Monday, 25 February 2013

How is the scope of protection of a registered Community design to be determined?

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, Court of Appeal, England and Wales, 18 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt004, first published online: February 24, 2013

The Court of Appeal decision on the scope of protection of a Community registered design confirms aspects of the approach established by previous cases, but leaves unresolved issues concerning the significance of the ‘design corpus’ and unanswered questions about product features not claimed as part of the design.

Legal context

The legal test for infringement of a Community registered design—the scope of protection—is set out in Article 10 of the Community Design Regulation 6/2002:
Article 10 Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
As the Community registered design system approaches its 10th anniversary, there have still been relatively few decisions from higher courts to clarify the issue of what is the scope of protection under the new law, which is harmonized throughout the EU. How should the judge don the spectacles of the informed user, and how should the question of different overall impression be judged? There is one decision from the Court of Justice of the European Union in PepsiCo v Grupo Promer (C-281/10 P) which gives guidance on the test of ‘different overall impression on the informed user’ in the context of whether a design has ‘individual character’. In the UK, there have been two decisions from the Court of Appeal for England and Wales, Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206. In both of these, Jacob LJ gave the leading judgment; he has once again been summoned from retirement to give the leading judgment in this, the most high-profile registered design case to date.

Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, gained prominence in the first instance judgment and appeal. It states:
The assessment as to whether a design has individual character should 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, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.
The history of this Recital in relation to the scope of protection in UK cases is significant. In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd, Jacob LJ, reversing the trial decision of Lewison J, rejected the idea that the Recital has the effect that ‘an accused design escape[s] infringement only if its overall impression “clearly differs” from the registered design’. By contrast, Arnold J accepted a more modest proposition in Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat):
Recital (13) of the Designs Directive [which corresponds to recital 14 of the Community Designs Regulation] indicates that, other things being equal, a registered design should receive a broader scope of protection where the registered design is markedly different to the design corpus and a narrower scope of protection where it differs only slightly from the design corpus.
This principle was implicitly affirmed on appeal.

In both earlier UK cases, the designs were held to be a great departure from that which went before, and a detailed comparison of the registered design with the prior art corpus, in order to determine the scope of protection that the registration should afford, was not conducted.

Facts

In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012), Judge Birss QC, sitting as a judge of the High Court, granted a declaration that three of Samsung's Galaxy tablet computers (the Tab 10.1, Tab 8.9 and Tab 7.7) did not infringe Apple's Community registered design No 000181607-0001. Validity of the registration was challenged at OHIM, but was not at issue in the UK proceedings.

In arriving at the result, Judge Birss used a seven-feature characterization that was put forward by Apple of features of the registered design allegedly reproduced in Samsung's products, and analysed each feature in relation to a design corpus of over 50 items of prior art put forward by Samsung. Each feature was considered against the design corpus and also considered from the point of view of design freedom.

Apple appealed the decision.

Dismissing Apple's appeal, Sir Robin Jacob (the other two judges agreeing) fully and wholeheartedly endorsed the decision of Judge Birss. He stated at [53]: ‘Overall I cannot begin to see any material error by the Judge’, and then at [54]: ‘I would add that even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons.’

Analysis

When reporting Judge Birss's decision for this journal, I commented that the detailed comparison that he undertook contrasted with Jacob LJ's comments in the two earlier appeal decisions, which suggested that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom.

In the appeal, Apple criticized Judge Birss for conducting a piecemeal, feature-by-feature analysis. Pointing out at [29] that ‘Apple can hardly complain … since the Judge used the very list of seven features it had identified and invited him to use’, Sir Robin emphasized that, having ‘considered the various features of the design’, the judge then ‘came to consider the overall impression of the Apple design’. Therefore it is clear that, whatever preparatory analysis is undertaken, what matters is the overall impression.

