History of Design and Design Law: An International and Interdisciplinary Perspective 9811687811, 9789811687815

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Tsukasa Aso Christoph Rademacher Jonathan Dobinson Editors

History of Design and Design Law An International and Interdisciplinary Perspective

History of Design and Design Law

Tsukasa Aso · Christoph Rademacher · Jonathan Dobinson Editors

History of Design and Design Law An International and Interdisciplinary Perspective

Editors Tsukasa Aso Faculty of Design Kyushu University Fukuoka, Japan

Christoph Rademacher School of Law Waseda University Tokyo, Japan

Jonathan Dobinson Research Center for the Legal System of Intellectual Property Waseda University Tokyo, Japan

ISBN 978-981-16-8781-5 ISBN 978-981-16-8782-2 (eBook) https://doi.org/10.1007/978-981-16-8782-2 © The Editor(s) (if applicable) and The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 This work is subject to copyright. All rights are solely and exclusively licensed by the Publisher, whether the whole or part of the material is concerned, specifically the rights of translation, reprinting, reuse of illustrations, recitation, broadcasting, reproduction on microfilms or in any other physical way, and transmission or information storage and retrieval, electronic adaptation, computer software, or by similar or dissimilar methodology now known or hereafter developed. The use of general descriptive names, registered names, trademarks, service marks, etc. in this publication does not imply, even in the absence of a specific statement, that such names are exempt from the relevant protective laws and regulations and therefore free for general use. The publisher, the authors and the editors are safe to assume that the advice and information in this book are believed to be true and accurate at the date of publication. Neither the publisher nor the authors or the editors give a warranty, expressed or implied, with respect to the material contained herein or for any errors or omissions that may have been made. The publisher remains neutral with regard to jurisdictional claims in published maps and institutional affiliations. This Springer imprint is published by the registered company Springer Nature Singapore Pte Ltd. The registered company address is: 152 Beach Road, #21-01/04 Gateway East, Singapore 189721, Singapore

Preface

Design continues to evolve and become more global and diverse. Today, design can include traditional industrial designs for products such as cars, home appliances and furniture; designs that have developed with digital technology, such as screen and application designs; as well as practices beyond the creation of a product. Around the world, designs are protected by a range of laws, including design law, copyright law, unfair competition prevention law and civil law. Design has changed over time. National design protection laws have tended to develop along with those changes and in response to the specific characteristics of a nation’s designs and industries, and a range of other factors. It is therefore impossible to truly grasp the development of a nation’s design protection system by simply tracing its legal history. This is further complicated when one considers how the designs and laws of many countries have been influenced by the approach of neighboring countries, influential nations or colonial powers and are now increasingly shaped by global factors and considerations. It is surprising, then, to date, there has been no study on the history of design and design protection systems, across a number of countries, from the perspectives of both legal history and design history, that takes account of the relationship between the two histories. The key purpose of this book is to provide a comparative and interdisciplinary study of the development of design and design protection systems. This unique approach helps explain why and how design and design laws have developed, including at the national, regional and global levels. The book also serves as a survey of different national policies and legal responses to historical developments and specific design and legal issues—allowing readers to consider their various advantages and disadvantages. The book covers Asia (Japan, Korea, China, Singapore); Europe (UK, Germany, France, Italy, the Nordic countries (Denmark, Finland, Iceland, Norway and Sweden), Russia); the USA; Brazil and Australia. Each country is the subject of two chapters— one on the history of design and the other on the history of design laws—authored

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by researchers and renowned experts in the fields of design, design history, law and intellectual property (IP) law. Topics addressed include the history of the subject matter of design protection; the requirements for design protection; design registration; infringement provisions; the overlap of design rights and other IP rights; and secret design (or deferred publication) systems. The chapters on design history provide further context to the historical development of these legal concepts by considering major design movements, key designers and iconic designs, as well as the current status of design. We sincerely thank the authors for providing a fascinating overview of the design and design protection history of each country. The benefit of this book lies not only in bringing these disciplines together but also individuals. Throughout the process of producing this book, new relationships and opportunities for dialogue emerged. We regularly liaised with each author, and the authors for each country were encouraged to collaborate and consider connections between their chapters. We are also very grateful for existing scholar networks—in both the design history and design protection fields—that helped us identify authors, seek valuable advice and collaborate. Finally, we would like to thank Ms. Noriko Shimomura and Ms. Hyewon Han for their assistance and support. The idea for this book began with a budget request to the Japan Ministry of Education, Culture, Sports, Science and Technology (MEXT) for a project by the Center for Designed Futures, Faculty of Art and Design, Kyushu University, to ‘develop an international center of excellence for connecting industry and academia through design studies and taking on the challenges of humanity’. The Center for Designed Futures of Kyushu University was established in January 2017 with the purpose of promoting design studies and research by connecting design studies with other research fields within and outside the University, and at the same time, to create new territories of academic research through collaboration with other design universities to form an international base for design research.1 The development of this book has been supported by this funding. It is our hope that this book will promote and further encourage interdisciplinary work between design and legal studies, at both the national and international levels. Fukuoka, Japan Tokyo, Japan Tokyo, Japan

1

Tsukasa Aso Christoph Rademacher Jonathan Dobinson

Center for Designed Futures of Kyushu University. Kyushu University http://www.design.kyushuu.ac.jp/~mirai/en/about-center-of-designed-futures/. Accessed 25 Oct 2021.

Contents

Part I

Asia

1

History of Japanese Design . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Minako Ikeda

3

2

History of Design Protection in Japan . . . . . . . . . . . . . . . . . . . . . . . . . . . Masanori Yabumoto

19

3

History and Current Status of Design in South Korea . . . . . . . . . . . . . Jongkyun Kim

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4

History of Design Protection in South Korea . . . . . . . . . . . . . . . . . . . . . Junha Kim

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5

The Factors, Perplexity, and Future of China’s Design Development After the ‘Reform and Opening Up’ Policy . . . . . . . . . . Yanfang Zhang

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6

History of Design Protection in China . . . . . . . . . . . . . . . . . . . . . . . . . . . Wanli Cai

7

History and Current Status of Design in Singapore . . . . . . . . . . . . . . . 111 Leon Loh

8

History of Design Protection in Singapore . . . . . . . . . . . . . . . . . . . . . . . 137 Kodai Kimura

Part II 9

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Europe

British Design . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159 Penny Sparke

10 History of Design Protection in the United Kingdom . . . . . . . . . . . . . . 175 David Charles Musker

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Contents

11 Design Made in Germany . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193 Michael Erlhoff 12 History of Design Protection in Germany . . . . . . . . . . . . . . . . . . . . . . . . 207 Christoph Rademacher 13 History and Current Status of Design in France . . . . . . . . . . . . . . . . . . 223 Catherine Geel 14 History and Current Status of Design Protection in France . . . . . . . . 249 Tsukasa Aso 15 Italian Design . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 273 Paolo Tumminelli 16 History of Design Protection in Italy . . . . . . . . . . . . . . . . . . . . . . . . . . . . 287 Margherita Cera 17 History and Current Status of Design in Scandinavia . . . . . . . . . . . . . 305 Stina Teilmann-Lock 18 Design Protection in the Nordic Countries: The Past, the Present and Maybe the Future . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 323 Jens Schovsbo 19 History of Design in Russia: 1917–2021 . . . . . . . . . . . . . . . . . . . . . . . . . . 345 Alexandra Sankova 20 History of Design Protection in Russia . . . . . . . . . . . . . . . . . . . . . . . . . . 381 Natalia Kapyrina Part III North America 21 American Design, Breaking the Mold . . . . . . . . . . . . . . . . . . . . . . . . . . . 407 Matthew Scott Waldman 22 History of Design Protection in the United States of America . . . . . . 433 Tatsuyuki Suemune Part IV South America 23 History and Current Status of Design in Brazil . . . . . . . . . . . . . . . . . . . 453 Almir Mirabeau da Fonseca Neto 24 History and Current Status of Design Protection in Brazil . . . . . . . . . 467 Roberto Carapeto Part V

Oceania

25 A Chronological History of Australian Design . . . . . . . . . . . . . . . . . . . . 487 D. J. Huppatz

Contents

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26 A History of Australian Design Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 505 Jonathan Dobinson Part VI

Summary and Analysis

27 History of Design and Design Law: Connections, Influences and Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 535 Jonathan Dobinson, Tsukasa Aso, and Christoph Rademacher

Editors and Contributors

About the Editors Tsukasa Aso is an Associate Professor of law (with tenure) at Kyushu University School of Design in Fukuoka, where he teaches intellectual property (IP) and design law courses at the graduate and undergraduate levels. His research focuses on patent law, design law and copyright law as well as the intersection of civil and IP law. His recent publications include the interdisciplinary volumes Japanese Design Law and Practice (Wolters Kluwer, 2021) (in English) and The Legal System of Design Protection: Current Situation and Issues from the Perspective of Jurists and Designers (Nippon Hyoron Sha, 2016) (in Japanese) with Professor Christoph Rademacher; and The System of Design Protection in Different Countries (published as a Special Issue in 2017 (Vol. 25-2) of the Journal of the Science of Design by the Japanese Society for the Science of Design) (in Japanese). He also writes about Japanese IP law in French—for example, ‘Droits de propriété industrielle et intellectuelle au Japon’ in Pascale Bloch et al. (eds) Droit japonais des affaires (Larcier, 2019) pp. 121–171. He obtained his bachelor’s, master’s and doctorate degrees in law from Keio University in Tokyo and has recently been a visiting scholar at the Center for International Intellectual Property Studies (CEIPI), University of Strasbourg and Visiting Professor, Le Centre d’Etudes et de Coopération Juridique Interdisciplinaire (CECOJI), University of Poitiers. Christoph Rademacher is a Professor at Waseda University School of Law in Tokyo. He teaches graduate- and undergraduate-level courses in the field of business law and IP law, in both Japanese and English. His research focuses on the protection of technical innovation by means of patents and other rights. He is a regular speaker at IP law conferences in Asia, Europe, and the USA and has hosted over twenty international law conferences at Waseda. His publications include the treatise Patent Enforcement in the USA, Germany and Japan (Oxford University Press, 2015) as a co-author and the interdisciplinary volumes Japanese Design Law and Practice (Wolters Kluwer, 2021) as a co-editor with Prof. Aso. He was the recipient of the 2019

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Editors and Contributors

Waseda University Research Award for High-Impact Publications. He is admitted as an attorney-at-law in New York and as a solicitor in the Republic of Ireland. He obtained his first degree in business and law and his doctorate degree in law from the University of Siegen, Germany, and an LLM from Stanford Law School. Jonathan Dobinson is an Australian lawyer living in Japan and Adjunct Researcher at the Research Center for the Legal System of Intellectual Property, Waseda University, in Tokyo. He has over 20 years’ experience providing legal policy, communications and international relations advice to organizations in Australia and Asia, including as a senior lawyer, director of research, and director of communications for Australian government agencies; and as a consultant to Republic of Korea government agencies on EU recognition of South Korea’s data protection laws. He has led secretariats for international forums, delivered capacity building programs for legal institutions in Africa and the South Pacific, and developed international internship programs. His research focuses on IP, data protection, law reform and comparative law. His recent publications include Rethinking the Functionality Exclusion in EU Community Design Law (2019) 41 EIPR 639, and he provided research and editorial assistance on Rademacher and Aso, Japanese Design Law and Practice (Wolters Kluwer, 2021). Jonathan obtained bachelor of arts and bachelor of law degrees from the University of Wollongong, Australia, and is admitted as a solicitor of the Supreme Court of NSW. He also obtained a master’s degree in IP from Hongik University, South Korea, which included research on design history, design theory and design law.

Contributors Tsukasa Aso Kyushu University, Fukuoka, Japan Wanli Cai Toyohashi University of Technology, Toyohashi, Japan Roberto Carapeto Waseda University, Tokyo, Japan Margherita Cera Venice Bar Association, Venice, Italy Almir Mirabeau da Fonseca Neto Escola Superior de Desenho Industrial (ESDI), Universidade do Estado do Rio de Janeiro, Rio de Janeiro, Brazil Jonathan Dobinson Research Center for the Legal System of Intellectual Property, Waseda University, Tokyo, Japan Michael Erlhoff Braunschweig University of Art/HBK, Braunschweig, Germany Catherine Geel École normale supérieure de Paris-Saclay, Gif-sur-Yvette, France D. J. Huppatz School of Design and Architecture, Swinburne University of Technology, Melbourne, Australia

Editors and Contributors

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Minako Ikeda Faculty of Design, Kyushu University, Fukuoka, Japan Natalia Kapyrina Department of Integration Studies, Moscow State University of International Relations (MGIMO University), Moscow, Russia Jongkyun Kim Korean Intellectual Property Office (KIPO), Daejeon, South Korea Junha Kim Taiyo, Nakajima & Kato, Tokyo, Japan Kodai Kimura Kobayashi & Yugeta Law Office, Tokyo, Japan Leon Loh Kyushu University, Fukuoka, Japan David Charles Musker Queen Mary University of London, London, UK Christoph Rademacher School of Law, Waseda University, Tokyo, Japan Alexandra Sankova Moscow Design Museum, Moscow, Russia Jens Schovsbo Faculty of Law, Center for Information and Innovation Law (CIIR), University of Copenhagen, Copenhagen, Denmark Penny Sparke Modern Interiors Research Centre, Kingston University, London, UK Tatsuyuki Suemune Kinjo Gakuin University, Nagoya, Japan Stina Teilmann-Lock Copenhagen Business School, Frederiksberg, Denmark Paolo Tumminelli Faculty of Cultural Sciences, Cologne University of Applied Sciences, Cologne, Germany Matthew Scott Waldman Graduate School of Media Design, Keio University, Tokyo, Japan Masanori Yabumoto Keio University, Tokyo, Japan Yanfang Zhang Faculty of Design, Kyushu University, Fukuoka, Japan

Abbreviations and Acronyms

CJEU EU EU Design Directive

EU Design Regulation Geneva Act Hague Agreement ICSID IP IPR Locarno Agreement MoMA OECD Paris Convention PCT RCD TRIPS Agreement UCD UK US WDO WIPO WTO

Court of Justice of the European Union European Union Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998, on the legal protection of designs COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001, on Community designs Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs Hague Agreement Concerning the International Deposit of Industrial Designs International Council of Societies of Industrial Designers intellectual property intellectual property right Locarno Agreement Establishing an International Classification for Industrial Designs Museum of Modern Art (New York) Organisation for Economic Co-operation and Development Paris Convention for the Protection of Industrial Property Patent Cooperation Treaty EU registered Community design Agreement on Trade-Related Aspects of Intellectual Property Rights EU unregistered Community design United Kingdom United States of America World Design Organization World Intellectual Property Organization World Trade Organization

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List of Figures

Fig. 3.1 Fig. 3.2 Fig. 3.3

Fig. 3.4

Fig. 3.5 Fig. 3.6 Fig. 3.7 Fig. 3.8 Fig. 3.9 Fig. 3.10 Fig. 3.11

Fig. 3.12 Fig. 3.13

Lucky Toothpaste design (1954, 1955) (source: Monthly Design (1994/01), p. 118) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Export goods catalog by Shinsung Craft (1950s) (source: Shinsung Craft (which ceased operation in 1966)) . . . . . . . . . . . First automatic telephone (GS-1) produced in Korea by GoldStar Electronics, (1961) (source: Monthly Design (1994/02), p. 152) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . First radio (A-501) produced in Korea by GoldStar Electronics (1965) (source: Monthly Design (1977/05), p. 86) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . The ‘Pony’ by Hyundai Motor Company (1976) (source: ©Charles01 (1976)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Discover Korea’ tourism poster designed by Kyoman Kim (1976) (source: Monthly Design (1977/03), p. 6) . . . . . . . . The ‘GD mark’ (1985) (source: Korea Institute of Design Promotion) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1988 Seoul Olympics promotion posters (1988) (source: National Archive of Korea) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Ahn Sangsoo’ typeface by Ahn Sangsoo (1985) (source: Ahn-Graphics) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Bogoseo\Bogoseo, an experimental typography magazine (1988–2000) (source: Ahn-Graphics) . . . . . . . . . . . . . . . . . . . . . The ‘Anycall’ series by Samsung Electronics: SGH-T100 (2002), SGH-E700 (2003), SGH-D500 (2005), SGH-E250 (2006), J700 (2008) (source: Samsung Newsroom (news.samsung.com)) . . . . . . . . . . . . . . . . . . . . . . . . The Korea Design Center (2001) (source: Korea Institute of Design Promotion) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Mop’ vacuum cleaner by GoldStar Electronics (1991) (source: Monthly Design (1992/12), p. 105) . . . . . . . . . . . . . . . .

43 44

46

46 48 50 52 53 54 54

56 57 58

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Fig. 3.14

Fig. 3.15

Fig. 3.16 Fig. 3.17

Fig. 3.18

Fig. 3.19

Fig. 3.20 Fig. 19.1

Fig. 19.2

Fig. 19.3

Fig. 19.4

Fig. 19.5

Fig. 19.6

List of Figures

‘AI’ rice-cooker with Korean menu buttons by GoldStar Electronics (1991) (source: Monthly Design (1992/12), p. 102) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Art Dios’ refrigerator (R-U713MHY) by LG with tempered glass, large flower pattern and cubic zirconia decoration (2006) (source: DK Award (2006)) . . . . . . . ‘Signature’ series by LG (2016–the present) (source: LG Electronics (2019)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Bordeaux’ TV by Samsung Electronics (2006) achieved the largest market share in the global TV market for the first time (source: Samsung Electronics (2016)) . . . . . . . ‘Chocolate Phone’ by LG Electronics (2005) became a ‘million seller’—15,000,000 units were sold within 18 months (source: ©Miloševi´c P (2019)) . . . . . . . . . . . . . . . . . . . . ‘Iriver’ series by Raincom (2002), INNO Design, secured 20% of the global market share (source: ©Lokal_Profil (2011)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Dongdaemun Design Plaza (DDP) (Zaha Hadid Design, 2014) (source: DDP, ©Panta Creation (2014)) . . . . . . . . . . . . . . ‘LEF (Left Front of Arts) Magazine Front Covers’ by Alexander Rodchenko for V Mayakovsky (ed) LEF, Issue No. 1, Mar 1923; V Mayakovsky (ed) LEF, Issue No. 2, Apr-May 1923; V Mayakovsky (ed) LEF, Issue No. 3, June-July 1923 (Gosizdat Publishing House) (source: collection of the Moscow Design Museum) . . . . . . . . . ‘Suprematist’ White Tea Set (1923) by Kazimir Malevich for State Porcelain Factory. Photo of a set reissued by State Porcelain Factory in a limited series in the 1960s (source: collection of the Moscow Design Museum) . . . . . . . . . ‘Textile’ (1924) by Varvara Stepanova for the Cotton-Printing Factory Number 1, Moscow (source: Rodchenko and Stepanova archive) . . . . . . . . ‘BUY CHEAP BREAD!’ Poster by Alexander Rodchenko and Vladimir Mayakovsky for Mosselprom (source: Rodchenko and Stepanova archive) . . . . . . . . . . . . . . . . ‘Workers’ Club’ (1925) by Alexander Rodchenko for the International Exhibition of Modern Decorative and Industrial Arts in Paris (source: Rodchenko and Stepanova archive) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Armchair and Sofa’ for the Baths of the Moscow Council (Mossovet) (1936) by Studio Number 12 as shown in Studio Number 12 (1936) (source: collection of the Moscow Design Museum) . . . . . . . . . . . . . . . . . . . . . . . . .

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60 60

61

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62 63

347

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349

352

354

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List of Figures

Fig. 19.7

Fig. 19.8

Fig. 19.9

Fig. 19.10

Fig. 19.11

Fig. 19.12

Fig. 19.13 Fig. 19.14

Fig. 19.15

Fig. 19.16

Fig. 21.1

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‘Squirrel’ (IMZ-NAMI-A50) Experimental Subcompact Car, (1955) by NAMI (Chief Designer: BM Fitterman; Designers: VA Aryamov, YA Dolmatovsky, KV Zeyvang, KV Korzinkin, AE Oxentievich) (source: NAMI archive) . . . . . ‘BelAZ-548V’ Dump Truck Train (1964) by Valentin Kobylinsky. Model in 1:25 scale with a variant of the radiator grille (source: collection and archive of the Moscow Design Museum) . . . . . . . . . . . . . . . . . . . . . . . . . Super Functional Integrated Computer System ‘SPHINX’ (1986) by VNIITE (Dmitry Azrikan, Igor Lysenko, Marina Mikheeva, Elena Ruzova, Alexey Kolotushkin, Maria Kolotushkina and others) (source: collection and archive of the Moscow Design Museum) . . . . . . . . . . . . . . . ‘Furniture for Small Apartments’ (1957) by Yuri Sluchevsky. Illustration for Technique of Youth magazine, Issue No. 4, 1957 (source: author’s family archive) . . . . . . . . . . ‘Warm Coat Made of Bolognese Fabric’ by Alla Levashova for SHKB Legprom 1960-e (source: archive of the Moscow Design Museum) . . . . . . . . . . . . . . . . . . . . . . . . . ‘Moscow International Film Festival 2011’ and ‘Moscow International Film Festival 2012’ posters by Stepan Lukyanov (source: archive of the Moscow Design Museum) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘White & White’ LED clock (2011) by Vadim Kibardin (source: Kibardin Design) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Zenit M’ Camera (2018) for Shvabe Holding by Smirnov Design Studio (Project Manager: Sergey Smirnov; Project Team: Anna Reshetnikova, Ekaterina Grigorieva, Dmitry Ponomarev) (source: Smirnov Design Studio) . . . . . . . . ‘Livemap Helmet—An Intelligent Augmented Reality Helmet’ (2021) for Livemap by Smirnov Design Studio (Project Manager: Sergey Smirnov; Project Team: Ivan Shchipunov, Anna Reshetnikova, Dmitry Kovalev, Dmitry Modin, Daniil Morozov, Nikolai Kuzev, Dmitry Ponomarev, Ekaterina Grigorieva, Alex Tsyganko) (source: Smirnov Design Studio) . . . . . . . . . . . . . . . . . . . . . . . . . Photographs of Moscow Design Museum ‘The History of Russian Design 1917–2017’ Travelling Exhibition (2019) in Tumen Museum and Exhibition Complex. The exhibition was shown from 2017 to 2021 in 11 Russian cities (source: archive of the Moscow Design Museum) . . . . . . The Evolution of the ‘Coca-Cola Bottle’ (source: ©Andrade WS (2013)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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370

372 373

374

375

377 408

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Fig. 21.2

Fig. 21.3 Fig. 21.4 Fig. 21.5

Fig. 21.6 Fig. 21.7 Fig. 21.8 Fig. 21.9

List of Figures

‘Pony Wisteria Lamp’ (c. 1902–1910) by Clara Driscoll, Tiffany Studios. Cleveland Museum of Art, Bequest of Charles Maurer (source: ©Evanson (2019)) . . . . . . . . . . . . . . ‘Radio Nurse’, Bakelite (1938) by Isamu Noguchi (source: ©Sailko (2016)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Car Sketch’, undated by Raymond Loewy (source: Library of Congress (2017)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Patriot Radio’ (1940) by Norman Bel Geddes. Cooper Hewitt, Smithsonian Design Museum (source: ©Daderot (2015)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘Fly’s Eye Dome’ (1965) by Buckminster Fuller (source: ©WMpearl (2019)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ‘NOOKA ZIZM’, timepiece (2010) by Matthew Waldman (source: Author’s own) . . . . . . . . . . . . . . . . . . . . . . . . ‘iPod’, product released in 2001, designed by Apple (source: ©Miguelon756-5303 (2016)) . . . . . . . . . . . . . . . . . . . . . ‘Vespers III’ project (2018) by Neri Oxman (source: ©Oxman N and The Mediated Matter Group (2018)) . . . . . . . .

411 412 414

415 417 420 422 428

List of Tables

Table 8.1 Table 8.2

Table 20.1

Scope of application of exceptions under Section 74(2) and Section 70 (source: Author’s own) . . . . . . . . . . . . . . . . . . . . WIPO Statistical Country Profile—Singapore (source: WIPO, ‘Statistical Country Profile—Singapore’ https:// www.wipo.int/ipstats/en/statistics/country_profile/pro file.jsp?code=SG) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Overview of the History of Industrial Design Protection (source: Author’s own) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

147

154 383

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Part I

Asia

Chapter 1

History of Japanese Design Minako Ikeda

Abstract ‘Modern design’ in Japan began with an encounter with the West. In the mid-nineteenth century, when the country opened up to the outside world after 200 years of isolation, it began to promote its own industrial development and, in order to catch up with the West, it focused on exporting traditional crafts and adapting them to European tastes. In the early twentieth century, Japanese design adopted European ideas of modern design and moved away from the superficial and toward the functional, rational and social. In the 1970s, when environmental and energy issues began to arise, Japanese design became recognized worldwide for its ability to reduce size and weight, and innovative product designs were introduced to the world one after another. Japan has been eager to learn from European and American design and incorporate it into its own design, and then use its own superior technological development capabilities to improve and develop it into a design with its own strengths. The Sony ‘Walkman’, for example, created a new lifestyle and was introduced to the world. Another feature of Japanese design is that it was not individuals but rather anonymous teams of designers in corporate design departments who led the way. Since its encounter with the West in the nineteenth century and throughout the twentieth century, Japanese design has always been closely linked to industry and has contributed to its development, but in the twenty-first century, with the end of mass-production and mass-consumption, it is looking for new ways that go beyond the values of the industrial society.

1.1 Promotion of Craft as an Export Industry: End of the Nineteenth Century It was only after World War II that the international concept of modern design took hold in Japan. Historically, however, Japan did not distinguish between the fine arts

M. Ikeda (B) Faculty of Design, Kyushu University, Fukuoka, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_1

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M. Ikeda

(major arts) and the crafts (minor arts) as Europe did.1 In Japan, where aesthetic household objects were recognized as art, there was little ideological conflict in the transition from craft to industrial craft and design. For example, there was no conflict in Japan like that of the Arts and Crafts movement at the end of the nineteenth century,2 or the great debate over standardization of the Deutsche Werkbund at the beginning of the twentieth century.3 In contrast to the ideological and social factors that contributed to the development of design in Europe, the impetus for the establishment of ‘design’ in Japan was the practical need to advance industrial development. After more than 200 years of seclusion, from the first seclusion decree of the Tokugawa shogunate in 1633 to the signing of the Treaty of Amity and Commerce between Japan and the United States of America (US) in 1858, Japan opened up to the rest of the world and tried to quickly catch up to the West, which now included modern industrial nations as a result of the Industrial Revolution. Japan’s plan to become a modern nation was based on export and the industrialization of crafts, and it promoted ‘design’ as a means to promote the export industry. In 1873, Japan officially participated in the Vienna International Exposition for the first time, exhibiting products such as textiles, lacquerware and ceramics for export.4 In addition to primary industry goods such as agricultural products and raw materials, it was expected that traditional arts and crafts would have a high export value. Around the same time, Japanese arts and crafts were introduced at the 1862 International Exhibition in London and were positively received at the 1867 Paris International Exposition, leading to the popularity of ‘Japonisme’ in Europe. Japanese arts and crafts were collected avidly and had a great influence on European arts and crafts, especially Art Nouveau. As a result of this Japonisme fever and the growing demand for Japanese arts and crafts for export, the Government of Meiji Japan pursued a policy of protecting traditional Japanese art and developing products that were a mixture of Japanese and Western styles, relying on traditions and adapting them to the tastes of the European market. In particular, it focused on ceramics, a traditional craft that could be easily mass-produced, and improved their form and decoration into a promising export commodity. The Government provided active assistance in ‘design’, including by providing sample decoration drawings to manufacturers to assist them decorate products in a style that would be suitable for potential European markets. The move away from a system in which the craftsman was responsible for all steps of the production process—from devising the shape and decoration to making and finishing the piece—to a system in which the ‘design’ process was separate and independent 1

Izuhara (1992), pp. 50–51. The accession to the Paris Convention for the Protection of Industrial Property, 20 Mar 1883 (revised 14 July 1967), 828 U.N.T.S. 305 came at a time when Japan was promoting arts and crafts as an important export sector as part of its development of new industries, enacting a design law along the lines of the design laws of Western countries, and was actively participating in international exhibitions in various countries. See Chapter 2 by Masanori Yabumoto. 3 Hauffe (2018 [2007]), pp. 34–36, 53–55. 4 Takehara and Moriyama (2003), p. 22. 2

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from the production and distribution processes can be seen as the genesis of the modern concept of ‘design’ as ‘planning’. In 1876, the Ministry of Interior established a department for the production of decoration design drawings, which commissioned specialized artists to produce designs. In 1874, Kiritsuk¯osh¯ogaisha, the first trading company, was established to deal with export business.5 In 1877, the first National Industrial Exhibition was held in Tokyo’s Ueno Park. Approximately 80,000 works of art and handicrafts were displayed and 450,000 people came to see them. People gathered in one place to see a large number of ‘products’ made by someone, somewhere. It is believed that the word ‘zuan’ [decoration design drawing], which was used to classify exhibits at the Exhibition, possibly first appeared at the 1877 Exhibition. Designs were also made available to exhibitors at the National Industrial Exhibition and the Paris International Exposition of 1878. The ‘Onchi Zuroku’, a collection of decoration design drawings for export crafts, is now housed in the National Museum of Tokyo.6 The popularity of Japonisme in Europe did not last long. At the 1900 Paris Exposition, Japanese arts and crafts were criticized for their traditionalism, and it became clear that the practice of applying superficial decorative designs that relied on exoticism and copied tradition had to be replaced. The German chemist Gottfried Wagner was appointed as a technical advisor, and a change of course toward modern design was made. As for the manufacture of ceramics for export, in 1879, the K¯oransha Company, and, in 1893, the Fukagawa Porcelain Company were founded in Arita, a famous traditional ceramic production area. In the following years, the production areas around Nagoya grew, free from tradition and able to produce modern designs and mass-production. In 1904, the Nippon T¯oki G¯omeigaisha (now, the Noritake Company) was founded. In the 1920s, the company began producing mass-produced ceramics for export with a new eclectic design that incorporated the Art Deco style and traditional Japanese ornaments, and the Noritake brand began to present a modern form of craftsmanship that appealed to Japanese tastes.7 In terms of design education, the Tokyo School of Fine Arts, founded in 1889, established a Department of Arts and Crafts and a Department of Zuan [decoration design] in 1896, and the Tokyo School of Industry established a Department of Sangy¯o Zuan [industrial decoration design] in 1899 and the Ky¯oto Higher School of Arts and Crafts in 1902, all of which focused on practical design education.8 In addition, a series of sample design drawing collections for dyeing, ceramics, sculpture and printing were published, marking the transition from the early days of design promotion, when traditional designs were used to promote exoticism, to an era when specialists actively created new designs that embraced global design trends.9 5

Takehara and Moriyama (2003), p. 25. Nagata et al. (2006), pp. 50–52. 7 Sezon Museum of Art (1992), pp. 147–150, 179. 8 Mori (1996), p. 109. 9 Given the increase in exports during this period, the design law was amended in 1921 to support businesses and protect domestic industry, see Chapter 2 by Masanori Yabumoto. 6

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1.2 Encounters with Modern Design: 1920s–1945 In the early twentieth century, foreign design trends were actively introduced to Japan through magazines and other media. The Arts and Crafts Movement, Art Nouveau, the Viennese Secession, the Russian Avant-Garde and the English Garden City movement were systematically introduced in almost real time, and Japanese designers learned from, accepted and incorporated them into their own designs. In 1925, the magazine Mizue [Watercolour Painting] published a report on the Bauhaus, the German design school. Iwao and Michiko Yamawaki and Takehiko Mizutani studied at the Bauhaus and after their return to Japan, the ideas and practices of international modern design took root in Japanese design.10 In 1926, the Teikoku K¯ogei-kai [Imperial Craft Association] was founded on the model of the Deutsche Werkbund to promote industrial design that would contribute to economic development. It published the magazine Teikoku K¯ogei, which influenced the thinking of designers. Against this background, the Keiji K¯obo [Metaphysical Workshop] was founded under the leadership of the architect Chikatada Kurata, who had studied in Germany and had been influenced by the ideas of the Deutsche Werkbund and the Bauhaus. The aim was to achieve mass production by linking research and study of materials and structures with people’s lives and the market, advocate the rationalization of production through standardization, and practice furniture design. In the same year, the Sh¯ok¯osh¯o K¯ogei Shid¯osho [Industrial Arts Institute of the Ministry of Trade and Industry] was established in Sendai with the aim of promoting crafts in the Tohoku region and developing products that utilized its resources to develop traditional crafts into a modern industry supported by scientific knowledge. In 1933, the German architect Bruno Taut was invited to teach design at the Sh¯ok¯osh¯o K¯ogei Shid¯osho. Taut discovered the beauty of Japan in the Katsura Riky¯u Palace and the Ise Shrine and made it known in Europe through his books. Through these developments, Japanese design synchronized with the international wave of modern design, which was influenced by Germany and was aimed at functionality, rationality and social needs. Alongside this modern design trend was the ‘Mingei’ philosophy of S¯oetsu Yanagi, who saw beauty in the practical objects made by unknown craftsmen. He turned his attention to the beauty of use, tradition, anonymity, and locality. The publication of K¯ogei magazine in 1931 led to a nationwide movement in support of Yanagi’s ideas, resulting in the collection and exhibition of folk art throughout Japan and a movement to find beauty in people’s lives. The Mingei movement had a strong sense of rediscovering tradition by looking to the past, but at the same time, it valued the thoughtfulness and simplicity of the form of items that came from people’s lives— their functionality as a tool, rationality in production, the anonymity of the creator, and universality beyond individual expression. It was a very Japanese approach, but it also shared some ideas with the concept of modern design. While modern design in Europe was based on the conflicts between arts and crafts, in Japanese Mingei, there was a modernist philosophy that could be established without that conflict. 10

Nagata et al. (2006), pp. 282–301.

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The ceramist Kawai Kanjir¯o, who along with Yanagi was a key figure in the Mingei movement, won the Grand Prix at the 1937 Paris International Exposition of Art and Technology in Modern Life. Japan’s industrial strength, which had surged during World War I, peaked around 1939,11 but with the outbreak of the Sino-Japanese War in 1937 and the passage of the National Mobilisation Act the following year, design began to serve national prestige and the military industry. Then came World War II in 1939 and the six and a half years of darkness leading to defeat in 1945. With wartime shortages, the Sh¯ok¯osh¯o K¯ogei Shid¯osho, which had been established to promote craft exports, explored alternative materials such as wood, plastic, ceramics and paper as substitutes for military materials. For example, some of the best designers worked in the Institute on the development of wooden aircraft made of plywood. The K¯ogei Shid¯osho invited Charlotte Perriand from France to teach in 1940. During her stay of more than two years in Japan she was accompanied by the still young S¯ori Yanagi on a tour of the Tohoku region where she enthusiastically taught arts and crafts.12 She designed chairs and couches and tables from woven straw and bamboo which were manufactured by farmers. The techniques developed and the human resources fostered under extremely adverse conditions made an important contribution to post-war industrial design.

1.3 Post-war Reconstruction and the Influence of American Design: 1945–1950s After the economic and social damage caused by World War II, the urgent task for Japan was to rebuild the economy, restore society and people’s lives, but also to restore the international community’s confidence in Japan. After the War, the Japanese economy was in a difficult situation and there was an urgent need to increase exports. Against a background of subcontractors taking over orders from abroad and producing items at low prices, and the rapid development and production of cheap products that were acceptable to the international market, Japanese counterfeit products became an international problem. It was important for Japan to solve this problem in order to regain the trust of the international community. When the then Foreign Minister Aiichir¯o Fujiyama visited the United Kingdom (UK) in 1957, he was confronted with the facts of specific design theft. This was the decisive moment that led to the passing of the Export Product Design Act in 1959.13 There was also recognition that the Government needed to support product design to encourage the development of original and outstanding products. In 1957, the Good Design Product Selection System, commonly known as ‘G-Mark’, was introduced 11

Yamamoto et al. (1980), pp. 175–176. Sezon Museum of Art (1990), p. 262. 13 Yushutsuhin design h¯ o [Export Product Design Act], Act No. 106 of 6 Apr 1959. 12

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as a design promotion system sponsored by the Japan Patent Office (JPO).14 The following year, the Ministry of International Trade and Industry (MITI) established the Design Department, which was responsible for export measures as well as the Good Design Product Selection System. MITI and the JPO also made efforts to educate consumers by organizing ‘Design Protection Exhibitions’ in department stores, where original and imitation products were displayed side by side. The strategy was to promote design through both legislation and the promotion of ‘Good Design’. The concept of Good Design, which forms the basis of the G-Mark system, was proposed by Edgar Kaufmann Jr., the director of the Museum of Modern Art (New York) (MoMA) in the US, and developed into a widespread movement for Good Design through the five-year Good Design Exhibition from 1950. In Japan, Masaru Katsumi, a design critic, saw the MoMA Good Design Exhibition and the trend of Scandinavian modern design as a movement that showed the social role of design. In 1955, he convened an international design committee consisting of 15 architects and designers and set up a ‘Good Design Corner’ in Matsuya in Ginza, a department store. Good Design Corners were also set up in other department stores to involve consumers in promoting Good Design. Before the War, Japanese design developed under the influence of modern European design, but after the War, admiration of American culture and the prosperity brought by the General Headquarters (GHQ) led to an inclination toward American design. Immediately after the War, Japan was keen to collect information about overseas design and design trends. In 1951, the K¯ogei Shid¯osho, which had played an important role in promoting design in the pre-war period, was renamed the Sangy¯o K¯ogei Shikenjo [Industrial Arts Research Institute], and in 1956, a program was launched to invite foreign design experts to Japan. In the fifteen years leading up to 1971, many up-and-coming designers—including George Nelson, Ettore Sottsass, and Kai Franck—were invited from all over the world. In 1951, the Overseas Market Research Association was founded, and from 1955 to 1966, many researchers were sent to the Art Center College of Design in Los Angeles and other cities to improve industrial design in Japan. After returning to Japan, they worked in the design departments of companies and educational institutions. In 1956, an industrial design research team was sent to the US, composed of design leaders from the public and private sectors. The members of the delegation reported energetically on the latest designs they had seen and heard of in the US.15 In this way, post-war Japan learned a lot from American design. During this period, the term ‘industrial craft’ was replaced by the term ‘industrial design’. The word ‘craft’ was dropped in the development of the new design movement as it was thought that ‘design’ was about planning, not decoration. In 1952, inspired by the American Society of Industrial Design (ASID), the Japan Industrial Designers Association (JIDA) was founded to promote awareness of industrial design and the profession. K¯onosuke Matsushita, the founder of Matsushita Electric Industrial, returned from an overseas trip in 1951 and apparently said: ‘[t]he future is the age of design’. 14 15

Nagata et al. (2006), pp. 414–417. Takehara and Moriyama (2003), p. 75.

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Expecting that design would make products more competitive and boost demand, major manufacturers such as Toshiba, Toyota, Hitachi, and Mitsubishi Electric set up design departments in their companies one after another. Sony was one of the first companies to set up a design department with Norio Ohga as its head. Japan’s economic recovery after the War was remarkable. In 1956, a little more than 10 years after the end of the War, the Economic Planning Agency issued an economic white paper declaring that Japan was no longer in the post-war period. A period of rapid economic growth followed, and by 1968, Japan had the second highest gross domestic product (GDP) in the world. If the task of industrial design is to make products that can be used by the masses, then the late 1950s and 1960s were a time of brilliant success for industrial design.

1.4 The Take-Off of Japanese Design: The Late 1950s and 1960s When automobile production, which had been banned by the GHQ, was allowed again in 1947, manufacturers began to receive orders from overseas for subcontracted production and to expand their technical capabilities. Even before the War, in 1936, Toyoda Automatic Loom Works (now Toyota Motor Corporation) had set up its own automobile division and introduced the streamlined ‘Toyoda AA’. After the War, the company changed its name to Toyota Motor Corporation and in 1955 introduced the ‘Toyopet Crown RS’, the first domestically produced car after the War. In the same year, Nissan introduced the ‘Datsun 110’ and the successor model ‘Datsun 112’ won the prestigious 2nd Mainichi Design Award. In 1957, Toyota launched the ‘Corona’, and in 1959, Nissan launched the ‘Datsun Bluebird’, both cars designed by in-house designers. Both cars went through a series of model changes, with the ‘Corona’ remaining in production until 2001 and the ‘Bluebird’ until 2012. Fuji Heavy Industries, which had produced aircraft before the War, converted its technology to automobile production and launched the ‘Subaru 360’ in 1958. This four-seater small car was designed by Tatsuz¯o Sasaki, a pioneering industrial designer. The car was nicknamed the ‘Ladybird’ for its handsome appearance, which was optimized by using spherical surfaces and reducing weight to ensure comfort in limited spaces. With more than 390,000 units produced in the 12 years between its launch and 1970, it is now a very famous car.16 In motorbikes, Honda Motor Co. launched the ‘Super Cub C100’ in 1958, which was exported to the US for the first time the following year. S¯oichir¯o Honda, founder of the Honda Motor Company, was the chief designer of this model, which featured an ingenious low-floor backbone frame that made it easier for women to get on and off the bike, and a large plastic leg shield that protected against mud and wind. Another breakthrough was the first use of polyethylene for exterior materials such as the front 16

Nikkei Design (1995), pp.18–33.

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wing, front cover and side covers to reduce weight and make handling easier.17 The design of the ‘Super Cub’ was considered an infringement of a registered design by another company selling a similar product, and in 1966, the company was awarded a large sum of 700 million yen in damages.18 The case was later settled, but the design rights dispute was a hot topic. The ‘Super Cub’ model is a perennial favorite that has been exported all over the world and is still produced in 2021. The second half of the 1950s saw the beginning of the breakthrough of the Japanese automobile industry, and after the 1960s, when the ‘my car boom’ made the car popular, the Japanese automobile industry began to dominate the world automobile market in the 1980s. Besides the car, the other big breakthrough during this period was consumer electronics. In the 1950s, people wanted washing machines, refrigerators and hoovers, but soon everybody had these and so the emphasis shifted to the ‘3Cs’ of the 1960s: car, cooler (air conditioner) and color TV. New materials like plastic, new technologies like the transistor and mass-production systems were introduced, and Japan entered the era of mass-consumption. Washing machines, refrigerators, hoovers and electric rice cookers that became popular in the 1950s made housewives’ work much easier. The ‘ER-4’ electric rice cooker, launched by Toshiba in 1955, is an icon of this era. The shape of the traditional Japanese rice cooker was abstracted and expressed in a simple modern design language that made the most of its symbolism. Another typical example of new product design created by new technologies is the ‘TR-55’, Japan’s first transistor radio launched by Tokyo Ts¯ushin K¯ogy¯o (now Sony) in 1955, and the ‘TR-610’, a pocket-sized transistor radio launched in 1958. The latter was selected as a ‘Good Design’ product in the same year and sold very well both in Japan and abroad, becoming an important export product. In 1959, the ‘TV-8-301’ transistor television was launched, winning a gold medal at the Triennale di Milano and receiving international praise for its design quality. Compactness and simplicity became internationally recognized as hallmarks of Japanese design. The contribution of the in-house design departments established in Japanese companies during this period should not be overlooked.

1.5 The Beginning of the Age of Mass-Consumption and Styling Design: 1960s In the 1960s, Japan experienced an unprecedented economic boom and people’s consciousness became focused on consumption.19 Companies competed with each 17

Takehara and Moriyama (2003), pp. 88–89. Japan Patent Office (2009), p. 186. 19 The enactment of the Ish¯ oh¯o [Design Act], Act No. 125 of 13 Apr 1959 coincided with the beginning of the era of mass production and mass consumption, when competition between companies to develop new products intensified. In the midst of technological competition, companies began 18

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other to develop new products, such as fully automatic washing machines by Hitachi, ‘Trinitron’ color TVs by Sony and household microwave ovens. However, as technology became more competitive, companies began to focus on styling design, the development of a variety of products to meet different consumer tastes, and how to differentiate their products from similar products produced by other companies. Marketing research was used to identify consumer trends. While keeping an eye on consumer trends, companies tried to accelerate consumption by changing styling and making minor changes. The detailed innovations and glamorous look of household appliances that took into account the efficiency of housework can be seen as a reflection of the growing presence of women in the consumer market. While the design of cars and household appliances, supported by technological developments, was gaining international recognition, there was also a debate about a return to Japan’s traditional identity: the ‘Japanese Modern’ debate of 1953, inspired by Scandinavian modern design. Isamu Kenmochi, then head of the Sangy¯o K¯ogei Shikenjo [Industrial Crafts Research Institute] noted that, while traditional Japanese styles were perceived and appreciated in the context of modern design in the US, kitschy Japanese designs were distributed abroad. Kenmochi advocated ‘Japanese Modern’ as a response to this issue and worked on research and development of products at the Sangy¯o K¯ogei Shikenjo, actively presenting the results of the work both at home and abroad.20 In Japan, these works were sometimes criticized for not being different from kitschy Japanese taste, but abroad, they were highly praised. Sori Yanagi, one of Kenmochi’s collaborators, was awarded the gold medal at the Triennale di Milano in 1957. In post-war Japan, which was experiencing rapid Westernization, the conflict and coexistence between tradition as the country’s cultural identity and international modern design became a significant issue. The 1964 Tokyo Olympics was the biggest Japanese event of the 1960s. In order to demonstrate post-war reconstruction to the world, the development of urban infrastructure and public design, as well as design directly related to the Olympic Games, proceeded at a rapid pace, resulting in innovative design at all levels, from urban planning and architecture to products and graphics. In particular, the design of the first pictogram in the history of the Olympic Games was a groundbreaking invention that was adopted by future Olympic Games, the copyright of which was entrusted to the International Olympic Committee.

1.6 Japanese Design Recognized Worldwide: 1970s–1980s The highly successful Japan Expo ’70, held in 1970 under the slogan ‘Progress and Harmony of Mankind’, marked a milestone. Immediately afterward, Japan’s industries were put to the test and forced to change their industrial structure against to focus on styling to differentiate similar products and stimulate new consumption. See Chapter 2 by Masanori Yabumoto. 20 Sezon Museum of Art (1990), p. 261.

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the backdrop of the transition to a floating exchange rate system, two oil shocks, the first negative growth since the end of World War II, and increasingly severe environmental problems as a result of industrialization. In some ways, however, these challenges encouraged the growth of design in Japan. It is the breakthrough of the Japanese semiconductor industry that accelerated the structural change from a heavy industrial structure to a light, thin, short and small one. The integration of super-integrated circuits using semiconductors made it possible to make devices smaller and more multifunctional, and dramatically expanded the possibilities of product design. A typical example is the ‘Casio Mini’, a pocket calculator launched by Casio Computer in 1972. With its unusually small size and low price, it created a new product genre by transforming an electronic desk calculator, which at the time had a strong image as an office device, into a familiar product. The horizontal housing with carry strap emphasized its portability, while the numeric keyboard with its round keys gave the impression of stationery. The numeric display, which switched between the upper and lower six digits at the touch of a button, was also invented.21 Since the ‘Casio Mini’, the calculator market has been dominated by a race for smaller and more multifunctional products, and there have even been extremely small products with functions that disregarded the user-friendliness of calculators. However, this friendly competition certainly led to improvements in technology. In terms of design, it has become important to place controls and displays clearly in a limited space. Moreover, unlike conventional products that function mechanically, the functions of microcomputers are difficult to recognize and understand intuitively, and multifunctional products are more complex to operate. This led to the emergence of a new design discipline, interface design, based on user behaviour and mindset. The miniaturization of products encouraged personalization and outdoor use, which in turn changed people’s lifestyles and sense of values. In 1975, Pioneer launched the ‘Component Car Stereo’ series, the world’s first audio product to bring audio into people’s car lives. In 1979, Sony launched the ‘Walkman’, a headphone stereo that quickly became the standard for young people who wanted to ‘wear music’ while walking on the street. In fact, there was nothing new about the Walkman. It was a modified version of a small cassette recorder marketed as the ‘Pressman’, and the original Walkman had only a playback function and no recording function. The small headphones were also the result of a separate development project. The innovation of the Walkman was to combine existing technologies to create a new meaning and to give them the right ‘look and feel’ that offered people a new lifestyle. In the consumer electronics industry, where product development is usually technology-driven, the process was reversed: designers decided on a design that matched a lifestyle and then engineers translated it into a product.22 The compactness and simplicity of Japanese design, which had found favour in the 1950s, was refined in the 1970s and 1980s with the integration of semiconductors into products.

21 22

Takehara and Moriyama (2003), p. 109. Takehara and Moriyama (2003), pp. 111–112.

