They Stole Our Idea!

IP Newsletter, January 2007

You bid on a project and presented your proposal. Later, they told you they decided to go another direction. Disappointed, you accept that you can’t win all the time. Then, you find your features incorporated into their project. They changed them somewhat but they clearly used the features you pitched.

You wonder if your have any recourse.

What’s protected?

Many assume copyright protects ideas and concepts. Not exactly! Copyright protects original work. In copyright parlance, original work means that the work is not a copy of an existing work. It is new work requiring some skill in its creation.

While a direct copy of original work is infringement, drawing inspiration from common knowledge or existing work is acceptable. The challenge is separating originality from the ordinary. In Natuzzi SpA v De Coro Ltd [2007] HKEC 83, the Court observed that, “It may not be easy to draw the line between drawing inspiration from a competitor’s product or to follow a trend in the market on the one hand and copying a substantial part of other’s design so as to constitute copyright infringement on the other.

So is copying allowed?

Not all copying is improper. Copying of common, unoriginal features or incorporating general ideas or concepts is allowed. Infringement is unauthorized substantial use of original features of someone’s work.

The challenge is identifying original features, determining substantial use and showing independent development of the work.

Original work is often a combination of original and common elements.

Suppose I build a bicycle and decide to use off the shelf components such as tires, chains, brake mechanism and frame. I do not have copyright for design using industry standard parts. Anyone can use them in their bikes. However, my bike has a figure 8 shaped seat and a round car-like steering wheel. These features are not novel but, for copyright purposes, they are considered original since they are not commonly used for bicycles and it took some skill on my part to design it.

Someone is inspired and decides to copy it. Is it infringement?

Infringement?

To determine if infringement exists, common and ordinary features such as the standard components are disregarded. Focus is onoriginal features. I need not show that their seat and steering wheel are identical, just that they closely resemble mine. They can alter my original features, such as using a curvy steering wheel instead of a round one or an oblong seat instead of a figure 8. The key is visual impression. Do they closely resemble each other? If so, infringement is likely.

If their designer was a former employee in my shop with access to my blueprints or prototype, then I have evidence that they did not develop theirs independently. Showing originality, similarity and access to my bike, I have established a strong case and they have to show they did not infringe.

On the other hand, even if 90% of their bike is identical to mine, but if their steering wheel is square and their seat is rectangular, so that there is little or no visual resemblance, then I may not be able to establish a case for infringement.

In the real world, things are not so clear. As the Court observed above, it is not easy to draw a line between following market trend and infringement. That is because it is not a fixed line – the line is different for each case. Determining what is an original feature often requires the testimony of experts in the industry but often experts do not agree. Once originality is established, a court will decide if there is substantial resemblance between the two. That’s why sometimes it is difficult to determine if copyright infringement exists.

So, is there recourse against someone using your features in their project? If your features are original, then yes. But it may be a difficult and expensive exercise to prove it. In our next newsletter, we will explore how to reduce infringement when you submit proposals.

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