Apple appeal dismissed, but Article 91(1) to be considered

Following yesterday's post announcing the impending ruling of the Court of Appeal for England and Wales in some preliminary issues in the litigation between Samsung and Apple, Class 99 can confirm that Apple's appeal has been dismissed following a fair bit of consideration of Article 91(1) of Council Regulation 6/2002 on the Community Design:

"A Community design court hearing an action referred to in Article 81, other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community design is already in issue before another Community design court on account of a counterclaim or, in the case of a registered Community design, where an application for a declaration of invalidity has already been filed at the Office".

In short, ruled the Court:

* Samsung’s claim for a declaration of non-infringement of Apple's tablet computer design need not be stayed, despite Apple’s counterclaim for infringement; the claim should proceed to trial in accordance with the judge’s previous directions;

* Apple’s counterclaim does have to be stayed, unless there are special grounds for allowing it to proceed without imposing a stay.

* The question whether the counterclaim should be allowed to continue, on the basis of special grounds, rather than being stayed in accordance with Article 91(1) was not considered by the judge, because it did not arise on the arguments put to him. Samsung did not oppose Apple’s suggestion that there ought not to be a stay of the counterclaim, but the agreement of the parties, or absence of opposition on the part of Samsung, was insufficient by itself to amount to special grounds for this purpose.

* While it would be rash to attempt to define “special grounds”, the nature and force of the special grounds which would justify not ordering a stay would need to be such as make it appropriate to allow proceedings to continue to which Article 91(1) applied, thereby opening up the possibility of parallel and active proceedings on the same issue of validity or otherwise, and therefore possible inconsistent decisions on the same point in different courts or as between a Community design court and OHIM. The grounds would have to be of sufficient importance and substance to justify that risk. 

* In this case, relevant considerations might be these: (i) the current proceedings in England do not include any issue as to validity, because Samsung has not responded to Apple’s counterclaim, as it could have done, by counterclaiming for a declaration of invalidity and the proceedings as currently constituted would not result in the court coming to a decision as to validity which would be even potentially inconsistent with whatever determination was eventually reached by OHIM; (ii) the objectively justifiable need for speed in the determination of the claim; 

* The Court of Appeal proposed to order that the issue whether the counterclaim should be stayed under Article 91(1) -- whether there are special grounds for it not to be stayed -- should be remitted to the Patents Court, to be determined upon argument at the time of the imminent trial. 

* on the question whether the claim should be stayed, thus rendering the imminent trial abortive, unless the OHIM proceedings were withdrawn very promptly, Samsung’s arguments were correct and the appeal would therefore be dismissed.

You can read today's judgment in full here.

Apple appeal: decision tomorrow

Not everything that looks like an apple is an apple;
these are Asian pears ...

In April, Class 99 brought news of the first instalment of what might turn out to be quite protracted litigation between Apple and Samsung -- the veritable Tweedledum and Tweedledee of tablet computers -- in which the High Court (Mr Justice Mann) considered whether he had jurisdiction to hear Samsung's application for a declaration of non-infringement of Apple's design right and decided not to stay Samsung's application.

Lots has happened since: Mann J refused Apple permission to appeal the decision not to grant a stay; Lord Justice Kitchin thought this wrong and granted permission, so the Court of Appeal sat last Monday, 21 May, to hear that appeal. 

Tomorrow at 10.00am the Master of the Rolls, Lord Justice Lloyd and Lord Justice Moore-Bick will hand down their judgment. Will they allow Apple's appeal against the decision not to stay Samsung's application for a declaration of non-infringement? If they do or don't, will there be a further appeal on this procedural issue? We'll soon find out!

Will design classics return to the copyright fold in the UK?

The Eames lounge chair

According to today's press release from ACID:

"The [British] Government has announced an increase in the scope of protection for Classic designs

Under the new measures, certain ‘artistic’ designs of manufactured goods (for example certain furniture, lamps and jewellery) created before 1987 may now be protected from unauthorised copying under copyright law.

ACID welcomes today’s improvement in copyright protection for classic designs protected under works of artistic craftsmanship from 25 years to the life of the originator plus 70, this is a significant development and it raises further awareness about the continuing value of iconic design. Design infringement of “Classics”, however, will still have to be enforced and so we are looking for these improvements to be matched with strong enforcement policy nationally and internationally".

Further information is supplied by London-based law firm Powell Gilbert, which fleshes out the legal detail a bit:

"The Enterprise and Regulatory Reform Bill [see official government press release here; Bill's operational web page here; full text of today's text here] will repeal [the highly unpopular -- with designers] section 52 of theCopyright Designs and Patents Act 1988. This section limits the term of protection for artistic works which had been produced through an industrial process to just 25 years. The new term of protection will be 70 years plus the life of the creator, bringing it into line with the term of protection in most other European Union states. Until now, the UK had been one of only three Member States (the others being Estonia and Romania) to place a limit on the term of copyright protection for qualifying designs.

