Friday July 17th 2009, by Piers Strickland
A recent decision by the European Court of Justice has confirmed that under the European Design Regulation (which governs the EU-wide “Community Design Right”), the commissioner of a design does not automatically become the first owner of that design right. The European Design Regulation provides that:
“…where a design is developed by an employee in the execution of his duties or
following the instructions given by his employer, the right to the Community design shall vest in
the employer, unless otherwise agreed or specified under national law.”
However, under the European Design Regulation, there is no mention of a commissioner of a design being the first owner of the design right, where there is no employee-employer relationship.
Under UK law, the position is different with respect to unregistered designs. Specifically, in the UK, under the Copyright, Designs and Patents Act 1988, the first owner of a commissioned unregistered design will be the commissioner (section 215(2)).
COMMENT: This decision is not surprising and simply re-inforces the point that commissioners of designs should ensure that there is a written agreement in place governing who is to own the design right in question. Although, for example in the UK, national provisions may provide relief in some circumstances to commissioners, it is best practice to confirm the position in advance as to who is to be the owner of the design right in question to avoid disappointment.
