"Have you ever wanted to get inside David Beckham's pants?"

In the days before Beckham:
Arsenal's legendary Alex
James, wearing his own
choice of famously long
shorts ...

Listeners to BBC's Radio Five, sleepily turning on their radios this morning, might have been startled into full wakefulness -- as indeed this blogger was -- by the question posed by the title of this blog post. The question was not however directed at sufferers from beckamphilia. Rather, it was a literal indication that a range of David Beckham underwear has just been launched, amid great media excitement and the usual hype. According to this morning's Independent:

"For a man so often seen modelling pants David Beckham was noticeably shy at the launch of his own range of underwear yesterday. Hundreds of fans hoping to catch a glimpse of "Goldenballs", as the footballer is known to his wife, had to make do with posters and nine-foot-tall silver statues. ... Putting his name to pants was perhaps a logical step for Beckham, the footballer, model and now hosier. His wife has put her name to an award-winning label and almost sold out of her second line when it launched earlier this week.

In a simple colour palette of grey, black and white, the nine no-frills cotton designs (which also include pyjama bottoms and vests) have a classic, sporty feel but there's none of the hi-tech fabric that Beckham will be more used to wearing in his day job. David has high ambitions for his brand. "I've been around for 36 years, I've seen my fair share of underwear," he said at a press conference. "I'd love to be as big as Calvin Klein."

The clamouring crowds that have become a familiar sight outside H&M on launch days were replaced by 300 people queuing patiently to get their hands on Beckham's underwear before today's global launch. ...

Matt Adams, 23, a graphic designer, and Leah Hummerston, 23, a fashion PR assistant, both professed their love for the star. "He's a massive celebrity and incredibly talented but seems humble with it", said Matt. "He's not just a successful businessman, he's a brand. I'd still buy H&M anyway because it's reasonably priced." Leah added: "It's more tongue-in-cheek than serious." ... ".

According to the discussion on the Five Live Breakfast programme, Beckham is reputed to have designed the underwear himself. The Beckhams appear to be remarkably talented in this sphere of activity, since David's wife, one-time Spice Girl and model Victoria, is also described as a designer in her Wikipedia entry.

What interests this blogger is the point at which design and brand meet and, it seems, merge.  It may well be that the Beckhams actually perform acts of creative design, possessing the necessary skills to execute the designs which they have conceived.  At a more distant level, they may have secured the services of amanuenses who put into visual form the notions which the Beckhams explain to them. More distantly still, they may simply be shown a range of products independently designed by third parties, from which they exercise their aesthetic and/or commercial judgment in determining which deserve the accolade of being sold under one of the Beckham brand names.

In commercial terms it may not matter which of these procedures has resulted in  new pair of pants, a dress or anything else appearing on the shelves and websites of retail operations.  In legal terms, it can make quite a difference, though, as the securing of interests of brand owners against independent designers, the possibility of moral rights issues where copyright is involved and other related issues must be addressed.

Geneva Spring set to sweep Tajikistan

By The Hague Notification No. 112: Hague Agreement Concerning the International Registration of Industrial Designs, the World Intellectual Property Organization has the pleasurable task of notifying Class 99 readers, and indeed others, of the deposit by the Government of the Republic of Tajikistan, towards the tail-end of last year, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.  Good news for anyone seeking protection in Tajikistan is that the Geneva Act will enter into force, in respect of the Republic of Tajikistan, on 21 March 2012.

For the record, the Class 99 weblog is accessed by readers from over 100 countries. These include Kyrgyzstan, Nepal, The Maldives and Cambodia -- but up till now we've never had a hit from Tajikistan. Naturally the Class 99 team assumes that, from 21 March onwards, all this will change. Meanwhile, if you happen to find yourself in the capital -- Dushanbe -- Khujad, Kulob or Qurghonteppa, if you find yourself near a computer linked to the outside world, please feel free to click on us so we can add to our list of conquests.

