Flos Opinion: help is at hand!

Yesterday I reported here on Class 99 that Advocate General Yve Bot had delivered his opinion in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA -- which was published on the Curia website in ten official languages of the European Union but not in English. It is now my pleasure to thank one of our readers, Alberto Bellan (a trainee with Hogan Lovells Studio Legale, Milan), for the following explanation of the background:

"Factual background

The Italian case on which the Advocate General gave its opinion concerned the "Arco lamp", a master piece of post-war Italian design created by Achille and Pier Giacomo Castiglioni in 1962. The dispute originally involved Flos S.p.A. and Semeraro Casa & Famiglia S.p.A.. Flos is one of the most important global design companies, which had made and sold Arco lamps since the late Seventies under an agreement with Achille and Pier Giacomo Castiglioni's heirs. Semeraro is a furniture producer and retailer which is widely known in Italy. According to the Court of Milan, Semeraro imported from China and distributed in Italy a lamp called "Fluida", which was very similar to Castiglionis' Arco.

Given that Arco has never been protected through any design right, in 2006 Flos started an interim proceeding before the Court of Milan on the basis of its copyright in the Arco, seeking a preliminary injunction and seizure against Semeraro. In December 2006 the Court of Milan made a preliminary declaration to the effect that copyright in the Arco had been infringed, ordering Semeraro to stop importing and selling Fluida in Italy. In the same year Flos also sued Semeraro in proceedings on the merits, seeking confirmation of the preliminary measures obtained during the interim proceedings. In April 2009 the Court was finally ready to hear the final decision on the issue.

Legal background

During the less than three year long proceedings on the merits, a controversial issue arose, and this is the subject on which the Advocate General has advised the ECJ. This issue concerns article 239 of the Italian Industrial Property Code, which strangely enough limits the copyright protection for designs in Italy, in apparent breach of the relevant European provisions.

Article 239 was originally aimed to balance the obligations set forth by Directive 98/71 with the Italian economic context before 1998. Indeed, while the Directive provides that designs are to be eligible for copyright protection, until then copyright protection for designs had been denied in Italy on the basis that what is "industrial" (like designs) is not capable of being considered "art" and cannot be protected under copyright law. Needless to say, the obligation for Italy to implement the European directive conflicted with a wide part of the national economy which, until then, was legally copying historical industrial designs (such as Arco) on the assumption that they were not protected (or were no longer protected) by any IP right.

The new-born copyright in some historical Italian designs makes article 239 a battlefield for lobbying carried out by companies owning (or not owning) the copyright rights in the Italian historical design works. The very proof of the economic relevance of such provision is that the Italian Parliament has amended article 239 three times in the past 10 years.

The first version (2001-2005) provided that copyright protection in designs did not apply for those who, before 2001, were producing or selling industrial designs works that belong to the public domain; this moratorium should have lasted for 10 years. In 2005 the European Commission brought an infraction procedure against such moratorium period (infraction procedure n. 4088/2005), in that it was considered inconsistent with Directive 98/71.

According to (or in spite of) the infraction procedure, in 2007 the Italian Government amended article 239. The second version (2007-2009) provided that the copyright protection should not apply to any design which fell into public domain before 2001, making no distinction between those who produced or sold such designs before that date and those who did not. The 10-year moratorium period disappeared, therefore excluding the copyright protection for designs which fell into public domain before 2001 tout court.

The opinion given by the Advocate general relates to this second version. In this regard, the Advocate General maintained that a national rule which wholly excludes copyright protection for a wide group of designs is not allowed under European law, while a moratorium period of five years could at least be allowed and sufficient for those who produced and sold formerly copy-free designs to change their business.

In the meantime, article 239 has been amended once again. Now it states that copyright protection does not apply to the designs fallen in public domain before 2001, but this limitation concerns only those who produced and sold them before that date. We should email the ECJ, asking it take into account also of that last amendment, even if it is not explicitly part of the Court of Milan's reference".

Thanks, Albert! For the record, according to Google Translate (somewhat edited), the Advocate General has advised the Court as follows:

"1) Article 17 of Directive 98/71 shall be interpreted as precluding the legislation of a Member State which provides that the drawings and models which have fallen into the public domain before the entry into force of national provisions transposing this Directive do not enjoy protection by copyright.

2) Article 17 of Directive 98/71 does not preclude the establishment of a reasonable transition period during which people who could legitimately produce and market a product by imitating the shapes of a model which has fallen into the public domain before the entry into force of national provisions transposing this Directive may continue to market this product".

Flos Opinion: can anyone help?

The Opinion of Advocate General Yve Bot in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA was published on the Curia website on Friday, in ten official languages of the European Union -- but not in English. The questions referred by the Tribunale di Milano for a preliminary ruling were as follows:

"Must Articles 17 and 19 of Directive 98/71/EC [on the legal protection of designs] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State?

If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?".

