Last night IPKat posted a reply from Dids Macdonald of ACID on the recent series of posts relating to Clause 13 of the Intellectual Property Bill. Merpel (of IPKat) interspersed some comments into Dids’ views which helped throw a light on some of the comments being made.
However, having read the post a couple of times we felt moved to write a response to the post on IPKat. Since the resultant response was so long we’ve posted it here on IPcopy and have submitted a link to this article for inclusion in the comments section of the original post on IPKat.
You’re just a “theorist”
The comments from ACID make references to a “theorist” which we take to mean any lawyer, patent attorney, trade mark attorney etc. that may be involved with advising clients on design protection and enforcement.
I don’t know why but I find the use of this term really quite annoying. Maybe it’s because the term seems to be being used in a belittling manner – essentially, “some theorists have said the following but we can discount it because they’re only theorists”.
Patent attorneys/trade mark attorneys/lawyers are legal practitioners not theorists.
We don’t sit in ivory towers discussing the minutiae of the linguistic interpretations of a piece of legal text* without interacting with actual designers. On the contrary we do actually meet real designers. We talk about their business needs. We discuss what they want to do and what tools are available to do it. And, believe it or not, we get narked off if we think one of our clients is being ripped off.
So to dismiss the concerns of this group of individuals with a hand wave and a comment about “theorists” seems to be something of a cop-out on the part of ACID. We want the best for our clients and if we think there’s something amiss with Clause 13 then I think it probably warrants listening to! It might not be correct but it shouldn’t just be dismissed.
Evidence versus Anecdotes versus Feeling Hard Done By
As we’ve noted in an earlier piece the evidence presented as part of the Hargreaves Design reforms seems fairly light on actual hard evidence. Only 139 respondents provided substantive comments to an IPO survey. This seems like quite a small number to base a legal move to criminal design provisions.
The other thing we just can’t shake is the feeling that most of the evidence presented by ACID is, when all’s said and done, probably not exactly impartial. Asking designers if their designs have been blatantly infringed isn’t likely to return an impartial assessment of the state of design infringement. Of course, they’re going to say that their work has been ripped off.
Criminal versus civil versus mediation
The ACID comments refer to over 3000 mediations that have led to a 70% resolution rate. The cost of pursuing existing enforcement options is also mentioned. Surely these two comments point to alternative to Clause 13?
A formalised mediation service and/or cheaper options to bring a case in the Intellectual Property Enterprise Court would seem to be a preferable way to allowing designers to enforce their designs and seek redress.
The small claims track at IPEC could be extended to cover registered designs and a government mediation service would allow designers to get a fair hearing in front of legal practitioners (sorry, theorists) that are familiar with the law and the way it should be interpreted.
ACID suggest that the correctness of Sebastian Conran’s comments are being unfairly criticised. However, instead, aren’t his comments actually highlighting a real area of concern for Clause 13?
It was reported that Sebastian Conran suggested that designs that are inspired by other designs or which reference them won’t be caught by clause 13 of the IP Bill, only slavish copying or direct copying will be caught.
We fail to reconcile the argument being made by Sebastian Conran above and also by ACID here in relation to the impact that High Street chains have on the small designer where it states:
“ACID submitted approximately 25 case studies to the Hargreaves Review which demonstrated the typical position of small, niche designers creating a new, innovative design. When the design becomes a success, the high street chain takes the design, ‘designs around it’ to mitigate legal challenge, sends it to China to have it copied, sells it more cheaply and does not reward the originator.”
How exactly is Clause 13 going to help this scenario? If the High Street chain has “designed around” the designer’s work then they can’t be making a slavish copy and yet supposedly Clause 13 is going to prevent these kind of practices.
Perhaps1 the various comments that were added to the original IPKat post that moved Dids to reply are right.
Perhaps we should be looking to the “finer points of the law” as Dids puts it because at the end of the day it is the legal text of Clause 13 that should be used to determine whether someone has committed an offence.
And as the examples below show it might not always be obvious where a court’s decision is going to go based on what the lay person might think. And if the outcome of the cases below is not immediately obvious then how exactly is a criminal court that’s not experienced in this area of law going to be able to get things right? And if you think that’s scaremongering then take a look at the first comment posted after this article!
To illustrate some of the issues with Clause 13, here are some real life examples, and how Clause 13 might affect them:
In this well-known Community Registered Design (CRD) case, Samsung were accused of infringing Apple’s CRD number 000181607-0001 by producing and selling the Galaxy Tab 10.1, 8.9 and 7.7.
On the face of it, the Samsung products in question do look very similar to Apple’s CRD (see below for comparative images taken from the High Court judgement):
A lay person, maybe one making up the jury in a criminal court, would very easily be led the conclusion that Samsung had “copied the design so as to produce articles exactly or substantially to that design”, and hence might very well be led to the conclusion that, under the proposed criminal provisions, Samsung had committed an offence.
But, as most readers will know, the case is far more complicated than this. The design field for tablet computers is so dense that the scope of protection of Apple’s CRD was deemed to be extremely narrow, and Samsung’s products were not even found to “create the same overall impression” as Apple’s CRD, and so Samsung was not found to infringe the registered design.
Whether or not a registered design has been infringed is far from clear-cut in cases such as this. A proper comprehension of design law is essential to determine this; including an ability to consider who the informed user is, the state of the design corpus, and how this affects the scope of protection of the CRD. Only then can the possibility of infringement be considered. A criminal court simply could not expected to apply the same rigorous testing, and in this case, in the hypothetical world of copying in Clause 13, IPCopy’s view is that a finding of criminal activity would have been likely, even though infringement of the registered design did not occur!
This case is a wonderful example of exactly the sort of situation that supporters of Clause 13 are hoping will be improved by the introduction of Clause 13.
PMS admittedly ‘drew inspiration’ from the Trunki design and sought to produce a low-cost version of the product. Their intention was to produce a ride-on suitcase (the Kiddee Case) with a different appearance, so that it wouldn’t infringe Magmatic’s CRD. You can see from the comparison below that PMS went to some effort to make sure that the Kiddee Case design differed from the Trunki CRD.
But the differences between the designs weren’t enough. Magmatic brought an action against PMS based on their CRD and based also on UK unregistered design right. The lack of any existing designs in the design corpus meant that the scope of protection offered by the CRD was remarkably broad, and PMS were found to infringe the CRD2.
However, Magmatic did not even attempt to claim that the Kiddee Case infringed the UK unregistered design right in the Trunki design as a whole (they did allege infringement of a very specific combination of aspects of the unregistered design, but were unsuccessful), presumably because Magmatic knew that it would be extremely difficult to argue that PMS had “copied the design so as to produce articles exactly or substantially to that design”.
So what use would the criminal provisions have been in this case?
PMS had not “copied the design” depicted in the CRD – indeed, they had gone to great efforts to ensure that they did not “copy” it. However, Magmatic’s CRD did exactly the job it was meant to do, which was to protect Magmatic from PMS’ attempt to ‘design around’ its CRD because it offers protection for designs that creates the same ‘overall impression’ as the CRD. The criminal provisions, which would only have come into play if PMS had “copied the design exactly or substantially”, and only if they had done so knowingly, would have had no additional benefit whatsoever.
IPcopy 25 November 2013
*at least we don’t just do this 🙂
1 and maybe we should don some kind of protective gear here because we’re about to question the correctness of the comments
2 Another example, in fact, of how the scope of a registered design might be vastly to different to what may appear to a lay person, and how important a detailed appreciation of design law is in deciding infringement.