Poland – close to an end of the conflict between rights from registration of design and copyrights?

Dear Readers,

Undoubtedly, not all of you are familiar with Polish law and specifically Art. 116 of Industrial Property Law [IPL] pursuant to which “Products manufactured by means of an industrial design and put on the market after the lapse of the right in registration granted for such a design shall not benefit from  the protection of author’s economic rights in a work under the provisions of the copyright law”. Accordingly, while filing industrial design with the Polish Patent Office you should be aware that after lapse of the protection you will lose your copyrights probably in the most vital extent.

Above regulation seems to be inconstant with international law, community law and even, to some extent, with common sense. However, not all Polish jurisprudence promotes such point of view which resulted in quite interesting doctrinal discussion. Defenders of commented regulation present a standpoint that such limitation of copyrights is reasonable since it is unfair when the right holder profits from two rights concerning the same object. Moreover, when he/she decides to file application for registration of industrial design he/she simultaneously defines work as industrial design and resigns form copyright protection. Such standpoint might feature the elements taken from the old doctrine according to which pieces of art belong to better world of beauty and sublime ideas on counterpart to industrial designs which belongs to dirty world of money and machines. Opponents, beside indicating anachronism of such approach, raised the argument that simply registered industrial design and works under copyright have different prerequisites of protection and consequently, enjoy different scope protection therefore, they do not protect the same object.

The above described discussion could probably last for a long time and could be a source of intellectual stimuli, also for the author who was attending to write a lengthy text in this respect but for the ECJ’s judgment of September 9, 2011 in case  C-198/10. As you know, ECJ’s ruling in regard of the issue in question was in favour of the copyright holders. Luckily, this situation was noticed by the Ministry of Economy which was then in the course of preparing a draft of amendments to the Industrial Property Law that were supposed to account for community case law line in the scope concerned.

Hence, I hope that soon I will be able to present specific amendments in the Polish IPL  concerning the above issues and other ones which, as I suppose and basing on my experience, will constitute a source of other interesting issues.

 

Egyptian Goddess panel announced

Class 99 is fortunate to have panelists who are
happy to exercise their full range of faculties, unlike
the panel portrayed here ...

The discussion panel for Perry Saidman's London presentation on US design patent law, "Life After Egyptian Goddess", which takes place on Tuesday 6 November, has now been finalised. The three panelists are Lorna Brazell (Bird & Bird), Barbara Cookson (Filemot Technology Law Ltd) and Richard Gallafent (Gallafents).

 Details of this seminar, co-badged between the Class 99 and CIPA, can be accessed here. Don't monkey around, but register now!

Lookalikes in Amsterdam

If you are near Amsterdam, or just fancy a long weekend there, UNION's Round Table on Lookalikes takes place on Friday 9th November, in De Industreele Groote Club (very nice, apparently, and 5 minutes from the Central Station).  Here is a link to the program, which features various Class 99-ers and other luminaries.
At 100 Euro for a whole day event including lunch (150 for non-members but you can get the members rate if you join) it looks like pretty good value.   Space is not totally unlimited, so book soon.

“Life after Egyptian Goddess”: a seminar

Not long ago Class 99 thanked the Design Law Group's Perry Saidman for the latest news concerning the Innovative Design Protection Act in the United States. Now the weblog is delighted to announce that the self-same Perry will be giving a slightly sudden, spontaneous seminar, “Life after Egyptian Goddess”, on the afternoon of Tuesday 6 November, from 5pm (registration: progamme begins at 5.15pm) to 7pm (lights out after refreshments).

In this seminar, which is hosted under the joint auspices of the Chartered Institute of Patent Attorneys (CIPA) and the Class 99 weblog. Perry will be giving a red-hot update on US design law (such as it is) and, if you ask him nicely, he may just perform a persuasive oration on the need for the United States to adopt European-style design protection. The venue is the CIPA Hall, which you can locate with just a little effort by clicking here.

With Perry in the hot seat, Class 99's founder David Musker in the chair and his blogging colleague Jeremy Phillips so far constituting a one-man panel (further panelists are invited to volunteer), this seminar should be fun.  The position regarding CPD points has not yet been addressed, but it would be a shame to miss the opportunity ...

If you are planning to attend, email Jeremy here and let him know, with the subject line "Egyptian Goddess". Space is believed to be limited, so don't leave it too late!

PS For the avoidance of doubt -- there is no charge for registration, admission or the consumption of refreshments.