According to the Advocate General, the court is advised to rule as follows (in French --but you can read it in Latvian too ...):

«1) L’article 17 de la directive 98/71/CE du Parlement européen et du Conseil, du 13 octobre 1998, sur la protection juridique des dessins ou modèles, doit être interprété en ce sens qu’il s’oppose à la législation d’un État membre qui prévoit que les dessins et les modèles tombés dans le domaine public avant l’entrée en vigueur des dispositions nationales transposant cette directive ne bénéficient pas de la protection par le droit d’auteur.

2) L’article 17 de la directive 98/71 ne s’oppose pas à l’instauration d’une période transitoire raisonnable durant laquelle les personnes, qui avaient pu légitimement produire et commercialiser un produit imitant les formes d’un modèle tombé dans le domaine public avant l’entrée en vigueur des dispositions nationales transposant cette directive, peuvent continuer à commercialiser ce produit.»

Can anyone provide information concerning the background to this dispute and as to what the Advocate General is generally advocating?

Small surprise: Romanians also prefer e-filing

The Community design focus in the most recent issue of OHIM's Alicante News features Romania. According to the feature:

"With just 281 registrations since 2003, the registered Community design has still to be widely adopted by Romanian undertakings. Last year there were just 81 RCD filings with classes 19, 9 and 2 in highest demand.

Once again, nearly all Romanian filers prefer the online route, with over 98% now using e-filing and the remaining applications coming by mail".

So now you know.

Design on Twitter

ACID (Anti Copying in Design), as most Class 99 readers know, is a UK-based membership organisation which is committed to raising awareness and encouraging respect for IP within individual and corporate responsibility. A circular this week announces that ACID has now started to tweet. If you feel that you're not getting your ACID information fast enough, you can now do so on Twitter by clicking here.

ACID is not the first design-related body to use Twitter for the dissemination of information. The Office for Harmonisation in the Internal Market (OHIM, or rather, OAMI), which administers the Community registered design system, can be found on OAMITWEETS here, though don't be surprised if most tweets relate to Community trade marks. In October, Class 99 reported that OHIM had just 99 followers; that figure has since risen to 440. If you want to know who OHIM follows, click here to find out.

Shhhh .. it's a secret

Even 33 years after the publication of its report, the UK's Whitford Committee on the Law of Copyright and Designs remains a sensitive issue. A request for information under the Freedom of Information Act sought disclosure of evidence presented to the Committee, which reported in 1977, three years after it began its quest for a new and useful set of copyright and design laws. According to the IPO website:

"Incomplete records still held and released, with some redaction [= censorship] of personal names. This information consists of a large volume of paper records, available on request".

Class 99 wonders what was so sensitive that it could not be made public. Do any readers know?

Design copyright in Denmark: the minimalist approach

"Switched off: court rules no violation of copyright in design case", by Mads Marstrand-Jorgensen (Norsker & Co), was published earlier this month on International Law Office. You can read it in full here.

In short, Danish company Lauritz Knudsen developed, made and sold electronic materials in Denmark for over 100 years. Its prize-winning LK FUGA series of switches has been in production since 1981. In 2004 L-Team began selling its L-control series of switches which, LK believe, infringed its copyright and rights under the Marketing Act (a sort of statutory version of the delict of unfair competition).

The Maritime and Commercial Court held that LK's switches were protected as copyright works and that they were entitled to protection against imitations under the Marketing Act. However, since a series of electrical switches must be considered as basically functional, this reduces opportunities for design development -- which is limited by the dimensions of plugs, by industrial standards and by legislation.

So was LK's copyright infringed? After describing the allegedly infringed product in detail, the court observed that copyright protection of the LK FUGA product range must be considered as very narrow and limited to very close imitations. Under the circumstances, the "not insignificant variations in design as to the arching of the tangent which oppose LK FUGA's in convex and curved frames" gave a somewhat differentiated appearance to the L-control product with the result that, on an overall evaluation, there was no infringement.

This decision is on appeal to the Supreme Court.

Another reader's query

Here's another question from Andrew Clay (Head of IP, Hammonds LLP). It relates to the UK's Registered Designs Act 1949, section 19(1), which states

"Where any person becomes entitled by assignment, transmission or operation of law to a registered design or to a share in a registered design, or becomes entitled as mortgagee, licensee or otherwise to any other interest in a registered design, he shall apply to the registrar in the prescribed manner for the registration of his title as proprietor or co-proprietor or, as the case may be, of notice of his interest, in the register of designs".

Andrew asks:

"Section 19(1) RDA - what is all this about? You shall register but what happens if you don't? You can't sue for infringement (section 7) but the section 19(4) restriction on who can deal has gone. Do you lose out to a subsequent bona fide purchaser for value without notice or not, as for patents or trade marks? Why aren't the provisions clear on what is an important point, especially following umpteen revisions of the RDA? What could possibly be the policy reason for this difference in treatment?"

Any thoughts, folks?

A User's Guide to Design Law

Newly published by Bloomsbury Professional is A User's Guide to Design Law, by Clive Thorne and Simon Bennett. Described as an "easily accessible guide to protecting industrial designs", the text guides the reader through the legislation and case law, explaining the different (and, to most laymen and normal sane businessmen, incomprehensible and arbitrary) protection mechanisms available under design and copyright law, as well as the enforcement options available to those whose rights appear to have been infringed. The easy access is provided by the thoughtful deployment of paper pages, which may be turned singly or in quantity and which are furnished with helpful little things like numbers and running heads. No electronic version is yet available, though I very much hope and believe that the second edition will fit into an e-book.