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In 1986, Fujifilm introduced a new kind of camera that changed the concept of the camera as precision equipment. It was a ‘stationary’ camera that consisted of a plastic body with roll film, wrapped in paper and fitted with a simple plastic lens that could be bought anywhere, anytime. In addition, the camera could be taken to a film developer for development without the need to remove the film from the camera. This product was popular on the international market and became an indispensable item in tourist areas. Although it was called a ‘disposable camera’, the recycling rate was close to 100%, as the camera was collected when the film was developed. The idea of a simple camera had been in the works since the 1970s and a patent had been granted, but before it could be used commercially, it was necessary to develop a plastic molding technique that could be used for camera lenses and a high-performance film that would allow trouble-free shooting under all conditions.23 The value of being able to eat at anytime, anywhere has also had an impact on food design. ‘Cup Noodle’, launched by Nissin Foods in 1971, was a product in which dried noodles were packaged in a Styrofoam container and sealed with a lid made of aluminum foil and paper. The development of this product was based on new technologies such as Styrofoam containers and dried noodles that could be cooked in three minutes simply by pouring boiling water on them. The instant noodle in a cup was patented in 1971 and exported not only to Asia but also to Europe and the US, where people were not used to eating soup noodles, expanding the market worldwide.24 One of the most iconic designs in Japanese culture, still highly regarded abroad today, is the video game, which became a popular pastime in the late 1970s when arcade machines appeared on the streets offering a range of content, particularly shooting games. The turning point in the expanding video game market was the introduction of the Nintendo ‘Family Computer’ in 1983, an 8-bit video game console that was revolutionary in that it created an environment where video games could be enjoyed at home. What set the Family Computer apart from previous products was that it came with game software. From the beginning, the importance of developing quality content was recognized, and leading game creators were involved in developing software and bringing well-designed, artistic content to the market. At this time, it was realized that the design of the product (hardware) and the content (software) were inextricably linked. In 1989, Nintendo launched the ‘Game Boy’, a portable game console with interchangeable cartridges, and games became an indispensable part of entertainment. The automotive industry, which had been part of Japan’s core industry since the 1960s, faced two oil shocks and growing environmental problems in the early 1970s, but managed to turn the crisis into an opportunity. In 1970, the US Congress passed the Muskie Act, which set very strict emission regulations. In 1972, Honda Motor Co. launched the ‘Civic’, the first car in the world with a low-emission engine that met Muskie Act standards, and it was a success in the US market. The ‘Civic’ was designed according to the concept of ‘utility minimum and man maximum’, and to be 23 24

Sat¯o (2002). Nikkan K¯ogyo Shimbun (2003), p. 58.

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a compact, light, and roomy car that would be economical as a mass-market vehicle. The Civic’s trapezoidal shape integrated luggage space and ‘living’ space, contrary to the common understanding of design at the time, which emphasized flowing lines.25 The reputation of Japanese cars as compact, economical and compliant with emissions regulations grew, and by 1974, Japan was the world’s largest car exporter, and by 1980, the world’s largest car manufacturer. At the same time, the rapid growth of Japanese car manufacturing led to trade conflicts and international problems, and Japan imposed voluntary restrictions on car exports until 1994. From the late 1970s to the 1980s, the international design trend was toward postmodernism, especially in Italy. This was in contrast to modern design, which had established itself in Europe in the 1920s and aimed for universality as an international style by emphasizing functionality, rejecting ornamentation and eliminating regional differences. Postmodern design, which emerged in Italy as a response to this development, emphasized humanity, emotion and regionality and presented colorful, playful designs and fascinated the world through exhibitions and publications. Japan, which had adopted European modern design before the War, and adapted it to its own design after the War and established it as Good Design, was also influenced by postmodern design. Designers and architects such as Shiro Kuramata, Masanori Umeda, and Arata Isozaki were very active on the international stage in the postmodern context. Postmodern design also affected mass-produced goods by bringing colorful and playful designs to the market.

1.7 Design Sector Expansion and Change Since the 1990s Established in 1957, the Good Design Product Selection System (G-Mark) was transformed by a reform in 1984 from a system for selecting Good Design products to a system for promoting design, with the aim of presenting the ideal form of design and leading society. In this sense, design trends can be understood by looking at the objectives of the Good Design Awards since the late 1980s.26 The Good Design Award became more diverse, and in the 1990s, design penetrated areas where it had not played a role before, such as construction machinery, industrial machinery and medical equipment. In 1990 and 1993, a personal computer won the Good Design Award, and in 1995, when Microsoft launched ‘Windows 95’, NEC’s ‘SX-4 Model 32’ supercomputer won the top prize, indicating that digitalization was advancing rapidly and product design in related fields was coming to the fore. In 1999, Sony launched the ‘AIB0 (Artificial Intelligence Robot)’ entertainment robot, which, as its name suggests, is designed to behave autonomously and communicate with the user through the use of artificial intelligence (AI). The product was discontinued in 2006, but was relaunched in 2018 as ‘aibo’.

25 26

Takehara and Moriyama (2003), pp. 131–132. Japan Institute of Design Promotion (2017).

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In the 2000s, the Internet of Things (IoT) became the focus of attention. The possibility of using networked home appliances with remote control and software download functions was explored, as was the connection between services and products, and user experience design (UX design) became a new design field. The expansion and integration of design disciplines also became more evident. Public spaces such as the Sendai Mediatheque (Toyoo It¯o & Associates) in 2001 and Moerenuma Park (Isamu Noguchi) in 2002, children’s television programs in 2004 and 2012, and the Temple’s various activities to combat poverty (including the distribution of food and daily necessities to families in need) in 2018, won the Good Design Award Grand Prix. In 2005, the top prize was given to Terumo’s ‘Nanopass 33’, a painless insulin injection needle that allows the world’s thinnest needle to inject a sufficient amount of fluid—a design that went beyond the scope of a designer. In 2003, Toyota’s ‘Prius’ hybrid car won the Good Design Award Grand Prix, highlighting the importance of environmental considerations as a social issue. In 2001, the law on the recycling of household appliances came into force. The Great Hanshin-Awaji earthquake of 1995 and the Great East Japan earthquake of 2011 have raised awareness of the importance of invisible design, for example, for local communities and social systems, and the frequent natural disasters across Japan have brought serious environmental issues to the fore. The development of digital technologies, including the internet and 3D printers, has enabled and required a design process that involves not only design professionals but also users, and COVID-19 has accelerated the digital transformation of society from 2019.27 The era of Japanese design that promoted mass production and mass consumption is over. It is now expected to move beyond the values of an industrial society and to solve social problems.

References Hauffe T (2018 [2007]) Design, Japanese edn. Koy¯oshob¯o, Kyoto Izuhara E (1992) Design Movements in Japan, History of Industrial Design. Perikansha Publishing, Tokyo Japan Institute of Design Promotion (2017) Complete Collection of the G-Mark System; The Good Design Award for 60 Years. Japan Institute of Design Promotion, Tokyo Japan Patent Office (2009) Ish¯oseido 120 nen no ayumi [120 Years of the Design System]. https://www.jpo.go.jp/system/design/gaiyo/seidogaiyo/document/isyou_seido_ayumi/ 2bu_5sho.pdf. Accessed 25 Oct 2021 Mori H (ed) (1996) Formative Years of Japanese Modern Design. Matsudo City Board of Education, Chiba Nagata K, Hida T, Mori H (eds) (2006) A History of Modern Design in Japan 1860s–1970s. Bigaku Publishing, Tokyo Nikkan K¯ogy¯o Shimbun (ed) (2003) Industrial Development in View of Patent. Tokkyoch¯o, Tokyo 27

The 2006 amendment of the Ish¯oh¯o [Design Act], Act No. 125 of 13 Apr 1959 revised the definition of ‘design’ and extended design protection; the 2019 amendment further extended the scope of protection. See Chapter 2 by Masanori Yabumoto.

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Nikkei Design (ed) (1995) Tent¯omushi wa maiorita: Sh¯owa no dezain (epokkuhen) [The Ladybird has Landed: Design in the Showa Era (Epoch)]. Nikkei BP, Tokyo Sat¯o T (2002) Anatomy of Design 2: Fujifilm ‘Utsurundesu’. Bijutsu Shuppan-sha, Tokyo Sezon Museum of Art (ed) (1990) Japanese Aesthetics and Sense of Space I, Another Aspect of Modern Japanese Design. Sezon Museum of Art, Tokyo Sezon Museum of Art (ed) (1992) Japanese Aesthetics and Sense of Space II, Modern Taste: Ornament and Eroticism 1900–1945. Sezon Museum of Art, Tokyo Takehara A, Moriyama A (2003) Nihon dezainshi [History of Japanese Design]. Bijutsu Shuppansha, Tokyo Yamamoto H, Rasaki T, Nakura B (1980) Kindainihonkeizaishi: Shihonshugi no seiritsu, had, h¯okai [A History of the Modern Japanese Economy: The Emergence, Development and Collapse of Capitalism]. Yuhikaku, Tokyo

Additional Bibliography Bauhaus Archiv, Droste M (1991) Bauhaus 1919–1933. Benedikt Taschen Publishing House (for the Bauhaus Archiv Museum fur Getaltung), Cologne Design History Forum (ed) (2001) Kokusai dezainshi: Nippon no ish¯o to t¯ozaik¯ory¯u [International Design History: Japanese Design and East-West Exchange]. Shibunkaku Publishing, Kyoto Group 5 (ed) (1987) Keijik¯ob¯o kara: Toyoguchi Katsuhei to dezain no hanseiki [From the Metaphysical Workshop: Katsuhei Toyoguchi and Half a Century of Design]. Bijutsu Shuppan-sha, Tokyo Japan Industrial Designers Association (1972) Nihon no indasutoriarudezain: Hito to d¯ogu: Sono ugoki no nakade [Industrial Design in Japan: People and Tools: In Their Movement]. H¯ozansha, Tokyo Japan Industrial Designers Association (1983) Seichino k¯oz¯o: Nihon no indasutoriaru dezain [The Structure of Precision: Industrial Design in Japan]. Rikuy¯osha, Tokyo Kashiwagi H (1979) Kindai nihon no sangy¯o dezain shis¯o [Industrial Design Thought in Modern Japan]. Sh¯obunsha Publishing, Tokyo Kayano Y (1992) Kindai nihon no dezain bunkashi 1868–1926 [A Cultural History of Modern Japanese Design: 1868–1926]. Film Art Inc., Tokyo K¯ogeizaidan (ed) (1990) Nihon no kindai dezain und¯oshi 1940 nendai-1980 nendai [A History of the Modern Japanese Design Movement 1940s–1980s]. Perikansha Publishing, Tokyo K¯ogeizaidan K¯ogei News Henshushitsu (1977) K¯ogei News. S¯osh¯uhen [Craft News. Collected Works]. K¯ogei zaidan, Tokyo Nihon dezain dantai ky¯ogikai (ed) (2011) Nihon dezain futatsunojidai 60s vs 00s: Japan Design Museum k¯os¯o [Two Eras of Japanese Design 60s vs 00s: Japan Design Museum Concept]. DNP Art Communications, Tokyo Nikkei Design (ed) (1995) Made in Japan no jidai: Sh¯owa no dezain [The Age of Made in Japan: Design in the Showa Period (Products)]. Nikkei BP, Tokyo Philadelphia Museum of Art, Suntory Museum Tenpozan (eds) (1996) Made in Japan 1950– 1994/Sekai ni hanahiraita nihon no dezain [Japanese Design: An Overview Since 1950]. Tank¯osha, Kyoto Sat¯o K (1995) ‘Toki’ ni ikiru itaria dezain [Italian Design in ‘Time’]. Mita Publishing, Tokyo Suigy¯ukurabu (ed) (1990) Mono no tanj¯o—Ima no seikatsu [The Birth of Things—Life Today]. Sh¯obunsha, Tokyo Yamawaki M (1995) Bauhaus to chanoyu [Bauhaus and the Tea Ceremony]. Shinch¯osha, Tokyo Yanagi S (1983) Design: Yanagi Sori no sakuhin to kangae [Design: Sori Yanagi’s Works and Philosophy]. Y¯obisha Publishing, Tokyo

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Minako Ikeda is an associate professor in the Faculty of Design, Kyushu University. She specializes in information editing design and design history. Through her experience as an editor of magazines and books, she has worked on expanding and theorizing the concept of editing and explored the possibility of applying it in design fields such as communication, products and services. In addition, she has worked on projects relating to the design of products for modern life and the preservation of the culture and techniques of traditional crafts. Her books include Information Design (Graphic Sha Publishing, 2002), History of Japanese Design (Bijutsu Shuppan-Sha, 2003), Textbook of Editorial Design (Nikkei BP, 2015 [1999]) and Does Design Need Philosophy? (Musashino Art University Press, 2019).

Chapter 2

History of Design Protection in Japan Masanori Yabumoto

Abstract The history of the Japanese design protection system, dating back to 1888, was a history of adapting to international standards for design protection due to the development of domestic industry and the expansion of product export. The current design protection system in Japan is based on the Ish¯oh¯o [Design Act] of 1959. Since 1998, the scale and frequency of revisions have increased. This chapter outlines this history—from the Meiji period through to the 2019 amendments of the Design Act—focusing mainly on the expansion of the scope of design rights.

2.1 The Design Ordinance of 1888 The Meiji government fostered modernization by establishing a design law system that considered the systems of various Western countries. The first design protection law in Japan was the Design Ordinance, promulgated in 1888 and in force until 1899.1

2.1.1 The Definition of Design The scope of protection was new designs applied to industrial ‘articles’, in particular, their configuration, appearance or color. The articles to which a design could be applied were designated at the time of application, based on categories set out in Art. 7. The concept that a design be applied to an ‘article’ originally came from English law.

1

Ish¯ojy¯orei [Design Ordinance of 1888], Imperial Decree No. 85 of 18 Dec 1888 (Design Ordinance). For a detailed outline of the history of design protection in Japan, see Nakano et al. (2020). M. Yabumoto (B) Keio University, Tokyo, Japan © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_2

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2.1.2 Examination Principles Under the Design Ordinance, the examination of design applications was a prerequisite of registration.2 The procedure for the examination of patent applications was applied mutatis mutandis.3 The examination system under the Patent Ordinance was influenced by United States of America (US) laws.

2.1.3 Right of Designers A person who created a design was entitled to obtain a design registration and hold the exclusive right of this design.4 However, adopting the approach of the German Design Act of 1876, if a customer or an employer ordered or paid for the creation of a design, the right to register a design belonged to them, unless an agreement provided otherwise.5

2.1.4 Effect of Design Right The Design Ordinance stated that the right holder could exclusively use the design. However, it was not specified whether the right extended to designs similar to registered designs. In 1892, the Ministry of Agriculture and Commerce revised the Detailed Regulations for Enforcement of the Design Ordinance (Enforcement Regulations).6 The revised Enforcement Regulations outlined that design applications identical or similar to publicly known designs, renounced design rights, or abolished design were not considered to be novel.7 This foreshadowed the similar design registration system introduced by the Design Act of 1899. The exclusive right extended only to articles designated by the applicant.8

2

Design Ordinance, Art. 4. Design Ordinance, Art. 12. Senbaitokkyojy¯orei [Patent Monopoly Ordinance of 1885] (Patent Monopoly Ordinance). 4 Design Ordinance, Art. 1. 5 Design Ordinance, Art. 10. 6 Isy¯ ojy¯oreisik¯okisoku, N¯osy¯omurei [Detailed Regulations for Enforcement of the Design Ordinance], Ordinance of the Ministry of Agriculture and Commerce No. 18 of 1892 (Enforcement Regulations). 7 Enforcement Regulations, Art. 15(i) and (ii). 8 Design Ordinance, Art. 7. 3

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2.1.5 Limited Term of Exclusive Use There were four different terms of exclusive use of the design right—three, five, seven or 10 years, from the day of registration.9

2.2 Design Act of 1899 In 1899, the Design Ordinance was repealed and the Design Act of 1899 was enacted to remedy some deficiencies of the Design Ordinance10 and to prepare for accession to the Paris Convention for the Protection of Industrial Property.11 Japan acceded to the Paris Convention in 1899.

2.2.1 Major Revisions 2.2.1.1

Expansion of the Scope of Protection

In contrast to the Design Ordinance, Art. 1 of the Design Act of 1899 allowed for the protection of designs that were comprised of combinations of configurations, appearance and color.

2.2.1.2

Legal Successors

Article 1 also provided for a designer’s legal successors to register a design.

2.2.1.3

Establishment of the Similar Design Registration System

The Similar Design Registration System was established as an exception to novelty requirements. Under this system people could register designs similar to their own previously registered designs (original design).12 Design rights registered under this system could only be transferred to third parties along with the original design rights,13 and the term of exclusive use had to coincide with the original design right 9

Design Ordinance, Art. 6. Ish¯oh¯o [Design Act], Act No. 37 of 2 Mar 1899 (Design Act of 1899). 11 Such as the Paris Convention for the Protection of Industrial Property, 20 Mar 1883 (revised 14 July 1967), 828 U.N.T.S. 305 (Paris Convention). 12 Design Act of 1899, Art. 2. 13 Design Act of 1899, Art. 6. 10

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(10 years).14 The Similar Design Registration System continued until the Related Design System was established in 1998.

2.2.1.4

Priority Right

To comply with the Paris Convention, a six-month priority right for Member States design applications was established.15

2.3 Amendment of Design Act in 1909 In 1909, the 1899 Design Act was amended with the aim of further improving the design law system.16

2.3.1 Major Revisions 2.3.1.1

Definition of Design and Scope of Protection

Article 8 was amended to clarify that a registered design provided an exclusive right to apply the design or sell or distribute articles to which the design was applied, as designated at the time of registration. As a result, Art. 1 was also revised to provide a more precise definition of ‘design’ and the right to obtain design registration.

2.3.1.2

Protection of Employees

To protect employees, Art. 2 was amended to provide that agreements or employment rules providing for automatic transfer of design rights in a design not created as part of an employee’s work or contract would be invalid.

2.3.1.3

Revision of the Similar Design Registration System

The similar design registration system introduced in the 1899 Design Act was also revised. First, a similar design right could only be applied to an identical article.17 14

Design Act of 1899, Art. 3. Design Act of 1899, Art. 10. 16 Ish¯ oh¯o [Act Amending the Design Act of 1899], Act No. 24 of 2 Apr 1909 (Act No. 24 of 2 Apr 1909). 17 Design Act of 1899, Art. 3(ii), as amended by Act No. 24 of 2 Apr 1909. 15

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Second, the bar for determining novelty was adjusted so that the prior existence of a similar design that could easily be developed would be a ground for refusal.18 Third, the similar design right was ‘consolidated’ with the earlier design right of the same applicant—that is, if the earlier design right became invalid, the similar design right would automatically become invalid.19

2.3.1.4

Establishment of the Secret Design Registration System

The 1909 amendment also introduced a Secret Design Registration System that allowed an applicant to request that their design not be published during the application process or within three years after registration.20

2.3.1.5

Invalidation Trials

Invalidity trials were introduced. A third party or a Japan Patent Office (JPO) examiner could request a JPO trial regarding the invalidation of a design registration or to confirm the scope of a design right.21 An appellate procedure was also introduced. A person who was not satisfied with a trial decision could request an appeal from the JPO.22 If they were not satisfied with the JPO’s appeal decision, they could then seek a review by the Imperial Supreme Court to determine whether the appeal decision was legally correct.23

2.4 Amendment of Design Act in 1921 The next significant revision of the Design Act was undertaken in 1921. The aim of the revision was to support enterprises and to protect domestic industries that had grown with an increase in exports as a result of World War I.24 The revision was also influenced by modern European industrial design which aimed to improve the aesthetics and quality of industrial products.

18

Design Act of 1899, Art. 3(ii), as amended by Act No. 24 of 2 Apr 1909. Design Act of 1899, Art. 8, as amended by Act No. 24 of 2 Apr 1909. 20 Design Act of 1899, Art. 16, as amended by Act No. 24 of 2 Apr 1909. 21 Design Act of 1899, Art. 20, as amended by Act No. 24 of 2 Apr 1909. 22 Design Act of 1899, Art. 21, as amended by Act No. 24 of 2 Apr 1909. 23 Tokkyoh¯ o [Patent Act], revised in 1909, Art. 85, as applied mutatis mutandis by Design Act of 1899, Art. 22 as amended by Act No. 24 of 2 Apr 1909. The system of invalidity trials was primarily directed to patent rights but also applied to design rights. 24 Act Amending the Design Act of 1899, Act No. 98 of 30 Apr 1921 (Act No. 98 of 30 Apr 1921). 19

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2.4.1 Major Revisions 2.4.1.1

Scope of Protection

The definition of ‘protected designs’ in Art. 1 of the Design Act was modified to clarify that the designs that were protected under the law were those related to the appearance of articles for industrial application. Although the 1899 Act protected designs applied to an article, there was concern that the law may be interpreted so that rights would attach to designs that did not relate to articles. Therefore, the amendment in 1921 more specifically provided that industrial concepts relating to the appearance of articles would be protected.

2.4.1.2

Designs Created Pursuant to an Employment Relationship or for a Third Party

Under the Design Ordinance of 1888 and the Design Act of 1909, the right to register a design created by an employee belonged to the client or employer. As a result of the amendment in 1921, this right now belonged to the employee. The employer obtained the right to work a design that was created in the course of employment. The employer could also request transfer of the right to obtain a design registration, and the employee could request appropriate monetary compensation.25

2.4.1.3

Development of the Examination System

The examination procedure included the ability to file a request for re-examination of an original decision concerning an application. The re-examination could be challenged by filing a request for a final appeal with the JPO. This re-examination system was abolished in 1921, and a system of notification of reasons for refusal replaced it.26

25

Design Act of 1899 enacting Patent Act, Art. 14 as applied mutatis mutandis by Act No. 98 of 30 Apr 1921, Art. 25. 26 Design Act of 1899, enacting Patent Act, Art. 72 as applied mutatis mutandis by Act No. 98 of 30 Apr 1921, Art. 25.

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2.4.2 Practice During World War II and Resumption of Applications After the War During World War II, design registration was suspended pursuant to ‘special provisions of industrial property rights during wartime’ promulgated in 1943.27 After World War II, the special provisions during wartime were abolished, and applications for design registration began to be filed again and increased as the textile industry and other industries grew. By 1955, the number of applications reached 14,000. Around the same time, an increase in exports led to a criticism that exported products were imitating designs from other countries. This became an issue of international concern.

2.5 Export Product Design Act of 1959 At that time, Japan would often imitate and then export foreign designs. As a result, there were frequent complaints from abroad. Although a design law existed, it was intended for the protection of the rights of individuals and the preservation of those rights through judicial proceedings between the parties concerned, not for the maintenance of order in exports, which is a public law regulation. Therefore, the Export Product Design Act was enacted to address export disruption caused by counterfeited goods, the decline in international confidence in exported products due to the theft of foreign designs, and confusion due to the theft of designs by domestic traders.28 Under the Act, goods were ‘specified goods’ if it was particularly necessary to prevent them from imitating the designs of others. Those wishing to export specified goods could not do so unless they had their designs certified by an accreditation body. In this way, counterfeit goods were prevented from being exported from Japan to other countries.29 The Design of Export Goods Act was repealed in 1997. Design had developed in Japan, and there was no longer any fear of imitation.

2.6 Design Act of 1959 The Design Act of 1921 remained in effect for over 30 years without any major amendment. However, the Act was unable to respond to the profound transformation of industry and the economy that occurred in the period following World War II. 27

Kogy¯osyoyukensenjitokurei [Special Act of Wartime on Industrial Property Rights], Act No. 109 of 31 Oct 1943. 28 Yushutsuhin design h¯ o [Export Product Design Act], Act No. 106 of 6 Apr 1959. 29 See Chapter 1 by Professor Minako Ikeda.

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As a result, the Design Act and other industrial property laws were the subject of fundamental reconsideration. After 10 years of consideration, a revised Design Act was promulgated in 1959 and went into effect on 1 April 1960.30 The Act formed the basis of the current Design Act and was based on the experience that industries grow when designs of mass produced articles are protected. The 1959 Act included a change to the definition of ‘design’—the central concept of the Act—which specified that a ‘design’ must be applied to an ‘article’, which marked a clear distinction from previous design laws.

2.6.1 Major Revisions 2.6.1.1

Purpose of the Act

The purpose of the Act—which had come to be accepted over the years that the 1921 Act was in force—was set out in a new Art. 1 which provided that: ‘[t]he purpose of this Act is, through promoting the protection and the utilization of designs, to encourage creation of designs, and thereby to contribute to the development of industry’. Therefore, the Design Act was clearly identified as a law that related to industrial policy and that contributed to industrial development by encouraging the creation of designs.

2.6.1.2

Definition of Design

Article 2(1) was amended to provide a separate definition of ‘design’. It was included in a separate article and was based on Art. 1 of the 1921 Act which related to the object of the design registration and the persons who could register a design. The definition provided that ‘design’ in ‘this Act shall mean the shape, patterns or colors, or any combination thereof, of an article, which creates an aesthetic impression through the eye’. In contrast to the definition under the old law—which emphasized the type of design that could be registered under the Design Act—the 1959 Act specified what the term ‘design’ referred to in the Act and that a design had to be something that ‘creates an aesthetic impression through the eye’. Other possible elements of the definition—such as the protection of ‘abstract designs’ that are separate from articles and ‘typeface’, as well as the ‘Partial Design System’ that was adopted later—were discussed, but not included in the 1959 Act.

30

Ish¯oh¯o [Design Act], Act No. 125 of 13 Apr 1959 (Design Act).

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2.6.1.3

27

Requirements for Registration

The requirements for design registration together with, for example, requirements related to novelty, were outlined in Art. 3. According to Art. 3, designs that could be used for industrial purposes could be granted design registration, and it was determined that purely aesthetic creations could not be registered as a design. Art. 3(1) required a design to possess novelty at the time of filing an application, which was the time when examination would commence. According to the 1921 Act, novelty was not recognized in designs that were publicly known ‘within Japan’. However, under the 1959 Act, this rule was extended to ‘a design publicly known in another country’ and ‘a design described in a publication distributed in another country’. Therefore, designs that were publicly known in another country prior to filing an application could be refused registration for lack of novelty.

2.6.1.4

Designs Being not Easily Created

One of the major objectives of the new Act was to ‘strengthen the protection of the design right’ and to improve the quality of registered designs. Therefore, a requirement was introduced that designs could not be registered if they were easily created. Article 3(2) of the Act stated that a ‘design easily created with a shape, pattern or color, or based on any combination thereof widely known within Japan before an application for design registration’ could not be registered.

2.6.1.5

Exceptions to Lack of Novelty

The 1959 Act introduced a number of exceptions relating to lack of novelty. For example: • Art. 4(1) provided an exception when a design became publicly known against the will of the person having the right to obtain a design registration; • Art. 4(2) provided an exception when a design became publicly known as a result of an act of the person having the right to obtain a design registration— for example, when a design became publicly known by being displayed at an exhibition. The Act provided that one of the exceptions may apply if a person who wanted to claim an exception to lack of novelty filed an application within six months of the date that a design fell under one of the provisions relating to lack of novelty.

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M. Yabumoto

One Application per Design

Under the 1921 Act, several articles within the same category of classification could be designated in the one application. However, in practice, this was not allowed and the principle of one application per article was adopted. Therefore, to reflect actual practice, the classification system for the designation of designs was abolished, and Art. 7 of the 1959 Act provided that an application for design registration must be filed for each design.

2.6.1.7

Design for a Set of Articles

Under the 1921 Act, one application for a set of articles could be registered as a ‘design for a set of articles’ when the set of articles was the object of a trade. A new Art. 8 stipulated that a set of articles could be filed as one design in an application for design registration where two or more articles were conventionally used together and were specifically designated by an Order of the Ministry of International Trade and Industry.

2.6.1.8

Similar Design Registration

The 1959 Act included special provisions for lack of novelty—first established in the 1899 Act—for the ‘Similar Design System’. Article 10 provided that ‘a design right holder may obtain design registration of a design that is similar to their own registered design (hereinafter referred to as a “similar design”)’. The scope of similarity of design was clearly specified, and protection was improved by expanding the scope of protection of the design right. At the same time, it was determined that designs that were similar only to a similar design could not be registered as a similar design; and that when the original design became invalid, the registration of similar designs would be invalid.

2.6.1.9

Extension of the Duration of Design Right

Since 1899, the duration of a design right had been ‘10 years from the date of registration of its establishment’. However, Art. 21 extended the term to ‘15 years from the date of registration of its establishment’ to align with the laws of a number of other countries.

2.6.1.10

Effect of Design Right

Article 23 provided that the design right holder held the exclusive right to work the registered design and designs similar thereto as a business. This provision clarified

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that the design right holder could work their exclusive right—extending the scope of the design right to designs similar to a registered designs, regardless of whether a similar design had been registered by the right holder.

2.6.1.11

Infringement of Design Right and Remedies

Under the 1921 Act, compensation could be awarded under the Civil Code (the general law regarding compensation) if there had been an infringement of rights. However, under the 1959 Act, new provisions were established as special provisions of the Civil Code in consideration of the specific nature of industrial property rights. In particular, provisions relating to the right to seek an injunction (Art. 37), acts deemed to constitute infringement (Art. 38), presumption of amount of damage (Art. 39) and presumption of negligence (Art. 40) were introduced.

2.7 Amendment of the Design Act in 1998 The Design Act was again amended in 1998.31 In 1997, work on a revision was prompted by discussion at World Intellectual Property Organization (WIPO) expert meetings in relation to countries with examination systems that should be allowed to join the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement).32 In response to economic globalization and the directive to ‘protect design rights early and broadly’, it was determined that consideration of international harmonization was essential, including in relation to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), the Hague Agreement, and the Locarno Agreement Establishing an International Classification for Industrial Designs (Locarno Agreement).33

2.7.1 Response to the TRIPs Agreement Japan has been a Member State of the World Trade Organization (WTO) since its establishment, and so has complied with the TRIPs Agreement since it first came 31

Tokkyoh¯ot¯o No Ichibu Wo Kaiseisuru H¯oritsu [Act Partially Amending the Patent Act and Other Legislation], Act No. 51 of 6 May 1998. 32 The Hague Agreement concerning the International Deposit of Industrial Designs, 6 Nov 1925 (revised 2 July 1999), 2279 U.N.T.S. 3 (Hague Agreement). 33 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (TRIPS Agreement); Locarno Agreement Establishing the International Classification for Industrial Designs (Locarno, 8 Oct 1968).

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into effect. In line with a 1994 amendment of the Patent Act—made in response to Arts. 2, 30, 32, 43–2, 67 and 90 of the TRIPS Agreement—the definition of ‘work’ under Art. 2(3) of the Design Act was amended by adding ‘offering for assignment or lease’. During the drafting process, the question of whether excluding ‘designs based only on standardized configuration and function’ was inconsistent with Art. 25(1) of the TRIPS Agreement was considered. A new Art. 5(iii) excluded from protection designs based on function.

2.7.2 Response to the Hague Agreement and Locarno Agreement In anticipation of accession to the Hague Agreement and Locarno Agreement, Japan discussed the ‘relaxation of the requirements described in the drawings’ and ‘revision of the one application per design system’. The requirements for drawings accompanying registration applications were relaxed by a Ministerial Ordinance which allowed: three-dimensional drawings other than projection drawing methods or shading expressions to present concave or convex parts; or an explanatory text for specifying a design, or an image output composed using a computer. However, revision of the ‘one application per design system’ was postponed, and later Japan delayed its accession to the Hague Agreement and Locarno Agreement.

2.7.3 Major Revisions 2.7.3.1

Introduction of the Partial Design System

Designs relating to parts of articles had not previously fallen within the scope of protection, as they had not been distributed as independent products. However, a new Art. 2(1) allowed design registration of ‘partial designs’ when they were original— having characteristic features.

2.7.3.2

Exclusion of Designs in Part Identical or Similar to Prior Applications

The aim of the design registration system is the protection of newly created designs. Article 3(1)(i) of the Act provides that ‘designs that were publicly known in Japan or a foreign country, prior to the filing of the application for design registration’ are not entitled to obtain design registration.

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A new Art. 3-2 stipulated that a design based on a later application—being in part identical or similar to a design based on a prior application—will not lack novelty until the prior design is published in a gazette. However, the design based on a later application is not considered to be newly created and so is not entitled to obtain design registration.

2.7.3.3

Designs Being not Easily Created

Article 3(2) was revised to provide that designs that could be easily created based on publicly known designs or motifs were to be refused or invalidated, ensuring appropriate protection of designs rich in originality.

2.7.3.4

Abolition of the Similar Design System and Establishment of the Related Design System

The Similar Design Registration System was abolished and a new Art. 10 established the Related Design System to ensure protection of a ‘Related Design’—a design created at the same time and based on a similar design concept as a ‘Principal Design’. A new Art. 10(1) provided that the Related Design System was limited to cases where applications were filed on the same day by the same applicant of the Principal Design. Other limitations included, for example, that the ‘duration of a Related Design shall expire after a period of 15 years from the date when the establishment of the design right of its Principal Design is registered’ (Art. 21(2)); and that the ‘design right of a Principal Design and that of its Related Design may not be transferred independently of each other’ (Art. 22).

2.7.4 Other Related Matters In 1999, to ensure prompt registrations and international harmonization and to respond to developments in information technology, a number of Articles were revised, including: Art. 3(1)(ii) to expand the reasons for lack of novelty; and Art. 4 to expand the scope for applying the exceptions to the lack of novelty of designs.34 The novelty requirement was judged by comparison with designs publicly known in the world, and ‘designs that were made publicly available through an electric telecommunication line’ was a bar to novelty.

34

Tokkyoh¯ot¯o No Ichibu Wo Kaiseisuru H¯oritsu [Act Partially Amending the Patent Act and Other Legislation], Act No. 41 of 14 May 1999.

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2.8 Amendment of the Design Act in 2006 In the 2000s, Japanese companies began to suffer damage due to the importation of products that imitated Japanese designs from countries with fast-growing economies. As a result, the Partial Design System and the Related Design System introduced by the previous revision were fine-tuned and a number of provisions were revised based on Government policy, including in relation to designs of ‘graphic images’, a ‘double-track system’ for registration and the expansion of the scope of protection of the design right.35

2.8.1 Major Revisions 2.8.1.1

Reviewing the Definition of Design: Expansion of the Protection of On-Screen Designs

Previously, on-screen designs had been excluded from the scope of protection of the design right, except when a screen was an essential element of an article or a screen was necessary for the initial operation of an article. The definition of ‘design’ under Art. 2(2) was amended to provide that the ‘shape, patterns or colors, or any combination thereof, of a part of an article’ includes ‘those in a graphic image on a screen’ used for ‘operations carried out in order to enable the article to perform its functions’.

2.8.1.2

Related Design System

Under the Related Design System introduced in 1998, a Related Design could only be registered as a Related Design when an application was submitted on the same day. However, to introduce a greater level of flexibility, Art. 10(1) was amended to provide that a Related Design could be registered up until the day before the publication of a Principal Design in a gazette.

2.8.1.3

Requirements for Registration

In order to enhance protection of product designs with a high level of originality, Art. 3-2 provided that a design based on a later application that is identical or similar to part of a design based on a prior application would not be refused registration if the application was filed by the same applicant as the prior application, and before the publication of the design based on a prior application in the design gazette. 35

Ish¯oh¯ot¯o No Ichibu Wo Kaiseisuru H¯oritsu [Act Partially Amending the Design Act and Other Legislation], Act No. 55 of 7 June 2006.

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Secret Design Registration System

In order to facilitate filing of a request for secret design registration—even after the completion of examination—Art. 14(2) provided that a request may be filed at the same time as the payment of registration fees or when filing the application.

2.8.1.5

Exceptions to Lack of Novelty

In order to respond to an increase in companies disclosing designs before filing an application, Art. 4(3) provided that the period for submission of a ‘certificate’—a document proving that one of the exceptions to lack of novelty may apply—was ‘within 30 days from the date of filing of the application for design registration’. The period was previously ‘within 14 days from the date of filing of the application for design registration’.

2.8.1.6

Extension of the Duration of Design Right

The duration of the design right was previously ‘15 years from the date of registration of its establishment’.36 However, in recognition that attractive designs are important for preserving the value of a product on a long-term basis, Art. 21 was amended to extend the duration of the design right to ‘20 years from the date of registration of its establishment’.

2.8.1.7

Clear Specification of the Scope and Other Factors of Design Registrations

Consideration of the similarity of designs is an important criterion when determining novelty and the scope of effect of a design right. However, the test for similarity was not clear or consistent with judicial precedent that: a criterion for novelty is ‘determining if viewed from the perspective of consumers, the aesthetic impression is similar to the registered design’; and the scope of effect of the design right ‘applies to designs that evoke an aesthetic impression similar to the registered design for consumers’.37 Therefore, Art. 24(2) was amended to provide that: ‘[w]hether a registered design is identical with or similar to another design must be determined based upon the aesthetic impression that the designs would create through the eye of their consumers’.

36

Article 26(3) of the TRIPs Agreement provides that the ‘duration of protection available shall amount to at least 10 years’ which is why the duration of the design right differs across countries. 37 Saiko Saibansho [Sup. Ct.] 19 Mar 1974, Minsh¯ u (Vol. 28, No. 2), 308 (TOGAWA Rubber Mfg. Co., Ltd. v. TIGERS Rubber Co).

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Penalties

The Design Act was also amended to increase penalties in order to deter and prevent the infringement of design rights. Article 69-2 was amended to increase the penalty of ‘imprisonment with labor for a term not exceeding three years or a fine not exceeding 3,000,000 yen’ to: ‘imprisonment with labor for a term not exceeding 10 years, a fine not exceeding 10,000,000 yen or a combination thereof’ for direct infringement (Art. 69); and ‘imprisonment with labor for a term not exceeding 5 years, a fine not exceeding 5,000,000 yen or a combination thereof’ for indirect infringement (Art. 69-2). Furthermore, the cumulative imposition of imprisonment with labor and a fine was made possible. Article 74(1)(i) was also amended to increase the maximum fine for the infringement of a design right imposed on ‘juridical persons’—such as corporations—from ‘a fine not exceeding 100 million yen’ to ‘a fine not exceeding 300 million yen’.

2.9 Amendment of the Design Act in 2014 In 2011, the Japanese Government began to consider accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs of 1999 (Geneva Act) in order to respond to the globalization of Japanese companies and to ensure international competitiveness by preventing damage caused by counterfeit products and the promotion of Japanese products and services.38 In April 2014, the Design Act was amended to ensure the Japanese design protection system was aligned with the Geneva Act.39 In 2014, the Diet also approved the accession to the Geneva Act—effective 13 May 2015—and the Locarno Agreement—effective 24 September 2014.

2.9.1 Major Revisions 2.9.1.1

Provisions Regarding International Registrations

Chapter VI-2 Section 1 (Application for International Registration) (Arts. 60-3 to 60-5) was enacted to allow the filing of an application for international registration with the JPO.

38

Geneva Act of The Hague Agreement Concerning the International Registration of Industrial Designs, 2 July 1999, 2279 U.N.T.S. 156 (Geneva Act). 39 Tokkyoh¯ ot¯o No Ichibu Wo Kaiseisuru H¯oritsu [Act Partially Amending the Patent Act and Other Legislation], Act No. 36 of 14 May 2014.

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Provisions Regarding Procedure for International Applications for Design Registration

In accordance with the Geneva Act, Ch. V-2 Section 2 (Special Provisions Concerning International Applications for Design Registration) (Arts. 60-6 to 60-23) was enacted—to set out procedures for examination of international applications filed in Japan as a Member State, including: • provisions to treat international applications as international applications for design registration (Art. 60-6). In response to Art. 5(4) of the Geneva Act— which allows several industrial designs in the same international application—the Japanese requirement of one application per design (Art. 7) was relaxed to allow two or more designs to be filed in the one international application (Art. 60-6(2)); • provisions regarding items to be managed by the International Design Registry (Arts. 60-11 and 60-17 to 60-19) to ensure consistency with Art. 16 of the Geneva Act and items regarding notification to the Commissioner of the Patent Office and registration under Japan’s Design Act; • provisions regarding extinguishment of international registration (Arts. 60-14 to 60-16). The Geneva Act does not include express provisions on the extinguishment of international registration. This is left to each Member State.

2.10 Amendment of the Design Act in 2019 The digital revolution has increased innovation across a range of business areas and provided small and medium enterprises (SMEs) and venture capital organizations with opportunities to use technology to achieve quick growth. At the same time, the provision of excellent customer experience has become a source of competitiveness. In order to respond to these developments, in 2019, the design protection system was strengthened to protect designs created using digital technology and to encourage rights holders to establish new brands.40

2.10.1 Major Revisions 2.10.1.1

Scope of Designs

The definition of ‘design’ in Art. 2(1) was amended to include ‘buildings’ and ‘graphic images’. Moreover, a new Art. 8-2 provided that when designs related to the ‘interior design of buildings’ (for example, interior equipment and decoration in 40

Tokkyoh¯ot¯o No Ichibu Wo Kaiseisuru H¯oritsu [Act Partially Amending the Patent Act and Other Legislation], Act No. 3 of 17 May 2019.

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stores, offices and other facilities) evoke a unified aesthetic impression of the interior as a whole, an application for design registration may be filed as for one design. In this way, architectural designs; graphic images that have not been recorded or that are not applied to an article (for example, a graphic image that is projected on a wall or a graphic image stored in the cloud and provided through a network); and interior designs of buildings were included in the scope of protection.

2.10.1.2

Related Design System

The Related Design system was reviewed to enable the protection of designs developed based on a concept developed over a long period of time. Previously, a Related Design application had to be filed ‘before the date when the design gazette in which the application for design registration of the Principal Design is published’ (approximately 8 months). Article 10(1) was amended to extend this period to ‘the day of expiration after 10 years from the filing date of the application for design registration of the Principal Design’. Furthermore, Art. 10(4) provides that ‘designs that are only similar to Related Designs and designs that are only similar to Related Designs that are consecutively in chain of said Related Designs’ may obtain design registration.

2.10.1.3

Duration of Design Rights

To enhance the design right, the duration of the design right was extended from ‘a period of 20 years from the date of registration of its establishment’ to ‘a period of 25 years from the date of filing of the application’ (Art. 21 (1)). The same applies to Related Designs (Art. 21(2)).

2.10.1.4

Design Registration Application Procedures

Previously, applications for design registration were filed in accordance with ‘a classification of articles as provided by an Ordinance of the Ministry of Economy, Trade and Industry’ for each design. However, Art. 7 was amended to make it possible to describe the title of an article in a more flexible manner. Applications filed together for multiple designs can also now be accepted.

2.10.1.5

Indirect Infringement

Under Art. 28, a preparatory or supporting act that is likely to result in an infringement of a design right is deemed to be indirect infringement. Therefore, a series of acts—a ‘use’ as provided in Art. 2(2)—is deemed to constitute infringement under Art. 38(ii) as:

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acts of producing etc. as a business an article, or a computer program, etc. or a medium, etc. for recording a computer program, etc. (excluding those widely distributed within Japan) to be used for producing an article to the registered design or a similar design, where the article, computer program, etc., or medium, etc. is indispensable for the registered design or a design similar thereto to create an aesthetic impression through the eye, knowing that the design is a registered design or a design similar thereto and that the article, or computer program, etc., or medium, etc. for recording a computer program, etc. is used for the working of the design.

Therefore, acts of producing components of infringing articles for the purpose of producing or importing them now constitute indirect infringement.

2.11 Other Forms of Design Protection in Japan 2.11.1 Unfair Competition Prevention Act Other laws can also protect designs.41 In relation to product design, the most important provision of the Unfair Competition Prevention Act is Art. 2(1)(iii). The act of a business operator who imitates the form of a product and sells it, etc., for three years after it is sold in Japan is an act of unfair competition.42 The Article was first introduced in 1993 and provides that the following constitute unfair competition: ‘the act of transferring, leasing, displaying for the purpose of transfer or lease, exporting or importing goods that imitate the form of another person’s goods (excluding that which is indispensable to its functioning)’. The ‘form of goods’ excludes forms that are indispensable to the function of the goods. Although the article excludes only forms that are indispensable to its function, common forms of goods are also not protected. Article 2(5) of Unfair Competition Prevention Act provides, ‘[t]he term “imitate” as used in this Act means the act of creating goods that are substantially similar to another person’s goods, based on the form of the goods’. ‘Substantially similar’ means a slavish imitation—that is, only minor changes to another person’s goods. The form of goods can also be protected under Art. 2(1)(i) and (ii) of the Unfair Competition Prevention Act. However, the form of goods must also be considerably distinctive—having remarkable features that objectively differentiate it from other similar products—and well known. It is not easy to satisfy these two requirements. For this reason, the protection provided by Art. 2(1)(iii) is particularly important for product designs.

41

For a detailed discussion of the overlap of protection under the Design Act and other intellectual property and related laws see Aso (2020). 42 Fuseiky¯ os¯oboushih¯o [Unfair Competition Prevention Act], Act No. 47 of 19 May 1993.

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2.11.2 Trademark Act of 1959 It is also possible to obtain design protection under the Trademark Act.43 Japan adopted a three-dimensional trademark system in 1996. Therefore, it is possible to register product designs as three-dimensional trademarks. However, threedimensional shapes are not usually used to indicate the origin of a product, but for functional or aesthetic purposes. Therefore, trademarks must meet strict criteria to be registered as a three-dimensional trademark. Article 3(1)(iii) of the Trademark Act provides that a trademark that ‘consists solely of a mark indicating, in a common manner … shape (including shape of packages)’ may not be registered. One way to avoid this is to file an application in combination with a character or graphic trademark. However, this has the disadvantage that a three-dimensional trademark with distinctive letters or figures (which has been registered as being distinctive because of the letters or figures) will not be enforceable if a third party uses the three-dimensional trademark without the letters or figures. Another strategy is to make the three-dimensional trademark widely known to consumers by using it for a long time. If it can be proven that a trademark is well known throughout the country, it will be possible to register it, even if it does not include letters and figures.44 By using this three-dimensional trademark system, it is possible to enforce rights based on trademark rights for well-known packaging containers (for example, CocaCola bottles) or well-known furniture (for example, the ‘CH24 Wishbone’ chair) even after the expiration of the duration of the design right or the three-year protection under Art. 2(1)(iii) of the Unfair Competition Prevention Act.

2.11.3 Patent Act of 1959 In addition to obtaining a design right for the appearance of an object, a patent right may also be used to protect an object’s technology.45 An example is the tread pattern of automobile tires. Design rights may be obtained for the aesthetic appearance of the tread pattern, while patent rights may be obtained for the technical aspect—for example, increased traction, control or noise reduction.

2.11.4 Copyright Act of 1970 Article 2(1)(i) of the Copyright Act provides that ‘work’ means a ‘a production in which thoughts or sentiments are creatively expressed and which falls within the 43

Sh¯ohy¯oh¯o [Trademark Act], Act No. 127 of 13 Apr 1959 (Trademark Act). Trademark Act, Art. 3(2). 45 Tokkyoh¯ o [Patent Act], Act No. 121 of 13 Apr 1959. 44

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literary, academic, artistic or musical domain’.46 The question is whether a design that is protected by the Design Act may also be protected by the Copyright Act. In the background of the debate on whether applied arts should be protected by the Copyright Act is the Design Act which protects the design of such utility goods. Obtaining a design right is more difficult than obtaining copyright protection because it requires a registration procedure and imposes innovation threshold requirements, and the term of copyright protection is longer than the term of a design right. If applied arts are protected under the Copyright Act, the Design Act will not be used, and the raison d’etre of the Design Act will be lost. Article 2(2) of the Copyright Act provides that an ‘artistic work’ also includes ‘a work of artistic craftsmanship’. Accordingly, works of artistic craftsmanship can be protected under the Copyright Act. However, because works of artistic craftsmanship are specified as an example of artistic works, it is unclear whether applied art other than works of artistic craftsmanship are protected under the Copyright Act. In Japan, it is generally difficult for applied arts to receive protection under Copyright Act. The courts have held that even applied arts for practical purposes are protected by the Copyright Act if the parts of the work that have aesthetic characteristics and that are the subject of aesthetic appreciation can be identified separately from the parts that are necessary to achieve its functionality.47

References Aso T (2020) Overlap of Protection Under the Design Act and Other Intellectual Property and Related Laws. In: Rademacher C, Aso T (eds) Japanese Design Law and Practice. Wolters Kluwer, Alphen aan den Rijn, pp 209–224 Nakano M, Takada K, Yabumoto M (2020) History of Japanese Design Law and Relevant International Instruments. In: Rademacher C, Aso T (eds) Japanese Design Law and Practice. Wolters Kluwer, Alphen aan den Rijn, pp 1–18

Masanori Yabumoto was appointed as an associate professor of European legal history at Keio University in 2009. He graduated with a master’s degree from Keio University Graduate School of Law, where he also completed all requirements for a doctorate in law but for the dissertation.

46

Chosakukenh¯o [Copyright Act], Act No. 48 of 6 May 1970 (Copyright Act). See, for example, Osaka K¯ot¯o Saibansho [Osaka High Ct.], 14 Feb 1990, Hei 1 (Ne) 2249 (In the Matter of Takeshi NII); Tokyo Chih¯o Saibansho [Tokyo Dist. Ct.], 7 Apr 2014, Hei 25 (Wa), 8040 (Peter Opsvik As and Stokke As v. Katoji Co., Ltd). Also Aso (2020), p. 215.

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Chapter 3

History and Current Status of Design in South Korea Jongkyun Kim

Abstract Compared to the overall history of modern design, Korean industrial design, as opposed to Korean craft, has had a very short history. Korean industrial design really could be considered to start in the 1950s, after thirty-six years of Japanese influence during colonization and the three years of the Korean War. From that time, the Government’s priority was economic development. It saw design as key to industrial competitiveness and began to develop industrial design policy. Accordingly, the laws and systems related to design are relatively well established as is the in-house design system, centered on companies. The 1960s and 1970s saw the copying of overseas designs and efforts to establish original equipment manufacturers. Today, Korea’s industrial capacity has increased, and its industrial design is considered globally competitive. Meanwhile, the process of indiscriminately accepting Western design as a means of industrial development has raised questions about the identity of Korean design and led to efforts to identify and develop indigenous Korean design. As a result, ‘Korean design’, which is imbued with Korean history and tradition, continues to emerge.