Concerning the relevance of the design corpus, and the need apparently potentially to refer to a large body of prior art in order to determine the scope of protection of a Community registered design, the situation is less clear. In the decision under appeal, Judge Birss approved at [48] Arnold J's dictum in Dyson Ltd v Vax Ltd at [39] quoted above. Moreover, at [189] he referred to the ‘importance of properly taking into account the informed user's knowledge and experience of the design corpus’. This approach is apparently endorsed, and Sir Robin approved at [53] of the ‘overall conclusion, arrived at by using his own eyes and taking into account both the design corpus and the extent to which there was design freedom’. So the consideration of a potentially large corpus of prior art is apparently required to assess the scope of protection of a Community Registered Design. But it is not clear how this is to be reconciled with Sir Robin's statement in Procter & Gamble Company v Reckitt Benckiser (UK) Ltd and repeated in Dyson Ltd v Vax Ltd that ‘[b]y and large it should be possible to decide a registered design case in a few hours.’

There also remain two unresolved issues for practitioners concerning how features of a registered design for which protection is not sought should be indicated.

The first concerns the feature of lack of ornamentation. Apple's list of features included a ‘surface without any ornamentation’ and ‘without features which specify orientation’, and Samsung did not challenge this as a characterization of the registration. Accordingly, both Judge Birss and the Court of Appeal accepted lack of ornamentation as a feature of the design registration. This has been surprising for many practitioners who have worked with the convention that not showing ornamentation in the representations of a registration would result in protection for the design with or without added ornamentation. How is an applicant now supposed to show that such a scope of protection is sought?

The second issue concerns the related question of the significance of dotted lines in a representation. Convention, supported by the OHIM Guidelines and the Invalidity Manual, dictates that features in dotted lines are disregarded, because they are either not claimed, or cannot be seen. In the present case, two views showed on the front of the tablet a frame in dotted lines. Samsung submitted that this was to be disregarded. Apple contended, and Judge Birss accepted, that the dotted line indicated a frame below a glass screen, and was not to be disregarded. Sir Robin dismissed Samsung's submission as a ‘complicated point based on the guidelines for examination’ which ‘is faintly absurd: a bit like the notice-board reading “Ignore this notice”.’ This surprising statement will leave applicants wondering how to define the scope of protection that they seek.

A possible avenue is for applicants to use the description of the invention, provided for on the application form, whose use is optional, to clarify the use of dotted lines, and whether lack of ornamentation forms a part of the claimed design. This approach, however, also awaits judicial approval, and is considered by some commentators to conflict with Article 36(6), which states that the description ‘shall not affect the scope of protection of the design as such’.

Practical significance

This decision, like the previous Court of Appeal cases, highlights that the scope of protection of a registered design is narrow. It suggests more strongly than previous Court of Appeal decisions that the prior art corpus should be taken into consideration when deciding the scope of protection. Moreover, it creates uncertainty for applicants and their representatives concerning how to indicate in an application the features for which protection is sought.

Friday, 22 February 2013

The individual character of a design: freedom and the ‘saturation of the state of the art’

Author: Stefano Barazza (Studio Legale Barazza, Udine, Italy)

Joined Cases T-83/11 and T-84/11, Antrax IT Srl v OHIM, General Court of the European Union, 13 November 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt011, first published online: February 21, 2013

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.

Legal context and facts

Antrax owned eight Community design registrations (RCD no 000593959–0001 to 000593959–0008), registered in 2006, for ‘radiators for heating’ (Class 23.03 of the Locarno Classification). In particular, designs 000593959–0001 and –0002 depict thermosyphons consisting of a series of straight vertical heating pipes, of rectangular shape, attached to two horizontal collectors, of cylindrical shape, placed at the upper and lower end of the heating body.

In 2008 The Heating Company filed an application for invalidity against both RCDs, for lack of novelty and individual character, in relation to an earlier design, registered in 2002 (German designs no 4 and 5, covered by multiple registration No 401 10481.8, published in September 2002 and valid in France, Italy and the Benelux as international design No DM/060899). By its decisions of 30 September 2009, the OHIM Invalidity Division declared the RCDs invalid for lack of novelty under Article 5 of Regulation 6/2002.