The text, which is current to February 2010 (well done, getting the book out so quickly!), is certainly clear and easy to read. Its pedigree is that of the same publisher's much-beloved User's Guide to Copyright (here), in which co-author Clive Thorne has a hand, and it shares much of that work's usefulness. Illustrations support the text, as one really requires for a book on design law. Laudably, the publishers let you sample Chapter 2 (UK unregistered design right) here, so you can get the flavour of it.

This book confines its focus to the UK and Europe. From the point of view of the reader as litigant, this makes sense. However, the reader as design applicant might have benefited from a chapter, however, short, that points him in the direction of international designs and all those Hague-y things that lurk beyond the UK's borders (after all, the European Union is a member). Also, some reference to licensing other than in the context of licences of right might also assist the reader.

Now for a warning for prospective purchasers and a reprimand for the publisher. Only the first 90 pages of this book consist of text. The next nearly 300 pages consist of appendices: IPO and OHIM forms and all the usual domestic and European legislation, of which I seem to have a large number of copies already. There is nothing on the website or on the book's outer extremities to indicate that purchasers are paying to buy 300 pages of material that they can download or access at no cost from the internet.

Bibliographic data. ISBN: 978 1 84766 305 4. Paperback, xx + 387 pages. Price £82. Web page here.

Espacenet and other search databases

Searching for designs worldwide is a difficult job, and there is no single free worldwide search site. However, the patent search site espacenet appears to include an increasing amount of design coverage, which might occasionally be useful, though it is unclear how complete or consistent it is. Most designs seem to be distinguished by a publication kind code starting with "S". Thus, S, S1, S2, S3 and S4 all bring up some designs. However, this isn't universally true as Uruguay designs appear to be denoted Q (which is a kind of dustbin code). There may be other exceptions.

The largest contingent are US design patents, which appear to be covered back to 2001. These are also, of course, on the USPTO site but the espacenet records have pdf documents. Many of the other countries covered are in South America. The data included is very variable - publication number and application and priority data, but in some cases there are also titles (in original languages), applicants, inventor/designers, and original documents. No IPC, Locarno or other classifications, of course.

Here is what I have gleaned:

State	Code	Coverage	Number
US	S1	back to 2001	Lots
Chile (CL)	S1	back to 2005	391
Costa Rica (CR)	S	back to 2004	51
Ecuador (EC)	S	back to 2000	1357
Indonesia (ID)	S	back to 1996	53
San Marino (SM)	S, S1, S2, S3, S4	back to 2001	240
Uruguay (UY)	Q	back to 2002	557

a very few Japanese and Australian designs are also under code S. You can limit to these types by using the publication number field (e.g. a string such as "US and S1" will limit to US design patents).
Other lists of free design databases are at:

• Mayall's IP Links


• British Library IP service

Readers' queries

Andrew Clay (Hammonds LLP) has written in with an apparent difficulty concerning the UK's somewhat complex and convoluted unregistered design legislation. He says:

"1. section 216(1) of the Copyright, Designs and Patents Act (CDPA) provides what amounts to primary infringement of UK unregistered design right. To infringe, you have to make an article to the design or make a drawing with a view to making an article to the design but -- and here is the problem-- in so doing you have to reproduce the design "for commercial purposes", which term is defined in 263(3) as being an act done "with a view to the article in question being sold or hired in the course of a business".

This appears to mean that, if you make machinery etc only to use it yourself, that act can't be an infringement of the UK unregistered design right.

Also if your liquidator etc then decides to sell it, that won't be an infringment under 227(1) of the CDPA, given the combined effect of the foregoing and sections 228(1) and (2)".

For the record, under s.227(1)

"Design right is infringed by a person who, without the licence of the design right owner (a) imports into the United Kingdom for commercial purposes, or (b) has in his possession for commercial purposes, or (c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article".

In s.228,

"(1) In this Part "infringing article", in relation to a design, shall be construed in accordance with this section.

(2) An article is an infringing article if its making to that design was an infringement of design right in the design".

Comments, anyone?

When all design rights have expired, passing off remains

Last week's decision of Mr Justice Floyd (Chancery Division, England and Wales) in Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch) is actually a passing-off case, not a design infringement action. Accordingly it will not be subjected to detailed analysis here. However, the design dimension to this case is not insignificant. As the judge said:

"7. ... Qualtex formed the intention to have manufactured and to sell a replica of the Henry cleaner. Qualtex concluded that, provided that they chose a design in which all relevant intellectual property rights (such as all the various forms of national and community, registered and unregistered design rights) had expired, they should be free to do so, provided that they did not use any Numatic trade mark such as the name Henry. In this they are absolutely right. There is no point in having design rights with expiry dates if traders are not free to market replica products thereafter. The only qualification to this is that they must not market a product in such a way as to lead to passing off".

Alas for Qualtex, that was its undoing.