MASTERARBEIT - Consuelo Álvarez 31_07_2014

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MASTERARBEIT Weiterbildender Masterstudiengang Gewerblicher Rechtsschutz Studienjahr 2013-2014 “In Which Cases Does Copyright Offer Less Protection than Design Right?” Design protection in Europe Betreuer Prof. Dr. Jan Busche Vorgelegt von María Consuelo Álvarez Pastor

Transcript of MASTERARBEIT - Consuelo Álvarez 31_07_2014

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MASTERARBEIT

Weiterbildender Masterstudiengang Gewerblicher Rechtsschutz

Studienjahr 2013-2014

“In Which Cases Does Copyright Offer Less Protection than Design Right?”

Design protection in Europe Betreuer Prof. Dr. Jan Busche Vorgelegt von María Consuelo Álvarez Pastor

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TABLE OF CONTENTS

I. Introduction II. Designs as subject matter of intellectual property rights

A. Designs in a international context 1. International protection of industrial designs 2. Overlap with other forms of intellectual property rights

B. Protection of designs in the European Union 1. The Design Directive and the Community Design Regulation 2. Principle of cumulation of protection between design right

and copyright 3. Lack of harmonization of copyright laws

C. Situation in Germany 1. National protection of designs 2. Copyright protection of designs

III. Eligibility for protection

A. Threshold for copyright protection B. Threshold for Community design protection

IV. Scope of protection

A. Copyright protection 1. Moral rights and exploitation rights 2. Abhängige Bearbeitung and Freie Benutzung 3. Earlier intellectual property rights

B. Community design protection 1. Rights conferred by the Community design 2. The overall impression

V. Conclusions VI. Bibliography

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10 10 10 13 14 14 16

20 24 24 26

27 27 30

40 40 40 42 46 48 48 50

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VORWORT

Für die Beantwortung der Frage, “In welchen Fällen bietet das Urheberrecht

weniger Schutz als das Designrecht?” müssen mehrere Aspekte in Betracht gezogen

werden. Erstens habe ich durch meine Analyse festgestellt, dass Designs als Arbeit der

angewandten Kunst manchmal als eine Arbeit zweiter Klasse betrachtet worden sind

und viele Länder sehr streng bei der Zulässigkeit des Urheberrechtsanspruchs handeln.

Es ist hauptsächlich ein kulturelles Problem, aber es ist bestimmt ein Aspekt, welches

zu berücksichtigen ist, wenn es um den Umfang des Schutzes geht, den ein Design in

den verschiedenen Mitgliedstaaten haben wird.

Zweitens bringen die Territorialität und der Mangel an der Harmonisierung von

Urheberrechtsgesetzen Unklarheit bezüglich des Anspruchs des Urheberschutzes in den

verschiedenen Mitgliedstaaten.

Der dritte Aspekt betrifft die Voraussetzungen des Anspruchs; die nicht

vorhandene Registrierung führt zu Mängeln von Beweisen des Eigentumsrechts,

während die Subjektivität des künstlerischen Werts Unklarheiten mit sich bringt.

Außerdem wird der Grad der Freiheit nicht in Betracht gezogen.

Viertens, bezüglich der Bandbreite von Rechten; es stellt die längste Dauer des

Schutzes im geistigen Eigentum zur Verfügung und die moralischen Rechte schützen

den Autor, besonders beim Urheberrecht, in seiner persönlichen und intellektuellen

Beziehung zur eigenen Arbeit, die eine untrennbare Verbindung zwischen dem Autor

und der Arbeit zur Verfügung stellt.

Fünftens, die Beschränkungen im Urheberrecht bezwecken den Ausgleich der

Rechte zum Schutze des Urhebers und der Rechte der Leute, die sich für den Gebrauch

der Arbeit interessieren.

Sechstens, ein früheres Urheberrecht kann die Nichtigkeit eines

Gemeinschaftsdesigns voraussetzen.

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I. Introduction

Intellectual property can sometimes be protected by different

set of laws. These include laws relating to industrial and

intellectual property making it possible that the Copyright,

patents, trademarks and design rights overlap.1 In this regard,

the article 17 of the Directive2 establishes a general principle,

which is the Principle of cumulation of protection of design

right and copyright, leaving further determination to the national

legislation of the contracting States. In cases when copyright

and design rights overlap, it will be useful to know which way

of proceeding will provide our object a wider scope of

protection.3

!1 The Berne Convention for the Protection of Literary and Artistic Works of 1886, 9th of September of 1886, as revised at Berlin on November 13, 1908, then at Rome on June 2, 1928, at Brussels on June 26, 1948, at Stockholm on July 14, 1967, at Paris on July 24, 1971, and as amended on September28, 1979, S. Treaty Doc. No. 99-27 (1986): The Berne Convention already settled the protection of “works of applied art” considering them “artistic works”. 2 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, OJ L 289/28 of 28.10.1998 (hereinafter Design Directive). Article 17 stipulates that “[a] design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of the State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State”. (The underlining is not of the original). 3 The means of protection of the industrial designs has been of concern throughout the existence of design protection: T. Cook †, “The Cumulative Protection of Designs in the European Union and the Role in such Protection of Copyright”, Journal of Intellectual Property Rights, Vol. 18, January 2013, pg. 83-87; H. Bodewing and H. E. Ruijsenaars, “Alternative Protection for Product Designs A Comparative View of German, Benelux and US Law”, (IIC 1992, 643); H. C. Jehoram “Cumulation of Protection in the EC Design Proposals”; C.Krüger, “Designs Between Copyright and Industrial Property Protection” IIC 1984, 168; A. Nordemann and F. N. Heise. “Urheberrechtlicher Schutz für Designleistungen in Deutschland und auf europäischer Ebene” (ZUM 2001, 128), 134-135, Berlin/Potsdam.

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The first problem that appears when considering the

copyright protection of designs is that Copyright within the

European Union has not been completely harmonized; we

cannot speak of European Copyright as we refer to a European

Patent, a Registered Trademark or Community design.4 Despite

the rules adopted in the European Union in order to correspond

some areas of copyright law among the member states, the

national laws mainly carry the regulation of this topic. As a

result, the legislation of each country follows its own criteria to

consider the protection of a work object of copyright protection.

On the other hand, copyright, harmonised in Europe through

the adoption of the Directive 2001/29/EC5, automatically grants

the author of an original work, of literature, art, music, science

or didactics, with a series of exclusive rights. Such rights will

expire after 70 years post mortem auctoris. A decisive

requirement for a work to be protected by copyright is its

originality, which will be established by each Member State. In

Germany, the main requirements for a work to be protected are

to be creative and individual to the author, and therefore some

originality. With respect to designs, in some States the

originality required will be lower and easily accomplished. The

German Federal Court of Justice has traditionally considered

that the work has to reach an aesthetic level6 in order to be

!4 M. van Eechoud, P. Bernt Hugenholtz, S. van Gompel, L. Guibault and N. Helberger, “Harmonizing European Copyright Law – The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Volume 19, Chapter 9: “The Last Frontier: Territoriality”; A. Dietz, “The Harmonization of Copyright in the European Community”, IIC 1985, 379 5 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. (Design Directive) 6 A. Nordemann and F. N. Heise. “Urheberrechtlicher Schutz für Designleistungen in Deutschland und auf europäischer Ebene” (ZUM 2001, 128), 134-135, Berlin/Potsdam; U. Loewenheim, “Höhere Schutzuntergrenze des Urheberrechts bei Werken der angewandten Kunst?”, GRUR Int 2004, 765.

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considered art7 and therefore object of copyright protection.

Nevertheless, the recent decision8 -13th of November 2013- of

the Bundesgerichtshof9 , will be a turning point in German

doctrine. Depending on these requirements a work may be

subject of a double protection: Copyright and design right.

With respect to design rights, in the member states of the

European Union there are at least two ways of obtaining

protection. First, by application for a registered Community

design10 with the Office of Harmonization of the Interior Market

(OHIM). Second, by the application for an International design

with de World Intellectual Property Organisation (WIPO).

Moreover, member states offer a national protection of designs.

For instance, in Germany the protection can be obtained by the

application for a registered German design with the Deutsches

Patent- und Markenamt11. The EU Council reached for the

harmonisation of the existing national design laws by adopting

the Directive 98/71/EC. It went one step further on the

legislation of the Regulation 6/2002 creating the Community

design right, which includes registered and unregistered rights.

While an Unregistered Community Design derives

automatically after making the design public in the European

Union, registered community designs must follow a process of

application in the OHIM. This registration will indeed bring

some advantages to the owner of the design, among others the

protection could last up to 25 years whereas the unregistered

Community design would end after 3 years. The relevant design

will find the best-suited and beneficial protection if a good

!7 BGH, Urteil vom 22.06.1995 – I ZR 119/93 Silberdistel, GRUR 1995, 581 8 BGH, Urteil vom 13.11.2013 – I ZR 143/12 Urheberrechtlicher Schutz eines Geburtstagszuges, BeckRS 2013, 22507 (further explained on my thesis on: III. Eligibility for Protection A. Threshold for copyright protection)!9 German Federal Court 10 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs (Community Design Regulation) 11 German Patent and Trademark Office

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application strategy is made taking into consideration all the

different possibilities. For example, due to the short market

life12 of some products, as fashion products or products of the

toy industry, it is sometimes convenient to be protected as an

unregistered Community design in order to save costs and time.

The requirements for obtaining protection of a registered

design in all Member States of the European Union are novelty

and individual character.13 In the case of unregistered designs,

the relevant design has to be made available to the public inside

the European Union. 14 Besides, the Community Design

Regulation states that the scope of protection will include any

design that does not produce on the informed user a different

overall impression.15 In this way, the scope of protection is

much wider than the scope of copyright protection.

Community Designs offer plenty of advantages over

copyright protection. To begin with, in the case of registered

Community designs, which start with registration, it is provided

with an exact date of creation.16 This would be extremely useful

to prove ones rights and the ownership of the holder against

others. These two consequences of registration will back up the

owner of the design when a dispute over the rights of a design

takes place. Of course, unregistered Community designs are !

12 Recital 16 of the Community Design Regulation: “Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. […]” 13 The requirement for protection are established on article 4 of the Community Design Regulation. 14 Article 11 of the Community Design Regulation establishes the “Commencement and term of protection of the unregistered Community design”. 15 Article 10 of the Community Design Regulation provides: “The scope of protection conferred by a Community design shall include any design, which does not produce on the informed user a different overall impression.” 16 Recital 16 of the Community Design Regulation. “[…] there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.”

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very useful too, especially for protecting short-life17 products

where the registration process takes longer and turning to

copyright could end up in a discussion of whether it is supposed

to be protected by copyright or not. In the case of Copyright

protection, the author is also held down many limits. Article 5 of

the directive 29/2001 forms part of a large exception to the

rights of the author. National copyright laws likewise set

different limits, for instance the limit of freie Benutzung18 under

German copyright law.

With respect to the remedies for infringements and the

enforcement proceedings, the protection of designs offers some

advantages over the copyright protection. A significant one is

the right conferred by the Community Design Regulation to

claim for seizure of the infringing products and materials and

implements used to manufacture them is a useful tool that

applies only to infringement of a Community design and a clear

advantage over the remedies for copyright infringement.19

However, these are only some examples regarding the scope

of protection offered by both intellectual property approaches.

The election of which way of proceeding will provide the design

a wider scope of protection is definitively a struggle of the

Intellectual Property rights. The efforts employed during the last

years on the harmonization of the design law in the European

Union have definitively changed the situation. Still, national

copyright protection certainly has plenty of advantages. On my

!17 Recital 16 of the Community Design Regulation: “Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. […]” 18 Freie Benutzung refers to the free use of works under §24 Urheberrechtsgesetz. 19 Article 16 (1) Berne Convention for the Protection of Literary and Artistic Works of 1886; Article 8 (2) Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.

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study I am researching in which cases copyright offers less

protection than design right focusing on German copyright laws

and comparing the scope of protection they offer compared to a

Community design. A good application strategy will benefit the

owner of an intellectual property right from the existing law

regimes. Regarding the protection of designs, the increasingly

growing popularity of the Community design has proven itself

to be a reliable choice while the recent decision of the 13th of

November 2013 of the Bundesgerichtshof20, Geburtstagszug

(birthday train toy),21 has enhanced the chance of copyright

protection of designs.

!20 German Federal Supreme Court 21 BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz eines Geburtstagszuges”, BeckRS 2013, 22507!

