Lucasfilm revisited

Well, we have now read it.  The discussion on jurisdiction and justiciability is fascinating, and we propose to leave that to others, and focus on the copyright issues.
First, a very brief recap of the relevant facts. Ainsworth, the defendant, was one of the craftsmen who participated in making the Storm Trooper helmet (and some other items, but in the end only the helmet was considered). His claims to be the owner of copyright were rejected - any copyright belonged to Lucasfilm, the claimant. Their case turned on the applicability of two defences; those of Section 51 and Section 52 of the UK Copyright, Designs and Patents Act 1988. 
Where a copyright work is "industrially applied", Section 52 has the effect of curtailing the enforceable lifetime of UK copyright to 25 years (the period provided for "works of applied art" in the Berne Convention, and also the lifetime of a UK registered design), and the period starts to run when you make at least 50 articles which are copies of the work and sell at least one. However, the Section 52 defence does not apply to sculptures "other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process" (Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989, SI 1989 No. 1070).
Section 52 therefore provides an exclusion from protection after 25 years, but one from which sculptures are excluded, although casts or models are excluded from the exclusion from the exclusion.  The whole sorry provision goes back many decades, and used to be the mirror image of Rule 26 of the Registered Designs Rules, which excluded from registration as designs sculptures "other than casts or models ..." (though many were in fact registered).
In this case, the first Star Wars film was released in 1977 and at least one trigger event may have taken place over 25 years ago so that, if applicable, Section 52 provided a defence.
Section 51 is, perhaps, more easily summarised in effect.  There is no infringement by making an article (or copying one) which is a copy of a copyright work unless the article is itself an artistic work.  The only UK statutory categories of copyright work which are three-dimensional are sculptures, works of artistic craftsmanship and, though not relevant in this case, engravings.
Lucasfilm initially pleaded that the helmets were both sculptures and works of artistic craftsmanship, but the lifetime of the latter would have been curtailed by Section 52 as discussed above, and thus only the sculpture point was pleaded on appeal and in the Supreme Court.  The only point of interest in the Supreme Court case on works of artistic craftsmanship is the sideswipe at Lord Simon's explanation in Hensher v Restawhile [1975] RPC 31, which "some may not find wholly convincing" (para 26).
So both the Section 51 and 52 defences turned on whether or not the helmet, and copies of it, were "sculptures".  All three instances held that they were not.  It would have been nice to have some clarity from the Supreme Court on what a "sculpture" is, but no bright-line test emerges.  Their Lordships make the following points:
1    The normal meaning of the word is important.
2    Not all mouldings are sculptures - they have to be "for the purposes of sculpture".  Breville Europe v Thorn EMI Domestic Appliances [1995] FSR 77 was wrongly decided.
3    Laddie J's finding in Metix v Maugham [1997] FSR 718 (adopted from Richard Meade's argument in the case) that a sculpture is "a three dimensional work made by an artist's hand" has not attracted adverse comment from any corner.
4    "Elephant tests" won't do - the Court of Appeal should explain their reasoning, and something like the multi-factorial assessment made at first instance and upheld on appeal is appropriate.

The main issue in this appeal was whether the Stormtrooper helmet was functional/utilitarian, as had been held by the Court of Appeal, on grounds which were criticised by Lucasfilm as confusing real military apparel with fantasy apparel. On this, the Supreme Court's analysis was clear, but may prove to have wide ramifications.  They commented (para 44) that "it was the Star Wars film that was the work of art ... The helmet was utilitarian in the sense that it was an element in the process of production of the film." And that was the end of Lucasfilm's claim.
Is this correct?  Consider an original and artistic bust. If created as a film prop, the Supreme Court's reasoning appears to imply that it is not a "sculpture" as being utilitarian. If created with no such purpose, however, the identical bust is a sculpture.  Going further, what is the status of, say, a still photograph from a film - does it lose copyright as an artistic work because the film from which it is taken is the true "work of art"?
Even allowing that the existence of a film as a separate "work of art" is relevant, should the artist's subjective purpose determine the fate of the work, or should the question be whether the "sculpture" is separable from the film as a work in its own right? 
In more ruminative vein, their Lordships accepted the Defendants' submission that there was an "emerging legislative purpose" underlying the different periods of protection for different 3D works, with 10 year design right for "purely functional works", 25 years for works with "eye appeal" (designs registered under the legislation prior to 2001), and full copyright for "Artistic works of art (sculptures and works of artistic craftsmanship").
But did their Lordships make a simple error of law here? As noted above, enforceable copyright in works of artistic craftsmanship is not "full copyright" like works of sculpture but is curtailed to a "mere" 25 years by Section 52.
If there really was an emerging legislative purpose behind the UK legislation, it may since have been derailed by a different legislator - the EU Design Directive 98/71 now requires cumulative copyright protection for protectable designs, unlike the former UK legislation which sought to control dual protection.  Perhaps it is time to revisit Sections 51 and 52, works of artistic craftsmanship and sculptures, all of which have proved difficult to apply or even to understand, and replace them with something which more clearly whatever legislative intent these competing legislators have in common.

