Consultation outcome

Artificial intelligence call for views: designs

Updated 23 March 2021

Introduction

A design protects the appearance of the whole or part of a product resulting from features such as lines, contours, shape, texture and ornamentation. Protection rewards investment in the creative process and allows the owner of the design to control its use.

Several different types of design protection are currently available in the UK. They are: registered designs, unregistered design right, and registered and unregistered Community designs. These rights differ in types of product which can be protected, length of protection and geographical scope of protection.

The current legal framework for design protection in the UK is set out in:

• the Registered Designs Act 1949 (the “RDA”) and Registered Design Rules 2006
• the Copyright, Designs and Patents Act 1988 (the “CDPA”) for UK unregistered design right
• Council Regulation 6/2002 on Community designs (the “CDR”) for registered and unregistered Community designs

The UK left the EU on 31 January 2020. We are currently in a transition period. At the end of this period the Community Design Regulation will no longer apply in the UK. From that date, UK design protection will be provided by UK registered designs, UK unregistered design right and a newly created supplementary unregistered design. This will provide similar protection to the current unregistered Community designs (UCD). Applicants will still have the option of applying for a registered design using WIPO’s Hague system for international registration (s15ZA RDA).

The main legal issues around AI and designs relate to authorship, ownership and infringement. The following sections set out the way the law deals with these topics. It asks questions about whether the balance is right, and whether the law may need to change to take account of the increasing prevalence of AI in future.

Authorship and ownership

This section sets out the law relating to the authorship and ownership of designs and asks questions about how the current law applies to AI systems and whether the law would need changing to recognise AI as the author of a design.

Although there are some differences, designs legislation gives the owner of a design the exclusive right to use it (s7(1) RDA, s226 CDPA and Article 19 CDR). Legislation sets out that the author of a design is treated as the owner (s2(1) RDA, s214(1) CDPA and Article 14 CDR) and the ways in which ownership can be acquired (s15B, 15C and 19 RDA and Article 14 CDR, for example by being given it or buying it.

There is nothing in the legislation that says who is allowed to apply to register a design. There is a requirement that an application must include the identity of the person making the application (Rule 4(1)(a) of Registered Design Rules 2006).

The RDA and the CDPA both say that where a design is generated by a computer, the person who made the arrangements necessary for the creation of the design will be considered the author (s2(4) RDA and s214(2) CDPA).

The language of the RDA and CDPA therefore suggests only a legal person who can own property can be the author or owner of a UK registered or unregistered design. It is not currently possible for AI, which does not have legal personality, to be recognised in law as the author or owner of a design.

Unlike in UK law, there are no specific provisions in the CDR in relation to who owns a design generated by a computer. The language of the CDR provides for a legal person to be the owner of the right in the Community design. Although this legislation will no longer apply in the UK from 1 January 2020, we are seeking your views on the Regulation as concepts relating to UCDs will still be relevant to the new UK supplementary unregistered design.

Questions:

We anticipate changes would be required to legislation if a decision were made to allow AI to be recognised as the author of a design.

1. Do you agree with the analysis above which concludes that it is not possible for AI to be the author or owner of a UK or Community design?

2. Are there, or could there be, any tensions with the current legislation when seeking to register a design or be recognised as the owner of an AI-created design? Who would be the legal entity applying for the rights?

The RDA and CDPA set out that the person who made preparations for the creation of a computer-generated design is the author or creator (s2(4) RDA and s214 CDPA). If read broadly this provision could give the creator of the AI system rights to be identified as the author of a design, even if they have not inputted data required for it to operate.

3. Who should be recognised as the author of a design created by AI where the system has been bought from a supplier, and the buyer has provided input or data to the system? Does the wording of legislation need to be changed?

4. Do you consider that legislation should be changed to allow AI systems to be recognised as the author of a registered design or designer of an unregistered design?

5. If so, how should we assess when AI stops being a tool programmed by a human and becomes an intelligent entity capable of producing its own IP? What proof or evidence would be required?

As aspects of the future UK designs framework will be based on concepts currently found in the Community Design Regulation, we would like your views on the following:

6. Unlike UK domestic legislation, the CDR has no provisions relating specifically to computer-generated designs. Does this result in legal uncertainty in relation to authorship and ownership of computer-generated designs? Would the same apply to AI-generated designs?

7. Are there any other issues in relation to the CDR which we should consider in relation to AI?

Infringement

We anticipate that AI systems will increasingly play a role in the creation of designs. We need to consider the implications on design infringement. This section sets out the relevant law. It asks whether the legal tests for deciding whether infringement has occurred can be applied to AI systems.

A design is infringed when a person does anything which is the exclusive right of the owner without the owner’s permission (s7A(1) RDA). This includes making, offering, putting on the market, importing, exporting or using a product a design is incorporated or applied in, or stocking a product for any of these reasons (s7(2) RDA and Article 19(1) CDR).

The RDA and CDR both set out that protection relates to a design and any design which does not produce a different overall impression on the informed user. It also sets out that the degree of freedom available to the author when creating the design is taken into account (S7(1) RDA and Article 10 CDR).

The legislation does not clarify what is meant by an “informed user”, but the courts in Samsung v Apple and PepsiCo v Grupo Promer have provided the following guidance:

(a) they are a user of the product in which the design is intended to be incorporated (not a designer, manufacturer, technical expert, or seller);
(b) they are particularly observant;
(c) they have knowledge of the design corpus and the design features normally included in the designs existing in the sector concerned;
(d) they are interested in the products and show a relatively high degree of attention when they use them;
e) they conduct a direct comparison of the designs (unless that is impractical or uncommon due to specific circumstances or certain characteristics of the products).”

The CDPA contains similar provisions for unregistered UK design rights. It sets out that the owner has the exclusive right to reproduce the design for commercial purposes (s226(1) CDPA). This “means copying the design so as to produce articles exactly or substantially to that design” (s226(2) CDPA). A design right is infringed by a person who does anything which is the exclusive right of the owner without permission (s226(3) CDPA). Case law says that the test to decide if a design is substantially similar is objective. And it should consider whether a customer would think the designs are similar.

Further questions arise when considering who should be held liable for infringing a design. It will be for the courts to determine the answer but the use of “a person” in relation to infringement (s7A(1) and (2) RDA, s226 CDPA and Article 19 CDR) suggests only a legal person may infringe a design.

Questions

8. Can the actions of AI infringe a registered or unregistered design? Can AI do the acts set out in law(s7(2) RDA?

9. When considering infringement are there, or could there be, any difficulties applying existing legal concepts in the registered designs framework to AI technology? Does AI affect the use of the “informed user” in measuring overall impression?

10. If AI can infringe a registered design, who should be liable for the infringement? Should it be the owner, the programmer, the coder, the trainer, the operator, the provider of training data, or some other party?

Respond to the call for views by emailing AIcallforviews@ipo.gov.uk