Info zone – 'Copycat' laws
Restaurateur Barry Jones has recently returned to the Midlands from a short stay in London. He was inspired by one particular restaurant, Carlo's, at which he had eaten while he was there.
He was impressed by the decor, the menu layout and typeface, the style of furniture, cutlery and crockery.
Jones decides to engage a designer, Michelle Smith, to recreate Carlo's at his Midlands premises, and sends her down to the London restaurant for a meal.
She leaves New Street Station with Jones's words ringing in her ears: "I want to recreate Carlo's in Birmingham - in every detail!"
Smith faithfully records every detail of Carlo's on the back of a napkin during the meal, and presents her plans to Jones for final approval. Jones commissions work to begin. A week before the opening of the new restaurant, Jones receives a letter from Carlo's solicitors claiming infringement of copyright and trademarks and passing off.
The letter demands compensation for damage to reputation and lost profits.
Can Jones continue with the planned opening of the restaurant without the owners of Carlo's stopping him? *
This case study is a work of fiction and the names, characters and incidents portrayed are fictitious. Any resemblance to actual persons, living or dead, events or localities is coincidental.
The layout of a restaurant is unlikely to have copyright protection, but features such as murals, furniture, cutlery, crockery and the typographic arrangement and artistic look of the menu might
What the expert advises
Adam Rose is a partner at Paisner & Co, solicitors
There are various intellectual property rights that would need to be assessed before deciding if Carlo's has a case against Jones.
Trademarks - if Jones is intent on calling his restaurant "Carlo's", he needs to have a trademark search carried out to make sure that "Carlo's" is not already registered (or applied for) in someone else's name. Under the 1994 Trade Marks Act, a trademark may consist of a personal name. Further, the UK is a member of the EU's Community Trade Mark (CTM) regime, and so any search should be made of both the UK and CTM registers.
Even if "Carlo's" doesn't show up as belonging to anyone, is the name so well known that goodwill associated with the London outlet would be diminished by Jones's opening in Birmingham? To succeed in a passing off action, Carlo's owners would need to show that they had goodwill extending to Birmingham, and that diners associated Jones's outlet with Carlo's.
Copyright - the layout of Carlo's restaurant is unlikely to have copyright protection, but the mural, designed by a leading member of the BritArt scene, does, and copying it would entail copyright infringement. Carlo's chairs (reputedly handmade) could well have copyright protection as "works of artistic craftsmanship" and also benefit from "design right". The typographic arrangement and artistic look of the menu would be protected as a copyright work and the menu itself could also be protected by "database right".
The cutlery and crockery, all marked "Carlo's" (for which Carlo's holds CTM registrations) could be registered designs as each piece has been crafted to produce an outward appearance that was truly new in the 1980s. If they have been registered, and the registration renewed each five years, they remain protected for 25 years - until 2011.
Even if, after a full assessment, it is decided that Carlo's has no rights that Jones need worry about, there is one final issue for him to resolve - who owns all the work Smith has undertaken for him? In the absence of a signed agreement to the contrary, copyright in any works produced by Smith will belong to her - even though Jones has paid her thousands of pounds in consultancy fees.
Also, unless Smith has agreed to keep Jones's plans confidential, she could suggest a similar idea to one of Jones's competitors.
Contacts
Paisner & Co
020 7427 1199
arose@paisner.co.uk
The Chartered Society of Designers
020 7831 9777
Design Business Association
020 7812 2123
