March 1, 2019
A design rug by Finnish designers was copied, then it turned out the rug did not meet the criteria of copyright protection. However, creative work can be efficiently protected in other ways, too, says Kolster’s IP lawyer, Juha Mylloja.
The Copyright Council recently made the policy decision that the designers Saana Sipilä and Olli Sallinen are not granted protection according to the copyright law for the design rug they had designed. The matter was reported on Yle and in Helsingin Sanomat in February.
Finarte, a manufacturer of design rugs, requested a copyright statement of the Kievari rug after similar rugs showed up in the offering of some large chain stores last autumn.
However, according to the Copyright Council, in this case design rug could not be considered as a protectable work according to the copyright law. A two-colour rug is not original enough for a work, so it has no copyright protection whatsoever.
Juha Myllyoja, an IP lawyer with Kolster, says that this is a textbook example of a dispute concerning the copyright law.
Why did the rug not get copyright protection according to the copyright law? Where does the line of original design run, and who draws it?
“A copyright is automatically created as a result of creative work. It is a charge-free form of protection based on international agreements and copyright laws. It makes no difference whether the products are made in industrial production or purely as handwork. In this case, it was the Copyright Council’s policy that the threshold of originality, that is, an original, creative work was not met. Disagreeing is also allowed, and in this case the opinion was expressed by a group of experts. If the design of a product is simple, the outcome is often like this. If we went through all the rugs manufactured in Finland, we might find cases like this from the past. The statement by the Copyright Council is not legally binding, but the final word rests with the court to say whether products of the same style can be sold.”
When the similarity of the rugs became known, the companies in this particular case voluntarily removed the products from their product offering. How common is it that cases proceed to court?
“Often, companies selling similar products give up their operations voluntarily. Such companies do not want to be profiled as reputation poachers, in other words, making money at the expense of others as much as legally possible. In the commercial market, not all publicity is good publicity.
Could the rug have been protected in another IP-utilising manner?
“In this case, registered design rights might have prevented copying. When the copyright law was laid down, the line of thinking was that the primary mode of protection of products of applied arts was a design right. This is also stated in the statement by the Copyright Council on the design rug case. So, a design right is the primary, and if needed, a supplementary form of protection for protecting an external appearance. A design right can be applied for just like trademark protection to cover domestic and international markets. At Kolster, we usually recommend registering design rights for items of applied arts. When a product has a registered design right, competing companies are notified of the fact that when designing a similar product, their own design should take an alternate route. Registering the external appearance of designs is thus the best way to prevent others from copying a company’s design. Within the EU, there also exist an unregistered design right which only protects against identical copying for three years from the publication of a product. It makes no sense to trust this form or protection, only.”
What sort of protection as a general rule applies to protecting creative work? Is it expensive to protect one’s own product?
“When the threshold of originality is met, copyright is the basic right of creative work. A design right is, however, the most essential form of protection of industrial designs, and its existence is furthermore easy to verify. In addition, it is an economical method of protection. A design to be registered is an excellent form of protection within the European Union even for large series of designs. The protection can be renewed every five years, and it is effective for the maximum of 25 years. If a product becomes well-known, it can in some cases be protected by a 3D trademark. Due to the requirement of novelty, it is worthwhile to apply for a design right for a product before it is published. To establish protection in a successful manner, it is always recommended to use professional help so that the scope of protection of the product can be made as extensive as possible.
How common is it that, for example, large chains copy the individual characteristics of a small-scale entrepreneur in Finland and around the world?
“Every now and then, we learn of such cases, but they are not often made public because small-scale entrepreneurs succumb to be walked over by the major players. Many of them lick their wounds and see to it that protection is in order the next time. It would be in the best interest of entrepreneurs to make use of expert help from the very beginning, and use non-disclosure agreements when negotiations with potential cooperation partners are still ongoing. Possible infringements need to be dealt with immediately.”
How common is it that these cases proceed to the Copyright Council or court?
“There are only few cases per year proceeding to court. The cases of the type in the news reports are often settled so that an IP specialist representing the holder of the right first sends a warning letter to the copying party. So, the first step of intervening in an infringement is a warning letter and, if so desired, a statement by the Copyright Council. Then, the matter may be taken to the Market Court, which hears the dispute. The party that loses the case is in charge of the costs.
Main photo of the article by Suvi Kesäläinen