Apple loses Dutch iPad appeal to Samsung

Yesterday, 24th January, the Court of Appeal of the Hague rejected Apple's appeal, finding no infringement of their Community Design covering the iPad.  For background, see our previous postings here, here, here, here, and here.  The decision in Dutch is here, and clicking on this link should bring you a Google Translate version in English.
The Court cited the EU Court of Justice PepsiCo / Grupo Promer case (Case C-281/10) for the identity of the informed user, and the EU General Court case  T-68/10 Sphere Time v OHMI - Punch (Watch attached to a lanyard), together with OHIM's Guidelines for Examination, on the effects of dashed lines in disclaiming parts of the design - although in this case, it is far from clear whether that was Apple's intent.
The meat of the decision seems to be in the interplay between infringement and the prior art cited by Samsung.  The Dutch court cited and followed, to some extent, German Federal Supreme Court decision in Case I ZR 71/08 Untersetzer/Table Mat (English summary by Class 99 member Henning Hartwig in Bardehle's IP Report 2010/V here) to the effect that the distance of a design from the prior art can be taken into account in judging its scope. 
In the Hague appeal, the following prior art was cited:
I. U.S. Patent Application U.S. 2004/0041504 A1 (Ozolins');
II. The Knight Ridder Tablet;
III. The HP Compaq TC1000 (the TC1000);
IV. Canadian Design Patent 89,155 ('155 Design);
V. Japanese design number 887 388 ('388 Design);
VI. Japanese design number 1142127 (Design 127).
The Court held that although every significant feature of the design was shown in at least two of these citations, this did not imply that the design lacked individual character since none showed them all in combination and the combination created its own overall impression.  However, it had a narrow scope and the (to this untrained eye) small differences between the iPad and its Samsung Galaxy competitor were therefore sufficient to avoid infringement. 
The Court relied on CJEU statements from the Pepsico case on the informed user - because the informed user is "highly attentive" (paragraph 53 of PepsiCo/Grupo Promer), or at least "demonstrates a fairly high level of attention" (paragraph 59 of that decision), he will take into account the back and side view of a tablet and not just the front.  That seems at odds with the approach of the General Court in Shenzhen Taiden Industrial Co. Ltd v OHIM Communications equipment/Conference unit Case T-153/08 at para 65 to the effect that the features not visible whilst the product is in actual use are discounted in the comparison.
We still await another German decision.  In the meantime, can anyone add more information about the Dutch case?

Taiwan design law reforms

Thanks to Tsai, Lee & Chen for news that Taiwan (aka Republic of China/Chinese Taipei according to your political viewpoint) has updated its design registration system by passing an amendment to the Taiwan Patent Act on November 29, 2011, to be implemented over 2012.  Their informative article is here.  My summary of the major points is as follows:

1. GUI/icon designs should be registrable, unlike the present situation.  Future rules this year will indicate the conditions under which they are registrable.
2. "Partial designs", i.e. designs of parts of products, should in future be registrable, as in Europe or Japan.  TLC have some advice on how to handle the transitional situation.
3. There will be a six month grace period over any printed publication by the designer - much broader than at present.

This all sounds very helpful for designers. We'll try to update you when it comes into force.

EU looks at lookalikes

The EU Commission has published a report on "parasitic copying" by Hogan Lovells (or HogLove, as everyone now seems to be calling them).  For the benefit of those, like me, who cannot say precisely what parasitic copying is, the report adopts the following definition:
"parasitic copying refers to situations where a product is offered for sale in a packaging which resembles an already existing branded product, influencing consumer behaviour to its benefit, without infringing any intellectual property rights such as trade marks, design rights or copyright."
The headline report document itself is perhaps a bit bland, but there is a wealth of interesting information in the Annexes, particularly Annex 8 which contains a comparative exercise involving analysing four different sets of lookalike packaging across Bulgaria, Germany, the UK, Spain, Italy, and Sweden, with extensive references to case law on unfair competition, marketing practices legislation and so on.  Annex 6 is less detailed but contains a summary of the relevant laws across pretty much the whole of the EU.
The case studies indicate three different effects on the relevant consumers:

