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Stuart J
Stuart J, Solicitor
Category: UK Law
Satisfied Customers: 22620
Experience:  PGD Law. 20 years legal profession, 6 as partner in High Street practice
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I have engaged a fabricator to help to develop a technical

Customer Question

I have engaged a fabricator to help to develop a technical response to a public art project competition. They have provided sketches of mechanisms that have been used in the design. They have been paid to manufacture a prototype. My company won the project. The fabricator has now submitted costs and they are too high for the project budget. When I have said I would like to speak to other fabricators they have informed me that the work falls under their ip and design rights. I am thinking I would like to change the design to bring the cost down and either stay with them or move on with another fabricator. My contract for the public art states that I own the copyright for the work so I am concerned about using something which is their opinion. What are my options.
Submitted: 6 months ago.
Category: UK Law
Expert:  Ben Jones replied 6 months ago.

Hello, my name is***** am a qualified lawyer and I will be assisting you with your question today.

Expert:  Ben Jones replied 6 months ago.

Were the costs discussed with you prior to manufacturing the prototype? Also, did you specify any aspect of the mechanisms during the process?

Customer: replied 6 months ago.
no costs discussed before the manufacturing of the prototype. I told them the overall budget for the job.The artwork is a kinetic piece which converts the wind into rotation. The rotation using the fabricators detail then beats a beater against a wooden block instrument. I specified the wooden block and the wind catcher shame but not any aspect of the mechanism
Customer: replied 6 months ago.
As the artist I have the option to redesign the scheme using a different mechanism and with a different shape. i would like to know at what point a design becomes original
Expert:  Ben Jones replied 6 months ago.

OK, thank you for your response. I will review the relevant information and laws and get back to you at the earliest opportunity. There is no need to wait here as you will receive an email when I have responded. Also, please do not responded to this message as it will just push your question to the back of the queue and you may experience unnecessary delays. Thank you.

Expert:  Ben Jones replied 6 months ago.

I have looked into your query in more detail but unfortunately it is not something I can assist with. I will therefore ‘opt out’ and a colleague better placed to deal with the nature of your query should hopefully pick this up soon. Please do not reply in the meantime as that will just assign the question back to me and you will experience a delay. Thank you

Expert:  Stuart J replied 6 months ago.

I see that the previous expert has opted out. I will try to help. when you say that they were paid to manufacture a prototype, whose design was the prototype?

Did they actually do the prototype and is it the full project cost which is now too high?

If it was their design for the prototype and you submitted a brief from which they manufactured the prototype, what is to stop you simply giving the brief to someone else?

In the documentation where you asked them to manufacture the prototype, was there any mention as to who would own the intellectual property? Did you not give them the overall budget at that prototype stage?

Thank you.

Customer: replied 6 months ago.
The design of the prototype was a technical solution developed in response to my concept. I defined the overall vision but they suggested a mechanical approach which I implemented.They did the prototype, the design has since changed again to get the cost lower but it's still way too high. they didn't do a full costing of their labour and materials until after I was awarded the commission. Full project cost is too high, I paid them for the prototype as agreed.I can give the brief to someone else, however some fundamental aspects of the brief are fixed and inform the artwork - for example each module has 30 beaters and 10 wooden blocks.They have stated after I said I wanted to tender the project that they issued terms and conditions and their designs are ip and design right protected. There were in fact no terms issued or discussed. I said this and they responded by sending their terms.
Expert:  Stuart J replied 6 months ago.

Thank you.

The situation with regard to an employer/employee is that the IP belongs to the employer if the design is employed unless there is any agreement to the contrary. If the design is an outside contractor or self employed, then the design is the IP of the designer unless there is an agreement to the contrary.

In this situation therefore as there appears to be no agreement to the contrary as to who owns the IP of any design which they have done for you) then the IP belongs to them.

From what you say, although your contract with the public art people say that you own the copyright, that is only between you and them and is nothing to do with you on the manufacturer. It appears to be an oversight on your part that you didn’t come to an agreement with the manufacture as to who would only IP.

