Written by: Daniel Armstrong
How difficult should it be to protect design? It’s a common enough notion: risk-takers and innovators want to be rewarded for creative solutions and designs, but in order to reap the benefits of their labor, the intellectual property they’ve created needs to be protected from copying.
The problem in the US: Many criticize the legal framework in the United States as providing inadequate protection to its designers, and warn that this protection deficit leaves designers feeling less motivated to enter the startup world in the first place. Those critics point to the European Union as an example of how the United States should reform its intellectual property protection framework.
Critics of the US legal framework have three primary complaints: First, the functionality doctrine—which prohibits protection of copyright works, trade dress, or patents that are simply functional, in order to avoid anticompetitive marketplace effects that would result from enforcement—is limiting the scope of design protection. Second, this diminished protection results in lower profits to designers and reduced drive for the public to innovate. Third, the costs and time needed to acquire protection make it harder for new designers and brands to stay ahead of the game, especially in rapidly moving industries like fashion.
In an effort to avoid these same complaints, the EU has implemented a single, independent regime for protecting design outside of the trademark, copyright and patent realms. The uniform system that is now in place is seen by many to be the ideal model for providing design protection, and from a distance appears to have solved those functionality, diminished protection, and cost and time complaints.
How it works: The EU system offers two varieties for protection: registered and unregistered. “Designs are automatically protected at the time of their public release under the Unregistered Community Design (UCD). However, UCD protection lasts just three years from the date of the design‘s first disclosure in the EU, and only provides protection against intentional copying. A Registered Community Design (RCD) is renewable up to twenty-five years from the date of filing and provides protection from both intentional and good-faith infringement.” [1] One major benefit to this system is uniform application throughout all EU member states, resulting in clarity as to what designs are protectable subject matter. Additionally, because designs are automatically protected by the UCD at the time of their public release, less-established designers in fast moving industries don’t have to worry about the prolonged time or cost it takes to acquire exclusionary rights to their designs.
On the surface, the Europeans appear to have achieved something that the Americans have not—a uniform system that has removed the effects of varying standards; is cost and time efficient; and whose empirical evidence suggests an increase in innovation and investment to boot. But is it time for the US to consider taking a page from the EU’s book? I don’t think so.
A look deeper into the EU legal framework suggests that inconsistencies have resulted over time among the varying jurisdictions. “Each court is meant to apply the uniform EU law; however, each jurisdiction has its own body of developed case law which guides its application, as well as residual notions of design rights from pre-existing national design regimes.” [1] This leads to one significant downside of the European way. The US, in contrast, enforces design rights in a uniform fashion, nationwide. The result is far fewer inconsistencies.
Additionally, the US framework offers a broader level of protection. Although under the US legal regime it is harder for a designer to obtain exclusionary rights in the first place, once those rights have been obtained, the designer can potentially enforce those rights against any person or corporation who merely designs something similar. In the EU, however, the designer will need to show exact copying before finding infringement, a standard that did not serve Apple, Inc. well in protecting its user interface from a Samsung infringement in the United Kingdom. That same case was tried in the US, and came out in favor of Apple, Inc. It goes to show that although the US system maintains a more rigorous application process, the protection granted is greater upon application than what can be expected from the EU. A regime that only requires a minimal showing of innovation before granting exclusionary rights is simply not going to be able to offer the same level of protection as the current US system.
Even from a psychological standpoint, empirical evidence exists that shows “setting such high standards does result in a psychological drive to meet those higher standards, and thus in larger innovative steps.” [1] From a substantive, procedural, and apparently even a psychological standpoint, the US framework, although incongruous and often times rigorous, is still the one to beat.
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[1] http://jipel.law.nyu.edu/vol-5-no-1-1-diamond/
[2] Apple, Inc. v. Samsung Elecs. Co., Ltd., 786 F.3d 983 (Fed. Cir. 2015)