The Third Board of Appeal annulled this decision for failing to give adequate reasons for the lack of novelty, and proceeded to re-examine the application. The Board excluded the lack of novelty, as the differences between the designs could not be regarded as immaterial details (Article 5(2)). Assessing the lack of individual character, the Board first defined the informed user as the person who buys radiators for heating, in order to install them at home, after seeing and comparing different designs, through consultation of relevant magazines and websites or by visiting specialized shops. Noting that both the RCDs and the previous designs portrayed radiators equipped with vertical pipes of rectangular shape and cylindrical collectors, of similar lateral protrusion, the Board concluded that the overall aspect of the radiators appeared similar, in the eyes of the informed user, regardless of his angle of observation. It also added that the differences between the designs, mainly pertaining to the relationship between the width, depth and horizontal spacing of the pipes, as well as between the diameter of the collectors and the pipes' depth, were insufficient to alter the informed user's perception. The Board also rejected Antrax's argument as to the limited degree of freedom of the designer, noting that different solutions appeared possible. Consequently, relying on Arts 6 and 25(1)(b) of Regulation 6/2002, the Board declared the RCDs invalid for lack of individual character.

Antrax filed two separate applications with the General Court (later joined, under Article 50(1) of the Rules of Procedure), demanding that the Board of Appeal's decisions be annulled and the RCDs declared valid.

Analysis

The General Court first excluded the admissibility of several new documents, submitted by Antrax for the first time with the applications to the court, holding that the judicial review established by Article 61 of Regulation 6/2002 merely concerns the legitimacy of the decisions taken by the Board of Appeal and cannot amount to a re-examination of the matter, in light of documents which had not been made available during the procedures in front of the OHIM (ex multis, Case T-9/07 Grupo Promer Mon Graphic SA v OHIM [2010] ECR II–00981 and Case C-29/05 OHIM v Kaul GmbH [2007] ECR I-02213).

With its only plea, the applicant asserted the violation of Article 6 of Regulation 6/2002, claiming that the differences between the disputed designs and the prior art were sufficient to allow the informed user to distinguish the different designs, which thus presented an individual character.

The General Court began its assessment by defining the notion of ‘informed user’, which, according to PepsiCo Inc v Grupo Promer Mon Graphic SA Case C-281/10 P [2011], lies
‘… between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise’.
The informed user, therefore, appears to be a particularly observant person who, being neither the producer or seller of a product that incorporates the design at issue, nor a technical expert or designer, makes use of the product according to its intended aim, exhibiting a relatively high degree of attention when using it (Case T-153/08 Shenzhen Taiden Industrial Co v OHIM [2010] ECR II-02517), and who has knowledge of the prior art and of the features commonly implemented by similar products, through personal experience or extensive knowledge of the sector. The court added that the heightened sensitivity attributed to the informed user does not imply, however, that he is capable of distinguishing aspects related to the technical function of the product from those which are arbitrary.

Applying these principles, the General Court confirmed the Board of Appeal's definition of the informed user.

On the notion of individual character, the court examined its relationship to the degree of freedom of the designer, noting that restrictions dictated by technical or regulatory constraints may result in standardization of some of the features of the products which implement the disputed designs: Case T-11/08 Kwang Yang Motor Co Ltd v OHIM [2011]. Thus the extent of the differences which the designs should exhibit to produce a different impression on the informed user is proportional to the degree of freedom of the designer: small differences may not generate a different overall impression if the degree of freedom is high, but may be sufficient when the degree is restricted.

The Board of Appeal's conclusions on the absence of a restriction of the degree of freedom were upheld, as it appeared that different designs could have been conceived. It was also observed that general trends cannot be regarded as restrictions to the degree of freedom.

The applicant challenged the Board of Appeal's conclusions as to the lack of individual character, maintaining that the absence of a lateral protrusion of the collectors, in the disputed designs, distinguished them from the prior art. The court recognized that the designs contained no claims as to the extent of the lateral protrusion of the collectors, contrary to the findings of the Board of Appeal. The conclusion was supported by the broken lines drawn at the collectors' extremities, as well as by the fact that the disputed designs did not represent complete radiators but merely depicted thermosyphons, as Antrax stated in its application for registration. OHIM's classification according to the Locarno Convention is a merely administrative procedure, which does not substitute or render the applicant's description invalid (Article 36(6) of Regulation 6/2002).