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II. Designs as subject matter of Intellectual Property Rights

A. Designs in an international context

1. International protection of industrial design

The regulation of design dates back to the Paris Convention

for the Protection of Industrial Property of 1883. The Article 1

of the Paris Convention guarantees industrial protection to

“patents, utility models, industrial designs, trade marks, service

marks, trade names, indications of source or appellations of

origin, and the repression of unfair competition.” Although the

Paris Convention does not give a definition of industrial designs,

its article 5quinquies provides that they must be protected in all

the countries of the Union. It does not go any further and leaves

the definition and means of protection to the domestic law.

The Berne Convention for the Protection of Literary and

Artistic Works of 1886 guaranteed protection to designs as

“works of applied art”, considering them “literary and artistic

works”. The Convention specified on its article 2(7) that the

countries of the Union should determine “the extent of the

application of their laws to works of applied art and industrial

design models, as well as the conditions under which such

works, designs and models shall be protected. […]; However, if

no such protection is granted in that country, such works shall

be protected as artistic works.” The Berne Convention provides

protection to industrial designs as applied artistic works and

establishes a minimum term of protection of 25 years.

“The Hague Agreement Concerning the International Deposit

of Industrial Designs” from 1925 continued adjusting the

protection of industrial designs. The London Act of 1934 went

one step further with the regulation of the international deposit

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made at the International Bureau of Industrial Property at Berne.

The London Act approached the protection of designs from a

copyright perspective.22 The Hague Act of 1960 specified on

this matter with a revision of its article 1: “(1) The contracting

States constitute a Special Union for the international deposit of

industrial designs.” And “(2) Only State members of the

International Union for the Protection of Industrial Property may

become party to this Agreement”. The Hague Agreement

established an international deposit of an industrial design where

no examination was needed and changed the protection of

designs from the “copyright approach” to the “patent

approach”.23

The patent approach to design protection includes three

characteristics. First, design rights shall be subject to standard

substantial examinations and are obtained by registration.

Second, there is no grace period and novelty is a requirement for

protection. Third, a third party may be responsible of

infringement regardless of whether there was awareness of the

existence of a violation.24

The copyright approach to design protection includes three

different characteristics. First, the design rights begin

automatically upon publication or creation, without need of

registration. Second, originality is required. Third, it is only

possible to take legal action against imitation when there is bad

faith. 25

!22 R. Ushiki “Legal Protection of Industrial Designs”, USHIKI International Patent Office, pg. 5 23 R. Ushiki “Legal Protection of Industrial Designs”, USHIKI International Patent Office, pg. 5 24 A. Kur: “The Green Paper’s ‘Design Approach – What’s Wrong with it?”, 374 Comments, 1993, 10 EIPR.; Mr. Richii Ushiki “Legal Protection of Industrial Designs”, USHIKI International Patent Office, pg. 21 25 R. Ushiki “Legal Protection of Industrial Designs”, USHIKI International Patent Office, pg. 24

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Still no definition to “design” was provided. The Geneva Act,

made from the revision of the Hague Agreement on 1999 grants

“international registration” on the date of filing of the

application once the International Bureau confirms that the

application fulfils the formal requirements. Such application

has the same results as a national application filed under

national laws. The Geneva Act established a term of protection

of the international registration of a minimum of 15 years.

Once again, The Universal Copyright Convention of 1952

refers to works of applied art and establishes that its term of

protection should be of at least ten years.

The Locarno Agreement Establishing an International

Classification for Industrial Designs of 1968 established an

international classification composed of main classes and sub-

classes.

The TRIPS Agreement under the World Trade Organization

Agreement provided a high level of protection on different areas

of industrial property. In particular, the Section 4 of Part II

disposes some regulations concerning the protection of

industrial designs. The article 25 of the Agreement establishes

the requirements for the protection “(1) Members shall provide

for the protection of independently created industrial designs

that are new or original. Members may provide that designs are

not new or original if they do not significantly differ from

known designs or combinations of known design features.

Members may provide that such protection shall not extend to

designs dictated essentially by technical or functional

considerations.” And “(2) Each Member shall ensure that

requirements for securing protection for textile designs, in

particular in regard to any cost, examination or publication, do

not unreasonably impair the opportunity to seek and obtain such

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protection. Members shall be free to meet this obligation

through industrial design law or through copyright law.”

However, the TRIPS Agreement does not specify on the

definition of designs.

2. Overlap with other forms of Intellectual Property rights

Intellectual property can sometimes be protected by different

set of laws. These include laws relating to industrial and

intellectual property making it possible that the copyright,

patents, trademarks and design rights overlap. Some designs can

sometimes be protected against copying under national unfair

competition law.26 Moreover, designs, which are artistic and

functional in nature, can also be protected by copyright laws

considered as works of applied art.27

The protection of designs has been of international concern

due to the complexity of its own nature. While some countries

consider the concept of design protection on a patent-oriented

approach, some others consider that a copyright-oriented

approach is more accurate. Independently of the approach,

designs are certainly not without legal protection, even if they

do not have the required creativity to be protected by copyright.

The intricate problem of deciding whether to protect designs as

an object of industrial property, as a copyright work or by both

!26 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, p. 212 “Article 96 of the Regulation provides for overlap of rights, expressly mandating overlap national copyright laws and allowing overlap with other forms of intellectual property protection. There are two types of cumulative effect with other Intellectual Property Rights.” (1) The permissive Overlap with Non-Copyright Intellectual Property provided by article 96. 1 of the Regulation; and (2) The Mandated Overlap with Copyright provided by article 96. 2 of the Regulation and article 17 of the Directive. 27 T. Cook †, “The Cumulative Protection of Designs in the European Union and the Role in such Protection of Copyright”, Journal of Intellectual Property Rights, Vol. 18, January 2013, pg. 83-87

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ways, comes from their nature, being considered as “legal

hybrids between the patent and copyright paradigms”.28

On the one hand, the creative character of the design should

be an undeniable form of human expression and, therefore,

protected as any other copyrightable work. Designs “come from

acts of imagination, not technical invention. One invention may

be repeated time and again, but designs, made by human

expression, shall be individual and unique”29. On the other hand,

the designs are made bearing in mind the form and function of

the product. Therefore, when the product requires higher

functional and technical considerations, there is less space left

for creativity as a form of human expression. Edging designs

towards inventions.

To this respect countries have taken different positions.

While some countries, like the United States, hold that a line

should be drawn to differentiate designs and works of applied

art, and to establish which works can be protected under

copyright and which ones under design law. Others, including

the majority of the European countries, support the cumulative

protection of copyright and design laws.

B. Protection of designs in the European Union

1. The Design Directive and Community Design Regulation

The legislation on industrial designs has been enacted in the

European Union on two levels. Member States have been

obliged to harmonize national rules on industrial design

!28 J.H. Reichman, “Legal Hybrids Between the Patent and Copyright Paradigms” 29 H. C. Jehoram “Cumulation of Protection in the EC Design Proposals”!

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protection on the basis of the Design Directive 98/71/EC30, and

in addition, a unitary regime for design protection was

established on the Community level by the Community Design

Regulation Nº 6/2002.

The background and meaning of important substantive

provisions -such as the definitions, requirements for protection,

scope of protection, etc.- are the same in the Directive as in the

Regulation.

The European Union defines designs31 in article 3 of the

Regulation as “The appearance of the whole or a part of a

product resulting from the features of, in particular, the lines,

contours, colours, shape, texture and/or materials of the product

itself and/or its ornamentation”. The definition is

extraordinarily broad32 and includes all aspects and features33 of

a product or part of it.

Due to the separate systems of design protection, in the

Member States of the European Union there are at least two

ways of obtaining protection. First, by application for a

registered community design with the Office of Harmonization

of the Internal Market (OHIM). Second, by the application for

an international design with the World Intellectual Property

Organisation (WIPO). Parallel to this, the Member States offer a

national protection of designs. After reaching for the

!30 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (Community Design Directive) 31 ‘Design’ in English and ‘Geschmacksmuster’ in German. However, ‘dessin ou modèle’ in French; ‘disegno o modello’ in Italian and ; ‘dibujo o modelo’ in Spanish. 32 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, p. 172; Green Paper, paragraph 5.4.7.1; Additional Opinion of the Economic and Social Committee on the Proposal for a European Parliament and Council Regulation (EEC) on the Community Design [1995] OJ C1 10/12. 33 Lines, contours, colours, texture and materials.

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harmonisation of the national design laws by the adoption of the

Directive, the Council of the European Union went one step

further on the legislation of the Regulation creating the

Community design right, which includes registered and

unregistered rights.

The Registered Community Design requires an application34;

as well as in other industrial property areas, such as patents and

registered trademarks. This is the traditional patent approach of

protecting designs. The term of protection35 is an initial period

of five years from the date of filing of the application, renewable

for periods of five years each, for a total term of twenty-five

years from filing.

Like in the case of copyright, Unregistered Community

Designs provide protection without the need of fulfilling any

formalities; nevertheless the protection in this case will be for a

short term of three years from the date on which the design was

first made available to the public within the European

Community. 36 For this reason it has been called a “weak hybrid

between industrial property protection and copyright”, intended

“to remedy to a limited extent the lack of copyright protection in

those Member States which at this moment exclude that

protection”.37 The Unregistered Community Design is useful for

the protection of products with shorter life cycles, such products

from the fashion or toy industries, where a registration would

require too much time and costs.

2. Principle of Cumulation of Protection between Design Rights

and Copyright !

34 Article 12 of the Community Design Regulation. 35 Article 12 of the Community Design Regulation. 36 Article 11 of the Community Design Regulation. 37 H. C. Jehoram, “Cumulation of Protection in the EC Design Proposals”

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As already mentioned, designs are protected by different,

overlapping, intellectual property rights. The Berne Convention

already settled the protection of “works of applied art”

considering them “artistic works” but left the determination of

“works of applied art” to domestic law.

The Regulation on Community Designs provides two types

of unitary protection for designs effective in all the Member

States of the European Union. These are the already mentioned

Registered and Unregistered Community Designs. Besides, the

Directive of Protection of Designs orders the Member States to

provide harmonised national protection by means of national

registration procedures. Some designs can be protected as

trademarks and sometimes designs can be protected against

copying under national unfair competition law. Designs, which

are artistic and functional in nature38, can also be protected by

copyright laws considered as works of applied art.

In this regard, the article 17 of the Directive39 establishes a

general principle, which is the Principle of cumulation of

protection of design right and copyright, leaving further

determination to the national legislation of the contracting

States. This means that they are freely authorized to determine

the scope of protection of copyright and the conditions in which

such protection can be recognized in an industrial design. In

other words, the obligation to protect works applies only in so

!38 T. Cook †, “The Cumulative Protection of Designs in the European Union and the Role in such Protection of Copyright”, Journal of Intellectual Property Rights, Vol. 18, January 2013, pg. 83-87 39 Design Directive, Article 17 stipulates that “[a] design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of the State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State”. (The underlining is not of the original).

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far as such works are regarded under national law as artistic

works.

Prior to the Directive there were three different systems. The

system of total cumulation, based on the French “unité de’l art”

theory, which made no distinction between fine arts and applied

arts. The partially cumulative protection required of the designs

a higher level of originality and artistic merit and the non-

cumulative system, which excluded designs from copyright

protection.

While most common law countries have a “close list” of what

is to be considered as copyright works and have demanding

requirements, most civil law countries have an “open list” and a

relaxed view of requirements for protection. As an example of a

common country, the UK legislation has traditionally been

reluctant to protect designs as a copyright work and has had a

rejecting position towards the Principle of cumulation. Besides,

as the UK, after the imposition of the Principle, there are also

some civil law countries that have been traditionally strict when

considering the double protection availed by the last sentence of

article 17 “The extent to which, and the conditions under which,

such a protection is conferred, including the level of originality

required, shall be determined by each Member State”. Opposite

to this, most of the civil law countries have traditionally

accepted this double protection, originated from “unite l’art”

according to which the “entitlement of copyright protection for

applied art and other art works shall be determined under the

same criteria”.40 In France, the low requirements established by

!40 T. Cook †, “The Cumulative Protection of Designs in the European Union and the Role in such Protection of Copyright”, Journal of Intellectual Property Rights, Vol. 18, January 2013, pg. 83-87 “Cumulative protection originates in the theory, first developed in France, of ‘unity of art’, under which there should be no distinction or discrimination as between artistic creations on the basis of aesthetic merit or mode of expression. Such an

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French copyright law together with the principle of absolute

cumulation of the systems of protection entitle copyright

protection to basically any new design.41 However, copyright

protection shall not extend to designs mandated exclusively by

technical or functional considerations, where there is no space

for personal expression.

The harmonization of the originality criterion has proven to

be an impossible and untouchable task since the different

countries in the European Union have different cultural

traditions towards this. In the European Community there are

two different perspectives: a relaxed view of requirements for

copyright protection and a severe view. The first view is

commonly the one of the common law countries and the latter is

traditionally the accepted by the civil law countries. However,

Germany42 shares the demanding tradition of the common law

countries.