3.1 Introduction: An Overview of History of Design in Korea The development of industrial design in Korea can be distinguished from other industrial nations. Modernization in Korea was impeded by Japanese occupation from 1910 to 1945. During occupation, it was not possible to establish modern Korean design within institutions, and the higher education curriculum did not include architecture, craft or design. In addition, Korea’s artisan culture did not develop into a design profession due to the absence of a mass consumer society. Modern design education was implemented for the first time following liberation from Japan and under the United States Army Military Government (USAMGIK) regime. However, the outbreak of the Korean War in 1950 demolished all industrial J. Kim (B) Korean Intellectual Property Office (KIPO), Daejeon, South Korea © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_3

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infrastructure, leaving Korea as one of the most impoverished countries in the world. As a result of foreign aid, modern design in Korea once again began to develop. From the 1960s, and under a dictatorship, Korea underwent rapid growth to become an industrialized nation and laid the cornerstone for the development of industrial design. A design promotion plan was initiated as part of the government’s export packaging improvement scheme and its broader policy to support industrial development and increase export. A governmental agency dedicated to design—the Korea Institute of Design Promotion (KIDP)—was founded in 1970, and the Design and Packaging Promotion Act was enacted in 1977. The government led the development of the design field for a long time. Consequently, the field of product and packaging design grew rapidly while the development of design as art and culture stagnated. From the outset of industrialization, corporations established in-house design systems and enhanced their design capacity. However, the performance of individual designers in the private sector was of a relatively low quality. Design in Korea began to thrive once the dictatorship came to an end and the democratization movement gained momentum, resulting in self-government in the late 1980s. In the 1990s—as Korea opened its markets to foreign trade and overcame the International Monetary Fund (IMF) crisis—design became a critical tool for securing industrial competitiveness and corporates quickly implemented ‘design management’. Although industrial design developed later in Korea than in the West, it is a ‘compressed’ history characterized by huge transformation in a relatively short period of time, reflecting the economic development of Korea more generally. Since the 2000s, and underpinned by a burgeoning Hallyu [Korean Wave], Korea has grown to be the tenth largest economy in the world and a leader not only in the design of electrical products, electronics, shipbuilding and user interface/user experience (UI/UX), but also in cultural industries such as pop music, cinema and food. There is also resistance to rapid Westernization in the design field, and discussions on Korean cultural identity and the search for ‘Korean design’ continue.

3.2 Introduction of Modern Design by the US (1945–1960) 3.2.1 The Beginning of Design Education Korea’s modernization began very late compared to Western society as a result of a series of historical tragedies. In the early twentieth century, Korea was under Japanese colonial rule for 36 years, and after liberation, Korean society suffered turmoil due to ideological conflict. Shortly after, three years of Korean War (25 June 1950 to 27 July 1953) left most of the infrastructure burnt to the ground. After liberation, awareness of design emerged as a result of the massive influx of relief goods during post-war reconstruction led by the United States of America (US).

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Around this time, design and architecture education began for the first time. In 1945, the USAMGIK regime was established. After three years of US military administration, Korean society had become greatly influenced by American culture. In 1946, the USAMGIK founded Seoul National University and commenced architecture and craft courses.1 In the same year, a design course was established in the Department of Arts at ‘Yaerimwon’ at Ewha Womans University, an American Christian school. Similar courses at other universities quickly followed—between 1948 and 1949, design-related courses were established at Sookmyung Women’s University, Hongik University and Chosun University. The introduction of US and Western culture to Korea by USAMGIK provoked a fundamental shift in society, across the economy, education and culture. American culture had been embraced without reservation as a sign of hospitality toward the US as a liberation army and ally. Products that were previously unknown to Koreans— for example, chewing gum; groceries; clothing; weapons; magazines such as Life, Vogue and Time; US Army radio and television broadcasts—introduced American culture in real time. The US also offered various forms of support for design to help prevent the influence of South Korea by China, Russia and North Korea.

Fig. 3.1 Lucky Toothpaste design (1954, 1955) (source: Monthly Design (1994/01), p. 118)

1

In August 1946, according to United States Army Military Government’s Ordinance No. 102, the Ministry of Education promulgated a National University Scheme and founded Seoul National University (minister and lieutenant, Harry B. Ansted was the first president from 1946 to 1947). The art college was founded and design courses were established to conduct modern design education.

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An early example of Korean design and the influence of the US culture is Korea’s design for ‘Lucky Toothpaste’, which adopted an American style of design, eliminating decoration and enlarging the product name in English (Fig. 3.1).

3.2.2 Establishment of the Korea Handicraft Demonstration Center In the 1950s, post-war Korean design remained at a rudimentary stage, mainly craft manufacturing. A ‘Catalog of Export goods’ by Shinsung Craft, which produced the most popular crafted items at the time, shows how products were mainly limited to traditional crafts (Fig. 3.2). The infrastructure was so poor that the first car produced in 1955 was made from the assembled parts of US Military jeeps and drum cut-outs.

Fig. 3.2 Export goods catalog by Shinsung Craft (1950s) (source: Shinsung Craft (which ceased operation in 1966))

In 1957, the US Department of State International Cooperation Administration (ICA) dispatched a US industrial design company—Smith, Scherr & McDermott International (SSM)—to help activate industrialization in Korea.2 SSM surveyed Korean industry and implemented a craft industry development plan and university education program.3 Samuel S. Scherr led the program and three designers—Stanley 2

Under the United States of America (US) Department of State, the International Cooperation Administration (ICA) oversaw technical support for developing countries. 3 See Park (2002), p. 5.

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Fistic (ceramics), Paul Talentino (crafts and education), and Austin Cox (metal and jewelry design)—assisted him.4 In 1958, SSM established the Korea Handicraft Demonstration Center (KHDC) in Seoul.5 Norman R. De Haan was the first director of KHDC.6 KHDC was comprised of a design studio, production studio, ceramics studio, gold and silver work studio and exhibition space; and conducted education, publication, marketing and exhibition projects. Its design promotion scheme encompassed industrial support, education, and awareness campaigns across the design field. Underpinned by the support of the Korean Government, which was committed to increasing exports, KHDC improved the design of selected products for export to foreign markets. The newly designed products went on a touring exhibition in Korea and ‘A Korean Project’ exhibition at Akron Art Institute in the US presented and sold craftworks such as mother-of-pearl inlayed and lacquered furniture, bags, baskets and brassware. Over the next three years, the KHDC identified various products of traditional craft and light industry, redesigned them, and then promoted them for export. Notwithstanding the poor sales performance, it succeeded in identifying the need for industrial design. The KHDC also launched a ‘Design Educator’s Overseas Training Program’ (1958) to send a few students to US universities for training. Those who returned to Korea became teaching staff in Korean universities and began establishing design education programs that adopted an American education system and design methodologies. KHDC was closed in January 1960.7

3.3 1960s: Industrialization Policy and the Emergence of Industrial Design 3.3.1 Industrial Design Centered on Imitation and OEM In the 1960s and 1970s, Park Chunghee’s regime, which was in power for over 19 years, implemented export-oriented industrialization policies. Industrial products such as Korea’s first radio, television, and air conditioner were produced during this period. GoldStar Electronics (which became LG Electronics in 1995) released 4

Samuel S. Scherr (1923–2002) graduated from the Cleveland Institute of Art in 1946. In 1948, he founded the design agency Smith, Scherr & McDermott International. 5 KHDC operated with the support of the United States Operations Mission (USOM), United Nations Command in Korea, the 8th United States Army in Korea and the Korean Government. 6 Norman R. De Haan dropped out of the architecture course at Illinois Institute of Technology, served as a sergeant at the 8th United States Army in Korea, and took part in the Bando Hotel reconstruction before taking on the role of Director at the Korea Handicraft Demonstration Center (KHDC). 7 See Kim (2008a), pp. 15–26.

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Korea’s first household electronic appliances including a vacuum tube radio (1959), refrigerator (1965), black and white TV (1966) and air conditioner (1968). At this early stage, due to a lack of trained design professionals, these designs tended to imitate products from overseas (Figs. 3.3 and 3.4).

Fig. 3.3 First automatic telephone (GS-1) produced in Korea by GoldStar Electronics, (1961) (source: Monthly Design (1994/02), p. 152)

Fig. 3.4 First radio (A-501) produced in Korea by GoldStar Electronics (1965) (source: Monthly Design (1977/05), p. 86)

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The advertising market expanded when the Korean Broadcasting System (KBS)— the national broadcaster—was established in 1961 and started broadcasting advertisements in 1963. Following the completion of factory construction, in 1962, Saenara Motors began importing semi-knock-down (SKD) parts of Nissan’s ‘Bluebird’ (P301) to assemble in Korea based on a technical cooperation agreement with Nissan, Japan. Hyundai Motors, founded in 1967, also started producing the ‘Cortina’ car by forging an alliance with Ford. The majority of products were produced by original equipment manufacturers (OEMs) or by assembling imported metal molds.

3.3.2 Establishment of the In-House Design System and Design as a Profession The growth of the Korean economy served as the foundation for expanding the design field. As corporates founded internal design teams, universities launched designrelated courses to meet the demand for designers. The new demand for designers saw an increase in the number of design students—over the eight years from 1962 to 1970, while the total number of university students in Korea remained steady, the number of students in craft and design courses increased by almost 600%.8 GoldStar Electronics was the first company to establish a team that specialized in industrial design, hiring Yonggwi Park and Byeongtae Choi as Korea’s first industrial designers and opening an industrial design studio in 1960. Other companies soon followed, including Samsung Electronics, founded in January 1969. Rapid industrial development prompted a change in visual design. Oriental Brewery (OB), Lucky Chemical Co., Ltd (now LG Chemical), and Samhwa Printing established advertising and design studios. The field of design further expanded as banks and pharmaceutical companies began to hire designers. In the late 1960s, Korea’s first advertising agency, Manbosa, was established and was soon followed by a large number of other advertising agencies.

3.3.3 The Commercial and Industrial Design Exhibition Until the 1960s, the recruitment of designers was minimal because most companies were still small scale—the concept of originality was not well understood, and design was perceived as being limited to textile and fashion design. Packaging design and production technology was also mediocre. The Government was keen to improve the design and packaging of export goods with the aim of fostering the export industry. Government efforts included the establishment of the ‘Commercial and Industrial Design Exhibition’ (now the ‘Korea 8

Hong (1993), pp. 20–23, 34–40.

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International Design Award’) in 1966. The Commercial and Industrial Design Exhibition was a focus for Korean modern industry and helped lead trends in design. It has now grown to become a very prestigious design exhibition and acts as a gateway for new generations of designers.9

3.4 1970s: Industrial Development and Government-Led Design Promotion 3.4.1 Development of Industrial Design In the 1970s, demand for design began to surge underpinned by successful economic development. In 1974, Korea’s first original model automobile, the Hyundai ‘Pony’ was released. Giorgetto Giugiaro from Italdesign studio led the styling, establishing Korea as the world’s 16th and Asia’s second nation (following Japan) to produce an original model. The Hyundai Pony sales hit 17,000 units in the first year of launch. It secured over 40% of the Korean market and was exported to Ecuador (Fig. 3.5). In the late 1970s, home appliance companies continued developing high-quality products such as VCRs. However, in the absence of specialist design agencies, companies increasingly established in-house design systems and recruited designers.

Fig. 3.5 The ‘Pony’ by Hyundai Motor Company (1976) (source: ©Charles01 (1976))

9

See Park (2002), p. 5; Kim (2015), pp. 204–206.

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Alongside the expansion of industry in the 1970s, the advertising industry grew and produced advertising agencies and professional production studios such as Cheil Worldwide and Yonhap Advertising. Between 1974 and 1975, OB Beer, Cheil Industries, and Shinsegae all implemented new corporate identities (CI) followed by the SsangYong Group in 1978.

3.4.2 Introduction of Government Policy on Design Promotion In 1970, the Government founded the Korea Design & Packaging Center (KDPC) (now the KIDP) and enacted the Design and Packaging Promotion Act in 1977.10 KDPC carried out state-led and diverse design promotion programs to support the industry. The institution joined the World Crafts Council (WCC) in 1971, the International Council of Graphic Design Associations (ICOGRADA) in 1972, and the International Council of Societies of Industrial Designers (ICSID) in 1973. It also supported Korea’s export industries by researching design trends and overseas markets and collected materials on design development and policy reports. In 1970, it published the first issue of Design·Packaging, a specialized magazine on design and packaging, and opened a design library. The library played a key role as an information center for design, featuring both domestic and international publications, magazines and slides on design and packaging. The KDPC also held exhibitions to improve the Korean public’s awareness of design. It organized numerous exhibitions—including the Commercial and Industrial Design Exhibition; Korea Packaging Competition (1971–1975, 1980, 1987, 1988); KOREAPACK (1971, 1985, 1987); SEOUL PACK (1989); Switzerland Poster Exhibition (1972); Outstanding Packaging Comparison Exhibition (1973); Overseas Packaging Data Exhibition (1974); Italian Industrial Design Exhibition (1977, 1979); and British Industrial Design Exhibition (1979)—and played a critical role in enhancing corporate, designer and public understanding of design. It also conducted design improvement projects for electronic products such as desk lamps, radios, watches, telephones, stationery products and miscellaneous everyday items for export. At the same time, numerous professional design associations were formed and became active, including the Korea Designer Council (KDC) (1972); Korea Society of Graphic Design (KSGD) (1972), now the Korea Society of Visual Design (KSVD); Korea Society of Industrial Design (KSID) (1972); Korea Society of Crafts Design (1973) and Korean Society of Design Science (1977). Responding to an increasing demand for design, specialized magazines in design Ggumim (1975) and Monthly Design (1976) published their first issues.

10

See Park (1970); Kim (2008b), pp. 46–69.

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3.4.3 Emergence of Korean-Style Design A movement seeking designs that reflected Korean identity arose in resistance to the rapid westernization and influx of Western design in the 1970s. Exhibitions mainly in the graphic design field were held on ‘the beauty of Korea’, ‘visuals of Korea’, ‘Korean style’, ‘Korean pattern design exhibition,’ and ‘colors of Korea’. Kyoman Kim’s works exemplify the design style at this time.11 Kyoman Kim interpreted traditional Korean themes using a modern aesthetic and was granted first place in ‘100 industrial designers who represent Korea’ in 1996. In tandem with the Government’s policies promoting tourism, Korean tourism poster production increased and contributed to the development of poster graphics (Fig. 3.6). Fig. 3.6 ‘Discover Korea’ tourism poster designed by Kyoman Kim (1976) (source: Monthly Design (1977/03), p. 6)

11

Kyoman Kim (金教満, 1928–1998), Professor at Seoul National University, South Korea. See Yoo (1977).

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3.5 1980s: Good Design and Korean-Style Design 3.5.1 Good Design and the GD Mark Throughout the 1980s in Korea, popular culture began to grow fueled by economic development and the public became increasingly familiar with industrial design. In 1983, KBS TV aired the six-part series ‘World’s Era of Design Revolution’, expanding the discourse on design beyond the industry and to the public. In 1983, GoldStar founded a design research center and hosted Korea’s first ‘GoldStar Industrial Design Competition’. In the same year, Samsung launched the first edition of ‘Samsung Good Design Exhibition’. Starting with ‘Pony Excel’, Hyundai Motor Company exported cars and brought significant technological advancement in the heavy industry. Corporates hurried to implement CI and produced corporate brands and unique designs. The Government’s ‘Good Design’ (GD) mark system and exhibitions accelerated the shift toward quality design and Korean-style design.12 Until the 1980s, Korean products failed to compete with low-priced products from emerging industrial countries in Southeast Asia or the design and quality of products from developed countries. KIDP enacted the ‘GD mark’ system and granted the mark to Korean-made products with outstanding design. Exemplary designs selected across nine categories— electrical products, electronics, housing, equipment, children’s goods, daily goods, leisure and sports, transportation, other—were presented to the public at exhibitions. The GD mark system also encouraged corporates to move away from imitation and develop original products. Its influence also extended to consumers as it was considered to be a kind of product quality certification mark. The system was successful and continues today (Fig. 3.7).13

12

The term, ‘Korean-style design’ used to refer to design with a theme of past traditional culture. From the 1960s to the 1970s, it referred to Korean tourism posters, products imitating traditional crafts and architecture that referenced traditional architecture. In the 1980s, it could be found in tourism products or Korean promotion posters. Some within Korea criticized it, deeming it to be a form of ‘Orientalism’. 13 See Park (2002), pp. 30–33.

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Fig. 3.7 The ‘GD mark’ (1985) (source: Korea Institute of Design Promotion)

3.5.2 1988 Seoul Olympics and Korean-Style Design The 1988 Seoul Olympics was another impetus for the advancement of Korean design. A master design plan was devised and a Design Committee was established as part of a broader Olympics Committee (the 1988 Seoul Olympics Committee) for the first time to deliver the huge amount of design required for the event. Symbol marks, emblems, mascots, logos, pictograms, posters, uniforms, facilities and videos were produced. This proved to be a significant stepping-stone in the development of a range of design fields, including visual communication design, environmental design, architecture, advertisement and fashion. In particular, the use of computer graphics for the design of the 1988 Seoul Olympics poster was a turning point for graphic design. On the other hand, in the course of preparation for the Olympics, there were increasing calls for Korean design that was differentiated from the design of other nations, as well as an increase in modernist interpretations of Korean traditional elements. Design founded upon a modernist interpretation of tradition (‘Internationalism style’) was evident in the design of the 1988 Seoul Olympics including Olympic emblems, mascots, and stadiums (Fig. 3.8).14

14

See Kim (2013), pp. 272–278.

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Fig. 3.8 1988 Seoul Olympics promotion posters (1988) (source: National Archive of Korea)

3.5.3 Hangeul (Korean Alphabet) Design and the Development of Typography The 1980s saw the computer enter the design field and typography take a critical turn. As the computer was brought into typesetting, computer typefaces were created and magazines with experimental layouts were published. ‘Ahn Sangsoo’ typeface, completed in 1985, is a non-square Korean typeface developed by the designer, Ahn Sangsoo. The typeface gained prominence when it was installed as a default font in the ‘Are Hangeul’ word processor program in 1991. Ahn Sangsoo typeface was innovative in that it only needed 67 characters for the font, while Korean typeface generally requires up to 10,000 characters. Transcending mere letters to be read, it was an experimental work in which the Korean alphabet was used as compositional elements. Representative examples include ‘Hangeul Mandala’ (1988) (graphic design), ‘Munjado’ (1996) (graphic design), and ‘Bogoseo\Bogoseo’ (1989) (publication). These works redefined the individual’s interaction with Hangeul as ‘seeing’ Hangeul as art rather than just ‘reading’ Hangeul as words (Figs. 3.9 and 3.10).15

15

See Kim (2013), p. 297.

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Fig. 3.9 ‘Ahn Sangsoo’ typeface by Ahn Sangsoo (1985) (source: Ahn-Graphics)

Fig. 3.10 Bogoseo\Bogoseo, an experimental typography magazine (1988–2000) (source: AhnGraphics)

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3.6 IMF, Design Management and the Cultural Industries 3.6.1 Design Management In the early 1990s, the Korean economy collapsed as a result of a number of factors, including the rapid opening of the market. As overseas goods flooded the market, the significance of design was highlighted in relation to national competitiveness and the survival of local industries. Design agencies opened one after another and corporations promoted the role of designers so that they now took part in business management. GoldStar was the first conglomerate to appoint a designer as an executive director in 1991 and launched the ‘GoldStar Design Competition’. Citing ‘quality management’, Samsung Electronics elevated the position of designers to that of ‘directors’ and made the head of the design team the equivalent of a president. In addition, the company launched the ‘Design Membership’ scheme in 1993 and founded a design education institution ‘Samsung Art & Design Institute (SADI)’ to foster design professionals in 1995. Hyundai Motor Company also elevated designers to vice-president and established its ‘Design Institute’ as an independent entity in 1995. Many other Korean companies adopted this model. From the mid-1990s, ‘design management’ began to draw the attention of corporations. In 1996, Samsung’s CEO Kunhee Lee emphasized that ‘you need to know design to know management’ and proclaimed ‘the first year of global business, the year of design innovation’. He ordered 180 executives to undertake intensive design education and dramatically expanded the scale of the design team. LG Electronics (formerly GoldStar Electronics) initiated a 10-year plan to increase the number of designers from 180 to 350, half of whom would be foreign designers. The stationery brand, Morning Glory, had 300 employees of which 100 were designers. Design management became the trend. The production of original designs increased and the reputation of design as a high-value-adding industry was secured. From this point, Korea began to produce a number of very successful global products, of which Samsung Electronics ‘Anycall’ (1993) mobile phone is a representative example. Samsung developed the ‘Anycall’ brand, based on its ‘SH-700’ mobile phone model released in November 1993. Within two years, its market share rate exceeded 50%, overtaking Motorola in 1995 and generating numerous best-selling products. In 1997, at the ‘Industrial Design Excellence Award’ (IDEA) hosted by the Industrial Designers Society of America, Samsung Electronics was the most awarded corporate alongside Apple Computers, Compaq Computers and Steelcase (Fig. 3.11).16

16

See Kim (2013), pp. 311–315.

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Fig. 3.11 The ‘Anycall’ series by Samsung Electronics: SGH-T100 (2002), SGH-E700 (2003), SGH-D500 (2005), SGH-E250 (2006), J700 (2008) (source: Samsung Newsroom (news.samsung.com))

3.6.2 IMF Intervention and Design Drive In December 1997, as IMF measures were imposed, the Government reiterated the significance of design—as a knowledge industry that added value in the twentieth century, that was focused on the globalization of design, and that fostered industry competitiveness—allocating a budget of trillions of won. From 1999, the Government hosted the ‘Korea Design Award’ ceremony and presented awards to corporations and individuals who contributed to the advancement of the design industry. For the first award ceremony, the CEO of LG Electronics, Jahong Koo, won the Design Management Award. At this time, coupled with the development in information and communication technology, the games and content industry drastically expanded, and the UI/UX design field rapidly grew. The KIDP made various efforts to improve awareness of design, including the ‘Year of Industrial Design Development’ declaration (1993), Design Week (1 September 1993 to 9 September 1993) and Design Day (1993–1997). It put forward a five-year plan for industrial design development (1993–1997) and held a Korea Youth Design Exhibition (1993), Globalization Strategy Discussion (1996) and Design Information Program (Multimedia Industrial Design Aid System (MIDAS), 1997). It also hosted events by ICOGRADA (2000) and ICSID (2001).17 In addition, it founded the Korea Design Center to deliver design-related projects and to operate as a design hub that included the Design New Technology Center, Design Information Center, Startup Incubator, Design Workshop and Exhibition Gallery, and design-related organizations and agencies such as the KIDP (Fig. 3.12).18

17 18

See Park (2002), pp. 72–76. See Korea Institute of Design Promotion (2021).

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Fig. 3.12 The Korea Design Center (2001) (source: Korea Institute of Design Promotion)

3.6.3 The Advent of Korean Design The opening of markets, discourse on ‘globalization’ and the postmodernism debate led to further discussion of the industrialization of culture. This originated from a movement to transform traditional culture to a mass consumer society. Threatened by an influx of imported goods that dominated the domestic market, the search for a ‘Korean design’ that was specific to the Korean culture and lifestyle began in order to protect the domestic market. Hangeul, the Korean alphabet was used for the name of products and manuals; ‘Korean’ products such as kimchi refrigerators and floor mop cleaners were released. GoldStar’s ‘mop vacuum cleaner’ is essentially

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a manifestation of the Korean practice of cleaning the floor with a wet mop, and the kimchi refrigerator was developed solely for the domestic market. Numerous other products followed, such as microwaves with rice-cooking, soup, and steam functions; dishwashers with a soaking function; rice-cookers with options for rice, porridge and mixed grains; refrigerators with a separate section for kimchi; electronic brewers for herbal medicine; sesame oil producers; pressure cooker microwaves; iron pot rice-cookers; laundry machines with boiler functions and the air bubble laundry machine. This strategy not only secured the domestic market but also increased exports (Figs. 3.13 and 3.14).19 Fig. 3.13 ‘Mop’ vacuum cleaner by GoldStar Electronics (1991) (source: Monthly Design (1992/12), p. 105)

Fig. 3.14 ‘AI’ rice-cooker with Korean menu buttons by GoldStar Electronics (1991) (source: Monthly Design (1992/12), p. 102)

19

See Kim (2013), pp. 333–336.

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3.7 The 2000s and Beyond: The Korean Wave and Design as Public Welfare 3.7.1 World’s Leading Design In the 2000s, Korea’s industrial design became world-class. National pride was boosted by successful recovery from the IMF financial crisis, a thriving cultural industry and Hallyu [Korean wave] fever.20 Corporate design management developed and proved that it could deliver corporate goals. Korean companies such as Samsung and LG became the biggest winners of prestigious international design awards including iF, Red Dot and IDEA. Korea became the global industry leader in the majority of manufacturing sectors—mobile phones, televisions, refrigerators and washing machines. From the 2000s, home appliance companies in Korea have led design. For instance, in 2006, LG Electronics released the sensational ‘Art Dios’ (2006) which incorporated an artwork in its design. The refrigerator boldly decorated with a flower illustration across the facade dismissed the notion that kitchen appliances need to be white. Ever since, fine artworks applied to home appliances such as kimchi refrigerators, air conditioners and washing machines have become a trend. LG has released even more decorative products that incorporate tempered glass facades and cubic zirconia decorations (Figs. 3.15 and 3.16).

20

As Korean pop culture gained global popularity, the Chinese media coined the term Hallyu [Korean wave] which is now widely used. Starting with TV drama series, Korean pop music, food, fashion, cosmetics and electronics have gained tremendous popularity and have spread across Asia and the world.

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Fig. 3.15 ‘Art Dios’ refrigerator (R-U713MHY) by LG with tempered glass, large flower pattern and cubic zirconia decoration (2006) (source: DK Award (2006))

Fig. 3.16 ‘Signature’ series by LG (2016–the present) (source: LG Electronics (2019))

In 2014, LG released the ‘Signature’ series as part of its ‘super premium’ strategy. The series aimed to suggest a future direction for home appliance development and to secure early domination of the market, even though the products themselves would not generate profit. The series went on to exceed its target twofold, outstripping the top three global home appliance brands, Whirlpool and Electrolux. LG Electronics is growing rapidly to become the world’s leading home appliance company.

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Hyundai Motor Company also demonstrated notable growth. Launching successful successive models—‘Sonata’, ‘Avante’ and ‘Santa Fe’—Hyundai overtook Ford and became the world’s fourth automaker in terms of sales in the first half of 2009. In 2006, Kia recruited Peter Schreyer, one of the world’s top three automobile designers as design executive and vice-president. Under the slogan, ‘Design Kia’, Kia implemented a corporate-wide design management plan, produced numerous successful projects including ‘Soul’ (2008) and ‘K5’ (2010) and swept the awards at international design competitions. In the internet and media sectors, character designs such as ‘Mashimaro’ (2000), ‘Pucca’ (2000), and ‘Pororo’ (2003) started gaining worldwide popularity and the online games sector grew remarkably. K-Pop fever led by idol bands extended to a global audience beyond East Asia, and performance, cinema, drama, and Hangeul were touted as global products. Korea acquired a world-leading level of design across the industries.21 Below is a selection of popular Korean products from the 2000s (Figs. 3.17, 3.18 and 3.19).

Fig. 3.17 ‘Bordeaux’ TV by Samsung Electronics (2006) achieved the largest market share in the global TV market for the first time (source: Samsung Electronics (2016))

21

See Kim (2013), pp. 352–356.

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Fig. 3.18 ‘Chocolate Phone’ by LG Electronics (2005) became a ‘million seller’—15,000,000 units were sold within 18 months (source: ©Miloševi´c P (2019))

Fig. 3.19 ‘Iriver’ series by Raincom (2002), INNO Design, secured 20% of the global market share (source: ©Lokal_Profil (2011))

3.7.2 Decentralization and Regional Design Centers As the self-government system implemented in 1995 became well established, design was employed not only for industrial and economic development, but also for public welfare and development across South Korea. In the early 2000s, the Seoul Metropolitan Government was the first local government to use design in its policy development. First, it created the city’s CI, logo, character and slogans. Then, it initiated design-driven policies such as ‘Cheonggyecheon Restoration’, ‘Seoul Square’, ‘Central Bus Lanes’, and ‘New-town Project’, bringing in a golden age of public design in Korea. Design projects were conducted that regenerated withering local economies and that significantly improved resident quality of life, including: ‘Seonyudo Park’ (Seoul, 2002), a water treatment facility transformed into a park; ‘Public Art Project’ (Yeongwol County, Gangwon Province, 2008); ‘Mural Competition’ at the Dongpirang Village (Tongyeong, Gyeongsangnam-do Province, 2007); and ‘Jeju Olle Trail’ (2007). Each local government’s brand development and public design programs demonstrated notable improvements, including immediate environmental improvement, an increase in the brand value of agricultural products and growth in tourism revenue.

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Since 2000, the national government has begun to build design centers in each region. To date, five regional design centers (RDC) have been established in Gwangju, Busan, Daegu, Chuncheon and Daejeon. RDCs are equipped with facilities for design-related work, startup incubators, design equipment studios, exhibition galleries and local design promotion halls. Each center operates independently, providing a wide range of programs on specialized local design, corporate design development support, training for design professionals, information, exhibitions and conventions. The Seoul Metropolitan Government has also built ‘Dongdaemun Design Park (DDP)’ and established the ‘Seoul Design Foundation’ to implement design-related policies (Fig. 3.20).22

Fig. 3.20 Dongdaemun Design Plaza (DDP) (Zaha Hadid Design, 2014) (source: DDP, ©Panta Creation (2014))

Acknowledgements The author wishes to thank Kahyun Lee for her help with the English translation and research for this chapter.

22

See Kim (2008a), pp. 129–137; Kim (2013), pp. 358–379.

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References Charles01 (1976) Hyundai Pony when first imported into UK (CC BY -SA 3.0). https://commons. wikimedia.org/wiki/File:Hyundai_Pony_4_door_first_generation.jpg. Accessed 25 Oct 2021 DK Award (2006) Past Winners. https://award.kidp.or.kr/Exhibit/index_gd_previous_view.do?idx_ history=3726. Accessed 25 Oct 2021 Hong JW (1993) A Study on the Historical Development of Design Education in Korean Universities. Master’s Thesis. Seoul National University, Seoul Kim JK (2008a) History of Korea Design. Mizinsa, Seoul Kim JK (2008b) Research on the Developmental Direction of the Korea Design Promotion System. Doctoral Thesis. Graduate School of Art, Seoul National University, Seoul Kim JK (2013) Design of Korea. Ahn Graphics, Seoul Kim JK (2015) A Study on the Dawn and Role of Design Competitions in Korea—Focused on a Commercial and Industrial Design Exhibition Held by the Korean Government. Arch Design Res 28(3):203–217 Korea Institute of Design Promotion (2021) Korea Institute of Design Promotion 50 Years. KIDP, Seoul LG Electronics (2019). LG SIGNATURE Showcases Premium Blend of Art and Technology in the Heart of London. https://www.multivu.com/players/English/8606451-lg-signature-londondesign-festival/. Accessed 25 Oct 2021 Lokal_Profil (2011) The iRiver iFP-190TC Mp3 player (CC BY -SA 3.0). https://commons.wik imedia.org/wiki/File:IRiver_iFP-190TC,1.jpg. Accessed 25 Oct 2021 Miloševi´c P (2019) LG KG800 cell phone (CC BY 4.0). https://commons.wikimedia.org/wiki/File: LG_KG800.jpg. Accessed 25 Oct 2021 National Archive of Korea. https://theme.archives.go.kr/next/stampPoster/stampList.do?year= ALL&stampPosterType=N&searchType=ALL&keyword=SEOUL1988&s_search=검색. Accessed 25 Oct 2021 Park S (1970) A Study on the Korea Design & Package Center. Master’s Thesis. Seoul National University, Seoul Park A (2002) 30 Years of Korean Design Promotion. KIDP, Seoul Samsung Electronics (2011) The Story of Samsung Electronics’ Cell Phone that has Sold Over 10 Million Units. https://news.samsung.com/kr/951. Accessed 25 Oct 2021 Samsung Electronics (2016) Samsung TV Throughout the Past Ten Years: History of Challenge and Creativity. https://news.samsung.com/global/video-samsung-tv-throughout-the-pastten-years-history-of-challenge-and-creativity. Accessed 25 Oct 2021 Yoo GJ (1977) Professor Kim Kyoman’s Lyrical Design World. Monthly Design (1977/03)

Additional Bibliography History of Samsung Mobile Phones: 10 Million Seller Club. https://news.samsung.com/global/his tory-of-samsung-mobile-phones-10-million-seller-club. Accessed 25 Oct 2021 Lucky Goldstar (1987) 40 years of Lucky Goldstar Seen in Photos. Lucky Goldstar, Seoul Seoul National University, Visual Arts Institute (1994) Chulhong Min and 40 Years of Industrial Design in Korea. Seoul National University, Seoul

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Jongkyun Kim studied industrial design at Seoul National University, South Korea; law at Chungnam National University, South Korea; and curating of contemporary design at Kingston University, United Kingdom. His area of research is the history of design, intellectual property and curation. He has been working at the Korean Intellectual Property Office since 2008. His publications include Design in Korea (Ahn-Graphics, 2013) and Design War (Hongsi Communication, 2013). He also co-authored Encyclopedia of Asian Design (Bloomsbury, 2020) and has published a number of papers on Korean design history.

Chapter 4

History of Design Protection in South Korea Junha Kim

Abstract After the end of the Chosun Dynasty, Japanese colonial rule and the United States Army Military Government in Korea, the first law regarding design was enacted in 1961 in the Republic of Korea (South Korea)—the Design Act of 1961. Over the past 60 years, there have been three full revisions and close to 40 partial revisions of the Act, culminating in the current Design Protection Act. In order to keep pace with, and effectively protect, industrial development in South Korea, these revisions have included the introduction of a partially examined registration system and stricter registration requirements, and the gradual extension of the term of the design right. This chapter sets out the history of South Korean design law, focusing on the unique features of the South Korean system for design protection.

4.1 Introduction Institutional movement for the protection of intellectual property rights (IPRs) in South Korea began at the end of the nineteenth century, the end of the Chosun Dynasty. During the period of Japanese colonial rule (1910–1945), the Japanese Patent Act and Design Act were applied as the laws for protecting IPRs. After South Korea became a sovereign state, following liberation in 1945, the Patent Act enacted under the United States Army Military Government in Korea (USAMGIK) (which contained rules about designs) applied. A separate statute to protect design, the Design Act, was first enacted in 1961. The Design Act has since been renamed the Design Protection Act, and has been developed over the past 60 years with three full revisions and approximately 40 partial revisions, in order to promote the creation of designs and contribute to the development of industry in South Korea, while also improving conformity with international laws on design protection. This chapter outlines the historical changes to the South Korean legal system for design protection. In particular, significant revisions of the Design Act are discussed. J. Kim (B) Taiyo, Nakajima & Kato, Tokyo, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_4

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Focusing on the unique system in South Korea for design protection, revisions related to the scope of designs protected by the Design Act, registration requirements and harmonization with international laws are outlined.

4.2 Design Protection After the Chosun Dynasty 4.2.1 End of the Chosun Dynasty In the Chosun Dynasty, modern industrial development did not reach the level of Western countries until the end of the nineteenth century. However, even at that time, there was recognition among intellectuals that Westernization was urgently required and that the protection of intellectual property (IP), including designs, was necessary.1 To the end of the Chosun Dynasty, in 1894, the Development Bureau in charge of patent affairs was established at Nongsangamun.2 There is an opinion that the Development Bureau was the first patent-related government agency in Korea.3 However, it is not clear what kind of work the Development Bureau was actually in charge of, and there is no record of it granting monopoly rights to any type of inventions or the like. Therefore, it is unlikely that the Development Bureau at Nongsangamun can be considered as the starting point of the South Korean patent system.4

4.2.2 Legal System During Japanese Colonial Rule If that is the case, the first legal system implemented in Korea for protecting IPRs can be said to be the Korean Patent Ordinance, Korean Design Ordinance, and Korean Trademark Ordinance promulgated in 1908 by Japan. At that time, Japan established the Supervisory Office to rule Korea, and the Patent Office of the Supervisory Office was in charge of affairs related to the above ordinances.5 It is said that 275 patents, 1

According to Lee Byunggyu, in 1882, a scholar named Ji Seokyoung wrote an appeal to the King to grant monopoly rights to those with special talent, and to prohibit the reproduction of book publications. At that time, the King ordered the implementation of that appeal. However, it appears that the appeal was not implemented: Lee (2008), p. 41. 2 According to the Encyclopedia of Korean Culture, at the end of the Chosun Dynasty, Nongsangamun was the central government office that was in charge of the administration of agriculture, commerce, fisheries, planting, geology and companies: Central Research Institute of Korean Studies. Nongsangamun. Encyclopedia of Korean Culture. http://encykorea.aks.ac.kr/Con tents/Item/E0013125. Accessed 25 Oct 2021. 3 Lee (2008), p. 42. 4 Korean Patent Attorneys Association (2007), p. 96. 5 Central Research Institute of Korean Studies. Patent. Encyclopedia of Korean Culture. http://enc ykorea.aks.ac.kr/Contents/Item/E0059523. Accessed 25 Oct 2021.

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40 designs, and 509 trademarks were registered from 1908 until 1910, when Korea was annexed by Japan. After the annexation of Korea by Japan in 1910, Japan ruled Korea, and during the colonial rule until 1945, Japanese laws such as its Patent Act and the Design Act were directly applied in Korea. In addition, the Japan Patent Office of the Ministry of Trade and Industry of Japan was directly in charge of work related to Korean patents and designs.

4.2.3 Legal System Under USAMGIK After Liberation In 1945, Korea was liberated from Japan and became a sovereign state. However, until the establishment of the South Korean Government in 1948, South Korea was administered by the USAMGIK. In 1946, the Korean Intellectual Property Office (KIPO) was established as the agency in charge of all IPRs including patents, designs and trademarks. Then, in 1946, the Patent Act was promulgated as USAMGIK Ordinance No. 91. The Patent Act included not only provisions regarding patents but also designs. However, the Patent Act, which was enacted under the USAMGIK, was to have little effect due to the Korean War (1950–1953) and the collapse of the economic system.

4.3 1961—First Design Act The Patent Act, which was enacted under the USAMGIK in 1946, addressed not only matters pertaining to patents, but also matters pertaining to other IPRs such as designs, which were either contradictory or unclear. Accordingly, design protection became the subject of separate legislation—the Design Act of 1961—which consisted of 37 articles. Article 2 of the Design Act of 1961 stipulated that ‘a person who devises a new design that can be used for industry in terms of shape, pattern, or color of an article or a combination thereof, may obtain a design registration for the design’. Further, Art. 3 addressed unregistrable designs, Art. 4 addressed novelty of designs (the determination of which was limited to consideration of designs that were publicly announced in publications that were published and distributed in South Korea), Art. 5 addressed exceptions to loss of novelty and Art. 6 addressed earlier-application priority. Therefore, the Design Act of 1961 set out all the registration requirements of the current law except for ‘industrial applicability’ and ‘creative difficulty’. In addition, Art. 15 stipulated the duration of the design right as eight years from the date of registration of the right. The Design Act of 1961 was influenced by the Japanese Design Act, which was enacted during the annexation of Korea by Japan. If the Design Act of 1961 had

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been based on the Patent Act enacted under the USAMGIK, the law governing design protection would have continued to form part of the Patent Act, as was the case in the United States of America (US) at that time. There is an opinion that the decision to base the law on Japanese law was based on geographical and cultural considerations—the Japanese legal system would have been easier to access than the US legal system and there was less of a language barrier.6

4.4 1970s and 1980s—First Full Revision and Major Partial Revision 4.4.1 Full Revision in 1974 Article 4 of the Design Act of 1974 stipulated that a ‘design’ was ‘the shape, pattern, or color of an article, or a combination thereof, which invokes a sense of beauty through visual perception’. A design was required to be a commodity, have physical form, be visible and have aesthetic qualities. Therefore, the 1974 revision established the requirements of a design that continue to apply under the current Act. Matters related to registration requirements were also established, in particular, Art. 5(1) on industrial applicability and Art. 5(2) on creative difficulty. Therefore, the 1974 revision also set out all the registration requirements stipulated in the current Act. In addition, with regard to novelty, the designs for determining novelty, which had been limited to those publicly announced in domestic publications, were extended to those publicly announced in some publications distributed abroad (Art. 5(1)(ii)).7

4.4.2 Partial Revision in 1981 South Korea joined the Paris Convention for the Protection of Industrial Property in 1979, and the Design Act of 1981 reflected the common provisions of the Paris Convention.8 For example, Art. 7(1)(v) of the Design Act of 1981 stipulated that when a design was exhibited at an international exhibition in a treaty country, an exception for loss of novelty applied. 6

Seo (2012), p. 84. Article 2 of the Enforcement Decree of the Design Act of 1974 added the following as publications distributed abroad for the purpose of determining novelty: (1) Publications issued by the Government; (2) Publications issued by educational institutions; (3) Publications published by public research institutes; (4) Publications or research presentations issued by accredited academic organizations; (5) Publications published by international organizations; and (6) Periodicals or personal books other than Nos. (1) to (5). 8 Paris Convention for the Protection of Industrial Property, 20 Mar 1883 (revised 14 July 1967), 828 U.N.T.S. 305 (Paris Convention). 7

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With respect to determining novelty, the limitation to designs publicly announced in only some publications distributed abroad was expanded to designs publicly announced in all publications distributed abroad (Art. 5(1)). In addition, in relation to creative difficulty, previous designs for determining creative difficulty, which were limited to publicly announced designs and designs described in publications, were expanded to include shapes, patterns, colors and the like widely known in South Korea (Art. 5(2)). Further, to ensure the convenience of the application procedure, it was provided that if there was a procedural or substantive defect in an application, the description of the application and the drawings attached to the application could be corrected as long as the correction did not change the gist of the original application (Art. 13-2).

4.5 1990s and 2000s—Second Full Revision and Major Partial Revisions 4.5.1 Full Revision in 1990 The Design Act of 1990 expanded the scope of publicly announced designs for the purpose of determining novelty from those that were publicly announced only in South Korea to those publicly announced in South Korea and in a foreign country (Art. 5(1)). With respect to creative difficulty, publicly announced designs and publications had previously been included in the scope of designs for determining creative difficulty. However, under the Design Act of 1990, publicly announced designs and publications for determining novelty were excluded from determining creative difficulty. That is, it was made clear that the designs to be considered for determining creative difficulty were limited to shapes, patterns, colors, and the like widely known in South Korea (Art. 5(2)). This revision was made to ensure there was a clear distinction between the determination of novelty and the determination of creative difficulty. In addition, Art. 41 of the Design Act of 1990 stipulated that ‘the owner of a design right shall have the exclusive right to use the registered design or any similar design commercially’, making it clear that the effect of the design right extended not only to the registered design itself, but also to similar designs.

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4.5.2 Partial Revision in 1994 In accordance with the General Agreement on Tariffs and Trade (GATT),9 under the Design Act of 1994, the duration of a design right was extended from eight years to 10 years from the date of registration of the design right (Art. 40(1)), and therefore, the protection of design rights in South Korea was aligned with international standards.

4.5.3 Partial Revision in 1996 The Design Act of 1996 introduced a design disclosure system and a compensation claim system in recognition of the reality that the fashion cycle of designs was becoming shorter, and to protect applicants who are design creators from the time an application is filed until registration of the design right. Specifically, according to the Design Act of 1996, an applicant may make a request to publish their own application even before the application is registered (Art. 232(1)). Further, after an application has been published, even before registration, if a design that a third party has used infringes the published application, the applicant may warn the third party in writing that the application has been filed. After the application is registered, the design right owner also has the right to claim compensation for the period from the date of warning to the date of registration, in addition to the exercise of the design right (Art. 23-3). An ‘information furnishment system’ (a form of notification system) was also introduced by the Design Act of 1996. Under this system, when a design application has been published, anyone can furnish information to the Commissioner of the KIPO along with evidence to the effect that the design cannot be registered (Art. 23-2(4)). As a result, the research burden on KIPO examiners was reduced, which had the effect of speeding up examination. The Design Act of 1996 is thought to have helped prevent inappropriate subject matter from being registered, as well as the prompt securing of design rights, due to the design disclosure system, compensation claim system and information furnishment system.

4.5.4 Partial Revision in 1998 In 1998, the Design Act introduced a partially examined registration system to simplify the application procedure for certain designs. Specifically, only some of the registration requirements are evaluated for a design of an item that is highly fashionable, such as whether the design: 9

General Agreement on Tariffs and Trade, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1A, 1867 U.N.T.S. 187, 33 I.L.M. 1153 (GATT 1994).

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• meets formality requirements; • is likely to offend the general morality and good customs of ordinary people; or • is likely to disturb public order. The remaining registration requirements are not evaluated. Therefore, it became possible to file an application for a partially examined registration for the grant of a design right (Art. 2(v)). However, an application for a partially examined registration can only be filed for designated articles. In 1998, the articles for which applications for partially examined registrations could be filed were stipulated in the Enforcement Regulations of the Design Act. The five classifications, based on South Korean classifications, were: B1 (clothes); C1 (bedding, curtains, etc.); F3 (office paper articles, etc.); F4 (packaging paper, packaging container, etc.); and M1 (textile paper, wallpaper, synthetic resin, etc.).10 Due to the introduction of the partially examined registration system, it became possible for design right owners of certain designs to secure a design right quickly before a fashion cycle comes to an end. At the same time, the burden of examination for applications for partially examined registrations was reduced, which has had the effect of shortening the design examination procedure from the point of view of the KIPO. Exceptions were also made to the ‘one design per application’ principle, so that up to 20 designs per application were permitted in the case of applications for partially examined registrations (Art. 11-2), in order to facilitate convenience for the applicant and to simplify the application procedure. A written opposition system was also introduced. The Design Act of 1998 provided that any person may file a written opposition up until three months after the date the registration of a partially examined application is publicly announced. If there is a written opposition, the KIPO will examine whether it is appropriate to grant the design right (Art. 29-2). The written opposition system prevents the existence of inappropriate rights and increases the legal stability and reliability of design rights. Finally, the duration of a design right was extended from 10 to 15 years from the registration date of the design right (Art. 40), thereby strengthening the protection of design rights.

4.5.5 Partial Revision in 2001 The partial revision of the Design Act in 2001 introduced a partial design system. Article 2(i) stipulated that a ‘design’ means a shape, pattern, color of an article (including a part of the article) or a combination thereof, which invokes a sense of beauty through visual perception. 10

In 1998, it was called the ‘non-examined registration system’. However, after 2014, it was renamed the ‘partially examined registration system’. In this chapter, it is simply referred to as the ‘partially examined registration system’.

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Previously, a design for a part of an article did not fall under the definition of a ‘design’ protected by the Design Act on the grounds that it was not a commodity. In order to prevent disputes due to the theft of partial designs, the scope of a design was expanded to include protection for designs for a part of an article that is not the subject of an independent transaction. However, the commodity requirement is still one of the requirements for a design, and so a partial design protected by the Design Act must be a part that cannot be physically separated from the article. In addition, the information furnishment system was amended. Previously, information could be furnished only for applications for which the applicant requested publication. However, following the Design Act of 2001, information to the effect that an application is ineligible for registration can be furnished along with evidence in relation to all applications regardless of whether the application is published or not (Art. 2-5). The partially examined registration system was also amended by the Design Act of 2001. In the case of an application to be treated as an application for a partially examined registration, in addition to the examination of formality requirements, morality and public order requirements and industrial applicability are now to be examined. In this regard, the aim of the revision was to minimize the occurrence of improper rights while also avoiding an increase in the burden of examination (Art. 26(2)).

4.5.6 Partial Revision in 2005 The Design Act of 2005 substituted the term ‘의장’—which originates from Chinese characters and was used to mean ‘design’ in the Design Act after 1961—with the term ‘디자인’ (di-ja-in), which originates from the English word ‘design’ and is used in everyday conversation. The name of the law was also changed from the ‘Design Act’ to the ‘Design Protection Act’ to enhance the public’s understanding of the law. In addition, with respect to the scope of designs protected by the Design Protection Act, the definition of ‘design’ under Art. 2(i) was amended to stipulate that an article was to include a font.11 However, although a font registered as a design can be protected, it will not be an infringement of the design right if the font is used in the ordinary process of typing, typesetting, printing or to make a product (Art. 44(2)). This helps clarify the relationship of rights between the design right owner and a third party. Before this revision, in South Korea, the Supreme Court delivered a judgment that stated that a font itself cannot be protected under the Copyright Act because a font itself does not fall under the subject matter protected under the Copyright Act. Further, the Court observed that, despite the fact that a font is an object that should

11

Article 2(i) defines ‘font’ as ‘a set of characters (including those in the form of numerals, punctuation marks, symbols, etc.) made in a style with common characteristics for recording, marking, or printing.’

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be protected, it is difficult to protect a font under the current legal system.12 Due to this revision, font creators were able to receive fair compensation for their effort and capital invested in development. In relation to creative difficulty, the scope of designs for determining creative difficulty was expanded. Previously, widely known shapes, pattern, and colors in South Korea were included in the scope of designs for determining creative difficulty. However, due to the revision, publicly known designs in South Korea and foreign countries were also added to the scope of designs for determining creative difficulty, and the registration requirements for creative difficulty were strengthened (Art. 5(2)). Further, for the convenience of applicants, it became possible to change an application for a fully examined registration to an application for a partially examined registration (Art. 18(3)). In addition, previously, an application for a partially examined registration could not be rejected, even if there was previously furnished information regarding lack of novelty or creative difficulty and the like. However, the partially examined registration system was amended to allow for a determination of novelty and creative difficulty and the like, and for a decision of rejection to be made after this kind of information was furnished, which helps prevent the improper registration of a design right (Art. 26(3)).

