The UKIPO recognises that developments in technology act as catalysts for innovation in the designs sector. In its Call for Views, the UKIPO identified in particular the impact of artificial intelligence (AI) in the creation of designs. While acknowledging the benefits of AI tools for designers, the UKIPO emphasised the need to balance protection between designs created by humans and computer-generated designs.
Section 2(4) of the Registered Designs Act 1949 (RDA) states that the author of a design shall, “In the case of a design generated by computer in circumstances such that there is no human author, [be] the person by whom the arrangements necessary for the creation of the design are made”. A similar provision exists in relation to design rights at Section 214(2) of the Copyright Designs and Patents Act 1988 (CDPA). That section provides that “In the case of a computer-generated design the person by whom the arrangements necessary for the creation of the design are undertaken shall be taken to be the designer”. It is noted that the provisions for computer generated works in the field of designs effectively mirror the position in connection with the authorship of computer generated works under the law of copyright.
In the Call for Views, the UKIPO asks whether there are benefits in continuing to protect computer generated designs, or – alternatively – whether the supplementary unregistered design regime should be expanded to protect such designs.
Our view: It is our contention that the protection extended to ‘computer generated works’, whether in the context of registered designs under the RDA or design rights under the CDPA, should be removed.
Although the legislature should be commended for attempting to anticipate future technological developments, the provisions as drafted are not sufficient to address the complex processes that underlie the relevant technology, particularly within the context of works ‘created’ by tools/applications powered by artificial intelligence. The generation of such works by artificial intelligence in practice entails numerous inputs/processes, including training datasets, training algorithms, model architecture, neurons, weights and thousands of layers. Each of these inputs/processes is likely to be overseen/managed by numerous human operators. However, the formulation in the RDA and CDPA distils the author/designer to a single ‘person by whom the arrangements necessary for the creation of the design are undertaken’. Quite aside from the practical challenge of determining who has made a relevant arrangement (when there may be a large team of human operators responsible for the AI tool), the provisions as drafted are evidently insufficient to address the technological complexities of computer-generated works, which may in fact have numerous contributors;
In the context of unregistered designs, the subsistence of which relies at least partially (in line with case law jurisprudence) on the concept of originality, the grant of protection for computer-generated rights is – as a concept – illogical. Irrespective of whether ‘originality’ is construed according to the criteria of ‘skill, labour and judgment’ of the author, or through the European lens of the author’s own intellectual creation, both concepts involve the exercise of input that is tied directly to an author’s contribution. In the context of computer-generated works, the author will be the person who made the arrangements necessary for the creation of the design. In practical terms, this may be the programmer who writes the algorithm, or the person who trains the relevant model. However, neither of those individuals could be said to have exercised skill, labour or judgment in connection with the creation of the design itself, as opposed to the output of the AI program: their contributions will be too remote. Yet the originality criterion is tied specifically to the design, rather than a process, the execution of which leads to the design. Thus there is a disconnect between the authorship requirement regulating computer generated works in the context of unregistered design rights and the subsistence of an original design itself;
There are grounds to argue that protection for computer generated designs should be excluded for policy reasons. An AI-enabled tool that is used to create designs could have the capacity to generate a significant number of works in a very short period of time. Subject to satisfying the requisite novelty/originality threshold, the author of those works (whoever that might be) is then placed in a powerful position, as they will have at their disposal a constantly expanding portfolio of unregistered design rights, which in the UK will give rise to at least a 10-year monopoly period. It is therefore possible that the extension of such protection for computer generated designs will lead to the rise of design trolls, thereby inhibiting innovation.
Reviewing the UK designs framework – UKIPO’s Call for Views
The legal protection of design rights in the UK is no picnic. As IP practitioners and design businesses will be all too well aware, UK design law comprises a myriad of IP rights, both registered and unregistered, protecting different types of designs and with a varying scope and term of protection. This framework has been further complicated by the introduction of new UK “spin off” design rights post-Brexit, and other changes to the legal landscape. It is no surprise, therefore, that the sheer complexity of design law is often cited by design businesses (particularly those without legal representation) as a key reason for not taking full advantage of the protection that is available to them. The UKIPO is alive to the need for simplification of the system, and the opportunities presented by Brexit to re-shape domestic design law for the future.
Between January and March 2022, the UKIPO ran a ‘Call for Views’ consultation on the reform of the UK designs framework. It invited submissions from design industry stakeholders and IP professionals on possible improvements to the current system. The consultation has now closed, and we will monitor and report on further developments as they arise.
Over the next few weeks, CMS will be exploring some of the topics covered by the consultation, and will be considering the key themes that are likely to emerge as the focus of further discussion. Please get in touch if any of these issues directly affect your business and you’d like to discuss them in confidence with our Designs team.
To view the articles in this series, click here.