Ten examples

Ten examples, ten valuable lessons about intellectual property that can by learnt from the likes of Apple, Levis and Dyson

Lesson 1: Even the smallest features of design projects can be protected

Apple Computer (2004)
A computer icon was held by the UK Court to be eligible for protection as a design (and therefore protectable under law by its owner), even though the icon only appeared when the computer was turned on and was not visible when the computer was purchased.

Lesson 2: Intellectual property holders can have significant control over prices and sales channels in separate markets

Levi's, Silhouette (2002)

• Tesco was found to have infringed Levi's trade mark by importing 501 jeans cheaply from countries outside the EU and selling them in the UK for cheaper prices than official Levi's outlets.
• The glasses designer Silhouette was able to stop another company selling superseded versions of their designer spectacles, sourced from Eastern Europe, in the EU.

European law prevents designs and rights holders from restricting sales within one EU country of goods they have placed on the market in another EU country. They can, however, exercise intellectual property to prevent their products being re-imported into the EU from outside.

Dyson (2001)
The vacuum-cleaner designer took legal action against Hoover after Hoover launched its 'Vortex' vacuum cleaner using a process similar to Dyson's dual cyclone vacuum cleaner. Hoover was found to have infringed Dyson's patent and Dyson has received substantial damages for the impact of the infringing Hoover machine on the sales of Dyson vacuum cleaners. Hoover received an injunction preventing it from using Dyson's technology, even after expiry of the patent.

Lesson 4: Make sure that it’s clear from the outset how IP will be owned and shared

Geoffrey Apps v Weldtite Products Limited (2000)
A cycling expert was commissioned by a supplier of bicycle stabilisers to help review and update its range. After designing a stabiliser that was later used by the supplier, the cycle expert tried to recover damages for infringement of his design. Since he had been commissioned by the supplier, the supplier was the rightful owner of the design and the commercial benefits arising from it. Parties commissioned to create designs (ie three-dimensional articles) will cede ownership to the commissioner unless it is agreed otherwise. 

Lesson 5: Before entering into lengthy legal proceedings consider whether your product is truly original and not just an obvious improvement to an existing product

SEB SA v De'Longhi (2003)
SEB made a claim against De'Longhi for infringement of its patent relating to safer and more energy-efficient deep-fat fryers. It was held that there was potentially infringement since all the features of the patent were present in De'Longhi's fryers. It was, however, also held that SEB's product did not constitute an invention warranting patent protection.

The court looked at 'common general knowledge' and decided the use of plastic skirts on the fryers would have been obvious to a skilled person. Although the invention had technical merit, that alone was insufficient and because the invention was obvious, the patent was invalid and the infringement claim failed. A common (almost universal) defence to infringement proceedings is to allege that the right asserted is invalid, and potential litigants should bear in mind that taking action brings with it the risk of losing key rights.

Rem Koolhaas (2001)
Architect Rem Koolhaas was commissioned to design the Kunsthal in Rotterdam in the late 1980s. A member of his staff, recently graduated, had previously produced certain plans as part of a student project. He alleged that Koolhaas's design of the Kunsthal infringed copyright of those plans in 52 ways. Expert evidence was provided in court, pointing out similarities. The court rejected the claim as 'pure and preposterous fantasy'.  

Ultraframe (2002)
The Ultraframe case looked at the status of designs created by an owner/founder of a business. The designs in issue were for the 'Quickfit' conservatory roof construction system.

The relevant designer/director evidently intended that the designs should be owned by himself. The court held, however, that the fact that work was carried out on the company's time and using its equipment pointed to an 'employee' relationship, under which design right in the Quickfit system belonged to the company and not to the individual.

R Griggs Group (2003)
Griggs, the Dr Marten Boots maker, indirectly commissioned a designer to produce a new logo. IP ownership was not satisfactorily dealt with by contract. A dispute arose over the amount of payment the job was worth and the designer claimed that he still owned copyright in what he had created. The court disagreed holding that in the circumstances Griggs should be considered beneficial owner of the copyright. 

L Woolley Jewellers (2002)
Woolley designed a pendant which it alleged had been copied. Two of the elements of the design were a bail with the central portion cut out in the shape of a heart, and a decorative edge consisting of a repeating heart motif. In infringement proceedings the court held that the heart motif was not original and was commonplace. To that extent, therefore, the design was not protectable. The bail itself was held to be original and the combination of the bail and the heart motif made the whole article original and not commonplace, and therefore capable of protection.

This case also highlights the way that the copying of a work protected by a design right is assessed in court. The Court of Appeal said that it should be judged whether the 'design taken as a whole' (i.e. the bail and the motif) had been copied. The test of whether a 'substantial part' had been copied (i.e. that applied to copyright works) was not appropriate to design right.  

IPC Media v Highbury Leisure Publishing (2004)
IPC commenced proceedings in respect of their publication 'Ideal Home' against Highbury for copyright infringement in its publication 'Home'. It was argued that features of the design of 'Ideal Home' as well as feature concepts had been unlawfully copied. The claim failed on the grounds that the similarities found in Highbury's magazine originated from "bog standard" industry design elements common to the trade, rather than unlawful copying of IPC's work.