France, as an example of a country having a relaxed view,

use ““originality” in the sense of creativity, of personal

expression of the author” 43 as the general requirement for

copyright protection. Germany, as an example of a demanding

tradition, has traditionally required “more than just personal

expression in the sense of a human designers touch” 44 from

designs and other categories of works. For designs to be

!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!approach in also suggested by the WIPO Model La won Industrial Deigns of 1970 (Publication No 808 (E), Section 1 (2)).” 41 F. K. Beier “Protection for Spare Parts in the Proposals for a European Design Law” (IIC 1994, 840) 42 H. Bodewing and H. E. Ruijsenaars, “Alternative Protection for Product Designs A Comparative View of German, Benelux and US Law”, (IIC 1992, 643); H.C. Jehoram, “Cumulation of Protection in the EC Design Proposals”; C. Krüger, “Designs Between Copyright and Industrial Property Protection” IIC 1984, 168 43 H. C. Jehoram,!“Cumulation of Protection in the EC Design Proposals” !44 H. C. Jehoram,!“Cumulation of Protection in the EC Design Proposals”

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considered works of copyright have to constitute “art”45 and it is

the role of the judges of the Bundesgerichtshof and the lower

courts to assess the quality of the “piece of work” and determine

whether it can be considered art and therefore entitled to

copyright protection.46

3. Lack of Harmonization of Copyright Laws

Copyright protection is an important form of protection of

designs. It offers a quick, automatic and free of formalities

protection for a long term47. However, the lack of harmonization

of copyright law has proven to be a heavy burden. The laws of

the Member States have been unified in specific areas, but still

major fields have been left intact or only harmonized in certain

degree. The absence of such uniform regulation has brought

national legislations, which diverge among different Member

States. Although the harmonization directives48 have softened

!45 BGH, Urteil vom 22.06.1995 – I ZR 119/93 “Silberdistel”, GRUR 1995, p.581, 582 46 H. C. Jehoram, “Cumulation of Protection in the EC Design Proposals” 47 Under the Urheberrechtsgesetz the term of protection is the life of the autor and another 70 years after death (Urheberrechtsgesetz § 64); when there are several co-authors the term of protection will be of 70 years after the death of the longest surviving co-author (§ 65 (1)); when the work is anonymous or under a pseudonym the term of protection will end 70 years after the publication (§ 66). 48 Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property; Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission; Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights; Directive 96191EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases; Directive 98/71/EC of the European Parliament and of the Council of 13! October 1998 on the legal protection of designs; Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society; Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art; Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights; Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs.

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some differences49 between the laws of the Member States, the

rule of territoriality has remained intact: this means, the

geographic scope of the laws of the Member States coincides

with the national borders. In fact, more than the lack of

harmonization of copyright law, the main struggle is

territoriality. Even if perfect harmonization were achieved, the

exclusivity that a copyright or related right confers on its owner

is strictly limited to the territorial boundaries of the Member

State where the right is granted. Owners of a copyright work

have to obtain the right to make content available in each

Member State.50

The problem of territoriality has several disadvantages. First,

it puts content providers at a competitive disadvantage

compared to the main competitors outside the EU, where

copyright and related rights are harmonized. The territorial

nature of copyright in the European Union causes high

transaction costs for right holders and users. 51 Second, the

territorial nature of copyright, makes it complicated and unclear,

brings uncertainty and, definitely, as a consequence, demotes

internal market.52

!49 Two of the abolitions under the Design Directive and the Community Design Regulation are: First, the rule under Ireland’s and UK’s law which established that there was a link between the entitlement of copyright protection and the number of products to which the design is intended to be applied to. If the number were to be above 50 there would be no copyright protection. Second, the Italian requirement “scindibilità” where copyright protection could only be possible when the work of applied art could be conceptually separated from the product in which the work is embodied. 50 M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault and N. Helberger, “Harmonizing European Copyright Law – The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Volume 19, Chapter 9: “The Last Frontier: Territoriality” 51 N. Pfeifer, “Das Territorialitätsprinzip im Europäischen Gemeinschaftsrecht vor dem Hintergrundder technischen Entwicklungen”. Zeitschrift für Urheber- und Medienrecht, Jg. 50 (2006), Nr. 1, 1-8!!52 M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault and N. Helberger, “Harmonizing European Copyright Law – The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Volume 19, Chapter 9: “The Last Frontier: Territoriality”

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Nevertheless, the lack of harmonization and territoriality of

copyright has its reasons. The critical views point out to price

discrimination and territorial licensing but the fact is that the

raison d’être is cultural, or at least not only economic.

Territoriality preserves local autonomy and protects and

promotes local authors and performers. 53

In the case of infringing proceedings the lack of

harmonization has also presented disadvantages for copyright

owners. Since, contrary with what happens with patents,

trademarks or designs, there is no “European copyright” or

“Community copyright”54 and infringement cases are usually

limited to the territory of the country where the infringement

occurred, the judgement of the court is strictly limited to the

territorial boundaries of the Member State where the judgement

is made. Besides, the exclusivity that a copyright or related right

confers on its owner is strictly limited to the territorial

boundaries of the Member State where the right is granted.

Indeed, infringing copies of a work shall be liable to seizure in

any Member State where the work is entitled of copyright

protection. 55 Still, in order to consider the seizure of the

products, the design must be entitled of copyright protection in

the country where the seizure is being claimed. Due to the lack

of harmonization the owner of the design will once again be in

!53 M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault and N. Helberger, “Harmonizing European Copyright Law – The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Volume 19, Chapter 9: “The Last Frontier: Territoriality”, pg. 310 54 M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault and N. Helberger, “Harmonizing European Copyright Law – The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Volume 19: The author(s) of Chapter 9 have suggested that the only solution to territoriality is to create a European Copyright such as the Community design or the European Patent. The autor(s) of Chapter 9 believe that harmonizing copyright law in the European Union would not finish with the problems with territoriality. 55 Article 16 (1) Berne Convention for the Protection of Literary and Artistic Works of 1886; Article 8 (2) Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.

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disadvantage since it will probably end up in a discussion on

whether it is supposed to be protected by copyright or not.

The Registered Community Design confers on its holder the

exclusive right to use the design and to prevent others the

unauthorized use of it. The enforcement remedies available to

the design holder against an infringer are: (1) an order

prohibiting the defendant from proceeding with the infringing

acts; (2) an order to seize the infringing products; (3) the

issuance of an order to seize the materials and implements

predominantly used in order to manufacture the infringing

products provided the owner knew effect for which such use

was intended or if such effect would have been obvious in the

circumstances. The national courts are mandated to take such

measures under its national law, which would ensure that the

afore-mentioned orders are complied with. The claim for

seizures of infringing products and materials and implements

used to manufacture them is a right under article 89 (1) (b) and

(c) of the Community Design Regulation. It shall be applied

only to infringements of a Community design in all Member

States of the European Union.56

In comparison to the situation of Copyright Law in Europe,

the existing harmonization of Design Right Law in the European

Union is an obvious advantage in terms of transparency,

consistency and legal certainty. However regardless of how

attractive it may seem to many, replacing the numerous

Directives and the 28 national laws on Copyright and related

rights by a single regulatory system and creating a truly

European Copyright has its incongruities. Among others, giving

!56 The Geschmackmustergesetz does not provide this particular remedy. However, under § 43 (2), the holder of the design does have the right to claim destruction, this is the right to demand that the infringer recall the infringing goods and make sure that they are finally withdrawn of distribution.

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the copyright protection a market approach. Perhaps even

protecting producers instead of creators of works.

For the time being, as set out in Recital 8 of the Design

Directive, in the absence of Copyright Law, it is important to

establish the principle of cumulation. “The Design Directive is

at the vanguard of the harmonization of copyright law in the

European Union.”57 Still, regardless of being an essential source

of copyright protection for designs, the problem of the

harmonization of “originality” remains.

C. Situation in Germany

1. National protection of designs

Due to the separate systems of sources for design protection

there are several ways of obtaining protection in Germany. By

applying for a registered German design at the Deutsches

Patent- und Markenamt (DPMA)58, by applying for a Registered

Community Design at the Office of Harmonization of the

Internal Market (OHIM), by applying for an international design

at the World Intellectual Property Organization (WIPO), as an

Unregistered Community Design under the Community Design

Regulation or by copyright protection as a work of applied art.59

The relevant German statutes in the design protection are the

Designgesetz (German Design Act), last amended the 24th of

February 201460, the German Design Regulation, last amended

!57 A. Tischner. “Focus on the Polish Regulation of Copyright and Design Overlap After the Judgement of the Court of Justice in Case 168/09 (Flos v. Semeraro)” IIC 2012, 202 58 German Patent and Trademark Office 59 Urheberrechtsgesetz § 2 (1) 4 60 Designgesetz in der Fassung der Bekanntmachung vom 24. Februar 2014 (BGBI. I S. 122)

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the 2nd of January 201461 and the Urheberrechtsgesetz (German

Copyright Act), last amended the 1st of October 201362.

2. Copyright protection of designs

German copyright law protects 63 literary, scientific and

artistic works if they constitute personal intellectual creations64.

The requirements of a work to constitute such personal

intellectual creations are that it is creative, individual to the

author and original. “Originality” not in the sense of novelty but

in the sense of “coming from someone as the author” in so far as

it reflects the author’s personality. 65 Other than these there are

no other requirements. There are no formal or registration

requirements.

Originally copyright protection in Germany was entitled to

works of “pure” art. Germany drew a line separating the

copyright and the industrial property protection and, of course,

did not approve the cumulation of protection. Still, after the

acceptance of the principle of cumulation of protection,

Germany required an impossible requirement of “heightened

!61 Designverordnung vom 2. Januar 2014 (BGBI. I S.18) 62 Urheberrechtgesetz vom 9. September 1965 (BGBI. I S. 1273), das zuletzt durch Artikel 1 des Gesetzes vom 1. Oktober 2013 (BGBI. I S. 3728) geändert worden ist. 63 German copyright law protects the right holders, under civil and criminal law, from direct and indirect infringement. The third party that infringes an exclusive right, a moral right or a neighboring right protected by the Urheberrechtsgesetz, will be directly liable to the right holder. German copyright law has proven to act very strictly concerning indirect infringement too, this would include; for example, when a person orders pirated goods with a protected design. In Germany, there is not one single court, which hears the majority of copyright infringement cases, as it happens for example with patent infringement proceedings. The local courts, and in some cases the district courts, of the respective states act as specialised copyright courts for the first instance (Urheberrechtsgesetz § 105). 64 Urheberrechtsgesetz §§1, 2(2)!!65 V. Ilzhöfer and R. Engels, Patent-, Marken- und Urheberrecht, Verlag Franz Vahlen München 2010, 8. Auflage, p.1159: “Insoweit wird auch gesprochen von schöpferischer Eigentümlichkeit, Werkhöhe, Schöpfungshöhe, Originalität oder Individualität die Rede.”

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level of originality of the design”66. In order to protect a design

with copyright, the design had to be considered “art”.67 The

German Doctrine speaks of Gestaltungshöhe 68 69 (level of

creativeness). It is used to distinguish works that are sufficiently

original to warrant copyright protection from those that are not.

It also talks about a minimum level of originality, which will be

higher or lower depending on the category of the works.

The attitude in Germany towards copyright protection of

designs as works of applied art and the cumulation of protection

has been quite reluctant. It has not only required from them

creativity, individual character or originality, it has required

“art”. Nevertheless, the recent decision -13th of November 2013-

of the Bundesgerichtshof70, will be a turning point in German

doctrine.71

!66 H. C. Jehoram “Cumulation of Protection in the EC Design Proposals” 67 BGH, Urteil vom 22.06.1995 – I ZR 119/93 “Silberdistel”, GRUR 1995, p.581, 582 68 V. Ilzhöfer und R. Engels, “Patent-, Marken- und Urheberrecht”, Verlag Franz Vahlen München 2010, 8. Auflage, p.1159: “Insoweit wird auch gesprochen von schöpferischer Eigentümlichkeit, Werkhöhe, Schöpfungshöhe, Originalität oder Individualität die Rede.” 69 BGH, Urteil vom 23.01.1981 – I ZR 48/79, “Rollhocker”, GRUR 1981,517 70 German Federal Court 71 BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz eines Geburtstagszuges”, BeckRS 2013, 22507. (III. Eligibility for Protection A. Threshold for copyright protection)!

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III. Eligibility for Protection

A. Threshold for copyright protection

The absence of uniform copyright regulation brought up

national legislations, which diverge among different Member

States. The article 17 of the Design Directive established the

relationship between copyright and design right, providing that

designs protected by a national design registration can also be

eligible for national copyright protection. However, leaving

further determination regarding the criteria of considering a

design entitled of copyright protection to the contracting states.

