Last week we identified hypothetical company ‘3DWorx’ as Dutch and their client to be Dutch as well. In order to answer the next question: “Can 3DWorx use this design for others”, we need to have a look at what it is that the client is going to use 3DWorx’s design for.
By Hub Dohmen, lawyer at Dohmen Advocaten
If the answer is: “I am a manufacturer of fidget spinners”, then 3DWorx has no intellectual property rights: Fidget&Co is the (hypothetical) designer of the design (since there is mass production for trade) and therefore, the copyright holder as well.
If the answer is that the client is a dentist’s practice that wants attractive chairs in the waiting area, then 3DWorx has the intellectual property rights: the actual designer is the legal designer and can claim design rights.
The Netherlands does not have any client copyright law (with the exception of the instance I just discussed): the creator has the copyright; 3DWorx in this case. Unless – and now we are moving into the many exceptions in Dutch Copyright Law – the dentist has asked that the chairs read ‘designed by dental clinic in Amsterdam’ or that the dentist was present during the design process providing continuous instructions.
There is also the possibility that in its general conditions 3DWorx states design right and copyright are in its possession as a deviation from the law. If the copyright for any reason belongs to 3DWorx, then the assignment results in implicit license for the client: the client is allowed to use the work for the objective specified for the assignment.
That license is not exclusive, either: under Article 2 of the Dutch Copyright Contract Act, 1 July 2015, Dutch copyright has been changed in this sense: there is not only a required certificate (a written document with two signatures) for the transfer of copyrights, but also for providing exclusive license. So, if the chairs read ‘design by 3DWorx’, then the dentist can expect that these chairs will be used by their competition as well.
Attention should still be paid to the fact that there can also be conflicting rights: the EU has the phenomenon of ‘non-registered design right’ that applies for three years and is granted to the actual designer. This contrasts with the BCIP, which determines that design rights and copyright are given to the client for something which is meant for mass production for trade. The highest court in the Netherlands did not see a problem here, because EU law allows the member states to freely decide who receives copyright: some legal experts think differently and feel that it would be better to get rid of the BCIP. In 2014, the United Kingdom disposed of a regulation that was similar to the BCIP in order to be more in line with the EU (which is no longer necessary thanks to Brexit).
Discussing what pertains to ‘the EU’ (or even ‘the world’) is not worthwhile, because other EU countries may or may not have regulations that are comparable to those of the Netherlands. Is this something to be happy about? For legal experts, probably yes—for others, no.
The moral of the story: given that you do not know what kinds of exceptions each country has devised, it is better that you arrange in advance who will become holder of the copyright and design rights. The price tag for exclusivity (additional price) is a better option than the price tag for uncertainty: costs of legal proceedings and the chance that the court decides in the other party’s favour.
We would be happy to help you avoid uncertainty by creating a good contract or good general conditions. In the undesirable event that it is already too late (nothing on paper and a dispute under way), then we are also here to help you.
Dohmen advocaten – technology lawyers