The following item, written up by Roland Mallinson (a partner in the London office of Taylor Wessing LLP) was posted last week on the IPKat weblog (
here):
"There was a story ... in the London Evening Standard about the Americans building an exact replica of the London 2012 Olympic BMX track in California to help with their practice. It set me thinking….
Aside from issues of sporting ethics and the universal Olympic values, this story raises an interesting question for IP lawyers. On the presumption that the design of these BMX tracks requires considerable skill and expertise (and the website here suggests it does), they will be the subject of copyright and, in Europe at least, unregistered design protection. If the design has only been made public within the past year, the design could also still be registered (again in Europe, at least). The Americans seem ready to admit they copied the design, right down to the last hump -- thanks to the computer wizardry employed. Since that has been done in Chula Vista, it would be an issue of Californian or Federal US law. Arguably the process of creating the computerised 3D scan of the track in the UK gives rise to an infringing act here. Since this is the only Olympic event to which I managed to get tickets for my family, I will now be watching with renewed professional interest, i.e. just how good was the American copy? I wonder if Mitt Romney has any views he'd like to share on this".
Roland’s piece has subsequently sparked off a further piece by Simon Clark, who is a partner in Berwin Leighton Paisner LLP). Writes Simon:
"Roland raises an interesting question which I have previously pondered with respect to the protection of golf courses (where there is big money in their design, as well as many courses which copy “signature holes”).
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"Many golf courses
... are beautifully
crafted works ..." |
Can you say that a BMX Track or a golf course falls within the definition of “design” – which means the appearance of a “product” – which means “any industrial or handicraft item”? If not, there is no Community design protection. Copyright will subsist in the design drawings, but section 51 [of the Copyright, Designs and Patents Act 1988 in the UK] will prevent enforcement of that copyright if the design drawing of the track/course amounts to a record of a design for anything other than an artistic work or a typeface if “an article is made to the design”. So if the track/course is an article, the copyright is unenforceable unless it is a work of artistic craftsmanship or a work of architecture. We know that “article” has been given a wide definition – e.g. the human eye was held to be an article in Ocular Sciences v Aspect Vision Care [1997] RPC 298. To be a work of architecture, it has to be a “fixed structure” – something more akin to a building than a track or grass and sand combination. Many golf courses, however, are beautifully crafted works, so works of artistic craftsmanship could be the way to go. All this means that we need a test case – as a keen golfer, I’m sure we can come to a mutually satisfactory agreement with a golf course designer!"
The Class 99 readership, being dedicated to resolving issues of this nature, may have some valuable insights. Let's be hearing them!
I'm responding to the question raised about whether a BMX track or a golf course falls within the definition of 'product' for the purposes of harmonized EU design protection.
ReplyDeleteThere is a suggestion in the original Green Paper that built structures (including interior decoration, environmental design, and landscape architecture) are not included in the definition of ‘product’ and are therefore more appropriately protected by copyright law. The Green Paper, however, makes an exception for kitchen designs, which it places in a ‘grey area’, suggesting that Community design protection should protect kitchens as a complex product.
I cannot find any support for this view in the text of the Regulation or Directive as eventually enacted: indeed, recital 15 of the Regulation provides that a Community design ‘should, as far as possible, serve the needs of all sectors of industry in the Community’. There is therefore no compelling justification for excluding built structures.
Also, the existence of Locarno Classes for ski lifts (12.04), billboards (20.03), Ferris wheels (21.03), scenic railways (21.03), circus tents (21.04), houses, garages, and other buildings (25.03), and garden pools (25.99) lends further support to the protectability of built structures under Community design law. The Locarno Agreement is specifically referred to in Articles 1(2)(c), 2(2), and 3(1) of the Implementing Regulation. To give effect to the terms of the Locarno Agreement, it would therefore seem appropriate to provide protection to designs for the products classified, unless expressly excluded by the legislators.
Courses for miniature golf are classified under Class 21.
OHIM has registered a number of built structures as RCDs, including, for example:
• RCD 898416-0001 for ‘modular elements (architecture)’;
• RCD 1082614-0001 for ‘walkways’; and
• RCD 1622424-0001 for ‘architectural mouldings’, but disclosing a wooden pavilion.
The Invalidity Division considered the validity of an RCD for the design of a built structure in Audi AG v Röder Zelt-und Veranstaltungsservice GmbH. RCD 27826-0001 gave the indication of product as ‘tents’, but the images filed showed a building. The Invalidity Division referred throughout its decision to the ‘building’, and noted, in relation to the freedom of the designer, that ‘a building necessarily includes elements such as a roof, side walls and an entrance’. Audi’s application for invalidity under Article 25(1)(b) of the Regulation was rejected, and the design was not invalidated for failing to show the design of a ‘product’.
The Landgericht Hamburg held in Mobile Home that Community design rights could subsist in the whole of a mobile home and the Landgericht München also considered design rights in a built structure in BMW Welt.
If there were ever an exclusion from design protection for built structures, it would no longer appear to be maintained.
One of our clients was challenged before the IP Section of a First Instance Court in Firenze (Italy) with a claim affirming that the course book and score card provided to members of the golf club did infringe on the rights of a company which had prepaqred and distribued similar material to other local golf clubs. The case was really peculiar, but - luckily for our client and unfortunately to a cynical person like me - never went beyond the preliminary stadium of a procceding for a temporary injunction. When the plaintiff failed to succeed in obtaining such measure, the whole thing simply died.
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