DESIGN LAW: PROTECTING A PARADOX
By Maria Helena Barrera (1)
1 Long time considered a minor discipline Design Law has become an appealing subject in the last years. This sudden attention has been caused in part by the general rise of interest in Intellectual Property, but it also has more specific reasons. It imply the awareness that non-negligible amount of competitive advantage in the information age is linked to the design features of products. It is now difficult to found goods that have not been produced in observance of some kind of design pattern. Such tendency is likely to become even more radical in the future, where the magnitude of design-related activities could reach almost every physical or digital object available in the market.
2 The broadness and variety of design applications is precisely the major problem this class of protection faces. Design could be applied in almost every kind of human production, tangible or intangible, in subject matter that could be at the same time copyrightable, patentable or protectable under trademark. And Design patterns have such a smooth nature that could almost blend on other kind of protectable features, making obsolete traditional ways of dissection in the subject matter involved. Its integration is of such subtle way in regard to the subject expression or functionality as to impede any a clear boundary demarcation. Some commentators consider the phenomenon a part of a large crisis on intellectual property traditional divisions.(2)
3 This instability affected the admission of design protection as a major branch of Intellectual Property. In a young legal field as Intellectual Property, Design Law is particularly recent, and its development has been see as a barely coherent controversy. There has been a general tendency to try to find fast solutions for the conundrum of design protection. The legal regimes that consider Design Law as an Intellectual Property autonomous ramification are few in number and influence. Far more important the number of countries where designs are granted an ambiguous, hybrid status; a regime made of norms taken from other IP contexts or dispersed in other IP laws. Nevertheless, the time for a proper, unique body of law seems to arrive.
a. Design Law: Protection at the intersection of Intellectual Property
4 No definition could be definitive or even accurate in Design protection context, no guidelines of analysis inherently appropriate, because the nature of this field is at least dual. Design law subject matter combines aspects of form and functionality, and at the same time of expression, identification and instrumentality. That implies a mix between characteristics normally attributed to patents, copyright and even trademark subject matters. It is evident that Design law is in the intersection of the three major branches of intellectual property protection, sharing elements of the three as well as its proper elements. Where copyright and patents have certain stability, trademarks seem to be an ever-growing matter of permanent incursion into design law fields.(3)
5 The ambiguity of such situation is reflected in the law: There is not a unified theory of design protection, because traditionally focused systems are not able to deal with such attributes. Such plasticity is the source of complexity that make Design Law a sort of normative imbroglio, Where in other intellectual property fields the nature of the subject matter could be determined with a degree of certainty, the nature of design protection remains a dubious question. The content of the protection granted under that name has been repeatedly suggested by analogies with copyrights, patents and trademarks. In that light, Design law has always be at the edge of other intellectual protection systems, always at risk of becoming an amorphous legal entity, replenished of extraneous, shifting principles
6 There are not two countries with exactly the same regime in regard of design protection. Unlike other fields, the protection allowed to designs seems to be particular to very narrow national realities. There are patent-like regimes, copyright-like regimes, and trademark-like regimes. Pure design regimes are unusual, and generally coexist with some kind of complementary traditional protection, or even with sui generis protection for specific works. The regimes of protection could coexist, overlap or even to be combined, in a panorama that reflects the complexity of this field.
7 As a reflection of the particularly elusive object of protection, any region in the world has the same design law protection. No two countries share the same set of design law characteristics, neither a completely similar configuration. Europe is a glaring illustration of such deep-seated intricacy, and in the same light, the creation of a European supranational design law could be see as a fundamental step in the world wide process of legally understand and structure a coherent design law protection. There is not other region in the world where such an undertaking could be attempted. However, what a difficult mission it implies is better perceived with a brief observation of national regimes.
8 Germany, and into the limits of national particularities, other countries as Portugal or Spain, does admit the protection of aesthetics designs features by specific law.(4) They must be registered in order to constitute the protection. Author rights do not apply, except when an extremely important aesthetic content exists.(5) Such content has been recognized in rare occasions, Le Corbusier’s chaise-longue, for example. It implies a de facto denial of the existence of coexistent protection.
9 Under the doctrine of l’unité de l’art, the French system admit the protection of design creations, by a general regime, le Droit d’auteur,(6) and by a specific regime, le Droit des Dessins et Modèles,(7) that requires registration in order to be invoked. The double protection is cumulative, the two regimes are not superposed after the registration, but added. It implies that the owner of a registered design has the possibility to mix the precepts of both laws, picking some of each most favorable principle in regard of the circumstances. This express adding cumulative regime is unique, there is not other similar in the world. The French Supreme Court has admitted that interpretation.
