Design Transactions Flashcards
Joint Proprietorship
Cannot separately licence or assign the design or work, consent of all must be sought.
Cannot even separately exploit the design without consent of all.
Can a design with several parts have different copyrights?
Yes, with potentially different authors.
Kinds of proprietors
Proprietor in law
Proprietor in equity
Registered proprietor
Legal proprietorship requirements
Written and Signed agreements for UK UDR and RD. No requirement for UCD/CUCD/SUD, but advisable
Equitable interests
In form of a trust, no written or signed agreements necessary. Equitable owner might call for legal owner to assign over right.
Registered Title
Presumption that registered proprietor owns the design. If wrongful can be challenged by proprietor.
Entitlement to claim priority
Must be same party as priority applicant or successor in title. May be assigned.
Definition of designer
Might not have that job title. Person who determines appearance (not the person who merely has an idea, or contributes non-visible aspects like adhesives or marketing)
How is the person who creates copyright and RD called
Author
How is the person who creates UDR, SUD & UCD (and RCD) called
Designer
In US and international applications, designer called
Inventor
Designer in terms of computer-generated designs
Whoever made the arrangements necessary for the creation of the design
Case that determines that whoever determines the appearance, and not gives the ideas is the designer
Uwug v Ball (bondage sling case)
When does a contribution merit joint designers?
When the contribution of each is not distinct from that of the other or others
Moral rights?
None for UDR, RD and UCD. Yes for Copyright. Right to be identified. For employee designs, author has no right to object to acts to which the proprietor consents.
Who is the first proprietor?
Designer, unless made in the course of employment
Things to take into consideration when drafting contracts with external designers
Warranties/Indemnitites of not infringement of 3rd parties IP
Licence to use background ip
Use of designers name
Exclusivity for a period
Designer approval of (quality/Materials/Price/Channel)
Employer on first proprietorship
Employer is first proprietor of designs/works made by an employee in the course of his employment, subject to agreement to the contrary.
First marketing
If no uk identifiable employer or individual, then the first marketer of the UK UDR is presumed the proprietor.
Types of assignments of rights
Can be in respect of all rights:
- Acts
- Territory
- Products
Can be irrevocable or reversionary
- After a time or
- On a trigger event such as bankruptcy
If link between UK RD and UDR
Applicant for UK RD must also be the person claiming to own any UDR in the design.
Assignment of UKRD carries the presumption of assignment of parallel UK UDR
Implied licences
Buyer has right to repair but not to re-manufacture
exclusive licences
To have effect must be in writing and signed by the proprietor, not for CUCD and SUD.
Same as patents, either licensee or proprietor can sue, but must serve papers to the other.
If associated with a standard, no licence needed
Airplane door
Royalty rates
No need to licence horizontally. Might justify higher rates than FRAND
Vertical Licences uses
Spinoff licensing
Franchising
Miltary/Strategic
Intra-group
Compulsory Licences
More restrictive possibilities for RD than patents
Licensing of designs in terms of EU Competition Law:
Can licence, but must not breach Art 81. Tech Transfer Block. Vertical Agreements Block, motor vehicles block
License of right UK UDR
Last 5 years, involuntary. Other designs like patents.
Average royalty rates calculations
Can be calculated from profits (overheads not included, unless normal). Usually the normal rate is 5-10%, depends on the design.
Crown use in designs, copyright or trademarks
can occur in designs but not in regards of copyright or trademarks. Always paid
Crown use RD and UDR
RD: any use
UDR: any use for the defence of realm, foreign defense and health services
But really unlimited as can be claimed in emergency
Every how long do you renew designs?
Every 5 years, rise over time.
