Li's Tattoo Recalls Saint Exupéry

A tattoo means the most to the person who has endured the process.

A tattoo often represents more than what meets the eye.

I met Li along the New Jersey Transit corridor of Penn Station.

She has five tattoos, and chose this one to share with us here on Tattoosday:


What I find intriguing about this piece is that it is not abundantly clear to a stranger what it is.

Li had this tattoo based on, she said, a drawing by Jean Piaget, that depicts the author Antoine de Saint Exupéry rolling an orange along the keys of a piano.

Saint Exupéry, most notably the author of The Little Prince, is Li's favorite author.

Li told me that the writer rolled the orange over the keys, which produced a soothing noise which helped his wife sleep at night,

I could not find the drawing to which Li refers, but I did find this reference, in Saint-Exupery: A Biography, by Stacey Schiff:

At Silvia's he devised a game he called "des oranges sur le piano." By rolling one orange up and down the black keys and a second over the white he was able to produce what sounded to most ears like honest Debussy.

This tattoo was inked by Rachel, formerly of No Ka Oi Tiki Tattoo, in Philadelphia.

Thanks to Li for sharing her fascinating tattoo with us here on Tattoosday!

RCD invalidity through the cases: Rodinger writes

The September 2009 issue of the Journal of Intellectual Property Law & Practice (JIPLAP), published monthly by Oxford University Press, leads for the first time with an article on the validity of Community designs. Entitled "Community design invalidity: the issues, as viewed through the case law", it is authored by Pedro Rodinger (right) who is known to many readers of this weblog as Director of OHIM's Design Department. According to the article's abstract:

"Legal context: In 2003, Council Regulation 6/2002 on Community designs set in motion the Registered Community Design, an IP right that is relatively easy to obtain thanks to the fact that there is no ex-officio novelty examination and to the swift and fast registration procedure. According to the regulation, problems with conflicting design or other rights are solved after registration once they effectively occur. The Community legislator followed the wishes of the European industry and after more than 5 years of experience, the fairly low number of design invalidity claims seems to confirm that this decision was a good one.

Key points: So far, only six design invalidity cases have been presented to the CFI. The basic underlying concepts of the Community Design right are at the core of these cases: the concept of the informed user, the degree of freedom of the designer, the use of proofs, the conflict between designs and trade marks, etc.

Practical significance: The RCD being still a young right, the interpretation of these concepts is of utmost importance for practitioners. The article contributes to the general debate on interpretation".

It's a little-known fact that two members of the Class 99 squad-- David Musker and Jeremy Phillips -- are also members of the JIPLAP editorial team. If you are thinking of writing an article on design law and practice, whether scholarly or practical, please feel free to contact either of them with your ideas.

Coming soon: new design law for China

In around three weeks, on 1 October 2009, the 2008 Third Revision of China's patent law comes into force according to the first in a series of articles written for Intellectual Property Watch by SIPO researcher Wenting Cheng.

Ms Wenting explains that China has an omnibus patent system which incorporates protection of designs and utility models as well as conventional patents. As to patentability of designs she writes:

" ... Patent Law (2008) Article 23 adds a new section, providing that the design on which a patent may be granted must be substantially different from any prior designs or a combination of the features of prior designs. Any design on which a patent may be granted must not be in conflict with any prior legitimate rights of any other person. The prior design referred to in this law means any design known to the public before the filing date of the patent application in China or abroad.

This newly added provision defines two standards to determine the patentability of a design: one is substantial difference and the other is that it is not in conflict with prior rights. Details on these standards are included in the Implementing Regulations of Patent Law and Guidelines for Examination which undergo revisions accordingly. Specifically, major changes take place in the post-grant stage since there is no substantive examination in granting design patents in China".

For further details, including how to tell whether two designs are identical, you can read the full article here.

Maglite illuminate the scope of Swedish copyright

Maglite Instruments won a copyright victory over IKEA in Sweden's Supreme Court, in a case which has been running for a decade, according to the International Law Office report by Håkan Borgenhäll and Lulu Li of Advokatfirman Lindahl. The result is that their mini Maglite(TM) torch, marketed in 1980, will now be protected for life+70 years as a work of applied art.

Is this perhaps a little generous? Should the Supreme Court treat themselves to a reading of the late Sir Hugh Laddie's grouchily brilliant 1995 Stephen Stewart lecture, "Copyright, Over-Strength, Over-Regulated, Over-Rated," 18 E.I.PR. 253 (1996)? Or is this moderate by comparison with the perpetual trade mark protection Maglite have been granted in Japan and elsewhere?

Perhaps there is a gleam of sense in the Swedish judgment - it appears that they noted the relatively low level of originality, and the limited design freedom, and adopted an approach closely resembling that of the Community design regime - limited design freedom lowers the creativity required for protection, whilst shrinking the scope of the protection granted. We can perhaps live with life+70 years (approximately thirty times the protection available via unregistered Community designs, and at least thrice that available to registered designs) if the quid pro quo is narrow infringement rights.

Vitra v High Tech: what the ECJ must rule on

The Curia website has now posted information about Case C-219/09 Vitra Patente AG v High Tech Srl, a reference for a preliminary ruling from the Tribunale di Milano, Italy, which was lodged on 16 June 2009. The questions in this reference are as follows:

"(1) Must Articles 17 and 19 of Directive 98/71/EC [on the legal protection of designs] be interpreted as meaning that -- in implementing a national law of a Member State adjusting the domestic legal order to the abovementioned Directive -- the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which -- albeit meeting the requirements for protection laid down in copyright law -- fell to be regarded as having entered into the public domain before the date on which the national implementing legislation entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

(2) If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that the discretion accorded to the Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection where a third party -- without authorisation from the holder of the copyright on such designs -- has already produced and marketed in that State products based on such designs which were in the public domain before the date on which the national implementing legislation entered into force?

(3) If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that the discretion accorded to the Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection where a third party -- without authorisation from the holder of the copyright on such designs -- has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?"

Notes on the background to this dispute, which involves the design of the Panton chair, can be found here.

Door opens for design owners in Italy

Lualdi's staggeringly individual door design

Trevisan & Cuonzo Avvocati report a Milan design infringement trial on RCD 153333-01 and 02. The door shown in the designs (depicted above) looks very similar to, well, any door you've ever opened but on close scrutiny you can just about see that it stands proud of the door frame. The proprietor, Lualdi S.p.A, sued Dorica Castelli S.p.A., who exhibited their own Quadro' door at a Milan trade fair. They lost in interlocutory proceedings, but succeeded in the end on the merits, over a plea that the design was invalid. It appears that their definition of the "informed user" is essentially the same as that adopted by OHIM and, to a first approximation, in the UK - "a purchaser who is particularly attentive to the goods in question but is not an architect or a designer and who does not leave the choice of purchase to another but informs himself by consulting catalogues, magazines and experts to find the product that best fits his needs".

That is in line with the majority of prior Italian cases, though in one or two apparently the "informed user" has to the contrary been seen as architect or interior designer - see Professor Mario Franzosi's excellent JIPLP article Design Protection Italian Style.

One can only applaud harmony and consistency across the EU. But is this really Italian design at its best? It is hard to tell on the basis of these grainy, monochrome grey pictures, but the design in question appears to fit right into Franzosi's pithy commentary:
"Take a look at what is registered at OHIM in Alicante. ... Most of them are not work of design because they are simply ugly."

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.