A is for Australia ...

One of Australia's best-known designs: these concrete sharks
scare the real ones away from Sydney's sandy beaches ...

We have recently received from the excellent Warwick A Rothnie (scholar, barrister and, more importantly, ipwars.com blogger) a hint that ought to do something about not having a link to the Australian Designs Office home page. Thanks for supplying the link, Warwick -- we've now added it to the Class 99 side bar. If you can't be bothered to look for it in the alphabetical list of design registries, which it heads, the link is here too.

For good measure, Warwick has sent us a link to the Aussie Designs Act as well.

Nordock: the attorney as expert on 'function' and 'functionality'?

It's a little while since this blog has had the chance to post an item by Sarah Burstein -- but she has just resurfaced and we are delighted that she has sent us this:

Can a patent attorney testify as an expert on functionality?

Earlier this week, U.S. District Judge Rudolph T. Randa issued a notable opinion in a design patent and trade dress case. (The full opinion is posted here.)

In the case, Nordock Inc. alleges that Systems Inc. infringes its dock leveler design. Here is an illustration from the patent-in-suit:

The parties filed cross-motions for summary judgment. Judge Randa denied both motions with respect to Nordock’s infringement claims. That’s not particularly unusual or interesting—the tests for both design patent and trade dress infringement are very fact-specific. If there are genuine disputes about those facts, then summary judgment is not appropriate.

What is interesting is the fact that Judge Randa allowed Systems to offer—and, in fact, relied upon—expert testimony about design patent and trade dress law.

Under U.S. evidence law, attorneys cannot usually testify about the law per se. In practice, though, it’s not unusual for patent attorneys to testify as experts on “Patent Office procedure.”

In this case, Systems retained a patent attorney, Adam L. Brookman, to testify as an expert witness. Brookman prepared reports stating, among other things, that Nordock’s design patent and purported trade dress were invalid because the claimed design is functional.

Nordock moved to strike Brookman as an expert. Nordock argued, among other things, that he was not qualified as an expert because he had no special experience or knowledge about dock levelers or product design.

Judge Randa did not agree, finding that Brookman “has sufficient knowledge, experience, and education to testify as an expert on function and functionality” because:

Brookman obtained a Bachelor of Science Degree in Industrial Engineering from the Georgia Institute of Technology in 1983, which involved course work in mechanical, electrical and civil engineering. For two years, before attending law school, Brookman worked as a project engineer and manager for the Frito Lay Company. 

In 1987, Brookman obtained a law degree from George Washington University, and, for more than 25 years he has practiced intellectual property law. Brookman was previously qualified as an expert witness and consultant with respect to trademark, trade dress, and design patent issues in intellectual property cases. He taught trademark law as an adjunct professor of law at Marquette University, frequently speaks on intellectual property subjects, and wrote Trademark Law: Protection, Enforcement and Licensing, published by Wolters Kluwer Law & Business. 

With respect to the particulars of this case and dock levelers in general, Brookman’s report . . . discloses that . . . he has prepared himself by obtaining the complete file history of the [patent-in-suit] and all related patents and applications, and copies of the pleadings in this case, including exhibits associated with them. He also reviewed Nordock’s website, the websites of third-party dock leveler providers, and numerous third-party design and utility patents relating to dock levelers and lug type hinges, reviewed the transcript of [a Systems engineer’s] deposition, and spoke to him about the design in issue and the construction of dock levelers generally.

But do these credentials really qualify someone to testify as an expert on “function and functionality”? That is an interesting question. If this case doesn’t settle, I hope Systems will raise it on appeal.

Do readers have any experiences of attorney-as-expert issues in design litigation in other jurisdictions? If so, we'd love to hear from you.

Individual character, design freedom and saturation

Crowded field -- but still room for everyone?

