Limitations in the Field of Designs

IIC (2018) 49:41–62 https://doi.org/10.1007/s40319-017-0660-4

ARTICLE

Natalia Kapyrina

Published online: 21 December 2017 Ó Max Planck Institute for Innovation and Competition, Munich 2017

Abstract Considering the weight given to exceptions and limitations in current intellectual property research, this paper endeavours to explore sui generis design rights from the standpoint of limitations to their scope of protection. This paper focuses on the current EU framework with insights from its travaux pre´paratoires, comparing it to several other legislations and international instruments. A primary assessment shows that these limitations have a reduced interference with the scope of protection, and stem from a copyright or patent approach to the hybrid subject matter of designs. This paper further explores situations where the interaction between the scope of design protection and its limitations to design rights triggers conﬂicts. It examines in particular the recent autonomous interpretation by the ECJ of the limitation authorising reproduction for the purpose of citation.

Keywords Design Á EU law Á Limitations Á Exceptions Á Scope of protection

This research was partially undertaken during the author’s stay at the Max Planck Institute for Innovation and Competition (MPI), with a generous scholarship granted by the MPI. The author expresses gratitude to Professor Dr. Dr. h.c. Annette Kur and Professor Dr. Christophe Geiger for enlightening discussions. This paper was completed within the framework of the Basic Research Program at the National Research University Higher School of Economics (HSE) and supported within the framework of a subsidy by the Russian Academic Excellence Project ‘5-100’.

N. Kapyrina (&) Associated researcher at ILITIP, National Research University Higher School of Economics, Russian Federation, Moscow, Russia e-mail: [email protected]

N. Kapyrina Doctoral candidate at CEIPI, University of Strasbourg, Strasbourg, France 123 42 N. Kapyrina

1 Introduction

One of the main aspirations of current scholarship on exceptions and limitations is to endorse acceptability of various IP rights and to review how all the elements of such rights form a balanced legal tool for promoting innovation and creativity.1 Those concerns are very much appropriate to the field of designs, considering that they are one of the diverse options of product shape protection,2 tending to protect visual differentiation capacity and to consolidate lead-time acquired by a mixture of technological and non-technological innovation processes.3 They are frequently used in highly competitive industries (e.g. ICT)4 and therefore their regulation should be balanced enough not to hinder innovation, while staying secure and affordable for its users. As designs also originate in creativity and enrich the universe of visual forms, the necessity to provide sufficient room for creative dialogue is inevitable. Further forms of expression, which are necessary in a democratic society, such as news reporting, critique or parody should also be allowed. A children’s metaphor has been widely used in the field of design protection to show the propensity of its subject matter to repel or attract various intellectual property rights (IPRs).5 The saying, often used to hint at the inappropriate behaviour of a child’s acquaintances, ‘‘show me your friends, and I’ll tell you who you are’’, may be considered. Depending on each ‘‘approach’’ to designs, be it ‘‘copyright’’-like, ‘‘patent’’-like, or ‘‘trademark’’-like, authors seldom agree on the relevant criteria, conditions and scope of protection, having consequently various techniques for defences that accompany them. We start from the observation that sui generis design legislation draws rather often elements from other IPRs, including limitations. Consequently, the choice of such limitations may say a lot about one’s conception of a design right. While better-shaped or better-interpreted limitations may endorse the acceptability of IP rights, one of the troubles with sui generis design law’s allure and acceptance in a given society is arguably the ambivalence of its relationships with other IP rights, as a sign of lack of emancipation, hinting at a lack of autonomous justification. The adoption of a ‘‘design’’approach to sui generis legislation in this field has been a major achievement of the EU framework.6 While the ECJ strives to burnish

1 Geiger (2009); Dreier (2010); Geiger et al. (2015). 2 Levin (1984); Eichmann and Kur (2016). 3 Recently, several economic studies have focused on the impact of design on innovation: Galindo-Rueda and Millot (2015); Europe Economics (2015). 4 The 2016 Hague Yearly Review states: ‘‘For the first time, designs relating to recording and communication equipment (Class 14) accounted for the largest share (10.8%) of total registrations in 2015. This was followed by designs relating to clocks and watches (Class 10), and means of transport (Class 12), with shares of 9.0 and 7.4%, respectively’’ (p. 5). 5 See for example, Kur (2008a), p. 613. 6 Kur (1993). 7 Directive 98/71/CE of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, OJEC 28.10.1998, L 289/28-33; and Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs, OJEC, 5.1.2002 L 3/1-24. These two documents will be referred to hereinafter as Dir. and Reg. 123 Limitations in the Field of Designs 43 the tools provided by Directive 98/71/EC and Regulation 6/2002,7 the geographical expansion of the Hague Agreement permits interconnection and comparison on a more legitimate basis of this community design right with various design rights around the world.8 Such a formality-based equivalence of different regimes endorses dialogue, giving way to original forms of convergence,9 while design rights and other options for protecting designs continue to be quite diverse across jurisdictions. Exceptions and limitations are known to be the other side of the coin, allowing fair game in an environment where granting exclusive rights in immaterial assets has been chosen by lawmakers over various freedoms: freedoms of competition, trade and industry, imitation, movement, expression, etc.10 Obviously all the elements of an IP regime try to fulfil this balancing function: a limited duration; exclusions from agreed subject matter, e.g. the exclusion of features solely dictated by a technical function (Reg. Art. 8.1)11 or the must-match exclusion (Reg. Art. 8.2); spare-parts clauses (Reg. Art. 110); and other limits, such as the prior right defence or exhaustion. Nevertheless, our focus will primarily be on limitations, the type of limits encompassed in legislation that extract certain acts from the content of rights.12 The main reason is that limitations have a direct link to a design’s scope of protection, without interfering with its subject matter, known to be hybrid and difficult to grasp.13 Limitations to designs have received relatively minor attention, with little case law, because the first defence to a claim of infringement is an invalidity counterclaim or action.14 Nevertheless, limitations being a ‘‘horizontal’’ issue in IPRs, they deserve specific attention in the field of designs. This paper firstly analyses the current state of the EU framework on the content of rights and limitations (Part 2). Secondly, it explores the international framework and provides comparative insights (Part 3). It further identifies conflicts that arise on the basis of existing legislations (Part 4), and considers some of the possible ways to move further (Part 5). In view of the upcoming design law review at the EU level, addressing these concerns becomes more attractive.15 From a comparative point of view, it is

8 The Hague Agreement Concerning the International Deposit of Industrial Designs, 1925, as revised. Whereas the USA, Japan and the Republic of Korea have acceded to the Geneva Act of the Hague Agreement in 2014 and 2015, Canada, Russia and China have engaged in national reforms with this same aim. See Bisson (2015). 9 See Gurry (2016). 10 Geiger (2004); Schovsbo and Ramsey (2013). 11 On the problem of functionality in designs, see e.g. Fischman Afori (2010); see also the referral in C-395/16, Doceram GmbH v. CeramTec GmbH, and the Opinion of Advocate General Saugmandsgaard Øe delivered on 19 October 2017. 12 Those ‘‘pools of inland water within the island’’ of exclusivity in ‘‘the ocean of freedoms’’: Kur (2011), p. 211, fn 16. Very often they are referred to as ‘‘exceptions and limitations’’, the EU legislation calling these elements just ‘‘limitations’’. We shall abide with the EU legislation, the discussion on the right labelling beyond the scope of this paper. See however, Kur (2011), pp. 210–211; Geiger (2014), p. 877 and literature referred. 13 Such ‘‘hybridity’’ has been notably conceptualised by Reichman (1994). Suthersanen (2004), p. 57, refers to the ‘‘multi-faceted nature of the subject matter’’. 14 See however McCutcheon (2015); Kurz (2014); Mouron (2013); Klawitter (2012); Gerdau De Borja (2008). 15 Legal Review on Industrial Design Protection in Europe (2016). 123 44 N. Kapyrina confirmed that there are various options permitted under the TRIPS Agreement, so that each Contracting party may choose the most locally appropriate normative aim. In addition, in the absence of a ceiling norm to the scope of protection for designs, it is quite impossible to find any harmonious position regarding limitations. However, in the EU, where for the moment the importance of limitations tends to be downplayed, there is a way to improve the general picture by mixing the autonomous interpretation of existing limitations and finding inspiration in the provisions of other IPRs.