Artist's resale right: does it benefit designers too?

The Design and Artists Copyright Society (DACS) in the United Kingdom has issued a call-to-arms in support of the full implementation in the UK of the artist's resale right, to align domestic law with that of other European Union Member States. As DACS explains on its website,

"... The Right currently allows visual artists an ongoing stake in the value of their work by paying artists a modest royalty when their works are resold through auction houses, galleries, and art dealers.

The full implementation of the Right will extend this royalty to deceased artists’ families and beneficiaries, providing desperately needed funding for managing an artist’s estate, including the costs of storage, conservation, cataloguing, research, restoration, assessment of provenance, and the identification of fakes.

Since the first stage of implementation in February 2006, DACS has paid more than 2000 artists over £12 million in resale royalties ...".

The artist's resale right was firmly aimed at artists in the traditional sense rather than designers, though Directive 2001/84 defines original works of art in Article 2:

"1. For the purposes of this Directive, "original work of art" means works of graphic or plastic art such as pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs, provided they are made by the artist himself or are copies considered to be original works of art.

2. Copies of works of art covered by this Directive, which have been made in limited numbers by the artist himself or under his authority, shall be considered to be original works of art for the purposes of this Directive. Such copies will normally have been numbered, signed or otherwise duly authorised by the artist".

This does not exclude design documents and models which are subsequently used for either mass or limited production, and certainly includes work by designers which is never actually used, so the provisions of the Directive should be of interest to all sorts of designers as well as the classic artist.  This leads me to ask: do any readers know of situations in which the original work of designers has been auctioned or otherwise re-sold in circumstances which have generated a resale payment to the designer?

Star Wars - victory in the Old Republic, defeat in the Empire

The UK Supreme Court (House of Lords as was) has today released its long-awaited judgment in Lucasfilm v Ainsworth, the Star Wars Storm Trooper copyright case. To cut to the chase: Lucasfilm win on justiciability of US copyright in the UK, hence US infringement; Ainsworth wins on whether the fictional helmet is a "sculpture", hence no UK infringement.
We have briefly scanned the judgment, but there is a lot to digest, so we will post analysis tomorrow.  Until then farewell, padawans and Exalted Ones.

Infringement by depiction - right to cite derailed in Germany

Is it an infringement of the design of a three-dimensional product (such as a train) to depict the product in a two-dimensional illustration?
In some jurisdictions, infringement occurs only where the design is reproduced on the same article for which it is registered.  However, in Europe, "use" of the design in a general sense is an infringement, unqualified by reference to any particular article.
We are therefore grateful to Birgit Clark at the IPKat, and even more so to Juliane Diefenbach and the rest of the good folks at Hogan Lovells, for drawing our attention to the Deutsche Bahn's case against the Fraunhofer Institute (BGH, Decision of 8 April 2011, I ZR 56/09 (ICE)) for infringement of their designs of the ICE 3 high speed train by depiction in a Fraunhofer brochure. Frankly, it is always a pleasure to see two serious players fighting tooth and nail over a pretty picture and a nominal licence fee of 750 €.
Fraunhofer sought to rely on the statutory citation defence provided by Art. 13(1)(c) of Directive 98/71, and Art. 20(1)(c) CDR - that permit "acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source". Their use of the depiction was to illustrate their train wheel inspection apparatus.  However, their apparatus was to inspect the wheels of the ICE 1 train, not the depicted ICE 3 train, so the Supreme Court held that the citation defence did not apply and there was infringement.
It is rare to see a 2D/3D crossover case of this kind.  The Hogan Lovells report is here.  Can any kind reader provide a link to the asserted German design?

