Debate - Should the UK have criminal penalties for design infringement?

The IPKat was delighted to be invited to the event that took place last night put on jointly by ACID and DMH Stallard. The topic was Clause 13 of the Intellectual Property Bill, which introduces criminal penalties for infringement that consists of copying of a registered design (with defences if the registration is reasonably considered invalid). The question was whether such criminal penalties should be introduced and also whether (as ACID is campaigning for) they should be extended to include unregistered design right infringement.

This Kat was delighted to be the moggy who attended and it is probably particularly necessary to remind readers that he writes in no official capacity and certainly does not speak for the IPKat team as a whole. He has no idea of the views of his fellow Kats on these topics.

The lines of debate were drawn up along lines that will be familiar to those who have followed the issue of criminalising infringement of intellectual property rights generally. Speaking broadly in favour of criminal provisions in respect of both registered and unregistered designs were:

Dids McDonald of ACID organiser of the event and campaigner for Clause 13
Nick Kounoupias of DMH Stallard who kindly hosted the event and chaired proceedings
Lord Clement-Jones, LibDem Peer who steered the Bill through the House of Lords where it was introduced
Sebastian Conran the renowned designer
Kieron Sharp of FACT, who spoke from his personal experience of how criminal enforcement really works in reality.

Speaking against criminalisation was Jan Vleck of Reddie & Grose but on this occasion wearing the hat of the Chartered Institute of Patent Attorneys.

The arguments in favour of criminalisation generally were as follows.

Designers, particularly small designers, feel that they have no effective remedy when their designs are copied because of the high cost of civil litigation in this country. This copying is said to take place frequently including by larger retailers who are confident that any legal action will be out of the reach of the smaller player. This is amply supported by anecdote, and the IPKat can add examples from known litigation in the UK that certainly supports the view that if you have a good design someone at some time will copy it. Coming from this view, the supposition is that criminal provisions will act as a deterrent to this cynical behaviour and will also add a further effective remedy when the copying is blatant and egregious.  It is furthermore said to be essential to extend criminalisation to unregistered designs because so few designs are registered and most small businesses have to rely on unregistered rights.

The contrary view, put forward on this occasion by CIPA, but also broadly shared by the IP Federation (who to the regret of all speakers were not able to be represented at this event, but whose position paper can be read here), is that the criminalisation provisions will not be effective as its proponents hope, as they will not be dissuasive to current practices, and will actually be chilling to legitimate inspiration.  A concern of CIPA is that it is the very designers themselves who are seeking these provisions that will find themselves threatened with criminal sanctions, perhaps by large overseas corporations, for activities that the designers have assumed are legitimate.  CIPA is also very concerned that the infringement and validity of registered or unregistered designs is a difficult and specialist matter and that the criminal justice system is not well suited to consider this.

Kieron Sharp pointed out that the rhetoric against criminal sanctions came from people who had little knowledge of how the system worked in reality (for example in the case of trade mark and copyright infringement).  This is a fair criticism, and this Kat would be interested to learn more on how criminal sanctions for design infringement would play out in practice.

This Kat has spent long enough in the company of former Kat and Katonomist Nicola Searle to know that policy should be evidence-based. And to use the delightful phrase that he saw the other day - the plural of “anecdote” is not “evidence”. There was precious little evidence on either side although this Kat feels that the burden should lie on the side proposing to alter the status quo.  (Readers may recall in this context the recent post from Ashley Roughton calling for a more evidence-based approach to the issue of counterfeiting.)

The problem is that it is very difficult for those involved to be objective about design infringement.  What one person sees as legitimate inspiration another will see as blatant copying.  There has already been a spat in the correspondence pages of The Times between Roger Burt, President of CIPA and Sebastian Conran, which seems to this Kat to revolve around this distinction.  Sebastian Conran took exception to Roger Burt writing that “In some areas of design it is commonplace for mass market goods to be inspired by more exclusive goods”, although Mr Conran’s letter made clear, and he also stated last night, that he considers “inspiration” (or “referencing”) to be acceptable, and it is only “direct copying” or “slavish copying” that is problematic. Mr Conran has also quoted ACID statistics that “94% of those canvassed said copying was blatant and deliberate”, which to this Kat suggests that this assessment has been very subjective.

The law reports are replete with cases where it appears that claimants genuinely believed that they had been ripped off, but the evidence failed to demonstrate it.  This Kat therefore suspects that in some of the anecdotes where companies are complaining that they could do nothing when their designs were stolen, the objective facts of the case will be rather different.

This Kat is troubled by some of the arguments in favour of criminalisation.  He has heard last night and read in the ACID literature (which he dutifully took home and studied) appeals to the fact that some other countries (apparently Spain, France, Italy, Germany, Norway, Sweden, and Poland) have criminal provisions for infringement of unregistered and registered rights, but he knows that no country in this list has an equivalent to unregistered design right in the UK and that the criteria for the level of originality and aesthetic character that is required for protection of designs at all is higher in some of these countries.  So this comparison is misleading.  Also, if the argument is that other countries have such provisions, we need to know – are they used?  What is the criminal justice system in those countries?  Are the provisions successful to prevent the kind of malpractice that is alleged to take place in the UK?

The IPKat may not be able to
predict the future

The opposition to criminal provisions has been dismissed by ACID as “from mainly patent-led lawyers and academics”.  This is odd.  This opposition comes from the most dispassionate group whose main concern is that the provisions will not achieve the desired aims and will actually come back to bite those who desire them.  IT may be that the only way to find out whether these concerns are justified is to introduce the provisions and see.  In which case it is to be hoped that those patent attorneys whose warnings have been ignored will turn out to have been mistaken.

Finally, it seems to this Kat that the real problem is the cost of access to civil remedies, and it is in that forum that the solution lies.  IPEC its small claims track is hoped to be a real step in that direction, and so this Kat thinks that this will turn out to be a more relevant development.