2 The Current EU Framework

2.1 Description of the Framework

The EU Directive and Regulation introduce same exceptions to the protection conferred both by registered and unregistered design rights. The difference in protection conferred by these two forms has no inﬂuence on the relationship between the scope of protection and its limitations.16 The holder of a registered design, the focus of this paper hereafter, receives an exclusive right17 with a scope of protection extending not only to identical designs, but also to those which do not produce a different overall impression on the informed user.18 Protection is not limited to the product referred to in the registration application, but it can be enforced irrespective of the product.19 The content of rights granted is as follows: A design shall confer on its holder the exclusive right to use it and to prevent any third party not having his/her consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.20 These include both material and immaterial forms of exploitation.21 The exclusive right covers not only acts done with a product embodying the design,but

16 Whereas the registered design protects against any design that does not produce a different overall impression on the informed user, the unregistered design protects only against such designs if copying is proven. This difference is hence present at the enforcement stage as an additional proof of copying is required. 17 Reg. Art. 19.1. 18 Reg. Art. 10, same for national registered designs Dir. Art. 9. 19 Reg. Art. 10 and Dir. Art. 9 Dir., plus Reg. Art. 36.6. This last very important point has caused debate, see Hartwig (2016). For the purposes of space and time we will not directly address this issue in the present paper, but we will keep it in mind. 20 Reg. Art. 19.1 and 19.2, same for national titles Dir. Art. 12. 21 This distinction is inspired by German copyright law, Sec. 15, that distinguishes material forms of exploitation (‘‘[…] sein Werk in ko¨rperlicher Form zu verwerten […]’’ (§ 1.)) and immaterial ones (‘‘[…] sein Werk unko¨rperlicher Form o¨ffentlich wiederzugeben […]’’ (§ 2.)). 22 For a critique, Bently and Sherman (2014), p. 755: ‘‘The better view is that it should be limited in this way [‘‘‘use’’ is limited to activities of the same sort as those listed’], especially given that the definition of design is broad enough to encompass subject-matter previously the preserve of copyright and trade mark law. […] Recital 21 of the Regulation states that right ‘should also extend to trade in products embodying 123 Limitations in the Field of Designs 45 also with the disembodied design itself.22 It allows an ‘‘enhanced protection’’, as expressed in Recital 7 of the Regulation, for the purposes of ‘‘promot[ing] contribution of individual designers to the sum of Community excellence in the field’’, and ‘‘encourag[ing] innovation and development of new products and investment in their production’’. Indeed, this goes far beyond the substance of the exclusive right as defined in the pre-harmonisation era by the Court of Justice, which was ‘‘to prevent third parties from manufacturing and selling or importing, without its consent, products incorporating the design’’. 23 Notably, after the adoption of the Design Directive, the ECJ updated this approach, by observing ‘‘manufacture, sale and importation involve use by the third party of the appearance of the product which the design right seeks to protected’’.24 Limitations to these rights do not permit the exercise of rights in respect of acts done privately and for non-commercial purposes,25 for experimental purposes,26 as well as acts of reproduction for the making of citations or teaching.27 Whereas the two former limitations are unconditional and refer to the whole scope of protection, the latter limitations are peculiar. They limit the exclusivity only concerning the act of reproduction for two specific purposes (citation and teaching), and are allowed under the following conditions: (a) compatibility with fair trade practices; (b) not to unduly prejudice the normal exploitation of the design; and (c) mandatory mention of the source.28 An additional paragraph establishes a limitation to acts done during the temporary presence of foreign ships and aircrafts,29 bringing the content of Art. 5ter of the Paris Convention to the field of designs.30 In the travaux pre´paratoires it is noticeable that the pair (content of rights/ limitations) underwent several adjustments. In the Max Planck Institute (MPI) proposal post-1 August 1991,31 rights are conferred in relation to acts with the design itself (Art. 22), and the limitations are broadly drafted in one general clause.

Footnote 22 continued infringing designs’, and supports a view that the meaning of ‘use’ is to be confined to ‘trade in products [fn omitted]. On this basis, ‘use’ would not cover broadcasting.’’ See also for a critique of embodied protection in the USA: Burstein 2016. 23 ECJ, 238/87, ‘‘AB Volvo & Erik Veng’’, 5 October 1988, pt. 8, [emphasis added]; similarly in the case 53/87, ‘‘CICRA et al. v. Renault’’, 5 October 1988, pt. 11: ‘‘It should then be noted that the authority of a proprietor of a protective right in respect of an ornamental model to oppose the manufacture by third parties, for the purposes of sale on the internal market or export, of products incorporating the design or to prevent the import of such products manufactured without its consent in other Member States constitutes the substance of his exclusive right.’’. 24 ECJ, C-23/99, 26 September 2000, Commission c/France, ECLI:EU:C:2000:500, Sec. 42, emphasis added; see Passa (2011). 25 Reg. Art. 20.1(a); Dir. 13.1(a). 26 Reg. Art. 20.1(b); Dir. Art. 13.1(b). 27 Reg. Art. 20.1.c); Dir. Art. 13.1(c). 28 Reg. Art. 20.1(c) in fine; Dir. Art. 13.1 c) in fine. 29 Reg. Art. 20.2, Dir. Art. 13.2. 30 This exception in the Paris Convention concerns only patents, responding to the needs not to impede freedom of transport in the course of international trade (see Bodenhausen (1968), pp. 82–84). We shall not address this in detail in this paper, see however Mikalsen (2016). 31 Beier et al. (1991). 123 46 N. Kapyrina

It states: ‘‘the rights conferred by a Community design shall not extend to acts done exclusively for non-commercial purposes’’ (Art. 23). The initial version of the MPI proposal was more restrictive (‘‘acts done privately and for non-commercial purposes’’), drawing this limitation from Art. 27(a) of the Agreement related to the community patent (1989).32 Differently, the Green Paper’s draft proposal for a Regulation (DPReg) and a Directive (DPDir) from June 1991 granted registered rights only in relation to ‘‘a product’’ to which the design was applied (Art. 18 DPReg and Art. 9 DPDir).33 By way of exception, for unregistered rights, the Draft proposal for a Regulation granted protection from ‘‘copying the design for commercial purposes’’ (Art. 17 Prop. Reg.), thus including material and immaterial acts. On the limitations side (Art. 19 DPReg, Art. 10 DPDir), the Green Paper took the exception of the initial MPI proposal ‘‘(a) acts done privately and for non- commercial purposes’’, while adding more options: ‘‘(b) acts done for experimental purposes; (c) to reproducing the design for the purposes of teaching designs’’. The temporary presence exception was included in all drafts and proposals.

