the expression of that idea.
That leads to the next piece of practice advice – set up an internal education program relating to IP including pre-launch reviews of products.
Another other theme from the Creative Industries Council is the need for strong and clear rights to provide legal certainty.
Looking first at the unregistered rights available in this area:
These rights are “free” – but you do need to ensure that you make some record of what was created, when and by whom and this leads to the next piece of practical advice – record the creation of your rights – use an internal system or something external.
I mentioned qualification requirements. Copyright is perhaps the most straightforward – the first owner is the author or the employer, if the work was created in the course of employment. You need to be aware of commissioned works as, in absence of agreement, these will not belong to the party who makes the commission.
Qualification for UK unregistered design right probably merits its own 60 minutes slot, but the most important points to bear in mind are that the qualifying person needs to be connected with the UK or EU or a county which offers reciprocal rights – and that does include Hong Kong, but not mainland China.
There is no nationality requirement for Community Unregistered Design right but if this is important to you then you should take steps to ensure that your first publication is within the EU as first publication outside of the EU could be novelty destroying.
That bring us to the next piece of practical advice – make sure you understand who is creating the IP and whether you own it automatically – if not then get a written assignment when you are still friends with the people you are doing business with – if you can’t agree at that stage you probably never will
Let us assume that you have these free rights – why bother with registration? If you are looking for strong and clear rights then these unregistered rights will not provide them. Strong clear rights come from registration and in the context of this talk that means registered designs.
Firstly registered designs provide a true monopoly – unlike the unregistered rights you do not need to prove copyright. Further registered designs:
Therefore in practical terms, registered designs are preferable to registered rights and you should register the design of products if that it is in keeping with your IP strategy.