The court then verified whether the Board's other findings were independently sufficient to demonstrate the lack of individual character of the disputed designs. It disregarded the applicant's arguments concerning the comparison between the depth and spacing of the pipes in the disputed designs and prior art, since they relied on the unproved assertion of the identity of the collectors' dimensions. The judgment clarified that the protection of the disputed designs was granted independently of the dimensions of the final product to which they were to be incorporated and that the applicant had failed to prove the existence of any restriction to the collectors' dimensions. The comparison, therefore, should focus on the internal proportions of the elements, which is independent from the collectors' dimensions.

Finally, the applicant's remarks concerning the saturation of the state of the art were examined. Antrax had already submitted the argument during the proceedings in front of the Invalidity Division and the Board of Appeal, claiming that the crowded field rendered small differences in the internal proportions of the designs more readily perceptible by an informed user. The General Court noted that neither the Invalidity Division nor the Board of Appeal had expressly considered the argument put forward by the applicant. Contrary to OHIM's assertions, it found that the relevance of the exception could not be disputed and that OHIM's considerations as to the lack of proof supporting the applicant's arguments amounted to an inadmissible ex post integration of the reasons of the Board of Appeal's decision (see eg Case T-228/02 Organisation des Modjahedines du peuple d'Iran v Council [2006] ECR II-04665).

The court underlined that its review cannot extend to the evaluation of arguments which have not been considered by the Board of Appeal in the procedure leading to the contested decision, as the court's power to reform can only be exercised when, upon examination of the Board of Appeal's motivations, it is possible to determine the correct decision which should have been taken, based on factual and legal elements already proved: Case C-263/09 P Edwin Co Ltd v OHIM [2011].

The case offered an occasion to distinguish the saturation of the state of the art from the presence of a general trend in the industry. The latter, according to the court, bears significance only in relation to the aesthetic perception of a design and the commercial success of the product which incorporates it, but does not affect the overall impression produced by the designs on the informed user, nor does it restrict the degree of freedom of the designer. Therefore, when assessing the individual character of a design, the aesthetics or commercial success of a product should not be considered relevant. The saturation of the state of the art, instead, may well yield relevant effects on the perception of the informed user.

In light of the Board of Appeal's failure to state a reason with regard to a relevant argument submitted by the applicant, the General Court annulled the part of the Board of Appeal's decisions which proclaimed the invalidity of the designs, rejecting the rest of the application. The court evidenced that the duty to state reasons represents a fundamental principle of European Union Law, designed to allow the interested party and the judge to respectively challenge and assess the validity of an act (Case C-199/99 Corus UK v Commission [2003] ECR I-11177).

Practical significance

The judgment provides a useful overview of all the elements involved in the evaluation of the individual character of a design, enriching the notions of ‘informed user’ and ‘degree of freedom’, carved through reference to previous case law, with ancillary details drawn from the case in hand.

In particular, the court noted that the informed user's degree of awareness changes in relation to the degree of freedom of the designer (reciprocity) and can be influenced by the ‘saturation of the state of the art’, which potentially enhances his sensitiveness towards smaller differences in shapes and proportions. However, the informed user is supposedly incapable of discerning between features dictated by the technical function of the product from those which are arbitrary.

The rejection of the idea that general trends may determine a restriction of the freedom of the designer falls in line with an established case law (Shenzhen Taiden Industrial Co v OHIM), according to which the examination of the individual character of a design shall be conducted irrespective of aesthetic or commercial considerations. The court explicitly noted that such considerations cannot affect the degree of freedom of the designer, but may rather stimulate him to come up with new and original solutions. A diverse interpretation, centred upon the effects of general trends upon the degree of awareness of the informed user, would contradict the approach implemented in Article 6 of Regulation 6/2002 and might hinder creativity and innovation, rather than promoting it.

On the comparison of the overall and internal proportions of the designs, the court clarified that the former may be misleading, when the dimensions depend upon a single element the size of which may vary, unless a technical or normative restriction is present. It is only through an evaluation of the internal proportions of all the elements of the design, that the overall impression of the informed user can be positively identified, as internal proportions remain the same, regardless of the dimension of one of its elements.

The General Court also provided useful advice for the interpretation of applications for registration, evidencing that broken lines indicate elements that fall outside of the scope of protection and that OHIM's classification serves only administrative purposes and does not replace or invalidate the description made by the designer in the application for registration.