As already mentioned, the possibility of cumulation of

protection from design right and copyright depends on the

standards of originality required by each Member State. While

in some Member States the originality requirement is quite low

and easily accomplished, like for example in France, where it

has been defined as the “expression of the author’s personality”.

In other Member States the level of originality required is much

higher, so high, that designs are almost excluded from copyright

protection.

In the case of German copyright law the requirement of

protection is that the work constitutes a personal intellectual

creation.72 The work has to be creative, individual to author and

original. However, until a recent decision73, the German courts

have differentiated between two groups of works and has

applied them different standards.

On the one hand, non-utilitarian graphic or pure art that only

required a low degree of creativity and originality. On the other

!72 Urheberrechtsgesetz § 2 (2) 73 BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz eines Geburtstagszuges”, BeckRS 2013, 22507!

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hand, applied art in relation to industrially manufactured and

utilitarian works required “a certain degree of creative content

that lifts it above that which is simply average or simply the

routine work of a craftsman.”74 Although § 2 Abs. 1 of the

Geschmacksmustergesetz75 sets lower conditions for copyright

protection of designs (kleine Münze) than the ones set for works

of applied art on the Urheberrechtsgesetz, the case-law of the

Bundesgerichtshof has established a degree of creativity above

the average. Instead of an average degree of creative content, the

work has to outshine. 76 The work has to comprehend an

individual and intellectual content and will be represented in the

form of the work as a personal intellectual activity.

The decision of the 13th of November 2013 of the

Bundesgerichtshof77, Geburtstagszug (birthday train toy),78 is a

turning point in the eligibility for copyright protection of

designs in Germany. According to the decision, a work of

applied art will be automatically protected by copyright if it

fulfils the same requirements as any other creative work.

Consequently, there is no need anymore for designs to have a

higher aesthetic level. In the sense of §2 I Nr. 4, II of the

Urheberrechtsgesetz, the copyright protection of works of

!74 U. Suthersanen. “Design Law in Europe; an analysis of artistic, industrial and functional designs under copyright, design, unfair competition and utility model laws in Europe”. Sweet & Maxwell, London, 200, 178 75 § 2 Abs. 1 of the Geschmacksmustergesetz requires registered designs novelty and individual character for design protection: “Als eingetragenes Design wird ein Design geschützt, das neu ist und Eigenart hat.” 76 A. Nordemann and F. N. Heise. “Urheberrechtlicher Schutz für Designleistungen in Deutschland und auf europäischer Ebene” (ZUM 2001, 128), 134-135, Berlin/Potsdam: “Obwohl das GeschmMG in § 1 Abs. 2 als »kleine Münze« des Urheberrechts also geringere Anforderungen an die Schutzfähigkeit stellt als das UrhG in § 2 Abs. 2 an Werke der angewandten Kunst, genügt nach der ständigen Rechtsprechung des BGH eine durchschnittliche gestalterische Tätigkeit nicht, um einem Geschmacksmuster zur Schutzfähigkeit zu verhelfen; vielmehr muss auch ein Geschmacksmuster eine überdurchschnittliche Gestaltungsleistung beinhalten, um schutzfähig zu sein”. 77 German Federal Supreme Court 78 BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz eines Geburtstagszuges”, BeckRS 2013, 22507!

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applied art requires the same conditions as to provide copyright

protection to works of fine arts.79 It is therefore enough to

achieve such a threshold of originality80 that experts on art

recognize an artistic performance. However, “a certain degree of

creative content that lifts it above that which is simply

average”81 is no longer required.82

There are no formal requirements for copyright protection

under the German copyright law,83 both for copyright protection

as to facilitate copyright enforcement. This assures the author of

the design an automatic, free of charge and fast protection, upon

creation. Since there is no registration for protection, the

“assessment” of whether the work is indeed entitled of copyright

protection takes place at court and the dispute could end up on

whether the design is supposed to be protected by copyright or

not. Taking into consideration the subjectivity of artistic –or

aesthetic- value as a requirement for copyright protection, there

is no complete certainty that the judge will consider that the

!79 BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz eines Geburtstagszuges”, BeckRS 2013, 22507: “Es erscheint aber im Blick darauf, dass es sich beim Geschmacksmusterrecht nicht mehr um ein wesensgleiches Minus zum Urheberrecht handelt, nicht gerechtfertigt, an den Urheberrechtsschutz von Werken der angewandten Kunst höhere Anforderungen zu stellen als an den Urheberrechtsschutz von Werken der zweckfreien Kunst.” 80 Gestaltungshöhe 81 U. Suthersanen. “Design Law in Europe; an analysis of artistic, industrial and functional designs under copyright, design, unfair competition and utility model laws in Europe”. Sweet & Maxwell, London, 200, 178 82 BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz eines Geburtstagszuges”, BeckRS 2013, 22507, Leitsatz 1: “An den Urheberrechtsschutz von Werken der angewandten Kunst iSv § 2 I Nr. 4, II Urheberrechtsgesetz sind grundsätzlich keine anderen Anforderungen zu stellen als an den Urheberrechtsschutz von Werken der zweckfreien bildenden Kunst oder des literarischen und musikalischen Schaffens. Es genügt daher, dass sie eine Gestaltungshöhe erreichen, die es nach Auffassung der für Kunst empfänglichen und mit Kunstanschauungen einigermaßen vertrauten Kreise rechtfertigt, von einer “künstlerischen” Leistung zu sprechen. Es ist dagegen nicht erforderlich, dass sie die Durchschnittsgestaltung deutlich überragen (Aufgabe von BGH GRUR 1995, 581 _ WRP 1995, 908 – Silberdistel). (amtlicher Leitsatz)” 83 The only register provided by the Urheberrechtsgesetz § 66 is a register of anonymous and pseudonymous works at the German Patent and Trademark Office, which enables the author to benefit from the full term of protection whilst remaining anonymous or under a pseudonym.!!

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design fulfils such requirement. There are no guidelines to

follow when considering the originality of the work. It is the

role of the judges to assess the quality of the work and

determine whether it can be considered art and therefore entitled

to copyright protection. To this respect, under the presumption

that there is a diversity of sensibilities and opinions, the

entitlement of copyright protection can vary on the judge. When

seeking for copyright protection in different Member States,

where judges have different nationalities and traditions, the

uncertainty is even higher.

B. Threshold for Community design protection

The Regulation on Community Designs provides two types

of unitary protection for designs effective in all the Member

States of the European Union. These are the Registered and

Unregistered Community Designs.

A design shall be protected by an unregistered Community

design for a period of three years upon the date when the design

was first made available to the public within the Community

under Article 1(2) (a) 84 “if made available to the public in the

manner provided for in this Regulation”. Article 11 (2) specifies

that a design will be considered to have been made available to

the public within the Community if the disclosing events, in the

normal course business, “could reasonably have become known

to the circles specialised in the sector concerned, operating

within the Community”.

The unregistered Community design protection is useful to

protect designs with a short life, where registration would be too

expensive and time consuming, such as products from the toy

!84 Article 1(2) (a) of the Community Design Regulation

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industry or fashion industry. However, the protection under

article 1 (2) (a) of the Community Design Regulation does not

have to be necessarily limited to those cases.

A design shall be protected by a registered Community

design under article 1(2) (b) “if registered in the manner

provided for in this Regulation”. The term of protection starts

for a period of five years from the date of the filing of the

application. “The right holder may have the term of protection

renewed for one or more periods of five years each, up to a total

term of 25 years from the date of filing.”85

Article 4 (1) of the Regulation establishes that the

requirements for protection of a Community design are that it is

new and has individual character over a prior design. The

Regulation also took care of defining what is to be understood

by “new” and individual character” to leave limited space to

interpretations or how to apply it. Article 5 of the Regulation

provides that “(1) A design shall be considered to be new if no

identical design has been made available to the public: (a) in the

case of an unregistered Community design, before the date on

which the design for which protection is claimed has first been

made available to the public; (b) in the case of a registered

Community design, before the date of filing of the application

for registration of the design for which protection is claimed or,

if priority is claimed, the date of priority. (2) Designs shall be

deemed to be identical if their features differ only in immaterial

details.” 86

!85 Article 12 of the Community Design Regulation!86 A design will be considered new if “no identical design has been made available to the public” before its date of first disclosure –in the case of unregistered Community designs –or its filing date or from the date of priority –in the case of registered Community designs. Nevertheless, article 7(2) of the Community Design Regulation affords a grace period of twelve months. Therefore, the disclosure of the design does not exclude design protection as long as the application is filed within the next twelve months following the date of the disclosure.

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By identical design the Regulation does not mean identical in

its true meaning, but identical in a broader meaning, which

includes designs whose “features differ only in immaterial

details”.87 Opposite to the concept of Gestaltungshöhe88 in the

German copyright protection, there are no degrees of identity,

two designs are either identical or not. In order to assess if a

design is new and has individual character, the design will be

subject of an examination, which compares it to the prior art. A

design will be considered new if no identical design has been

made available to the public before the filing date of the

application for registration or, if priority is claimed, the date of

priority. Designs will be considered identical if their features

only differ in immaterial details. If an identical design exists

there will be no novelty and therefore the registered design will

be invalid. In the novelty examination there will be no novelty

and therefore the registered design will be invalid. A court will

be in charge of determining the identity of two designs.

Contrary to the subjectivity of originality as a requirement for

copyright protection over designs, novelty is an objective test to

be made assessing “the differences on the basis of the overall

appearance of the designs in question.”89 Consequently, under

the Regulation, a design identical to a prior design disclosed to

the public, or that only differ on immaterial details, shall be

!87 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, p. 338: “It has been suggested that the definition of identical in the Regulation and Directive is not the mathemathical or scientific definition of identical (meaning exactly the same), but rather something akin to the definition of idential twins –close but not exact –differing only in inmaterial details. 88 The Gestaltungshohe refers to the level of creativity required under German copyright law, mentioned in III. Eligibility for protection A. Threshold for copyright protection 89 OHIM Board of Appeal decision from 11.08.2009, R- 887/2008-3, Norman Copenhagen ApS v Paton Calvert Housewares

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declared invalid. 90 Nevertheless, the Regulation did not specify

what is to be understood by “immaterial” detail. The Board of

Appeal has concluded that the “immaterial differences” are

“those differences which do not matter”.91

Apart from novelty the Community design must also have

“distinctive character”. The Regulation also provides what is to

be understood by “individual character” on its article 6, “(1) A

design shall be considered to have individual character if the

overall impression92 it produces on the informed user differs

from the overall impression produced on such a user by any

design which has been made available to the public”.93 Article 6

(2) also specifies that in the assessment of the individual

character, “the degree of freedom of the designer in developing

the design shall be taken into consideration”.

The term “informed user” appears repeatedly throughout the

Regulation –it first appears in Recital 14 and again on articles 6

and 10 –however, it does not define the concept. The Court of

Justice of the European Union defined it in the PepsiCo v Grupo

Promer Mon Graphic and OHIM clarifying it referred “not to a

user of average attention, but to a particularly observant one,

!90 OHIM Board of Appeal decision from 02.11.2010, R- 1451/2009-3, Antrax It srl v The Heating Company BVBA 91 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, p. 340: “The Board of Appeal proposed a definition of ‘immaterial’ in Imperial International Ltd v Handl Cookware Limited: [t]he literal meaning of the term suggests that ‘immaterial differences’, as a contrary to ‘material’, are those differences which do not matter.” 92 ‘Overall impression’ in English; ‘L’impression globale in French; ‘Gesamteindruck’ in German; ‘la impression general’ in Spanish and; ‘l’impressione generale’ in Italian. 93 Article 6 (1) of the Community Design Regulation also establishes the date of assessment of the individual character of the Community Design: “(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; (b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.”