Copyright Registration in Malaysia

Our thanks to Garfield Goodrum, founder of Design Law Offices in Boston and chair-elect of AIPLA's Industrial Designs Committee for the following news:

As of 3/1/12, Malaysia has instituted a quasi-registration system for copyright, called a Voluntary Notification of Copyright, apparently as part of measures to allow for accession to the WIPO Copyright Treaty. 

The links below take you to more information published by the snappily-named MyIPO, the Malaysian IP Office.

• http://www.myipo.gov.my/web/guest/hakcipta-umum
• http://www.myipo.gov.my/documents/10180/6d235c10-3404-4840-9d24-2385db93dcac
• http://www.myipo.gov.my/documents/10180/41614/Procedure%20for%20Voluntary%20Notification.pdf
• http://www.malaysianbar.org.my/members_opinions_and_comments/keeping_copyright_relevant.html

We hear from Garfield that US Copyright registrations can be pretty useful in protecting designs.  Will the same be true in Malaysia?  For 2D works there may well be some advantages.  I wonder about 3D works - ss 13A and 13B of the Malaysian Copyright Act 1987 look much like ss 51 and 52 respectively of the UK Copyright Designs and Patents Act, which greatly curtail copyright protection for three dimensional shapes.  Would any Malaysian readers care to enlighten us?

That Apple/Samsung design litigation - the last word in Europe?

Sir Robin Jacob has today issued the England and Wales Court of Appeal's judgment, upholding the first instance judgment of Judge Colin Birss that Samsung did not infringe Apple's RCD (left).  As you'd expect, it is as punchily readable as anything decided by the best patent barrister of his generation.

As usual, the Court of Appeal has reviewed rather than re-heard the case.  The judgment is useful for two substantive law points: firstly, a summary of the characteristics of the "informed user" post-Pepsico, and secondly, support for the new approach to functional features developed in Lindner Recyclingtech v Franssons Verkstäder (Case R 690/2007-3 Chaff Cutters [2010] ECRD 1) and Dyson v Vax [2012] FSR 4), namely "a feature which is purely functional, not to some degree chosen for the purpose of enhancing the product's visual appearance".  I have never liked this test because it is (a) subjective and (b) not transparent to competitors, but I seem to be in a minority.  However, these obiter dicta are least helpful in clarifying that the Court of Appeal has walked away from the approach it took in Landor & Hawa v Azure.  See previous Class 99 posts for further analysis.  We shall see what the CJEU eventually make of the issue.

On procedure, there is some fascinating analysis of the conflicts of jurisdiction between the court seized of the substance of the case (here, the English court) and others granting interim relief.  Regular readers will recall that Apple at first got pan-European interim injunctions in Germany, then lost them.  Well, it seems that a few weeks after Judge Birss's first instance UK decision on the substance of Samsung's declaratory non-infringement action, on 24 July 2012 the Oberlandesgericht Dusseldorf (the local German Court of Appeal) allowed the appeal and granted a pan-European interim injunction in respect of the 7.7 against SEC and its German subsidiary (their press release is here).  According to Sir Robin there is no jurisdiction to continue with interim measures of this kind after a Community Design Court seized of the action has taken a decision.  So Apple have apparently dropped it. 

It seems that the Oberlandesgericht have a different view of design scope to the English (and Dutch) courts.  We expect that, as with patent cases, the result will be that proprietors go to Germany and competitors go to England.

Heart, soul and US design patents -- and partial claiming

Cooper Woodring

Class 99 is delighted to be hosting a second guest piece from our friend Sarah Burstein, who will soon be coming over to Europe to participate in a very interesting all-star Oxford conference on the future of design protection.  Sarah's current thoughts, below, focus on "partial claiming" as a means of enhancing U.S. design protection. This is what she says:

Heart, soul and US design patents
 Fast Company has a new interview with industrial designer—and design patent expert witness extraordinaire—Cooper Woodring. The entire interview is fascinating and a must-read for anyone interested in US design patent law. This portion, however, really stood out to me:

FC: The most common kind of patent is a utility patent, which covers a product's function. They’ve long been the subject of litigation. Why haven’t design patents? Woodring: Twenty years ago, design patents were considered unenforceable because applicants, at the behest of lawyers, were too specific in their sketches—they depicted all the gory details of an entire product. Copycats would then argue, “Our design is different. We changed the screws.” Now companies only patent the parts of a product that represent its “heart and soul,” like Apple's “flat, transparent, edge-to-edge front and rounded corners.” That’s new, and enforceable (emphasis added.)  