They do not own the IP if anything was made by them but from your design. They only own it from anything which they designed.

They appear to have tried to impose their terms and conditions by sending them to you after the event.

Unless you have dealt with this company over a regular and persistent course of dealings, they cannot rely on terms and conditions given to you after the event. Hence, they are of no effect.

Nonetheless, what I have said in the first paragraphs with regard to the ownership of IP, still applies.

The simple (without going into individual features) test as to whether you have reached their IP would be whether a private individual would look at the new design and the old design and conclude of that the new design was actually the old design but modified.

I’m not certain whether that answers the question for you because you haven’t asked any specific questions but I would be happy to answer any specific questions which arise from this. Kind regards

Customer: replied 6 months ago.
Thanks for your answers,can someone own the IP to a mechanism? To give specifics, the project uses motion taken from the wind to hit drum sticks against wooden blocks. They designed a specific solution to do this. I can quite easily change the form of the artwork, details of how the mechnism works, but it will always involve wind causing the drum stick to hit a block. The aesthetic will always be similar as the project is like a machine, its designed based on function rather than form. Please can you give further advice? I can also show images.
Expert:  Stuart J replied 6 months ago.

There is IP in any creation. There is IP in a patent and IP in the registered and IP in an unregistered design right and hence, yes, there could be IP in the mechanism.

You can only patent unique features. You cannot patent a new way of using something which already exists. For example you couldn’t patent the method of using a hammer to knock a finial into the end of a curtain pole because the hammer already exists.

You can’t patent an idea but you can patent unique features. Hence, having sticks banging against a wooden block is not patentable in itself. However the way does it could be patentable and hence subject to IP. People who put patterns together are adept at finding unique features out of ordinary objects.

Customer: replied 6 months ago.
Hi Stuart,Thanks for your further comments, it seems the specifics would be useful so I attach a document to give an overview. Please see 170113 IP Advice.pdfKind Regards,Mark
Expert:  Stuart J replied 6 months ago.

I think what you have here are unregistered design rights. If whoever made this for you to your design decides that they are going to go off and do the same thing themselves, you have a claim against them for breach of your intellectual property in the unregistered design rights.

The difference between registered and unregistered design rights is quite simply that one is registered and the other is not. It’s easy to prove that registered design rights belong to you whereas with unregistered design rights need some proof. There is more to it, but for the purposes of what we’re talking about, that would be a good enough explanation.

For the reasons I have mentioned, I disagree that this work IP belongs to them.

Please don’t forget to use the rating service to rate my service. Unless you rate it positively, I don’t get any credit. The thread has now been open for almost 10 days. Kind regards.

Customer: replied 6 months ago.
Dear Stuart,Thanks for your reply. Page 2 is their design work, the fabricator offered a technical solution to the brief.Does that change this?Mark
Customer: replied 6 months ago.
Fabricator developed the technical solution on page 2 in response to my design on page 1. Please advise
Expert:  Stuart J replied 6 months ago.

This is one of those that ultimately, the judge would have to decide. There is no doubt IP in both solutions and I think what potentially would happen, if it came down to an argument, is that the court would decide that the company IP would not even exist if it hadn’t been for your idea in the first place.

Sometimes, there is no definitive answer on things have to be decided by the court. I think this is probably one of the. If there was a definitive answer to every problem, then the courts would be out of business.

Customer: replied 6 months ago.
Hi Stewart,Thanks for your reply. What I am still to understand is which aspects are inherent in my IP and which elements are their IP. I would like to redesign the project to not include any of theirs if possible....Mark
Expert:  Stuart J replied 6 months ago.

It is such a shame that you did not deal with this in the paperwork when you instructed them to do this. For the sake of one sentence, all of this could be avoided.

In simple terms, the test the court would use when deciding whether you had stolen any of their ideas would be whether the average man in the street would look at features of one and look at features of the other and conclude that they were the same thing or a copy.

Without breaking it down into component parts, it’s very difficult to just give you a global overall answer.

Customer: replied 6 months ago.
Thankyou stuart, I live and learn! I appreciate your input