2.2 Analysis of the Framework

As one could see from the resulting legislation, preference was given to expressly enlarge the content of rights to immaterial forms of exploitation; to grant speciﬁc limitations for all acts done privately and for non-commercial purposes, as well as for acts done for the sake of experiments. Further, a speciﬁc limitation for acts of reproduction was introduced, again only for the purposes of teaching and citation, combined with additional restrictions (compatibility with fair-trade practices and no undue prejudice to the normal exploitation of design rights, mention of source). The idea that all exclusively non-commercial acts could be withdrawn from the protection was rejected: only those done in the private sphere are exempted, as well as those involved in experimentation. Further acts of reproduction are allowed for two purposes, teaching and citation, provided several conditions are upheld. Of particular interest is this new limitation for citation added by the legislators, as its origin cannot be traced in the preparatory documents. Several authors have noted that the ‘‘citation’’ limitation is worded slightly differently in national versions,34

32 Beier, Haertel, Levin and Kur (1991). 33 Green Paper on the Legal Protection of Industrial Design (1990); this Proposal was drawing on the first MPI proposal. See Gotzen (1992). The inclusion of ‘‘using a product’’ into the content of rights could, however, be interpreted as also granting rights on immaterial exploitation. 34 Kurz (2014), p. 6; Eichman, von Falckenstein and Ku¨hne (2015), para. 40, marginal number 5. 35 Illustro, avi, atus: illuminate, light up; give glory; embellish; make clear, elucidate; enlighten’’. (Latin- English dictionary, by W. Whitaker (2010)). In the German, English, Spanish and Italian, Czech, Danish, Croatian, Latvian, Maltese, Polish, Slovak, Slovene, Swedish versions ‘‘cito’’ is preferred (Zitierung, citation, cita, citazione, citacı´, citatøjemed, citiranja, cite¯sˇanas, citazzjonijiet,_ cytowania, citaćiı´, citiranja, citera). 36 Cito, avi, atus: ‘‘urge on, encourage; promote, excite; summon; set in motion; move; cite’’ (Latin- English dictionary, by W. Whitaker (2010)). In the Francophone and Dutch versions ‘‘illustro’’ is used (illustration, illustratie). 123 Limitations in the Field of Designs 47 stemming either from Latin ‘‘illustro’’, 35 or ‘‘cito’’, 36 whereas other options also exist.37 In addition, as a transposition variant, the French Intellectual Property Code (Code de la proprie´te´ intellectuelle, CPI) details the ‘‘mention of source’’ condition, so as to make mandatory the mention of ‘‘the registration and of the name of the right holder’’.38 Notwithstanding the selected ‘‘design’’ approach, it is peculiar to see how limitations are here mainly drafted in a ‘‘patent’’ or ‘‘copyright’’ style. Although the Regulation and the Directive draw considerably from EU trademark legislation, no trademark-type limitation appears. Indeed, the Green Paper on community designs explicitly refers to the necessary introduction of ‘‘certain limitations [that] are normal in patent law’’39: those are the ones encompassed in the Regulation in Art. 20.1(a), (b) and (c) (but for the quotation exception), and 20.2. On the other hand, the quotation exception in Art. 20.1(c) is often regarded as an exception stemming from the field of copyright.40 Dietrich Ohlgart explains this by the mandatory mention of the source, comparing it to a moral right of paternity.41 Indeed, compatibility with fair practices and mention of source and name of the author requirements are distinctive elements of Art. 10 Berne Convention, introducing ‘‘certain free uses of works’’ for the purposes of ‘‘quotations’’ and ‘‘illustration for teaching’’.42 However, the additional requirement in Art. 10.1 of Berne of an ‘‘extent [that] does not exceed that justified by the purpose’’ is replaced in the EU legislation by the criterion of Art. 9.2 of Berne, authorising exceptions to the right of reproduction inter alia when there is no conflict with the ‘‘normal exploitation of the work’’, also present in the respective TRIPS provision (cf. infra). Such a ‘‘copyright’’ approach was adopted by the German Federal Supreme Court in the ICE case, which refused to grant this limitation because the use by the defendant of the nationally registered design did not amount to a quotation in the sense elaborated in German copyright law.43 Hence, it is hardly noticeable that exceptions to design rights are tailor-made through a ‘‘design approach’’; on the contrary, they tend to draw only from copyright and patent frameworks. In addition, this joint examination of the content of rights and limitations, as well as their treatment in preparatory works show a certain tension in relation to possible immaterial forms of exploitation of a design

37 Further diversity is exempliﬁed by other versions, some translating this as ‘‘citation’’ (e.g. in the Finnish and Hungarian), some having a different meaning, such as ‘‘demonstration’’ in Bulgarian (ltvjycnhfwbjyyf), or ‘‘reference’’ in Portuguese (refereˆncia), or ‘‘bibliographical’’ in Romanian (bibliograﬁce). 38 Art. 513-6(c) CPI: ‘‘si ces actes mentionnent l’enregistrement et le nom du titulaire des droits’’. 39 Green Paper on the Legal Protection of Industrial Design (1990), para. 6.4.7.1, referring to Art. 27 of the Agreement Relating to Community Patents, Luxembourg 15 December 1989, 89/695/EEC, OJ L 401, 30/12/1989, pp. 1–27. 40 Ohlgart (1996), p. 143: it ‘‘seems to be rooted in copyright law’’. 41 In some legislations, however, the right to paternity exists as a mimicry of the patent law; see for example, the ‘‘pravo avtorstva’’ in Art. 1356 of the Russian Civil Code. 42 On this provision, see Ginsburg and Ricketson (2006), p. 783 et seq. 43 German Federal Supreme Court, decision from 7 April 2011, I ZR 56/09 – ICE, para. 46; 2011 GRUR p. 1117; Bardhele Pagenberg IP Report 2011 V, p. 28. 123 48 N. Kapyrina on which the exclusive right shall or shall not be exercised. A comparison with other legislations will show further possible approaches.

3 International and Comparative Aspects

Before going into a comparison of national provisions, the international framework should be addressed. As previously, the limitations will be confronted with the deﬁnition of the content of rights.

3.1 TRIPS Agreement

Article 26 of the TRIPS Agreement encompasses international minimum norms relating to design protection and limits thereof.44 Article 26.1 states the scope and content of rights granted to the owner of a design: ‘‘to prevent third parties from making, selling or importing articles bearing or embodying a design’’. This paragraph combines three forms of material exploitation with two limits: the infringing acts are those undertaken without the owner’s consent and for commercial purposes.45 According to Art. 1 para. 1 of the TRIPS Agreement, member states are free to provide additional protection to right holders. Further, Art. 26.2, TRIPS innovates in the field of international design law by introducing the possibility of optional limits to such protection. Member states may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties. This article should be read not only concerning limitations presented in this paper, but also other forms of limitations of rights, such as prior rights defences, spare- parts exemptions,46 or compulsory licencing, especially considering that the TRIPS Agreement does not say anything about the latter in the field of designs.47

44 Gervais (2012), paras. 2.329–2.349; Kur (1996). 45 Article 5quinquies of the Paris Convention requires ‘‘industrial designs’’ to ‘‘be protected in all countries of the Union’’. Unsurprisingly, no reference to the content of rights is to be found there, but the immateriality, with no reference to any products, should be underlined. 46 Kur (2008b). 47 Some negotiators brought such proposals: see Anell draft, MTN.GNG/NG11/W/76, 23 July 1990, Sec. 4 Art. 6.A.1, as well as the US proposal: MTN.GNG/NG11/W/70, 11 May 1990 [also in UNCTAD- ICTSD (2005), p. 328]; see also Existence, Scope and Form of Generally Internationally accepted and applied standards/norms for the protection of intellectual property, Addendum, MTN.GNG/NG11/W/24/ Add.1, pp. 7–8. 48 WTO Panel report, 17 March 2000, WT/DS114/R (Canada – Patent Protection for Pharmaceutical Products); WTO Panel report, June 15, 2000, WT/DS160/R (USA – Sec. 110(5) of the US Copyright Act); WTO Panel report, 15 March 2005, WT/DS174/R (EC – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs). 123 Limitations in the Field of Designs 49

