Daniel Prince
are we to know whether a client's designs or inspirations are
original? How can we protect ourselves from a torrent of similar
claims at copyright infringement in the future? Were we right to
advertise the ring? Are we in breach of copyright?
Most likely this is a classic “only the lawyers will win” case, both
sides will just spend money on lawyer fees. I am not a lawyer (or a
solicitor) and you’ll have to make your own decisions (with or
without the aid of legal counsel).
The last question first. No, you are likely NOT violating the other
designer’s copyright–your client may (or may not) be BUT it will be
entirely up to the other designer’s solicitors to prove that. Most
likely that is a very tough proposition unless the other designer’s
ring design had been very heavily advertised or had otherwise somehow
become “well known” even though you honestly hadn’t seen it. (They
can still attempt to prove you knowingly copied, or should have known
you were copying, the design of the other designer but the hurdles
they would have to jump for that would likely be even higher.)
Except for the design instigation of your client your entire
effort was independent creation and even if two people independently
create exactly the same expression they are both entitled to claim
their own copyright rights in it.
Do you have a sketch given to you by the requester of the ring? With
that and sufficient corroborating materials/witnesses you’re likely
to be exonerated (even though it may unfortunately cost you a pretty
pence for that to occur).
What to do now? There are basically 2 choices:
-
sit and wait and see what happens (i.e., do nothing until a
lawsuit is filed against you) or
-
take some proactive approach (with or without solicitor help). I
think, if you have the aforementioned sketch, I’d opt for the latter
and cc your client. Prepare a very brief reply that tells the story
of how you came to do the ring and provide a copy of the sketch and
the client info (then optionally pass that by a solicitor and rework
as needed) and send them to the other designer’s solicitor. The
advantages of coughing up the money for your own solicitor review are
that you (hopefully) can be prevented from innocently and
inadvertently making a statement that could later be used (or
twisted) to hang you or give them a new, non-copyright, grounds to
nail you. Of course one risk you run is incurring the wrath (or
whatever) of your client (who you’ve done nothing more than cc in the
matter) regardless of whether they are guilty or innocent.
If you opt to wait it spares you and your client if nothing more
ever happens and your own trouble (and possible expense) from being
proactive but, should a lawsuit be filed, you’re bound to pay more in
trouble if you try to defend yourself or more trouble and expense if
you hire a solicitor at that point. And, of course, then the client
must be dragged into the fray.
Assuming that the client “did” see a SIMILAR ring (we’ll assume the
two are not identical), at least say the client also runs in the same
circles that known clients of the other designer run in (so the
“proof” that your client was copying at least the “idea” of the other
designer’s ring is “met”), then the issues that will really make the
solicitors rake in the fees (probably in advance if you please) are
where the line between “copying” the idea (which is 100% legal) and
“making a derivative work” (which is often but not always a violation
of copyright) comes into play. There is no bright line test and your
result in court is very likely to be as influenced by the solicitors,
judge(s), and any specific jury as it is by the real facts of the
case.
As to how to avoid the problem occurring again I wouldn’t worry
about it at all. It will just irritate clients and the vast majority
(say 99.87% or thereabouts, probably higher) of client design wishes
will have no ready distinctiveness that anyone will ever question.
Meanwhile be thinking about compromise positions, say a flat fee
from you (or much preferably your client) that constitutes a
settlement for about what the design “royalty” might be (that the
other designer thinks they were robbed of) and/or would you be
willing to not use the picture of that ring in your advertising
(i.e., a “free” sacrifice on your part). Be aware that the other
designer will want to recover all their solicitor’s costs plus a bit
and the solicitor may very well be angling to get their fees up for
a nice personal profit too. Sorry you’re in the pickle but do the
best you can with it and don’t hold it against the rest of the world.
James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com