The cumulative protection of designs in the European union and the role in such protection of copyright

Journal of Intellectual Property Rights

Volumn 18, Issue 1, 2013, Pages 83-87

  Cook, Trevor ^a  

^a Bird and Bird LLP   (United Kingdom)

Author keywords

Copyright; Design; Unitary protection

Indexed keywords

EID: 84872718447     PISSN: 09717544     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (17)

1. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs OJ L 3, 2002, p.1.
2. Directive 98/71/EC of 13 October 1998 on the legal protection of designs OJ L289, 1998, p.28.
3. In the UK, the obligation under the Paris Convention to protect against acts of unfair competition is met by the law of passing off, which however has little application in practice to the protection of designs.
4. By the Copyright (Industrial Processes and Excluded Articles) (No 2) Order 1989, and subject to certain specific exclusions, an article is treated as having been made by an 'industrial process' if it is one of more than 50 articles all of which are copies of a particular artistic work.
5. George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 holding a certain, somewhat prosaic, design of furniture not to be a 'work of artistic craftsmanship', one member of the House of Lords (Lord Reid) having observed that he found 'no evidence at all that anyone regarded the appellants' furniture as artistic' and Lucasfilms v Ainsworth [2011] UKSC 39 holding a 'Star Wars' 'Stormtrooper' helmet not to be a sculpture.
6. Within the EU itself one can identify amongst the countries that traditionally accepted such cumulation-Austria, Belgium, Bulgaria, Czech Republic, Denmark, Estonia, Finland, France, Germany, Hungary, Italy (now), Latvia, Netherlands, Portugal, Spain and Sweden and, elsewhere in Europe, Norway (which as a non-EU member of the EEA aligns its laws with those of the EU) and Switzerland. Cumulative protection originates in the theory, first developed in France, of 'unity of art', under which there should be no distinction or discrimination as between artistic creations on the basis of aesthetic merit or mode of expression. Such an approach is also suggested by the WIPO Model Law on Industrial Designs of 1970 (Publication No 808(E), Section 1(2)).
7. For full discussions of various national approaches, both within and outside Europe, see the National Reports filed in connection with AIPPI Question 231 on 'The interplay between design and copyright protection for industrial products, https://www.aippi.org/?sel=questions&sub=workingcommittees &viewQ=231#231 (4 December 2012)
8. The corresponding provisions in Regulation 6/2002 on Community designs are Recital 32 and Article 96(2)
9. Case C-168/09 Flos v Semarao Casa e Famiglia (CJEU 27 January 2011).
10. Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights OJ L290, 24.11.1993, p.9, now replaced by Directive 2006/116/EC of 12 December 2006 on the term of protection of copyright and certain related rights OJ L372, 2006, p 12.
11. This approach has been criticised in a letter to 'the Times' of 31 July 2012 signed by Professor Lionel Bently and several other intellectual property professors at UK universities, pointing out that the UK did not intervene in Case C-168/09 Flos SpA and thus the CJEU had not been informed that during the passage of Directive 98/71 the UK had secured permission to retain its 25 year term. They argued that before so legislating the UK Government should clarify whether such freedom remained intact and that, even if it did not, there were less extreme legislative options for limiting the extent of protection of copyright in designs. See also Lionel Bently - The Return of Industrial Copyright? - University of Cambridge Faculty of Law Research Paper No. 19/2012 (July 2012) at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2122379 (last accessed 4 December 2012)
12. Case C-5/08 Infopaq A/S v Danske Dagblades Forening (CJEU 16 July 2009)
13. Estelle Derclaye - Infopaq International A/S v Danske Dagblades Forening (C-5/08): Wonderful or Worrisome? The impact of the ECJ Ruling in Infopaq on UK Copyright Law - European Intellectual Property Review, 32 (5) (2010) 247-251. Derclaye also suggests that this decision may challenge the legitimacy of the UK's 'closed list' approach to types of copyright work.
14. Ironically the 'author's own intellectual creation' rubric was first introduced into EU copyright law in Directive 91/250 on the legal protection of computer programs (now replaced by Directive 2009/24/EC) specifically to reduce the threshold of originality that German law had previously required for copyright to subsist in computer programs as originally established in Inkassoprogramm (Federal German Supreme Court 9 May 1985). The Directive was effective in so doing, as confirmed in Accounting Program (Federal German Supreme Court, 14 July 1993).
15. Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L167, 22.6.2001, p.10. Article 5(3)(o) does however permit Member States to retain exceptions and limitations where these existed already under national law, are of minor importance, concern only analogue uses and do not affect the free circulation of goods. Even were any Member States to have addressed designs in this way (as the UK purported so to do with Sections 51 and 52 of the Copyright Designs and Patents Act 1988) it is unclear to what extent such an exceptions and reservations could be regarded as minor, or as not affecting the free circulation of goods.
16. Cook Trevor, How IPRs, like nature, abhor a vacuum, and what can happen when they fill it - Lacunae and overlaps in intellectual property, Journal of Intellectual Property Rights, 17 (4) (2012) 296-304.
17. Stephen Ladas in Patents, Trademarks, and Related Rights - National and International Protection (Harvard University Press 1975) notes (at page 829) that 'the formation of a special branch of industrial property for designs and models is a historical accident' which he then traces back to the interpretations placed by the French courts on a law of 1806 introduced in response to complaints, made to Napoleon by the manufacturers of Lyon when he visited that city, that the French copyright law of 1793, although broad enough to cover any kind of design, was in practice inadequate for their purposes.