Auto news from Belgium

We are grateful, as always, to play Boswell to Intellectual Property's own Dr Johnson, Peter Groves, for steering us to NautaDutilh's report of their success in enforcing copyright in Belgium in respect of car spare parts.  If anyone has more details of the case, please post a comment - sounds interesting.
Another reminder of the curious state of affairs by which the EU Design Directive requires European States to provide copyright protection for designs, without harmonising such copyright protection either with that of other States or with design law.  The result is that parts which could not be protected by copyright in the UK, or by Community design right in Belgium, can nonetheless obtain copyright, for perhaps as long as 70 years after the death of the "artist" (whoever that might be in this case).
On the general theme of copyright, it surely cannot be long now before the UK Supreme Court hands down its decision in the Lucasfilm v Ainsworth Star Wars case.  Watch this space - we will keep you posted.
Finally, since we are plugging NautaDutilh, our congratulations to Professor Charles Gielen for his elevation to Officer of the Orange Order.  We don't know whether orange trousers are part of the regalia - if so, perhaps best to avoid the footie!  Amongst Charles' many services to the industry is his editorship (together with Verena von Bomhard) of the long-awaited, and now hot-off-the-press, text Concise European Trademark and Design Law - recommended for your design law bookshelf.

Will Brazilians shave back automaker IP rights?

The longrunning war between automakers and independent spare parts suppliers has spilt over into Brazil - and with such a major carmaking sector, the surprise is only that it took so long to do so.
We are grateful to Greg Aharonian's incendiary but addictive PATNEWS for a link to the December 2010 Business Week article reporting the investigation by the Brazilian antitrust agency, CADE (the Conselho Administrativo de Defesa Econômica), into Ford, Fiat and Volkswagen.
FICPI's 2008 Report on the protection of spare parts (ExCo Florence, Italy, EXCO/IT08/CET/1202, Sep 2008) indicates that a competition agency called SDE issued a pro-automaker decision on March 3, 2008. Labrunie & Columbo comment on that decision towards the end of a thoughtful article here. Is the CADE case an appeal from the SDE decision? Can a reader enlighten us?
In the meantime, anyone with a long memory might recall that the UK Monopolies & Mergers Commission (now the Competition Commission) reported on Ford, finding their conduct in not licensing their spare part IPR to be anticompetitive, as Monopolies and Mergers Commission Report on the Policy and Practice of the Ford Motor Company Limited of not granting licences to manufacture or sell in the UK certain replacement body parts for Ford vehicles, February 1985, Cmnd. 9437. The Competition Commission have published it on their website, should any browsing Brazilian regulators wish to check it out.

Stateside Spares Bill

A bill is before the House which would introduce a "Repair Clause" into US Design Patent Law.  H.R. 3059 (and S. 1368), the Access to Repair Parts Act, would add a new section 271(j) to 35 USC as follows:

‘(j) It shall not be an act of infringement of any design patent to make, use, offer to sell, or sell within the United States or import into the United States any article of manufacture that itself constitutes a component part of another article of manufacture, if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance.’

It will not have escaped the notice of keen readers that this closely follows the language of the EU's CDR Art 110:

"protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) [i.e. otherwise infringing uses] for the purpose of the repair of that complex product so as to restore its original appearance."

with the difference, however, that the US proposal bites not only on designs of spares, but on all designs.  It appears to be pretty much the same as H.R. 5638, for reasons I am too ignorant of US procedure to understand.

As always, we appreciate the meticulous background on Prof. Dennis Crouch's Patently-O blog, here and here.  Dennis points out a startling rise in car spare registrations since 2000.  Although many of these are foreign-owned, it is likely to have been the successful 2007 Ford ITC action against imported spares (which settled on appeal with a royalty-bearing licence) which motivated this US move.  The "Quality Parts Coalition"'s timeline giving some historical background is here.  (As one of my former colleagues used to say, there are two types of "quality" ...).

We suspect that the third-party spares suppliers are fighting a more uphill battle in the US than in the EU (and even there, they only half-won).  Perry Saidman comes out swinging here, concluding that the purpose of the Bill is merely "to give knock off companies a free ride on the coattails of legitimate designers."  Some of the other testimony is also worth reading.

Europeans will await the outcome with interest, and a certain sense of deja vu.

Germany joins Geneva Act

Germany has signed up to the Geneva Act of the Hague Agreement, which will take effect on February 13th. It is hard to see what benefits this will bring German applicants, as Germany has since 1928 been a member of all previous versions of Hague, and has (via OHIM) been effectively a party to the Hague Act since January 1st 2008. However, for members of Geneva Act-only countries, it will open the "national route" to cover in Germany if that is preferred to going through the OHIM route. One reason for going the national route might be to get improved protection for spare parts since Germany has not adopted a "repair clause" under its national design law equivalent to the EU Community Design provisions of CDR Art 110.

Another brick in the wall?

Alicante News reports an invalidation case (ICD 5353 on the validity of RCD 150917-0004) which is interesting from two angles. Firstly, it considers whether a brick is a "component part" in the sense of the Regulation and concludes, quite rightly I think, that it is not because it cannot be assembled and disassembled - it is stuck in place by mortar. The consequence is that the design is not automatically invalid under CDR Article 4 because not visible in normal use.
That may come as a surprise to some, possibly including the French courts which have held the contrary in at least one case on building products, but is in accordance with the view that this is an anti-spare-parts provision rather than a principle of substantive design law.
Secondly, and more contentiously for me, it concludes that a disclosure by availability on the file of a German Utility Model is one which could "reasonably have become known in the normal course of business to the circles specialised in the sector concerned". I personally have no problem with the view that published patents and designs would come to the attention of the circles concerned - if they don't pay attention to IP, they certainly ought to so so. But I don't think it is normal commercial practice to watch the unpublished files of applications - I recall many years back that this is how Derwent got started, in the days when the Belgians used to lay patents open early, but there was a market for their product precisely because individual companies didn't do it themselves.