Simon Ayrton, head of Powell Gilbert's design and copyright group, said:

"In practice, the repeal of section 52 will mean that the creators of iconic furniture designs, such as the Eames Lounge Chair, Le Corbusier’s La Chaise and Arne Jacobsen's Egg Chair, will be able to prevent the importation into the UK of inexpensively manufactured replicas from the Far East. In doing so, it will ensure a fair and consistent treatment of artistic works in the UK, as well as promoting innovation in the design industry and encouraging investment in new products"".

It took a little while to drill down to the website with the relevant provision, since the government jobsworths don't actually provide a direct link to the text of the Bill but leave it for recipients of their official publicity to find it for themselves. Clause 55 of the Bill is the key provision:

"Exploitation of design derived from artistic work 

(1)The Copyright, Designs and Patents Act 1988 is amended as follows. 

(2) Omit section 52 (effect of exploitation of design derived from artistic work). 

(3) In consequence omit the following— 

(a) section 79(4)(g); 

(b) in Schedule 1 paragraph 20".

If enacted, this provision will come into force on "such day as the Secretary of State may by order made by statutory instrument appoint". So now you know.

Some readers may be wondering what is to happen with regard to transitional provisions, since some folk may suddenly find themselves infringing copyright in the course of a business which was hitherto protected by s.52. Other readers may wonder whether the drive by competition enthusiasts to get manufactured works unprotected as soon as possible to as to create a market for them -- which was originally responsible for s.52 -- subsided forever or whether the pendulum will soon be swinging away from protection again.

Comments from the Design Council here

But have you been to a Workshop based on a Webinar?

Design rights: are we
all dummies at one time
or another?

You may have read the book of the film, or seen the musical of the play -- but have you ever attended the Workshop of the Webinar? Probably not, which is what makes the forthcoming LexisNexis "Design Rights" workshop something of a curiosity.

"Design Rights", which takes place on Wednesday 11 July at an as-yet undisclosed venue in Central London, is a half-day event -- which gives you a chance to do some real work (or shopping) in the afternoon [unless you are quite saintly or really revel in workshops, in which case you can attend this one on copyright and the creative industries too].

This workshop is led, coincidentally, by three of this blogger's friends: Clive Thorne, Paul Joseph and Jeremy Drew, all from London-based law firm RPC. For good measure and in case a reality check should be needed, a so-far unnamed speaker from industry will be joining them.

What's the Workshop about? According to LexisNexis:

"Design rights were once considered an inferior way to protect intellectual property rights [more than once, probably ...]. However businesses are becoming increasingly aware of their potential to give their company an added advantage over other competitors. This has been demonstrated by the ongoing world wide litigation between Apple and Samsung with regard to the design of their tablets [and there we were, thinking that design rights were there to benefit the SMEs]. However the legal structure surrounding enforcing design rights is extremely complex and its efficiency has been questioned in the Hargreaves Report [and that's not the end of the matter: see eg ACID's response to the UK government's response to Hargreaves here] ...".

You can get all the details of this workshop by clicking here. Readers of the Class 99 weblog are entitled to 10% off the cost of registration if they quote "L11290/IPKAT" as a reference (this code works for the Copyright and the Creative Industries Workshop too).

Thinking of taking the PCC route? This is what is might look like ...

Here's something of a novelty.  The high cost of litigation design infringement in the United Kingdom has often been cited as a reason why design protection law in that jurisdiction fails design owners, irrespective of the [oft-criticised] adequacy or otherwise of the substantive law on design rights.   To this end, strenuous efforts have been made to make the Patents County Court, England and Wales, a cheaper, more informal and far easier forum for the remedy of design rights grievances.

Jane Lambert

Now Jane Lambert ("Patents County Court: Case Management Directions") has drafted what she describes as "typical case management directions in an unregistered design rights case" which you can read on JDSupra, here. For the benefit of those who are unfamiliar with the litigation system in England and Wales, a case management conference takes place before trial, at the point at which the judge decides how and indeed where the action should proceed.  As Jane puts it:

"They present the only opportunity to stay an action or transfer it to another court. They are the occasion when the court decides the issues are to be tried, what evidence it will allow and the date for trial. There can be no disclosure, exchange of witness statements, expert reports, cross examination or even skeleton arguments without an order of the court. Unless the court makes an order at the case management conference it will be reluctant to make one later [This is designed to keep proceedings as streamlined and highly-focused as possible; the list also embraces consumer surveys, which a well-funded party may be happy to pay for and which may be particularly relevant where an action is founded on the overlapping claims of passing off and design infringement].