• Effect 1 - At least some of the consumers who purchase product B do so on the assumption that they are purchasing product A (even if they may realise after purchase that this is not the case) - i.e. classic "passing off";
• Effect 2 - At least some of the consumers who purchase product B do so on the assumption that products A and B have the same commercial origin, or come from economically linked undertakings (even if they may realise after purchase that this is not the case) - i.e. "association";
• Effect 3 - At least some of the consumers who purchase product B do so on the assumption that products A and B, having different commercial origins, are substitutes, being identical or highly similar in their specifications, nature and quality. As a result, price becomes the sole or main criterion under which the choice between the two products is to be made - i.e. erosion or dilution

The analyses show the protean nature of unfair competition - different cases, different states, different answers, and the German responses suggest (as I have heard from other sources) that it is becoming progressively more difficult to rely on unfair competition in lookalike cases.  As you would expect, it is in the area of "Effect 3" that there is the greatest difficulty, but (as we have commented in earlier posts here and here) having your distinctiveness eroded and your designs commodified is, for designers, quite a significant problem.
We clearly do not have a unified EU regime, nor do any of the countries studied appear to offer a perfect regime.  Should the EU attempt new law in this area?  Or would this do more harm than good?

Hair of gold, cloth of silk, heart of darkness

This is a sad yet amusing tale of greed, stupidity and economic colonialism.  To begin saga-wise, there once was a Danish designer called Annette Egholm (depicted) who founded a company called Fabric Copenhagen ApS.
In her own words, courtesy of Google's translation facility: "Back then textile designer Annette Egholm discovered not only Vietnam's natural beauty and the unique and friendly inhabitants, but at a local market, she found a silk fabric that was so beautiful and soft that she just had to own it."
And a few years later, own it she did, by filing in 2010 two Community Designs, numbers RCD 001230254-0001 and  RCD 001230254-0002 in the name of her company, naming herself as "designer".
Once upon a time in the UK, you could be considered the "true and first inventor" even if all you did was introduce a foreign invention into the Realm.  However, the world has moved on a bit from those days, and IMHO you have to do more than take fabrics from foreign lands with friendly inhabitants to get to be a designer.
Anyway, the Vietnamese have form at resisting the clutches of the West.  A Swedish company called Minh Du Alneng AB took offence and filed invalidation actions at OHIM.  According to their website, again courtesy of Google's translation facility, "The basic idea of the activity is to promote art and rich cultural tradition from a country that otherwise most associated with war and poverty. Another important aim is as far as possible to assist Vietnam's talented but poor artisans ..." Amen to that.
They got certificates from the Van Phuc – Ha Dong Silk Weaving Craft Village Association which showed that one of the Association's artisans had created and sold the design internally and for export, since 2000.  They also put in evidence that Annette Egholm herself had been selling it in the EU for some years.
Her response was aimed straight at her own feet.  Design -0002 “was discovered by me in Vietnam and imported by my company Fabric Copenhagen since 2006.” With the RCD the Fabric Copenhagen “claimed the right to distribute this product.”  Design -0001 was “an old Vietnamese pattern which I discovered on one of my many travels to Vietnam […] and sold it in the EU since 2006. My company was founded back in 2011 and I have ever since then imported and sold 2 different patterns in the EU. This particular pattern has since 2006 been the backbone of my company.”
Unsurprisingly, OHIM found the designs to lack novelty (invalidation decisions 8337 and 8338).  But what would the position have been if the designs had been used only on a local scale in Vietnam?  Would that deprive a later Community Design of novelty?  If not, could Egholm have validly claimed to be the "designer" and secured rights to the designs in Europe?  No doubt she or someone else will provide us with a case in due course.