This optional possibility of providing certain exceptions is drafted in the format of a three-step test with an additional accent on the ‘‘legitimate interests of third parties’’ (the same as in Art. 30 for patents). Whereas such tests for patents, copyrights and trademarks have received interpretations in WTO DSB panel reports,48 design issues have not yet been raised, and it is largely suggested that, notwithstanding differences in wordings, all three-step provisions should be interpreted in a same, ‘‘horizontal’’ way.49 As noticed previously, the interpretation of the criterion of ‘‘normal exploitation’’ is of particular interest for the EU provision on citation and teaching (Reg. Art. 20.1.(c)). For instance, the definition given by the panel in the Canada – Pharmaceutical Patents case of normal exploitation reads as follows: ‘‘[to] exclude all forms of exploitation that could detract significantly from the economic returns anticipated from a patent’s grant of market exclusivity’’.50 The market exclusivity in the case of an EU registered design extends to a wide range of material and immaterial acts with this design; however, it will be important to assess whether some acts are not relevant in terms of economic returns anticipated by the design holder. To sum up, the reading of Art. 26 TRIPS provides that non-commercial material acts are out of the scope of the design protection and additional exceptions may be imposed under specific conditions. EU legislation on the scope of protection is a typical example of TRIPS-plus provisions.

3.2 Previous International Discussions

It is worth noting that the question of appropriate content and limitations to design rights had been addressed in two previous international discussions. Indeed, a Study Group gathered under the joint auspices of UNESCO and the Paris Union in view of proposing further international developments after the Lisbon Conference in 1958 and before the upcoming revision of the Hague Agreement in 1960. Firstly, the minimum protection against the ‘‘unauthorized making of articles similar to the protected articles’’ is ‘‘unanimously’’ agreed as not including ‘‘the publication of the picture of a protected article in a newspaper’’.51 Secondly, the Study Group report states the freedom of each party to grant more protection, including the prohibition of ‘‘the unauthorized publication of the picture of a protected article in a book or newspaper; or its showing on television; or its ﬁlming or the sale or importation of infringing copies by another person than the copyist’’.52 Then, the BIRPI/WIPO Model Law for developing countries on industrial designs released in 1970 addresses the question of rights conferred and limitations.53 It provides a broad exception for acts not ‘‘done for industrial or

49 Kur (2011). 50 WT/DS114/R, Sec. 7.35, see on the interpretation of these ‘‘central’’ criteria and doctrinal debates: Kur (2011), pp. 229–232. 51 Bogsch (1959), p. 5. 52 Ibid.,p.6. 53 BIRPI/WIPO (1970), pp. 46–48. 54 Ibid., p. 47. 123 50 N. Kapyrina commercial purposes’’ (Art. 22.1), which excludes from the exclusive right acts for ‘‘strictly personal or exclusively scientiﬁc purposes’’.54 It further takes a peculiar stand on the right of manufacturing, as it is drafted as a right ‘‘to reproduce the design in the manufacture of a product’’ (Sec. 21.1(a)). Hence the option of an immaterial exploitation is directly applied to the product-making process. The commentary adds: ‘‘A reproduction will only be subjected to the exclusive right of the registered owner if it arises ‘in the manufacture of a product’: a mere sketch of an industrial design would not thus be precluded.’’55 Hence, in these international discussions, material forms of exploitation constituted the affordable international minimum; consequently, the reproduction of a design on a medium different from the article to which the design is applied does not enter into the scope of protection as with non-commercial uses of a product embodying a design. Back in the 1960s and 1970s, negotiators were, however, very aware on the potential extension of the content of rights on immaterial forms of exploitation, as a form of enhanced protection. The examples of immaterial uses to which they were referring (newspapers, books, TV), although still relevant, are today augmented through the multiple uses of the Internet.

3.3 Divergences on the Content of Rights in National Design Protections

As the TRIPS Agreement provided only a limited list of three acts that the owner may prevent, national legislations have variously expanded this list, with additional acts with products56 or with the means of producing such products,57 or introducing ancillary liability.58 We shall address the divergences pertaining to what has been highlighted previously – the material or immaterial forms of exploitation of a design. This question still tears national systems apart. Similar to what was described regarding the EU framework, the content of rights in Japan (Art. 23 of the 1959 Design Act), Switzerland (Art. 9 LDes 2001) and Russia (Art. 1358.1 Russian Civil Code) are drafted with reference to the immaterial object, the design or the appearance. In the USA, it is not quite clear; however, if we consider Sec. 35 U.S.C. 271.a that enumerates the acts infringing the rights of a patent holder, these are enumerated in relation to the ‘‘invention’’ and not a product or a process.59 As this Section also applies to design patents, those acts are hence to be related to ‘‘designs’’, not to the article of manufacture bearing the design, showing an immaterial approach to infringing acts. On the contrary, in Australia (Sec. 10 Design Act 2003), India (Sec. 22 Design Act 2000), New Zealand (Sec. 11.1 Designs Act 1953), Canada (Art. 11.1 L.R.C. (1985), ch. I-9), China (Art. 11 Patent

55 Ibid., p. 46. 56 See Art. 19 of the EU Regulation No. 6/2002. 57 Art. 38 of the Japanese Design Act 1959. 58 Art. 9.2 of the Swiss LDes 2001. 59 The infringing acts for the purposes of Sec. 35 U.S.C. 271.a are: making, using, offering to sell, or selling without authority. NB: 35 U.S.C. 171.b authorises the application of the provisions related to utility patents to design patents, except when otherwise provided. 123 Limitations in the Field of Designs 51

Law as amended up to 2008), the Andean Community (Sec. 129 of the Decision No. 486 on the common regime of industrial property, 2000), and Mexico (Art. 36 of the Ley de la Propiedad Industrial 1991, as amended, referring to Art. 25) rights are enumerated with regard to material acts with the articles to which the designs are applied. Strangely enough, a wording that breaks with the EU’s disembodied protection is found in Art. L. 513-4 of the French Intellectual Property Code (CPI) and Art. 3.6 of the Benelux Convention on Intellectual Property (BCPI)60 setting national design protections.61 For the sake of comparison, this is not the case in the legislations of the UK (Sec. IV Art. 7.1 CDPA), Italy (Art. 41 Codice della proprieta industriale), Germany (Art. 38 DesignG), or Spain (Art. 45 Ley 20/2003 de proteccioń jurı´dica del disenõ industrial) after the transposition of the EU Directive. However, the open-ended list of exemplifying acts includes in both cases the ‘‘use’’ (‘‘utilisation’’ in L. 513-4 CPI, ‘‘usage’’ in Art. 3.6.2 BCIP) of the product embodying the design. To what extent the picturing of such a product amounts to a use is not certain; however, in light of the Directive, it would obviously be interpreted so. Indeed the Paris Court of Appeal confirmed a judgment in which the picture of a protected design of an umbrella used in an advertisement for hair products was found to be infringing.62 The court of first instance found that Art. L. 513-4 CPI relates only to a ‘‘product’’; hence, its literal meaning may not be used by the claimant. However, interpreting a contrario the limitation authorising reproductions for the purpose of citation (Art. L. 513-6, as Dir. Art. 13.1.c)), it found the photography as infringing. The court of appeal confirmed the first finding and the outcome, albeit on a different basis: the photography was infringing as it showed a design not conferring a different overall impression. This limited account on national provisions regarding the content of rights shows that embodied and disembodied protection is still a point of divergence internationally. This divergence drives further divergence with respect to limitations.