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either because of his personal experience or his extensive

knowledge of the sector in question".94

The interpretation of the method of carrying out the

assessment of the individual character has also been

controversial due to the translation of the article 6(1) into the

different languages of the European Union. The doubt

concerning the assessment is whether “the comparison is made

with one earlier design or with a plurality of earlier designs, the

features of which can be combined […]”95. The Recital 14 of the

Regulation has also mislead by saying “The assessment as to

whether a design has individual character should be based on

whether the overall impression produced on an informed

viewing the design clearly differs from that produced on him by

the existing design corpus […]” Clearly, it says that the

assessment of the individual character should be made

comparing the design with the ‘existing design corpus’. In

addition Recital 19 uses the plural form when saying that the

design should possess individual character in comparison with

!94 CJEU, Judgment from 20.10.2011, C-281/10, PepsiCo v Grupo Promer Mon Graphic SA and OHIM, paragraph 53. This definition can also be found in: CJEU, Judgment from 18.10.2012, C-101/11 P and C-102/11 P, José Manuel Baena Grupo SA v OHIM (Personnage assis). Both also clarify: “That concept must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks at issue, and the sectorial expertise.” 95 A. Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 928: “ ‘the over impression produced on such a user by any design which has been made available to the public’; ‘l’impression globale qu’il produit sur l’utilisateur averti diffère de celle que produit sur un tel utilisateur tout dessin ou modèle qui a été divulgué au public’; ‘la impresión general producida por cualquier otro dibujo o modelo que haya sido hecho público’; ‘impressione generale suscitata in tale utilizzatore da qualsiasi disegno o modelo che sia stato divulgato al publicco’ etc. In contrast, the Dutch versión of Article 5 of Directive 98/71 and Article 6(1) CDR makes use of the plural form when referring to the prior art […]”

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other designs. As a result the real intention of the legislator has

brought some misleading interpretations.96

Without regard to the wording or the interpretation of the

provisions, if the individual character of a design could be

frustrated by combining the features of prior designs, it would

be a design which does not even exist the one that would impede

a new design from seeking protection. Even though such design

is not even similar to any of the prior art. Under these

circumstances, innovation and the development of new products

would be discouraged. This is exactly what the Community

Design Regulation does not want.97

However, the Court of Justice of the European Union has

recently taken a position in the issue in the decision of the 19th

of June 2014, Karen Miller Fashions Ltd v Dunnes Stores Ltd.98

According to the decision, article 6 of the Community Design

Regulation must be interpreted as meaning that, “in order for a

design to be considered to have individual character, the overall

impression which that design produces on the informed user

must be different from that produced on such a user not by a

combination of features taken in isolation and drawn from a

number of earlier designs, but by one or more earlier designs,

taken individually”.99 Regarding Recitals 14 and 19 of the

Community Design Regulation the Court held that the preamble

had “[…] no binding legal force and cannot be relied on either

!96 A. Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 927 97 Recital 7 of the Community Design Regulation: “Enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production”. 98 CJEU Judgment from 19.06.2014, C-345/13, “Karen Millen Fashions Ltd v Dunnes Stores Ltd et al” ''!CJEU Judgment from 19.06.2014, C-345/13, “Karen Millen Fashions Ltd v Dunnes Stores Ltd et al”, paragraph 35!

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as a ground for derogating from the actual provisions of the act

in question or for interpreting those provisions in a manner

clearly contrary to their wording.” 100

In other words, a design will have individual character if the

overall impression it produces on the informed user differs from

the overall impression produced on such a user by any design,

which was made available to the public before the filing date of

the application for registration or the priority date claimed.

When assessing the individual character the overall

impression plays the most important role when comparing it to

the prior art. Still, the degree of freedom of the designer will be

taken into consideration. The higher the degree of freedom of

the designer in creating the design in question, the lower

probability that minor differences between the designs in

question will be enough to produce a different overall

impression on an informed user. If the designer’s freedom on

the design is limited, then minor differences between the designs

in question will be enough to produce a different overall

impression on an informed user.101 “Therefore, if the designer

enjoys a high degree of freedom in developing a design, that

reinforces the conclusion that the designs which do not have

significant differences produce the same overall impression on

an informed user”.102 The degree of freedom of the designer can

be limited, for example, by the features imposed by the technical

function of the product or by statutory requirements applicable

!100 CJEU Judgment from 19.06.2014, C-345/13, “Karen Millen Fashions Ltd v Dunnes Stores Ltd et al”, paragraph 31 101 The degree of freedom is translated to German as “Gestaltungsspielräume” and the provision was established in German design law under § 2 III 2 Designgesetz. Some examples of german case-law are: BGH, Urteil vom 28.09.2011 – I ZR 23/10, “Kinderwagen”, GRUR 2012, 575; BGH, Urteil vom 24.03.2011 – I ZR 211/08 “Schreibgeräte”, BeckRS 2011, 24658; OLG Hamburg, Urteil vom 29.08.2012 – 5 U 152/11, “Totenkopfflasche” GRUR-RR 2013, 138 102 GC, Judgement from 09.09.2011, T-10/08, “Kwang Yang Motor Co Ltd v OHIM (internal combustion engine)”, paragraph 33.

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to the product. 103 These limits result in a standardisation of

certain features, which will be considered to be common to the

designs applied to the product concerned. 104

The requirement of individual character has certainly

brought plenty more complications in terms of interpretation

than the requirement of novelty. Since there are many terms

which required further determination in order to assure a

harmonized application of the Regulation and the Directive

among all of the Member States of the European Union. Still, in

comparison with the protection of designs established through

the national level under copyright protection, in the case of the

Community design, the case law of the Court of Justice of the

European Union has formulated numerous guidelines for the

understanding of the requirements of protection of Community

designs and has further defined the concepts of the Regulation,

for a better application of it.

The decision of the Kammergericht, of the 19th November

2004, of the Sea Salt Packaging Sal de Ibiza105, is another clear

example of the profit of relying on the unregistered Community

design protection. In this case, the claimant was the author of

the design, which was made for a proviso the 25th of September

of 2003. The proviso said that in the case the design was used,

they would agree to an additional working fee. Nevertheless, the

product was commercialised with the design without notifying

the author. The Landgericht 106 of Berlin dismissed the

infringement of contract law, design law and copyright law. The

Kammergericht considered that the design did not reach the

required level of creativeness to be protected by German !

103 GC, Judgement from 09.09.2011, T-10/08, “Kwang Yang Motor Co Ltd v OHIM (internal combustion engine)”, paragraph 32. 104 GC, Judgement from 18.03.2010, T-9/07, “Metal rappers”, paragraph 67. 105 KG Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur 2012, 1919!!106 The District Court

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copyright law but recognized that the design did fulfil the

requirements for design protection of articles 5 and 6 (1), since

it was new, it had distinctive character and it had been made

available to the public within the European Union when it was

commercialised by the defendant. Firstly, the Kammergericht

said that the design was to be considered new because there

were no identical designs on the moment it was first made

available to the public in the European Community.107 Secondly,

the court said that in order to assess the individual character of

the design, the overall impression given by the design to an

informed user should be different than the overall impression

given by any other design available to the public.108 Of course,

the court also took into account the degree of freedom of the

designer.109 Consequently, the Kammergericht considered that

the design was protected as an unregistered Community design

and, therefore, there was infringement. Besides, the court set

that the design was made available to the public in accordance

with article 7 (1) of the Community Design Regulation when the

defendant started to commercialise the product with the design

of the plaintiff. The fact that this requirement can be fulfilled

although it is not the designer itself who has made it public

warrants the designer certainty of protection.

!107 KG, Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur 2012, 1919, paragraph 14:!“Ein Geschmacksmuster gilt gemäß Art. 5 GGVO als neu, wenn der Öffentlichkeit kein identisches Geschmacksmuster voerbekannt ist, wovon auszugehen ist, wenn sich ihre Merkmale nur in unwesentlichen Einzelheitenunterscheiden.” 108 KG, Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur 2012, 1919, paragraph 14:! “Darüber hinaus erfordert die ‘Eigenart’ gemäß Art. 6 Abs. 1 GGVO, dass sich der Gesamteindruck, den das Geschmacksmuster beim informierten Benutzer hervorruft, von dem Gesamteindruck unterscheidet, den ein anderes vorbekanntes Geschmacksmuster bei diesem Benutzer hervorruft.” 109 KG, Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur 2012, 1919, paragraph 14: “Je höher die Musterdichte in einer Erzeugerklasse ist, desto geringere Anforderungen dürfen an die Unterschiedbarkeit gestellt werden und umgekehrt (Koschtial, a.a.O., Seite 977).”

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Unregistered Community design protection has proven to be

a useful tool to protect designs, which do not reach the required

level of creativeness and have not been registered as

Community designs. As in copyright, designs may enjoy of a

free of formalities and free of charge protection, as unregistered

Community designs. However, despite the benefits of the

automatic protection of unregistered rights, the registration for a

Community design has important advantages, especially in

terms of evidence of ownership. The design registration is

considered as evidence of ownership over the design. Designs

are treated as objects of property110 and, in the case that it is

transferred, the transferee may invoke all “the rights arising

from the registration of the Community design”111 once entered

in the register. The registration in the name of the transferee is

binding and has effect vis-à-vis third parties in all Member

States112. In the case of unregistered or copyright protection, the

lack of registration may result in the absence of proof as to

ownership and authorship. However, under German copyright

law, the Urheberrechtsgesetz § 10 establishes the presumption

of authorship and ownership, according to which the person

designated as the author on the copies of a released work or on

the original work will be regarded as the author if there is no

proof to the contrary. When the author has not been named the

editor on the copies –or the publisher in case there is no editor-

shall be entitled to assert the rights of the author.113 For this

!110 Title III of the Community Design Regulation: Community Designs as Objects of Property 111 Article 28 of the Community Design Regulation 112 Article 33 Community Design Regulation 113 Urheberrechtsgesetz § 10 “(1) Wer auf den Vervielfältigungsstücken eines erschienenen Werkes oder auf dem Original eines Werkes der bildenden Künste in der üblichen Weise als Urheber bezeichnet ist, wird bis zum Beweis des Gegenteils als Urheber des Werkes angesehen; dies gilt auch für eine Bezeichnung, die als Deckname oder Künstlerzeichen des Urhebers bekannt ist. (2) Ist der Urheber nicht nach Absatz 1 bezeichnet, so wird vermutet, daß derjenige ermächtigt ist, die Rechte des Urhebers geltend zu machen, der auf den Vervielfältigungsstücken des Werkes als Herausgeber bezeichnet ist. Ist kein Herausgeber angegeben, so wird vermutet, daß der Verleger ermächtigt ist.”!

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reason, in order to avoid the entitlement to a third who is not the

author, the author should take care of having proof of the

ownership. This could be some drafts of the work, proof of the

work in progress or sketches.

IV. Scope of protection

A. Copyright protection

1. Moral rights and exploitation rights

The scope of copyright under the Urheberrechtsgesetz

protects “the author in his intellectual and personal relationships

to the work and in respect of the use of the work.”114 Designs

entitled of copyright protection under the German Copyright Act

enjoy a wide range of rights. These rights can be classified into

two types; the moral rights of the author, which protect the

immaterial interests of the author, and the exploitation rights,

which provide material protection. Besides, the

Urheberrechtsgesetz provides “other rights of authors”.

The moral rights of the author include the Right of

publication115, right to be identified as the author116 and the right

to prohibit distortion of the work117. The moral rights protect the

author in his personal and intellectual relation to the own work

providing an inseparable connection between the author and the

work. The author of the work has the right of publication,

including the determination of how and whether to do it at all.

Besides, the author has the right to require his authorship to be

!114 Translation of the first sentence of the Urheberrechtsgesetz § 11. Provided by the Federal Ministry of Justice in cooperation with juris GmbH. 115 Urheberrechtsgesetz § 12 116 Urheberrechtsgesetz §13 117 Urheberrechtsgesetz § 14

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recognised. Finally, the author has the right to prohibit the

“distortion or any other derogatory treatment” of the work,

including after the work was sold.

The German copyright Act provides a long list of exclusive

rights, such as the right of reproduction 118 , right of

distribution119, the right of exhibition120, the right of making the

work available to the public121, the right of broadcasting122 and

the right of resale123. However, some of these rights shall not

apply to works of applied art. The right of resale is a clear

example of an exemption. Another example is in § 17, which

confers the author, the right of distribution of the work. § 17 (2)

specifies that when the original has been brought to the market

by sale with consent of the person entitled to distribute them,

their dissemination will be permitted, except by means of rental.

The exception comes in § 17 (3), where it says that the provision

of “rental” under § 17 (2) will not be applicable to the transfer

of originals or copies of works of applied art.

Perhaps one of the most valuable advantages of protecting

works under copyright is the priceless bond that always remains

between the work and the author. The moral rights of the author

remain in spite of the sale of the work. For example, the author

will still have the right to prohibit the distortion or a derogatory

treatment of the work even when not having the ownership of

the work. In this matter the Urheberrechtsgesetz goes one step

further with § 39 (1) under which the holder of an exploitation

right is not permitted to alter the work, the title or designation of

authorship unless otherwise agreed. Even if the author is

granting the exploitation rights of the copyright work to a third, !

118 Urheberrechtsgesetz § 16 119 Urheberrechtsgesetz §17!120 Urheberrechtsgesetz § 18 121 Urheberrechtsgesetz §19 a 122 Urheberrechtsgesetz § 20 123 Urheberrechtsgesetz § 26!