Although I haven’t done any empirical research on this topic, it does appear that some companies are increasingly utilizing partial claiming in order to obtain broader design patent rights. But these companies don’t only claim the “heart and soul” of their designs. The game works like this. First, the company files an application that claims the entire design of a new product. Then, while that application is pending, the company files one or more continuation applications (or, in certain circumstances, divisional applications) that claim discrete portions of the design.
 While these later-claimed portions might cover the “heart and soul” of the overall design, there is no reason to believe that this is always—or even often—the case. To the contrary, it appears that patentees use this strategy in order to broaden their claims to cover competing products. (Perry Saidman explains how this works, with an illuminating real-life example, in section III(C) of this article.)
 So just because a design patent only claims a part of a design, that doesn’t necessarily mean it claims an important part—let alone the “heart and soul”—of the design. It might just mean that the patentee found that portion to be a useful weapon against its competitors.

Designs: a couple of recent articles for the discerning reader

In "European design law: reciprocity revisited" our Class 99 friend and colleague Henning Hartwig has published some further thoughts on a topic which he has made his own. As the abstract of his article explains:

"European design law provides some fundamental legal terms, such as ‘degree of freedom of the designer’, ‘scope of protection’, ‘individual character’, ‘overall impression’ or ‘existing design corpus’.

As yet, there is no firm guidance as to how to understand and apply these terms. Nonetheless, acquisition and enforcement of design rights in Europe appear to be reciprocally linked and thus clearly different from trade mark law."

.This article is not yet published in print format, though it can be read online by subscribers to the Journal of Intellectual Property Law & Practice (JIPLP), while non-subscribers can purchase short-term access to it. Further particulars are available here.

***************************

From Jason Du Mont comes the welcome news that "Functionality in Design Protection Systems", a major article which he has jointly authored with Mark D. Janis, is being published in the University of Georgia's Journal of Intellectual Property Law [note to readers: this is not the same as the Journal of Intellectual Property Law & Practice, mentioned above]. According to the abstract,

"In comparison to functionality doctrine in trade dress cases, scholars have paid relatively little attention to the role of functionality doctrine in design protection systems such as the U.S. design patent system and the EU Community Design regime. Yet functionality considerations potentially affect many validity and scope determinations in the design protection area. In this Article, we critically evaluate judicial application of the functionality doctrine in design protection systems, focusing on the U.S. design patent and EU design protection regimes. We argue that the doctrine as applied in these settings is too often aimless and inconsistent. Some simple doctrinal refinements would help, particularly in the U.S., where the Federal Circuit should definitively adopt the “dictated by” standard and should distinguish explicitly between functionality for invalidity purposes and functionality for scope purposes. Ultimately, a more carefully-considered theoretical justification for the functionality doctrine in design protection systems is needed, one that recognizes that trade dress functionality and design protection functionality serve different goals".

In the meantime, a very recent draft of this article can be accessed, without cost, on SSRN here.

Drawing a blank

All the most important people
read Alicante News ...

The September issue of Alicante News, the increasingly interesting and enjoyable monthly bulletin from the Office for Harmonisation in the Internal Marked (OHIM), has drawn a regrettable blank. The usual heading, "Registered Community Design", is there on the template -- but there is no news under that heading, no inviting hyperlink to tempt us to click through to the untold delights of what is arguably the world's most complex design protection system.

Since OHIM has been so helpful to us in times gone by, it is now incumbent on us to return the favour. If any reader of Class 99 has some choice morsel of Registered Community Design news to share with Alicante News, can he or she please do so, in order not to disappoint readers' expectations.

New U.S. design patent fees

The USPTO has announced its new fee schedule, effective October 5, 2012 (hat-tip to Patently-O). Contrary to the USPTO’s February 2012 proposal (discussed here), there will be no dramatic increases in design patent fees.

Indeed, there will be no increases in the fees for

• Design patent application; 

• Design patent search; 

• Design examination; or 

• Expedited design patent examination.

There will, however, be modest increases (to the tune of US $5-$20) in the fees for:

• Size (i.e., “each additional 50 sheets that exceeds 100 sheets”); 

• Design patent issue; and 

• Design patent reissue.

And for those applicants who qualify as “micro entities” under the America Invents Act, significant discounts should soon be available (see here).

Many thanks to Sarah Burstein for guesting this piece for Class 99.