3.4 Overview of Limitations in National Legislations

Many legislations follow the general approach, withdrawing ab initio from the exclusive right, acts not done for trade, business and industrial purposes. This is the case in Japan (Art. 23 Design Act 1959), Switzerland (Art. 9.1 Ldes),63 China (Art. 11.2 Patent Act amended up to 2008), Canada (Art. 11.1.a L.R.C. (1985), ch. I-9), and New Zealand (Art. 11.1 Design Act 1953). Where the scope of protection is not ab initio limited to commercial acts, such limitation is added ulteriorly, authorizing private and non-commercial uses (Art. 1359.1.4 Russian Civil Code), as in the EU.

60 Art. 3.16 Partie III de la Convention Benelux en matie`re de proprie´te´ intellectuelle (marques et dessins ou mode`les), in force since 1 October 2013. 61 NB: regarding the rights conferred to the owner of a community design, Art. L 515-1 of the French CPI refers directly to Art. 19 of Regulation No. 6/2002. 62 Paris Court of Appeal, poˆle 5, ch. 2, 27 November 2015, S.A.S. Piganiol c/S.A.S. Publicis Conseil et al., No. 13/21612, JurisData No. 2015-029315; Propr. Industr. No.2, fe´vr. 2016, comm. 13, P.Greffe. 63 Art. 9.1bis LDes states, however, that the owner can prohibit the importation, exportation and transit of industrially manufactured goods even for private purposes. 123 52 N. Kapyrina

Additional limitations are usually granted for experimental and research purposes (Art. 69.1 Japanese Design Act; Art. 1359.1.2 Russian Civil Code; Art. 69.4 Chinese Law on Patents), sometimes by direct reference to relevant provisions in patent laws. A peculiar limitation that appears in the French Public Health Code needs to be highlighted: it ensures that upon the expiration of a patent, the original producer of an oral pharmaceutical form may not enforce its IP rights on the ‘‘appearance and texture’’ of this oral drug against a generic manufacturer (Art. L5121-10-3 Code de la sante´ publique). Based on the idea of promoting treatment adherence, this limitation subjects the exercise of inter alia design rights to the patent’s validity. Speciﬁc teaching purpose does not appear in the selected set of countries; neither does the EU limitation for reproduction for the purpose of citation. However, in the countries providing for a disembodied protection, such as Switzerland and Japan, the non-commercial restriction is drafted in a wider fashion than in the EU, not only limiting it to acts done privately. Hence, whereas some general trends in limitations are visible, stemming either from the general limitation to commercial uses or from patent law provisions, no harmonised position is possibly identiﬁable among the jurisdictions under analysis.

4 Looking Around: Where Limitations Matter

The ‘‘commercial purpose’’ general exception and various specific limitations are intended to mediate excessive impediments to the freedoms of competition, expression, information, trade, art, science, movement, etc. The purpose of limitations is to dismantle ex ante in the legislation, conflicts that may arise between various interests all having justifications in the realm of the public interest. Needless to say, these freedoms carry a constitutional weight, as does the right to property, including to intellectual property.64 As a simple example, the limitation for temporary presence is introduced in order to facilitate international trade and permit the exercise of the freedom of movement.65 Possible conflicts may be exemplified by facts extracted from several cases that have reached EU courts. Those situations are very often similar to the ones where other IP rights are involved. In the EU specifically, the core questions seem to be whether all acts of reproduction of a design amount to an infringement, how should the existing limitations to the right of reproduction be interpreted and whether further acts could be authorised, based on various justifications. We shall first focus on cases where freedom of expression was at stake, then where competition issues arose, concluding with some theoretical elements adding to the debate.

64 From the relatively abundant literature, see e.g. Geiger (2006). 65 Mikalsen (2016); however, for an explanation of Art. 5ter of the Paris Convention through the principle of territoriality, see Raynard et al. (2016), p. 346. 66 Paris District Court, Ordonnance en re´fe´re´, March 25 2008, v. ‘‘Louis Vuitton attaque une campagne sur le Darfour’’, LeNouvelObs, 30 April 2008 (http://o.nouvelobs.com/high-tech/20080428.OBS1784/ louis-vuitton-attaque-une-campagne-sur-le-darfour.html); The Hague District Court, 4 May 2011, Nadia Plesner Joensen c/Louis Vuitton Malletier SA, IER 2011/39 (obs. W. Sakulin), reversing the decision of 123 Limitations in the Field of Designs 53

4.1 Cases Involving Freedom of Expression

An initial example was provided by a set of ex parte proceedings on similar facts held both in France (2008) and in the Netherlands (2011).66 In the Netherlands a decision of The Hague District Court dismissed the ex parte findings; in France the case was not taken further. An artist produced a work of art denouncing the lack of coverage of the Darfur crisis in the news compared to the coverage of fashionistas’ media activities. In brief, the work reproduced the two dimensional registered design applied to the fabric of a Louis Vuitton bag, carried by a naked underfed child. Not only was the protected design reproduced on a work of art, but it was also applied to T-shirts sold by the artist in a charitable campaign for Darfur. Unfortunately the French judge’s reasoning is not known, but she found an infringement of the design. Similar was the Dutch ex parte decision, but after The Hague District Court found during the main proceedings that the artist’s acts were not infringing on the basis of the freedom of artistic expression, appealing to the external norm of Art. 10 of the European Convention on Human Rights. A second case was decided by the Paris Court of Appeal in 2012,67 elaborating on the possibility to reproduce the 2D registered design of a publication’s first page by a satirical journal for the purposes of a pastiche. In the absence of a relevant exception, the court of first instance found an infringement, while equivalent claims on copyright and trademark were dismissed. The appellate court reversed this decision by applying more thoroughly the specific infringement test, that is, the comparison of overall impressions produced by the designs thus de facto authorising parody in the realm of designs.68 These cases, however, both successful in terms of providing room for artistic expression and parody (except for the French ex parte decision in the Plesner case) even in commercial circumstances, possibly show the lacunas of the design legislation in this field, but also the existence of internal and external mechanisms permitting a rebalancing of the situation through judicial interpretation.