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the author will still have some sort of power over the work. In

other words, the copyright will always belong to the author. In

fact, as stated in § 29, copyright is not transferrable. The

copyright shall be inheritable, under § 28, and unless it is

“transferred in execution of a testamentary disposition or to co-

heirs as part of the partition of an estate”124 the copyright will

not be transferrable. Sure, the author has the possibility to grant

the exploitation rights, contractual authorizations and

agreements based on exploitation rights. Furthermore, the

contracts on moral rights of the authors shall also be permissible

under Urheberrechtsgesetz § 39 “(1) The holder of an

exploitation shall not be permitted to alter the work, its title or

designation of authorship unless otherwise agreed. (2)

Alterations to the work and its title to which the author cannot

refuse his consent based on the principles of good faith shall be

permissible”.125 Despite of these provisions, the protection given

by copyright to the bond between the work and the author is

very high and particular from copyright law.

2. Abhängige Bearbeitung126 and Freie Benutzung127

Besides, the fact that in the copyright regime there are several

interests at stake defines the scope of protection of copyright

works. On the one hand, the interests of the author, requires

more exclusive rights. On the other hand, the public interest or

individuals that want to use works protected by copyright,

require limiting these exclusive rights. Therefore, in the

copyright law of most countries the lists of rights and the limits

!124 Urheberrechtsgesetz § 29. Translation provided by the Federal Ministry of Justice in cooperation with juris GmbH. 125 Translation provided by the Federal Ministry of Justice in cooperation with juris GmbH. 126 Abhängige Bearbeitung, under Urheberrechtsgesetz § 23, refers to the adaptations and transformations made on the work. (*%!Freie Benutzung, under Urheberrechtsgesetz § 24, refers to the free use of the work.!

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to the exclusive rights come side by side. The

Urheberrechtsgesetz contains several provisions limiting the

scope of rights of the author. The limits to copyright protection

under German copyright law are set on the Urheberrechtsgesetz

§§ 44 (a) ff.128 and aim to bring into balance the rights of

protection of the creator of the work (the author of the work)

and the rights of the people who are interested in the use of the

work. The established limits to copyright protection are to be

understood as a close list and the space left to analogy is

extremely limited.129 The aim of the limits is to achieve the

balance of interests.

It must be taken into account that the limitations on copyright

set on the Urheberrechtsgesetz are based on article 5 of the

Directive 2001/29/EC of the European Parliament and of the

Council of 22 May 2001 on the harmonisation of certain aspects

of copyright and related rights in the information society. When

interpreting the mentioned limits article 5 (5) of the Directive

establishes a Three-Step Test 130 , according to which the

limitations will only be applied (1) in certain special cases,

provided that (2) it does not conflict with a normal exploitation

of the work or other subject-matter and (3) it does not

unreasonably prejudice the legitimate interests of the right

!128 The limits under §§ 44 (a) ff. concern temporary acts of reproduction; administration of justice and public security; persons with disabilities; collections for religious, school or instructional use; public speeches; newspaper articles and broadcast commentaries; reporting on current events; quotations; communication to the public; making works available to the public for instruction and research; communication of works at terminals in public libraries, museums and archives; reproduction for private and other personal uses; order for dispatch of copies; reproduction by broadcasting organisations; use of a database work; reproduction and communication to the public in commercial enterprises; incidental works; works in exhibitions, on public sale and in institutions accessible to the public; works in public places; portraits and; orphan works. 129 BGH, Urteil vom 11.07.2002 – I ZR 255/00, “Elektronischer Pressespiegel”, GRUR 2002, 963, 965 FF. 130 Declaration “A Balanced Interpertration of the Three-Step-Test” in Copyright Law

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holder. The Three-Step Test has been established to prevent the

excessive application of limitations and exceptions.

Besides the limits established in §§ 44 a. ff., the

Urheberrechtsgesetz also establishes some limits of time. Some

rights exhaust after using them, for instance the right of

distribution in § 17, if there is free use under § 24 or to let

access to official works, under § 5.

The right of reproduction of the Urheberrechtsgesetz grants

the author the exclusive right to produce copies of the work.131

Additionally, German copyright law protects the author of a

work from adaptations and transformations of done to the work.

The “abhängige Bearbeitung” refers to adaptations or

transformations of the work, which according to the

Urheberrechtsgesetz shall only be published or exploited with

consent of the author of the adapted or transformed work.

Certainly, the Urheberrechtsgesetz provides the author with a

wide range of rights and protects the author in his intellectual

and personal relationship to the work and the work itself.

Nevertheless, §11 is to be understood in a strict way. It provides

a right of monopoly over one work, but not over any similar

work or work which was inspired on it. In this sense, §24

establishes the freie Benutzung, or free use, which provides that

an independent work created in the free use of the work of

another person may be published and exploited without need of

the consent of the author of the work used. Regardless of

whether the essence of the work “used as inspiration” is still

recognisable in the latter work. The defining characteristics of

the original work will have fade from the new work but may still

be recognisable. The dividing line between “freie Benutzung”

!131 Urheberrechtsgesetz § 16

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and “abhängige Bearbeitung” can sometimes be extremely

thin.

Regarding the differentiation the BGH has established a

method of assessment “Verblassenstheorie”132, according to

which, the free use only takes place when, taking into

consideration the individuality of the new work, the borrowed

personal characteristic of the older work has faded away.

For example in the decision from the 17th of July 2013133 the

BGH accepted the literary figure of Pippi Longstocking as a

literary work since Pippi Longstocking has a distinct personality

due to her unusual external features. A third party used the

image of the literary figure in advertisements without consent of

the copyright owner. Nevertheless, the court considered that

there was no copyright infringement and that the plaintiff had no

right to damages since, although the literary figure was clearly

recognisable on the advertisements, the images only adopted

some of the relevant characteristics of its copyright protection.

Pippi Longstocking has unique personal characteristics with

distinct external features (carrot-coloured hair in braids, a

freckled nose with form of a little potato, a smiley face, yellow

dress etc.) and in the cases where the literary figure remains

recognisable, it is not enough for copyright infringement if the

older work only copies a few selected external features which by

themselves would not have been enough to create copyright

protection for that figure.134

!132 BGH, Urteil vom 20.03.2003 – I ZR 117/00 “Gies-Adler”, GRUR 2003, 956 133 BGH, Urteil vom 17.07.2013 – I ZR 52/12 “Übernahme äußerer Merkmale einer literarischen Figur – Pippi Langstrumpf-Kostüm”, NJW 2014,771 134 BGH, Urteil vom 17.07.2013 – I ZR 52/12 “Übernahme äußerer Merkmale einer literarischen Figur – Pippi Langstrumpf-Kostüm”, NJW 2014,771, Leitsatz 2: “Für die Abgrenzung der verbotenen Übernahme gem. § 23 UrhG von der freien Benutzung im Sinne von § 24 I UrhG kommt es auf die Übereinstimmung im Bereich der objektiven Merkmale an, durch die die schöpferische Eigentümlichkeit des Originals bestimmt wird. Für eine

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3. Earlier intellectual property rights

As earlier mentioned, the “Design Directive is at the

vanguard of the harmonization of copyright law in the European

Union.”135 Both article 11 (2) (b) of the Design Directive and

article 25 (1) (f) of the Community Design Regulation set that

an already registered Community design may be declared

invalid on application to the OHIM “or by a Community design

court on the basis of a counterclaim in infringement

proceedings”136 “if the design constitutes an unauthorised use of

a work protected under the copyright law of a Member State.” In

the case of unregistered Community designs, a Community

design court will declare the invalidity on application to such a

court or on the basis of a counterclaim in infringement

proceedings. 137 The Design Directive pays attention to the

overlapping intellectual property rights once again. Under this

provision, a registered Community design that makes

unauthorised use of a work protected by copyright law in any

country of the European Union shall be held invalid.

In the cases of applying for invalidity under article 25 (1) (f),

due to the lack of harmonization of copyright law in the

European Union, the copyright law applied to consider whether

the earlier work is indeed entitled of copyright protection will be

the one of its own country. Considering that works protected by

copyright law in one Member State of the European Union may

!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!nach § 23 UrhG verbotene Übernahme eines Charakters ist es mithin nicht ausreichend, dass eine Abbildung [...] lediglich einzelne äußere Merkmale der literarischen Figur übernimmt. Diese Elemente mögen zwar die äußere Gestalt der Romanfigur prägen. Sie genügen aber für sich genommen nicht, um den Urheberrechtsschutz an der Figur zu begründen und nehmen daher auch nicht isoliert am Schutz der literarischen Figur teil.” 135 A. Tischner. “Focus on the Polish Regulation of Copyright and Design Overlap After the Judgement of the Court of Justice in Case 168/09 (Flos v. Semeraro)” IIC 2012, 202!136 Article 24 (1) of the Community Design Regulation 137 Article 24 (3) of the Community Design Regulation!

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be different to those from another Member State, the owner of

the copyright work stands in a clear advantage over the owner of

the Community design, if it is from another Member State.

In the recent decision T-556/11 and T-567/11 of Viejo Valle v

OHIM, the General Court of the European Union has made use

of this provision of earlier intellectual property right, holding

invalid two registered Community designs for making

unauthorised use of a work protected by copyright law.138 The

work protected by French copyright law constituted a grooved

decoration on items of crockery. The General Court upheld the

decision of the Board of Appeal at the OHIM considering that

the earlier work had distinctive character and sufficient original

character to be entitled of copyright protection under French

law. Moreover, it held that the work “fell, ‘despite (or because

of) its simplicity’, within the category of intellectual works

capable of reflecting the personality of their author and was

accordingly protected under French copyright law.” 139 The

Board of Appeal found that the protected work was present in

the disputed designs and that it had been “copied – or used –

without permission”. Besides, the Board of Appeal pointed out

that “in order to assess the ground for invalidity, it was not

appropriate to compare the designs at issue as a whole, but only

to determine whether the work protected by copyright was used

in the later designs, that is to determine whether the presence of

that work could be noted in those designs […]”140. The Court

decided that the work was recognisable in the design and

therefore invalidated the design.

!138 GC, Decision from 23.10.2013 – T-566/11 and T-567/11 “Viejo Valle, S.A. v OHIM” 139 GC, Decision from 23.10.2013 – T-566/11 and T-567/11 “Viejo Valle, S.A. v OHIM”, paragraph 88 140 GC, Decision from 23.10.2013 – T-566/11 and T-567/11 “Viejo Valle, S.A. v OHIM”, paragraph.100!

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However, when reading the decision one is lead to believe

that the plaintiff did not have advice from a French attorney. For

example, when the plaintiff stated the “lack of artistic character”

of the work or when the plaintiff incorrectly argued that the

work could not be protected under French copyright law given

that crockery is an industrial product. For this reason, the owner

of the copyright work will stand in a clear advantage over the

owner of the Community design, if the second one is not

familiar enough with the copyright law of the first one. The

court might have reached the same decision but it would have

been harder for the copyright work to invalidate the registered

Community design.

B. Community design protection

1. Rights conferred by the Community design

Designs entitled of Community design protection enjoy of a

wide range of rights. However, we will not find the previously

mentioned rights given by copyright, which protect the author in

his personal and intellectual relation to the own work and

provide an inseparable connection between the author and the

work. Perhaps, this is mainly due to the market-based approach

given to the Community designs. In fact, whilst many rights

over a copyright work still remain after granting exploitation

rights and losing the ownership of the work, the majority of the

rights conferred by the Community design are entitled to the

owner of the design, not to the author of the design. However,

the right of the author of the design under the Community

Design Regulation, which could be compared to the copyright

moral right “recognition of authorship” under § 13

Urheberrechtsgesetz, is the “right of the designer to be cited”

recognized in article 18 of the Regulation.

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The right to the Community design belongs to the “designer

or his successor in title”.141 Yet Paragraph 3 of the article 14 of

the Regulation specifies, “where a design is developed by an

employee in the execution of his duties or following the

instructions given by his employer, the right to the Community

design shall vest in the employer, unless otherwise agreed or

specified under national law.” 142 143 Again, the Regulation

specifies the protection given to the owner of the design.