Celebrity designs: Twilight in perspective

The recent popularity of the "Twilight" movies may just have provided part of the motivation behind this piece by Rachel Cook (Associate Solicitor, Fox Williams LLP), which Class 99 is delighted to host:

"Fashion and IP – “protection” of high profile designs

Celebrity fashion is big business with people increasingly wanting to look, dress and smell like their favourite celebrity. While this opens up opportunities for brands and individual celebrities, it also increases the likelihood of copycat products and attempts by copycats to benefit from an implied association with them. How do fashion designers combat such issues? 

Providing designers with sufficient protection to encourage innovation while not restricting others from creating products has always been a legal conundrum in an industry which some consider has its foundation in reusing trends and being “inspired” by others. Designers have found their position much improved since the introduction of a new unregistered Community right which caters for the seasonal production of ranges. This is in addition to UK unregistered design right, which however exclude surface decoration and copyright which only protects artistic works to the extent that they are not defined by the product on which they are incorporated.

However, is reaction the best form of protection?

Bella's dress

2011 was the year of the high profile celebrity wedding. Kate Middleton and Prince William, followed by Kate Moss and Kim Kardashian and then, on the big screen, Bella and Edward in The Breaking Dawn: Part 1. All had the same surrounding media hype being beamed around the world with accompanying photographs and magazine spreads.

Another aspect they shared was a demand for replicas of what the bride was wearing. How does design law protect such sought after designs?

Wedding dresses, while high price tag items, are far more likely to reference classic design elements. For example, the use of lace in the shoulders and sleeves, a sweetheart neckline and an incorporated train in the back of the skirt of the dress (Kate Middleton), a sheer bias cut panel dress with an overlay embellished with sequins (Kate Moss) and strapless fitted bodice with a full tulle skirt (Kim Kardashian). Arguably, none of these elements alone is novel and therefore capable of protection.

But design rights can subsist in the whole or part of an article -- and the combination of a number of commonplace elements, if put together, can result in a protectable design. As many practitioners would agree the skill in design right cases is often defining the elements, or their combinations, in which design right is being claimed, and even in the most unlikely of areas there remains scope for detailed design work to be undertaken.

However, following on from the judgment of the Court of Appeal for England and Wales in Dyson v Vax, the more restrained the defined freedom and the more specific the right claimed, the more difficult a designer may find it to show both validity and infringement.

But are cease and desist letters and threats of litigation the only way? Both Kim Kardashian and Summit Entertainment (the distributors of the Twilight film) anticipated that there would be a demand (although this may have diminished following the quick collapse of KK’s marriage). Therefore, rather than letting third parties take lead on the production of replicas, both commissioned their own authorised cut price versions.

Summit in particular hit the ground running with their imitation dress going on sale shortly after the opening weekend (US$139.5 million in ticket sales) of the film. Months prior to the release of the film in strictest confidentiality, they had worked with Alfred Angelo to develop a version of the Carolina Herrara dress from the film. At US$799 it is reasonably positioned to cash into the romantic capital of Twilight’s predominantly female following.

BB Dakota Twilight jacket

Separately, Summit have again shown that they know the value of their Twilight “brand”. Summit owns various trade mark registrations in the US in relation to “Twilight” and was unhappy when it discovered that BB Dakota, a clothing brand which had produced a jacket worn by Kristen Stewart in the first Twilight film, was using its trade marks to promote and market the jacket. The Leigh jacket had been discontinued prior to the release of Twilight but, seeing it in the film, BB Dakota had put it back on sale. So far so good for BB Dakota. However, having done so they renamed it the “Twilight” jacket and started using various of Summit’s trade marks and copyrighted images to sell it.

No licence agreement had been entered into and Summit successfully claimed infringement against BB Dakota on the basis that their use went beyond what was reasonably necessary to identify the jacket (“as worn by Bella Swan in the movie Twilight” would have probably been sufficient) and suggested some form of association or permission to use the marks.

The right approach will vary from situation to situation; for example, offering authorised replicas of the royal wedding dress would have not been appropriate. However, a designer and/or brand may want to consider, provided it is commercially viable, whether their money is better invested in joining, and ideally eclipsing, those offering a cut price version, thereby taking back some control, rather than chasing them through the Courts".