10 In United Kingdom law, an overlap existed between two kinds of copyright protection, one general, determined by the Copyright Act of 1956, and other specific, delimited by the subsequent Design Copyright Act of 1968. The different periods of protection conferred made common the invocation of different regime as the necessity commanded. Such situation was almost completely finished by the regime set by the Copyright, Designs and Patents Act of 1988. Two kinds of rights coexist now without overlap, (a) Registered design rights, under the Registered Designs Act of 1949 modified, and (b) Unregistered designs rights, that cover aesthetics features in a quasi-copyright parallel system, with a period of duration from ten to fifteen years and a particular novelty test.(8)
11 The Italian system does not admit a cumulative protection. The Diritto d’autore could be invoked only if the artistic elements of the work can be completely dissociate of the functional substrate. There is not a specifically design protection regime.
12 Attempts of harmonization and/or unification of Design Law in the context of the European Union had been undertaken since 1958 without success until October 13, 1998. At that date the first half of a double initiative was finally approved, the European Directive on legal protection of designs. The second half, a Regulation on Community Design, which has as objective to achieve a unitary design right, is still being considered.(9)
13 A path of forty years is clear indicia of the difficulties confronted. The direct history of the European Directive on the legal protection of Designs demonstrates what a non-predictable, unstable field Design law is, even when emphatic legislative intentions exist. It is out of the limits of this paper to compulse in detail the harmonization process that ended in 1998. It is necessary to mention however that since the publication of the Commission proposals in 1993, the procedure was exceptionally overwhelmed by a multitude of pressures that had as objective either its heavy modification or its abandonment.
14 The way of choice was a Directive, a preferred path after the success of the Community Trademark system creation. A double difficulty resisted repeatedly the efforts. First, the extreme disparity between European national systems: There are absolute cumulative systems, partial cumulative systems and interdiction of cumulating systems. The governments resisted any essay of modification of such disparity via the Directive. Second the apparently incidental question of spare parts, which became a powerful source of lobbying pressures and resistance, menacing the viability of whole initiative and its existence. Spare parts legal norms have such a range of variety in Europe as to be notable in a field of intense heterogeneity as design law. Overcome this issue, by the way of exception, required unprecedented measures.(10)
15 The original project included the harmonization of two kinds of design protection. First, an unregistered designs, with automatic protection at the public disclosure and a limited duration of three years. Second, a registered design, protection granted for 25 years, with the possibility of one time renewal. The Directive only has conserved the later in its definitive form. The monopoly conferred is one of exploitation of the work.
16 Perhaps the more controversial rule included in the Directive is that which allows exclusion of non-visible features from the protection.(11) There is not a way of to determine with precision what are exactly the features alluded, and its construction could be challenging in consequence, specially because the antecedents with detached parts. Another literally puzzling provision allows the exclusion of designs dictated by interconnection needs, as a part of the general exclusion of functionality dictated works. When an express exclusion of the exclusion have been included in order to permit the protection of multiple assembly or mutually connective products (aka Lego), the application of the principle to other kinds of interconnection sets could be difficult.(12)
17 The subject matter protectable in theory must overcome two requirements for the protection: (a) Novelty and (b) Individual character. Novelty, of course, does not imply a patent standard, but a far lower one that could be interpreted as a requirement of a certain amount of distinction from previous creations on the field, and will be appreciated in relation with the European design prior art.(13) The notion of novelty admitted in the Directive could be seen as similar to that existent in national laws.
18 The key requirement is individual character, specially created in this Directive. It implies the necessity that the design be ‘non-common’.(14) What would be the actual meaning of this characteristic will differ, slightly in theory, from the different national background of application.(15) The individual character requirement was purposely conceived as a complementary barrier that would enhance protection, improving the limits of protection always too basic with the novelty standard. Its construction however would be confronted with the national standards.
19 The importance of the European Directive on Design Law need to be stressed, and there is not better way than to relate its enactment with other similar initiatives in the international context. In 1998, both United States and Japan have introduced modifications on its national design protection systems.
20 The American patent law approach was slightly modified by an unexpected reform of the Copyright Act, introduced in the Digital Millennium Copyright Act without being related anyhow with it. In its new Chapter 13, sections 1301 to 1332, a sort of sui generis regime is created, nominally for the protection of vessel hulls, but with a broader possible application. Expressly, there will not be a cumulative protection between the new regime and Patent Design. The term of protection, is ten years. The new regime seems to originate an experimental hybrid between patent law and copyright law. Experimental, because its enactment is temporal and must be ratified.
21 Amendments to the Japanese Patent and Design Laws became law in 1998,(16) after a period of forty years without transformation, since the enactment of its Design Law in 1959. Although some commentators have found the modifications insufficient,(17) it is evident that the dispositions affecting designs are of considerable magnitude. The requirements of protection have been enhanced for example from a plain novelty with touch of originality, to novelty plus ‘creativity’ standard.(18) A partial design protection is created, allowing design owners to sue for infringement of a part of the protected subject matter. This provision could be particularly disturbing, because it create the possibility of a overlap between patent and design regimes and an actual protection of functionality by the way of design law.