Both, the registered and the unregistered Community design

enjoy unitary protection in all Member States of the European

Union. The Regulation sets the rights conferred by the

Community design. In this regard the Regulation differentiates

between the rights conferred by a registered Community design

and by an unregistered Community design. On the one hand, the

registered Community design confers its holder the exclusive

right to use the design and prevent any third party of an

unauthorised use of it. On the other hand, the unregistered

Community design confers its holder a more restricted right

since, unlike the registered Community design, the unregistered

Community design only confers its holder the right to prevent

any third party of an unauthorised use of it that results from

copying the protected design. In other words, the scope of

protection of an unregistered Community design includes any

design which does not produce on the informed user a different

overall impression –the same as for registered Community

designs –however, an unregistered Community design only

!141 Article 14 (1) of the Community Design Regulation. 142 Translation provided by the Federal Ministry of Justice in cooperation with juris GmbH. 143 To this regard, the German design law establishes under § 7 (2) Designgesetz that, under the mentioned circumstance, the design will belong to the employer unless otherwise agreed on the contract: “Wird ein Design von einem Arbeitnehmer in Ausübung seiner Aufgaben oder nach den Weisungen seines Arbeitsgebers entworfen, so steht das Recht an dem eingetragenen Design dem Arbeitgeber zu, sofern vertraglich nichts anderes vereinbart wurde.”

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protects against copying. Moreover, it will not be considered

‘copying’ when ‘it results from an independent work of creation

by a designer who may be reasonably thought not to be familiar

with the design […]’. 144 Here we see how the scope of

protection conferred to the unregistered Community design is

slightly narrower and more limited than the one from registered

Community designs.

As earlier mentioned, a registered Community design is

protected for five years from the date of filing and the protection

can be renewed for periods of five years until a maximum

period of twenty-five years. Unregistered protection is granted

for a period of three years from the date of disclosure. Besides,

article 21 of the Regulation also establishes the exhaustion of

rights to products that include a Community design, ‘when the

product has been put on the market in the Community by the

holder of the Community design or with his consent.’

2. The overall impression

The scope of protection of designs under copyright protection

provides the author with a wide range of rights and protects the

author in his intellectual and personal relationship to the work

and the work itself. However, in order to balance the area of the

rights of protection of the author of the work and the area of

rights of the people who are interested in the use of the work,

the copyright protection is subject to many limits which reduce

its scope of protection.

In the case of design law protection, the Community Design

Regulation establishes the scope of protection conferred to the

!144 Article 19 (2) Community Design Regulation

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Community design. According to article 10 of the Regulation145,

the scope of protection “conferred by a Community design shall

include any design, which does not produce on the informed

user a different overall impression.” Again, the Regulation

specifies that when considering the scope of protection of a

design, the degree of freedom of the designer when developing

the design will be taken into account. When considering the

requirement of the individual character of the design, the

Regulation also mentioned the terms informed user, overall

impression and degree of freedom. In fact, the assessment

carried out to determine whether a design fulfils the

requirements for protection under article 4 to 6, is the same as

the assessment carried out to determine whether there has been

infringement.146

As earlier mentioned (III.B.147), a design will have individual

character if the overall impression it produces on the informed

user differs from the overall impression produced on such a user

by any design, which was made available to the public before

the filing date of the application for registration or the priority

date claimed. When assessing the individual character the

overall impression plays the most important role when

comparing it to the prior art. Still, the degree of freedom of the

designer will be taken into consideration. Consequently, in order

to assess whether there is infringement, the overall impression

produced by the supposedly infringed design on the informed

user, shall be compared to the overall impression produced by

the older design. If the overall impression is not different, the

older design will be considered to have infringed the !

145 The Design Directive establishes the scope of protection of the Community design on its article 9. 146 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, pg. 641; Arnaud Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 930 147 III. Eligibility for protection B. Threshold for Community design protection

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Community design. However, the Regulation and Directive do

not define “overall impression” thoroughly. Consequently,

national courts have been adopting different approaches.

There is one important difference between the assessment of

the individual character as a requirement for protection and for

infringement. As already mentioned, both tests require a

different overall impression on the informed user and to this

end, “some distance with the prior art”.148 The difference is that

when examining the validity of the design, all the features of the

design in question are taken individually to make a global

impression that will be compared with the global impression

made by earlier designs. Therefore, when examining the validity

of the design it will be compared looking backwards. When

examining infringement the comparison will be made looking

forward, since the features of the earlier design will be

compared with the features of the supposedly infringing design.

149 When a design has taken some features of a prior design and

has added some of its own, all of the features will be taken into

consideration when assessing the overall impression given by

both designs. Of course, it will have to be taken into

consideration whether the additional features on the latter design

provide enough to the individual character of the design or if

they lack of impact and therefore does not make a different

overall impression when comparing it to the earlier design.150

!148 Arnaud Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 930 149 Arnaud Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 930 150 Arnaud Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 930: “The global examination of the individual character of a design implies that all its visible, non-functional features must be taken into account. If the design and prior art coincide in some features, but there is more in the design tan in the prior art, the examination of individual character will consist in weighning whether the additional features surpass in importance the impact of the common features”.

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This is in some way similar with what happens under German

copyright law, where the entitlement of copyright of a work

depends on its individuality, this is the degree of originality and

the intellectual contribution seen on the work. By this means, a

free use of a work can sometimes be subject of copyright

protection if it reaches individuality and the borrowed personal

characteristic of the older work has faded.151 On the other hand,

if the work fails to reach this individuality, the

Urheberrechtsgesetz referred to the “abhängige Bearbeitung”,

this are adaptations or transformations of the work, which shall

only be published or exploited with consent of the author of the

adapted or transformed work.

Going back to the assessment of the individual character,

when examining the validity all the features of the new design

will be compared with all the features of the earlier design. If all

the features of the new design that constitute its individual

character include the features of the earlier design and additional

features, which “surpass in importance the impact of the

common features”, then the overall impression of the new

design will differ from the earlier design.152 However, what is to

be compared in infringement proceedings has remained unclear

and can lead to different approaches.

An approach is to “compare registration, not product made to

the design”153. In other words, make the assessment between the

design shown in the registration and the allegedly infringing

!151 BGH, Urteil vom 17.07.2013 – I ZR 52/12 “Übernahme äußerer Merkmale einer literarischen Figur – Pippi Langstrumpf-Kostüm”, NJW 2014,771 152 A. Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 930 153 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, p.397

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product.154 “This may involve a comparison between the overall

impression created by a black-and-white line drawing, and the

overall impression created by an actual product.” 155

A different approach156 when assessing for infringement is to

compare the features of the earlier design with the features of

the design complained of. That is to say, the earlier design

“defines what is to be compared” and therefore, “the comparison

must be limited to the features that are subject-matter of the

earlier design right”. 157 If the assessment is to be carried this

way, then the features of the earlier design will be indeed found

in the new design and all the additional features will not be

taken into account. Then, the assessment of validity and the

assessment of infringement would give different results.

According this way of assessment, adding new features would

not avoid infringement.

This was the reasoning used by the High Court and the Court

of Appeal of England and Wales in Procter & Gamble v Reckitt

Benckiser.158 The registered design was the shape of an air

freshener spray can in black and white. The High Court first

established that what is protected depends on what was

!154 Juzgado de lo Mercantil No1 de Alicante, Sentencia del 25.06.2007, 455/2007, “Apple Computer Inc v Diario As Sl”; Juzgado de Marca Comunitaria No 1 de Alicante, Sentencia del 04.12.2007, 152/2007, “L’Oréal SA v Yesensy España SL.” 155 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, pg. 397 “When enforcing an RCD, rights subsist in the design shown in the RCD. It is therefore important to make the assessment between the design shown in the RCD and the allegedly infringing product. This may involve a comparison between the overall impression created by a black-and-white line drawing, and the overall impression created by an actual product.” 156 D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, electronic book, 2012, p. 399: “Compare like with like.” 157 A. Folliard-Monguiral and M. Miniotas, “Apple v Samsung: The Hoge Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol. 8, No. 12, pg. 930-931 158 High Court of Justice Chancery Division Patents Courts, Judgment from 13.12.2006, Case No. HC 06 C00362, “Procter & Gamble Company v Reckitt Benckiser (UK) Limited”.

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registered on the application. “In the case of a monochrome line

drawing, what is protected is likely to be the shape or contours

of the product. Although the definition extends to colours and

materials, if they are not depicted, they will not be protected. By

the same token, if the registered design depicts only part of a

product, it is only that part that will be protected.”159

Article 19 of the Regulation says that the holder of a

registered Community design holds the right to use it and the

right to prevent an unauthorized use of it. Supposing that it

refers to the registered Community design as in the way it was

registered, the question that follows is: with what should this

design be compared to? Should it be compared to the allegedly

infringing product taken as a whole that is taking into

consideration all the features that form its overall impression?

Or should it be compared only to the part of the allegedly

infringing product that corresponds to the registered Community

design? In other words, the doubt is whether the colour and

graphics on the supposedly infringing design matters or if it is

only the shape that matters.160

The judgement decided that “the scope of the registration

limits the elements of the registered Community design entitled

to protection; and one would expect like to be compared with

like.”161 The High Court further argued, “The registration holder

is entitled to choose the level of generality at which his design is

to be considered. If he chooses too general a level, his design

may be invalidated by prior art. If he chooses too specific a level !

159 High Court of Justice Chancery Division Patents Courts, Judgment from 13.12.2006, Case No. HC 06 C00362, “Procter & Gamble Company v Reckitt Benckiser (UK) Limited”, paragraph 27 160 High Court of Justice Chancery Division Patents Courts, Judgment from 13.12.2006, Case No. HC 06 C00362, “Procter & Gamble Company v Reckitt Benckiser (UK) Limited”, paragraph 45 161 High Court of Justice Chancery Division Patents Courts, Judgment from 13.12.2006, Case No. HC 06 C00362, “Procter & Gamble Company v Reckitt Benckiser (UK) Limited”, paragraph 46

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he may not be protected against similar designs. But in my

judgement to allow features that are not the subject-matter of the

registration to play a part in the assessment of the overall

impression would unduly restrict the scope of protection”. 162

If it were to be interpreted like this, the assessment for

infringement has a certain parallelism with the mentioned case

of Viejo Valle, S.A. v OHIM, concerning the relationship to

copyright under article 17 of the Design Directive. The Board of

Appeal found that the protected work was present in the

disputed designs and that it had been “copied – or used –

without permission”. Besides, the Board of Appeal pointed out

that “in order to assess the ground for invalidity, it was not

appropriate to compare the designs at issue as a whole, but only

to determine whether the work protected by copyright was used

in the later designs, that is to determine whether the presence of

that work could be noted in those designs […]”163. The Court

decided that the work was recognisable in the design and

therefore invalidated the design. In the case of the design

approach the scope of protection would not limit itself to the

“appearance” of the protected Community design on the

allegedly infringing design, it would also include the overall

impression produced by the part of the allegedly infringing

product that corresponds to the registered Community design.

Certainly, the scope of protection of a design, in terms of

infringement, is extremely wide. Naturally, it must be taken into

account that if the holder chooses to register a general design, it

may be invalidated by prior art. If he chooses too specific a level

he may not be protected against similar designs.

!162 High Court of Justice Chancery Division Patents Courts, Judgment from 13.12.2006, Case No. HC 06 C00362, “Procter & Gamble Company v Reckitt Benckiser (UK) Limited”, paragraph 48. 163 GC, Judgement from 23.10.2013 – T-566/11 and T-567/11 “Viejo Valle, S.A. v OHIM” P.100!

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V. Conclusions

In order to answer the question “In which cases does

copyright offer less protection than design right?” several

aspects have to be taken into account. First, through my analysis

I have noticed that designs as work of applied art has been

sometimes considered a second-class work and many countries

act strictly when considering their admissibility of copyright

entitlement. It is mainly a cultural issue but it is definitely an

aspect to bear in mind when studying the scope of protection

that a design will have in the different Member States. Second,

the territoriality and the lack of harmonization of copyright laws

bring uncertainty regarding the entitlement of copyright

protection in the different Member States. The third aspect

concerns the requirements for entitlement; the absence of

registration could bring lack of evidence of ownership whilst the

subjectivity of the artistic value brings uncertainty. Besides, the

degree of freedom is not taken into account. Fourth, concerning

the wide range of rights; it provides the longest term of

protection in intellectual property and the moral rights, special

of copyright, protect the author in his personal and intellectual

relation to the own work providing an inseparable connection

between the author and the work. Fifth, the limitations in

copyright aim to bring into balance the rights of protection of

the author of the work and the rights of the people who are

interested in the use of the work. Sixth, an earlier copyright can

declare the invalidity of a Community design.

When the protection begins, both copyright protection and

Community design protection are presumed to be valid. At first,

there is no assessment of the validity of the design seeking for

copyright or Community design protection. However, since the

question of validity might arise throughout the term of

protection of the design, the certainty of being entitled to this

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protection is certainly an advantage.164 Again, the main problem

of seeking copyright protection is the absence of a uniform

copyright regulation. This lack has brought up national

legislations, which diverge among the different Member States.

Despite the principle of cumulation established by the Design

Directive, this problem still remains since the standards of

originality required by each member state. 165 Consequently,

while the national copyright protection will provide protection

in one Member State, the Regulation on Community Design

provides two types of unitary protection for designs effective in

all the Member States of the European Union.

