UK government gets acid response from ACID

Criminal deterrent --
or just a hung parliament?

On Friday Class 99 reported on the UK government's unenthusiastic response to the proposal, backed by ACID's petition, to introduce criminal sanctions for design right infringement.  According to the government, the current civil-based provisions provide a suitable IPR framework -- even though copyright infringement (which requires no substantive examination) attracts criminal sanctions. As ACID points out, this gives rise to anomalies and inequality of treatment which, the organisation states, "are very damaging to hundreds of small businesses and designers across the UK and restrict the level of legal protection and support they can expect to receive".  A press release in response to the government's reiteration of its current position reads as follows:

"Dids Macdonald [ACID CEO], commenting on the Governments’ response and, in particular, the statement that unlike trade mark and copyright disputes, design right can often be inadvertent said, “In my 20 years personal experience as a designer and latterly as CEO of a 1,000+ member organisation (the majority of whom have joined because of design infringement threats), copying is generally deliberate and blatant rather than inadvertent [If it were not, one might expect commercially unsuccessful and unpopular designs to be copied as frequently as successful ones]. I would be interested to learn more about the Government’s evidence to support their statement [the UK government has committed itself to "evidence-based" IP policy formulation -- though one suspects that this only applies to proposals to change the law, not proposals to leave it as it is ...]. However, I am encouraged to continue the debate via the recently announced review of the UK’s IP and by the Government’s commitment to explore any (and all) suggestions for improving the designs framework for the benefit of the UK design industry.”

Nick Kounoupias, ACID LOBBY’s legal counsel and an expert in IP infringement said, “We are only suggesting that design rights should be criminalised where there is actual knowledge like copyright. There is no obvious reason for the disparity of protection. This may have been overlooked during the frenzied last minute lobbying and amendments made to the [Copyright Patents and Designs Act] CDPA in 1988 as it was passing through Parliament. Design right protection was a relatively late innovation in 1988 and at the time it was probably felt that it was a step too far to extend to design right the new improved protection introduced for copyright in 1988. Certainly no rational basis for the inequality has been advanced by Government.” [Nor has it been suggested that, since deliberate design infringement is not criminal; corresponding types of copyright infringement should be decriminalised too]

The simple legal solution would be to introduce into the CDPA two new Sections to mirror S.107(1) and 110 ... The wording would be almost identical to Sections 107(1) and 110 and would be designed to criminalise the infringement of the design right subsisting in 3D designs. This can be done very simply by replacing the word “copyright” every time it appears in Sections 107(1) and 110 with the words “design right” and the words “copyright work” with the word “design.” It would then be necessary to make consequential amendments to mirror Sections 107 (4), 107 (5) 107A, 108 and 109 CDPA. As with copyright infringement this would criminalise blatant and deliberate copying but not copying inadvertently.

The Alliance Against IP Theft representing 20 organisations (of which ACID is a member) has recognised the need to ensure legal parity across IP rights as a key campaigning principle with a need to address the inconsistency in protection for design rights agreed as a specific objective. ...

In 2008 there were only 2,798 designs registered in the UK and in 2009 2,111. Most of the UK’s 250,000 designers would appear to rely on unregistered rights. This is contrary to the Government statement that IP, including design rights, should serve to stimulate an environment in which new design ideas can flourish, whilst also providing a robust means of protection for existing design rights. ACID receives approximately 30,000 designs per year to its Design Data Bank for unregistered designs".

The government's reluctance to remove the anomaly may have, at base, a fear that if deliberate trade mark, copyright and design infringements were all criminalised, the controversial proposal to criminalise patent infringement might again be raised (on which see here, here and here, among other places).

Criminal design infringement: UK government says "No, er, maybe, er .. well let's see ..."

Some readers of this blog may wonder what happened to the petition, one of two pioneered by anti-infringement champion Dids Macdonald of ACID, to criminalise design right infringement (see earlier Class 99 post here).  The petition is now closed and the UK government has responded here. For those too lazy to click through, the current state of play looks like this:

Petition to create a law which introduces criminal sanctions for design right infringement

This petition is now closed, as its deadline has passed.

We the undersigned petition the Prime Minister to Create a law which introduces criminal sanctions for design right infringement. More details

Submitted by Dids Macdonald of ACID (Anti Copying in Design) – Deadline to sign up by: 03 June 2010 – Signatures: 580

More details from petition creator

Design law today has a far greater importance in terms of protecting new designs than it has ever done in the past. The four most copied industries within ACID’s membership are the furniture, textiles, interior accessories and giftware industries. A visit to any major High Street retailer will clearly demonstrate the importance of these sectors of the design industry to the UK economy. ACID is very concerned that there are currently no criminal sanctions whatsoever under the UK unregistered and registered design right, the unregistered or registered Community design. Accordingly, anyone dealing in pirated goods that are protected by one of the design rights rather than by copyright or trade marks are at no risk of criminal proceedings being brought against them. Since ACID's formation in 1996, it has seen a huge escalation of copying taking place within the design industry. ACID firmly believes that the introduction of criminal sanctions for design right infringements, will have a significant effect on the reduction of copying and dealings with pirated goods in the UK, consequently strengthening the British design industry.

http://petitions.number10.gov.uk/DesignRight/

Government response

Thank you for your e-petition on the issue of introducing criminal sanctions for design right infringement. Given the strength of the UK's design industry, the Government firmly believes that the legal framework for protecting intellectual property - including designs - should serve to stimulate an environment in which new design ideas can flourish, whilst also providing a robust means of protection for existing design rights.

At this time, the Government believes that the current civil-based provisions provide a suitable framework for dealing with, and resolving, disputes relating to allegations of design infringement within the UK.  Unlike the majority of trade mark and copyright disputes, design infringement can often be inadvertent, involving no intent to damage or exploit the property of a third party. Furthermore, the fact that current UK design law provides for only a minimal degree of substantive examination (without any assessment of novelty) prior to the grant of registration means that a high number of registered designs have a low presumption of validity. Given these factors, the Government is naturally cautious about the merits of increasing the severity of potential sanctions against those alleged to be infringing existing design rights.

Nevertheless, the Intellectual Property Office (IPO) is currently engaged in a review of extant design law, and has recently consulted with a number of stakeholders on a range of issues including the introduction of criminal sanctions. Notwithstanding the signatories to this petition, the IPO has found that many practitioners and design right holders have serious doubts as to the value and practical benefits of introducing such measures - largely for reasons similar to those stated above - and would prefer to see improvements made to the existing civil provisions. As the IPO is still gathering evidence, the Government is yet to draw any conclusions from this designs review. It will, however, continue to explore any and all suggestions for improving the designs framework for the benefit of the UK design industry.