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Design opinion

Designs on exclusivity

Law firm Adams & Adams is passionate about all things creative and more importantly the protection of that creativity. The firm is well-versed in championing the cause of the ingenious mind having worked with creatives across a broad spectrum of industry since 1904.
As proud associates and the official attorneys of the 2013 Design Indaba for the second year in a row, we are counting down to this year's conference with excitement. It is inspiring to be associated with the Design Indaba and to witness local creativity in action.

Local design encompasses a wide range of creative endeavour, including art, jewellery, furniture and more functional items such as ceramic crockery. Every year there is something new, beautiful or clever to catch our interest.

Such creativity should be rewarded - but as imitation is said to be the sincerest form of flattery, designers unfortunately often find their ideas copied before they can fully benefit from being first in the market with their creations.

An important reality to confront is that ideas without more cannot generally be monopolised. Once mere ideas/concepts are disclosed, our law generally permits their being copied and developed upon - as long as the copying is in the spirit of free and lawful competition, and does not contravene any recognised rights. There are only some limited exceptions and, in order to benefit from them, designers must be pro-active and invest in securing exclusivity early on.

There are a variety of statutory and other options to secure the exclusive right to benefit from new/original creative designs, and artists and designers would do well to be mindful of some of them:

Copyright

In South Africa, copyright arises automatically in e.g. original artistic works, supplying the relevant author the exclusive right to reproduce, publish or adapt such works. It is not possible or necessary to register copyright in such works in South Africa - but it is advisable to mark copyright works with the © symbol.

It is notable that copyright in artistic works - with primarily a utilitarian purpose and that are made by an industrial process - is not infringed by third parties making available to the public three-dimensional reproductions or adaptations of any three-dimensional reproductions of such artistic works that have already been made available to the public (either in South Africa or elsewhere) by the copyright owner. Design protection may better assist to protect such works (see more on that below).

Copyright in artistic works exists for the lifetime of the author, plus 50 years.

As a designer you will retain copyright in artistic works you create, unless such work is created in the course and scope of your employment (in which case will be owned by your employer) - or unless it is assigned in writing to a third party.

Design registration

Another arrow in the designers quiver is design protection.

In South Africa it is possible to protect aesthetic designs (which include the pattern, shape, configuration or ornamentation of an article, the article having features which appeal to and are solely judged by the eye, and irrespective of its aesthetic quality); and functional designs (including the pattern, shape or configuration of an article, which features are necessitated by the function of the article).

Registered designs are available in relation to products which are new and original, or not commonplace. It is therefore important not to destroy your design's novelty yourself by e.g. exhibiting or selling it until such time as a design application has been lodged. There is a six month grace period in South Africa (and not necessarily elsewhere) for filing a design application - but in the meantime any pitch should at least be made subject to a confidentiality/non-disclosure agreement.

An aesthetic design registration is valid for a maximum of 15 years, and a functional design for 10.

Trade mark registration

Another powerful way to protect designs might be through trade mark registration.

If a design is of say, a shape or graphic, that is distinctive and that is used or intended to be used to distinguish the goods and/or services of one trader from those of another, it can be registered as a trade mark. It is, however, not possible to register the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or which results from the nature of the goods themselves. Such aspects might be better protected via design or patent registration.

As long as trade marks remain distinctive, are renewed and in use, they can be maintained indefinitely.

Other precautions

In all cases, it is recommended that designers keep detailed records of the creation of their works, along with sales and advertising figures, in case this is required to substantiate rights at any point.

Be mindful that there is no rule of thumb regarding any percentage difference between your design and that of a prior work that might automatically supply you with a defence to a claim of copyright or design infringement. An infringement assessment will be a subjective matter for a court to decide, based on statutory provisions and precedent.

In addition to supplying more easily enforceable rights and remedies, registration of intellectual property makes it easier to secure funding and ultimately to negotiate licenses, royalties or transfers of your rights. If you are in it not just for the love of the art, timely protection and ultimately commercialisation of your creative endeavours must be a priority.

Finally, there is a range of legislation in South Africa that regulates the claims you can make about your products, and liability in relation to the supply of goods and services, and these warrant equal attention when launching a product.

We look forward to seeing what this year's exhibitors will share with us and are excited to follow the - hopefully well-secured - trajectory of our inspiring and creative local designers.
    
 

About Theresa Wright

Theresa Wright is Partner, Trade Mark attorney at Adams & Adams. She has a BA and LLB from University of Stellenbosch, a graduate Diploma in Law (IP) from Monash University and a LLM (specialising in IP law) from UNISA. Email and follow @Cr8veDesignLaw on Twitter.
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