Intellectual property is the oil of the 21st century. This quote by the English businessman Mark Getty on designers’ and companies’ rights to their designs and products underscores the crucial importance of the topic of the conference Udfordringer for designbeskyttelsen i det 21. århundrede (Challenges for Design Protection in the 21st Century). The conference, which was held at The Danish Design School on 14 May 2009, aimed to shed light on the relations between design and law and to demonstrate the essential importance of law for the design profession and for society at large.

By Hans Emborg Bünemann

“The need to focus more on legal issues increases with the complexity of the design process and of the cooperation relations,” said the rector of The Danish Design School, Peter Bysted, when he officially opened the conference on design and law.
“When it isn’t crystal clear what constitutes the design aspect of a partnership, it is crucial to establish legally binding agreements from the outset.”

Design Protection Acts as an Incentive for Innovation

Design protection legislation revolves around free competition and the right to make copies. An appropriate measure of protection, however, has benefits for society, because it acts as an incentive for innovation and creativity, says Clement Salung Petersen, an assistant professor at the Faculty of Law, University of Copenhagen.
“If the protection is too strong, it inhibits production and the development of new design. It’s not in society’s interest for a furniture company such as Fritz Hansen to earn the exclusive rights to produce all types of shell chairs. However, protection can also be too weak. If other furniture manufacturers were able to make money on freely copying Arne Jacobsen’s Series 7 and Ant chairs, Fritz Hansen would have no incentive,” says Clement Salung Petersen.

Shell chairs. In 2002, furniture manufacturer Fritz Hansen lost a case concerning plagiary of the Ant chair (right), as the Danish Supreme Court found that the Jackpot chair (left) was not similar enough to the Ant to constitute a violation of Fritz Hansen’s copyright to the Ant. Source: Ugeskrift for Retsvæsen 2002, p. 1715.

He emphasises the need to consider the designer’s and producer’s needs on the one hand and the needs of the competitors and the rest of society on the other. He also points out that the limits of design protection are constantly tested in the judicial system.

Designers Must Be Familiar with Legal Terms

At the conference, Mikal Hallstrup, Chief Visionary Officer in the design firm Designit, also emphasised that the creative industry needs to develop a better grasp of the legal terms of design protection such as the concept of commercial distinguishability. According to the Danish Marketing Practices Act, copying is permitted unless the original product has a distinguishing characteristic that earns it protection, a feature that makes it commercially distinguishable. Similarly, the Danish Copyright Act protects literary and artistic works that possess originality, while the Danish Designs Act protects designs that are new and have an individual character. Mikal Hallstrup believes that knowledge of these terms will help designers determine when their products are protected, and when they stray too close to their sources of inspiration.

Protection of Immaterial Designs

Mikal Hallstrup also pointed out that “the concept of design is currently developing at break-neck speed with the inclusion of various forms of immaterial design.” Consequently, one of the future challenges of design law will be the protection of concepts such as service design, strategic design and other services.

Lone Frosch, a section chief in the Danish Patent and Trademark Office, called for a revision of the Designs Act from 2001, which has clearly sprung from a production society, not from an experience economy with its immaterial design products. The act defines design as “the appearance of a product or part of a product resultant from the features of the product and its ornamentation, in particular the lines, contours, colours, shape, texture or material” (Section 2). 

Inspiration or plagiary? In a case from 2007 concerning a copy of the Burberry umbrella (top left), the Maritime and Commercial Court found that there is “such a degree of similarity between the pattern of umbrella No. 1 [top right - ed.] and the Burberry brand that an ordinary, attentive consumer may risk confusing the two.” The court ordered the manufacturing company Hemogram A/S to have 385 type 1 umbrellas destroyed. As for types 2 and 3 (bottom left and right), however, the court found the similarity with the Burberry brand to be so limited that Burberry Ltd.’s claim for a court order to stop production and sales was overturned. Source: http://domstol.fe1.tangora.com/ref.aspx?s=-300011&id=14136&pageid=16692

Who Decides in Court?

The speakers at the conference all agreed that Intellectual Property Rights (IPR) are increasingly important in the design profession. One important question is who makes the determination in court, for example in assessing whether a design enjoys legal protection, and whether the design rights have been violated. In cases heard by the courts, the design aspects are generally determined on the basis of expert testimony. Danish Supreme Court Justice Jens Peter Christensen noted that the court – which in Denmark normally consists exclusively of legal professionals – attributes considerable weight to this testimony.
“Of course, in the end, the judges decide, but they rely largely on expert testimony. They are generalists, after all, and have no specialised professional insight, so what else can they do?” he asked rhetorically.

The advantage of this practice is that by appointing designers as expert witnesses, the courts include the professional expertise that the legal judges do not possess. The risk, however, according to Clement Salung Petersen, is that expert testimony may be biased by the expert’s subjective perception of what should be protected, and how broad-ranging the protection should be. That is not always clear to the judges, as the expert is normally the only professional to make a statement on design issues in court. Clement Salung Petersen points to an additional inherent problem in the use of expert witness. He says,
“When a case is appealed to the next tier of the judicial system, it undergoes new legal assessment. But the hearing does not normally involve a new expert assessment. That violates the principle of securing the right to an appeal.”

Professional Expertise Is Lost

However, not all courts consist exclusively of legal professionals. Thus, cases before the Maritime and Commercial Court in Copenhagen are typically heard by three judges, only one of whom is a legal professional, while the two others are lay judges with in-depth, practical knowledge of the subject area addressed in the case. So far, most cases about the protection and violation of design rights have fallen under the jurisdiction of the Maritime and Commercial Court, which has consequently developed considerable experience with this case area.

As part of an extensive judicial reform, this system underwent substantial changes in 2007. A parliamentary majority decided that most of these cases should now be heard by one of Denmark’s 24 district courts instead of the Maritime and Commercial Court. In the district court, cases are typically heard by only one judge, who is a legal professional, since in practice the district courts do not use the formal possibility of involving lay judges. Clement Salung Petersen sees some drawbacks to this change.

“On a daily basis, the district court judges deal with all sorts of issues, from foreclosures to criminal cases. By distributing plagiary cases among the country’s 24 district courts, the knowledge and experience that the Maritime and Commercial Court has developed over many years is lost,” he says. He adds, though, that it is still too early to determine the actual impact of the judicial reform on the area.

The conference Udfordringer for designbeskyttelsen i det 21. århundrede (Challenges for Design Protection in the 21st Century) was arranged by Assistant Professor Stina Teilmann from The Danish Design School in collaboration with Associate Professor Morten Rosenmeier and Assistant Professor Clement Salung Petersen, both from the Centre for Studies in Legal Culture at the Faculty of Law, University of Copenhagen. The conference received economic support from Dreyer’s Foundation.

Cover picture: The Burberry umbrella. Source: http://domstol.fe1.tangora.com/ref.aspx?s=-300011&id=14136&pageid=16692

Mind Design #20, 2009