Honda succeed in China - but should they be careful what they wish for?

Some time back, we reported on Honda's appeal in the Chinese Supreme Court against a refusal to register their SUV automobile design. Thanks once more to the good people at Hogan Lovells and particularly Georgia Chiu and Binxin Li of their Shanghai office for permission to cover a story from their excellent IP Quarterly newsletter reporting the Supreme Court's judgment in that case.
A side-by-side comparison (the upper one is the Chinese design, the lower one the prior art) indicates why there was a problem - they are not completely different, are they? The spare tyre in the prior art is omitted from the Chinese design, but there is clearly a space for it, so ignore that, and you are left with some differences in detailing in and around the headlights and windows.

Chinese application

In an ideal world, perhaps, Honda would have been able to register just the novel parts, using dashed lines to omit the rest.  However, in China this may not have been possible when the application was filed (indeed, I am not sure it is possible now).
This case is therefore pretty much on all fours with DaimlerChrysler's Application, in which the Swedish Supreme Court held that a new Merc was too close to a previous model (from which it differed in headlight and rear indicator specifics).
According to the Lovells report, the Chinese Supreme Court put much of the similarity down to the generic nature of SUVs, which would cause the user to focus attention on the headlights and windows. Registration of the design was therefore allowed.
Is this a happy ending? Depends on where you stand.

Prior design

If only small differences are sufficient to obtain registration, then only small differences are required to avoid infringement. The question posed by the Swedish court was - would DaimlerChrysler have been happy if anyone else had registered something so close to their earlier design? The effect of their refusal of the later design was to confirm the wide scope of the earlier.  Conversely, the effect of the Chinese allowance may be to indicate that the bulk of Honda's design is merely a generic SUV which can be freely copied by competitors.
This result may well be right on the facts.  Possibly there is something special about the front aspect of a car - the radiator, headlights and wing mirrors perhaps create something we react to as we do a human face - giving it more weighting in a comparison between designs.  But the case highlights the difficulties faced by applicants in design systems which do not allow registration of "partial" designs.

emap signs up to ACID's exhibition policy

Anti Copying in Design (ACID) has been a leader in seeking solutions to design infringement that do not start at the door of the courtroom, since prevention is generally cheaper, quicker and less stressful than cure. Its campaign to secure the cooperation of exhibition organisers is a good example of this. As a recent ACID media release explains:

"Following the exciting news that emap’s IP policy is now going to be ramped up after meetings with ACID’s Dids Macdonald on behalf of the Spring & Autumn Fair IP Steering Group, a new layer of Intellectual property (IP) focus is being included in a confirmation letter to all exhibitors when they sign up to either exhibition, that they have responsibility to adhere to ALL emap’s Terms and Conditions. The letter, as well as outlining what evidence will be required to prove IP ownership, will be reminding exhibitors to confirm:

• They own the intellectual property rights or have the right to market and sell the products on their stand
• They do not infringe the intellectual property rights of a third party
• Their products will not be inaccurate, obscene, defamatory or disreputable
• ‘The Exhibition Organiser’ reserves the right to remove products from stands if it believes they are infringing those of a third party

We hope other exhibition organisers will follow the ACID IP Steering Group recommendations to ensure a safer trading environment for exhibitors and to create a stronger message, to those who do not adhere to stringent standards of IP probity, that they will run the risk of their products being removed.

Mike McLintock of 95Percent Ltd ... said, “Most media has full IP protection so it is outrageous the same is not true of the design industry. Our frustration at being unable to remove a clear copy at the last Spring Fair convinced us to challenge emap to join us in ensuring those that insist on copying pay a high penalty.”

IP Steering Group member, Angus Gardner, on behalf of Caroline Gardner Publishing Ltd. said, “It is a great first step that emap has taken this decision to highlight to companies that they have these obligations with regard to IP integrity. It would be good to get a similar commitment from them that all the visitors to their shows have similar intent" ...".