Wednesday, 20 February 2013

Editorial: The future of user-generated content is now

The March 2013 guest editorial is written by JIPLP editorial board member Grégoire Marino. It runs like this:
How Time viewed UGC
"In its December press release, the European Commission agreed to reopen the debate on copyright. A dialogue will be launched to tackle several major issues with the current copyright framework, including the topic ‘user-generated content’. The outcome of this open discussion should guide the Commission in its mission to modernize the European copyright framework and adapt it to the digital economy. ‘User-generated content’ is a major bone of contention in the copyright debate. It is also a confusing concept in that it fails to distinguish original content from derivative works, which is the actual point of disagreement between rights holders, providers of online services and their users. Derivative works are based on one or more pre-existing copyright protected works and the right to create them is exclusively reserved to their original creators. The standard practice for rights holders is to license such rights on an individual basis, so as to control the adaptation of their work and to generate income from the commercialization of derivatives. This classic licensing model has arguably lost some of its relevance in the internet age, whereas copyright is at best misunderstood if not simply ignored by most users.

Nowadays everyone has easy access to user-generated content. Recent advances in technology have reduced the costs of creating and sharing derivative works, and the mass popularity of social media such as YouTube, Facebook or Tumblr has prompted the emergence of new social and cultural behaviours, where people are now empowered to become active creators. This phenomenon, called the ‘read/write culture’ by Lawrence Lessig but often referred to as the ‘remix culture’, has radically transformed our creative landscape and favoured the rapid development of social media, which provide the backbone for instantaneous content distribution. Over a few years these companies have also built vibrant audiences eager to consume, create and share, and they have found innovative ways to serve these audiences and to fuel a new type of creativity.

The fast development of social media companies in Europe has also been enabled in part by the ‘hosting’ provision of the e-Commerce Directive, which is loosely based on similar provisions in the US Digital Millennium Copyright Act and analogously limits the liability of internet service providers for hosting infringing content, provided they swiftly remove that content as soon as they become aware of it, usually upon a rights holder's notification. Even if it is true that this limitation of liability is indispensable for ISPs, it places the monitoring burden on the rights holders, since the directive clearly states that there is no obligation on ISPs to monitor for infringing content. This is the apple of discord for them, as they strongly disagree with the sheer principle of monitoring their own content. This situation affects in turn social media users who are immersed in the remix culture. That culture does not recognize the complexities of copyright law: for example, crediting the original author is deemed sufficient when a derivative work is created for non-commercial purposes, although this is clearly not sufficient from a legal point of view, absent any fair use defences. Users are often left confused about how and why the content they intend to share is infringing on someone else's copyright.

It is clear that user-generated content is here to stay. Finding inspiration in the works of others and building upon it has become a socially—if not legally—endorsed process of self-expression and this fact is becoming increasingly difficult to ignore, when 72 hours of video are uploaded on to YouTube every minute. One can only welcome the decision of the European Commission to prioritize this issue and hope that its cultural and social dimensions won't be underestimated. It is in the interest of all stakeholders to closely collaborate, so as to find a solution that works for everyone. Rights holders might want to become more open to the concept of user-generated content and show more flexibility towards the use of their rights. ISPs and social media must act responsibly and go beyond the minimal requirements in limiting their liability in case of copyright infringement. Focus should be put on educating their users, so that they understand basic copyright concepts and feel more secure when sharing content online. Finally, the European Commission should supervise the debate as transparently as possible without neglecting its social and cultural implications. To that extent, the involvement of the digital agenda team and of the Culture Directorate is a sign that advancing towards a balanced copyright framework has been understood as a concerted effort and this acknowledgement alone should be praised."
The views expressed in this editorial are personal; they are entirely those of its author and should be imputed to any other source.

March JIPLP now available

The March 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has just been published in full online. As usual, the issue is available both to online subscribers and to combined online-plus-print subscribers, but non-subscribers can still purchase limited access to individual articles, current intelligence notes and reviews.

The editorial will be posted in full on this weblog in the near future.

The contents of this issue are as as follows:

Guest Editorial

Current Intelligence

Articles

From GRUR Int.

IP in Review