AI and design rights – ownership queries

Design rights protect the appearance of the whole or part of a product such as its lines, contours, shapes, texture and ornamentation. Protecting one’s design rights allows the owner to control their use.

Design rights in the UK come in two forms: unregistered design rights and registered design rights. The current legislation for design protection in the UK is as follows:

• For registered designs – the Registered Design Act 1949 (RDA);
• For unregistered designs – the Copyright, Desings and Patents Act 1988 (CDPA).

Following the UK’s leaving of the EU, there are two further design regimes protecting designs, continuing unregistered design rights (continuing UCD) and supplementary unregistered design rights (SUD). The SUD was introduced following the end of the transition period of the UK leaving the EU to compensate for the loss of protection arising from the community design right, design protection in the EU). The continuing UCD was also introduced at the end of the transition period to compensate holders of rights in UCDs before the end of the transition period for the loss of their UK rights.

Whilst these rights continue to exist, this article will not deal with them exclusively as they are not a major feature in UK design rights law.

Subsistence

Registered designs

Registered design can protect three-dimensional and two-dimensional products. For a registered design to be accepted, the design must be new and have individual character.

Unlike an unregistered design right, a registered design is a monopoly right and gives the owner the exclusive right to use the design and any design that does not produce a different overall impression on the informed user (s.7(1) RDA).

As a registered design is a registered right, every application will be assessed by a hearing officer at the UK Intellectual Property Office.

Unregistered designs

Unregistered designs only cover three-dimensional products. To qualify for unregistered design protection, the design has to be original. To be original, the design cannot be commonplace in the UK or a qualifying country. For a right to subsist, it must be recorded in copyright (s.213(6)) and the designer must be a qualifying person.

There is no definition of what ‘commonplace’ is. Case law suggests that the design mustn’t be generic and must be different to what’s already on the market (Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289). A UK court will first compare the design of the article in which the right is claimed with the design of articles in the market as at the time of the creation. The design must not have been copied. Once the Court has satisfied itself that the design hasn’t been copied, then it must look at the other products on the market and compare similarities with other articles on the market (Farmers Build Ltd v Carrier Bulk Materials Ltd and others [1999] RPC 461).

Under s.217(1), a qualifying person means either:

• An individual habitually resident in a qualifying country; or
• A body corporate or other body having legal personality which:
  • Is formed under the law of a part of the UK or another qualify country and has, in any qualifying country, a place of business at which substantial business activity is carried out.

Ownership

As with most intellectual property (IP), the owner of the design is initially the author. Similar to copyright, both the RDA and CDPA say that where a registered or unregistered design is computer generated, the author (or designer) and thus owner, will be the person who made the arrangement necessary for the creation of the design. As with copyright, however, we do not know who that person would be. Would it be the person who fed the information to the AI or would it be the person who created the coding for the AI to function?

One interpretation of the language of both pieces of legislation is that the author can only be someone who owns property and has a legal personality, which the definition of ‘qualifying person’ as per the CDPA 1988 suggests. As AI does not have a legal personality, it therefore cannot be recognised in law as being the author or owner of a design.

Comment

The UK Government held a consultation in March 2021. The responses to this consultation were split with some feeling that the current legislation was adequate to deal with developments in AI whilst others felt that the current wording could lead to confusion as to who would own the intellectual property rights in the design.

The Government accepted that AI systems should not be considered the owner of the design, however, until this is tested in the Courts, we cannot be certain that this is the current law. The Government concluded that no immediate action was required but the matter will be kept under review. At the time of writing, no further Government consultations have been forthcoming.

For more information, please contact Chris Fotheringham or Jenny Guild.