The exhibition industry in the UK is worth £9.3 billion, as ACID's CEO Dids Macdonald points out, which makes it a commercially important sector as well as a vital showcase for designers. Where all exhibitors, and indeed non-exhibitors attending and examining the products and concepts on display, are bound contractually to respect and comply with the IP conditions imposed by a conference organiser, a valuable extra level of protection is imposed -- and there is an increased awareness all round of the need to respect the integrity of others' design rights.

Great design -- but what about educating for IP?

The excellent and thoroughly practical Professor Ruth Soetendorp has committed a great deal of time and effort to the perennially difficult issue of introducing IP concepts into non-legal environments.  It is this context that she has pointed out to me this link to an item on the Vax website on the world's first cardboard vacuum cleaner, the intellectual creation of Loughborough University undergraduate Jake Tyler as part of a final year project.  The text which accompanies the illustration on the right reads, in part:

""With sustainability becoming an increasing concern for manufacturers, the Vax ev shows just what can be achieved when young designers are encouraged to think creatively and push the boundaries of product design," said Paul Bagwell, Director of NPD at Vax. "It's so important that manufacturers such as ourselves support young British designers like Jake, as they are the key to this country's future success"".

Describing this product as "an excellent example of commercially valuable IPR coming from undergraduate student work, and therefore an endorsement for the 'campaign' for IP education in the undergraduate curriculum", Ruth observes:

"I have tried to find out if, how and where the IP is protected, without success. Maybe its too soon? 'Jake Tyler' and 'Vax-ev' don't come up in an IPO webpage search. Nor in a search of Loughborough university's website. I'd have thought that Loughborough and Vax are savvy enough to have taken the appropriate steps to put patent and design protections in place".

Thoughts, anyone?

Japanese practice changes

Thanks to Harakenzo patent law office in Osaka for some information on changes to the Japanese design system which are expected to bite in July 2011, in their current newsletter. (Incidentally, Harakenzo have some nice design information online here.)
The first change is certainly very welcome.  Regular filers will know that the Japanese Patent Office (new logo shown on the left) likes to see all six orthographic views of a product.  Where you have a "partial design" of only part of a product, you may often need to supply views in which all parts are shown in dashed lines because they are not part of the design, which is a bit of a waste of everyone's time.  Now, it appears, the JPO will not require this in all cases.
The second concerns display image designs. Japanese practice on these at present is pretty restrictive. I am not sure I fully understand the proposed changes, but it looks as if they are clarifying the acceptance criteria, and possibly also allowing dynamic icon images (those which change appearance over time).
We look forward to learning more about how these will work in practice.

The great design conundrum

Readers of this weblog who are not subscribers to the Journal of Intellectual Property Law & Practice and/or who don't read its companion, the jiplp weblog, can still read the Editorial free each month by visiting the official Oxford University Press website for the journal.

The August 2011 Editorial, The Great Design Conundrum", which you can access via that issue's contents page here, raises some of the issues that are well known to readers of this blog and wonders whether we need a greater focus on the unfair competition dimension of design protection.

Teaching consumers to spot fakes: are blogs of use?

PRNewswire reports on the steps which US corporation Vapur is taking to protect its Anti-Bottle against counterfeit products.  The Ant-Bottle is a cleverly thought-out product: it is foldable, flexible, reusable and environmentally friendly, which is as good a reason as any for competitors to want to make it as well.

The object of Vapur's ire is Reshine Promotions, against which Vapur has commenced proceedings before the US District Court in the Central District of California, seeking damages and injunctive relief for federal trade mark counterfeiting, federal trade mark infringement, federal design patent infringement, federal unfair competition and California unfair competition.

Brent Reinke, Vapur's co-founder, says: "Our intention with this lawsuit is to protect our loyal and new customers by taking a stand against cheap imitations. We intend to vigorously protect the Vapur brand against parties who infringe on our intellectual property rights".  The counterfeits allegedly originate in China.

Consumers who wish to learn more about how to identify a counterfeit Vapur Anti-Bottle can do so by visiting the company's blog here.  The blog gives specific details and also serves something of an advertising function by stressing the superior quality of the original.

This Class 99 author wonders whether other manufacturers have turned to the blogosphere in order to help to preserve their goodwill and instruct consumers regarding their products -- and also what sort of evidential weight, if any, would European design law give to the content of a design owner's weblog when seeking to ascertain the overall impression of the informed user.