22 International design law protection reflects the character of the national approaches. The dual nature of the question is not only present on the national systems but also reflected on the international panorama. There are of course the two main intellectual property laws, Paris 1883 and Bern 1886, but they only provide a broad, non specific context of protection. Nothing comparable exists in the particular design field, where the only international law is The Hague Agreement Concerning International Registration of Industrial Designs.(19) Its scope implies only a unification of registration system; the protection conferred is that recognized by each national regime. In June of this year, a Diplomatic Conference will revise its text; the proposed revisions have not yet been made available.
23 The final version of the Directive, trying to harmonize a traditionally non-harmonizable field as design law, could be seen as paradox by itself. The interpretations of this Community effort are opposites. From a point of view, the Directive seems to confirm the impossibility of to harmonize. A proof of it is the tempest of interest that its process of approbation created, which magnitude was vastly superior to any previous intellectual property related process. Another proof, more ambiguous are the Directive actual provisions. The outcome seems only to achieve harmonization of the limited set of protection normative without controversy potential, leaving untouched the principal sources of heterogeneity. There are signals of an unachieved attempt, for example, in the large space allowed to national legislation copyright and patent protection variations.(20)
24 On the other hand, it is necessary to analyze the Directive on the context of he construction of the acquis communautaire, a subtle process where consensus has been achieved with careful, gradual undertakings. When it is evident that the actual Directive does not reflect the ambitious initial projects, it is also obvious that under this dissimilitude was hide the main intention of to preserve this opportunity of harmonization as a basis of future normative. The circumstances have made necessary to limit its scope at this time in order to avoid the abandonment of the Directive. This point of view seems to be confirmed by the Directive itself, where a clause of revision have been incorporated, allowing a broad path of revisions from October 28, 2004.(21)
25 As the world witnesses an unprecedented elan in design law, the European Union is a leading development. In that light, it is not a coincidence that the major economical powers have undertaking almost simultaneous modifications of this law field. Competitive advantage depends of a comprehensive, adequate control of intellectual property resources. Such control has lacked in design protection, it is just time of correct it and to provide a coherent legal way.
(1) JD Central University, Ecuador. LL.M. Computer Law, Montpellier I University, France. LL.M. Industrial Property Law, Grenoble II University, France. LL.M. Intellectual Property, Franklin Pierce Law Center
(2) See, e.g., J.H. Reichman, Charting the collapse of the patent-copyright dichotomy: Premises for a restructured international intellectual property system. 13 Cardozo Arts & Ent LJ 475,
(3) When Anglo-Saxon countries had the most expansive trademark laws, continental systems seem to be going in the same path. A good example is the admission of the possibility to protect an olfactory mark in the European Trademark Office. See URL
(4) Geschmackmustergesetz, 11 January 1876, amended on 25 October 1994.
(5) Urheberrechtsgesetz, 9 September 1965, amended 23 June 1995.
(6) Art. L-511-1 à L-521-24, Code de la Proprieté Intellectuelle.
(7) Art. L-111-1 à L-132-3, Code de la Proprieté Intellectuelle.
(8) C&H Engineering v. F. Klucznic & Son Ltd. (1992) FSR 421
(9) Proposal for a European Parliament and Council Regulation on Community Design (94/C 29/02), COM (93) 342 final – COD 463. Available at the OAMI page, http://oami.eu.int/en/aspects/propeg.htm
(10) See e.g., Le Parlèment enterine le compromis sur les pièces detachees. Europolitique, September 16, 1998.
(11) 98/71/EC,Art. 3(3)and (4). Introduction No. 11 and 12
(12) 98/71/EC,Art. 7(2) and (3), Introduction No. 14 and 15.
(13) Graeme B. Dinwoodie. Federalized functionalism: The future of design protection in the European Union. 24 AIPLA 611, 651. "The Commission intended that novelty for design purposes be a much less difficult standard than patent requirement of the same name… one of the principal drafters has characterized [it] as ‘false novelty’ ".
(14) Expression used by Mme. M. Pérot-Morel. Notes of cours "Les dessins et Modèles". DESS 1997-1998. Grenoble, France.
(15) 98/71/EC, Introduction No. 13. The assessment of individual character will be based on "whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus…" The ‘design corpus’ would be the European prior art context.
(16) Amendment to Patent and Design Law. Bill approved by the Japanese Diet on April 24, 1998.
(17) E.g. Akimitsu Hirai, Japan enacts disappointing IP reform. IP Woldwide special article available at the URL: http://www.ipww.com/jul98/p09_japan.html
(18) New article (3) 2.
(19) As enacted in 1925, revised on London, 1960. Arrangement The Hague II of 1984
(20) 98/71/EC, Art. 16, "Relationship with other forms of protection", Art. 17, "Relationship with copyright".
(21) 98/71/EC, Art. 18, "Revision"