4.5.7 Partial Revision in 2007 The Design Protection Act of 2007 further amended the partially examined registration system. Previously, creative difficulty was not considered as a registration requirement for a partially examined application. However, the Design Protection Act of 2007, provided that whether a design can be easily created by shape, pattern, color, or a combination thereof is to be considered when examining a partially examined application (Art. 26(2)). This revision was to prevent the inappropriate registration of design rights, while also promoting the quick protection of design rights under the partially examined registration system (by ensuring the time required for examination is not significantly increased because of the creative difficulty registration requirement).

12

Supreme Court, Sentence, 94NU5632 Judgment, 23 Aug 1996.

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4.6 2010s to Present—Third Full Revision and Major Partial Revisions 4.6.1 Full Revision in 2014 After the second full revision to the Design Act in 1990, regulations on the partially examined registration system were amended several times. New articles were added regarding authority of representation and use of electronic documents and communications networks. The need for a full revision arose due to the complexity of the article numbers within the Design Protection Act. Accordingly, the Act was fully revised in 2014. Significantly, the Design Protection Act was amended in accordance with the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement), to provide for international applications (Ch. 9, Arts. 173 to 205).13 The Design Protection Act of 2014 also stipulated that a design that can be easily created by shape, pattern, color, or a combination thereof, which is widely known not only in South Korea but also in a foreign country, before the filing of an application, is deemed to not satisfy the creative difficulty requirement (Art. 33(2)). In relation to novelty, previously, claims that an exception to loss of novelty applied could be made only at the time of filing. However, the Design Protection Act of 2014 stipulated that such claims can be made when submitting a response to a notice of reasons for rejection (Art. 36(2)). With this revision, even in the case of multiple disclosures by the applicant, the procedure was simplified, and the documents that the applicant must prepare at the time of filing was simplified. In addition, previously, up to 20 designs per application were allowed only in the case of applications for partially examined registrations. However, as a result of the full revision of the Design Protection Act in 2014, up to 100 designs per application can now be filed for fully examined registrations, but only for articles belonging to the same category. By allowing a single design application for multiple designs, convenience to applicants was improved by reducing the cost associated with multiple applications (Art. 41). Further, reflecting international trends in national design laws—in particular to align the Design Protection Act with the Hague Agreement and to adjust the duration of a design right so that it was similar to the duration of a patent right under the Patent Act—the duration of the design right was extended to 20 years from the filing date (Art. 91).

13

The Hague Agreement concerning the International Deposit of Industrial Designs, 6 Nov 1925 (revised 2 July 1999), 2279 U.N.T.S. 3 (Hague Agreement).

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4.6.2 Partial Revision in 2017 In relation to novelty, the period for claiming an exception for loss of novelty was extended from within 6 months of filing an application to within 12 months of filing an application (Art. 36(1)); and the applicant is now able to claim an exception to loss of novelty regardless of a notice of reasons for rejection (Art. 36(2)).

4.6.3 Partial Revision in 2020 Similar to the Patent Act, if an act infringing another person’s design right is intentional, a court shall award an amount of compensation to be determined within a scope which does not exceed three times the amount of damage (Art. 115(7)). This amendment helps ensure more effective remedies for design right owners.

4.6.4 Partial Revision in 2021 With the advent of the Fourth Industrial Revolution, the need to protect designs based on new technologies such as space clocks, laser virtual keyboards and holograms has arisen. Accordingly, under the Design Protection Act of 2021, an image itself, which can change the shape of the article in various ways, was recognized as a type of article, while also maintaining the commodity requirement to be a design. In this regard, Art. 2(ii-2) defines ‘image’ as ‘figures and symbols expressed by digital technology or electronic means (limited to those used for operation of devices or exhibiting functions, including parts of images)’. It should be noted that an image design protected by the Design Act is limited to those used for the operation of devices or exhibiting functions. Further, in the case of an image design, unlike traditional articles, the image can be transmitted through a telecommunications line and stored in a storage medium, and so ‘working’ an image design is separately defined as including the act of online transmission or transfer, rental, export and import of media (USB, SD card, etc.) that store the image design, and the production and use of such media (Art. 2(vii)).

4.7 Conclusion In South Korea, the first Design Act was enacted in 1961 after the end of the Chosun Dynasty, Japanese colonial rule and the USAMGIK. It was at this time that it can be said that South Korea established an independent design protection system. There have been approximately 40 revisions (i.e., almost one every year) of South Korea’s

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design law since that time, culminating in the current Design Protection Act which reflects that designs can now be very fashionable and have a short life cycle. Designs may be registered under the Design Protection Act if they satisfy the requirements of novelty and creative difficulty, along with the requirements that a ‘design’ is a commodity, industrially applicable, visible, aesthetic and has physical form. Further, as discussed above, in line with the development of the design industry in South Korea, the range of publicly known designs and publications that may be referred to in order to determine novelty and creative difficulty has gradually expanded. In addition, regarding the exceptions to loss of novelty, the types of permitted selfdisclosures have gradually expanded, the period for claiming the exception has been extended to one year (from 22 September 2017), and the application procedure has been simplified, so that applicants are now less disadvantaged due to self-disclosure. After 1998, the examination system under the Design Act was based on the principle of a fully examined registration, which grants design rights after examining all of the establishment requirements and registration requirements. However, as an exception, it does provide for a partially examined registration system for some limited articles. Articles that are eligible for partially examined registration are stipulated in the Enforcement Regulations of the Design Act. After 2020, there are seven classifications of articles based on the Locarno Classification which are eligible for a partially examined registration: Class 1 (foods); Class 2 (clothes and fashion accessories); Class 3 (personal items such as bags); Class 5 (textiles, artificial and natural sheet fabrics); Class 9 (packaging containers); Class 11 (jewelry, ornaments); and Class 19 (stationery, office supplies, art materials, teaching materials). The articles that are eligible for partially examined registration have changed several times since 1998, and it is expected that the list of articles will continue to change into the future, for example, to include highly fashionable articles with short life cycles. It is preferable, for example, that there is flexibility to revise the Enforcement Regulations of the Design Protection Act so that designs that require fast registration are eligible for the partially examined registration system; and conversely, so that designs that require stability of rights are subject to fully examined registration applications. Designs in each industrial field can be interpreted in various ways. The scope of designs protected by the Design Protection Act is expanding. Specifically, partial designs have been protected since 2001, fonts that are not a commodity have been protected since 2004, and functional image designs were protected for the first time in 2021. Further, although buildings and interiors that are not mass-produced are interpreted as not meeting the commodity requirement, the Design Protection Act could be extended to protect such designs in the future. In South Korea, it can be said that the legal system for design protection started relatively late compared to other developed countries. However, as at 2020, South Korea has become the country with the third highest number of design registrations after China and Europe.14 This is an indicator that more designs are being created 14

World Intellectual Property Organization (2019). In 2020, 50,694 designs were registered in South Korea: Korean Intellectual Property Office (2021).

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in South Korea than in the past and that designs are now more protected by design rights. In the future, the Design Protection Act should be amended to better reflect the purpose of the law, which is to encourage the creation of designs and contribute to the development of domestic industry.

References Korean Intellectual Property Office (2021) Number of Applications/Registrations Including Patents. https://www.index.go.kr/potal/main/EachDtlPageDetail.do?idx_cd=2787. Accessed 25 Oct 2021 Korean Patent Attorneys Association (2007) Sixty Years of Patent Attorneys Association. https://www.kpaa.or.kr/kpaa/intro/history60view.do?clickPage=11&subPage=11. Accessed 25 Oct 2021 Lee B (2008) Modern Korean Patent System. Korea Intellectual Property Law Research Institute, Seoul Seo J (2012) Study on Expansion of Protection Scope of Design and its Limits. Korea Copyright Commission, Seoul World Intellectual Property Organization (2019) World Intellectual Property Indicators 2019. https:// www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2019.pdf. Accessed 25 Oct 2021

Junha Kim After being registered as a Korean patent attorney in 2003, Junha Kim worked at an IP law firm in South Korea for several years and has been working at Taiyo, Nakajima & Kato in Tokyo, Japan, since 2007. In addition, he has worked as a part-time lecturer at Kyushu University since 2015 and has also been in charge of essential practical training for new patent attorneys in South Korea. Based on his practical experience in South Korea and Japan, he continues to advise South Korean and Japanese companies on the use of IPRs.

Chapter 5

The Factors, Perplexity, and Future of China’s Design Development After the ‘Reform and Opening Up’ Policy Yanfang Zhang

Abstract Chinese design has a long history, and the process of conflict and transformation between tradition and modernity has gradually opened its path of exploration. In the early twentieth century, the traditional handicraft industry changed to mechanical production methods which led to the emergence of design consciousness. In the mid-twentieth century, with the establishment of a new China, economic development also led to the transformation of design from initial consciousness to spontaneous design. In the late twentieth century, due to the ‘reform and opening up’ policy, an influx of Western design trends brought about a qualitative change in Chinese design. This chapter explores the internal and external factors that contributed to the development of Chinese design following the ‘reform and opening up’ policy introduced in the Third Plenary Session of the 11th Central Committee of the Chinese Communist Party. The current perplexity and future of Chinese design, as well as copyright issues, inclusive design, and sustainable design, are also considered.

5.1 Introduction Chinese design has a long history, and the process of conflict and transformation between tradition and modernity has gradually opened its path of exploration. In the early twentieth century, the traditional handicraft industry changed to mechanical production and was the subject of foreign influence. This led to the emergence of design consciousness and design ideas. In the late twentieth century, due to implementation of the ‘reform and opening up’ policy, an influx of Western design trends brought about a qualitative change in Chinese design. The introduction of government policies and the impact of foreign technology and culture have made the journey of design full of twists and turns. With the development of society, the economy, and technology, design is constantly evolving. Y. Zhang (B) Faculty of Design, Kyushu University, Fukuoka, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_5

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In this chapter, I look at Chinese design from the perspective of a designer of social design and a design educator across industrial design, graphic design and environmental design, as well as from the perspective of human-centered design and the social responsibility of designers. The chapter takes the modern era as the entry point to examine the development and evolution of China’s design after the decision to reform and open up during the Third Plenary Session of the 11th Central Committee of the Chinese Communist Party in December 1978. It explores the internal and external factors, perplexity, and future of Chinese design development. The content is divided into the following three sections. The first section, ‘Local and Global’, examines the development of Chinese design history from both international and local perspectives. The local perspective analyzes the influence of Chinese domestic politics on the development of design, while the international perspective examines the influence of foreign culture and technology on Chinese design and how the integration of internal and external factors has shaped Chinese design. The second section, ‘Perplexity and Contradiction’, focuses on the current issues of copycat culture and copyright from the perspective of design ethics, the contradiction of standardization and unidirectional modern design and culture, to reflect on the embarrassment and perplexity of Chinese design. The third section, ‘The Future of Chinese Design’, discusses Chinese characteristics, human-centered inclusive design, sustainable design and explores how China can emerge from the perplexity to develop Chinese design with Chinese characteristics that can compete in the international arena.

5.2 Local and Global This section examines the factors that contributed to design development in China from both a local and a global perspective.

5.2.1 The Impact of Local Domestic Policy on Design This section explains the impact of government policies on design in the following important periods.

5.2.1.1

Reform and Opening Up

This period is the initial formation and an important formative period of design in China. In 1978, after the Third Plenary Session of the 11th Central Committee of the Communist Party of China, China began to implement the policy of reform and opening up. This led to liberation from the closed period of the Cultural Revolution,

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the revival of the social economy, increased levels of consumption, and the emergence of new things and trends, which broadened the creative horizons of designers and provided an opportunity for the vigorous development of design. Since that time, visual communication design, environmental design, industrial design, etc., have developed continuously. After 1994, the country implemented a strategic policy of building a socialist market economy with Chinese characteristics. Moreover, it improved economic structures, strengthened foreign trade, optimized industrial organizational structures and accelerated the speed of high-tech industry development. As a result, the social economy showed new characteristics of industrialization and modernization. With the deepening of reform, the flourishing of the manufacturing industry, the prosperity of the market economy, a gradual change in the way of life and a drastic change in the people’s concept of consumption, the fields of visual communication design, product design and environmental art design have shown unprecedented development. After it transitioned from only producing patterns and arts and crafts, Chinese design finally took shape as modern design in the strict sense, and a new chapter began for Chinese design. As the frontier of reform and opening up, consumer products such as home appliances were produced in large quantities in Guangdong Province, and enterprises began to promote their products through film and television commercials, posters, and packaging, driving advertising design in China. In addition, bicycles, televisions, tape recorders, sewing machines and other products also began to be mass produced. The production of consumer goods grew at an extraordinary speed, and there were more and more similar products. Competition became fierce as a mass consumer group with considerable purchasing power and choice gradually formed. Drawing on the resources of modern design from Europe and the United States of America (US), new Chinese designers of this era accepted the values of consumerism, relying on low cost and price to occupy the market. They did not form their own concept of design. The result of this was constant plagiarism and imitation. In the mid to late 1990s, along with the arrival of the post-industrial society characterized by ‘informatization’, industrial restructuring and public consumption transformation, the scope of industrial design rapidly expanded to business, finance, entertainment and public relations. Chinese designers also began to pay attention to the environment, sustainable development and social benefits, and other emerging propositions at a higher and broader level. Soon after, China began to integrate fully into an increasingly integrated planet. Frequent economic exchanges opened channels to the world. It also led to more designers participating in domestic and international design exchanges, promoting the rapid growth of Chinese design.

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‘Made in China 2025’ and ‘Mass Entrepreneurship and Innovation’

Made in China 2025 is a strategic document issued by the State Council in 2015 to promote the comprehensive implementation of a strong manufacturing country.1 In the current context of China’s booming manufacturing industry, brand value has increasingly become an important factor affecting whether companies gain a competitive edge in the market. In 2010, China’s manufacturing industry overtook the US for the first time with a 19.8% share of total manufacturing across the world and became the world’s top industrial manufacturing country. However, in the process of developing this enormous volume and scale, there were problems lurking, such as a lack of capacity to innovate and low brand value. According to the China National Image Survey Report 2012, Lenovo, Haier, Huawei and other Chinese brands had established a certain level of popularity in the US, the United Kingdom (UK), Australia, India, South Africa and other countries.2 However, good quality and low price are still the main advantages of Chinese products.3 In August 2013, the Chinese Academy of Engineering launched a major consultation project on ‘Innovative Design Development Strategy Research’. The research project brought together nearly 20 academics and more than 100 experts who after extensive investigation and in-depth study, submitted to the State Council Suggestions on Vigorously Developing Innovative Design. The Party and State leaders considered this report was of great importance and approved the proposals in it. The proposals were incorporated into Made in China 2025 and became an important part of the nation’s innovation-driven development strategy. In 2015, the State Council released Made in China 2025 which sets out China’s development plan to become the world’s manufacturing powerhouse by 2025 and to realize a transformation from ‘Made in China’ to ‘Created in China’, from ‘China’s speed’ to ‘China’s quality’, and from ‘Chinese products’ to ‘Chinese brands’. Made in China 2025 is market-oriented and focused on satisfying demand and the improvement of competitiveness and brand-building abilities. Enterprises have gradually realized that design can bring individuality to their brands and that it is an important and indispensable force in competition. In order to enhance the brand influence of enterprises, the manufacturing industry needs to promote transformation and improvement. Brand culture refers to a combination of corporate and consumer culture reflected by a brand. Brand value is formed by the joint action of enterprises and consumers and is the sum of values that reflect the corporate spirit and that align with consumer interests, emotional loyalty and personal image. It is difficult for technical talent to achieve this. Innovative design talent is needed, especially those who can develop a corporate brand strategy from a cultural perspective.

1

General Office of the State Council of the People’s Republic of China (2015). Academy of Contemporary China and World Studies (2012). 3 Wu (2017). 2

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The Chinese Government and Chinese enterprises are increasingly aware of the importance of independent design, and research and development and its strategic significance for the sustainable development of China’s future economy. In 2015, the State Council promoted the policy of mass entrepreneurship, innovation, crowdsourcing and crowdfunding in the context of the rapid growth of the global economy and booming internet innovation. The provincial and municipal governments responded by developing crowdsourcing spaces—new platforms to promote innovation and entrepreneurship in the internet era. At the same time, the education sector also started entrepreneurship and innovation education. Education on entrepreneurship and innovation had begun in the 1990s and went through a phase of independent university exploration and development. In recent years, it has also become a hot topic for the government and society. For example, Tsinghua University has explored and developed an education model that integrates ‘curriculum, practice, project, and training’. A universal education system that is personalized (suited to characteristics of the individual student) has been established through the integration of professional education and education on entrepreneurship and innovation. Wang Shou Zhi, a founding father of modern design and modern design education in China and a professor at the Art Center College of Design in Los Angeles, has said: Right now, China’s economic status is reflected in the fact that the vast majority of consumer products have ‘Made in China’ printed on them. If domestic industrial design continues to develop at this rate, it probably won’t be long before we see more and more products with the words ‘Designed in China’ printed on them.4

After the reform and opening up, China has seen the emergence of several leading figures in design education and practice who have made contributions to Chinese design. Here I introduce two of them. Liu Guanzhong is a professor at the Academy of Arts and Design of Tsinghua University and Honorary Vice President of the China Industrial Design Association. In 1980, Liu Guanzhong went to Germany as a visiting scholar, where he studied industrial design. In 1985, he was the first in China to propose the concept of ‘design as a way of life’, which is not about an isolated state, but about a system, a state and a dynamic development process. In the 1990s, Liu Guanzhong published Science of Human Affairs in China.5 He advocates the epistemology and methodology of ‘seeking truth from facts’. He applied this theory to his interior design for the No. 23 foreign consulate, where he designed the lighting not according to the general trend but in terms of the space and need. His theories have led the Chinese industrial design community and the design education community to take a major step forward. The other person is Tang Chongxi, Dean of the School of Fine Arts and Design at Guangzhou University and Director of the Institute of Industrial Design at Guangzhou University. He won the Gold Medal of the China Design Contribution Award and is 4 5

Chen and Chen (2008). Liu (2006).

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the author of books such as The Concept and Practice of Product Design,6 and Design Power is Competitiveness.7 He is in charge of the design system for Philips (Netherlands), Midea, Shanghai Chint Electric and other corporate projects. Professor Tang Chongxi has provided a detailed analysis of the current situation and problems of industrial design in Chinese enterprises, from the foundation of design through to design to create products and a scientific way of life. He has raised the issues of a lack of awareness of the concept of industrial design, the low capacity for innovation and weak enforcement of intellectual property rights (IPRs) in China, as well as the lack of long-term design strategies. He has explained the use of basic design research and the process of practical design and has proposed new requirements for how modern enterprises and designers can better adapt to the innovative design system.

5.2.2 The Influence of Foreign Design and the Integration of Chinese and Foreign Countries Since the reform and opening up in the 1980s, modern design theories from Europe, the US and Japan, as well as various design trends, styles, methods and products have entered China, giving the Chinese design community a new understanding of design. As a result, the expression of design in China developed from ‘drawing’ to ‘design’.8 In the process of exchanges and clashes with foreign modern design ideas, design was first introduced into China in a theoretical way before a domestic understanding of design gradually emerged, forming the conditions for the modern transformation of Chinese design. This transformation was based on the needs of Chinese society and the development of design itself. However, the absorption of foreign modern art and design ideas can only be used as a process of dialogue and exchange in the modern transformation of Chinese art and design. Chinese design cannot be copied from foreign models. It should focus on the inheritance and modern development of traditional culture. In the education sector, two ways of design exchange with foreign countries were adopted: ‘going out’ and ‘inviting in’. In graphic design, the concept and operation of modern Western design were introduced to China, and the successful design education experiences of other countries were used to develop design education with Chinese characteristics. How should Chinese design develop in a globalized and competitive world so that it integrates both Chinese and foreign culture and technology? Chinese design faces challenges and opportunities. While China has actively absorbed and made foreign culture its own in order to enrich lives, it is also needs to explore the Chinese culture and actively advance that culture using design methods. Cultural expansion is an essential characteristic of culture. Chinese culture may be developed through 6

Tang and Cao (1998). Tang and Cao (1999). 8 Du (2009). 7

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cultural dissemination in design, which, in turn, promotes the integration of cultures around the world.

5.3 Perplexity and Contradiction This section focuses on the issue of copycat culture and copyright from an ethical perspective and the contradiction of standardization and unidirectional modern design and culture. It is from this perspective that the embarrassment and perplexity of modern Chinese design is described.

5.3.1 Copycat Culture and Intellectual Property When it comes to design, it is important to talk about the IPRs of design. China’s awareness of design IPRs only gradually developed after the reform and opening up. Compared to the legal system of design protection in Europe and the US, which started in the nineteenth century, China is almost a century late. In the context of China’s significant economic development, which has attracted world attention, China’s innovative design capability is in a very awkward situation in its disregard for IPRs. Compared to the industrial product design history of Europe and the US, Chinese enterprises have stagnated at the stage of imitation and learning. Some processing-oriented enterprises began to take the road of ‘copycat culture’ which involved plagiarizing Western designs to obtain windfall profits. ‘Copycat’ describes a market without the ability to innovate. It imitates the shape, function and creativity of other brands, even the trademarks of famous brands and packaging. It is processed and manufactured at a lower cost to achieve low-cost marketing. The design is either oddly pieced together or simply copied. In recent years, ‘copycat culture’ and ‘imitation’ seem to have become synonymous with ‘Made in China’. Many international design exhibitions have boycotted and rejected China, and so the development of Chinese design has been seriously hindered. The ‘copycat’ design is contrary to modernity’s pursuit of freedom and equality. It undermines free competition in the now standardized market in China and damages the future development of modern design in China. The harm brought to Chinese society and cultural ethics is a serious issue that must be urgently addressed.9 The development of design needs to be regulated by mechanisms that protect private property and technical innovation. Hence, China needs to raise awareness of the IPRs of design.

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Tao (2013).

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5.3.2 Standardization and Culture Professor Wu Liangyong of Tsinghua University has observed that, in the context of globalization, if a regional culture lacks intrinsic vitality, it will not have a clear development direction or be conscious of the need for self-improvement, and so it will not consciously protect and develop, it will appear passive, and may lose its creativity and competitiveness, drowning in the global tide of cultural convergence. Informatization and the age of data have brought us a brand new life experience which will surely bring new inspiration and creativity. In many cases, traditional design concepts and processes can no longer fully express the design ideas generated by the new era.10 With the increasing maturity of today’s network technology, design has no national boundaries, and design products tend to be uniform. Getting rid of ‘standardized’ and ‘unidirectional’ design thinking is another important issue facing contemporary Chinese design. Globalization has had a paradoxical impact on the nation-state. Through the globalized market, new knowledge and technology have increasingly influenced design diversification. Since the twentieth century, modern design as a formal style has spread rapidly in Europe and the US, resulting in an ‘international’ style. Modern design is about ‘good functionality’ and ‘easy, safe, and energy-saving’ design, a concept that is now generally accepted globally. Technical rationalization (the globalization of design from a technical perspective) does not solve the ‘globalization problem’—the negative result of the globalization of modernity. In the context of globalization, the value of modern design is beginning to be questioned in terms of whether it should have its own cultural attributes within the boundaries of the nation-state.11 It is important to note that most contemporary design in China has been established by following the footsteps of the West in order to integrate into the mainstream. Many of the creative concepts related to traditional Chinese culture were discarded in this process. It is the responsibility and obligation of every Chinese designer to create an international and diversified design with Chinese national characteristics and to protect traditional culture in the process of innovation so that both unity and diversity may be achieved in Chinese design. National identity is an issue that must also be explored and studied for Chinese design to be promoted to the international market.

10 11

Zhang (2016). Tao (2013).

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5.4 The Future of Chinese Design 5.4.1 The Development of Chinese Culture Xu Ping has noted that: So far, our industrial designs have only cited the lifestyles that have been developed in the advanced industrial countries of the West, but the design resources that can be developed in the cultural system of clothing, food, housing and transportation in the Chinese way are still almost in their infant state.12

The study of design is also a way of thinking about society and culture. As far as design is concerned, culture is one of the main factors running through it. In today’s globalized world, culture has become the main competitive edge of a nation. Whether a nation’s traditional culture can continue and develop does not depend solely on whether the culture can survive in its own country and territory, but whether it can coexist with other cultures in the world and retain its own characteristics. Chinese design needs to have its own characteristics. It should be rooted in its culture. Western aesthetic ideas cannot fully guide Chinese design. The only way to gain the respect of the world is to dig deeper into cultural elements. Design in today’s world is characterized by diversity and unity, with various cultures influencing each other while maintaining relative independence. Economic globalization has made the world smaller, and culture has the largest competitive power. Whoever has stronger cultural influence will have a larger market.

5.4.2 The Development of Human-Centered Design In a world with an aging population and fewer children, the development of technology has both improved the quality of life and brought about many problems for users. For example, disabled peoples’ rights are not always guaranteed. Chinese design is mostly designed for the masses, especially those who can consume. However, design for the minority is a potential future direction for Chinese design. In China, there are different concepts such as ‘universal design’, ‘barrier-free design’, and ‘inclusive design’, which have different origins and are implemented in different ways. However, the ultimate objective is the same: design that focuses on the human. In this chapter, ‘human-centered design’ will be used to describe this concept. According to data published by the Information Office of the State Council of China on 25 July 2019, the total number of people with disabilities in China exceeded 85 million. In addition, data from various disability associations indicated that the number of people with physical disabilities in China was nearly 25 million, with more than 17 million being people with a visual impairment, and 20 million being people with a hearing impairment. 12

Chen (2007).

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Human-centered design in China has been slow compared to Western countries. From the initial stages of reform and opening up in the late 1970s through to 2000, the design of barrier-free public buildings in China was slow. The state’s main concern in relation to people with disabilities was the formulation of a welfare system. However, after 2000, especially after hosting the 2008 Beijing Olympic and Paralympic Games and the 2010 Shanghai World Expo, the development of barrier-free environments has been promoted in several cities in China. This has led to the formation of national standards and the implementation and refinement of local standards.13 China’s human-centered design has just started. National standards have been introduced for the public environment. However, for product design, service design and other areas, there are no relevant national standards. Some domestic enterprises are beginning to focus on human-centered design, including those outlined in the following case studies.14 Huawei is well-known in China. In 2019, Huawei released the TECH4ALL digital inclusion initiative and long-term action plan. For example, Huawei is addressing the use of cell phones by the elderly, helping them adapt to cell phones more quickly, allowing peace of mind and comfort in their ‘first digital experience’ and ensuring the sustainability of their digital lives. In 2015, DiDi started to promote the information accessibility function of the DiDi app which allows blind people to get a taxi through a voice reading screen. In 2020, it launched the ‘Barrier-Free Travel Service’ for guide dog users, which helps passengers with certified guide dogs to access taxis and complete their travel smoothly. The Chongqing Yusheng Barrier-Free Service Center has also developed the ‘You Wu Sheng’ information and communication accessibility service system for people with a hearing impairment. There are many other excellent enterprises in China trying to develop humancentered design. However, the main focus has been on people with a physical disability, visual impairment or hearing impairment, and the elderly. In the future, there is a need to consider human-centered design for a wider range of people, including those with an intellectual disability or learning disability, the developmentally delayed, foreigners and children. With the rapid development of the economy, design education has grown from just a few schools to hundreds of schools, and design research outcomes have been blossoming. However, there are no research treatises or books on human-centered design. Some universities are involved in barrier-free design, but it lacks depth and is not popular. In 2010, Professor Dong Hua founded China’s first human-centered design research and education center at Tongji University—the Inclusive Design Research Center. The Research Center—which includes training in inclusive design for undergraduate students, and inclusive design and user research courses for graduate students—combines theory and practice and contributes to the cultivation of a new generation of design talent in China. Professor Dong Hua has also compiled China’s 13 14

Han and Xue (2018). Feng.com, Phoenix Lab Keji (2021).

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first theoretical and practical human-centered design textbook, Inclusive Design: Chinese Archive,15 which is starting to help inclusive design in China keep pace with international developments. The book is a comprehensive text on the research, practice and development of inclusive design in China over the last decade, starting from a product perspective. It provides a detailed introduction to the core theories, connotations and extensions, processes and methods of inclusive design. It also includes many local case studies as well as literature on inclusive design, which is a major feat in China’s history of inclusive design. It also plays an active role in promoting the exploration of the future of Chinese design. With the development of the social environment, human-centered design has gradually moved from the material to the spiritual level. To improve people’s overall awareness of human-centered design, it is necessary to strengthen the understanding and emphasize the importance of ‘people’s diversity’ in order to meet diverse needs. There is still a long way to go in terms of the policy, education, and enterprise development of human-centered design in China.

5.4.3 The Development of Green Design for Sustainable Development (SDGs) Advances in science and technology have enhanced people’s ability to transform their lives over time while also increasing the impact on the environment. Bicycle sharing was originally designed to be an environmentally friendly, low-carbon and green way to travel. However, the government did not manage it well. With the rapid development of shared bicycles, abandoned shared bicycles have become a new type of urban garbage. The China Bicycle Sharing Industry Development Report 2018—jointly released by the China Academy of Information and Communication Research Institute of Policy and Economics and Mobike—showed that in 2017, China’s bicycle-sharing industry placed 23 million bicycles on the market in 200 cities. Moreover, in accordance with a mandatory three-year scrapping policy for shared bicycles introduced in Beijing and Shanghai, scrapped bikes will generate nearly 300,000 tons of scrap metal, equivalent to the weight of the structural steel of five aircraft carriers. To solve the problem of shared bicycle waste, a ‘shared and co-governance’ responsibility system must be established by government, industry and enterprises, and a variety of means must be used to solve the hidden danger posed by shared bicycles to the ecological environment. China Daily (English edition) reported on 5 April 2010 that China’s annual construction waste due to urban demolition accounts for about 40% of total urban waste, and China uses 50% of the world’s cement and steel. The average life span of buildings in China is only 25 to 30 years, while the average life span of buildings in

15

Dong (2019).

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the UK is 132 years. Furthermore, buildings account for almost 50% of the total CO2 emissions, which is much higher than the industrial and transportation sectors.16 On 25 September 2015, the United Nations (UN) Sustainable Development Summit was held at its headquarters in New York, where the 193 Member States of the UN officially adopted the Sustainable Development Goals (SDGs).17 The SDGs aim to address social, economic and environmental development in an integrated manner between 2015 and 2030 and shift toward a sustainable development path. How to realize the concept of SDGs is the theme of modern design in the twenty-first century. In today’s world, environmental problems have put humanity on the brink of disaster. They pose a serious challenge for designers, including how designers should protect natural ecology, make full use of resources, put people first and work with the environment for good. Governments worldwide have taken some action, and the green movement and green consumption have emerged internationally, along with green design, especially green industrial design and green architectural design. In China’s development of green design, we need to start with green architectural design and low-carbon architectural design. There are three key points: 1. 2. 3.

energy saving, reducing the waste of various resources, such as water, material, and land; reduction of emissions, such as reducing the building emissions of solids, gases, liquids and other environmental pollution; and meet usage needs by providing a healthy, comfortable, liveable and reasonable space for use.18

Furthermore, 54 green construction indicators have been proposed by an airport construction working group. In addition to the above three points, they added ‘efficient operation’ due to tight schedules, making the four key points: ‘resource-saving, environmental friendliness, efficient operation, and human-centered services’. Several green projects have been developed that use green planning and design, green construction and green construction processes, and that incorporate green and technological innovation.19 The key to green design is to be future focused and not to wait to find problems to solve. The environment must be considered at the beginning of a design project in order to prevent any problems that may result from a design. Otherwise, once the environment is damaged, it is difficult to return it to its original state even if you pay for more remediation. Green design requires joint participation of government, enterprises, educational institutions and the public. The government should formulate policies on green design, enterprises should truly understand green design to minimize the impact 16

Zhao (2010). United Nations. Sustainable Development Goals. https://sdgs.un.org/goals. Accessed 25 Oct 2021. 18 Liu (2016). 19 GBWindows (2019). 17

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on the environment, and educational institutions should educate more students and the public to understand the importance of green design and how green design can be done. Designers should consider all processes in their designs, such as product materials, product energy efficiency and post-use disposal. Green design —actively advocating the harmonious coexistence of humans and nature throughout the life cycle of products—will inevitably become mainstream Chinese design. This is consistent with the need to promote the sustainable development of society and is also a future product design development trend.

5.5 Conclusion China is a major world-leading economic power and has a significant impact on the world. In the future, the influence of Chinese design on the world will also increase. How will Chinese design move forward in the international arena? With the increasing maturity of today’s network technology, design has no national boundaries and design products tend to be standardized and homogenized. Therefore, the importance of the inheritance of Chinese culture is a modern design need. Chinese design needs to have its own characteristics. It should be rooted in its culture and the only way to gain the respect of the world is to dig deeper into cultural elements. Culture here does not only mean traditional culture, but also China’s contemporary culture. This will help improve the market competitiveness of Chinese industrial design and establish China’s design system and design evaluation system.

References Academy of Contemporary China and World Studies (2012) China and World Studies. China National Image Survey Report 2012 vol 4, pp 5–22 Chen X (2007) Between Craft and Design—The Modernity Course of Chinese Art Design in the 20th Century. Chongqing University Press, Chongqing Chen Y, Chen J (2008) From ‘Made in China’ to ‘Designed in China’. https://business.sohu.com/ 20080310/n255628721.shtml. Accessed 25 Oct 2021 Dong H (2019) Inclusive Design: Chinese Archive. Tongji University Press, Shanghai Du W (2009) Chinese Design History Centered on Graphic Design, vol 54. Osaka University Knowledge Archive Feng.com, Phoenix Lab Keji (2021) Information Accessibility Case Studies. Accessibility Research Association and Accessibility Product Alliance GBWindows (2019) How did Beijing Daxing Airport become a Green Three-Star Building? (updated 26 Sept 2019). http://www.gbwindows.cn/news/13220.html. Accessed 25 Oct 2021 General Office of the State Council of the People’s Republic of China (2015) Notice of the State Council on Printing and Distributing ‘Made in China 2025’, 8 May 2015 (updated 19 May 2015). http://www.gov.cn/zhengce/content/2015-05/19/content_9784.htm. Accessed 25 Oct 2021 Han Y, Xue Y (2018) A Comparative Analysis of the Barrier-Free Design Standard between China and United States. Cities Towns Constr Guangxi 9:36–48 Liu G (2006) Science of Human Affairs. Central South University Press, Changsha, Hunan

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Liu X (2016) Low-carbon Design in Green Architectural Design. Building Development. Universe Scientific Publishing Pte Ltd. 1.18686/bd.v1i1.36 Tang G, Cao R (1998) The Concept and Practice of Product Design. Anhui Science and Technology Press Tang G, Cao R (1999) Design Power is Competitiveness. Taiwan Shuxin Press Tao H (2013) Research on the Modernity of Chinese Design from the Perspective of Sociology. J Chin Acad Arts 124–126 Wu H (2017) Made in China 2025 Requires Companies to Take the Road of Self-Created Brands. https://www.sohu.com/a/161189606_120702. Accessed 25 Oct 2021 Zhang M (2016) From ‘Chinese Style’ to ‘Chinese System’—A Study of Modern Chinese Product Design Methods that can be Interpreted Globally. Nanjing Arts Institute Zhao S (2010) Research on Green Product Design. Packaging J 2(3):33–37

Yanfang Zhang is a lecturer at the Faculty of Design at Kyushu University where she specializes in design and the SDGs and conducts research on the practice of incorporating universal design education and human-centered design into projects to ensure better outcomes for the community. She obtained a Ph.D. in Design from Kyushu University with a specialization in universal design and human-centered design and has eight years’ experience in a private design company specializing in universal design.

Chapter 6

History of Design Protection in China Wanli Cai

Abstract The Chinese Patent Law—which protects the external design of industrial products—has been amended four times since it came into effect in 1985, in response to the development of China’s domestic economy. At the same time, the Copyright Law—which concerns artistic works and in some circumstances may protect the design of products—has been revised three times since 1990 and reflects the growing prosperity and progress of China’s cultural industry. Laws concerning the protection of trademark design and product packaging design have also been revised a number of times. This chapter focuses on the history of these forms of design protection, in particular, the protection of the external design of industrial products, and discusses the impact of these laws from the perspective of the development of China’s domestic industry, the US-China trade conflict, China’s World Trade Organization accession and the implementation of the national innovation development strategy.

W. Cai (B) Toyohashi University of Technology, Toyohashi, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_6

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6.1 Introduction Design protection in China is primarily covered by four intellectual property (IP) laws:1 the Patent Law,2 Copyright Law,3 Trademark Law,4 and Anti-Unfair Competition Law.5 The Patent Law protects the external ‘design’ of industrial products defined as ‘a new design of the shape, pattern, or a combination thereof, as well as a combination of the colour, shape and pattern, of the entirety or a portion of a product, which creates an aesthetic feeling and is fit for industrial application’.6 Designs are also protected by the Copyright Law as ‘works’, including works of fine art and architecture.7 In addition, the design of the trademark, packaging and decoration of a product can be protected by the Trademark Law or the Anti-Unfair Competition Law.8 Each of these legal protections of design has its own scope and characteristics. They did not always exist or come into effect at the same time, and each has its own history and development path. This chapter outlines the design protection offered by each of these laws and sets out their different historical development process.

1

Where possible, URLs for the official Chinese versions of the laws from the website of the National People’s Congress of the People’s Republic of China are provided in footnotes. For English versions of these laws please see the Chinalawinfo Database. Chinalawinfo Co. Ltd. https://www.lawinfoch ina.com/. Accessed 25 Oct 2021 or World Intellectual Property Organization (WIPO). WIPO Lex Database. https://www.wipo.int/wipolex/en/index.html. Accessed 25 Oct 2021. 2 Patent Law of the People’s Republic of China (adopted at the Standing Committee of the Sixth National People’s Congress on 12 Mar 1984, effective on 1 Apr 1985, amended for the fourth time on 17 Oct 2020) (Patent Law (fourth revision, 2020)) available at National People’s Congress of the People’s Republic of China (2020b). 3 Copyright Law of the People’s Republic of China (adopted at the Standing Committee of the Seventh National People’s Congress on 7 Sept 1990, effective on 1 June 1991, amended for the third time on 11 Nov 2020) (Copyright Law (third revision, 2020)) available at National People’s Congress of the People’s Republic of China (2020a). 4 Trademark Law of the People’s Republic of China (adopted at the Standing Committee of the Fifth National People’s Congress on 23 Aug 1982, effective on 1 Mar 1983, amended for the fourth time on 23 Apr 2019) (Trademark Law (fourth revision, 2019)) available at National People’s Congress of the People’s Republic of China (2019b). 5 Anti-Unfair Competition Law of the People’s Republic of China (adopted at the Standing Committee of the Eighth National People’s Congress on 2 Sept 1993, effective on 1 Dec 1993, amended for the second time on 23 Apr 2019) (Anti-Unfair Competition Law (second revision, 2019)) available at National People’s Congress of the People’s Republic of China (2019a). 6 Patent Law (fourth revision, 2020), art. 2(4). 7 Copyright Law (third revision, 2020), art. 3. 8 Trademark Law (fourth revision, 2019), art. 8; Anti-Unfair Competition Law (second revision, 2019), art. 6.

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6.2 Industrial Design Protection Under the Patent Law 6.2.1 Overview of Industrial Design Protection China’s current Patent Law was first formulated in the 1980s, and so the protection of industrial designs essentially began at that time. The Kuomintang Government had revised the Provisional Regulations on Rewarding Industrial Technology, which concerned the protection of designs, in 1939 and promulgated a patent law in 1944. However, the establishment of the People’s Republic of China in 1949 meant that the legal system enacted by the Kuomintang Government, including the above-mentioned laws, was abolished. The new China sought to emulate the Soviet Union, and so an effective Patent Law was not re-established and implemented. Even when the Provisional Regulations on the Protection of Invention Rights and Patent Rights were formulated in 1950 for the formal protection of patent rights, they were ordered to be repealed in 1963, again interrupting the patent protection system. Therefore, the time from which to trace the history of the current Patent Law is the enactment of the Patent Law of the People’s Republic of China in 1984. The Patent Law of 1984 stipulated three forms of protection: inventions, utility models and designs, which formally protect industrial designs.9 The Law has been the subject of a number of amendments due to changes in the international environment and the rise of China’s economy—the first revision in 1992, the second revision in 2000, the third revision in 2008 and the fourth revision in 2020.10 The fourth revision of the Patent Law came into effect on 1 June 2021. Therefore, the protection system for industrial designs has undergone a number of changes that have improved the Law.

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‘For the purpose of this Law, “invention-creation” means inventions, utility models and designs’: Patent Law of the People’s Republic of China (adopted at the Standing Committee of the Sixth National People’s Congress on 12 Mar 1984, effective on 1 Apr 1985) (Patent Law of 1984), art. 2(1). 10 Decision on Amending the Patent Law of the People’s Republic of China adopted at the 27th Session of the Standing Committee of the Seventh National People’s Congress on 4 Sept 1992 (first revision, 1992) available at National People’s Congress of the People’s Republic of China (1993); Decision on Amending the Patent Law of the People’s Republic of China, adopted at the 17th Session of the Standing Committee of the Ninth National People’s Congress on 25 Aug 2000 (second revision, 2000) available at National People’s Congress of the People’s Republic of China (2000); Decision of the Standing Committee of the National People’s Congress on Amending the Patent Law of the People’s Republic of China adopted at the 6th Session of the Standing Committee of the 11th National People’s Congress of the People’s Republic of China on 27 Dec 2008 (third revision, 2008) available at National People’s Congress of the People’s Republic of China (2008); Decision of the Standing Committee of the National People’s Congress to Amend the Patent Law of the People’s Republic of China adopted at the 22nd Session of the Standing Committee of the Thirteenth National People’s Congress of the People’s Republic of China on 17 Oct 2020 (fourth revision, 2020) available at National People’s Congress of the People’s Republic of China (2020c).

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6.2.2 Patent Law of 1984 From the 1980s to the mid-1990s, China was in the early stages of implementing the ‘reform and opening up’ policy, and its basic industry was very weak.11 The Patent Law was promulgated in March 1984 and came to effect in April 1985. The aim of the Law was to establish a more systematic IP protection legal system so that the necessary capital and technology could be transferred from overseas to help develop domestic industry. This was the first law in China to systematically protect invention patents, utility model patents and design patents. Therefore, China entered into the early stages of implementing an IP law system. The Patent Law of 1984 contributed to the development of China’s domestic industry by providing a certain degree of protection to patents in accordance with the level of the country’s economic development at the time. However, the level of protection was not high—it was far from the level of protection afforded by IP systems in Europe or the United States of America (US). The Patent Law did not provide a clear definition of ‘design’, and the term of protection was set at only five years, with an option of extending it by three years (which was considerably shorter than the term of protection offered in developed countries).12

6.2.3 First Revision of the Industrial Design Protection System Trade between the US and China became more active as a result of further implementation of China’s ‘reform and opening up’ policy. However, the issue of whether China provided a sufficient level of protection to US IP became a major obstacle to the development of US-China trade relations.13 In 1991, in accordance with the ‘super 301’ provisions of the Omnibus Foreign Trade and Competitiveness Act of 1988 (US),14 the United States Trade Representative (USTR) launched a ‘Super 301 Investigation’ against China and announced retaliation measures in the form of disciplinary tariffs. It was the view of the US that China had not provided sufficient patent protection for US pharmaceuticals and other chemical products. Under pressure from the USTR, the Chinese Government negotiated with the US on a number of IP protection issues, and in 1992, the two governments signed a memorandum of understanding (MOU) on the protection of intellectual property rights (IPRs).15 In order to implement the MOU, China revised 11

Chinese Communist Party News (2019, 12 Feb). Patent Law of 1984, arts 2 and 45, respectively. 13 Shen (2018), pp. 90–91. 14 Omnibus Foreign Trade and Competitiveness Act of 1988 Public L. No. 100-418, 102 Stat. 1107 (1988) (US). 15 Government of the People’s Republic of China, Government of the United States of America (1992). 12

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the Patent Law in September 1992 which came into force in January 1993. The term of protection for designs was extended from five years to 10 years. The first revision significantly strengthened the protection of patents and brought the Patent Law more in line with international standards for the protection of IPRs.

6.2.4 Second Revision of the Industrial Design Protection System One year after the first revision of the Patent Law came into force, China officially joined the Patent Cooperation Treaty (PCT) in January 1994,16 and signed the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) in April of the same year.17 However, the US again launched a ‘Super 301 Investigation’ against China in June 1994 due to insufficient enforcement against IPR infringement, and soon after announced tariff retaliation measures. At that time, China announced counterretaliation measures against the US based on the Foreign Trade Law,18 but then decided to enter trade negotiations with the US. In addition, China had been actively engaged in the process for joining the World Trade Organization (WTO) since its establishment in January 1995. As a result, the US promised the Chinese Government that if it accepted a number of proposed conditions, it would adopt a ‘more flexible attitude’ on the issue of China’s accession to the WTO.19 In February 1995, following negotiations between the two countries, the US discontinued the ‘Super 301 Investigation’ and retaliatory tariff measures. At the same time, China promised to formulate an Action Plan for Effective Protection and Enforcement of Intellectual Property Rights (Action Plan) and to severely penalize IP infringements in accordance with the Action Plan. China designated the period of six months from March 1995 as a special ‘crack down’ period in relation to IPR infringement and increased enforcement against the infringement of patent rights, trademark rights, copyrights and unfair competition.20 In July 1995, China was recognized as an observer of the WTO and began consideration of a second revision of the Patent Law to ensure compliance with the Marrakesh 16

Patent Cooperation Treaty, 19 June 1970, 1160 U.N.T.S. 231. Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (TRIPS Agreement). 18 Foreign Trade Law of the People’s Republic of China (adopted at the Standing Committee of the Eighth National People’s Congress on 12 May 1994, effective on 1 July 1994, amended for the second time on 7 Nov 2016) available at National People’s Congress of the People’s Republic of China (1994), art. 7. 19 Gong (2005, 31 Oct). 20 Government of the People’s Republic of China, Government of the United States of America (1995); Government of the People’s Republic of China (1995). 17

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Agreement Establishing the World Trade Organization. Therefore, from the mid1990s to the 2000s, the development of China’s IP legal system entered an ‘era of WTO compliance’.21 In December 2001, China officially joined the WTO, becoming the 143rd member of the institution. The second revision of the Patent Law was passed in August 2000 and came into effect in July 2001. The second revision to the Patent Law focused on strengthening the protection of exclusive rights, judicial and administrative responses to infringement and the simplification of the examination procedure. It also introduced the following in relation to the protection of industrial designs: • an import right for design patents—an industrial design patent is infringed when a third party imports a product bearing the protected design without the consent of the rights holder;22 • a design must not conflict with legal rights previously obtained by others—for example, a design must not infringe the copyright, trademark rights, or any other patent rights previously obtained by others;23 • a damage compensation system;24 • fines of up to three times the illegal income or up to RMB50,000 to be imposed by the patent administrative department, and criminal liability to be determined by the courts.25 The second revision of the Patent Law was informed by relevant international standards due to China’s accession to the WTO, as well as the reality of China’s domestic industrial development.

