Fabrics - no Design Copyright in India

Our friends at K&S report the appeal judgment in Microfibres v. Giridhar & Co (taken together with two others: Mattel Inc & Ors v. Jayant Agarwala & Ors and Dart Industries v. Techno Plast & Ors). The plaintiff had not registered their fabric design, and now sought to enforce artistic copyright in the painting on which it was based.
The defence was that, once the artistic work had been industrially applied by 50 articles having been made, copyright could not be used to prevent competitors from doing likewise, under Section 15(2) of the Copyright Act, 1957 (a provision having counterparts in many other countries which share a common copyright ancestry with the UK) which
is in the following terms:

Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

The Court upheld the defendants. Indian public policy was to protect industrially exploited articles by design registration, or not at all. In this case, in fact, the plaintiff had indeed registered the designs in the UK (possibly as GB 0602285 or GB 0600566) - but not in India.
Along the way, the Court considered arguments that the intention in creating the copyright work was relevant, or that the artistic quality was relevant, and rejected both - quite correctly, we think.
There was, however, an interesting argument in the judgment for IP practitioners. Greybeards will remember Catnic v Hill & Smith [1978] FSR 405, [1982] RPC 183 - one of Catnic's interminable lintel battles. In that judgment, Whitford J held that on applying for a patent, one effectively elected to waive copyright in the corresponding drawings. According to Whitford:

"In my view, by applying for a patent and accepting the statutory obligation to describe and if necessary illustrate embodiments of its invention, a patentee necessarily makes an election accepting that, in return for a potential monopoly, upon publication, the material disclosed by him and the specification must be deemed to be open to be used by the public, subject only to such monopoly rights as he may acquire on his application for the patent and during the period for which his monopoly remains in force, whatever be the reason for the monopoly rights.

That decision certainly had a chequered history. Whitford J. cited himself with approval in Rose Plastics GmbH v. William Beckett & Co. (Plastics) Limited and Another [1989] 1 F.S.R. 113, but no other UK judge did so, and the decision was not followed in Ireland (House of Spring Gardens Limited and Others v. Point Blank Limited and Others [1985] F.S.R. 327), New Zealand (Wham-O Manufacturing Co. v. Lincoln Industries [1982] R.P.C. 281), Australia (Ogden Industries Pty. Ltd. v. Kis (Australia) Ltd [1983] F.S.R. 616) or Hong Kong (Interlego AG v. Tyco Industries Inc. and Others [1987] F.S.R. 409 CA). On the other hand, it was apparently followed in Canada (see Gordon J. Zimmerman), and statutory provision was made in New Zealand to enshrine it in the Copyright Act. It was pointedly distinguished in a later UK design case, Gardex v Sorata [1986] RPC 623, and it is now widely thought to be bad law here. It is therefore strange and sad to see it cited as authority for the proposition that you can't have your design cake and still eat copyright, and a shame that the Court did not take the chance to rule the argument out in India.

Community Designs - consultation on "innocence"

You infringe a design, by selling product you bought from someone else, without knowledge that the design was protected. Should you pay?
That was the issue in J Choo (Jersey) Ltd v Towerstone Limited and Others [2008] EWHC 346(Ch), concerning counterfeit handbags. There is an "innocence" defence in the UK for most forms of IP infringement (copyright, registered and unregistered UK designs and patents), exempting the infringer from damages (though not other remedies) where he did not know and had no reasonable grounds to suppose that the rights existed, but the Court found none for Community designs. The IPO are consulting as to whether to add such a defence for Community designs, and a response is due by the end of September.
Obviously, it makes matters easier if like measures have like remedies. In the case of a Registered Community Design, where there is no mental element, I tend to think that there should be the same "innocence" defence as for other UK rights.
However, for an unregistered Community Design, where copying must have taken place, I don't see why there should be any innocence defence: someone, somewhere, was far from innocent, and caused damage to the proprietor. If the seller was innocent, they can contractually recoup from their supplier and so back the chain to the infringer. The life of the right is so short, at three years, that by the time an infringer has been found and put on notice, much of the life of the design has evaporated. Thus, I can see arguments against in the case of UCD.

US Designs - Validity post-Egyptian Goddess

This rather conventional-seeming tractor tyre (sorry, "tire") was the subject of U.S. Design Patent No. 360,862, on which the proprietor attempted to get a preliminary (aka interlocutory aka interim) injunction in Titan Tire Corp. v. Case New Holland, Inc., No. 08-1078 (Fed. Cir. June 3, 3009), link here. They failed both at first instance and on appeal. To get an interlocutory injunction in the US requires a likelihood of success on the merits, and where the defendant has shown some reasonably persuasive prior art (which can't have been hard in this case) the plaintiff has to demonstrate that they will likely overcome it at trial - quite a high burden of proof.

The Federal Circuit reviewed their previous practice on assessing designs against prior art, which had required identification of a "primary" reference which could then be modified by a "secondary" reference to reach the design (Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)).

They commented that this tended to focus attention on the differences from the art, rather than the design as a whole, and that this was inconsistent with the analysis for infringement purposes post-Egyptian Goddess where the similar "point of novelty" test has been rejected (Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 670-71 (Fed. Cir. 2008) (en banc). However, they heold that "it is not clear to what extent, if any, the doctrine applicable to obviousness should be modified to conform".

They also commented on the application of the KSR patent approach to obviousness (KSR International Co. v. Teleflex, Inc 550 U.S. 398 (2007)); this was “new and untested ground” and it was "not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR".

It is a shame that the Federal Circuit were unable or unwilling to give a clear ruling on applying the same "overall impression" test for both validity and infringement (as in the EU). Designs are fundamentally different to inventions, and there is no real logic to applying patent law such as KSR unmodified to take account of this. Whilst making the right kind of noises, this case leaves design invalidity in a state of flux.