20 Apr 2020Tim Slingschröder
It might be no surprise a large part of the world’s designs are made by people who made designing their profession. Using their acquired knowledge and experience, they can spend their 40-hour work weeks on nothing but drafting what might be the next revolutionary Industrial Design. But once a designer finishes his ingenious plans at the end of a long working day – does he hold the rights over it, or do these belong to his employer?
Article 6 of Law 31/2000 about Industrial Designs grants all rights over an Industrial Design to the party who created it. Such a designer can not be a company or other legal entity; besides the simple fact a legal entity can only act through actual persons operating on its behalf, Article 1 of the Industrial Design Law states that only persons can be regarded designers.
When it comes to designers employed by a designing company, however, the provisions of Article 7 apply, which under normal circumstances recognize the designer’s employer as the party who can file for registration of the Industrial Design on its behalf. This provision applies to employment relations established through contracts as set in Article 50 of Law 13/2003 about Manpower but is also followed in case of one-time assignments.
An Industrial Design ‘created in an official relationship with another party within the working environment’. That is how Article 7 of the Industrial Design Law describes designs which are to be registered on behalf of an employer rather than on behalf of the subordinate who actually spent his hours drawing it. How to define what falls within this ‘working environment’ and what does not has led to discussions in numerous fields of law and in numerous countries around the globe.
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It is safe to assume that, if an employee is being asked to create a certain work, such work falls under designs being made ‘within the working environment’. Projects which are not part of the tasks given to him by his employer are usually not considered as made ‘within the working environment’. If creating a specific design is not stipulated in his employment contract or other instructions and the employee drafts a design nevertheless, his employer can not claim any rights over it.
That being said, staff members can still get themselves into legal trouble when making designs on their own behalf. Employees who use their employer’s resources to make their Industrial Designs may face disciplinary penalties or even losing their jobs. The same goes for designers working on their personal designs during working hours, or designers who make works for their employer’s clients or competitors. This does however not change the fact the employee in question will be regarded as the rightful designer of the work, and will, therefore, be the one who can apply for its registration and subsequent exclusive rights.
Though Article 7 of the Industrial Design Law normally means designers lose the rights over their designs to their employers, this provision is not a mandatory one. It does leave employers and employees the possibility to make the designer the rightsholder over his work, as long as both parties agree on this.
Though this obviously sounds disadvantageous for employers, it theoretically does provide designers with some legal space to negotiate about the rights over their creations. Besides having the Industrial Design registered on their personal names rather than on behalf of the company, they can opt for a license to use their designs under certain circumstances as set in Article 33 of the Industrial Design Law.
An employer appears to have the law on his side and could simply decide not to hire designers who do not agree upon granting the company the rights over the designs they made. An important reason for designers to worry about this has to do with their future careers.
Many of them are afraid that, if they intend to apply for another job or start working independently, they will not have a portfolio with designs made by them to present to clients and new employers. Gladly for them, the Industrial Design Law has its Article 8. This article grants designers under all circumstances the right to have their names recorded in the Industrial Design Certificates and in the official Register of Industrial Designs, hence giving them the proof they have drafted the designs they claim to have drafted.