"The individual character of a design: freedom and the ‘saturation of the state of the art’" is the title of a Current Intelligence note by Italian attorney Stefano Barazza (Studio Legale Barazza, Udine) and which will soon be published in the Journal of Intellectual Property Law & Practice (JIPLP). The piece can be read in its entirety on the jiplp weblog here. The subject of this note is the recent brace of decisions of the General Court of the European Union in Joined Cases T-83/11 and T-84/11, Antrax IT Srl v OHIM, 13 November 2012. According to the abstract:

The General Court, reviewing a decision of the OHIM's Board of Appeal on the lack of individual character of a design concerning a thermosyphon for radiators, provides a thorough assessment of the notions of ‘informed user’ and ‘degree of freedom of the designer’, observing that the ‘saturation of the state of the art’ (crowded field) may be relevant to assess the degree of awareness of the informed user.

Another design seminar: now it's ADIPA's turn

From ADIPA, the Association of Danish Intellectual Property Attorneys, comes -- you guessed it -- another design law event, this time in the lovely and design-conscious city of Copenhagen.  If you miss the INTA roundtable in Amsterdam, news of which was posted on Class 99 yesterday, this event may offer good compensation:

10 Years -- Experience of Community Design Law 

Design rights in the Union have been ruled by Community law for 10 years; by a regulation providing for both registered and unregistered Community design rights and a directive approximating national registered design law. The effect is a harmonized design system within the Union. 

But what is the experience and result of the system; how does it work and what about the enforcement/case law throughout Europe and last but not least what is the value of a Design right? 

Hopefully these questions will be answered by a team of three different professionals from the European region. 

Speakers:

Ulla Wennermark, Member of 2nd Board of Appeal at OHIM, will give a legal introduction to the Design system within the European Union and focus on important Invalidity Division/ Board of Appeal decisions and judgments from the Court of Justice. 

David Stone,Class 99 blog team member and partner, Simmons & Simmons, London, will give a practical view and interpretation of legal context, such as scope of protection and infringement matters of design rights, based on case law from national courts and Community design courts. David chairs the MARQUES Designs Team, and author of European Union Design Law: A Practitioners’ Guide (Oxford University Press, 2012). 

Susanne Skov Ægidius, Legal Manager at Rosendahl Design Group A/S, will give an in-house view – including practical examples – of the possibilities, challenges and value of design protection within a design based company. 

Date: Friday 12 April 2013 

Time: 14.00-17.30 

Venue: Bella Sky Comwell, Center Boulevard 5, 2300 Kbh.S 

Price: Members of ADIPA: DKK. 500,00. Others: DKK 750,00 

You will receive an invoice from ADIPA upon your registration. 

Registration: As soon as possible via e-mail to info@adipa.dk

Roundtable: where designs meet trade marks

The almost unprecedented run of top-notch conferences, seminars and other events in recent months continues with the announcement of this forthcoming INTA roundtable. Sadly, the complexity of the subject matter and the grey area in which trade mark rights and design rights either overlap or don't quite meet up means that we need a great deal of prompting to get our heads around the topic.

The roundtable featured below is sadly not a piece of furniture at all, but a forum for disseminating further information about the tectonic plates of European design and trade mark law and the manner in which they grind against each other:

INTA EUROPE ROUNDTABLE 

Protection of product appearance

using trade marks and designs 

Thursday, 14 March 2013 

14:30 – 17:00  

Venue: Simmons & Simmons LLP, Claude Debussylaan 247, Amsterdam 

It is almost seventeen years since the first Community Trade Marks and almost ten years since the first Community Designs were registered by the Office for Harmonisation in the Internal Market. 

The protection of product appearance by trade marks and designs however remains a hot topic in the European Union. Over the last two years, the first design judgments have been handed down by the Court of Justice of the European Union. Also the second major pan-European dispute on design infringement has created significant new case-law. 

The roundtable will be an interactive session, whereby the speakers will discuss filing strategies for trade marks and designs. After the presentations, the participants will be divided into small groups and will be asked to come up with the best possible protection for their client. Their protection strategies will be then be tested: have they provided their clients enough protection to stop infringement? 

The roundtable will end with a discussion of the most recent case law in relation to the protection of product appearance. The sessions will be conducted in English. 

Speakers include:David Stone (Class 99 team member; partner at Simmons & Simmons LLP in London and an expert on design law; member of the Board of Directors of INTA, he also chairs the designs team of MARQUES and is author of three MARQUES reports on OHIM Registered Community Designs invalidity decisions).  

