Design Sits at the Juncture of Intellectual Property Regimes and Unfair Competition – a Conference Recap from the Future of Design Protection

By TAP Guest Blogger

Posted on November 14, 2012

This conference summary is written by Natalie Jones.
On November 2-3, 2012, the Center for Intellectual Property Research at the Indiana University Maurer School of Law and the Oxford Intellectual Property Research Centre at the University of Oxford co-hosted a conference in Oxford on The Future of Design Protection. This international conference brought together the world’s leading scholars, practitioners, judges, industry representatives, and government officials on design protection law.
Prof. Graeme B. Dinwoodie began the conference by stating that from a business perspective, design is becoming increasingly important. If businesses are interested in this issue, then lawyers are, and if lawyers are interested, so are policy makers. Design sits at the juncture of other intellectual property regimes, including patents, copyrights, trademarks, and unfair competition. Examining design rights then, “gives you a window into a lot of issues that prevail the intellectual property system,” Dinwoodie said.
The first panel dealt with the current state and future of hybrid design protection systems, particularly the registered and unregistered design rights of the United Kingdom and Europe. Prof. Estelle Derclaye examined the decisions in the UK for UK registered design rights, UK unregistered design rights, Community registered design rights, and Community unregistered design rights. She concluded that, “both registered and unregistered rights seem well alive. The only one which does not seem as alive is the CUDR – at least as far as statistics from litigation can give a flavour of what the real picture is.” David Gerk, Office of Policy & External Affairs at the USPTO, gave some insight into the future of design law in the U.S., noting in particular the increased interest in design protection. He mentioned the recent Apple v. Samsung litigation, as well as the statistic that the most active USPTO class in the past year is the one that includes graphical user interfaces.
The second panel, entitled “Industry Perspectives on Design Protection in the High Technology Sector,” featured comments from Andrew Sanders of Microsoft Corp. and Wenyu Zhou of Huawei Technologies Co. Sanders stressed the increasing importance of software user interface and design protection for graphical user interfaces due to our society’s “virtual migration” to more machines with display screens.
The third panel explored the different subject matter of design rights, and many of the panelists offered their perspectives on how to protect graphical user interfaces. Bing Wang, Robert Katz, and Annette Kur each discussed the strategies, limitations, and pitfalls of different design protection schemes to protect GUIs or the user experience of a product. Wang concluded that the nature of GUIs “is so complicated that it cannot be coordinated well with the present statutory matters of intellectual property.” He suggested that the intellectual property community needs to accumulate more experience and depth in the understanding of its jurisprudence and gradually discover a class of statutory subject matter of intellectual property that is realistically suitable for GUIs.
The fourth panel, entitled “Design Rights and Other Forms of Protection: Cumulation of Rights,” looked at overlapping rights, focusing much on the overlap between design right protection and copyright protection. Sir Richard Arnold, High Court of England & Wales, argued that it might be worth trying to simplify Section 51 to keep UK copyright law out of the industrial design field. Chris Carani delved into the idea of “evergreening” IP rights in the U.S. and the idea that the “right to copy” is a fallacy. When a patent expires a limited monopoly is lifted, but expiration does not equal an affirmative right to copy because of the other IP rights that might be involved in the product.
The final panel focused on the scope of design rights. Both Perry Saidman and Sarah Burnstein agreed that the scope of design protection in the U.S. is very narrow. Burnstein asked whether the U.S. should protect designs using a copyright-like sui generis system. Understanding that some believe that a copyright-like system would provide narrower or weaker protection than design patents, Burnstein felt that more research and discussion was needed.
Written by Natalie Jones, J.D. Candidate 2013.