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Monday, 31 August 2015

Letter from Japan 3: Copyright and industrial design: trapped in the Tripp Trapp ...

Here's the third in the series of occasional guest posts from Japan from one-time guest Kat and Class 46 trade mark blogger Laetitia Lagarde.  Laetitia's first post, on product placement, can be read here. and her second post, covering non-traditional marks, is here.  Now she looks at the copyright/design interface:

Copyright does not enjoy the same degree of harmonization throughout EU as trade mark and design laws do;  the intersection of these rights is nonetheless very common and a product's protection can  fall within one or more IP right category.

At the EU level, the interaction between copyright and design is found in Article 17 of the Designs Directive 98/71, “Relationship to copyright":

"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 that 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”.

As a result, the cumulative protection by both copyright and design laws differs greatly among the EU countries according to their standard of originality  —which is higher than the requirements of “individual character” for design protection.

For example, France and Benelux Countries have recognized the principle of “unité de l’art,” meaning that copyright protection for both applied art and industrial works shall be determined under the same criteria. However Germany has a very high threshold which excludes most designs from copyright protection; the UK requires a level of "artistic craftsmanship"; and Italy only protects designs which can be separated from the product to which they are applied (the principle of "scindibilita").

This Kat remembers fondly her previous home jurisdiction’s internal conflict, yet passionate debate (in the case of Italy, the word “passionate” is something of an inderstatement) about protecting luxury furniture designs; this caused a delay in implementing the EU directive which granted design, prototypes and patents for, among others, furniture and home accessories the same copyright protection as other artistic works. (see here). The underlying reasons for trying to exclude this double protection were not only to avoid copyright protection continuing after the lapse of registered rights, but also to encourage design registration.

Now turning to Japan, the majority of court precedents have ruled implicitly or explicitly that copyright is not denied by the mere fact that a work is an industrial product. The Design Act protects exclusively registered designs defined as “the shape, patterns or colours, or any combination of them, of an article which creates an aesthetic impression through the eye” as long as it does not fall under the category of unregistrable designs. The Copyright Act explicitly states that works of artistic craftsmanship are protected as artistic works. However, there are no provisions governing other types of industrial products (works of applied art). Therefore a decision on whether a certain product is protected is a matter of interpretation.  Court decisions basically recognize it is not appropriate to grant the same level of copyright protection to industrial products as in the case of fine arts. Accordingly copyright protection is granted to an industrial product only if it is “deemed comparable to fine arts or it has the qualities of fine arts”. In practice, only a very limited number of industrial products can satisfy the requirements for copyright protection. 
A decision on whether “it is deemed comparable to fine arts” or “it has the qualities of fine arts” is made on the basis of (1) whether the work has a high level of aesthetic expression or artistic qualities; (2) whether it is produced only in pursuit of aesthetic expression, (3) without substantial restrictions for practical purposes; and (4) whether it can serve as an object of art, or a complete artistic work, apart from its functionality.

Tripp Trapp
With that background, the IP High Court of Japan recently issued a Judgment (Stokke v Katoji, Intellectual Property High Court, April 14, 2015, Hei 26 (ne) No. 10063) which recognized the copyright in an industrial design, namely for the TRIPP TRAPP children’s chair (Stokke has known some IP trials and tribulations for the same chair in Europe, see here). The High Court reversed the lower court Judgment of the Tokyo District Court (here), which denied copyright protection for industrial designs, in particular 3D designs. The Appeal Court held that “there is no reasonable reason to limit a finding of copyright protection for applied arts on the ground of a protection by Design Law”, thereby considerably lowering the threshold for copyright protection for applied arts where a finding of originality under the Copyright Act would be sufficient.

Katoji NewYorkBaby
In conclusion however, the Stokke decision denied copyright infringement because the Katoji products were not similar to those of TRIPP TRAPP. This recent Tokyo Court decision thus allows copyright holders to sue for copyright infringement even in the absence of design registration under the Design Law. This will facilitate the enforcement of the Unfair Competition Prevention Act, which prohibits for example the production of slavish copies of a product design for three years from the first sale in Japan. Japanese practitioners are wondering whether Stokke will become a predominant trend for future similar cases.



Stokke AS is also the holder of trade mark rights relating to the chair. The slogan “The chair that grows with the child” has been used in the marketing of the Tripp Trapp chair since the 1980s. Looks like IP rights also grow with the chair in Japan...
Philosophy on designs from Japanese schoolchildren here
Designs for cat trees and chairs  here (some might be worthy of copyright protection)

1 comment:

Mark Schweizer said...

"However Germany has a very high threshold which excludes most designs from copyright protection": since the "birthday train" decision of the BGH (http://ipkitten.blogspot.ch/2013/11/bgh-abandons-distinction-between-works.html), that is no longer the case (it is worth keeping in mind, though, that despite plaintiff's victory before the BGH in the "birthday train" decision, the train was ultimately judged not to be a work in the sense of copyright law by the OLG Schleswig-Holstein, http://openjur.de/u/728647.html).

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