6.2.5 Third Revision of the Industrial Design Protection System Around the time when China joined the WTO (in 2001), public health problems such as those caused by HIV/AIDS, tuberculosis, malaria and other epidemics had become a serious problem for developing countries. In response to this situation, in November 2001, the Declaration on the TRIPS Agreement and Public Health was adopted by the WTO Ministerial Conference of 2001 in Doha.26 The Declaration recognized that certain public health problems can represent a ‘national emergency’ 21

Wu (2020a). Patent Law of the People’s Republic of China (adopted at the Standing Committee of the Sixth National People’s Congress on 12 Mar 1984, effective on 1 Apr 1985, amended for the second time on 25 Aug 2000) (Patent Law (second revision, 2000)), art. 11(2). 23 Patent Law (second revision, 2000), art. 23. 24 Patent Law (second revision, 2000), art. 60. 25 Patent Law (second revision, 2000), art. 58. 26 Declaration on the TRIPS Agreement and Public Health, WT/MIN(01)/DEC/2, adopted on 14 Nov 2001 available at World Trade Organization (2001). 22

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and that each WTO member had the right to grant compulsory licenses—that is, to manufacture and export relevant patented drugs without the permission of the patentee. Obviously, this surpassed the limitation of ‘for the supply to the domestic market’ stipulated in the TRIPS agreement for a compulsory license.27 At that time, China was a major power that was also under pressure to respond to public health issues, and so there were domestic calls for China to revise its Patent Law in order to ensure it included a compulsory license system appropriate for the TRIPS Agreement. In addition, from the beginning of the 2000s, incidents of bio-piracy were occurring with greater frequency in developing countries.28 Conflicts between developed and developing countries in relation to the protection and use of biological resources, genetic resources and traditional knowledge became more serious, and the formulation of international rules regarding the protection of this IP became the focus of competition between developing and developed countries. At this time, China began to consider whether the protection of biological resources, genetic resources and traditional knowledge should be clearly addressed in the Patent Law. In such an international environment, China decided to revise the Patent Law. While the first and second revisions were so-called ‘passive acceptance under external pressure’ in order to fulfill obligations imposed by US-China trade negotiations and international treaties, the third revision has been described as ‘active innovation to use as it is necessary’.29 In June 2008, in order to promote national innovation, the Outline of National Intellectual Property Strategy—a foundational policy document on the creation, use, protection and administration of IP—was promulgated, and China’s IP legal system was said to have entered ‘the era of national strategy’.30 In December of the same year, the third revision of the Patent Law was passed and came into effect in October 2009. The third revision of the Patent Law introduced the following in relation to the protection of the industrial design: • a definition of industrial ‘design’—‘any new design of a product’s shape, pattern or a combination thereof, as well as the combination of the colour and the shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application’;31

27

TRIPS Agreement, Art. 31. Bio-piracy occurs when companies such as pharmaceutical companies unethically appropriate or commercially exploit biological, genetic resources or Indigenous knowledge without permission or fair compensation. 29 Wu (2020b), pp. 2–3. 30 Wu (2020b), p. 25. 31 Patent Law of the People’s Republic of China (adopted at the Standing Committee of the Sixth National People’s Congress on 12 Mar 1984, effective on 1 Apr 1985, amended for the third time on 27 Dec 2008) (Patent Law (third revision, 2008)), art. 2(4). 28

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• the right of promise to sell—after the granting of a patent for a design, an entity or individual cannot promise to sell a product incorporating the patented design without the permission of the patentee;32 • additional substantive requirements for design patents—‘as compared with the existing design or combination of the existing design features, the design for which a patent is granted shall have distinctive features’;33 • a defense of prior design—it is not an infringement if the accused has evidence to prove the exploited design is an existing design;34 • in relation to the calculation of compensation for a patent infringement—‘if it is difficult to determine the losses incurred to the patentee, the gains obtained by the infringer as well as the royalty obtained for the patent, the people’s court may, by taking into account such factors as the type of patent, nature and particulars of the infringement, etc.’, decide compensation in the sum of not less than RMB10,000 but not more than RMB1 million;35 • criminal liability or fines of up to four times the illegal income or up to RMB200,000 to be imposed by the patent administrative department.36

6.2.6 Fourth Revision of the Industrial Design Protection System The third revision of the Patent Law played an important role in implementing a national IP strategy and promoting technological innovation in domestic industries. However, from around 2010 the Chinese economy entered a new development phase and so there was demand for a more comprehensive patent protection system that reflected improvements in science and technology and the sophistication of new industrial structures. The China National Intellectual Property Administration (CNIPA) started work on the fourth revision of the Patent Law in November 2011 and submitted the amendment (draft) to the State Council in January 2013. In 2014, the Standing Committee of the National People’s Congress provided an opinion on the draft following a series of expert meetings. In December 2015, the State Council officially promulgated a revised draft and requested an opinion from the Government. Free of the urgency of external pressure, the revised draft was given careful consideration in order to enhance the industrial structure and promote innovation. In January 2019, six years after the State Council submitted the revised draft, the first proposal of the fourth revision of the Patent Law was promulgated by the Standing Committee of the National People’s Congress, and public opinion was requested for the first time. 32

Patent Law (third revision, 2008), art. 11(2). Patent Law (third revision, 2008), art. 23(2). 34 Patent Law (third revision, 2008), art. 62. 35 Patent Law (third revision, 2008), art. 65(2). 36 Patent Law (third revision, 2008), art. 63. 33

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After more than a year of discussion, the second proposal of the fourth revision was promulgated in July 2020, and public opinion was again requested. As a result, the fourth revision of the Patent Law was passed by the 22nd meeting of the Standing Committee of the 13th National People’s Congress on 17 October 2020 and came into effect on 1 June 2021.37 There was intense debate about the fourth revision of the Patent Law. For example, there was a view that the protection of industrial design should no longer be dealt with under the Patent Law, and that a separate industrial design law should be developed because industrial designs are different from inventions and utility models in terms of the criteria for determining infringement. Unfortunately, this opinion was not adopted, but it does provide an indication of the direction of future discussions on the revision of the Patent Law. In addition, a secret design (or deferred publication) system was not introduced.38 Key features of the fourth revision of the Patent Law include the introduction of a partial design system, a domestic priority system and extension of the term of protection.

6.2.6.1

Introduction of Partial Design System

In recent years, there has been debate about whether to protect partial designs in China. The Patent Law (as amended in 2008) defined ‘design’ as ‘any new design of a product’s shape, pattern or a combination thereof…’. That is, a product as a whole was subject to protection, but not a part of the product, a so-called ‘partial design’. However, because China’s product design has evolved and new designs tend to focus on a part of a product rather than a whole product, the domestic industry increasingly called for the protection of partial designs. The introduction of the partial design system in China was also required from the perspective of international harmonization—for example, Europe, the US and Japan have partial design systems. Others argued that its introduction should have been considered more carefully due to concerns such as the ability of the CNIPA to administer a large increase in partial design applications and to control infringement. Although a partial design patent system was included in the revised draft promulgated in 2015, it was removed in the first proposal of the fourth amendment in January 2019. However, it was later re-introduced because of the needs identified by domestic

37

See Decision of the Standing Committee of the National People’s Congress to Amend the Patent Law of the People’s Republic of China adopted at the 22nd Session of the Standing Committee of the Thirteenth National People’s Congress of the People’s Republic of China on 17 Oct 2020 available at National People’s Congress of the People’s Republic of China (2020d). 38 In some countries, the design protection system allows a design right holder to keep the content of a design secret (or defer publication) for a period of time from the date of design registration. This allows an applicant to disclose a registered design only once they have started to work the design.

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industry, and was the subject of discussion of the second proposal in July 2020, and eventually became law.39

6.2.6.2

Introduction of Domestic Priority

The Patent Law (as amended in 2008) stipulated domestic priority for inventions and utility models but did not recognize domestic priority for industrial designs. It was thought that, because the scope of rights of a design patent is determined mainly by drawings and photographs, it is unlikely to change in subsequent applications, and so it was not necessary to claim domestic priority. This meant that after filing an application for a design for the first time in a foreign country, an applicant could claim priority based on the Paris Convention and then apply in China for a Related Design within 6 months. However, after filing an application for a design for the first time in China, it was not possible to claim domestic priority and apply for a Related Design together. If this situation continued after the introduction of the partial design system, changing from a whole to a partial design patent application would be easily achieved based on international priority, but could not have occurred for domestic applications. Therefore, unfairness could have arisen between domestic and foreign applications. To resolve this, the fourth revision amended the Patent Law to provide that a design patent applicant can claim and enjoy priority within six months from the date of filing a first design patent application for the same subject matter in China.40

6.2.6.3

Extension of the Term of Protection

The 10-year design patent protection period was introduced by the first revision of the Patent Law in 1992 and had not been revised since. This period satisfied the minimum 10-year period requirement stipulated in the TRIPS Agreement. However, as the economic value of design and its importance in market competition have increased, many developed countries have extended the term of protection. The fourth revision of the patent law extended the term of protection from 10 to 15 years. The extension was thought necessary to meet the requirements of the Hague Agreement Concerning the International Registration of Industrial Designs,41 which China is in the process of acceding to; and to promote innovation.42

39

Patent Law (fourth revision, 2020), art. 2(4). Patent Law (fourth revision, 2020), art. 29(2). 41 The Hague Agreement concerning the International Deposit of Industrial Designs, 6 Nov 1925 (revised 2 July 1999), 2279 U.N.T.S. 3 (Hague Agreement). 42 Patent Law (fourth revision, 2020), art. 42(1). 40

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6.3 Industrial Design Protection as ‘Works’ Under the Copyright Law China’s current Copyright Law was first enacted in September 1990. It has been amended three times—the first revision in October 2001, the second revision in February 2010 and the third revision in November 2020. The third revision came into effect on 1 June 2021. The term ‘works’ as used in China’s Copyright Law refers to intellectual creations in the fields of literature, art and science that are original and can be reproduced in certain tangible forms.43 The Copyright Law protects the expression of the work itself, not the ideas and feelings that appear in it. This concept is often referred to as the ‘idea-expression dichotomy’. ‘Originality’ is a substantive requirement for protection as a copyrighted work and has two requirements: independent creation; and a minimum level of creativity. Independent creation refers to the author completing the work independently. However, there is no uniform standard for judging a minimum level of creativity, and it will always depend on the type of work. Among the works protected by the Copyright Law, the most closely related to design are works of fine art. Works of fine art can include paintings, calligraphy and sculptures and are composed of lines, colors or other elements of aesthetically significant two- or three-dimensional works.44 Therefore, the works of fine art protected by the Copyright Law are primarily pure works of art with aesthetic significance. It is not clear whether the Copyright Law protects works of ‘applied art’ that are both practical and artistic. Judicial precedent has determined that if a work of applied art can meet the requirements for the protection of works of fine art under the Copyright Law, protection of the work of applied art is possible.45 However, because the Copyright Law only protects artistic elements, whether the functional and artistic elements of a work of applied art can be separated out is an important factor in judging whether to grant copyright protection. Although China’s current Copyright Law does not stipulate ‘works of applied art’ as subject matter of copyright protection, in order to fulfill the obligations of the Berne Convention,46 the State Council promulgated the Regulations for the Implementation of International Copyright Treaties in 1992 to provide that ‘the term of protection of foreign works of applied art should be 25 years from the completion of such works’.47 43

Copyright Law (third revision, 2020), art. 3. Regulation on the Implementation of the Copyright Law of the People’s Republic of China (promulgated by the State Council of the People’s Republic of China on 2 Aug 2002, revised for the second time on 30 Jan 2013), art. 4. 45 INTERLEGO AG v. KEGAO (Tianjin) Toy Co., Ltd. (2002) MINZHONG No. 279 (Beijing High People’s Court, 18 Dec 2002). 46 Berne Convention for the Protection of Literary and Artistic Works, 9 Sept 1886 (revised 24 July 1971), 828 U.N.T.S. 221 (Berne Convention). 47 Regulations for the Implementation of International Copyright Treaties (promulgated by the State Council of the People’s Republic of China on 25 Sept 1992, revised 29 Nov 2020), art. 6(1). 44

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The draft of the third revision of the Copyright Law submitted by the State Council in June 2014 clearly defined ‘works of applied art’ and proposed protection requirements. However, this proposal was not adopted. In a decision of the Guangzhou Intellectual Property Court in 2017, the Judge stated: works of applied art are works of art with functions, both practical and artistic. The Copyright Law only protects the expression of an idea not the idea itself. The practical function belongs to the category of ideas, so when determining whether the Copyright Law protects works of applied art, it is necessary to separate the practical function and the artistry, because the Copyright Law only protects the artistic expression, which should have the same level of originality as works of fine art.48

At the same time, the judgment also pointed out that: If we are too lenient in judging the originality requirement of works of applied art, no one will be willing to apply for design patents, and the relevant system of the Patent Law will become useless. Therefore, it is also necessary to strictly examine the originality requirements of works of applied art to be protected as works of art.49

In a 2019 Shanghai Intellectual Property Court decision relating to a copyright dispute involving furniture design, two conditions were set out for copyright protection of works of applied art: • First, ‘the practical function and artistic beauty in works of applied art must be independent of each other. Because the Copyright Law does not protect the practical function, the Copyright Law protects the artistic component only when the artistic component of the applied art can exist independently of its practical function’; and • Second, ‘only when the artistic design part of the applied art is of a certain level of artistic creation can it be considered to meet the originality requirements that works of fine art should possess.’50 Therefore, China’s Copyright Law applies strict requirements for the protection of works of applied art—they must possess a considerable degree of artistic creativity. The term of protection of design under the Copyright Law is longer than that under the Patent Law—protection is available for up to 50 years after the author’s death. In addition, there is no need to go through an application and registration procedure as copyright is automatically acquired upon the completion of a work.

48

Societe Jas Hennessy & Co., Ltd. v. Zhongfa Brandy Co., Ltd. (2017) YUE73 MINCHU No. 3414 (Guangzhou Intellectual Property Court, 4 Apr 2019). 49 Societe Jas Hennessy & Co., Ltd. v. Zhongfa Brandy Co., Ltd. (2017) YUE73 MINCHU No. 3414 (Guangzhou Intellectual Property Court, 4 Apr 2019). 50 Fanhua (Shanghai) Furniture Co., Ltd. v. Shanghai Meixuan Co., Ltd. and Shanghai Wenxuan Co., Ltd. (2018) HU73 MINZHONG No.452 (Shanghai Intellectual Property Court, 30 July 2019).

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6.4 Logo Design Protection Under the Trademark Law China’s current Trademark Law was first enacted in August 1982. It has been amended four times—the first revision in February 1993, the second revision in October 2001, the third revision in August 2013 and the fourth revision in April 2019. The fourth revision came into effect on 1 November 2019. The Trademark Law stipulates that: Any sign capable of distinguishing the goods of a natural person, a legal person, or any other organization from those of others, including but not limited to a word, design, letter, numeral, three-dimensional symbol, combination of colours, and sound, as well as a combination of the above, may serve as a trademark for registration application.51

Therefore, a trademark design composed of a word, letter of the alphabet, number, three-dimensional symbol, color combination and other elements can be registered as trademarks. A trademark registration will remain valid for a period of 10 years from the date of approval for registration. Where the registrant intends to continue to use the registered trademark beyond the 10-year period, an application to renew the registration must be made within 12 months prior to the date of expiration. A trademark registration may be renewed for a period of 10 years within one day after the expiration of the previous registration. Therefore, in theory, if a trademark is continuously renewed it can be protected forever. Whether the design of a three-dimensional logo can be registered as a trademark has been the subject of debate for some time. China’s protection of three-dimensional trademark designs began with the second revision of the Trademark Law in 2001. Applications for trademark registration of three-dimensional signs can be roughly divided into two categories. One category is ‘decorative appearance’ that has nothing to do with the product, such as a figure of a person as a trademark of a hotel. The other is the shape of the product or its packaging, such as a glass bottle design by a beverage company. A three-dimensional mark must meet two conditions for trademark registration, one is ‘distinctiveness’ and the other is ‘non-functionality’. The Trademark Law provides that: Where the registration of a three-dimensional trademark is applied for, it shall not be registered if it is only a shape resulting from the nature of the goods, a shape of the goods necessary for achieving a technical effect, or a shape to add a substantive value to the goods.52

This is the so-called ‘non-functionality’ requirement. The newly revised Standards for Trademark Examination and Trial set out that ‘the shape resulting from the nature of the goods’ refers to the shape that is necessary or commonly used to realize the inherent functions and purposes of the product. The shape ‘necessary for achieving a technical effect’ refers to the shape necessary to make the product have a specific 51 52

Trademark Law (fourth revision, 2019), art. 8. Trademark Law (fourth revision, 2019), art. 12.

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function, or to make it easier to realize the inherent function of the product. The shape necessary ‘to add a substantive value to the goods’ refers to the shape used to make the appearance and shape of the product affect the value of the product.53 In some cases, the unique shape of a product or its packaging can play a role in identifying the source of the product. However, in practice, the registration of a three-dimensional logo is often strictly determined in order to prevent technology monopolies and to promote innovation.

6.5 Packaging and Other Design Protection Under the Anti-Unfair Competition Prevention Law The Anti-Unfair Competition Law was first enacted in September 1993. It has been amended two times—the first revision in November 2017 and the second revision in April 2019. The second revision came into effect in April 2019. The Anti-Unfair Competition Prevention Law may be described as an IP law in a broad sense. It provides a certain level of protection for product designs like other IP laws and also provides supplementary protection that other IP laws cannot provide. The Anti-Unfair Competition Law stipulates that a business must not commit a number of ‘acts of confusion to mislead a person into believing that a commodity is one of another person or has a particular connection with another person’, including ‘using without permission a label identical or similar to the name, packaging or decoration, among others, of another person’s commodity with certain influence’.54 Therefore, the Anti-Unfair Competition Law can protect those designs that may not be protected under the Trademark Law but that have certain influence on the name of the product, product packaging and decoration. The protection offered by the Anti-Unfair Competition Law is against ‘acts of confusion’ that will cause consumer misunderstanding. When determining whether an act of confusion will cause consumer misunderstanding, the Anti-Unfair Competition Law enacted in 1993 stipulated ‘another person’s well-known commodity’ as a criterion.55 However, when the law was revised in 2017, the ‘well-known commodity’ criterion was changed to ‘commodity with certain influence’.56 It is generally understood that this revision has made it more likely that an act of confusion will be found to have occurred.

53

Trademark Office of the State Administration for Industry and Commerce (2016), Pt IV, Ch 4, Section 2, pp. 104–106. 54 Anti-Unfair Competition Law (second revision, 2019), art. 6. 55 Anti-Unfair Competition Law of the People’s Republic of China (adopted at the Standing Committee of the Eighth National People’s Congress on 2 Sept 1993, effective on 1 Dec 1993), art. 5(2). 56 Anti-Unfair Competition Law (second revision, 2019), art. 6(1).

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References Chinese Communist Party News (2019, 22 Feb) Wenzhang Zhou: What Is The Secret of China’s Great Success in Reform and Opening Up? Chinese Communist Party News. http://theory.peo ple.com.cn/n1/2019/0122/c148980-30583103.html. Accessed 25 Oct 2021 Gong W (2005, 31 Oct) Let History Remember—Memorandum on China’s WTO Accession Negotiations. Central People’s Government of the People’s Republic of China. http://www.gov.cn/ztzl/ content_87675.htm. Accessed 25 Oct 2021 Government of the People’s Republic of China (1995) Action Plan for Effective Protection and Enforcement of Intellectual Property Rights. https://tcc.export.gov/trade_agreements/all_trade_ agreements/exp_005363.asp. Accessed 25 Oct 2021 Government of the People’s Republic of China, Government of the United States of America (1992) Memorandum of Understanding Between the Government of the People’s Republic of China and the Government of the United States of America on the Protection of Intellectual Property. https:// tcc.export.gov/trade_agreements/all_trade_agreements/exp_005362.asp. Accessed 25 Oct 2021 Government of the People’s Republic of China, Government of the United States of America (1995) Government of the People’s Republic of China and the Government of the United States of America Agreement Regarding Intellectual Property Rights, 26 Feb 1995, U.S.-P.R.C., 34 I.L.M. 881 National People’s Congress of the People’s Republic of China (1993) Decision on Amending the Patent Law of the People’s Republic of China. http://www.npc.gov.cn/wxzl/wxzl/2000-12/07/ content_9512.htm. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (1994) Foreign Trade Law of the People’s Republic of China. http://www.npc.gov.cn/wxzl/wxzl/2000-12/05/content_4617.htm. 25 Oct 2021 National People’s Congress of the People’s Republic of China (2000) Patent Law of the People’s Republic of China (Second Revision). http://www.npc.gov.cn/wxzl/gongbao/2000-12/05/con tent_5007370.htm. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2008) Decision of the Standing Committee of the National People’s Congress on Amending the Patent Law of the People’s Republic of China. http://www.npc.gov.cn/zgrdw/huiyi/lfzt/zlfxzaca/2008-12/27/content_1465 532.htm. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2019a) Anti-Unfair Competition Law of the People’s Republic of China. http://www.npc.gov.cn/npc/c30834/201905/9a37c6ff1 50c4be6a549d526fd586122.shtml. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2019b) Trademark Law of the People’s Republic of China. http://www.npc.gov.cn/npc/c30834/201905/dacf65eec798444e82 1a1e06a347f3ee.shtml. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2020a) Copyright Law of the People’s Republic of China. http://www.npc.gov.cn/npc/c30834/202011/848e73f58d4e4c5b82f69d25d46 048c6.shtml. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2020b) Patent Law of the People’s Republic of China. http://www.npc.gov.cn/npc/c30834/202011/82354d98e70947c09dbc5e4eeb7 8bdf3.shtml. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2020c) Patent Law of the People’s Republic of China. http://www.npc.gov.cn/npc/c30834/202011/82354d98e70947c09dbc5e4eeb7 8bdf3.shtml. Accessed 25 Oct 2021 National People’s Congress of the People’s Republic of China (2020d) Patent Law of the People’s Republic of China. http://www.npc.gov.cn/npc/c30834/202011/82354d98e70947c09dbc5e4eeb7 8bdf3.shtml. Accessed 25 Oct 2021 Shen Y (2018) The Disagreement on Intellectual Property Policies Behind the Trade War Between China and the United States. China Bus Rev 19:90–91

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Trademark Office of the State Administration for Industry and Commerce (2016) Standards for Trademark Examination and Trial, Dec 2016. http://sbj.cnipa.gov.cn/sbsq/sqzn/202003/W02020 0316549129936331.pdf. Accessed 25 Oct 2021 World Trade Organization (2001) Declaration on the TRIPS Agreement and Public Health. https:// www.wto.org/english/thewto_e/minist_e/min01_e/mindecl_trips_e.htm. Accessed 25 Oct 2021 Wu H (2020a) The Basic Orientation of Changes of Intellectual Property Law in China. Soc Sci China 41(4):126–146. https://doi.org/10.1080/02529203.2020.1844438 Wu H (2020b) Development of China’s Intellectual Property System: Law, Policy and Culture. Intellect Property J 14(Sept):2–3 (in Japanese)

Wanli Cai’s academic qualifications comprise a Ph.D. in law from Waseda University, a JM (Juris Master) from Tsinghua University and a Bachelor of Engineering from North China University of Technology. He is an associate professor at the Institute of Liberal Arts and Sciences at Toyohashi University of Technology. He specializes in IP law with a focus on patent infringement issues and comparative research on IP law between Japan and China. He is also a visiting research fellow at the Research Center for the Legal System of Intellectual Property (RCLIP) at Waseda University.

Chapter 7

History and Current Status of Design in Singapore Leon Loh

Abstract This chapter describes the beginning of industrial and product design in Singapore—from self-governance to achieving the status of a UNESCO Creative City of Design. The growth of industrial and product design in Singapore can be attributed to Singapore Government initiatives to set up systems and infrastructure to facilitate that growth. Through foreign collaborations, development of local talent and the creation of a favourable environment, industrial and product design has grown from zero to a vibrant and creative community that supports Singapore’s aspiration to be an innovation-driven economy and a ‘loveable city’.

7.1 Introduction In 1959, when Singapore gained self-governance from the British, an immediate need was to create jobs through industrialisation.1 The Singapore Government immediately sought help from the United Nations (UN) and a team sent by the UN suggested Singapore rapidly industrialise in the early 1960s. Industrial and product design was an essential element of the industrialisation effort to allow Singapore products to compete in the local and overseas markets. However, industrial and product design were relatively unknown, and there was a lack of trained industrial and product designers to support the design industries. In 2015, Singapore was designated as a UNESCO Creative City of Design. Design in Singapore now also supports the vision of an innovation-driven economy and a ‘loveable city’,2 and is a key driver for innovation and value creation to create new markets for economic development. In addition, it is hoped that design will also be appreciated and embraced by the community, play an important role in solving complex societal problems and contribute to national identity and a national brand. 1 2

Cheng (2019); Centre for Liveable Cities (2013). DesignSingapore Council (2016b).

L. Loh (B) Kyushu University, Fukuoka, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_7

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The industrial and product design developments in Singapore have been largely led by Singapore Government initiatives.3 This chapter hopes to answer the following key research question: How has the Singapore Government used industrial and product design initiatives to build a design ecosystem to support Singapore’s sustainable economic, social and environmental development? This chapter has adopted a qualitative approach and achieved the study’s objectives based on newspaper articles, Government reports and publications, and credible websites, in conjunction with a literature review of previous relevant studies.

7.2 The Dawn of Industrial and Product Design in Singapore 7.2.1 Adopting Industrial and Product Design to Support Industrialisation Efforts Before gaining independence in 1965, the Singapore Government had already expressed an intention to leverage design to support rapid industrialisation.4 When Singapore gained self-governance in 1959, the country faced rapid population growth.5 As Singapore has a limited land size and no natural resources, one of the issues was an increase in unemployment. Instead of depending on entrepot trade that was key to the economy during the British colonial period, industrialisation was necessary to generate jobs quickly.6 The Singapore Government sought help from the United Nations Development Programme (UNDP), which led to a delegation to Singapore to conduct a survey. This survey resulted in the A Proposed Industrialisation Programme for the State of Singapore report, also known as the ‘Winsemius Report’.7 The report had a significant influence on the nation’s industrialisation effort. The report recommended that Singapore move into export-oriented industrialisation as manufacturing activities were already declining due to political instability. Other recommendations included a focus on import-substitution; the protection of infant industries; the imposition of tariffs, where feasible; and a focus on locally manufactured products. Implementing one of the report’s recommendations, the Economic Development Board (EDB) was established in 1961 to spearhead the drive for industrialisation.8 The EDB launched the Product and Design Centre (PDC) in 1965 in the John Little’s

3

Sathikh (2013). O’Neill (2019). 5 Benham (1958, 17 Apr). 6 Centre for Liveable Cities (2013). 7 Cheng (1979); Centre for Liveable Cities (2013). 8 Cheng (1979); Centre for Liveable Cities (2013); The Straits Times (1961, 25 May). 4

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Building in the heart of the city area.9 The PDC was a showroom to present all locally made products to consumers and business people. The key aims were to promote both local and foreign goods made in Singapore, and to have a team of experts and design specialists advise local manufacturers on matters such as packaging, design and marketing. The products showcased included paper clips, cosmetics, furniture and building materials. The common market in Malaysia—through the political merger of Singapore into the Federation of Malaysia in 1963—would form an essential market for locally designed and manufactured products. One of the immediate tasks for the PDC was to educate local manufacturers on the importance of product design and to highlight the need for trained industrial designers.10 When the PDC was set up, industrial and product design was little known in Singapore.11 There was a total absence of qualified industrial and product designers, and design was largely ignored in the manufacturing process in the local industries. PDC’s promotion of design largely focused on promoting locally made products and emphasised the importance of original made-in-Singapore products by discouraging the practice of copying products from overseas.12 The PDC’s efforts were well received by local industrialists and manufacturers.13 PDC formed a team of design experts by recruiting four designers, Mr Don Jordon, Mr Willy Lim, Ms Grace Tan and Mr Vincent Khoo.14 Mr Jordon was an Australian industrial designer who had extensive experience in Australia, America and Europe. Ms Tan was a textile designer based in France. Mr Lim had freshly graduated from an Australian university in industrial arts. Mr Khoo had architectural training and was expected to be sent overseas by the EDB for industrial design training. None of team were trained locally, and most of them practised design abroad. To further expand the PDC in the future, the EDB planned to work with the Ministry of Education and the Public Service Commission to propose the training of industrial designers.15 Setting up a vocational institute for manual and applied arts to focus on training in creative work was part of the plan.16 Such was the situation in the design scene in Singapore in the early 1960s. Along with establishing the PDC, events related to design suggest that the infancy of industrial and product design in Singapore began around 1965.

9

Yeo (1965, 25 May). The Straits Times (1965a, 25 May). 11 The Straits Times (1965a, 25 May). 12 The Straits Times (1965b, 25 May). 13 The Straits Times (1965c, 25 May). 14 The Straits Times (1965a, 25 May); The Straits Times (1965d, 25 May); The Straits Times (1965e, 25 May). 15 The Straits Times (1965f, 25 May). 16 The Straits Times (1964, 3 Sept). 10

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7.2.2 Industrial and Product Design in the Early Post-Independence Era However, the separation of Singapore from Malaysia in August 1965 changed the landscape for design in the initial industrialisation plan. With the separation from Malaysia, the common market disappeared, and without a large domestic market in Singapore, the import-substitution strategy was no longer feasible. Singapore would have to embark on fully fledged export-oriented industrialisation.17 The situation worsened in 1967 with the announcement of the withdrawal of the British troops in Singapore by the end of 1971, leaving a vacuum of 30,000 direct jobs and 40,000 indirect jobs.18 The immediate focus of the economy would shift to labour-intensive manufacturing to create jobs. A year after its establishment, the shortage of industrial designers meant the PDC continued to play a significant role in educating local manufacturers on the importance of design for goods and encouraging them to use PDC’s services.19 One way of doing this was the monthly display of local goods such as souvenir products, leather goods, plastic products, building materials and electronic products.20 In addition, the PDC assisted in organising the Singapore Pavilion at the 1st International Trade Fair in Bangkok in 1966.21 Although the PDC achieved some results in raising the profile of Singapore products, many of the manufacturers were still not using the PDC’s facilities to display their goods.22 The PDC was handed over to the Singapore Manufacturers’ Association (SMA) and renamed the ‘Product Display Centre’ in 1967. The Product Display Centre would focus on promoting local industries using the display centre facilities.23 The original PDC staff were absorbed by the Light Industries Services (LIS) in the EDB Technical Consultant Services Division. Under the LIS, product design services, such as consultation and product development, were provided for EDB and local industries.24 Despite the initial uncertainty created by the separation from Malaysia in 1965, Singapore continued to achieve rapid economic growth in the early years of post-independence. In supporting the continual growth of the economy, industrial design and development services were seen as an urgent need for development.25

17

Centre for Liveable Cities (2013). Cheng (1979); Centre for Liveable Cities (2013). ‘Direct jobs’ refers to employment by the military, such as military personnel and civilians working at military bases. ‘Indirect jobs’ refers to those that serviced and were supported by the British troops, such as barbers, shopkeepers, domestic helpers, bus drivers, taxi drivers. 19 The Straits Times (1966, 11 Aug). 20 Yeo (1966, 11 Aug). 21 Economic Development Board (1967). 22 Yeo (1966, 11 Aug). 23 The Straits Times (1967, 27 July). 24 Economic Development Board (1969); Economic Development Board (1970). 25 Economic Development Board (1969); Economic Development Board (1970). 18

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There was also a need to cultivate technical human resources at different levels to expand Singapore’s industrial capabilities and economic growth.26 As such, three vocational institutes and four new training centres were established in 1969 for post-secondary education.27 Among them was the Baharuddin Vocational Institute (BVI), which focused on providing Craft diplomas in, for example, furniture design, commercial art and dressmaking. When the BVI officially opened in 1971, the opening speech by Professor Wong Lin Ken, Minister of Home Affairs, reiterated the role of design and design education in supporting the growth of the economy.28

7.3 The Promotion of Industrial and Product Design in the 1970s 7.3.1 Building on Efforts in the 1960s By the early 1970s, Singapore had achieved full employment, which was attributed to the manufacturing industries. The rapid industrial growth had focused on equipping the workforce with skills for employment in high-value industries.29 The foundation established by the PDC in the 1960s continued to play a role in the design scene in Singapore. The SMA continued to promote local products locally and abroad through exhibitions,30 as well as the importance of quality and innovation in local products. Some of the exhibitions were coordinated with seminars organised by the Singapore Institute of Standards and Industrial Research (SISIR). The SISIR was formed initially as the Industrial Research Unit within the EDB in 1963.31 The Industrial Research Unit was renamed SISIR in 1969 to promote quality control and to provide technical and consultancy services to local manufacturers. In 1973, SISIR became an independent statutory board and would play an essential part in setting the standards for products made in Singapore so that these products would be well respected locally and abroad.32

26

Sathikh (2011). The Straits Times (1969, 26 Jan). 28 Ministry of Culture (1971). 29 Centre for Liveable Cities (2013). 30 The Straits Times (1970, 28 June). 31 HistorySG (2013). 32 New Nation (1975, 31 Mar); The Straits Times (1983, 7 Jan). 27

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7.3.2 Exposure to the Concept of Product Design It may be said that the London Design Centre Exhibition, opened at the same time as the new offices of the British High Commission in Singapore, played a significant role in public exposure to, and education on, the science of product design. In 1973, a selection of 200 British-made, well-designed and high-quality products from the British Design Council’s collection were displayed in the exhibition.33 Some of the products on display were winners of the Duke of Edinburgh award for design by the British Design Council. The public were exposed to the British consumer industries’ versatility, modern standards and quality. More importantly, they were also exposed to various product design concepts in terms of safety, durability, ease of use, performance, aesthetic appeal, value for money and ergonomics.

7.3.3 Efforts to Create a Design-Conscious Singapore Around 1974, the general understanding of industrial design was still not high among local manufacturers and the public.34 The perception of design was still primarily associated with the appearance of a product. In mid-1974, the SISIR established the Design Centre, also known as the Industrial Design Centre (IDC). The IDC was formerly known as the Product Design Section in LIS.35 Although this might be seen as merely a relocation from the EDB to SISIR, it also signalled the expanded role the IDC was about to take in Singapore’s effort to create a design-conscious society.36 Some of the key objectives of the IDC were to encourage local industries to adopt design, help local manufacturers produce and improve products that met local and international needs through design, provide consultancy services and promote design and design education. Around the mid-1970s, the IDC was already staffed with qualified industrial design-trained personnel who were able to introduce progressive ideas, knowledge and skills from established design schools in the Asian region and around the world.37 For example, heading the IDC in the 1970s was Mr Sannie Abdul, one of Singapore’s pioneer designers, a returning graduate from Illinois Institute of Technology (IIT), trained in industrial design and architecture and with experience in the local and overseas design industry. Another was a graduate from Chiba University, specialising in industrial design. The IDC—as a leading local design consultancy in the 1970s with design-trained personnel with progressive ideas gained from overseas education and exposure—was a significant influence on the design scene in Singapore. 33

New Nation (1973a, 3 Apr); New Nation (1973b, 3 Apr). The Straits Times (1975, 27 June). 35 Economic Development Board (1975). 36 The Straits Times (1974, 28 June); The Straits Times (1975, 27 June); The Straits Times (1976a, 25 June). 37 The Straits Times (1976b, 25 June). 34

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The IDC was equipped with a workshop where the centre’s craftsmen would fabricate models for client viewing.38 Some of the products created by the IDC included television sets, radios and calendar sets. The IDC’s work seems to have borne small fruit which started to put Singapore’s product design on the global design scene.39 In addition to providing consultancy services, the IDC designed products that were winning awards. For example, the IDC designed an electronic calculator with interchangeable parts that was so well received in Europe that the commissioning company took steps to patent the design. Considering that industrial and product design had still been in an infant state in the mid-1960s, it is remarkable that within about 12 years Singapore design had begun to enter the global design scene. In 1977, the Industrial Training Board (ITB) set up a Trade Advisory Committee for the applied arts to support the development of local creative talents who were in-tune with the changing needs of the industry.40 The main aim of the Committee was to advise the ITB on its direction and training. The Committee came at a time of industrial growth where more products were being made in Singapore.

7.3.4 Design Education Three years after the opening of the BVI, products produced by students received a positive reception from the public during the annual exhibition and open house.41 In addition, the excellent quality of students’ work was reflected by the awards won in local design competitions. The BVI had also set up an industrial-education collaboration ecosystem. For example, some of the local industries were providing inplant training for students to gain practical experience. In addition, products designed by students, such as tableware, lampstands, crockery and ashtrays, were already being used by local hotels. In 1974, the BVI would offer five design courses that provided a technician-level qualification on graduation.42 These courses were Advertising Art, Interior Design, Fashion Arts, Three-Dimensional Design and Furniture Design and Production. The technician-level qualification would mean that graduates from BVI would be on par with graduates who had received the technician certificates from local polytechnics. Design education in BVI would focus on equipping students with holistic knowledge and skills in design to take on supervisory and junior management roles. To further the Institute’s contribution to the local design scene, in 1979, the BVI was announced as Singapore’s first post-secondary institution to offer a three-year

38

Business Times (1977, 16 July); Business Times (1979, 27 Mar); New Nation (1977, 18 July); The Straits Times (1975, 16 Mar). 39 The Straits Times (1977, 26 May). 40 Business Times (1977, 26 Oct); Ministry of Culture (1977); The Straits Times (1977, 26 Oct). 41 Tan (1974, 2 June). 42 Tan (1974, 2 June).

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diploma-level design course in interior design and advertising art.43 Starting in 1980, these programmes were an improvement on the existing interior design and advertising art programmes offering Industrial Technician Certificates on graduation. The ITB recommended this upgrade in BVI design education based on an urgent need for professional designers. Although there was no specific programme for product design by the end of the 1970s, the foundation set by BVI design education would provide the platform for product design education to be introduced in the late-1980s.

7.4 Planting the Seeds in the 1980s to Develop a Design-Conscious Singapore 7.4.1 Supporting Industrial and Product Design In 1981, the IDC in SISIR became a private company (known as Scientific Engineering and Technical Services Pte Ltd) to take on a broader range of design services. The company would be part of the SISIR’s commercial arm.44 SISIR was also shifting its focus to engineering design with an increased emphasis on research and development. However, in 1983, the Trade Development Board (TDB) was established to promote the export of products manufactured in Singapore, specific commodity trading in Singapore and international conditions that did not impede the free flow of goods and services.45 A year after its inception, the TDB formed the Promotion of Industrial Design Advisory Committee to help local manufacturers export their products. One aim was to promote to local manufacturers the need for good industrial and packaging design.46 The Committee was chaired by Mr Vincent Khoo, and the Committee members included Brother Joseph McNally (founder of Laselle College of Arts), Ms Su Yeang (one of Singapore’s pioneer designers) and Mr Choy Weng Yang (Curator of the National Museum). In addition, the TDB would also form the Design Service managed by Mr Sannie Abdul under the Promotion Support Service, a division within TDB.47

43

Business Times (1979, 17 Mar); Ministry of Culture (1979). The Straits Times (1981, 16 Jan). 45 The Straits Times (1983, 7 Jan). 46 Shariff (1985, 29 May). 47 Singapore Trade Development Board (1987). 44

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7.4.2 The Status of Industrial and Product Design in the 1980s: Part 1 The furniture industry was one of the least productive industries in Singapore in the early 1980s.48 The reason for this was that the value added per worker in the furniture sector was among the lowest in the country. There was also a general belief that the furniture industry was not exporting enough. One of the markets that Singapore furniture manufacturers were targeting was the Japanese market. Unfortunately, the local furniture manufacturers lacked knowledge of the Japanese market, for example, in areas such as design, size, quality and standards.49 Local manufacturers who planned to participate in the Tokyo International Furniture Fair in 1985 received stern feedback from Mr Sadao Nagaoka, a furniture designer. According to Mr Nagaoka, the local furniture exhibits were not up to the standard required for the Japanese market in terms of size, design and quality. Only two out of the fifty furniture designs could be considered creative. The majority of the furniture designs were merely copying other designs. Such was the state of furniture design in Singapore.

7.4.3 Ground-Up Design Support In 1984, a group of designers practising in Singapore formed the Designers Association Singapore (DAS).50 The DAS formation was in response to the state of design in Singapore at that time, which was not progressive. These designers were mostly trained overseas. The DAS aimed to promote the design profession in Singapore and elevate the professional image of designers. In addition, the DAS also provided feedback to the Government to help the design industry grow in Singapore.

7.4.4 The Status of Industrial and Product Design in the 1980s: Part 2 In 1985, British design experts Mr Geoffrey Constable and Mr Michael Wolff presented the ugly truth about the state of progress in design.51 Mr Constable (head of the British Design Council’s Industrial Division) and Mr Wolff (President of the Society of International Artistic Designers) were commissioned by the British Design Council and funded by the European Community (EC) to help Singapore review and 48

Business Times (1981, 11 July). The Straits Times (1985, 3 Aug). 50 Zhuang (2012). 51 Koh (1985, 23 Dec); Tong (1985, 23 Dec). 49

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improve the state of its industrial design. They were not impressed by the quality of local design. They highlighted the immediate need for Singapore to improve design skills. Some of the suggestions included raising awareness and appreciation of design, and creating the right creative environment for industrial design to flourish. Some of these approaches included design award schemes and setting up an organisation to identify problems and provide feedback. In addition, a good design education that focused on creativity and industrial and product design was necessary.52 The recommendations of Mr Constable and Mr Wolff would be implemented after a number of years.

7.4.5 Introduction of Product Design Education at the Tertiary and Secondary Level In the 1980s, there was a need to encourage originality and creativity in local talent. The trend of copying other designs did not help local products compete internationally.53 As early as 1968, Dr Goh Keng Swee, the Minister of Finance, highlighted the need for product design. British consultants were brought in to set up a product design course in BVI in 1988 to fill the gap in design education. The course would produce around 20 graduates a year to contribute to the local industry.54 In 1988, BVI offered the first three-year product design diploma course in Singapore, taking in 20 students.55 A memorandum of understanding was signed with Leicester Polytechnic in England. Experts from the Polytechnic’s School of Industrial Design would teach the product design course in Singapore, and Professor Michael Hallam from Leicester Polytechnic would be the external examiner for product design. The BVI product design course attracted A-Level holders who had completed their local junior college education in addition to students who had completed O-Level secondary school education. One of them was Mr Low Cheaw Hwei (then 19 years old), who would later become an established product designer and a graduate of Singapore’s design education system. In 1988, the Ministry of Education announced that Secondary Three students would be offered a new subject called ‘Design and Technology’ (D&T) the following year which could be taken as an O-Level school leaving examination subject in 1990.56 The D&T subject in Singapore was modelled very closely on similar subjects offered in the United Kingdom (UK) in the 1980s. The D&T subject moved away from an emphasis on craft and vocation to design-based learning as a general form of

52

Business Times (1985, 20 Feb). Gutierrez and Holmberg (1986, 23 Feb). 54 Business Times (1986, 5 Feb); Gutierrez and Holmberg (1986, 23 Feb); Lee (1987, 12 June); Yeo (1988, 19 Oct). 55 Gwee (1988, 20 Oct); Yeo (1988, 19 Oct). 56 Tsang (1988, 8 Mar). 53

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education.57 Formerly known as the Technical Education Society (TES), the Design and Technology Education Society (DTES) was established to support D&T education.58 D&T is still offered in secondary school education with students ranging from 13 to 17 years old. The DTES continues to support D&T teachers in their professional development and promotes D&T to students by organising conferences and workshops.

7.4.6 Bringing Singapore Design Forward into the 1990s In order to promote design, Singapore held the region’s first International Design Forum in Raffles City Convention Centre in October 1988.59 This forum was organised by TDB and co-organised by EDB and SISIR. The forum would bring together manufacturers, designers and design educators from Italy, Japan, the UK, the United States of America (US) and West Germany.60 Some of the key speakers included Mr John Butcher (Parliamentary Under-Secretary of State for Industry and Consumers Affair), Mr Mario Bellini (Italian architect and industrial designer), Mr Kenji Ekuan (President of GK Design Associates, Japan), Professor Frank Sander (Fachhochschuler Rheinland-Pfalz, Germany) and Professor Charles Owen (IIT, US).61 The significance of the international design forum was also highlighted by the attendance of Mr Wee Kim Wee, Singapore’s President at that time. In Mr Wee’s opening address, he stressed the need to inculcate an appreciation of the value of design at a young age. During the forum, a conference and an exhibition would be held concurrently. Some of the topics discussed included the role of design in the market success of products, design in building a company’s image, design management, design education, computer-supported design and design protection.62 In addition, the experts also discussed the need for an institution, such as a design council, to coordinate and lead design activities in Singapore. To promote design consciousness and set standards for local products, the Good Design Awards were introduced in 1988 and the winners were announced in conjunction with the International Design Forum.63 In addition, the Young Designers Award was also launched to encourage students to be involved in design. By the end of the 1980s, Singapore was gaining recognition for developing a design-conscious nation

57

Chia and Tan (2012); Ng (1989, 6 Aug). Design & Technology Educators Society (2008). 59 Business Times (1988, 25 Jan). 60 Business Times (1988, 13 Oct). 61 Business Times (1988, 20 July). 62 Cua (1988, 20 Oct); Cua (1988, 21 Oct); Business Times (1988, 25 Jan); Seow (1988, 22 Oct); The Straits Times (1988, 21 Oct). 63 Tsang (1988, 8 Mar). 58

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and was included as a member of the International Council of Societies of Industrial Designers (ICSID).64

7.5 Preparing to Enter the New Millennium During the 1990s 7.5.1 Fulfilling the Blueprint for Design Set in the Late 1980s In the 1990s, the Singapore Government continued its development of a designconscious Singapore. The biennial International Design Forum was held again in 1990 and the Singapore Design Award, held in conjunction with the Forum, continued to recognise and award good industrial design in Singapore.65 Following through on the recommendations made by various experts in the 1980s to establish an institution to champion design in Singapore, TDB set up a Design Council and Design Centre in 1991 and 1992, respectively. These moves signalled a Government commitment to further develop design. The Design Council was chaired by Dr Tay Eng Soon, and Mr Sannie Abdul was its Secretary.66 The Design Council included members from other organisations such as DAS, SISIR, Nanyang Technological University, EDB, William Lim Associates, Olivetti (Singapore) Pte Ltd, Society of Designing Arts (Fashion) and Sony Singapore Pte Ltd. The Design Centre would promote design to manufacturers and students.67 During the opening of the Design Centre, several of the Centre’s plans were mentioned.68 It would hold regular workshops to update and upgrade manufacturers. Foreign designers would also be brought in to help local furniture manufacturers to apply designs to improve their products. In addition, the Design Centre would also work with the Ministry of Education to increase design awareness among students. The Young Designers Award would be a platform for students to present their creative ideas. Scholarships (sponsored jointly by the Design Centre and local companies) would also be offered to students to pursue the learning of design locally or overseas. The Design Library in the Design Centre was also a reference source for designers and students.69 It held an extensive collection of books and media that covered the broad design discipline. In 1995, the physical space for the Design Centre at North Bridge Road was closed down, but the Design Centre continued to exist within the

64

The Straits Times (1989, 15 July). The Straits Times (1989, 31 Oct). 66 Singapore Trade Development Board (1994). 67 Zhuang (2012), p. 36. 68 Ministry of Information and the Arts (1991a). 69 Zhuang (2012), p. 38. 65

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TDB organisation. The International Design Forum, Singapore Design Awards and Young Designers’ Awards continued to be organised by TDB beyond the 1990s.70

7.5.2 Strengthening Design Education in the 1990s A new polytechnic, Temasek Polytechnic, was established in 1990. Within the Polytechnic, a School of Design was formed that offered three courses: Graphic Design, Product Design and Interior Architecture. The design courses in BVI were integrated into the Temasek Polytechnic School of Design. In 1991, among the first group of graduates from Temasek Polytechnic were 15 locally trained Product Design graduates.71 These 15 graduates marked a significant milestone for Singapore’s product design education. Following the establishment of Temasek Polytechnic, the second product designrelated diploma course, the Diploma in Product Design and Development, was established in Nanyang Polytechnic. In 1997, a three-year course on Product Design and Development was set up under the School of Engineering in Nanyang Polytechnic.72 This course involved collaboration with Fachhochschule (FH) Potsdam University, renowned for its industrial product design, in order to prepare graduates to meet international standards in product design. This collaboration involved the secondment of a German Professor who was an expert in design to the Polytechnic. In 1999, Singapore’s first university-level course in industrial design was established in the School of Design and Environment (SDE) in the National University of Singapore (NUS). The industrial design programme would focus on system thinking—where a system would contain a complex set of components that would be integrated as a whole and designed to work together.73 The programme emphasised a knowledge-based approach and focused on strategic thinking through design innovation to search for new products and markets. The programme would also focus on sustainability. Thus, the industrial design programme aimed to train students to develop innovative ideas that would have an impact and contribute to the global community. With the establishment of an industrial design course in the NUS, a new generation of young industrial and product designers with a local bachelor degree would rise and contribute to Singapore’s design industry and design education in the new millennium.

70

Sathikh (2011), p. 443. Ministry of Information and the Arts (1991b). 72 Nanyang Polytechnic (1998). 73 National University of Singapore (2000). This information was collected by the author during his research field trip to the School of Design and Environment in 2008 and 2009 to study industrial design education in NUS. 71

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7.6 Singapore Design in the New Millennium 7.6.1 The Creative Cluster With globalisation, technology advancement and competition from China and India, Singapore continued to re-invent itself in the early 2000s. To remain competitive, Singapore would need to become a globalised and diversified economy, and a creative and entrepreneurial nation.74 To do that, Singapore would need the creativity of its people and to develop a ‘Creative Economy’ that would fuse the arts, business and technology to provide Singapore with a new competitive edge. Within the Creative Economy, the key driver would be the creative cluster which was defined as ‘those industries which have their origin in individual creativity, skill and talent and which have a potential for wealth and job creation through the generation and exploitation of intellectual property’.75 The significance of the creative cluster was also due to the contributions made by the copyright-based industries in the areas of employment and economy growth in Singapore. The creative industries were categorised into three broad groups: Arts and Culture, Design, and Media.76 Industrial and product design would fall under the Design group. Singapore’s vision was the development of a vibrant and sustainable creative cluster to propel the growth of the Creative Economy. Besides generating economic value directly, it would also be an economy-wide enabler that would help drive innovation and differentiate products and services. In the new millennium, industrial and product design developments in Singapore would be influenced by three initiatives: DesignSingapore Initiative Phase I (Dsg-I); DesignSingapore Initiative Phase II (Dsg-II); and Design 2025.

7.6.2 DesignSingapore Initiative Phase I (Dsg-I) In 2003, the DesignSingapore Council was formed as a department in the Ministry of Information, Communication and the Arts (MICA) to develop design within the creative cluster. The key role of the DesignSingapore Council was to drive the Dsg-I.77 Dsg-I included five strategies: 1. 2. 3. 4. 74

Design Development; Design Promotion; Design Culture; Design Futures; and

Ministry of Trade and Industry (2002). Ministry of Trade and Industry (2002), p. 2. 76 Ministry of Trade and Industry (2002), p. 2. 77 DesignSingapore Council (2009). 75

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Singapore Design Festival. These five strategies were formed based on three main concepts that:

1. 2. 3.

design is a culture with both an economic and social agenda; design is in the knowledge and creative economy, valued in intellectual property (IP) terms and pursued through creativity and research; and design is within an inter-disciplinary ecosystem and part of the creative industries with the arts, media, technology and business.

The Dsg-I did not just focus on Singaporean designers, but also ‘Singapore designers’ which included international designers living and working in Singapore as well as international design practices in Singapore.