4.2 Cases Involving Freedom of Trade and Competition-Related Issues

Examples of conﬂicts may also be drawn from a different set of cases. They have in common ‘‘referential’’ uses, possibly justiﬁed by the freedom of trade and competition. They include, inter alia, the possibility to reproduce a design to sell or promote one’s own products that have nothing to do with the registered design, except perhaps compatibility. These situations are well known in practice and

Footnote 66 continued 27 January 2011, Louis Vuitton Malletier SA c/Nadia Plesner Joensen), LJN:BP9616 KG RK 10-214; See Guibault (2011); Bently and Sherman (2014), p. 768; McCutcheon (2015). 67 Paris Court of Appeal, poˆle 5, ch. 2, 21 September 2012, SCPE c/SARL Jalons E´d. et SARL Cogenor; Mouron (2013); Dalloz 2013, 1924, obs. J.-Ch. Galloux. 68 For an assessment of the issue of parody in the field of copyright, see Geiger et al. (2015). 69 Kur (2011), p. 612, referring to the BMW/Bloc case decided by the Dutch Supreme Court, 2 February, 1998. 70 German Federal Supreme Court decision of 7 April 2011, I ZR 56/09 – ICE. 123 54 N. Kapyrina scholarship, as other IPRs face them,69 making a strong case for a unified, at least likeminded and cooperative setting of limitations for various IPRs. We already mentioned the ICE case pertaining to a German design right, where the reproduction of a national registered design in an advertisement for the defendant’s services was considered infringing.70 In the French umbrella case, decided by the Paris Court of Appeal,71 the unauthorised use in an advertising of a registered design was found infringing, but the court did not expand on the interpretation of the limitation authorising such reproductions for the purpose of illustration or citation. Other types of cases recently highlighted through a preliminary decision by the ECJ72 may be identified as they illustrate referential uses where the products sold by third parties are related to the products bearing or embodying the protected design. In such cases, the reproduction of a protected design was used in order to advertise a third party’s own accessories or spare parts to the initial product. In a case involving diaper pails, the Denmark Eastern High Court confirmed the ruling of the Maritime & Commercial Court, which found the contested use of the protected appearance of a pail infringing and not subject to the limitation authorising a citation.73 On a different set of facts, in two decisions the Du¨sseldorf District Court also confirmed that the reproduction of a protected design falls within the scope of protection, but reached a different conclusion with regards to the limitation provided in Art. 20.1(c) of the Regulation. It decided firstly that the limitation for the purpose of citation permitted the reproduction on the defendant’s website of the registered design of a joystick for the Wii console for the purpose of selling accessories to it together with the mention ‘‘for Wii’’ which indicated the source.74 Secondly, in a separate decision it likewise decided that the reproduction of the registered design of a Balance Board on the defendant’s packaging for selling its own accessories is possible under this limitation.75 These joined cases gave rise to an appeal and a preliminary referral addressed by the Du¨sseldorf Court of Appeal to the ECJ.76 Among other important issues, the Court was asked to rule on the interpretation of Art. 20.1(c) Reg. and to elaborate on the applicable criteria in a situation where a third party wishes to depict a Community design for commercial purposes if it intends to sell accessory items for the right holder’s goods corresponding to the Community design. Following the affirmative conclusions of Attorney General Yves Bot, the Court gave

71 Paris Court of Appeal, poˆle 5, ch. 2, 27 November 2015, S.A.S. Piganiol c/S.A.S. Publicis Conseil et al. 72 ECJ, 27 September 2017, joint cases C-24/16 and C-25/16, Nintendo Co. Ltd/BigBen Interactive GmbH, Big Ben Interactive SA, paras 68–86. For the headnotes to this decision, see this issue of IIC at doi:10.1007/s40319-017-0659-x. 73 Eastern High Court, 29 January 2016, Sangenic International Limited v. Lamico ApS, B-214515; confirming the decision of the Danish Maritime and Commercial Court, 10 September 2015, A-11-15. See Valentin (2015). The author is grateful to Mr. A. Valentin for sharing this information. 74 Du¨sseldorf District Court, 26 September 2013, 14c O 143/11 U, paras. 180–197. 75 Du¨sseldorf District Court, 26 September 2013, 14c O 251/10 U, paras. 191–207; see C. Kurz, op. cit. 76 ECJ, 27 September 2017, joint cases C-24/16 and C-25/16, Nintendo Co. Ltd v. BigBen Interactive GmbH, Big Ben Interactive SA, paras. 68–86; the question was lodged on 18 January 2016. 77 See ECJ, Grand Chamber, 4 October 2011, joined cases C-403/08 and C-429/08, Football Association Premier League et a. v. QC Leisure et a. and Karen Murphy v. Media Protection Services Ltd, paras. 123 Limitations in the Field of Designs 55 detailed insights into the applicability of this limitation, the notion of ‘‘citation’’ or ‘‘illustration’’and the interpretation of the three cumulative conditions incorporated in Art. 20.1(c) Reg. First, the Court adopted its established approach in copyright case law seeking to balance a strict interpretation of the limitation with the need not to undermine its effectiveness and to take into account its purpose (para. 74).77 The Court observed that this limitation extends to acts of reproduction accomplished in the course of a commercial activity (para. 75) and gave an autonomous and broad definition of the concept of ‘‘citation’’ for the purposes of design law. It refers hence to ‘‘the explanations or commentary of the person intending to rely on that limitation’’ (para. 76): no additional external purpose is required; no specific relationship between the cited and the citing objects is fixed. Applying this definition, the Court held that it is in particular the case when ‘‘a third party that lawfully sells goods intended to be used with specific goods corresponding to Community designs and reproduces the latter in order to explain or demonstrate the joint use of the goods it sells and a product corresponding to a protected design’’ (para. 77). The Court gives further guidance on the cumulative conditions incorporated in Art. 20.1(c) of the Regulation which should be assessed by national courts. Regarding the compatibility with fair trade practices, it draws an analogy with trademark legislation and case law, to provide that it constitutes ‘‘the expression of a duty to act fairly in relation to the legitimate interests of the design owner’’ (para. 79).78 Hence, this condition may refer to a false impression of a commercial connection between the third party and the right holder, reliance on this limitation while infringing design rights, or taking unfair advantage of the holder’s commercial repute (para. 80). The second condition, which requires looking at whether the acts do not unduly prejudice the normal exploitation of the design, points to the negative effect on the economic interests that the right holder may derive from the normal exploitation of his designs (para. 82). The third condition, requiring the mention of source, should be read as the enablement of ‘‘a reasonably well-informed and reasonably observant and circumspect consumer easily to identify the commercial origin of the product corresponding to the Community design’’ (para. 83). This decision hence brings a new autonomous concept into EU IP law, while adopting a copyright technique for interpreting limitations and finding additional inspiration in trademark law. It endorses freedom of competition and, respecting the legislator’s choice, maintains a wide margin of appreciation to the benefit of national courts. Generally this account shows that conflicts appearing in the field of designs are all quite similar to those appearing in the field of copyright or trademark. Unless there is a specific justification in the legislation for granting a stronger or a weaker right to the design’s owner, as compared to the owners of other IPRs, the similarity of conflicts backs up design right limitations to be inspired from other IPRs.

Footnote 77 continued 162–163; ECJ, 1 December 2011, C-145/10, Painer, paras. 109 and 133; ECJ, Grand Chamber, 3 September 2014, C-201/13, Johan Deckmyn, Vrijheidsfonds VZW, Helena Vandersteen et al., paras. 22–23. 78 Referring to ECJ, 17 March 2005, Gillette Company and Gillette Group Finland, C-228/03. 79 Kur (1993), p. 377. 123 56 N. Kapyrina