Claimants have a duty to apply for case management directions within 14 days of service of the defence. If they fail to do so within that time another party can apply for directions or the court can order a case management conference on its own initiative. At the hearing, which can take place by telephone or video link, the court will identify the issues in dispute from the statements of case, consider the evidence that it needs to hear to resolve them, fix a date for trial and set a timetable for disclosure, exchange of witness statements, preparation of trial bundles, lodging of skeletons and handing down of judgment".

Jane's draft is succinct (occupying no more than five sheets of paper, with plenty of white space) and altogether very helpful. This blogger hopes that it will give parties that little bit more confidence in deciding to enforce their design rights before the Patents County Court.

International Design Protection: now published

Back in February, this weblog announced the forthcoming publication of Globe Law & Business's International Design Protection: A Global Handbook. If you've been patiently awaiting ever since then for news of its availability, wait no longer -- it's out.  Compiled under the watchful eye of Consulting Editor Clive Thorne (RPC), it costs £140 and is a sister to the same publishers' Intellectual Property in the Life Sciences (here), International Patent Litigation (here) and International Copyright Law (here). 

You can get all the relevant details of the book's national contributory authors and its content from its web page here.

Apple's US appeal bears some fruit

We previously reported on Apple's unsuccessful application for an interlocutory injunction in the US late last year.  Judgment in the CAFC appeal from the District Court's refusal (Apple, Inc. v. Samsung Elecs. Co., U.S. Court of Appeals for the Federal Circuit (Bryson, Prost, O'Malley)) has just been published, and it looks promising for Apple, though without the immediate payoff they sought.
The CAFC upheld the District Court's refusal of relief on the iPhone designs (US design patents US D618,677 and D593,087) - but strengthened Apple's hand on validity in relation to the '087 patent.  The effect of that leaves both iPhone designs looking probably valid and infringed at this stage of proceedings.
The more substantial issue arose in relation to validity of the iPad design US D504,889 (equivalent to RCD 181607-0001).  This the District Court had held to be likely invalid over two references in combination (the "1994 Fidler Tablet" and the "Hewlett-Packard Compaq Tablet TC1000").
The CAFC held that they had wrongly assessed obviousness, and that the iPad design was likely valid over these citations.  The majority referred the case back to the District Court to determine whether to grant an interlocutory injunction.  O'Malley, dissenting on this point, would have granted an interlocutory injunction there and then, as there was a good case on validity, infringement and irreparable harm.
This appeal, like the successful Crocs appeal we reported last year, seems to indicate a new, more favourable approach to validity of designs following the Egyptian Goddess case.  According to the Court, to assess obviousness of a design patent, there is a two stage enquiry:

• Firstly "one must find a single reference, 'a something in existence, the design characteristics of which are basically the same as the claimed design.'" 
• Secondly, "other references may be used to modify [that single reference] to create a design that has the same overall visual appearance as the claimed design", but only "if they are 'so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.'"

In this case, "Based on the differences between the Fidler tablet and the D’889 design, we hold that the Fidler tablet does not give the same visual impression as the D’889 patent, and therefore the district court erred in looking to Fidler as the primary reference against the D’889 patent." But in any event, "Even assuming that Fidler qualified as a primary reference, the TC1000 secondary reference could not bridge the gap between Fidler and the D’889 design."
Finally, an interesting note concerning "design dilution" as irreparable damage suitable to found an interlocutory injunction.  Apple complained that the District Court had rejected this out of hand, but the CAFC disagreed: "Contrary to Apple’s contention, however, that observation does not reflect a wholesale rejection of design dilution as a theory of irreparable harm, which we agree would have been improper. ... The district court’s opinion ... makes clear that it did not categorically reject Apple’s “design erosion” and “brand dilution” theories, but instead rejected those theories for lack of evidence at this stage of the proceedings."  It therefore seems clear that design dilution could, with suitable evidence, be the basis of an interlocutory injunction even absent economic damage.


 

Design survey: not a minute to lose!

For several years now, the World Intellectual Property Office (WIPO) Standing Committee on Trade Marks, Industrial Designs and Geographical Indications has been discussing proposals for harmonisation of design filing procedures around the world -- like the Singapore Treaty for trade marks, but for designs.

To assist in that process, WIPO is conducting a survey of users of design filing, which can be found here.

The survey can be completed in around 15 minutes, and will provide useful information for member states as they take forward their work to make design filing simpler and less expensive around the world. Readers are encouraged to complete the short survey by 11 May 2012.


Given the fact that 11 May is nearly upon us, Class 99 urges readers to drop whatever they're doing and complete it now!