7.6.3 DesignSingapore Initiative Phase II (Dsg-II) In 2009, building on the Dsg-I, the DesignSingapore Council launched the Dsg-II to guide developments in design between 2009 and 2015.78 In Dsg-II, the vision was to develop Singapore into a global city for design creativity in Asia where design improves capability, enhances quality of life and drives competitiveness. To achieve this vision, three key strategies were formed. The first strategy was to develop excellent and globally competitive designers and a design cluster to serve worldwide clients and play a vital role to enable Singapore enterprises to gain a competitive edge through design. The second strategy was to provide assistance and incentives to allow enterprises to develop competitive products and services to meet the growing global demand for good design. At the same time, it would help enterprises learn about the value of design and integrate design into business strategies. The third strategy would provide an environment supportive of innovation and design IP creation through design research and development.

7.6.4 The Development of Industrial and Product Design Through Dsg-I and Dsg-II Dsg-I and Dsg-II boosted industrial and product design in Singapore and created more awareness in the general public. At the same time, Dsg-I and Dsg-II also propelled Singapore industrial and product design into the international design scene. Some examples follow.79 Under the Design Capability and Professional Development programme, Dsg Scholarships were launched in 2005. Between 2005 and 2008, up-and-coming talents 78 79

DesignSingapore Council (2009). DesignSingapore Council (2009); DesignSingapore Council (2016a).

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in industrial and product design—such as Mr Hans Tan, Mr Wai Yuh-Hunn and Ms Olivia Lee—received the Dsg Scholarships. Mr Hans Tan and Mr Wai Yuh-Hunn are good examples of design talents who were both educated locally in industrial design (NUS) and pursued their graduate studies abroad. They both went on to become established industrial designers both locally and internationally. Ms Lee, in particular, benefitted from the Dsg-I and became one of the top graduates in industrial design at Central St Martins in the UK. The DesignSingapore Studios created a platform for collaborative projects between Singapore and international designers. One such example was the DsgKita Studios in 2005, where Singapore firms including ENZER, Aspial-Lee Hwa and Air Division, worked with renowned Japanese designer Mr Toshiyuki Kita to develop new design concepts. An example of creating new IP was the Dsg-Venice Biennale 2008 studio. Fashion and product designers collaborated to develop new IP in interactive digital media and design. They were presented at the Singapore Pavilion at the 11th International Architecture Exhibition, La Biennale di Venezia. Through a Design Awareness and Perception programme, the President’s Design Award was launched in 2006 as the highest recognition for Singapore’s designers and designs. The President’s Design Award is given to recognise design talents from all fields who are Singapore citizens and permanent residents, and who have made significant achievements and contributions in design. The President’s Design Award includes two categories, Designer of the Year Award and Design of the Year Award.80 Since 2006, recipients of the Designer of the Year Award in the Product and Industrial Design category include Mr Nathan Yong, Mr Voon Wong, Mr Patrick Chia and Mr Hans Tan. Product designs that won the Design of the Year Award include the Black Forest Table and Prologue Collection by Outofstock; Objects around the Tablescape by Design Incubation Centre in NUS; Spotted Nyonya Collection and Pour by Hans Studio; Singapore Icons by Supermama; Air + Smart Masks and Micro Ventilators by STUCK Design.81 Many of the President’s Design Awards recipients are products of the local design education system who later established themselves locally and internationally. Such an example is Mr Donn Koh, a graduate of industrial design in NUS and also the co-founder of STUCK Design, whose product Leapfrog has won three major awards: BraunPrize, Germany (2007), Red Dot Award: Design Concept (2007) and the IF Concept Design Award (2008).82 The Asian Insights and Design Innovation (AIDI) was established in 2010 to act as an enabler to help Singapore-based creative industries and enterprises expand into the Asian market. The AIDI mainly conducts research on Asian consumer markets, social-cultural trends and design innovation; and feeds these research findings to the public and private sectors. Thus, all relevant sectors may use these research findings to improve their services and products to respond to the needs and issues highlighted by the studies. An example of such research was the Rethinking Health

80

DesignSingapore Council (2015c). President’s Design Award Singapore (2020); DesignSingapore Council (2015c). 82 Division of Industrial Design (2016). 81

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and Wellness series of research studies where Singapore design consultancy firms were commissioned to conduct two separate studies.83 OrcaDesign Consultants Pte Ltd was one of two consultancies commissioned for research on Empathetic Technology for Ageing as one of the Rethinking Health and Wellness series of research studies.84 OrcaDesign Consultants is a Singapore consultancy firm specialising in, for example, product and industrial design, research and strategy, services design and design thinking workshops. This study explored and identified needs and opportunities for the use of Information and Communications Technology (ICT) to improve the lives of the elderly in areas such as healthcare. The study brought together designers, ICT professionals and stakeholders in the healthcare sector to design solutions for the elderly. A spin off of AIDI’s research studies was the first Designathon, with the theme ‘Living Beautifully: Designing for our Golden Years’, organised by the DesignSingapore Council in 2016.85 The Designathon brought together 170 participants from various disciplines to develop design solutions that would facilitate better-quality living for the ageing and elderly population. As a result of AIDI’s research, Singapore industrial and product design is in an excellent position to play a leading role in the country’s economic, social and environmental development. To further recognise Singapore design, the Singapore Good Design Mark (SG Mark) was launched in 2013 by Design Business Chambers Singapore (DBCS) in partnership with the Japan Institute of Design Promotion (JDP). The SG Mark aims to recognise design solutions and services that impact businesses and communities in Singapore.86 In 2014, the National Design Centre was established to create a focal point to connect all aspects of design, including as a place that connects and supports different stakeholders in design and business and hosts exhibitions and programmes for the public.87 Also, in 2014, Design Collaboration Assistance (DCA) was launched to support potential commercialisation of new innovative IP creation by Singapore design businesses through industry collaboration.88

7.6.5 UNESCO Creative City of Design and Singapore Design Beyond 2020 In 2015, Singapore achieved two critical milestones in design. Firstly, Singapore joined the UNESCO Creative Cities Network (UCCN) and was designated as a 83

DesignSingapore Council (2015a) and (2015b). DesignSingapore Council (2015b). 85 Seow (2016, 14 Jan). 86 Singapore Good Design. About the Mark. https://sgmark.org/singapore-good-design-mark/. Accessed 25 Oct 2021. 87 DesignSingapore Council (2016a). 88 DesignSingapore Council (2016a). 84

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Creative City of Design.89 As a ‘Creative City of Design’, Singapore was recognised as a city that adopted creativity as a strategic factor for sustainable urban development. Secondly, Singapore established a Design Masterplan Committee to develop strategies to further transform Singapore into a global city for design by using design to drive innovation and economic, social and environmental growth. Design 2025 was established, building on the Dsg-I and Dsg-II.90 The vision for Design 2025 is to drive Singapore into an innovation-driven economy and a ‘loveable city’. According to Design 2025, as an innovation-driven economy, new opportunities, new business and new jobs will be uncovered using design as a strategy tool for companies to re-invent themselves in a rapidly changing world. As a ‘loveable city’, design will be embraced and appreciated by the community beyond its aesthetic value; and a better living environment will be co-created by the community through design and, in doing so, develop a stronger sense of ownership and people-centred services. Under Design 2025, Singapore industrial and product design firms continue to benefit from Government initiatives. For example, the Business of Design Programme, launched in 2019, has helped to strengthen the competitiveness of Singapore design firms and launch them in international markets. In this programme, veteran in-market consultants with extensive networks and experience in key markets were appointed to mentor eight Singapore design studios to sharpen their portfolios, hone their business-pitching skills, and match them with potential business leads.91 These design studios include some established Singapore industrial and product design firms like Gabriel Tan Studio, Jarrod Lim Design, Lanzavecchia + Wai, Olivia Lee Associates, Orcadesign, SCENE SHANG, Studio Juju and wohabeing. In bringing design into the community, exhibitions and design workshops continued to play a significant role in connecting the public to the design scene, including industrial and product design. Exhibition platforms that showcase good industrial and product design have included the ‘International Furniture Fair Singapore’ started in 1981; ‘Design for Dignity and AccessAbility’ (Sweden) in 2016; ‘Project Vitra—Design, Architecture, Communications (1950–2017)’ (Switzerland) in 2018; ‘No Taste for Bad Taste’ (France) in 2019; and ‘In The Scheme of Things’ featuring Nathan Yong Design in 2019. Developing the Singapore Design brand continues to be a crucial strategic driver for the future of Singapore design. Since the infancy of Singapore design, distinguishing Singapore design from that of other countries and foreign competitors has been a key focus. National platforms such as the Singapore Good Design Mark and the President’s Design Awards continue to play an important part in recognising and valuing good design and strengthening the brand identities of Singapore design.

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DesignSingapore Council (2019), DesignSingapore Council. Singapore, UNESCO Creative City of Design. Retrieved 27 June 2021, from https://www.designsingapore.org/about-us/unesco-cre ative-city-of-design.html. 90 DesignSingapore Council (2016b). 91 DesignSingapore Council (2019).

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7.6.6 Strengthening Design Education in the 2000s The 2000s would mark several milestones for Singapore in the area of design education. Firstly, in 2000, the School of Design was established in Nanyang Polytechnic, bringing the Diploma in Product Design and Development course and the Product Design and Development Centre under its wing.92 A third and fourth diploma-level product design programme was introduced in polytechnics. In 2007, Singapore Polytechnic launched the School of Design to offer a three-year Diploma in Experience Design (Interaction and Product).93 In 2012, a School of Design and Environment was set up in Ngee Ann Polytechnic to offer a three-year diploma programme for Product Design and Innovation.94 Secondly, as part of the implementation of Dsg-I, a School of Art, Design and Media was established in Nanyang Technological University (NTU) in 2005.95 Within it, the Product Design course, a four-year bachelor degree programme, was offered. This programme would become Singapore’s second industrial and product design programme to be offered in a Government university. Thirdly, to provide more education options, a Product and Industrial Design course was offered at the Institute of Technical Education (ITE) in 2009.96 This course focuses on providing students with the technical skills necessary to be employable as graduates in the creative industries. Upon graduation, graduates would receive a National ITE Certificate (Nitec). Students who do well in this course have the opportunity to move to diploma courses offered by the polytechnics. Compared to when BVI offered the first product design course in 1988, students now have more options for studying and training in industrial and product design at the tertiary level. As Sathikh puts it, the design education offered at the ITE, polytechnics and universities each play a different role in developing creative talent in Singapore.97 At present, Singapore has established a good system for design education to nurture local talent who will further improve and support Singapore’s aspiration to develop into an innovation-driven economy and a loveable city by 2025.

7.7 Conclusion Since the 1960s, the development of industrial and product design has been closely tied to the Singapore economy. The Singapore Government viewed industrial and 92

Nanyang Polytechnic (2001). Singapore Polytechnic (2007). 94 Ngee Ann Polytechnic (2012). 95 Sathikh (2013), p. 7. 96 Institute of Technical Education (2009). 97 Sathikh (2013), p. 7. 93

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product design as an essential factor to allow local products to compete in overseas markets. As a young nation, the country started with very low awareness and capability in industrial and product design. There was little creative talent to call on. The Government had to take the lead and set up basic systems, infrastructure and environments through top-down initiatives. The lack of creative talent and experts meant that seeking foreign help was crucial. Through support from foreign countries, knowledge and skills were brought in to develop local creative talents. Locals with potential were sent overseas by the Government to be trained and returned to contribute to the development of industrial and product design. The establishment of local design education was another essential factor to nurture future talents. Fifty-six years after establishing the Product Design Centre in 1965, Singapore would develop into a Creative City of Design. If the Government had left industrial and product design to be developed from the ground-up, it might have struggled and taken a longer time to grow. With creative talents to call upon, be it local or foreign, the vibrant industrial and product design community now work hand-in-hand with the Government to build Singapore into an innovation-driven economy and a loveable city. Singapore is currently facing urgent issues such as climate change, an ageing population, and the latest, the COVID-19 pandemic. The challenge will now be for the industrial and product design community to answer a higher calling to contribute to solving these issues for the benefit of Singapore and the rest of the world.

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Gutierrez L, Holmberg J (1986, 23 Feb) Designing Ways to Give a Product an Edge Over Others. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes198602231.2.64.10.1. Accessed 25 Oct 2021 Gwee M (1988, 20 Oct) Set Higher Targets for Design Students. Business Times. https://eresources. nlb.gov.sg/newspapers/Digitised/Article/biztimes19881020-1.2.15.6. Accessed 25 Oct 2021 HistorySG (2013) SISIR becomes a Statutory Board. Retrieved 28 June 2021, from https://eresou rces.nlb.gov.sg/history/events/1ee50994-5b52-4aa3-8071-24d848e5dc16. Accessed 25 Oct 2021 Institute of Technical Education (2009) Institute of Technical Education Annual Report 2008/2009. https://www.nas.gov.sg/archivesonline/government_records/record-details/8726aef6-abd011e6-9af5-0050568939ad. Accessed 25 Oct 2021 Koh E (1985, 23 Dec) A Blueprint for Good Industrial Design. Business Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/biztimes19851223-1.2.38. Accessed 25 Oct 2021 Lee V (1987, 12 June) VITB to Start Product Design Course. The Straits Times. https://eresources. nlb.gov.sg/newspapers/Digitised/Article/straitstimes19870612-1.2.29.24. Accessed 25 Oct 2021 Ministry of Culture (1971) Speech by Prof Wong Lin Ken, Minister for Home Affairs and M.P. for Alexandra, at official opening of the Baharuddin Vocational Institute on Friday, 8 Oct 1971, at 7.15 p.m. https://www.nas.gov.sg/archivesonline/speeches/record-details/7af53731-115d-11e383d5-0050568939ad. Accessed 25 Oct 2021 Ministry of Culture (1977) Address by Dr Ahmad Mattar, Acting Minister for Social Affairs, and Chairman, Industrial Training Board, at the Inaugural Luncheon for the First Term of Office of the Applied Arts Trade Advisory Committee at the Hotel and Catering Training School. https://www.nas.gov.sg/archivesonline/speeches/record-details/722 29d4d-115d-11e3-83d5-0050568939ad. Accessed 25 Oct 2021 Ministry of Culture (1979) Address by Dr Ahmad Mattar, Acting Minister for Social Affairs and Chairman, Vocational and Industrial Training Board, at the Inaugural Meeting of the Second Term of Office of the Applied Arts Trade Advisory Committee at the VITB Board Room. https://www.nas.gov.sg/archivesonline/speeches/record-details/7244df85115d-11e3-83d5-0050568939ad. Accessed 25 Oct 2021 Ministry of Information and the Arts (1991a) Opening Address by Brig Gen (Res) Lee Hsien Loong, Deputy Prime Minister and Minister for Trade & Industry at the Opening of Design Centre Singapore on 11 Apr 1991, at 11.30 am. https://www.nas.gov.sg/archivesonline/speeches/ record-details/7124a322-115d-11e3-83d5-0050568939ad. Accessed 25 Oct 2021 Ministry of Information and the Arts (1991b) Speech by Dr Tay Eng Soon, Senior Minister of State for Education, at the Temasek Polytechnic’s First Graduation Ceremony at the SLF Auditorium on Tuesday, 30 July 1991, at 10.00 am. https://www.nas.gov.sg/archivesonline/speeches/recorddetails/732bc426-115d-11e3-83d5-0050568939ad. Accessed 25 Oct 2021 Ministry of Trade and Industry (2002) Creative Industries Development Strategy: Propelling Singapore’s Creative Economy. ERC Services Subcommittee, Singapore. https://eresources.nlb.gov.sg/ printheritage/detail/795a182c-b200-44a7-9130-cf23b1ece949.aspx. Accessed 25 Oct 2021 Nanyang Polytechnic (1998) Annual Report of the Nanyang Polytechnic 1997/1998. https://www. nas.gov.sg/archivesonline/government_records/record-details/7a2d7ab5-7633-11e7-83df-005 0568939ad. Accessed 25 Oct 2021 Nanyang Polytechnic (2001) Annual Report of the Nanyang Polytechnic 2000/2001. https://www. nas.gov.sg/archivesonline/government_records/record-details/47ae084e-4d57-11e7-9199-005 0568939ad. Accessed 25 Oct 2021 National University of Singapore (2000) Department of Architecture Handbook 2000–2001. National University of Singapore, Singapore New Nation (1973a, 3 Apr) Britain’s Best in Design and Quality.... https://eresources.nlb.gov.sg/ newspapers/Digitised/Article/newnation19730403-1.2.56.1. Accessed 25 Oct 2021 New Nation (1973b, 3 Apr) Only Quality Goods Are On Display. https://eresources.nlb.gov.sg/new spapers/Digitised/Article/newnation19730403-1.2.56.3. Accessed 25 Oct 2021

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New Nation (1975, 31 Mar) Industries Enter a New Phase. https://eresources.nlb.gov.sg/newspa pers/Digitised/Article/newnation19750331-1.2.21.1.1. Accessed 25 Oct 2021 New Nation (1977, 18 July) Packaging Body Formed to Help Industry. https://eresources.nlb.gov. sg/newspapers/Digitised/Article/newnation19770718-1.2.24. Accessed 25 Oct 2021 Ng WJ (1989, 6 Aug) Design and Technology is New O level subject. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19890806-1.2.25.1. Accessed 25 Oct 2021 Ngee Ann Polytechnic (2012) Ngee Ann Polytechnic Annual Report 2011/2012. https://www.nas. gov.sg/archivesonline/government_records/record-details/5690071b-d636-11e5-b8bb-005056 8939ad. Accessed 25 Oct 2021 O’Neill J (2019) The Desire for Design in 1960s Singapore. Proceedings of the Making and Shaping Things in Creative Economies: From History to Present Day 2019, vol 7, p. 19. Vilnius University Press. https://doi.org/10.15388/Proceedings.2019.7. Accessed 25 Oct 2019 President’s Design Award Singapore (2020) Award Recipients. Retrieved 27 June 2021, from https:// pda.designsingapore.org/presidents-design-award/award-recipients.html Sathikh PM (2011) Transformal Role of Product Design in Singapore’s Transition to a Service Economy. In Silva A, Simoes R (eds) Handbook of Research on Trends in Product Design and Development: Technological and Organizational Perspectives. Business Science Reference, Singapore, pp. 431–446 Sathikh PM (2013) Design for a City State: An Overview of Design Education in Singapore. In Reitan J, Lloyd P, Bohemia E, Nielsen L, Digranes I, and Lutnæs E (eds), Proceedings of the 2nd International Conference for Design Education Researchers 2013, vol 2, pp. 649–665. ABMmedia. https://dl.designresearchsociety.org/conference-volumes/42/. Accessed 25 Oct 2021 Seow J (2016, 14 Jan) First National Designathon Centres On Design For Graceful Ageing. Indesignlive Singapore. https://www.indesignlive.sg/articles/in-review/first-national-des ignathon-centres-on-design-for-graceful-ageing. Accessed 25 Oct 2021 Seow S (1988, 22 Oct) Top Designers Support Idea of Design Institute for Singapore. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes198810221.2.28.2. Accessed 25 Oct 2021 Shariff A (1985, 29 May) Images for Industries. Business Times. https://eresources.nlb.gov.sg/new spapers/Digitised/Article/biztimes19850529-1.2.23.2. Accessed 25 Oct 2021 Singapore Polytechnic (2007) Annual Report of Singapore Polytechnic 2006/2007. https://www. nas.gov.sg/archivesonline/government_records/record-details/ded27953-b6a7-11e6-b045-005 0568939ad. Accessed 25 Oct 2021 Singapore Trade Development Board (1987) Singapore Trade Development Board 1986/87 Annual Report. https://www.nas.gov.sg/archivesonline/government_records/record-details/f94 0d27c-86b3-11e7-83df-0050568939ad. Accessed 25 Oct 2021 Singapore Trade Development Board (1994) Singapore Trade Development Board 1992/93 Annual Report. https://www.nas.gov.sg/archivesonline/government_records/record-details/900 4318c-7958-11e7-83df-0050568939ad. Accessed 25 Oct 2021 Tan WJ (1974, 2 June) Baharuddin Students’ Works on Sale at Exhibition. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19740602-1.2.54. Accessed 25 Oct 2021 The Straits Times (1961, 25 May) Economic Development Board to Be Set Up. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes196105251.2.101. Accessed 25 Oct 2021 The Straits Times (1964, 3 Sept) Three More Trade Schools to be Set Up in Spore. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19640903-1.2.84. Accessed 25 Oct 2021 The Straits Times (1965a, 25 May) Designers to Play Role in Creating National Identity. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes196505251.2.166.9. Accessed 25 Oct 2021

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The Straits Times (1965b, 25 May) ‘Buy Local Goods’ Drive to Start. The Straits Times. https://ere sources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19650525-1.2.166.3. Accessed 25 Oct 2021 The Straits Times (1965c, 25 May) Setting Up of Centre Praised. The Straits Times. https://eresou rces.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19650525-1.2.166.7. Accessed 25 Oct 2021 The Straits Times (1965d, 25 May) Centre Staffed by Team of Five Experts. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes196505251.2.166.6. Accessed 25 Oct 2021 The Straits Times (1965e, 25 May) Industrial Designers. The Straits Times. https://eresources.nlb. gov.sg/newspapers/Digitised/Article/straitstimes19650525-1.2.166.5. Accessed 25 Oct 2021 The Straits Times (1965f, 25 May) Plans for Product Centre’s Future Expansion Studied. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes196505251.2.166.8. Accessed 25 Oct 2021 The Straits Times (1966, 11 Aug) Qualified Industrial Designers are in Great Demand. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes196608111.2.90.3. Accessed 25 Oct 2021 The Straits Times (1967, 27 July) Product Display Now Handled by SMA. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19670727-1.2.37. Accessed 25 Oct 2021 The Straits Times (1969, 26 Jan) Wide Range of Skills Offered in New Term. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19690126-1.2.92. Accessed 25 Oct 2021 The Straits Times (1970, 28 June) Association’s Bid to Keep Pace with Industrial Growth. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes197006281.2.125. Accessed 25 Oct 2021 The Straits Times (1974, 28 June) Focus on Institute’s Design Centre for Gracious Living.... The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes197406281.2.132.13. Accessed 25 Oct 2021 The Straits Times (1975, 16 Mar) Packaging Design Must be Appealing. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19750316-1.2.57.3. Accessed 25 Oct 2021 The Straits Times (1975, 27 June) Institute Offers Technical Services and Facilities. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes197506271.2.169.13. Accessed 25 Oct 2021 The Straits Times (1976a, 25 June) Looking for Creative Solutions to Industry. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes197606251.2.156.9. Accessed 25 Oct 2021 The Straits Times (1976b, 25 June) Pioneer in Exhibition and Product Design. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes197606251.2.156.12. Accessed 25 Oct 2021 The Straits Times (1977, 26 May) The Vital Role of Design. The Straits Times. https://eresources. nlb.gov.sg/newspapers/Digitised/Article/straitstimes19770526-1.2.147.9. Accessed 25 Oct 2021 The Straits Times (1977, 26 Oct) Body—Set Up to Aid Industry. The Straits Times. https://ere sources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19771026-1.2.54. Accessed 25 Oct 2021 The Straits Times (1981, 16 Jan) SISIR’s Design Centre to be Private Firm. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19810116-1.2.84. Accessed 25 Oct 2021 The Straits Times (1983, 7 Jan) How the Board Plays its Role. The Straits Times. https://eresources. nlb.gov.sg/newspapers/Digitised/Article/straitstimes19830107-1.2.155.7.1.5. Accessed 25 Oct 2021

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The Straits Times (1985, 3 Aug) Furniture Makers Get Tips on Selling to Japanese Market. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes198508031.2.22.27. Accessed 25 Oct 2021 The Straits Times (1988, 21 Oct) Good Package Design ‘Key to Selling in US’. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes198810211.2.30.17. Accessed 25 Oct 2021 The Straits Times (1989, 15 July) Singapore Gains Recognition for Being Design-Conscious. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes198907151.2.99. Accessed 25 Oct 2021 The Straits Times (1989, 31 Oct) 1990 S’pore Design Award Entries Open. The Straits Times. https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes198910311.2.49.24. Accessed 25 Oct 2021 Tong YT (1985, 23 Dec) S’pore ‘Has Potential to be Design Centre’. The Straits Times. https://eresou rces.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19851223-1.2.25.15. Accessed 25 Oct 2021 Tsang J (1988, 8 Mar) Good Designs to be Rewarded. Business Times. https://eresources.nlb.gov. sg/newspapers/Digitised/Article/biztimes19880308-1.2.47. Accessed 25 Oct 2021 Yeo C (1988, 19 Oct) 20 Budding Designers with Flair and Imagination. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19881019-1.2.47.3. Accessed 25 Oct 2021 Yeo TJ (1965, 25 May) Milestone in the State’s Industrial Programme. The Straits Times. https://ere sources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19650525-1.2.166.2. Accessed 25 Oct 2021 Yeo TJ (1966, 11 Aug) Singapore-Made Plastic Products on Display. The Straits Times. https:// eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19660811-1.2.90.2. Accessed 25 Oct 2021 Zhuang J (2012) Independence: The History of Graphic Design in Singapore Since the 1960s. The Design Society, Singapore

Leon Loh is an assistant professor in the Faculty of Design at Kyushu University, Japan. His main interest is in design education. His study involves product design education and design education as a form of general education to develop critical thinking and creativity in elementary, junior high school and high school students.

Chapter 8

History of Design Protection in Singapore Kodai Kimura

Abstract The laws of the United Kingdom historically governed registered design protection in Singapore. More recently, Singapore has taken a different approach to the protection of designs. In particular, Singapore has adopted a unique mechanism to minimise overlapping protection under design law and copyright law. Singapore encourages designers to use the design registration system under the Registered Designs Act. However, applications for design registration remain relatively low. Furthermore, while the tort of passing off and the Trade Marks Act may also be used to protect industrial designs in Singapore, both impose stringent requirements which can act as a barrier to such protection.

8.1 Introduction The Registered Designs Act (Singapore) (RDA) is the main system for the protection of industrial designs in Singapore.1 According to the Intellectual Property Office of Singapore (IPOS), some of the more popular classes of registered designs in recent years have been ‘articles of adornment’ (jewellery), ‘recording, communication or information retrieval equipment’ and ‘packages and containers for the transport or handling of goods’.2 While Singapore encourages the use of the RDA for the protection of designs, applications for registered designs remain relatively low.3

1

Registered Designs Act (Cap 266, 2005 Rev Ed) (Singapore) (RDA). Intellectual Property Office of Singapore (2020), p. 59; Intellectual Property Office of Singapore (2019), p. 41; Intellectual Property Office of Singapore (2018), p. 45. 3 See the World Intellectual Property Organization (WIPO) statistics reproduced below. 2

K. Kimura (B) Kobayashi & Yugeta Law Office, Tokyo, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_8

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8.2 The Past (UK Law) Before the RDA came into force in Singapore on 13 November 2000, the United Kingdom Designs (Protection) Act (Singapore) (UKDPA) governed registered design protection.4 Under this law, a Singapore designer would apply to register a design in the United Kingdom (UK) under the Registered Designs Act 1949 (UK) to protect a design in Singapore. This system automatically provided for registered design protection in the UK and Singapore.5 However, while the system allowed Singapore to establish and maintain its own registration system without substantial cost, users were subject to the inconvenience of having to apply for registration in the UK to obtain design protection in Singapore. The UKDPA system could also result in unreasonable outcomes. In Ang Lay See v. Solite Impex Pte Ltd, the Plaintiff, Solite Impex Pte Ltd, owned a registered design in the UK relating to frames and corner pieces for window frames.6 The Plaintiff sued for infringement of the design right against the Defendant, Ang Law See, and others. In response, the Defendant argued that the registered design was invalid because of lack of novelty in Singapore.7 The design had been published in Singapore before the application for registration in the UK.8 Section 4 of the UKDPA stated that: the High Court shall have the power to declare that exclusive privileges and rights in a design have not been acquired in Singapore under the provisions of this Act upon any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom.

Also, s. 1(4) of the UKDPA stated that ‘[a] design shall not be regarded as new … if it is the same design … (b) published in the United Kingdom in respect of the same or any other article before the date of the application’. The High Court held in favour of the Plaintiff because the prior publication in Singapore was not a sufficient ground to find lack of novelty under the Registered Design Act 1949 (UK).9 Therefore, even if the design was commonplace in Singapore, the Registered Design Act 1949 required publication in the UK to satisfy the ground for lack of novelty and for the High Court to declare the design right had not been acquired in Singapore. However, the Court of Appeal held for the Defendant (Appellant). The Court noted that s. 4 of the UKDPA was ambiguous and interpreted the section so that the act of publishing in Singapore was sufficient to cancel the UK registration.10 Therefore, 4

United Kingdom Designs (Protection) Act (Cap. 339, 1985 Rev Ed) (Singapore) (UKDPA). UKDPA, s. 2. 6 Ang Lay See v. Solite Impex Pte Ltd [1998] 1 SLR (R) 412, para. 3 (CA). 7 Ang Lay See v. Solite Impex Pte Ltd [1998] 1 SLR (R) 412, para. 3 (CA). 8 Ang Lay See v. Solite Impex Pte Ltd [1998] 1 SLR (R) 412, para. 4 (CA). This issue was identified by Choon (1994), p. 413. 9 Solite Impex Pte Ltd v. Ang Lay See [1997] SGHC 135, para. 19 (HC). 10 Ang Lay See v. Solite Impex Pte Ltd [1998] 1 SLR (R) 412, para. 33 (CA). 5

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the Court of Appeal found that the ground for cancellation in Singapore was also applicable to the cancellation of UK registrations under s. 4 of the UKDPA.11 The Court of Appeal decision showed a policy towards ensuring registered design protection served a utilitarian benefit to the community at large, because a registered design that was not new in Singapore would not encourage innovation.12 In addition to the two issues outlined above, Singapore’s move to its own design registration system was related to its broader economic strategy.13 An Economic Review Committee (ERC) was established in 2001 to review current policies and propose appropriate strategies to promote the further growth and development of the Singapore economy. The 2003 report of the ERC identified creative industries such as industrial design, media as well as healthcare and education as priority areas for economic growth.14 A local design registration system would be one of the economic policies to help promote creative industries in Singapore. Although the RDA legislative framework is adapted from the Registered Design Act 1949 (UK), the Singapore design registration system was also aligned with international trends. For example, the protection period was shortened from 25 to 15 years.15 Design owners who had obtained or were awaiting registration in the UK before commencement of the RDA were able to continue to enjoy registered design rights for 25 years. The Singapore Act adopted a similar position to the Registered Designs Act 1949 (UK) in relation to the overlap of protection under the Registered Design Act and Copyright Act (see discussion of s. 74 of the RDA below).

8.3 The Present When first enacted, the RDA was similar to the Registered Designs Act 1949 (UK). However, the current Singapore law has a number of features that differ from the UK law. In particular, Singapore has adopted a unique approach to overlapping protection by copyright and design law, which minimises the scope of the overlap. Also, unlike the UK law, Singapore law does not provide for an unregistered design right, which offers short-term protection for functional designs.16

11

Ang Lay See v. Solite Impex Pte Ltd [1998] 1 SLR (R) 412, para. 34 (CA). See Wei (2012a), para. 53. 13 Wei (2012b), para. 2.3. 14 Ministry of Trade and Industry Republic of Singapore (2003), pp. 66, 145, 147, 162. A recent amendment of the RDA has been made as a result of the Government’s recognition that design is an important driver of innovation and value creation for businesses. See Ong (2018), para. 160.491. 15 Singapore Parliamentary Debates, Official Report (25 Aug 2000), vol 72, col. 691 (Ho Peng Kee, Minister of State of Law). 16 Wei (2012b), para. 4.16, note 31. The UK unregistered design right is governed by Part III of the Copyright, Designs and Patents Act 1988 (UK). 12

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8.4 Registered Design Act 2000 8.4.1 Registrable Designs Section 5(1) of the RDA states that ‘a design which is new may, upon application by the person claiming to be the owner, be registered in respect of an article, a non-physical product, or a set of articles and non-physical products, specified in the application’.17 This provision includes four requirements: 1. 2. 3. 4.

a design must be a ‘design’ under the RDA; a design must be ‘new’; the applicant must be the ‘owner of design’; the design must be applied to an article or a non-physical product.18

8.4.1.1

Definition of ‘Design’

‘Design’ is defined as ‘features of shape, configuration, colours, pattern or ornament applied to any article or non-physical product that give that article or non-physical product its appearance’.19 However, ‘design’ does not include: • a method or principle of construction; or • features of shape, configuration or colours of an article or a non-physical product that: – ‘are dictated solely by the function that the article or non-physical product has to perform’ (functionality exclusion);20 – are dependent upon the appearance of another article or non-physical product of which the article or non-physical product is intended by the designer to form an integral part (must-match exclusion); or – enable the article or non-physical product to be connected to, or placed in, around or against, another article or non-physical product, so that either article or non-physical product may perform its function (must-fit exclusion).21

17

RDA, s. 5(1). Leong (2013), para. 25.019. Also, a design must not be an unregistrable design. For example, a design is not registrable if the publication or use of it would be contrary to public order or morality: RDA, s. 6. Also, computer programs and layout-designs cannot be registered under the RDA: RDA, s. 7. 19 RDA, s. 2(1). 20 See Nagashima Electronic Engineering Pte Ltd v. APH Trading Pte Ltd [2005] 2 SLR (R) 641, para. 24 (HC) for consideration of the functionality exclusion. 21 RDA, s. 2(1). See Nagashima Electronic Engineering Pte Ltd v. APH Trading Pte Ltd [2005] 2 SLR (R) 641, para. 29 (HC) for consideration of the must-fit exclusion. 18

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A New Design

A design must be new.22 A design will not be regarded as new if it: • is the same as a design registered in respect of the same or any other article, non-physical product or set of articles and non-physical products in pursuance of a prior application; or • is the same as a design published in Singapore or elsewhere in respect of the same or any other article, non-physical product or set of articles and non-physical products before the date of the first-mentioned application; or • differs from such a design only in immaterial details or in features which are variants commonly used in the trade.23 8.4.1.3

Owner of Design

The designer of a design is treated as the owner of the design.24

8.4.1.4

Article or Non-physical Product

‘Article’ is defined as ‘any thing that is manufactured (whether by an industrial process, by hand or otherwise’, and includes ‘any part of an article, if that part is made and sold separately’ and ‘any set of articles’.25 Before the amendment of the RDA in 2017,26 the Act included the term ‘article of manufacture’ which meant articles produced by some means or process suitable for mass manufacture. Therefore, an object such as a dining table hand-carved out of several pieces of wood was not an ‘article of manufacture’ and so was not registrable under the RDA.27 However, ‘article’ now includes an article made by hand. The amendment of the RDA in 2017 also introduced the concept of a ‘non-physical product’. Under the Act, ‘non-physical product’: • means any thing that— – does not have a physical form; – is produced by the projection of a design on a surface or into a medium (including air); and – has an intrinsic utilitarian function that is not merely to portray the appearance of the thing or to convey information; and

22

RDA, s. 5. RDA, s. 5(2). 24 RDA, ss 2(1), 4(1). 25 RDA, s. 2(1). 26 Registered Designs (Amendment) Act 2017 (Singapore). 27 See Wei (2012b), para. 2.13. 23

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• includes any set of non-physical products.28 A virtual keyboard is a typical example of a ‘non-physical product’.29

8.4.2 Registration of Designs An application for design protection must be filed with the IPOS. The registrar examines compliance with formality requirements only, not substantive requirements such as the novelty of the design.30 The IPOS service commitment is that design registration will be issued within four months from the date of application.31 Third parties may apply to the registrar or court for the revocation of the registration of a design on a number of grounds.32

8.4.3 Duration of Registration The initial period of registration of a design is five years from the registration date.33 The registration period may be extended for a second and third period of five years. Therefore, the longest possible registration period is 15 years.34

8.4.4 Deferred Publication In general, a design application is published after it is registered, unless an applicant requests deferment of publication. Publication may be deferred for up to 18 months from the filing date of the application.35 Therefore, for example, design owners can preserve the confidentiality of designs before releasing a new product. The fee for a request for deferment of publication is SGD 40 in respect of each request.36

28

RDA, s. 2(1). Intellectual Property Office of Singapore (2017). 30 RDA, s. 19. 31 Intellectual Property Office of Singapore. Design—Service Commitment. https://www.ipos.gov. sg/about-ip/designs/how-to-register#our-service-commitment. Accessed 25 Oct 2021. 32 RDA, s. 27. 33 RDA, s. 21(1). 34 RDA, s. 21(2). 35 RDA, s. 18A. 36 Intellectual Property Office of Singapore. Forms and Fees. https://www.ipos.gov.sg/about-ip/des igns/managing-designs/forms-fees. Accessed 25 Oct 2021. 29

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8.5 Copyright Act Industrial designs may also be protected under the Copyright Act.37 To be protected as a work, a design needs to satisfy the following criteria: • • • •

the work must be a protected category of ‘work’; the work must be connected to Singapore in some relevant way; the work must exist in material form; and the work must be ‘original’.38

‘Work’ is defined in s 7(1) as ‘a literary, dramatic, musical or artistic work’. This is an exhaustive definition, and so any work that does not fall within these four categories cannot be protected under the Copyright Act.39 The relevant category for industrial designs is ‘artistic work’. Artistic works are divided into the following three types: 1. 2. 3.

a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not; a building or model of a building, whether the building or model is of artistic quality or not; or a work of artistic craftsmanship to which neither (1) nor (2) applies.40 To be a work of artistic craftsmanship, two elements must be satisfied:

1. 2.

there must be craftsmanship, and the craftsmanship must be ‘artistic’ in nature.41

Examples of works of artistic craftsmanship include haute couture by fashion designers, hand woven carpets or textiles by specialised artisans, tapestries and embroideries, decorative ornaments, furniture, costumes, prostheses and sets of film productions.42 Copyright shall subsist in an ‘original’ literary, dramatic, musical or artistic work.43 ‘Original’ means that a work: • was independently created by the author, and • possesses a minimal degree of creativity, the level of creativity required being extremely low.44 The work also needs to be reduced to writing or other material form.45 37

Copyright Act (Cap 63, 2006 Rev Ed) (Singapore) (Copyright Act). Copyright Act, s. 7(1); Loon (2014), paras 6.3.1–6.3.2. 39 Copyright Act, s. 7(1); Leong (2013), para. 05.001. 40 Copyright Act, s. 7(1). 41 Loon (2014), para. 6.1.33. 42 Leong (2013), para. 04.123. 43 Copyright Act, s. 27(1). 44 Asia Pacific Publishing Pte Ltd v. Pioneer & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381, para. 38 (CA). 45 Copyright Act, s. 16(1). 38

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8.5.1 Overlap of Protection Under the Registered Design Act and Copyright Act Singapore adopts a ‘model of minimal overlap of protection’ under the Copyright Act and the RDA (the ‘Singapore Model’). The relevant provisions—ss 70, 74(1) and 74(2) of the Copyright Act—set out three key exceptions to copyright protection. Essentially, under s 70 and s 74(2), discussed below, the longer period of copyright protection is not available for mass produced products. The threshold for when a product is mass produced is ‘more than 50’. When this limit is reached, copyright protection is lost. Therefore, protection for the appearance of such mass produced products should be sought under the RDA. The exception set out in s 74(1) provides that copyright protection is not available for designs that have been registered under the RDA, as they are already protected under that Act.46

8.5.1.1

Exception 1. Making ‘Useful Articles’ and ‘Non-physical’ Products (s. 70)

Section 70(1) of the Copyright Act sets out an exception to copyright infringement that applies to the making of ‘useful articles’ and the making of ‘non-physical’ products. The exception covers situations where a design is not registrable under the RDA because of, for example, its functionality.47 Section 70(1) stipulates that: Despite section 69, the making of any useful article in [three] dimensions (including a reproduction in [two] dimensions reasonably required for the making of the article), or of any non-physical product, does not infringe the copyright in an artistic work if, when the useful article, reproduction or non-physical product is made, the artistic work has been applied industrially in Singapore or in any other country at any time before the useful article, reproduction or non-physical product is made.

Therefore, the following is required for s 70(1) to apply: • the making of a useful article in three dimensions (including a reproduction in two dimensions reasonably required for the making of the article), or of any non-physical product (by the defendant); • the artistic work has been applied industrially: – in Singapore or in any other country; and – before the useful article, reproduction or non-physical product is made (by the defendant).

46

Intellectual Property Office of Singapore (2017), p. 2. Professor George Wei has observed that ‘[o]ne question which remains is whether lack of novelty at the date of the application, thereby preventing a design from being registrable, is in itself a sufficient ground for avoiding the operation of Section 74(2)’: Wei (2000), para. 9.267.

47

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‘Useful article’ is defined as ‘an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information’.48 Examples of useful articles include consumer products such as cars, washing machines and printers, and the spare part components of such consumer products.49 Under s 70(1), an artistic work is ‘applied industrially’ (mass produced) if any of the following apply: • more than 50 reproductions in three dimensions are made of it, for the purposes of sale or hire; • it is reproduced in three dimensions in one or more articles manufactured in lengths,50 for the purposes of sale or hire; or • it is reproduced as a plate which has been used to produce: – more than 50 reproductions of an object in three dimensions for the purposes of sale or hire; or – one or more articles in three dimensions manufactured in lengths for the purposes of sale or hire.51 ‘Reproductions in [three] dimensions’ under s. 70 can be divided into two categories: • two-dimensional reproduction of a two-dimensional artistic work to a threedimensional article (for example, reproducing a two-dimensional painting as a two-dimensional label to be applied to a three-dimensional product); and • reproduction of a two-dimensional artistic work as a three-dimensional article. 8.5.1.2

Exception 2. Design Applied Industrially but not Registered Under RDA (s. 74(2))

Section 74(2) of the Copyright Act sets out an exception to copyright infringement where a corresponding design to an artistic work has been ‘applied industrially’ (mass produced) by or with the licence of the copyright owner, but the design has not been registered under the RDA. The exception operates when all of the following conditions are met: • copyright subsists in an artistic work; • a corresponding design is applied industrially, whether in Singapore or elsewhere, by or with the licence of the owner of the copyright in the work; • articles or non-physical products to which the corresponding design has been so applied, or devices for projecting those non-physical products, are sold, let for

48

Copyright Act, s. 70(4). Intellectual Property Office of Singapore (2017), p. 2. 50 For example, wallpaper: Intellectual Property Office of Singapore (2017), p. 5. Accessed 31 May 2021. 51 Copyright Act, s. 70(2). 49

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hire, or offered or exposed for sale or hire, whether in Singapore or elsewhere; and • at the time when those articles, non-physical products or devices are sold, let for hire, or offered or exposed for sale or hire, those articles or non-physical products are not articles or non-physical products in respect of which the corresponding design has been registered, or is deemed to be registered, under the RDA.52 The Copyright Regulations set out when a design is deemed to be ‘applied industrially’ for the purposes of s 74. For example, reg. 12 states, in part, that a design is deemed to be applied industrially to articles, if it is applied: • to more than 50 articles, no two or more of which are part of the same set of articles; • to the article by a process (whether a process of printing, embossing or otherwise).53 The other important concept is ‘corresponding design’, which is defined as ‘a design which, when applied to an article or a non-physical product, results in a reproduction of that work’.54 For example, a drawing of a design for a computer keyboard is an ‘artistic work’. A computer keyboard design when applied to a physical object will result in a reproduction of the artistic work and so is a ‘corresponding design’ in relation to the artistic work.55 Section 74(3) sets out the effect of the exception: • during the relevant period of 15 years, it is not an infringement of the copyright in the work to do anything which, at the time when it is done, would have been within the scope of the copyright in the design if the design had, immediately before that time, been registered in respect of all relevant articles and non-physical products; and • after the end of the relevant period of 15 years, it is not an infringement of the copyright in the work to do anything which, at the time when it is done, would, if the design had been registered immediately before that time, have been within the scope of the copyright in the design as extended to all associated designs, articles and non-physical products. The ‘relevant period of 15 years’ means the period of 15 years beginning with the date on which articles, non-physical products or devices for projecting those

52

Copyright Act, s. 74(2). Copyright Regulations (Cap 63, Rg 4, 2009 Rev Ed) (Singapore) (Copyright Regulations), regs 12(1)(b), 12(3)(a) respectively. Regulation 12 sets out a number of other matters that determine when articles and non-physical products are ‘applied industrially’. 54 Copyright Act, s. 73(1). 55 Intellectual Property Office of Singapore (2017), p. 5. 53

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non-physical products, were first sold, let for hire or offered for sale or hire, whether in Singapore or elsewhere.56 The exception provides a strong incentive to register a design that is going to be applied industrially.57 A designer cannot ‘preserve the right to use copyright in artistic works’ to protect a design by choosing not to register it under the RDA.58

8.5.1.3

Case Law on the Scope of the Exceptions Under Sections 70 and 74(2)

The exceptions under s. 70 and s. 74(2) have been raised at the same time in relation to the same case (Table 8.1). Table 8.1 Scope of application of exceptions under Section 74(2) and Section 70 (source: Author’s own)

The RDA

Section 74(2)

Section 70

The design is not registrable

Not applicable

Applicable

The design is registrable

Applicable

Applicable

In Vicplas Holdings Pte Ltd v. Allfit International Market Pte Ltd, the Plaintiff was the alleged copyright owner of an ‘artistic work’—the get-up of its solvent cement product—described as being a white cylindrical metal can with a border consisting of two orange stripes, certain ‘literary works’ on its curved surface, and a white cap with ridges.59 The Plaintiff alleged the Defendants had infringed their copyright by reproducing their get-up on cans containing the Defendant’s solvent cement product. The Defendants sought to strike out the Plaintiff’s claim on the basis of s. 70 and s. 74(2). The High Court held that s. 70 provided an ‘unassailable defence’ to the alleged infringement of copyright—it was undisputed that the Plaintiff had made more than 50 reproductions in three dimensions (as a can) of the ‘artistic work’ and so the artistic work had been applied industrially to useful articles.60 The High Court also applied the exception under s. 74(2) as the reproduction of the ‘artistic work’ as a can—a ‘corresponding design’—had been applied industrially, was registrable under the RDA, but had not been registered.61 In Societe Des Produits Nestlé SA v. Petra Foods Ltd, the Plaintiff alleged copyright infringement of the ‘KitKat’ packaging by the Defendant who was selling a product named ‘Take-it’. The Defendant raised both s. 70 and s. 74(2) as a defence. 56

Copyright Act, s. 74(4). Intellectual Property Office of Singapore (2017), p. 5. See also Wei (2000). 58 Wei (2012b), para. 3.116. 59 Vicplas Holdings Pte Ltd v. Allfit International Market Pte Ltd [2011] 2 SLR 739, para. 52 (HC). 60 Vicplas Holdings Pte Ltd v. Allfit International Market Pte Ltd [2011] 2 SLR 739, para. 52 (HC). 61 Vicplas Holdings Pte Ltd v. Allfit International Market Pte Ltd [2011] 2 SLR 739, para. 53 (HC). 57

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The High Court accepted the Defendant’s argument that the ‘Two Fingers illustration’ had been industrially applied by the Plaintiffs, which brought s. 70 into operation and provided a defence against copyright infringement of the illustration.62 The Court noted the decision in Vicplas ‘is not entirely clear’ and went on to further clarify the scope of s. 70. It stated that it would not consider the copying of an artistic work ‘to decorate the surface of a useful article’ to be part of making a useful article because s. 70(4) provides that ‘useful article’ means ‘an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information’.63 The High Court provided the following example: Take a manufacturer of a car. A customer says he wants a picture of a cow on the top of the car. The manufacturer takes a completed car and spray paints a picture of the cow on it. Is the latter act part of the process of ‘making’ a car, which is the ‘useful article in 3 dimensions’? For the purposes of s. 70, I think not. I also do not think it would make any difference if the cow was spray painted on the car at an earlier stage of the manufacturing process, eg, before the wheels are added to the car. In my view, not every act that takes place during the process of manufacture is to be equated with the making of the useful article under s. 70.64

Also, the High Court presented a three-party scenario: X makes a drawing of a plain wrapper and he owns the copyright in the drawing. Y owns the copyright in a drawing of a cow. For present purposes, assume that both drawings have been industrially applied. Z decides to manufacture wrappers bearing the drawing of the cow. Section 70 will no doubt apply to give Z a defence against X’s claim in copyright infringement if Z’s wrappers are three dimensional reproductions of X’s drawing of a wrapper. However, it would not operate as a defence against Y’s claim for copyright infringement of the drawing of the cow. This is even if Z prints the picture of the cow on sheets of plastic (which would be in two dimensions) before using those sheets of plastic to manufacture his wrappers, because the two dimensional reproduction of the picture of the cow is not reasonably necessary for the making of the useful article in three dimensions, which is the wrapper itself.65

In this way, the Court pointed out that when applying a two-dimensional picture to a three-dimensional article, it may be applied at various stages of its production, and that it is not reasonable to reach different conclusions under s. 70 based solely on such differences in production phases. In relation to s. 74(2), the Defendants argued that, despite being registrable, when the products bearing the artistic work were first applied industrially they were not registered, and so there was no infringement of the artistic work. However, the High Court found that the artistic work was a ‘trade advertisement’ which is excluded from protection as a registered design so s. 74 was not a defence to the Plaintiff’s copyright claim.66 62

Societe Des Produits Nestlé SA v. Petra Foods Ltd [2014] SGHC 252, para. 304. Societe Des Produits Nestlé SA v. Petra Foods Ltd [2014] SGHC 252, para. 305. 64 Societe Des Produits Nestlé SA v. Petra Foods Ltd [2014] SGHC 252, para. 305. 65 Societe Des Produits Nestlé SA v. Petra Foods Ltd [2014] SGHC 252, para. 306. 66 Societe Des Produits Nestlé SA v. Petra Foods Ltd [2014] SGHC 252, paras 313–320. Registered Design Rules (Cap 266, R 1, 2002 Rev Ed) (Singapore) (Registered Design Rules), r. 9(c). The 63

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Professor George Wei has also pointed out that two-dimensional reproduction on the surface of an article in three dimensions does not fall within ‘reproductions in [three] dimensions’.67 For example, copyright protection will continue in relation to the sale of post cards and calendars (articles in two dimensions) that reproduce an existing painting. These designs are not registrable under the RDA, so there is no overlapping protection under the Copyright Act and the RDA.68 On the other hand, ‘applied industrially’ under s. 74(2) would be construed as including twodimensional reproduction to an article in three dimensions so its scope of application is broader than s. 70.