4.3 Theoretical Conﬂicts

Coming back to the preparatory work to the EU legislation, the basic assumption of the ‘‘design-approach’’ revolves around a normative focus on ‘‘the communication relationship established between the design and the public’’.79 Whereas it appears that overall this communication channel should be protected, conveying information through the design is not to be mistaken with conveying information about the product embodying it. A design clearly has a communication function,80 as it transports information about its maker, be it the designer or the manufacturer, as well as conveying information about consumers’ preferences on the shape, use, symbolism of a product. The sum is quite important in economic terms and hence attracts design protection.81 However, this protection should not interfere with the information borne on the product itself. Further, it seems reasonable to avoid as much as possible that the communication channel established between the design and its public pre-empts the communication channel established between the product and its public. As both channels usually overlap, one solution could be to reduce exclusivity on the former channel by adopting clearer exceptions on the reproduction acts necessary to convey information about the product. This would correspond to the distinction established by Pierre Catala who distinguished information as an appropriable good on the one hand, and communication of such information on the other hand as being something different because of the interplay of more interests requiring a more balanced approach.82 Further insights may be drawn from design theory as such.83 Of course, it is currently undergoing an epistemological renaissance and any doctrinal stance should be manipulated with care.84 However, the increasing focus on environmental and social design is very well perceivable as a detachment from the formerly predominant market-driven and consumption-driven paradigms. Although it is arguably not the purpose of design legislation to respond to such crescent needs, it may, however, be used and interpreted in a manner to forward such goals. Indeed, rarefied accessories improving users’ experience, including those addressing special needs, as well as pricey spare parts, making it cheaper to buy a new product, are hardly deemed to pursue such ecological or social objectives. It is a normative approach, of course, but it also echoes somehow current scholarship in IP and well-being,85 where authors define various markers of well-being in search of new rationales for IP regimes. As a final remark, we may highlight the inclusion of the objective of sustainable development,

80 Bu¨rdek (2005), p. 293 et seq. 81 Albeit with the exclusion of visual features of a product that are solely dictated by its technical function. 82 Catala (1983), passim. 83 See Bu¨rdek (2005); Hara (2011); Vial (2015). 84 For instance, on possible deﬁnitions of a design, see Raahauge (2015). 85 Derclaye and Taylor (2015a, b). 86 Directive 2009/125/EC of the European Parliament and of the Council of 21 October 2009 establishing a framework for the setting of eco-design requirements for energy-related products, OJEU 31.10.2009, L 285/10. 123 Limitations in the Field of Designs 57 protection and preservation of the environment in the Preamble of the Marrakesh Agreement establishing the World Trade Organization. Sustainable development is also a policy objective for the EU (Art. 3.3 of the Treaty on the European Union and other instruments).86 This ensemble of various norms, policy orientations or doctrinal views may help identify ways of adapting design legislation to new social challenges.

5 Looking Forward: Reviewing the Options

In this ﬁnal part, we will review whether the existing framework is generally satisfactory for the assigned purposes, or whether providing additional limitations would be better. Before assessing possible changes to the EU legislation, it is of utmost importance to underline the existence of mechanisms in the current framework.

5.1 Maintaining the Status Quo

Relying on the existing framework may be one of the possible options for further developments. Indeed, as we have seen in the satirical newspaper case, the infringement test acts as a ‘‘gatekeeper’’87 – all design reproductions that do not confer to the informed user a different overall impression are possible. Hence, as Lionel Bently and Brad Sherman put it, acknowledging the uncertainty of such a conclusion, ‘‘the reproduction of the image of a three-dimensional design in a book or newspaper will probably not infringe because the latter would create a different overall impression on the informed user of the book’’.88 The French umbrella case shows that such a reproduction may be interpreted in either way, depending on the circumstances. The reference to external limits, such as in Art. 10 of the European Convention on Human Rights, to competition law is also possible. These options do not, however, create adequate security across the scope of permitted acts.89 Short duration and renewal procedures with progressively rising fees, the principle of exhaustion,90 the speciﬁc criteria of visibility for parts of complex products and the exclusion of must-match features may all be relied upon to establish the right balance between the existence of an exclusive right and free uses considered as fair. Indeed a strong and broad protection was a deliberate choice on the part of the legislator. After all, it is possible to rely on licensing schemes in order to acquire authorisations from the rightholder to use her designs in any agreed

87 Referring to the distinctive character of a trademark as a gatekeeper within the trademark legislation, Senftleben (2015), p. 359. 88 Bently and Sherman (2014), p. 761. 89 For a critique of the distinctivity test as internal gatekeeper in trademarks, see Senftleben (2015), pp. 372–373. 90 After Dior/Evora, where the ECJ applied the exhaustion principle to the copyright reproduction right, in order to be consistent with such limit applied to a trademark right in the same case, it would be rather peculiar if such reproduction rights in the ﬁeld of designs would not also be subject to exhaustion (ECJ, C-337/95, 4 November 1997, Dior/Evora, Rec. CJCE I, p. 6034). See Kur (2001), p. 610. 91 Klawitter (2012); and Kurz (2014). 123 58 N. Kapyrina manner. However, exceptions and limitations as they exist in the Directive and the Regulation were also a deliberate choice of the legislator, including the limitation for the purpose of citation. The recent autonomous interpretation of that limitation has been quite momentous.91

5.2 Bringing Changes

Besides the autonomous interpretation of the limitation for the purpose of teaching and citation, it would be possible to consider the following changes, taking the opportunity of a future design law reform.92 First, coming back to the Max Planck proposal, it could be possible to erase the term ‘‘for private’’ in the first limitation (Reg. Art. 19.1(a)). Hence, all non- commercial acts would be permitted, not only those that are experimental or private. That would have a minor impact on the facts mentioned above; however, it would be helpful for the purposes of artistic expression, parody, charity or for educational purposes outside of the strict act of two-dimensional reproduction. Second, a limitation on the reproduction right for the purpose of reference use, similar to the one encompassed in Art. 12.1(c) of the Trade Mark Regulation93 would align both community rights with respect to third parties wishing to produce and advertise accessories to products bearing a protected design.94 This change would double the possible autonomous interpretation of the citation limitation, especially in Portugal where, as we have previously noted, ‘‘reference’’ is the word which is used instead of ‘‘citation’’ or ‘‘illustration’’. The trademark exception is broader, as it only needs to be compatible with honest practices (Art. 12.1(c) and 12.2). Of course, the mention of the source is as such encompassed in the trademark itself, because of the function of origin, which the design does not follow. However, rather than referring to its producer, such referential reproduction of a protected design refers to the product itself with which the customer is supposed to be familiar. Such an additional limitation would add to the ‘‘patent’’- and ‘‘copyright’’- like list of limitations a trademark flavour. These are only two limited proposals, not taking into account other possible limits.95 In further conflict situations, where circumstances warrant, the invocation

92 See the Legal Review on Industrial Design Protection in Europe (2016). Exceptions and limitations to design rights are not a key priority as identiﬁed by this review. 93 Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ L 078 24.3.2009, p. 1), amended by the Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, OJ L 341, 24.12.2015, p. 21. Art. 12.1.c) reads as follows: ‘‘An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade […]: the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts’’. 94 Such change was proposed in 2011 in ‘‘IP in Transition – Proposals for Amendment of TRIPS’’. Amendments to Art. 26.2 would include a limitation to acts of reproduction ‘‘in order to provide information in connection with sales of goods or services that are legitimately commercialised on the market concerned’’. See Kur and Levin 2011. 95 For a detailed exploration with a speciﬁc focus on spare parts see Firth 2009. 96 Stone (2016). 123 Limitations in the Field of Designs 59 of the freedom of expression from the ECHR or the EU Charter of Fundamental Rights would be a solution. Any changes to the scope of protection should be envisaged with particular attention, as there is growing concern among rightholders in the EU following several decisions of a community design court where infringement was not established.96 Although it is an important EU policy concern, as it has its roots in competition issues very similar to the debates about spare-parts liberalisation, it would also be important to bear in mind that the EU legislative process is particularly costly and cumbersome. Nevertheless, full emancipation of design rights from other IP rights will only be achieved if they are accepted by both the users of the system as well as third parties.

