Who owns a design right?

As is probably the case in all jurisdictions, a design as intellectual property belongs primarily to its creator. In case of a team of designers (all natural persons) this leads to a shared property with several owners. In case of a formal acknowledgement of that ownership in a design register, these creators or designers will be entered as owners.

What is also agreed generally, is that such property can be transferred voluntarily or in certain cases by law to one or more successor(s) in title. Such successors need not also be natural persons. In fact, usually these are legal persons. Problems often start with such successions especially when they are regulated by Law.

The main case regulated is the design creation by an employee. However, the different national laws and the EU Design Regulation use different wordings which lead to different width of the provisions and border line cases. As an example, Austrian Design Law defines the cases in which design creations of employees can be taken up by the employer more narrow than the EU Design Regulation. Such problems are solved by international private law on the basis that the national law of the employer or of the premises in which the design was created, respectively, decides. The EU Design Regulation follows that with the wording in its Art. 14 para 3 "unless otherwise specified under national law".

The second, much more difficult case is that of design creations under contract for work. Here, one has to differentiate between the right of use or to apply the design to goods, and the right to protect it in one's own name. Austrian Design Law provides that also in case of a contract to create a design, the right to protect it belongs to the one ordering it. This, of course, encompasses also the right of use and to exclude others including the creator. However, the EU Design Regulation does not provide that right in Art. 14. Of course, one can take the position that if the person ordering the design work gets in possession of all rights on a design worldwide by national law that contains also the right to Community Design protection. But Art. 15 provides that if the person ordering the design discloses or claims these design rights without being entitled by Art. 14, which is the case here, the creator can claim to become recognised as legitimate holder of the Community Design. That is a typical conflict of Law.

Such problems are best resolved beforehand by a careful work contract, which clarifies which rights are transferred by the creator of the design. That is even more necessary considering that the design work is probably also protected by Copyright Law which even requires a more precise contract prescribing precisely which rights are transferred to the person ordering the work.

DI Helmut Sonn