8.5.1.4

Exception 3. Design Registered Under the RDA (s. 74(1))

Section 74(1) of the Copyright Act sets out an exception to copyright infringement where a corresponding design to an artistic work is registered under the RDA. The provision states ‘[w]here copyright subsists in an artistic work and a corresponding design is registered or deemed registered under the Registered Designs Act’, it will ‘not be an infringement of the copyright in the work’: • to do anything, during the subsistence of the copyright in the registered design, which is within the scope of the copyright in the design; or • to do anything, after the copyright in the registered design has come to an end, which, if it had been done while the copyright in the design subsisted, would have been within the scope of that copyright as extended to all associated designs, articles and non-physical products. This provision clarifies where copyright protection is excluded and the owner of a design may exercise their right only under the RDA rather than copyright if the design is registered.

8.6 Passing off 8.6.1 Classical Trinity: Requirements for Protection The common law tort of passing off can provide a form of unregistered trade mark protection. To establish a passing off claim, a claimant must establish three elements, the so-called ‘classical trinity’: (1)

goodwill;

Court also went on to consider, if the artistic work was not a trade advertisement, whether it was ‘primarily of a literary or artistic character’. 67 Wei (2012b), para. 3.146. 68 RDA, s. 7(3); Registered Design Rules, r. 9.

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misrepresentation; and damage to goodwill.69

‘Goodwill’ has two essential features. First, an association between a good, service or business and the Plaintiff’s mark, name, labelling. Second, that association is an attractive force which brings in custom.70 Courts distinguish the terms ‘goodwill’ and ‘reputation’.71 Goodwill does not exist on its own and must be connected to a business. On the other hand, reputation may, and often does, exist without any supporting business.72 Therefore, goodwill is local and territorial in nature and will not exist if the trade occurs outside the jurisdiction.73 Section 55 of the Trade Marks Act (TMA) (‘Protection of well known trade marks’) may be an option if there is no business in Singapore.74 There is no limitation as to what may be used for the purposes of distinguishing goods or services, often referred to as ‘get-up’.75 ‘Get-up’ refers to ‘any capricious addition to the product or service itself’ and is often used to refer to the shape, packaging or ‘look and feel’ of a product or service.76 However, a Plaintiff must show that the get-up (packaging) is well known in connection with its business.77 It is difficult to acquire goodwill in get-up if its features are commonly used or if a mark name or logo is also used in relation to a product.78 If a product design serves a functional purpose, extraordinary evidence may be required to establish that the goodwill is an indicator of origin and not just functional.79 In Nation Fittings (M) Sdn Bhd v. Oystertec Plc, the Plaintiff (Oystertec) argued that there was goodwill in respect of the shape of its pipe fittings, but failed to prove such goodwill because the ribbed shape of the pipe fitting was merely functional and generic.80 Furthermore, to establish a passing off claim, it must be shown that a trader has goodwill on the date on which the defendant’s alleged tortious conduct starts.81

69 Lifestyle 1.99 Pte Ltd v. S$1.99 Pte Ltd [2000] 1 SLR (R) 687, para. 17 (CA); The Singapore Professional Golfers’ Association v. Chen Eng Waye [2013] 2 SLR 495, para. 20 (CA). 70 Novelty Pte Ltd v. Amanresorts Ltd [2009] 3 SLR (R) 216, para. 39 (CA). 71 CDL Hotels International Ltd v. Pontiac Marina Pte Ltd [1998] 2 SLR 550, para. 46 (CA). 72 CDL Hotels International Ltd v. Pontiac Marina Pte Ltd [1998] 2 SLR 550, para. 46 (CA). 73 Leong (2013), para. 35.050. 74 Trade Marks Act (Cap 332, 2005 Rev Ed) (Singapore) (TMA), s. 55(1)(b); Leong (2013), para. 35.055. 75 Loon (2014), para. 17.2.10. 76 Tong Guan Food Products Pte Ltd v. Hoe Huat Hng Foodstuff Pte Ltd [1991] 1 SLR (R) 903, para. 7 (CA); Loon (2014), para. 17.2.12. 77 Tong Guan Food Products Pte Ltd v. Hoe Huat Hng Foodstuff Pte Ltd [1991] 1 SLR (R) 903, para. 10 (CA). 78 Jim (2014), para. 19.130. 79 Wei (2012b), para. 4.16. 80 Nation Fittings (M) Sdn Bhd v. Oystertec Plc, [2006] 1 SLR (R) 712 (HC). 81 Leong (2013), para. 35.075.

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8.6.2 Duration of Protection The protection under passing off is available as long as the goodwill continues to exist in Singapore.82 Goodwill will not exist if it can be proved that a business has been abandoned. However, an intention to abandon must be shown and mere ‘non-use’ per se is not enough to constitute abandonment of a business.83

8.7 Trade Marks Act 8.7.1 Shape Mark Designs can be protected as a shape mark under the TMA. There are four requirements: 1.

2. 3. 4.

the trade mark for which registration is sought has been used by the applicant to distinguish goods or services or there is a bona fide intention to use the trade mark; the mark must satisfy the definition of a ‘trade mark’; the mark must not fall within any of the ‘absolute grounds for refusal’ under s. 7 of the TMA; and the mark must not fall within any of the ‘relative grounds for refusal’ under s. 8 (conflict with earlier marks already registered on the trade mark register or earlier rights under copyright and design laws or passing off).84

‘Trade mark’ is defined as ‘[a]ny sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’.85 Further, ‘sign’ is defined as including ‘any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof.’86 Absolute grounds for refusal are as follows: • • • • 82

signs which do not satisfy the definition of a trade mark;87 trade marks which are devoid of any distinctive character;88 trade marks which are descriptive;89 trade marks which have become customary.90

Wei (2012b), para. 4.10. Leong (2013), para. 35.022. 84 Leong (2013), para. 28.003. 85 TMA, s. 2(1). 86 TMA, s. 2(1). 87 TMA, s. 7(1)(a). 88 TMA, s. 7(1)(b). 89 TMA, s. 7(1)(c). 90 TMA, s. 7(1)(d). 83

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However, a trade mark shall not be refused for being devoid of any distinctive character if it has in fact acquired a distinctive character as a result of use before the registration application date.91 In practice, the standard for establishing distinctiveness is high. The Coca-Cola contoured bottle trade mark (shape mark) is not registered in Singapore.92 In the Matter of a Trade Mark Application by Ferrero S.p.A., the shape of the Ferrero Rocher pralines was rejected as a shape mark because of a lack of distinctiveness.93 Statutory exclusions state that a shape mark will not be registered as a trade mark if it consists exclusively of: • the shape which results from the nature of the goods themselves; • the shape of goods which is necessary to obtain a technical result; or • the shape which gives substantial value to the goods.94 In Societe Des Produits Nestlé SA v. Petra Foods Limited, the Court of Appeal invalidated the registration of the Two-Finger and Four-Finger Shape trade marks because the shape was necessary to obtain a technical result (s. 7(3)(b)).95

8.7.2 Protection of Well Known Trade Marks Well known trade marks are protected under the TMA, whether the mark is registered or not registered.96 Unlike the tort of passing off, well known trade marks can be protected even if there is no business in Singapore.97 Also, a proprietor of a well known trade mark is entitled to an injunction even in relation to dissimilar goods or services.98 Relevant factors for establishing whether a trade mark is well known include: • the degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore; • the duration, extent and geographical area of any use of the trade mark or any promotion of the trade mark, including any advertising of, any publicity given to,

91

TMA, s. 7(2). US Trademark No. 696147, JP Trademark No. 5225619. The General Court of the European Union rejected the registration of shape of a contour bottle without fluting: The Coca-Cola Company v. OHIM, Case T-141/14, EU:T:2016:94. 93 In the Matter of a Trade Mark Application by Ferrero S.p.A. [2019] SGIPOS 19. 94 TMA, s. 7(3). 95 TMA, s. 7(3)(b). Societe Des Produits Nestlé SA v. Petra Foods Limited [2017] 1 SLR 35 (CA). 96 TMA, s. 2(1). 97 TMA, s. 2(1). Mobil Petroleum Co Inc v. Hyundai Mobis [2010] 1 SLR 512, para. 23 (CA). 98 TMA, s. 55(3). 92

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or any presentation at any fair or exhibition of, the goods or services to which the trade mark is applied; • any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised, and the duration of such registration or application; • any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory; and • any value associated with the trade mark.99 In City Chain Stores (S) Pte Ltd v. Louis Vuitton Malletier, the Court of Appeal denied the ‘Flower Quatrefoil’ mark of Louis Vuitton Malletier was well known to the public at large in Singapore.100 The hurdle for proving that a trade mark is well known is high.101

8.8 Final Remarks and Future Perspectives In summary, Singapore has encouraged the registration of designs under the RDA by minimising the overlap of protection under the Copyright Act and RDA, and by enhancing protections under the RDA.

8.8.1 Singapore Model for Copyright Act and RDA Protection The Singapore Model provides clarity and sends a strong message that designers should register their designs under the RDA, particularly if they are to be applied to products that will be mass produced.102 However, it is unclear whether this is understood by businesses in Singapore.103 According to the statistics published by the World Intellectual Property Organization (WIPO), filings of registered design applications in Singapore remain low (Table 8.2).

99

TMA, s. 2(7). This is not an exhaustive list. A court is obliged to consider any matter from which it may be inferred that a trade mark is well known. See Novelty Pte Ltd v. Amanresorts Ltd [2009] 3 SLR (R) 216, para. 137 (CA). 100 City Chain Stores (S) Pte Ltd v. Louis Vuitton Malletier [2010] 1 SLR 382 (CA). 101 Jim (2014), para. 4.043. 102 Intellectual Property Office of Singapore (2017). 103 ‘[T]here was a generally low level of understanding, as well as, substantial confusion among companies in relation to the design/copyright interface. This low level of understanding is a point of concern and something that we will seek to address, in consultation with the relevant stakeholders’: Ministry of Law and Intellectual Property Office of Singapore (2015), para. 3.7.13.

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Table 8.2 WIPO Statistical Country Profile—Singapore (source: WIPO, ‘Statistical Country Profile—Singapore’ https://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?cod e=SG) Year

Patent Trademark (class count) Industrial design (design GDP (constant 2017 US$) count)

2010 4,229

25,437

7,208

396.80

2011 4,571

36,495

2,884

421.95

2012 4,883

30,287

3,221

440.77

2013 5,471

39,354

5,799

462.09

2014 5,927

43,058

4,376

480.29

2015 6,185

44,343

3,595

494.64

2016 6,735

56,464

3,358

510.69

2017 6,951

54,028

4,097

532.83

2018 7,415

72,008

6,454

551.15

2019 7,354

74,904

5,152

555.19

The Final Report on the Review of Singapore’s Registered Designs Regime published by the Ministry of Law and IPOS in 2016 concluded that the minimal overlap between design protection and copyright protection in Singapore should be maintained but amended in the future to ensure greater clarity and consistency across the RDA and Copyright Act.104 In addition, the complexity of the Singapore Model appears to be increasing because of the addition of non-physical products in 2017. Despite this, the Singapore Copyright Review Report published by the Ministry of Law and IPOS in 2019 does not recommend an amendment of the Singapore Model.105

8.8.2 Updated Registered Designs Protection In recent years, the scope of the protection under the RDA has been broadened to include non-physical products. Singapore also responded quickly to the development of technologies such as 3D printing by amending its laws.106 However, it appears that businesses are yet to recognise the necessity or benefits of design registration under the RDA.

104

The Ministry of Law and Intellectual Property Office of Singapore (2016), para. 2.1.18. The Ministry of Law and Intellectual Property Office of Singapore (2019). 106 The definition of ‘design’ was amended to remove, for example, the requirement for a design to be ‘applied by an industrial process’ as technology such as 3D printing has enabled designs to be applied to articles outside of an ‘industrial’ context. The Ministry of Law and Intellectual Property Office of Singapore (2016), para. 2.1.7. 105

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8.8.3 Future Perspective In summary, Singapore has attempted to increase design registration by minimising the Copyright Act and RDA overlap, and by enhancing protections. New forms of protection were considered by the Ministry of Law and IPOS in 2016. However, it was concluded that unregistered design protection was unnecessary because the needs of industry could be met by the current form of intellectual property protection, and a utility model system was rejected due to a lack of evidence of economic benefit.107 However, Singapore may reconsider this in the future if the use of the registered designs system remains low.

References Choon JK (1994) Registered Designs: The Protection of Industrial Designs in Singapore. Singap Acad Law J 6:409 Intellectual Property Office of Singapore (2017) Information Note on the Interface Between Registered Designs and Copyright (Updated as of 6 Oct 2017). https://www.ipos.gov.sg/docs/def ault-source/resources-library/design/guidelines-and-useful-information/information-note-onthe-interface-between-registered-designs-and-copyright57c21a77c2d0635fa1cdff0000abd271. pdf. Accessed 25 Oct 2021 Intellectual Property Office of Singapore (2018) Innovation: A New Frontier of Ideas—Annual Report 2017/2018. https://www.ipos.gov.sg/docs/default-source/about-ipos-doc/annual-reports/ ipos-ar(spread).pdf. Accessed 25 Oct 2021 Intellectual Property Office of Singapore (2019) Accelerating Global Innovation Flows through SG—Annual Report 2018/19. https://www.ipos.gov.sg/docs/default-source/about-ipos-doc/ann ual-reports/ipos-ar-201819-2.pdf. Accessed 25 Oct 2021 Intellectual Property Office of Singapore (2020) IP Inc.: Bringing Value to Enterprises of the Future—Annual Report 2019/2020. https://www.ipos.gov.sg/docs/default-source/about-iposdoc/annual-reports/ipos-annual-report-2019-2020.pdf. Accessed 25 Oct 2021 Jim TT (2014) Law of Trade Marks and Passing Off in Singapore, 3rd edn. Sweet & Maxwell, Singapore Leong S (2013) Intellectual Property Law of Singapore. Academy Publishing, Singapore Loon N-LW (2014) Law of Intellectual Property of Singapore, 2nd edn. Sweet & Maxwell, Singapore Ministry of Law and Intellectual Property Office of Singapore (2015) Public Consultation on Proposed Changes to Singapore’s Registered Designs Regime. https://www.mlaw.gov.sg/ news/public-consultations/public-consultation-on-proposed-changes-to-singapores-registered/. Accessed 25 Oct 2021 Ministry of Law and Intellectual Property Office of Singapore (2016) Final Report on the Review of Singapore’s Registered Designs Regime. https://www.mlaw.gov.sg/files/news/press-releases/ 2016/03/AnnexA-FinalReportForDesignsReview.pdf. Accessed 25 Oct 2021 Ministry of Law and Intellectual Property Office of Singapore (2019) Singapore Copyright Review Report. https://www.mlaw.gov.sg/files/news/press-releases/2019/01/Annex%20A%20-%20C opyright%20Review%20Report%2016%20Jan%202019.pdf. Accessed 25 Oct 2021

107

The Ministry of Law and Intellectual Property Office of Singapore (2016), paras 2.5.11 and 5.15.

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Ministry of Trade and Industry Republic of Singapore (2003) New Challenges, Fresh Goals— Towards A Dynamic Global City: Report of the Economic Review Committee. Ministry of Trade and Industry Republic of Singapore, Singapore Ong B (2018) Registered Designs. In: Jim TT (ed) Halsbury’s Laws of Singapore (Intellectual Property). LexisNexis, Singapore Wei G (2000) The Law of Copyright in Singapore, 2nd edn. SNP Editions, Singapore Wei G (2012a) A Look Back at Public Policy, the Legislature, the Courts and the Development of Copyright Law in Singapore—25 Years On. Singap Acad Law J 24:867 Wei G (2012b) Industrial Design Law in Singapore. Academy Publishing, Singapore

Kodai Kimura is a partner at Kobayashi & Yugeta Law Office in Tokyo. Mr. Kimura also serves as an adjunct lecturer at Kyushu University. He graduated from Keio University in 2005 and obtained a master in IP law from Benjamin N. Cardozo School of Law in New York in 2013. He served as a foreign legal advisor at Kelvin Chia Partnership, Singapore and obtained a Graduate Certificate in IP from IP Academy & Faculty of Law, National University of Singapore. Mr. Kimura is qualified as an attorney-at-law in Japan and in New York.

Part II

Europe

Chapter 9

British Design Penny Sparke

Abstract This chapter provides a survey of design in Britain, from the eighteenth century to the present, focusing on the broad design movements that have characterised that story, as well as on some of the key designers and iconic designed objects that have featured within it. The story is also driven by some important themes, among them the tension between traditionalism and modernism; between developing a distinctive British design and responding to influences from other countries; and the repeated attempts to ensure that design in Britain is rooted in aesthetic and moral values that are not contaminated by the commercial priorities of the marketplace. In this respect, the moralising mission of the late-nineteenth-century Arts and Crafts Movement, led by William Morris, is seen to re-surface repeatedly in this story. The chapter traces the importance to Britain, in this context, of loss of empire and de-industrialisation; and points to the moments when the state has attempted to take control of the design quality of Britain’s products, as well as to others when design has been driven by popular values and become a form of cultural expression. It also focuses on the growth and importance of designer-culture in Britain.

9.1 Introduction Due to the early emergence of a mass market for goods and a programme of industrialisation, both of which were in place by the mid eighteenth century, compared to that of many other countries, design in Britain has had a long history.1 Combined with the expansion of the British empire and intensive urbanisation, by the nineteenth century the nation had experienced a democratisation of taste and a huge appetite for designed products, especially among its middle classes. From that moment onwards, a phenomenon called ‘British design’ can be discerned. Over the last two and a half centuries, it has followed a continually 1 For some general texts about British Design see: Aldersley-Williams and Antonelli (2010); Buckley (2007); Carrington (1976); Huygen (1989); McCarthy (1982); Thackera et al. (1986).

P. Sparke (B) Modern Interiors Research Centre, Kingston University, London, UK © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_9

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mutating trajectory, one which has been always open to influences from abroad; balanced between a pull from the past and a desire to embrace the future; conscious of the slow but continuous decline of both the nation’s empire and its industrial pre-eminence over the entire period; and which, above all, has struggled against the incursions of popular culture to maintain high aesthetic and moral values. At times tightly controlled by governments, and at others abandoned to the laws of the marketplace, the story of British design is both rich and complex.

9.2 Beginnings Design in Britain was built on pre-industrial hand-making precedents, including, in the eighteenth century, the work of the cabinet-makers Thomas Chippendale, George Hepplewhite and Thomas Sheraton who provided furniture for the social élite. Like the others, Chippendale, who published his famous pattern book, The Gentleman and Cabinet-Maker’s Director in 1754, worked with all his clients individually.2 When the factories took over, as they quickly did, making more goods available to more people, this model of product customisation did not disappear entirely, but remained a common route through which the social and economic élite purchased their goods for many decades to come. Alongside that élitist strand in British design, mass-produced objects—textiles, ceramics and metal goods among them—also emerged owing their existence to the entrepreneurial energies of the men who transformed Britain’s manufacturing industries at the end of the eighteenth and the beginning of the nineteenth centuries. The modern concept of design was a key by-product of the thinking that broke down the traditional craft process into its constituent elements and reconstructed them into a logical sequence of activities. Designing moved from being an activity that occurred in an ad hoc manner as a craftsman worked intuitively with his materials, to a highly planned operation that was conceived in its entirety before manufacturing began. The factory system was dependent on manufacturing teams made up of semi-skilled and unskilled workers who operated as part of a divided labour system. Also, the final appearance of the products that emerged from the factories had to be designed with the constraints of available production machinery in mind. The Jacquard loom, for example, required the design of the textiles created on it to be pre-programmed. One of the eighteenth century’s most successful entrepreneurs, Josiah Wedgwood, opened his first factory in Burslem in Staffordshire in 1759 to address the growing demand for domestic ceramics brought about by the expanded interest in tea- and coffee-drinking and the increasing popularity of hot cooked meals.3 New industrial processes were introduced, and new classes of pottery workers emerged to transfer their designs into quantity production. Wedgwood’s ‘Jasperware’ products were especially popular. Matthew Boulton’s Soho factory in Birmingham produced 2 3

Chippendale (2016 [1754]). See Dolan (2004).

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what were called ‘toys’, small metal items, such as shoe buckles, tweezers, toothpicks, snuff boxes, inkstands and watch chains, which were manufactured in vast numbers. Like Wedgwood, Boulton understood the selling power of art in products that were not targeted at the social élite.

9.3 The 1851 Exhibition The ‘Great Exhibition of the Works of Industry of All Nations’ was conceived by Prince Albert and Henry Cole and held in London’s Hyde Park in 1851.4 Its purpose was to demonstrate the strengths of British products to an international audience. The huge glass and steel building created for the event was designed by Joseph Paxton. For many people, however, among them the art critic, John Ruskin, and the architect, William Morris, who were to lead the nineteenth-century design reform movement, the 1851 exhibition represented everything that was reprehensible about the designed goods that flowed from the factories and which targeted nouveau-riche consumers. For them, these goods, the design of which was separated from their making, flouted the craft-based principles of ‘truth to materials’. The discussion about taste was to dominate debates about design in Britain through the second half of the nineteenth century and beyond.

9.4 Design Reform The nineteenth-century debate about taste was initiated by a group of individuals from the worlds of architecture and fine art who were highly critical of the designed goods that flowed from the new factories. A.W.N. Pugin’s response was expressed in his 1812 book Contrasts.5 John Ruskin shared Pugin’s commitment to medievalism and to the world of nature and expressed his ideas in a number of texts including The Seven Lamps of Architecture (1849) and The Stones of Venice (1851–1853).6 The debate was widened beyond the sphere of the aesthetic, however, by the intervention of the wellknown design reformer, William Morris, who was preoccupied with the social and political implications of what he, following the radical ideas of Karl Marx, believed to be the alienating effects of the division of labour. From the 1860s, Morris’s writings and work also focused on the need to control ornament.7 Like those of many of his reforming colleagues Morris’s ideas about design were stimulated by his exposure to the 1851 exhibition. While he saw the problem as industrial manufacture he was not, as is often suggested, against the use of the machine per se. Like Ruskin, upon whose 4

See Purbrick (2001). Pugin (2013 [1836]). 6 Ruskin (1989 [1849]); Ruskin (2019 [1851–1853]). 7 Morris (1993 [1890]). 5

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ideas he depended, Morris embraced medievalism and believed that ornament should express nature appropriately. He believed that decoration should not be understood as an add-on, linked to social status, but rather as an intrinsic, defining property of objects communicating their functions and their identities to their users. During the 1860s and 1870s, Morris became known for his designs for textiles, wallpapers and carpets. His best-known wallpapers included ‘Acanthus’ (1875) and ‘The Strawberry Thief’ (1876). His political ideas were also important to the influence he exerted upon the course of modern design. However, while, on the one hand, he sought to democratise design, the work his firm undertook for wealthy clients demonstrated that it was difficult to implement those ideas and run a successful business. Many of the other Arts and Crafts protagonists—C.F.A. Voysey and C.R. Ashbee among them—also gazed simultaneously backwards and forwards, creating medieval-style guilds while also embracing the machine, if properly used.8 They all believed that Victorian excess needed to be replaced by a new aesthetic simplicity and honesty. While these reformist ideas were highly influential in Europe, inspiring, for example, the work of the Wiener Werkstätte in Austria and the Deutscher Werkbund in Germany, their radicalism had less impact at home.

9.5 The Early Twentieth Century The Design and Industries Association (DIA) was formed in 1915 on the model of the German Werkbund (established in 1907) with a brief to encourage the development of a new industrial aesthetic on British soil. By the inter-war years, however, Britain was displaying a less than enthusiastic approach to European architectural and design modernism, preferring to rely on its own indigenous traditions. At the New York World’s Fair of 1939, for example, Britain mounted an exhibit which featured ‘pageantry of the past’, marking its determination to keep one foot firmly in history. However, a small number of British designers did rise to the challenge of the European Modern Movement at that time creating a range of aesthetically innovative new products which quickly became iconic. Some designers took up the German Bauhaus baton creating objects for the home that focused on function and which displayed a minimal, geometric aesthetic. Walter Gropius and Marcel Breuer (both teachers at the Bauhaus in the 1920s) both spent time in Britain in the 1930s during their exile from Nazi Germany and on their way to permanent residence in the United States of America (US). While there, Breuer worked with Jack Pritchard’s company, Isokon, creating a series of furniture pieces in bent plywood. Keith Murray’s ceramic designs for Wedgwood also embraced the new aesthetic as did George Cawardine’s strikingly modern-looking task lamp of 1932. The aesthetically radical plastic radio cabinets designed by Serge Chermayeff and Wells Coates, for example, also drew on Bauhaus principles. 8

See Naylor (1990).

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9.6 Designing for War When war with Germany was declared in 1939, many designers transferred their focus from the commercial marketplace to the national war effort. The British Ministry of Information, for example, depended on the skills of graphic and advertising artists. Many had previously worked for large, private corporations, such as Shell, or for public organisations, such as the London Underground or the Post Office. Iconic British war machines developed at that time included the Spitfire fighter plane, famous for its use of aluminium. Another use for design during war time was stimulated by the ‘Utility’ scheme, an important project that brought a limited range of consumer goods—furniture, household goods and clothing in particular—to the people who most needed them, primarily young married couples, the owners of bombed out houses and people in the services. The idea was first mooted by Hugh Dalton, the President of the Board of Trade from 1942, who brought in the furniture designer, Gordon Russell, to help him develop it. Russell was linked to the Arts and Crafts Movement and he saw, in the Utility project, a chance to realise some of its ideals.9 The Utility furniture items were simple, wooden pieces that recalled traditional, vernacular designs, albeit with a modern twist. Ladder-backed dining chairs were combined with new versions of Windsor chairs, for example.

9.7 Designing for Peace In 1944, a governmental watchdog, the Council of Industrial Design, was set up by Winston Churchill’s coalition government to raise the standards of design in British goods. It remained in place under the Labour government which soon came to power. The first Director of the Council was Gordon Russell. His appointment consolidated the importance of the Arts and Crafts principles movement in the post-war years. Design magazine, the mouthpiece of the Council, was launched in 1949 and it quickly made clear that in the development of a post-war British design movement, the strategy was to emulate the manufacturing advances of the US and the humanistic version of the modern aesthetic espoused by the Scandinavian countries. The first step on that path was to try to raise the taste of consumers such that an appetite for ‘good design’ was developed and with it a strong home market which, in turn, could be transformed into an international market for well-designed British goods. The Design Centre was opened in 1956 in the Haymarket in London as one means of engaging the British public with good design. Other design-related developments of the 1940s included the push by manufacturers to employ professionally trained designers to create modern items—furniture, textiles, glass, ceramics and metal goods for the most part—for the progressive home. The Council of Industrial Design acted as a kind of employment agency for 9

Myersen (1992).

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designers, putting them in touch with manufacturers. A reorganisation of art and design education also took place at that time with the aim of supplying a generation of designers who could work with the manufacturing industry. London’s Central School of Art and Design was especially prominent in the early post-war years while the Royal College of Art (RCA), initially established back in 1837 and linked to the Victoria and Albert Museum, re-organised itself in the 1950s to address the needs of the day.10 Several key British designers of those years—David Queensbury, David Mellor, Robert Welch and Robert Goodden among them—were all RCA graduates.

9.8 ‘Britain Can Make It’ One of the Council’s first initiatives was the conception of the ‘Britain Can Make It’ exhibition which aimed to open the British public’s eyes to the importance of standards in design.11 Conceived by Stafford Cripps, the President of the Board of Trade of the Labour government at that time, ‘Britain Can Make It’ (BCMI), which was held in London’s Victoria and Albert Museum in 1946, displayed pre-war goods for the most part as industry had not yet had a chance to get back to production for peace. A year later Cripps was to write: Design is of crucial importance to British industry today, whether we think of what is due from our own producers to our own people, or how best to meet the very live competition which is ahead of us in foreign markets.12

One of the most controversial sections of the exhibition was a series of ‘Furnished Rooms’ which set out to show a range of interior settings destined for different social and income groups. From a ‘Kitchen in a Cottage in a Modern Mining Village’ to the ‘House of the Managing Director of an Engineering Works’, the exhibit crossed the social spectrum revealing the strong interest that existed at that time in the link between design and social class. One of the stars of the BCMI exhibition was Ernest Race’s little ‘BA side’ chair which had an aluminium frame and elegant tapering legs. During the war, the designer-entrepreneur, Ernest Race, had been in the auxiliary fire service and, at the end of the war, had set up a furniture company. He was quick to realise the potential for using redundant wartime materials and set about utilising scrap aluminium and ex-RAF upholstery materials. The ‘BA side chair’ benefited from the ‘Spitfires to Saucepans’ campaign that was promoted at BCMI where a handful of other post-war designs—among them a Wells Coates-designed space-ship, a J.H.K. Henrion-designed aluminium-bodied sewing machine, a streamlined bicycle and an air-conditioned bed—were offered to whet the appetite of a nation hungry for new products. Race went on to create some of the iconic seating designs displayed at the 10

Frayling and Catterall (1996). See Maguire and Woodham (1997); Sparke (1986). 12 Buckley (2007), p. 8. 11

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1951 ‘Festival of Britain’, in particular the ‘Antelope’ and the ‘Springbok’ metal-rod chairs which were scattered across the South Bank.

9.9 The ‘Festival of Britain’ The years between 1939 and 1951 had seen a transformation of the modern world and, by 1951, the democratisation of material culture that had been promised in 1939 was beginning to become a reality. The war years had served to prioritise, above all else, the basic needs of human existence and the importance of technological innovation. In turn design, in the hands of engineers, exhibition and graphic designers, and furniture, product and fashion designers, had risen to the challenges presented to them. After the war, there was an inevitable swing back to a focus on individuals and their psychological needs and the requirement to improve the national economy by boosting the consumption of goods. 1951 was the year of Britain’s celebratory exhibition on the South Bank—the ‘Festival of Britain’.13 Its two important buildings—the ‘Dome of Discovery’ and the ‘Trylon’—directly echoed the 1939 New York World’s Fair’s ‘Perisphere’ and ‘Skylon’ and expressed a similarly high level of technological utopianism. With rationing nearly at an end, it was time to look forward to a prosperous future once again. The Festival proved hugely popular and exhibits such as the ‘House and Gardens’ and the ‘Lion and Unicorn’ pavilions crossed a spectrum from the traditional to the ultra-modern. The work undertaken by the Festival Pattern Group, which involved looking down microscopes and transferring the organic patterns found there on to the surfaces of brightly coloured textiles and ceramic artefacts, provided a new aesthetic for the post-war era.

9.10 The Contemporary Home The two decades following the end of the Second World War saw a dramatic shift in the British public’s engagement with the modern world in terms of its effect upon everyday life, particularly as it was lived at home. The inter-war years had seen a rather cautious response to the push of modernity and a general reluctance to move beyond the comfort of suburban homes furnished in traditional styles. In the post 1945 years, consumers exhibited a greater willingness to embrace the new, and to express that forward-looking approach through the products they brought into their homes. This was greatly facilitated by the expansion of mass housing in new developments such as Harlow and Cumbernauld New Towns. The ideal of the ‘contemporary’ home was widely disseminated through the mass media and had a special appeal for new homemakers who had not previously had 13

See Banham and Hillier (1976).

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the opportunity to own their homes and consume on such a scale. Indeed, for a large sector of the population inhabiting a home furnished in the ‘contemporary style’ represented an important sign of the arrival of modernity into their lives. It was clear that consumption, rather than production, was seen as a key to Britain’s future and that it needed to operate within a context of educated taste, or ‘good design’ which, at that time, meant a preference for the modern style.

9.11 New Designers for the Post-War Era Through the 1950s, the mass media were instrumental in communicating a number of lifestyles which could be appropriated through consumption. A new generation of furniture designers, among them Ernest Race and Robin Day, extended the modernist programme by incorporating new materials—extruded aluminium, bent and moulded plywood, and steel rod, among them in their cases—into furniture designs.14 Drawing on both American and Scandinavian examples, they both produced several innovative designs that stood out in that era. Day, working at first with Clive Latimer on a buffet mounted on steel which won a prize in a competition organised by New York’s Museum of Modern Art, went on to work with his wife, the textile designer Lucienne Day, on an interior exhibited at Milan’s Triennale exhibition of 1954. In the early 1960s, he created a polypropylene stacking chair for Hille that quickly became ubiquitous. The 1950s and early 1960s witnessed the appearance of a vast number of elegant, neo-modernist furniture pieces that were created by British designers—among them Terence Conran, Alan Turville, Robert Heritage, and John and Sylvia Reid—and manufactured by firms such as Hille Ltd., Ercol, G-Plan, HK Furniture, Race Ltd. and Archie Shine. Adventurous manufacturers, such as G-Plan, offered contemporarylooking furniture pieces to young couples setting up home for the first time. They took their lead from Scandinavian examples, emulating their commitment to wood, to light, elegant forms, and to a minimal use of upholstery. By the end of the 1950s and early 1960s, they were also looking to Italy for inspiration. Immediately following the war years, many British designers were hugely optimistic about the potential of plastics to create a brave new world. Others were more cautious about the way designers should work with plastics, adamant that they should have an intimate knowledge of their physical properties and capabilities. Following their immediate post-war enthusiasm for plastics, consumers quickly became disenchanted with them, however, and doubts began to emerge about the material’s relationship with ‘good design’. As the numbers of plastic products grew, and quantity inevitably took over from quality, they began to earn a reputation for being ‘cheap and nasty’.

14

See Conway (1982); Jackson (2001).

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9.12 Designing Lifestyles By the early 1960s, it was clear that a mass market for lifestyle retailing and journalism had emerged and the furniture and textile designer, Terence Conran, who opened his first Habitat store on London’s Fulham Road in 1964, was quick to exploit the fact. Habitat targeted a young, fashion-conscious audience.15 As well as making available a new range of objects imported from overseas, the key message that Conran communicated to his customers was that it was possible to mix old furniture pieces with new items. He was quick, also, to recognise that Italian design had an enormous appeal at that time, and he imported many design icons from abroad—including the Italian designer, Vico Magistretti’s ‘Carimate’ chair.

9.13 Transport Design One of Britain’s design strengths at that time was in the field of objects of transportation. Alec Issigoni’s Morris Minor car was a British automotive icon of the 1950s but his Austin Mini, which he began working on for the British Motor Corporation in 1956, became an even more powerful one by the 1960s. The challenge was to create a very small car for four people, plus luggage, that used as little fuel as possible. Issigoni’s solution lay in placing the engine in a transverse position, and putting the wheels at the extreme four corners, to create the maximum amount of interior space. Like the Morris Minor, the Mini was a timeless design. The streamlined curves of the Minor had disappeared giving way to what was little more than a box on wheels. It quickly became the car of choice for pop stars and fashion models and designers and was celebrated as one of ‘Swinging London’s’ cult objects. While Britain acquired a strong reputation for car design in the post-war years with brands such as Jaguar, MG and Rover becoming known internationally, the role of design in other forms of British transport also went from strength to strength in the decades after the Second World War. These successes included the classic ‘Routemaster’ bus, and culminated in the ‘Concorde’ airplane, created in collaboration with French engineers, which, along with the ‘E’ type Jaguar designed by Malcolm Sayer and the ‘Range Rover’ designed by David Bache, became one of the lasting icons of the era. Concorde’s first commercial flight, which took place in 1969, was the result of nearly twenty years of development that had pushed technological knowledge in the areas of aerodynamics, materials and structures to such a level that completely new solutions were reached. Its strikingly elegant and futuristic nose and wing forms were the result, like those of the Spitfire fighter plane before it, of decisions based on performance-based criteria.

15

See Phillips (1984).

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9.14 Pop Design In the 1960s, British society underwent a seismic transformation with the emergence of a youth culture with the financial means with which to express its new values through its material possessions. It generated a new movement, later dubbed ‘Pop Design’, which, in turn, set in motion a rejection of establishment values and the notion of ‘good design’ that had come to represent it.16 The objects of Pop (short for popular) aimed, instead, to have an expressive relationship with the fashion-conscious society that produced and consumed them. It represented an acceptance, on the part of both designers and consumers, that design should be led by the psychological needs of the marketplace rather than the practically focused requirement of functionality. Disposability became a priority—it was realised, for example, in the form of paper clothing and items of furniture—and was one way forward. Many of the newer plastics—polyurethane foam among them—were inherently soft and flexible and therefore ideally suited to the new culture of accelerated change. Such was the chameleon-like nature of plastics that they could don the mantle of good design at one moment and reject it at another. Indeed, without plastics the Pop Design movement could not have produced some of its most lasting icons. Alongside the loud music, the colourful clothes and other ‘fun’ lifestyle accessories that characterised youth culture in 1960s Britain, a range of plastic products also played a role in overturning what had up to that point looked like the universal values of ‘good design’. Some inflatable plastic chairs emerged, for example, including the ‘Pumpadinc’ armchair designed by Englishman, Arthur Quarmby, and a fake fur-covered version created by the record cover illustrator Roger Dean, produced by Hille. By the end of the decade the new, increasingly youth-focused, concept of lifestyle had led in two distinct new directions—one to a new flexible form of seating that had abandoned the longstanding dependency upon chairs in favour of seating systems, and the other to a new emphasis on surface pattern that encouraged people to take control away from designers once again by adding their own images of flags and targets and brightly coloured stripes to the surfaces of their furniture items, both old and new. In the 1960s, Britain’s modern furniture design renaissance was hugely influenced by Italian design, which was represented by, among other products, several furniture items manufactured by Cassina. Cassina’s products were frequently featured in the British design press and sold to a discerning clientèle through some of the new modern furniture retailing outlets which appeared in London and elsewhere, among them Aram Designs, Geoffrey Drayton’s store, Oscar Woollens and Interspace, which was set up in 1968 by the Danish designers, Nanna Ditzel and Kurt Heide. A new multinational sense of design was emerging which anticipated the fully fledged globalisation of the subject in the 1980s. By the mid-1960s, a new generation of British designers—including Max Clendinning, Jon Bannenberg, Peter Murdoch, William Plunkett, Bernard Holdaway, Nicholas Frewing and the team of Jean Schofield and John Wright—embraced 16

See Whiteley (1987).

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the novel concepts of ‘knock-down’, ‘inflate’ and ‘throwaway’, spawning (ironically) such lasting classics as Clendenning’s ‘Maxima’ range for Hille and a side chair for Liberty’s, Murdoch’s so-called ‘paper’ chair for Perspective Designs, and Holdaway’s ‘Tom-o-Tom’ range for Hull Traders. The decorative arts of the 1960s also succumbed to the pull of modernity, although they stopped short of going completely down the Pop route. Some of the most widely acknowledged metalwork and ceramic and glass objects emerged at this time as a direct result, from the mid-1950s onwards, of a number of companies employing distinguished RCA graduates. David Queensbury, Professor of Ceramics and Glass at the RCA from 1959, worked for W.R. Midwinter Ltd. and Webb Corbett Glass, among others; David Mellor collaborated with the Ministry of Public Building in 1965 on his elegant ‘Thrift’ cutlery range; and Robert Welch worked with J and J Wiggin Ltd., for whom he created a highly sculptural three-legged candelabrum, named ‘Campden’, in 1957. Seminal ceramic designs to emerge in these years included the extremely popular ‘Home-Maker’ tea service, designed by Enid Sweeney for Ridgway Potteries in 1957. Jessie Tait’s pieces for Midwinter, among them ‘Cuban Fantasy’ from 1957 were also hugely influential. Glass design also responded to the spirit of the age: Geoffrey Baxter’s ‘Unica’ and ‘Brick’ vases from 1965 and 1966, respectively, for instance, abandoned the delicacy of 1950s designs in favour of the solid forms and bright colours of 1960s British Pop design.

9.15 Nostalgia and Revival By the early 1970s, following the downturn in the economy, the continuing demise of Britain’s manufacturing industry, the final death-throws of the empire and the loss of a belief in the future, the British modern design movement, which had begun very tentatively in the 1930s and blossomed in the 1960s, had all but vanished. The cultural pre-eminence of lifestyle products was largely replaced by an ‘experience culture’, fuelled to a significant extent by the expanding nostalgia and heritage industries.17 Looking forward was replaced by a backward-looking culture that embraced vintage objects, stylistic revivals and craft. The few British designs to make an important international impact included fashion items and punk record covers.18

9.16 1980s Designer-Culture In Britain, the 1980s began with the election of Margaret Thatcher as Prime Minister. She remained in that post until 1997 and oversaw a period of British history which 17 18

See Hewison (1987). See McDermott (1987).

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prioritised private enterprise, social aspiration and mobility, and the importance of individualism. Within the new-found affluence of the 1980s, the designer came to the fore once again and names such as those of Ron Arad,19 Nigel Coates, Tom Dixon,20 Daniel Weil, Eva Jiricna, Ben Kelly and others became familiar ones to the general public. This was the era of the designer as celebrity. One of the most successful design-related branding exercises of the late twentieth century was that undertaken by the household electronic goods designer and manufacturer, James Dyson.21 Dyson’s key invention was the bag-less vacuum cleaner. The success of the G-Force machine that he developed over many years, later known as the ‘Cyclone’, was as much a result of its design, however, as of the technological innovation it built upon. Dyson also understood the need to make his goods ‘friendly’ (and, arguably, ‘feminine’) and he added a range of colours to his machines—pink when it was being made in Japan, and, later, a whole spectrum of other bright colours—to make that possible. 1989 saw the opening, in London’s Shad Thames, of the Design Museum, among the first of its kind in the world. Conceived, and largely funded, by Terence Conran (who had founded the Habitat stores over two decades earlier), the museum’s focus was on the cultural importance and achievements of designers as agents of change and innovation. A 2005 exhibition, ‘Designing Modern Britain’ bore witness ‘to the continuing ingenuity, as well as the creative legacy, of the modern British designer’, celebrating the achievement of that nation in the field of design.22

9.17 Kenneth Grange Kenneth Grange, one of Britain’s leading designers, has been working for several decades.23 His first work was undertaken for Kodak back in the 1950s, and his earliest professional experience was working for Bronek Katz, a modernist architect of midEuropean origin, in the field of exhibition design. Between 1948 and 1951, Grange went into the office of another architect, Gordon Bowyer, and subsequently into that of architect, Jack Howe, where he continued to work as a drafting assistant until, in 1958, building on the Kodak experience, he set up his own office as an industrial designer. In 1958, the Council of Industrial Design introduced Grange to a firm called Kenwood, which specialised in electrical kitchen equipment. The first Kenwood kitchen machine, the ‘Chef’, designed by Grange, was launched at the Ideal Home Exhibition of 1950. Grange’s time with Kenwood generated over a hundred products. Together—from the ‘Chef’, to the smaller, hand-held ‘Chefette’ (launched in 1959); 19

See Sudjic (1999). See Dixon (2008). 21 See Dyson (1987). 22 Cutlack (2005). 23 See Curtin et al. (2011). 20

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to ranges of kettles and irons; the more recent food processors (including the ‘Cuisine’ and ‘Gourmet’ models); a slow cooker; a highly sculptural, rechargeable kitchen knife, first launched in 1967; a water filter; a fruit juicer and many more items besides—they constituted a recognisable and hugely respected family of products. Examples of other Grange designs include, in the late 1970s, a small gas cooker for Osaka Gas and a set of microwave containers designed in the mid-1980s for Thorpac. In the early 2000s, the designer became involved with a lighting project. While the original ‘Anglepoise’ lamp, invented by George Cawardine in 1932 and manufactured by Herbert Terry and Son, had been a British modernist icon for decades, in 2001, Grange was asked to revitalise the product.

9.18 The New Century In yet another pendulum swing, the 1990s and early 2000s saw a shift away from the dominance of the celebrity designer and towards a renewed interest in ideas about the environment; in design teams and the notion of co-design; in the social and wellbeing implications of design; and in areas of design that do not manifest tangibly, such as service, software design and interface design. By the early 1990s, the globally recognised British designer, Jasper Morrison,24 had already begun to develop a more self-effacing approach to his work, and a new minimalist aesthetic came to define many products, such as those designed by Barber Osgerby, who set up their studio in 1997. The idea of a distinctive notion of ‘British design’ disappeared in the face of evergrowing globalisation. However, Britain did remain distinctive in the field of design education, at which it had excelled since the mid-nineteenth century. Where high technology goods were concerned the contributions of the British and British-trained designer, Jonathan Ive, to the American firm, Apple; and of the product designer Bill Moggridge to the formation of the American company, IDEO, represented the global impact of British design at this time. British design also continues to lead the way at the experimental end of the spectrum with the contribution of, among others, the team of Tony Dunne and Fiona Raby, yet more products of the British design education system. In 2012, the decision to locate the Olympic Games in London provided the city with an opportunity to show the maturity of its creative industries to the rest of the world and the design contributions of Barber Osgerby (the Olympic torch), Thomas Heatherwick (the Olympic Cauldron) and Zaha Hadid (the swimming stadium) were visible around the world. Heatherwick was also responsible for the re-design of the Routemaster bus, a longstanding post-war British design icon, showing that British design had finally come full circle.

24

Neri (2012).

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9.19 Conclusion In the 2020s, in Britain, design has become multi-faceted. In product terms, the 1980s generation continues to move from strength to strength operating as it now does on a global platform, while a younger generation has reacted against the convention that design has to be expressed through material goods and support a capitalist-dominated industrial system. Instead, they use design as a tool with which to make social, environmental and political interventions in a manner, perhaps, that is reminiscent of William Morris and his colleagues a century and a half ago.

References Aldersley-Williams H, Antonelli P (2010) British Design. The Museum of Modern Art, New York Banham M, Hillier B (1976) A Tonic for the Nation: The Festival of Britain 1951. Thames and Hudson, London Buckley C (2007) Designing Modern Britain. Reaktion, London Carrington N (1976) Industrial Design in Britain. Allen and Unwin, London Chippendale T (2016 [1754]) The Gentleman and Cabinet-Maker’s Director. Wentworth Press, London Conway H (1982) Ernest Race. Design Council, London Curtin G, MacCarthy F, Sudjic D (eds) (2011) Kenneth Grange: Making Britain Modern. Black Dog, London Cutlack D (2005) From C5 To Concorde—Modern Britain At The Design Museum. Available via Culture 24, https://www.culture24.org.uk/art/architecture-and-design/art32344. Accessed 25 Oct 2021 Dixon T (2008) The Interior World of Tom Dixon. Conran Octopus, London Dolan B (2004) Josiah Wedgwood: Entrepreneur to the Enlightenment. Harper Perennial, London Dyson J (1987) James Dyson: Against the Odds: An Autobiography. Orion, London Frayling C, Catterall C (eds) (1996) Design of the Times: One Hundred Years of the Royal College of Art. Richard Dennis, London Hewison R (1987) The Heritage Industry: Britain in a Climate of Decline. Methuen, London Huygen F (1989) British Design: Image and Identity. Thames and Hudson, London Jackson L (2001) Robin and Lucienne Day: Pioneers of Contemporary Design. Mitchell Beazley, London Maguire P, Woodham J (1997) Design and Cultural Politics in Postwar Britain: The ‘Britain Can Make It’ Exhibition of 1946. Leicester University Press, London McCarthy F (1982) British Design Since 1880. Allen and Unwin, London McDermott C (1987) Street Style: British Design in the 1980s. Design Council, London Morris W (1993 [1890]) News from Nowhere and Other Writings. Penguin, Harmondsworth, Middx Myersen J (1992) Gordon Russell: Designer of Furniture, 1892–1992. Design Council, London Naylor G (1990) The Arts and Crafts Movement. Trefoil, London Neri G (2012) Jasper Morrison: Minimum Design. 24 ORE Cultura s.r.l, Milan Phillips B (1984) Conran and the Habitat Story. Weidenfeld and Nicholson, London Pugin AWN (2013 [1836]) Contrasts. Cambridge University Press, Cambridge Purbrick L (ed) (2001) The Great Exhibition of 1851: New Interdisciplinary Essay. Manchester University Press, Manchester Ruskin J (1989 [1849]) The Seven Lamps of Architecture. Dover Publications, London Ruskin J (2019 [1851–1853]) The Stones of Venice, vols 1–3. HardPress Publishing, London

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Sparke P (1986) Did Britain Make It?: British Design in Context, 1946–1986. Design Council, London Sudjic D (1999) Ron Arad (Design). Laurence King, London Thackera J, Jane S, Dormer P (1986) New British Design. Thames and Hudson, London Whiteley N (1987) Pop Design: From Modernism to Mod. Design Council, London

Penny Sparke is a professor of design history at Kingston University, London, and the Director of the Modern Interiors Research Centre at that institution. Her main interest lies in the history of interiors, with an emphasis on identity and gender. Her most recent book, published by Yale University Press in 2021, is entitled Nature Inside: Plants and Flowers in the Modern Interior.