6 Conclusion

This analysis of limitations in the field of sui generis design protection has shown the variety of national approaches under a very flexible international regime. Whereas a certain number of questions are answered in a common fashion, the main difference between the examined legislations is the delimitation between the scope of protection and its limits regarding the question of the two-dimensional reproduction of three-dimensional designs. This question is, however, quite old, as shown by the scholarship and by the history of international attempts to elaborate an international framework for the protection of designs. Concerning the protection provided by the EU framework, its disembodied features have a great potential to fulfil the needs of rightholders. However, it is also necessary to follow Recital 7 of the Regulation, which calls for this protection ‘‘not only [to] promote the contribution of individual designers […], but also [to] encourage innovation and development of new products]’’ [emphasis added].97 In general, a more coherent and compatible approach to limitations between different IPRs is desirable, especially in the context of a common market and with such a propensity for cumulative uses of various IPRs for the same goods. Hence, design’s ‘‘friends’’, i.e. copyright, patent and trademark law, may have a positive influence on it, as long as they are all treated in a balanced way.

References

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Gotzen F (ed) (1992) The Green Paper on the legal protection of industrial design. Story-Scentia, Kluwer, Brussels Hara K (2011) Designing design. Lars Mu¨ller Publishers, Baden Kur A, Levin M (eds) (2011) Intellectual property in a fair world trade system—proposals for reform of TRIPS. Edward Elgar, Cheltenham Levin M (1984) Formskydd. LiberFo¨rlag, Stockholm Raynard J, Py E, Tre´ﬁgny P (2016) Droit de la proprie´te´ industrielle. LexisNexis, Paris UNCTAD-ICTSD (2005) Resource book on TRIPS and development. Cambridge University Press, New York Vial S (2015) Le design. Presses universitaires de France, Que sais-je? Paris

Book Chapters

Bisson G (2015) The Hague system today and tomorrow. In: De Werra J (ed) Design law. Schulthess, Gene`ve, pp 18–39 Firth A (2009) Repairs, interconnections, and consumer welfare in the ﬁeld of design. In: Heath C, Kamperman Sanders A (eds) Spares, repairs and intellectual property rights. Kluwer Law International, Alphen aan den Rijn, pp 147–180 Gurry F (2016) Developments in the international intellectual property system. In: Geiger C (ed) The intellectual property system in a time of change: European and international perspectives. LexisNexis, CEIPI no 64, Paris, pp 57–65 Kur A (1996) TRIPS and design protection. In: Beier FR, Schricker G (eds) From Gatt to TRIPS—the Agreement on Trade-Related Aspects of Intellectual Property Rights, IIC Studies no 18. VCH, Weinheim, pp 141–159 Kur A (2001) Exceptions to protection where copyright and trademarks overlap. In: Ginsburg J, Besek M (eds) Adjuncts and alternatives to copyright. ALAI-USA, New York, pp 594 et seq Kur A (2008a) Cumulation of intellectual property rights pertaining to product shapes. In: Ghidini G, Genovesi LM (eds) Intellectual property and market power: ATRIP papers 2006–2007. Eudeba, Buenos Aires, pp 613–632 Kur A (2008b) Limiting IP protection for competition policy reasons—a case study based on the EU spare-parts-design discussion. In: Drexl J (ed) Research handbook on intellectual property & competition law. Edward Elgar, Cheltenham, pp 313–345 Kur A (2011) Limitations and exceptions under the three-step test—how much room to walk the middle ground. In: Kur A, Levin M (eds) Intellectual property rights in a fair world system, proposals for a reform of TRIPS. Edward Elgar, Cheltenham, pp 208–261 Ohlgart D (1996) Commentary. In: Franzosi M (ed) European design protection: commentary to directive and regulation proposals. Kluwer Law International, Alphen aan den Rijn, pp 142–145 Senftleben M (2011) Overprotection and protection overlaps in intellectual property law—the need for horizontal fair use defences. In: Kur A, Mizaras V (eds) The structure of intellectual property law: can one size ﬁt all?. Edward Elgar, Cheltenham, pp 136–181 Senftleben M (2015) Free signs and free use: how to offer room for freedom of expression within the trademark system. In: Geiger C (ed) Research handbook on human rights and intellectual property. Edward Elgar, Northampton, p 354 et seq Suthersanen U (2004) Harmonising design law in a free trade area: jurisprudential lessons from the E.U. and the U.S. In: Antons C, Blakeney M, Heath C (eds) Intellectual property harmonisation within ASEAN and APEC. Kluwer, Aalphen an den Rijn, pp 57–91

Case-law

District Court of the Hague, May 4, 2011, Nadia Plesner Joensen/Louis Vuitton Malletier SA, IER 2011/39 (obs. Sakulin W) District Court Du¨sseldorf, 26.09.2013, 14c O 143/11 U District Court Du¨sseldorf, 26.09.2013, 14c O 251/10 U Eastern High Court (Demark), Jan. 29, 2016, Sangenic International Limited v. Lamico ApS, B-214515

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ECJ, 238/87, AB Volvo & Erik Veng, 5 Oct. 1988 ECJ, 53/87, CICRA et al. v. Renault, 5 Oct. 1988 ECJ, C-23/99, Commission c/France, 26 Sept. 2000 ECJ, C–228/03, Gillette Company and Gillette Group Finland, 17 March 2005 ECJ, Grand Chamber, joined cases C-403/08 and C-429/08, Football Association Premier League et a. v. QC Leisure et a. and Karen Murphy v. Media Protection Services Ltd, 4 Oct. 2011 ECJ, C–145/10, Painer, 1 Dec. 2011 ECJ, Grand Chamber, C-201/13, Johan Deckmyn, Vrijheidsfonds VZW, Helena Vandersteen et a., 3 Sept. 2014 ECJ Opinion of the Advocate General, joined cases C-24/16 and C-25/16, Nintendo Co. Ltd/BigBen Interactive GmbH, Big Ben Interactive SA, 1 March 2017 ECJ, joined cases C-24/16 and C-25/16, Nintendo Co. Ltd/BigBen Interactive GmbH, Big Ben Interactive SA, 27 Sept. 2017 German Supreme Court, April 7, 2011—I ZR 56/09—ICE, GRUR 2011, 1117; Bardhele Pagenberg IP Report 2011 V, 28 Paris Court of Appeal, poˆle 5, ch. 2, 27 Nov. 2015, S.A.S. Piganiol c/S.A.S. Publicis Conseil et al., no 13/21612, JurisData no 2015-029315; Propr. Industr. no 2, fe´vr. 2016, comm. 13, Greffe P Paris Court of Appeal, poˆle 5, ch. 2, Sept. 21, 2012, SCPE/SARL Jalons E´d. et SARL Cogenor. D. 2013, 1924, obs. Galloux JC Paris District Court, Ordonnance en re´fe´re´, March 25 2008 WTO Panel report, March 17, 2000, WT/DS114/R (Canada—Patent Protection for Pharmaceutical Products) WTO Panel report, June 15, 2000, WT/DS160/R (USA—Section 110(5) of the US Copyright Act) WTO Panel report, March 15, 2005, WT/DS174/R (EC—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs)

Other

BIRPI/WIPO (1970) Model Law for Developing Countries on Industrial Designs. Geneva Europe Economics (2015) The economic review of industrial design in Europe—ﬁnal report, MARKT/ 2013/064//D2/ST/OP 2016 Hague Yearly Review, International Registration of Industrial Designs, WIPO/PUB/930/2016, Economics and Statistics Series, WIPO, Geneva, 2017 Green Paper on the Legal Protection of Industrial Design (1990) Working document of the services of the Commission. III/F/5131/91-EN, June 1990 Legal Review on Industrial Design Protection in Europe (2016) MARKT2014/083/D. Publications Ofﬁce of the European Union, Luxembourg

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