IIC (2018) 49:41–62 https://doi.org/10.1007/s40319-017-0660-4 ARTICLE Limitations in the Field of Designs 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.