Copyright enjoys an automatic protection upon creation,

without any formal requirements and free of charge. On the one

hand, the Registered Community Design requires an application,

which will be useful especially in terms of evidence of

ownership. On the other hand, the unregistered Community

Design requires for protection that it has been made available to

the public with the Community. However, these requirements

should not suppose a limit for the protection of a design. Yet,

the design must be made available to the public in the manner

provided in the Regulation in order to be protected as an

unregistered Community design and the holder has the burden

of proof. As a consequence, in the case of unregistered or

copyright protection, the lack of registration may result in the

absence of proof as to ownership and authorship and therefore,

as an absence of protection at all.

In Germany the Urheberrechtsgesetz protects works, which

constitute a personal intellectual creation. The work shall be

creative, individual to the author and original. The case law !

164 See Recital 16 of the Community Design Regulation. 165 M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault, N. Helberger,“Harmonizing European Copyright Law–The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Vol.9"

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established that works of applied art required “a certain degree

of creative content that lifts it above that which is simply

average or simply the routine work of a craftsman” and by this

means made it extremely difficult for designs to be entitled of

copyright protection. However, the decision of the 13th

November 2013 of the Bundesgerichtshof in “Geburtstagzug”,

by which a work of applied art will be automatically protected

by copyright if it fulfils the same requirements as any other

creative work, has changed the situation, making copyright

protection more accessible to designs.

Another detail, which, again, weakens the certainty of

copyright, is the subjectivity of artistic value as a requirement

for protection. There is no complete certainty that the judge will

consider that the design fulfils such requirement. The absence of

guidance to follow when considering the originality of the work

and the role of the judges as museum curators assessing the

quality of the work increases the uncertainty.166

On the other hand, the Community design protection requires

novelty and individual character over a prior design. Contrary to

the subjectivity of originality as a requirement, novelty is an

objective test to be made assessing the differences of the design

and the prior art on the basis of the overall appearance of the

designs in question. When seeking for Community design

protection it is important to bear in mind that a too general

design might turn out being invalidated whereas a design with

too many details will provide a small scope of protection.

Another advantage is that the validity of the Community design

will be assessed bearing in mind the degree of freedom of the

designer, having a relaxed approach to designs, which for

!166A. Barbieri and F. Santis, “Copyright Protection of Design: Approach of Italian Courts and Italian Law after ECJ’s Decision in Flos vs Semeraro”, Portolano Cavallo Studio Legale, October 16, 2012

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example, will be applied to products with more functional

features.

Designs entitled of copyright protection enjoy of a wide

range of rights. The moral rights, exclusive from copyright

protection, protect the author in his personal and intellectual

relation to the own work and provide an inseparable connection

between the author and the work. Many rights conferred by

copyright protection remain even after granting exploitation

rights and losing the ownership of the work. While these rights

confer the author of the work a valuable advantage, it also limits

the control of the owner of the work or the holder of exploitation

rights –if different to the author. With regard to registered

Community designs, the majority of the rights conferred are

entitled to the owner of the design, not to the author. Another

advantage of Community design protection is that, since it

confers a unitary protection in all Member States of the

European Union, the holder of the design can enforce the

corresponding rights in all Member States.

Certainly, the national copyright protection provides the

author with a wide range of rights. Nevertheless, §§44a

Urheberrechtsgesetz –based on article 5 of the Directive

2001/29/EC – limits the copyright protection, aiming to bring

into balance the rights of protection of the author of the work

and the rights of the people who are interested in the use of the

work. Besides those limits, the §24 Urheberrechtsgesetz sets the

freie Benutzung or free use of the work, which strictly limits the

scope of protection of copyright. Under this provision, an

independent work created in the free use of the work of another

person may be published and exploited without consent of the

author of the work used, as long as the defining characteristics

of the original work have faded from the new work.

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Regarding Community design protection the situation for

registered and unregistered designs is different. The scope of

protection conferred by a Community design includes any

design, which does not produce on the informed user a different

overall impression. In terms of infringement, the scope of

protection of the registered Community design is wide, since it

not only protects against copying or imitations but goes much

further assessing the overall impression given by the allegedly

infringing design. However, the holder which chooses to

register a general design will enjoy a wide scope of protection,

whilst the holder of a design with many details may not be

protected against similar designs. The situation for unregistered

Community designs is quite similar to the scope of protection

conferred by copyright, since it will only be protected against

copying.

The election of which way of proceeding will provide the

design a wider scope of protection is definitively a struggle of

the Intellectual Property rights. It is difficult to achieve national

copyright protection of designs but, once achieved, it enjoys of a

wide range of rights for the longest term of protection.

Regarding the Community design protection, the efforts

employed during the last years on the harmonization of the

design law in the European Union assure designs protection in

all Member States of the European Union at little cost or free of

charge. Most importantly, design law in the European Union is

succeeding in promoting “the contribution of individual

designer to the sum of Community excellence in the field” and

encouraging “innovation and development of new products and

investment in their products.”167

!167 Recital 7 of the Community Design Regulation says the objectives of the Regulation: “Enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production.”

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BIBLIOGRAPHY

I. Books

1. D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford University Press, First edition 2012, electronic book.

2. V. Ilzhöfer and R. Engels, Patent-, Marken- und Urheberrecht, Verlag Franz Vahlen München 2010, 8. Auflage 2010.

3. U. Loewenheim, “Handbuch des Urheberrechts”, 2. Auflage 2010.

4. M. Rehbinder, “Urheberrecht”, 16. Auflage 2010.

5. S. Zentek, “Designschutz – Fallsammlung zum Schutz Kreativer Leistungen in Europa”, Lelesken Verlag, Auflage 2008.

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7. V. M. Jänich and J. Eichelberger, “Urheber- und Designrecht”, W. Kohlhammer, 2012.

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2. F. K. Beier “Protection for Spare Parts in the Proposals for a European Design Law”

(IIC 1994, 840).

3. S. Clark, “Procter & Gamble loses the scent – P&G v Reckitt Benckiser appeal case”, Copyright World Issue, February 2008, No. 177, pg. 9-11.

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6. M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault and N. Helberger, “Harmonizing European Copyright Law – The Challenges of Better Lawmaking”, Kluwer Law International, Information Law Series, Volume 19, Chapter 9: “The Last Frontier: Territoriality”.

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9. H. Bodewing and H. E. Ruijsenaars, “Alternative Protection for Product Designs A Comparative View of German, Benelux and US Law”, (IIC 1992, 643).

10. H. C. Jehoram “Cumulation of Protection in the EC Design Proposals”.

11. C. Krüger, “Designs Between Copyright and Industrial Property Protection” IIC 1984, 168.

12. Kur, “The Green Paper’s ‘Design Approach – What’s Wrong with it?”, 374 Comments, 1993, 10 EIPR.

13. Kur, Protection of Graphical User Interfaces Under European Design Legislation”, IIC 2003,50.

14. Kur, “The ‘Presentation Right’ – Time to create a New Limitation in Copyrights Laws?” IIC 2000, 308.

15. U. Loewenheim, “Höhere Schutzuntergrenze des Urheberrechts bei Werken der angewandten Kunst?”, GRUR Int 2004, 765.

16. A. Nordemann and F. N. Heise. “Urheberrechtlicher Schutz für Designleistungen in Deutschland und auf europäischer Ebene” (ZUM 2001, 128), 134-135, Berlin/Potsdam.

17. N. Pfeifer, “Das Territorialitätsprinzip im Europäischen Gemeinschaftsrecht vor dem Hintergrundder technischen Entwicklungen”. Zeitschrift für Urheber- und Medienrecht, Jg. 50 (2006), Nr. 1, 1-8.

18. J.H. Reichman, “Legal Hybrids Between the Patent and Copyright Paradigms”.

19. G. Schricker, “Farewell to the level of creativity”, IIC 1995, 41.

20. A. Tischner. “Focus on the Polish Regulation of Copyright and Design Overlap After the Judgement of the Court of Justice in Case 168/09 (Flos v. Semeraro)” IIC 2012, 202.

21. R. Ushiki “Legal Protection of Industrial Designs”, USHIKI International Patent Office.

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III. Legislation

a. International Instruments

1. The Berne Convention for the Protection of Literary and Artistic Works of 1886, 9th of September of 1886, as revised at Berlin on November 13, 1908, then at Rome on June 2, 1928, at Brussels on June 26, 1948, at Stockholm on July 14, 1967, at Paris on July 24, 1971, and as amended on September 28, 1979, S. Treaty Doc. No. 99-27 (1986).

2. Paris Convention for the Protection of Industrial Property, 20th of March of 1883, as revised at Brussels on December 14, 1900, then at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31 1958, at the Stockholm Revision Conference on July 14, 1967 and as amended on September 28, 1979.

3. Hague Agreement Concerning the International Registration of Industrial Designs, June 2, 1934, as last revised at Geneva on July 2, 1999.

4. Agreement on Trade Related Aspects of Intellectual Property Rights, 5th of April of 1994, Marrakesh Agreement establishing the World Trade Organization.

b. European Community Legislation

1. Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

2. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs.

3. Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property.

4. Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission.

5. Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights.

6. Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases.

7. Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

8. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.

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9. Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art.

10. Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

11. Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs.

c. German Legislation

1. Designgesetz in der Fassung der Bekanntmachung vom 24. Februar 2014 (BGBI. I S. 122).

2. Designverordnung vom 2. Januar 2014 (BGBI. I S.18).

3. Urheberrechtgesetz vom 9. September 1965 (BGBI. I S. 1273), das zuletzt durch Artikel 1 des Gesetzes vom 1. Oktober 2013 (BGBI. I S. 3728) geändert worden ist.

IV. Jurisprudence

a. European Community

1. OHIM Board of Appeal decision from 11.08.2009, R- 887/2008-3, Norman Copenhagen ApS v Paton Calvert Housewares.

2. OHIM Board of Appeal decision from 02.11.2010, R- 1451/2009-3, Antrax It srl v The Heating Company BVBA.

3. CJEU, Judgment from 20.10.2011, C-281/10, PepsiCo v Grupo Promer Mon Graphic SA and OHIM.

4. CJEU, Judgment from 18.10.2012, C-101/11 P and C-102/11 P, José Manuel Baena Grupo SA v OHIM (Personnage assis).

5. CJEU decision from 19.06.2014, C-345/13, Karen Millen Fashions Ltd v Dunnes Stores Ltd et al.

6. GC, Judgement from 09.09.2011, T-10/08, Kwang Yang Motor Co Ltd v OHIM (internal combustion engine).

7. GC, Decision from 23.10.2013 – T-566/11 and T-567/11 “Viejo Valle, S.A. v OHIM”.

8. GC, Judgement from 18.03.2010, T-9/07, “Metal rappers”.

9. CJEU, Judgment from 27.01.2011, C-168/09, “Flos SpA v Semeraro Casa e Famiglia SpA”.

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b. Germany

1. KG Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur 2012, 1919.

2. BGH, Urteil vom 11.07.2002 – I ZR 255/00, “Elektronischer Pressespiegel”, GRUR 2002, 963, 965 FF.

3. BGH, Urteil vom 20.03.2003 – I ZR 117/00 “Gies-Adler”, GRUR 2003, 956.

4. BGH, Urteil vom 17.07.2013 – I ZR 52/12 “Übernahme äußerer Merkmale einer literarischen Figur – Pippi Langstrumpf-Kostüm”, NJW 2014,771.

5. BGH, Urteil vom 13.11.2013 – I ZR 143/12 Urheberrechtlicher Schutz eines Geburtstagszuges, BeckRS 2013, 22507.

6. BGH, Urteil vom 22.06.1995 – I ZR 119/93 Silberdistel, GRUR 1995, 581.

7. BGH, Urteil vom 28.09.2011 – I ZR 23/10, “Kinderwagen”, GRUR 2012, 575.

8. BGH, Urteil vom 24.03.2011 – I ZR 211/08 “Schreibgeräte”, BeckRS 2011, 24658.

9. OLG Hamburg, Urteil vom 29.08.2012 – 5 U 152/11, “Totenkopfflasche” GRUR-RR 2013, 138 .

c. Spain

1. Juzgado de lo Mercantil No1 de Alicante, Sentencia del 25.06.2007, 455/2007, “Apple Computer Inc v Diario As Sl”.

2. Juzgado de Marca Comunitaria No 1 de Alicante, Sentencia del 04.12.2007, 152/2007, “L’Oréal SA v Yesensy España SL”.

d. United Kingdom

1. High Court of Justice Chancery Division Patents Courts, Judgment from 13.12.2006, Case No. HC 06 C00362, Procter & Gamble Company v Reckitt Benckiser (UK) Limited.