Spotlight on UK Design Law – Part 5 – “Future Technologies and Computer Generated Designs”

UKIPO recognizes that technological developments act as catalysts for innovation in the design sector. In its Call for Views, the UKIPO notably identified the impact of artificial intelligence (AI) in the creation of designs. While acknowledging the benefits of AI tools for designers, UKIPO highlighted the need to balance protection between designs created by humans and designs generated by computers.

Section 2(4) of the Registered Designs Act 1949 (RDA) states that the author of a design must, “In the case of a design generated by computer in circumstances such that it there is no human author, [be] the person by whom the necessary arrangements are made for the creation of the design”. A similar provision exists in relation to design rights in Section 214(2) of the Copyright, Designs and Patents Act 1988 (CDPA). This article provides that “in the case of a design or model generated by computer, the person by whom the arrangements necessary for the creation of the design or model are taken shall be deemed to be the designer”. It should be noted that the provisions relating to computer-generated works in the area of ​​designs effectively reflect the position on authorship of computer-generated works under copyright law.

In the Invitation to Comment, UKIPO asks whether there are any benefits to continuing to protect computer-generated designs, or – alternatively – whether the additional unregistered designs regime should be extended to protect such designs.

Our view: We are of the view 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 deleted.

  • While the legislator is to be commended for attempting to anticipate future technological developments, the provisions as drafted are insufficient to address the complex processes underlying the technology concerned, particularly in the context of works “created” by tools/applications powered by artificial intelligence. Generating such works by AI in practice involves many 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 many human operators. However, the wording of the RDA and CDPA summarizes the author/designer as a single “person by whom the arrangements necessary for the creation of the design are made”. Regardless of the practical difficulty of determining who entered into a relevant arrangement (when there may be a large team of human operators responsible for the AI ​​tool), the provisions as drafted are clearly insufficient to address the technological complexities of computer-generated works, which may indeed have many contributors;

  • In the context of unregistered designs, the survival of which rests at least partially (according to case law) on the concept of originality, the grant of protection for computer-generated rights is – as a concept – illogical. Regardless of whether ‘originality’ is interpreted according to the criteria of the author’s ‘skill, work and judgement’, or through the European prism of the author’s own intellectual creation, both concepts imply the exercise of a contribution that is directly related to the contribution. In the context of computer-generated works, the author will be the person who arranged for the creation of the design. Concretely, it can be the programmer who writes the algorithm or the person who trains the model concerned. However, none of these individuals can be said to have exercised skill, labor or judgment in the creation of the design itself, as opposed to the outcome of the AI ​​program: their contributions will be too far removed. However, the criterion of originality is linked specifically to the design, rather than to a process whose execution leads to the design. There is thus a disconnect between the requirement of authorship governing computer-generated works in the context of unregistered design rights and the subsistence of an original design itself;

  • There are reasons to argue that protection of computer-generated designs should be excluded for political reasons. An AI-enabled tool used to create designs could have the ability to generate a significant number of works in a very short time. Subject to meeting the required novelty/originality threshold, the author of such works (whoever they are) is then placed in a position of strength, as they will have at their disposal an ever-expanding portfolio of non-original design rights. registered, which in the UK give rise to a monopoly period of at least 10 years. It is therefore possible that the extension of such protection for computer-generated designs could lead to the rise of design trolls, thereby inhibiting innovation.

UK Designs Framework Review – Call for views from UKIPO

Legal protection of design rights in the UK is no small feat. As intellectual property practitioners and design firms know only too well, UK design law encompasses a myriad of intellectual property rights, registered and unregistered, protecting different types of designs and with a scope and variable term of protection. This framework has been further complicated by the introduction of new ‘spin-off’ design rights in the UK post-Brexit and other changes in the legal landscape. It is therefore not surprising that the sheer complexity of design law is often cited by design firms (especially those without legal representation) as a key reason for not taking full advantage of the protection offered to them. UKIPO is aware of the need to simplify the system and of the opportunities offered by Brexit to reshape national design law for the future.

Between January and March 2022, UKIPO organized a ‘Call for Views’ consultation on the reform of the UK designs framework. He invited design industry stakeholders and intellectual property professionals to submit proposals on possible improvements to the current system. The consultation is now complete, and we will monitor and report on further developments as they arise.

Over the next few weeks, CMS will explore some of the topics covered by the consultation and consider key themes that are likely to emerge and be the subject of further discussion. Please contact us if any of these issues directly affect your business and you wish to discuss them confidentially with our Designs team.

To view the articles in this series, click here.

Abdul J. Gaspar