Hidde Koenraad (Senior-Associate, Vondst Advocaten, Amsterdam, with extensive experience in litigating and advising in the field of intellectual property, with a strong emphasis on trade marks, designs and copyrights. Active member of AIPPI, the Dutch Copyright Association, BMM and ECTA). 

Places are limited: applications for the roundtable can be sent via email to INTAroundtable@simmonssimmons.com

Unfaer-oe competition? Islanders make a Killing as Danish court tells infringers to get knitted

No, this isn't just an excuse to post a picture of Sarah Lund.  According to an article in the Guardian, "that sweater" (left) was designed and hand-knitted by Faeroe Island designers Gudrun & Gudrun, who have succeeded against competitors Stof og Sy ("fabric and sewing") in Copenhagen.  The infringers sold patterns and wool rather than complete jerseys.
Apparently,
(a) the design was inspired by traditional Faeroe Island patterns, but
(b) fitted to Ms Lund, and
(c) hand knitted on the Faeroes.
The Guardian says it was a copyright infringement case (but newspapers do get these things wrong).  What would the outcome have been in the UK?  No doubt that the result as shown is aesthetically appealing, but is it the jersey, or "the package" (as Walton J put it in Merlet v Mothercare in the UK)? Particular hand-knitted jerseys were found to be "works of artistic craftsmanship" in New Zealand (Bonz v Cooke), but the traditional nature of the pattern in this case perhaps calls into question the level of artistry.  So, does the sweater merit life-plus-70 years of protection?  What do readers think?  Comments (particularly from Scandinavian readers) welcome. 
On the general subject of knitwear as infringement, it seems that the BBC amicably settled their notorious 2008 claim against knitter Mazzmatazz over her knitwear Dalek.  Once more, ADR knits up the ravelled sleeve of care.  Indeed, their US site now has a knitting circle page featuring all manner of Whovian knitwear.
And on the general subject of Scandinavia, Class 99-er David Stone will be joining others at a seminar entitled "10 years – experience of Community Design law", run by the Danish Association of Intellectual Property Attorneys ("ADIPA") in Copenhagen on 12 April.  The flyer is here, and ADIPA want your money as soon as possible.  Since OHIM's own 10 year celebration is on 8-9 April in Alicante, you may wish to keep that week clear and check the flight times well in advance.

Robin and Alex debate Cinderella

"Trade Marks and Designs: Overlaps and Boundaries" is the title of a debate hosted by Edwards Wildman on 16 April. The venue is Stationers' Hall, London, and the debaters are Sir Robin Jacob and Alexander von Muehlandahl. The background to this event runs like this:

Debating the Cinderella of IP law: no mean feet ...

"Recent case law throughout the world has brought design law to greater prominence. The Cinderella of intellectual property law has finally arrived at the ball. In this context, the relationship between designs and trade marks has assumed increased topicality and significance. Our debate will look at the rationales for these two intellectual property rights and at the boundaries and overlaps between them. It will also consider strategies for dealing with their relationship in a commercial context.

Can a design function as a trade mark? Should design protection trump the application of trade mark law? Can the two co-exist in parallel?

Can trade mark protection follow a term of design protection? These are some of the questions that our speakers will address.".

I have been personally assured by John Olsen that everyone over the age of five is welcome. Full details of the programme and how to register for it are here.

Garden Pavilion: a case note

"Unregistered and registered Community design rights: further guidance expected from CJEU" is a piece by Class 99 blog team member and Bardehle Pagenberg partner Henning Hartwig. The subject of this piece, which is now available online as part of the Advance Access service of the Journal of Intellectual Property Law & Practice (2013), reviews Garden Pavilion, Case No I ZR 74/10, Bundesgerichtshof, Germany, Decision of 16 August 2012. According to the abstract:

"Germany's Supreme Court (Bundesgerichtshof) seeks helpful clarification from the Court of Justice of the European Union (CJEU) on standards for establishing, challenging and enforcing unregistered and registered Community design rights".

Henning's case note has been supplied to JIPLP by leading German title GRUR Int. under the partnership programme between the two journals.