Chapter 10

History of Design Protection in the United Kingdom David Charles Musker

Abstract The United Kingdom (UK) was a pioneer in industrialisation and global trade. As the scope of these activities expanded, so did the need for protection of designs from piracy. After studying the French design protection regime and the needs of industry, Parliament created a design registration system in 1839. The existence of special protection for industrial designs in the UK acted to delay the extension of copyright to mass-market products until the late twentieth century. When it eventually arrived, the result was over-protection of banal designs. In response, in 1989, the UK adopted a short-term unregistered design system alongside its registered design system. European harmonisation of design law in 2001 and 2002 brought further changes and an additional layer of unregistered design protection. Today, several parallel registered and unregistered protection systems exist, providing the UK with a rich, complex, design protection regime.

10.1 Introduction The UK has had a recognisable patent system since the 1624 Statute of Monopolies of King James.1 Copyright for printed books in its modern form was created in 1710 by the Statute of Anne2 and extended to engravings in 1735.3 Legal protection of industrial designs first came into being in the late eighteenth century, in the UK and France. The initial stimulus, in each case, was the industrialisation of the textile industry. As mass-production extended to more sectors, so did design protection. By the mid-nineteenth century, the UK had a well-developed system of registration of designs for a limited period which formed an influential model for many other countries. 1

Statute of Monopolies, 21 Jac. I c. 3 (1624). Statute of Anne, 8 Anne c. 19 (1710). 3 Engravers’ Act, 8 Geo. II c. 13 (1735). 2

D. C. Musker (B) Queen Mary University of London, London, UK e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_10

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10.2 The Beginnings—Unregistered Textile Protection By the late eighteenth century, England and France had acquired trade networks, which transformed into empires. Textiles were an important UK export, and much energy had been devoted to developing domestic substitutes for the popular patterned Indian fabrics which were in demand in colonial markets. Luxury imports such as Chinese ceramics were also in demand, and in the absence of attractive export goods to exchange, the UK developed domestic industries to substitute for these. Automatic spinning and weaving machinery, rapidly rolled out in the last decades of the eighteenth century, made textiles the first fruits of mechanised industrial mass production. Advances in printing made it possible to cheaply produce (and to copy) printed fabrics. Under the Calico Printers’ Act 1787, the Designing and Printing of Linens Act 1789 and the Calico Printers’ Act 1794,4 their manufacturers were granted short-term protection—compared to that for copyright books or patented inventions—in the UK for ‘any new and original pattern or patterns for printing linens, cottons, calicos or muslins’.5 Shortly thereafter, similar protection was granted under the Sculptures Copyright Act 1798 for busts of the human and animal form.6

10.3 The Background to UK Design Registration During the Revolutionary and Napoleonic Wars of 1792–1815, French exports from and British imports to the Continent were blockaded. In peacetime, imports of luxury goods into Britain remained heavily taxed and imported silks remained banned altogether until 1820. In the three decades thereafter, the Free Trade campaign led to reductions in, and ultimately abolition of, most import duties. Without these props, the British luxury goods industries were to find the French opponents as formidable in commerce as they had been in war. British consumers, long-accustomed to seeing French goods as the forbidden fruits of smuggling, were now able to acquire them cheaply and legally. The silk trade in the UK had been protected from competition by heavy tariffs and (for ribbons, stockings and gloves) outright prohibitions. Tariffs were eventually lowered to a level matching the cost of smuggling, and the resulting rise in imports from France (even when taxed at 30%) took significant business from the UK weavers. Imports were not the only threat. Skilled hand-loom weavers were also under threat from the rise of power looms. They attempted to stop the tide by violent destruction of machinery and to defend their standards of living by wage-fixing, but mechanisation could not be resisted. 4

Calico Printers’ Act, 27 Geo. III c. 38 (1787); Designing and Printing of Linens Act, 29 Geo. III c. 19 (1789); Calico Printers’ Act, 34 Geo. III c. 23 (1794). 5 Two months, extended to three by the later Acts. 6 Sculpture Copyright Act, 38 Geo. III c. 71 (1798).

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That extraordinary French invention, the 1805 punched card programmable Jacquard loom, increased the pressure on hand-weavers. It allowed power loom weavers to change styles rapidly without down-time, and de-skilled the setup processes required to do so. By the 1830s, French textile exports from Lyon included whole new ranges of fashionable patterns every season, which the British could not match. The textile makers, and other UK sectors, now sought more protection from Parliament, which was, however, moving away from tariffs and price controls and towards free trade.

10.4 The Parliamentary Enquiry Committees A Select Committee on the silk trade was appointed. Its 1832 Report was unable to make recommendations, but the evidence it collected shows that the superiority of French design was primarily what was putting the UK weavers out of business.7 Lyon had long had an official monopoly on silk production, locally controlled by guilds. Various earlier legal controls there gave way in 1787 to a six-year local registration system for textile designs,8 replaced in 1806 by a more ambitious system involving registration and enforcement before local trades councils,9 subsequently extended to all industries and regions of France. Separately, the Revolutionary government passed a copyright statute in 1793 which was also broad enough to cover many industrial designs.10 An 1829 Select Committee on the state of patent law had taken evidence from a Joseph Merry in the silk trade,11 according to whom industry wanted a 12-month design registration system based on the model of the design registration system in Lyon, which he had used.12 Accordingly, when a new Patent Bill was proposed in 1833, a 12-month registration system for all designs was added at the Committee stage, but the Bill was deferred for reconsideration of its patent aspects and the design registration proposal fell with it. Meanwhile, a Select Committee on Manufactures reported on the state of the silk trade but also more broadly.13 The evidence before them indicated that, whereas the silk trade copied the French, the UK calico printers suffered copying by UK competitors, who outnumbered the originators of new designs.14

7

House of Commons (1832). The second city of France, soon to become the home of the Jacquard Loom, the first programmable manufacturing machine. 9 The Conseil des prud’hommes. 10 At least arguably, though the position of three-dimensional works was unclear for some years. 11 House of Commons (1829), Evidence of Mr Joseph Merry, 27 May 1829, 89–90. 12 House of Commons (1829). 13 House of Commons (1833). 14 House of Commons (1833), Evidence of Mr James Thomson, 18 June 1833. 8

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One of the witnesses before the 1832 Silk Trade Committee was the remarkable Dr. John Bowring MP. Formerly secretary to and biographer of Jeremy Bentham,15 he was an abolitionist, a Free Trader and a radical. He spoke a vast array of languages and had travelled widely, particularly in France, where he sought out and interviewed M. Jacquard,16 and studied the institutions at Lyon.17 Bowring’s evidence to the Select Committee in 1832,18 and his 1835 speech on a proposal to relieve the hand-loom weavers,19 show that he thought the weavers could not be shielded from competition, only stimulated to become more competitive. The school of design at Lyon; the French protection regime, by which designs of all kinds were protected by a sealed deposit; and the trade tribunal, which cheaply and quickly gave an expert determination in all kinds of intellectual property and other trade disputes;20 were amongst the elements which helped give French textile design its competitive edge. He thought they should be copied. Thus by 1835, design protection issues had acquired a sufficient head of steam for Robert Peel,21 himself the son of a textile manufacturer but by instinct a keen free trader, to recommend a Select Committee on Arts and their Connexion with Manufactures. Its remit was: to inquire into the best means of extending a knowledge of the ARTS and of the PRINCIPLES of DESIGN among the People (especially the Manufacturing Population) of the Country; also to inquire into the Constitution, Management and Effects of Institutions connected with the Arts.22

The Committee included Dr. Bowring, and many of its other members also had manufacturing interests. It heard witnesses from a range of industries spanning the UK, including the textile and fashion trades, architecture, interior decoration and trades in china, porcelain, iron, bronze and gold goods. Many of them were manufacturing business owners and some were traders, but architects, sculptors, painters and engravers also testified, as did representatives of the Mechanics Institute, the Royal Academy, the School of Design in Scotland and the Mechanics’ Magazine. They were supplemented by witnesses from France and Germany. It is clear from the remit of the Committee, and from its lines of questioning, that most of its members started from the assumption that the problem was the barbarous tastes of British consumers, designers and manufacturers, and the solution was more and better art education for all. Joseph Clinton Robertson, who ran the Mechanics’ Magazine, voiced the popular view of British mass production: 15

Himself a keen proponent of the patent system. Inventor of the ground-breaking programmable Jacquard Loom. 17 Among other achievements he would later be knighted, negotiate trade treaties with France and Thailand, become consul to China and then Governor of Hong Kong. 18 House of Commons (1832). 19 House of Commons (1835a). 20 The Conseil de prud’hommes in Lyon, empowered to act in design matters in 1806 by Napoleon. 21 The Tory leader, who would become the next Tory Prime Minister in 1841. 22 House of Commons (1835b), p. ii. 16

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The great object with every English manufacturer is quantity; with him, that is always the best article to manufacture of which the largest supply is required; he prefers much a large supply at a low rate to a small supply at a higher; and that even should the present profit be less from the former than the latter, because, in the long run, the larger the demand, the steadier it is sure to be. I do not think this is a point which has been sufficiently considered. From the great command of capital possessed by the English manufacturer, the immense capabilities of his machinery, and the unrivalled skill and industry of his workmen, he is enabled to turn out a greater quantity of goods in a given time than the manufacturer of any other country whatever; while our wide-spread commercial relations present him with facilities of disposal such as no other manufacturer enjoys. He lays out himself accordingly to supply those manufactures that are most in demand all the world over; and those that are the most in demand among mankind at large, will, in the nature of things, always be of the least tasteful description; that is to say, till the bulk of mankind are much more cultivated than they now are, or are likely soon to be.23

British professional designers were shown to exist in some numbers and were not behind the French in skill. They were not (as the head of the Royal Academy suggested in his evidence) failed art students but in the main skilled and gifted workmen—the natural successors of the craftsmen displaced by mass-production— and were reasonably paid compared to manual labourers but not so highly paid as to boost their numbers. However, the evidence told the Committee repeatedly, and from all branches of trade,24 that there was a lack of investment in design and that the lack of effective recourse against piracy was one of the reasons for that. The Report concluded that: It has too frequently, if not uniformly, occurred, that the witnesses consulted by the Committee have felt themselves compelled to draw a comparison more favourable (in the matter of design) to our foreign rivals, and especially to the French, than could have been desired, either by the Committee or the witnesses. The Committee were anxious to investigate the pervading cause which seemed to justify this conclusion. It appears that the great advantage which foreign manufacturing artists possess over those of Great Britain consists in the greater extension of art throughout the mass of society abroad. Art is comparatively dear in England. In France it is cheap, because it is generally diffused. In England a wealthy manufacturer has no difficulty in procuring superior designs. Our affluent silversmiths have called to their aid the genius of Flaxman and of Stothard. But the manufacturer of cheap plate and inferior jewellery cannot procure designs equal to those of France, without incurring an expense disproportioned to the value of the article on which his labour is employed.25

The French invested more manpower in design—‘a French capitalist employs three or four artists, where in England one artist would supply eight or ten manufacturers’. However, the disadvantage suffered by the English was not merely numerical inferiority, but also the fact that unlike the position in France, ‘[i]t appears that in England the designer of the pattern and the person who applies it to the manufacture are distinct persons’. The work of an English commercial artist needed to be translated into something which could be cast in metal, or woven on a power loom, or 23

House of Commons (1835b), p. 120, para. 1598. Except for the highest-end goldware and silverware where piracy was uneconomical. 25 House of Commons (1836), p. iv. 24

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fired in a kiln, by a skilled artisan, whereas a French designer combined both these roles. The evidence of some of the witnesses shows the early advent of modernist and minimalist ideas of design. Dr. Bowring himself was inclined to modernism: Dr. Bowring—There is probably no example of a perfect machine which is not at the same time beautiful?—Thomas Leverton Donaldson (Architect)26 I know none.27

According to James Nasmyth, engineer:28 In the majority of instances, the most economical disposition of the materials coincides with such a form as presents the most elegant appearance to the eye; this is especially the case where the elliptic or parabolic curves are employed in the form of the parts which connect one part of the machine with the other, so that when viewed as one design it shall present a perfectly graceful form, and at the same time completely attain the object in view.29

Asked about the beauty of classical forms, he replied: In the majority of cases the most elegant forms of the Etruscan urns can be shown to be derived from the employment of the geometric figure called the ellipsis, placed in different directions, in which case it is shown that, by the study of one simple geometrical form, we are enabled to produce an infinity of elegant forms, and it is to impress such effects on the minds of mechanics that I would recommend the exhibition in a most familiar manner to their eyes, of those remains of antique design which combine in themselves the before-mentioned principles.30

George Morant, a Bond Street decorator, confirmed that his definition of ‘good taste’ was in accordance with ‘true scientific principles’: By scientific principles I mean correct principles, that may be established as to proportion of symmetrical forms, or as to contrast of colours.31

In relation to the workplaces, the Committee concluded that: The exhibition of works of proportion and of beauty in rooms connected with factories would have a beneficial effect on minds already familiar with geometric proportions; scientific improvements in machinery, and economy in the construction of it, are both intimately connected with perfection of form.32

The Report therefore made several chief recommendations:33

26

Founder-member of the Royal Institute of British Architects; member of the Institut de France; first Professor of Architecture at University College, London. 27 House of Commons (1836), p. 32, para. 341. 28 The inventor of the steam-hammer, in whose honour the Department of Mechanical Engineering building at Heriot-Watt University is named. 29 House of Commons (1836), p. 28, para. 294. 30 House of Commons (1836), p. 30, para. 315. 31 House of Commons (1836), p. 47, para. 562. 32 House of Commons (1836), p. v. 33 House of Commons (1836), pp. v–vii.

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• There should be schools of design, and ‘everything, in short, which exhibits in combination the efforts of the artist and the workman, should be sought for in the formation of such institutions.’ • The taste of the public should be educated towards an appreciation of design and art by free public exhibitions outside working hours, and ‘with a view to extend a love, a knowledge of art among the people … the principles of design should form a portion of any permanent system of national education.’ • ‘The Committee consider the elaboration of any comprehensive measure for the protection of designs in Manufactures to be well worthy of the serious attention of the Government.’ There should be ‘a system of registration’ of designs and ‘a cheap and accessible tribunal’. These recommendations were taken forward: English Schools of Design were established from 1837 onwards,34 numbering 150 by the end of the nineteenth century; and, surpassing the French national expositions on which it was based,35 the Great Exhibition of 1851 attracted over 6 million visitors from all classes of society.36 Many of the exhibits made their way six years later to the South Kensington Museum, eventually re-named the Victoria and Albert Museum, which calls itself (with some justification) ‘the world’s leading museum of art and design’. And protection by way of registration was to follow shortly.

10.5 The Development of Design Registration in the UK The Report made several chief recommendations, including that there should be ‘a system of registration’ of designs and ‘a cheap and accessible tribunal’. Thus in 1839, the two Copyright of Designs Acts extended design protection, first for textile designs and then for a wide range of products, by way of registration.37 The drafting of the 1839 Acts was poor,38 and they were swiftly replaced by two parallel successors—the 1842 Ornamental Designs Act, which protected new and original ‘ornamental’ designs;39 and the 1843 Utility Designs Act,40 which did likewise for ‘functional’ designs.41 In these, the original complex lists of allowable types of product were replaced by generic wording referring to ‘any Article of Manufacture’ (though sculptures and busts were excluded, because these were protected by 34

One had already existed in Scotland for some time. Of 1798 and thereafter every three to four years. 36 With which John Bowring’s son was connected. 37 Copyright of Designs Act, 2 Vict. c. 13 (1839); Designs Registration Act, 2 Vict. c. 17 (1839). 38 And the deficiencies were copied into the first United States of America (US) design legislation of 1842. 39 Ornamental Designs Act, 5 & 6 Vict. c. 100 (1842). 40 Utility Designs Act, 6 & 7 Vict. c. 65 (1843). 41 For which, see Sherman and Bently (1997). 35

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copyright). At the same time, the former unregistered protection for textile designs was repealed. The 1842 Act protected designs ‘for the ornamenting of’ such articles, or ‘any Substance, artificial or natural’, ‘whether applicable for the pattern, or the shape and configuration, or for the ornament thereof.’ The 1843 Act protected designs for such articles ‘having reference to some purpose of Utility, so far as such design shall be for the Shape or Configuration of such Article’. Designs were registered within broad classes of articles, based (like those of the 1851 Great Exhibition and its successors) on the materials of which the articles were made and therefore generally corresponding to the major industries of the era. The rights granted were limited by class.

10.6 Features of the First UK Design Registration Acts Under these Acts, applicants filed pictures or samples at the Designs Registry, which very promptly registered them.42 The lifetime was three years.43 Marking of the corresponding articles sold with the design number and class was mandatory, or the benefit of registration was lost. Protection against self-disclosure was introduced for designs shown at the Great Exhibition of 1851 and formed the basis for similar subsequent grace periods for disclosure at officially certified exhibitions. Designs had to be novel over prior publications in the UK, although there was no prior art search or examination. However, the Registrar would refuse designs that did not meet the formal requirements, and had a discretionary power to refuse those which were apparently for packing or labels rather than the article of manufacture they contained, or which were contrary to public order or morality. The Registrar could also order an application for an ornamental design to be converted into a useful design application and vice versa. There was no publication. Useful designs could be inspected in the presence of the Registrar, but ornamental designs were kept secret until after expiry, to avoid registration becoming an aid to copyists. Protection was granted against use of the design, or fraudulent imitations of it (later broadened to ‘fraudulent or obvious imitations’ in 1883), on products.

42

Compared to the patent system of the time. With shorter terms (a year or less) for various classes of textile designs. Considerably less than the copyright terms available to sculptures and engravings.

43

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10.7 Expansion and Enforcement Over the Nineteenth Century Over the nineteenth century, the scope and term of design protection were progressively expanded. In 1873, the modern High Court was created from the fusion of the courts of Common Law and Equity, and parallel changes affected the design registration system—the Patent Office absorbed the Registrar of Designs in 1875,44 and the Patents and Designs Act of 1883 simplified the design system by fusing the two parallel design registration systems into one,45 setting a harmonised term of five years for all types of design, making all designs secret until expiry and giving the Registrar an unfettered discretion to refuse.46

10.8 The 1883 Act The 1883 Act laid down common provisions for patents, trade marks and designs on discretion to refuse; refusal of immoral subject matter; use of the Royal arms or State emblems; hearings; evidence; filing and notification; registration of transactions; claiming priority; correction of errors; false marking; and so on, which remain largely parallel today even though the Acts governing the separate rights have been diverging for over a century. It appeared at the time that the fusion of the two design systems was not intended to change what could be registered.47 However, as the definition of what could be protected was based on that for ornamental designs, the Courts came to exclude mechanical devices and methods or principles of construction from protection.48 This exclusion, the ancestor of the present ‘dictated by function’ exclusion, became statutory in the 1919 Act.49 Applicants could cover more than one class in an application, and validity and infringement rights were limited by the classes chosen. Within a class, designs applied to a set of articles ‘ordinarily on sale together’ could be registered (that is, a ‘unity of sale’ requirement). Designs could be revoked if the proprietor failed to mark products in the required form, or if they were manufactured abroad but not in the UK within six months of registration. 44

By the Copyright of Designs Act, 38 & 39 Vict., c. 93 (1875). The Patents, Designs, and Trade Marks Act, 46 & 47 Vict. c. 57 (1883). 46 At that stage, the lifetimes had varied between one and five years, depending on the class concerned. 47 JE Crawford Munro, for example, wrote that ‘it is immaterial whether the design be useful or ornamental’: Crawford Munro (1884), p. 85. 48 For the latter, see Moody v Tree (1892) 9 RPC 333. 49 The Patents and Designs (Amendment) Act, 9 & 10 Geo V c. 80 (1919). 45

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10.9 Developments in Design Registration Over the Twentieth Century In 1907,50 the lifetime of design registrations was extended to add two further fiveyear terms, a total of 15 years. This was to remain the rule for the next 82 years. The scope of sets was expanded so as to apply to articles ‘ordinarily on sale, or intended to be used together, all bearing the same design, with or without modification, not sufficient to alter the character, or not substantially affecting the identity thereof’ (that is, either of a ‘unity of sale’ or ‘unity of use’ requirement).51 It was also possible to later register the same or a similar design on other articles without the first registration invalidating the later ones. The drawbacks were that all later designs expired at the same time as the first and had to remain in the same ownership. This system of ‘associated designs’ was equivalent to those of ‘patents of addition’ and ‘associated trade marks’, and is similar to the ‘related design’ systems in use in some Asian countries at present. The 1919 Act codified the definition of what could be protected, namely: only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.52

In the 1949 Act,53 the ‘mere mechanical device’ was replaced by the exclusion of ‘features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform’. The restrictive effects of classes were abolished by the 1949 Act, with the effect of narrowing the scope of designs to only the article named in the registration. (For validity purposes, classes had never been binding).54 Another reduction in scope was occasioned by the change in the definition of infringement, from ‘fraudulent or obvious imitation’ to use of ‘the design or a design not substantially different’, though this did remove any possible need to prove copying and thus drew a clear line between design and copyright infringement. In 1956, the 1949 Act was amended to create an exception to the novelty rule for designs which had corresponding copyright artistic works.55 These could be freely disclosed until fifty had been made and one sold. Two cases restricted the extent to which functional designs could be registered. In Amp v Utilux,56 the House of Lords interpreted the ‘dictated solely by function’ 50

Patents and Designs Act, 7 Edw VII c.29 (1907). Designs Rules 1908, r. 5. 52 Patents and Designs (Amendment) Act, 9 & 10 Geo V c. 80 (1919). 53 Registered Designs Act, 12, 13 & 14 Geo VI c. 88 (1949). 54 Stenor Ltd v Whitesides (Clitheroe) Ltd (1948) 65 RPC 1 (HL). 55 Registered Designs Act, 12, 13 & 14 Geo VI c. 88 (1949), s. 6(4). 56 Amp Inc v Utilux Pty Ltd [1971] FSR 572, [1972] RPC 103 (HL). 51

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exclusion and the ‘eye appeal’ requirement broadly, so that it was no longer enough to show that the same function could be performed by a different design. The majority considered that the designer’s intention was determinative, though the dissenting minority appeared to accept that a design which turned out to be attractive was protectable even if the designer had thought only of function. In Sifam v Sangamo Weston,57 the High Court interpreted the law as relating to spare parts. The 1949 Act made it possible to register the designs of parts, but only where they were ‘made and sold separately’. It was held that this applied only where the proprietor intended the part to be ‘made and sold separately’ at the application date. That decision formed the basis for the drastic narrowing later applied by the House of Lords in the 1994 Ford case,58 in which registration for spare parts was essentially ruled out by requiring that to be registered ‘an article has to have an independent life as an article of commerce and not merely be an adjunct of some larger article of which it forms a part.’

10.10 Copyright Protection of Designs The UK system of copyright protection began with books and was slowly and in piecemeal fashion extended to other works. After 1842, most copyright works had to be registered at Stationers Hall before they could be enforced.59 This remained the case until registration ceased to be mandatory in 1912.60 It finally became impossible in 2000. In 1839, when design registration began, there were also separate copyright regimes protecting engravings and sculptures but nothing for paintings or drawings—protection for these did not arrive until 1862. The legislative scheme was to separate works protected by design registration from those protected by copyright. The registered design laws at first excluded engravings and sculptures, then for a while in the nineteenth century protected them in parallel with copyright, then excluded them once more. The Imperial Copyright Act 1911 drew together the previous different statutes governing different types of works.61 It excluded from copyright protection any registrable design, unless the design had not yet been industrially applied by making 50 articles—possibly to benefit the handicraft short runs championed by the Arts

57

Sifam Electrical Instrument Co. Ltd v Sangamo Weston Ltd [1973] RPC 899, a copyright case. R v Registered Designs Appeal Tribunal, Ex Parte Ford Motor Co Ltd [1994] UKHL 10, [1995] RPC 167. 59 As is still the case in the US, for US proprietors. 60 Which reflected UK ratification of the then-current version of the Berne Convention for the Protection of Literary and Artistic Works, 9 Sept 1886 (revised 24 July 1971), 828 U.N.T.S. 221 (Berne Convention). 61 1 and 2 Geo 5 c. 46. 58

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and Crafts movement.62 A more explicit nod to the Arts and Crafts movement was the introduction of copyright protection for ‘works of artistic craftsmanship’. As the Registered Designs Act excluded sculptures and, in practice, printed matter, there was little other scope for overlapping protection. In its 1941 King Features judgement,63 the House of Lords made it clear that the copyright in a two-dimensional drawing (a Popeye cartoon) could be infringed by making a three-dimensional article (a doll) to the drawing, since the drawing had not when created been intended to be a toy design. Under the Copyright Act 1956, it was made explicit that drawings and sculptures, amongst other things, were protected ‘irrespective of artistic quality’, to keep judges out of aesthetic determinations. As under the 1911 Act, copyright in a drawing could be infringed by making an article (or copying an article made) to the drawing. Since drawings were protected ‘irrespective of artistic quality’, normal engineering drawings of wholly functional products could be infringed by making those products. To deal with this, the Copyright Act 1956 contained a ‘lay recognition’ defence which prevented a three-dimensional article from infringing a drawing if ‘the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work’,64 which the Gregory Committee thought desirable in the protection to be given to a drawing by reason of its reproduction as a building, machine or utilitarian article; otherwise the scope of the Copyright Act would again be extended into fields far beyond its main or original intent and properly to be covered by other forms of protection if at all.65

However, some very limited overlap with registered design protection was contemplated. Three possible scenarios were envisaged under s. 10: 1. 2.

3.

Where there was copyright in a design which was registered, copyright could not be enforced. Where the design was registrable but not registered, from the point where 50 articles were made and one sold, copyright could not be enforced in those particular articles and after 15 years (that is, the same as the lifetime of a design registration) it could not be enforced in any other articles either. Where the design was unregistrable, normal copyright applied. Thus, sculptures (unregistrable) were protected for the full copyright term.

Lobbying from the jewellers of Birmingham led to the Design Copyright Act 1968 which amended s. 10 so that: 1.

62

Where the design was registered, or where the design was registrable but not registered, after 15 years from the point where 50 articles were made and one sold, copyright could not be enforced.

Discussed in greater detail by Professor Sparke in Chapter 9 of this work. King Features Syndicate Inc v O & M Kleeman Ltd (1941) 58 RPC 207 (HL). 64 Copyright Act, 4 & 5 Eliz. II, c. 74 (1956), s. 9(8). 65 Gregory (1951), p. 95, para. 258. 63

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Where the design was unregistrable, normal copyright applied as before.

Ignoring the fairly clear intention behind the s. 9(8) defence, the High Court,66 without complaint from the Court of Appeal or the House of Lords,67 granted the non-expert observer a high degree of expertise and thereby eviscerated the section. As a result, between the early 1970s and the late 1980s copyright in the precursor engineering drawings (as discussed above) protected any registrable design for 15 years, but any unregistrable design for the author’s life plus 50 years. The impact of the 1971 House of Lords Amp v Utilux judgement on functionality of registered designs was that many fairly functional designs that had previously been deemed registrable (and had been registered) were in fact unregistrable in law and therefore benefitted unexpectedly (and irrationally) from the full term of copyright protection.68 Proprietors such as InterLego who had protected their designs by registration for 15 years then subsequently argued that the registrations had in law always been invalid in order to continue to benefit from copyright protection.69

10.11 The Reforms of 1989 The House of Lords criticised this state of affairs in British Leyland v Armstrong,70 a case concerning infringement of copyright in rough drawings of a car exhaust pipe system by selling competing exhaust pipes. Following shortly after that case, Parliament enacted the current Copyright, Designs and Patents Act 1988 (CDPA). This Act provided a more effective defence,71 having the effect of excluding copyright protection of drawings from infringement by three dimensional or ‘shape’ designs of articles, except where the shape itself was an ‘artistic work’ such as a sculpture or a work of artistic craftsmanship. For surface decoration designs, copyright remained in place. There was no longer any attempt to define copyright by what could or could not be registered as a design (although sculptures and printed matter remained excluded from design registration).72 Where a protectable copyright work was industrially exploited, the term during which it could be used to prevent three-dimensional articles being made was limited to 25 years from the point where 50 were made and one sold (although this term

66

Solar Thomson Engineering Co. Ltd. v Barton [1977] RPC 537. In LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551, [1979] FSR 145 (HL). 68 Amp Inc v Utilux Pty Ltd [1972] RPC 103 (HL). 69 See Interlego v Tyco Industries [1988] UKPC 3, [1988] RPC 343. 70 British Leyland v Armstrong [1986] RPC 279 (HL). 71 Copyright, Designs and Patents Act 1988 (c. 48), s. 51. 72 By r. 26 of the various Registered Designs Rules. 67

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limitation did not apply to sculptures and certain other products which were excluded from design protection).73 This term limitation was removed in 2014.74 In place of copyright, a new UK ‘unregistered design right’ (UKUDR) was created by Part 3 of the CDPA, giving protection against copying without any formalities, for the shorter of 15 years from design or 10 from first marketing, to ‘shape and configuration’ designs with licences available as of right in the last five years. To prevent the creation of spare part monopolies, protection was excluded for ‘must-fit’ features (those which are shaped to enable connection to another article) and ‘mustmatch’ features of a spare part (those which are dependent on the appearance of the rest of the article into which the part fits). At the same time, the Registered Designs Act was amended. Two additional exclusions were added to an already extensive list. ‘Must-match’ features were excluded. So were the designs of articles ‘if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article.’ On the positive side, the term was extended to 25 years. In this era, the UK grappled with the arrival of electronic displays. In the 1982 case KK Suwa Seikosha’s Design, the Appeal Tribunal accepted for registration an icon of an alarm bell on a digital watch screen, despite the fact that it was only intermittently visible.75 This laid the basis for the acceptance of computer screen icon designs in Apple’s Design Application in 2001.76

10.12 Trade Mark and Passing-Off Protection of Designs Before the advent of universal literacy in the UK around the end of the nineteenth century, buyers sometimes relied on the appearance of goods or their packaging as an indication of origin, and imitation of these could be prevented by a passing-off action at common law.77 When trade mark registration was introduced in 1875, device marks could be protected, but no provision was made for registration of product shapes, and the consistent position of the courts was that shapes, even those as well-known as the Coke™ bottle, could not be registered.78

73

Copyright, Designs and Patents Act 1988 (c. 48), s. 52 and The Copyright (Industrial Process and Excluded Articles) (No. 2) Order 1989. 74 By the Enterprise and Regulatory Reform Act 2013 (c. 24). 75 KK Suwa Seikosha’s Design [1982] RPC 166. 76 Apple Computer Inc.’s Design Applications [2002] FSR 38 (RDAT). 77 An example is William Edge & Sons Ltd v William Niccolls & Sons Ltd [1911] A.C. 693 (1911) 28 RPC 582 (HL), the ‘Dolly Blue’ case. Much later in the twentieth century a reluctant House of Lords confirmed that passing-off was still available in Reckitt and Colman Products Ltd v Borden Inc & Ors [1990] UKHL 12, [1990] RPC 341, the JIF™ Lemon case. 78 COCA COLA TRADE MARKS [1986] RPC 421.

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That position changed only when UK trade mark law was harmonised by the European Union (EU) in 1994. Even now, registration of product designs as trade marks is difficult.

10.13 Enforcement An aim of the first Registered Designs Acts was to provide cheap, quick enforcement of designs. Accordingly, initially enforcement was primarily before the local police Magistrates,79 lay judges selected from prominent local citizens who heard the more minor criminal and some civil cases. They could award fixed financial penalties for infringement. However, actions before the Common Law Courts and the Courts of Equity were also possible. The Law Courts could order damages, the Courts of Equity could order injunctions, and only these higher courts could revoke a design. Jury trials before the higher courts were possible. The County Court system was progressively modernised and expanded to hear lower value civil cases from 1845 onwards, and in 1858,80 the local County Courts were also given jurisdiction for design infringement. The English justice system underwent sweeping changes—largely for the better— in the second half of the nineteenth century, amongst which was the fusing of the jurisdictions of the Common Law Courts and the Courts of Equity in 1875 to form the present High Court. From this point onwards, the enforcement options shrank. The 1883 Act also abolished the jurisdiction of the Magistrates. The 1939 Figorski judgement more or less ended the jurisdiction of the County Courts for design cases, since it clarified that they could not hear any case involving the validity of the design.81 The High Court at this point became the only competent forum for infringement cases, whatever their value. Half a century later, amongst the reforms brought by the Copyright, Designs and Patents Act 1988 was a new, lower cost, forum for enforcement in the form of the Patents County Court. This formed the basis of the present Intellectual Property Enterprise Court, part of the High Court but designed to provide a highly costeffective forum for hearing claims up to a value of £500,000.

79

See Musker (2014). ‘An act to … consolidate and amend the laws relating to the copyright of designs for ornamenting articles of manufacture’: Copyright of Designs Act 1858, 21 & 22 Vict., c. 70. 81 Figorski (John) Ltd v Smith Seymour Ltd (1939) 56 RPC 135. 80

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10.14 The Arrival of European Harmonisation The EU Design Directive82 took effect in the UK on 8 December 2001, resulting in massive amendment of all substantive law parts of the Registered Designs Act and Rules, mostly favourable to design owners. Infringement rights were extended to all products, not merely the article named on filing. The ‘must-match’ and ‘aesthetics’ exclusions were removed, and the acts which infringe were extended to include use of the registered design, and making or importing for any purposes, not just sale or hire. As regards validity, the scope of available prior art was extended from that available in the UK to that available worldwide if it would become known to the relevant circles in the EU. The exemption for exhibitions was largely eliminated as was that for artistic works not industrially applied, but a one-year grace period was introduced. At around this time,83 the UK Registry ceased novelty search and examination and introduced publication and file inspection for all registered designs. With the passage in May 2002 of the EU Design Regulation,84 the three-year EU Unregistered Community Design right joined the existing design rights available in the UK, and litigation began immediately.85 The EU Intellectual Property Office (EUIPO) accepted applications for registered Community Designs (RCD) from 1 January 2003, with a first filing date of 1 April 2003. There was an immediate negative effect on the number of UK registered design filings, as most non-UK applicants switched to the RCD system.86 EU harmonisation, via the case law of the Court of Justice of the European Union (CJEU), also led eventually (but controversially) to the broadening of the scope of copyright protection of designs—the curtailment of the term to 25 years was removed.

82

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, (1998) OJ L 289/28 (EU Design Directive). 83 See Bently (2012). 84 COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1–24 (EU Design Regulation). 85 With Mattel Inc v Woolbro (Distributors) [2003] EWHC 2412 (Ch), [2004] FSR 217, also concerning UKUDR and copyright. The case settled with an agreed pan-EU injunction, damages and costs. 86 Data from annual reports of the Intellectual Property Office (UK). See Intellectual Property Office. Intellectual Property Office website. https://www.gov.uk/government/organisations/intell ectual-property-office. Accessed 25 Oct 2021.

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10.15 Internationalisation of the UK Registered Design System In 1999, WIPO brought the negotiations of the Geneva Act, an improved version of the Hague Agreement, to a conclusion.87 This allowed the accession and designation of intergovernmental bodies such as EUIPO, and permitted countries which perform novelty examination of subject ‘International Design’ applications to the same level of scrutiny. The EU acceded with effect from 1 January 2008, and quickly became the most popular designation. The UK joined in its own right as from 13 June 2018. At this point, the types of design protection available in the UK consisted of: • • • • • •

UK Registered Designs; UKUDR or Copyright; Unregistered Community Designs; RCDs; International Designs (EU); and International Designs (UK).

10.16 Withdrawal from the European Union The UK withdrew from the EU on 30 January 2020, but was treated as remaining until the end of the implementation period—that is, 11 p.m. on 31 December 2020. The following day, all existing RCDs and International Designs (EU) ceased to have effect in the UK, but were replaced by equivalent UK re-registered designs. Unregistered Community Designs were likewise replaced by UK national versions entitled ‘Continuing Unregistered Community Designs’, and an ongoing equivalent called ‘Supplementary Unregistered Design’ was created. Today, and into the future, the UK design protection system remains a rich, resilient, responsive and innovative set of rules for designers, manufacturers and fair competitors.

References Bently L (2012) The Return of Industrial Copyright? Eur Intellect Prop Rev 10:654–672. https:// doi.org/10.2139/ssrn.2122379 Crawford Munro J (1884) The Patents, Designs, and Trade Marks Act, 1883. Stevens & Sons, London Gregory H (1951) Report of the Copyright Committee. HMSO 1951 Cmnd. 8662 House of Commons (1829) Report from the Select Committee on the Law Relative to Patents for Inventions. House of Commons Session: 1829, Paper No. 332 87

Geneva Act of The Hague Agreement Concerning the International Registration of Industrial Designs, 2 July 1999, 2279 U.N.T.S. 156 (Geneva Act).

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House of Commons (1832) Report from the Select Committee on the Silk Trade, 2 Aug 1832. Parliamentary Session: 1831–32, Paper No. 678 House of Commons (1833) Report from the Select Committee on the State of Manufactures, Commerce and Shipping. House of Commons Session: 1833, Paper No. 690 House of Commons (1835a) House of Commons Debate, vol 29 cc1164-77, 28 July 1835 House of Commons (1835b) Report from the Select Committee on Arts and Principles of Design and their Connexion with Manufactures, House of Commons Session: 1835, Paper No. 598 House of Commons (1836) Report from the Select Committee on Arts and Principles of Design and their Connexion with Manufactures, House of Commons Session: 1836, Paper No. 568 Musker DC (2014) Design Crime: Back to the Future or Forwards to the Past? J Intellect Prop Law Pract 9(12):976–985. https://doi.org/10.1093/jiplp/jpu163 Sherman B, Bently L (1997) The United Kingdom’s Forgotten Utility Model: The Utility Designs Act 1843. Intellect Prop Q 3:265–278

Additional Bibliography Caddick N (2021) Chapter 13. History of Design Protection in the UK. In: Copinger and Skone James on Copyright, 18th edn. Sweet & Maxwell, London Carter-Silk A, Lewiston M (2012) The Development of Design Law—Past and Future. Intellectual Property Office. https://assets.publishing.service.gov.uk/government/uploads/system/uploads/att achment_data/file/310380/ipresearch-designlaw-201207.pdf. Accessed 25 Oct 2021

David Charles Musker is Professor of International Design Law at the Centre for Commercial Law Studies (CCLS), Queen Mary University of London. He lectures, or has lectured, at the Universities of Alicante, Bristol and Oxford, at ETH (Swiss Federal Institute of Technology) in Zürich and at the Center for International Intellectual Property Studies (CEIPI), University of Strasbourg. He is currently a consultant to Maucher Jenkins (where he was formerly a partner for over 20 years). He was a founder-editor of the joint CIPA/CITMA Community Designs Handbook and the Class 99 International Design Law blog. His book Community Design Law: Principles and Practice (Sweet and Maxwell, 2002) has been cited with approval by the High Court of England and Wales, the courts of Poland and the Netherlands and EUIPO Boards of Appeal. He is a Chartered Patent and Trade Mark attorney and has practised patent and design law for 30 years, during the course of which he filed the first RCD and appeared as advocate in the last trial before the Registered Designs Appeal Tribunal.

Chapter 11

Design Made in Germany Michael Erlhoff

Abstract The ‘Made in Germany’ brand is synonymous with high quality and innovative design. However, this was not always the case. This chapter traces the history of design in Germany, from its beginnings in the late nineteenth century through to the excellent international reputation it enjoys today. This history includes a number of famous design schools, organizations and movements that revolutionized design across the world. Germany has also produced a remarkable number of design superstars and iconic designs—from furniture, automobiles and household appliances, through to corporate, typeface and environmental design. However, the importance of the individual designer and national design appears to be fading. Germany—like other countries around the world—is again witnessing a fundamental shift in what constitutes ‘design’ and how designers work to deliver important social, cultural and economic change.

11.1 The Beginnings: Late Nineteenth Century–1920s There is no doubt that products made in Germany enjoy an excellent international reputation. This is especially true for products from the capital goods industry, for transportation and for daily use. This reputation is based on the assumed quality of German design and positive evaluations by industry. ‘Made in Germany’ is a brand that promises a great deal of competence. However, it is not well known that ‘Made in Germany’ was first coined by the English in the second half of the nineteenth century as a warning against the poor quality of German products.1 Traditionally, Germany had been regionally fragmented, and only organized as one nation in the late nineteenth century. Industrialization started very late, but soon progressed at a hectic pace. During this frantic period, a key issue for 1

Payn (1888), p. 62.

Professor Michael Erlhoff passed away on 1 May 2021. This abstract was prepared by the Editors. M. Erlhoff (B) Braunschweig University of Art/HBK, Braunschweig, Germany © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_11

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industrialization was overlooked—new product quality. Whereas previously there had been direct contact between craftsmen—as the manufacturer—and their respective clients regarding the requirements for a design and the function of products, industrialization created an abstract market with a largely anonymous and extremely diverse clientele. This demanded completely new conditions for design and had an impact on the quality of products.2 At the end of the nineteenth century, the German government realized that something had to be done and sent the architect and senior Prussian official Hermann Muthesius to England to investigate what made quality there, and a lack of it in Germany.3 ‘Industrial espionage’, so to speak. After a few years and many discussions, Hermann Muthesius returned to Germany. With government support he founded the Deutscher Werkbund in 1907, where artists, architects, craftspeople and companies would work together on new concepts and designs, as well as on their implementation for the market (at that time there was no such term as ‘design’, even internationally).4 The Deutscher Werkbund exists until today and was a successful model because it created an awareness of design, process and production. A great example is the work of the architect Peter Behrens, who designed factory buildings for the Austria Tabakwerke in Linz,5 as well as for the Continental Reifen in Hannover, but especially for the Allgemeine Elektricitäts-Gesellschaft (AEG). In the process, Peter Behrens developed the first concepts of what would later be called ‘corporate design’ and ‘corporate identity’. He not only conceived the entire graphic design including the constant improvement of the AEG logo, but also designed, for example, fans, electric kettles, lamps and many other things.6 These became archetypes of design. His concepts and realizations were far ahead of their time and set standards for the development of design worldwide. Next, in 1919, the renowned Bauhaus—a new type of school for design—was founded by Walter Gropius.7 The Bauhaus offered teaching in art, architecture, arts and crafts, and experimental forms such as light installation, photography, dance and theater, as well as metal and weaving workshops.8 The school’s departments would sometimes collaborate, and so a lot of new design emerged, especially in architecture, but also in the design of furniture, tableware, cutlery and typeface. The Bauhaus also developed many new perspectives on the nature of design, which were keenly observed internationally.

2

Ewing (2014). Muthesius (1979 [1904]). 4 Campbell (1978); Hass (2015). 5 Chrusciel (2014). 6 Buddensieg et al. (1993). 7 Bauhaus Archiv and Droste (2019); Ravenscroft (2019); Hollaender and Wiedemeyer (2019). 8 Nerdinger (2019). 3

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11.2 1933–1945 The situation changed after the National Socialists took power in Germany in 1933.9 The Bauhaus was closed by the State and officially these new forms of design were no longer considered acceptable.10 At this point, it must be noted that in Nazi-ruled Germany, as with Italian Fascism, investment in the development of industry was huge, at least behind the scenes. To illustrate this with an example—not unexpectedly, ever since the 1930s the two most successful countries in automotive construction and design have been Germany11 and Italy.12 This enormous success started with National Socialism and Fascism, respectively. Clandestinely, the Nazis prepared a technically advanced, creative and highly developed war industry and invested a great deal in it. Regrettably, with the help of former Bauhaus students and professors.13 But a detailed consideration and analysis of this period is beyond the scope of this chapter and requires a far more extensive text. Winfried Nerdinger’s excellent analysis is one of the most comprehensive investigations that shines light on the darkness of those cruel times.14 However, it is important to note that quite a few areas of design were supported during the time of National Socialism in Germany. In a frightening way, corporate design advanced, unfolded and prospered during Nazi time.15 This can be seen in subtle forms, such as in gestures, language, fashion and ornaments. However, ‘modern’ Nazi designs also included automotive designs such as Ferdinand Porsche’s design of the new ‘Volkswagen’, that is, ‘vehicle for the people’; and lamps and lights, such as those designed by Wilhelm Wagenfeld, to name just a few. Furthermore, the concept of ‘ergonomics’ was introduced by Ernst Neufert in his brutally authoritarian book Architects’ Data (first published in 1936).16 The book became a bestseller—unfortunately, not only in Germany—and is considered a standard work for architecture students until today! Even the former Bauhaus professor—Mies van der Rohe—was still trying to return from the United States of America (US) to Nazi Germany at the end of 1943.17

9

Sarkowicz (2004). Nerdinger (2019). 11 Reich (1990). 12 Moraglio (2017). 13 Tymkiw (2018). 14 Nerdinger (1999). 15 Sachsse (2006), pp. 147–201; Koop (2002). 16 First published in German in Neufert (1936), updated by Professor Johannes Kister on behalf of the Neufert Foundation and translated by David Sturge: Neufert and Neufert (2012). 17 Welch (1993). 10

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11.3 The 1950s and 1960s State support for design continued in a modified way after the founding of the Federal Republic of Germany in 1949, which produced an astonishing amount of quality German design. In 1953, in connection with the German Ministry of Economics, the Rat für Formgebung [German Design Council] was founded,18 incidentally under the direction of Mia Seeger, who had been active in design promotion during the Nazi era.19 The German Design Council annually awarded the important ‘Bundespreis Gute Form’ [‘Federal Prize for Good Design’] to companies. Similar institutions were established in some of the German federal states. This, at least, ensured that politicians remained informed about the relevance of design for the economy and that companies considered design important. In 1953, the Hochschule für Gestaltung [Ulm School of Design] was founded in Ulm by Inge Aicher-Scholl and Otl Aicher with strong financial support from German companies and, in particular, the US (the occupying power at the time).20 Clearly, the intention was to formulate design as a critique of authoritarian rules—as a social movement, in addition to its economic relevance. Internationally, relevant designers were appointed as lecturers, theory played a major role, and an interdisciplinary approach to design began to develop.21 In 1968, the Ulm School was closed, but until then and for many years after, it played a very important role in design in all areas of society.22 The School not only developed a new foundation for design, but also initiated a new form of collaboration with companies. Graduates of the School worked around the world, and set new standards for design. New industrial plants were designed as well as traffic systems, typeface, lighting, technical devices, household appliances and even furniture and tableware. Important graduates of the Ulm school—such as Nick Roericht, Gui Bonsiepe and Herbert Lindinger—later became professors at renowned universities.

11.4 Important Designers Let’s move on to important designers in Germany after 1950, first and foremost Dieter Rams. Rams had studied architecture and interior design, then worked at the office of Otto Apel in collaboration with the American architecture office Skidmore Owings & Merrill until he was hired in the mid-1950s by the young company, Braun AG, located near Frankfurt.23 In fact, this still quite small company initially recruited Rams as an architect to design new types of homes for its employees. This project 18

Rat für Formgebung [German Design Council] (2020). Seeger et al. (1961). 20 Lindinger (1991). 21 Müller (2014). 22 Spitz (2002). 23 Brandes (1990). 19

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did not proceed, and so he was taken on as the company’s designer, and this became a huge success. The first sensational product of Braun AG was a completely new ‘phono set’, that is, a combination of a radio and a record player. At that time, the devices that existed on the market were of a large size and very heavy, typically Neo-Biedermeier and made mostly of dark, heavy-looking wood. In contrast, Dieter Rams with the support of Hans Gugelot, a Professor at the Ulm school (who had already developed the famous slide carousel for the American company, Kodak), in 1956 designed a completely new type of radio-phono device. The famous ‘SK4’ was much more compact; the side panels were made of light wood, and the rest of a light varnished sheet metal casing; and on top of it, as a cover for the record player and the function keys, transparent Plexiglas. Transparent, reduced to the visibility of the function, very easy to handle, and provided with a completely new type of ‘station search’ and gray buttons for operation. This was so innovative and provocative that many radio stores did not dare to put the device in their shop windows, particularly because they were afraid that people would break the display window in anger—which occasionally happened. Certainly, this is an icon of design and fundamentally changed the design of such phono devices internationally. Braun AG manufactured innovative devices—also designed by Dieter Rams—in two other areas. Completely new electric shavers were created that were easy to use, easy to clean, very practical and very precise. Another great success. And then kitchen appliances, which have become the stuff of design mythology. The food processor ‘KM3’ from 1957 in white and light green—not too powerful looking, a mixing bowl combined with a metal engine encased in white plastic, on it a removable arm to which hooks could be attached to make the dough turn in the rotating mixing bowl. The arm for the dough hooks could be replaced by a tall container made of transparent plastic with a plastic lid, in which it was possible to mix fruit juices and drinks. Another completely new and ground-breaking design in terms of function, as well as handling and look and feel. Braun AG produced many other radios, kitchen appliances and shavers,24 all designed by Dieter Rams.25 It is interesting to note that, as an employee of Braun AG, Rams was not allowed to work for other companies, despite many invitations. The only exception was the Frankfurt-based furniture manufacturer Vitsoe, for which Rams successfully designed the ‘Regalsystem 606’ bookcase, armchairs and tables. Dieter Rams received numerous awards for his great design skills and products. He also taught design as a Professor at the University of Fine Arts in Hamburg, where he educated many young designers. Another notable German designer who was honored with many awards is Richard Sapper.26 Sapper taught as a professor at the Art Academy Stuttgart from the late 1980s, but lived in Milan, Italy, rather than in Germany from the 1960s. He designed mainly for Italian companies. He became famous in 1962 when he designed a portable 24

Werner (2014). Lovell (2011). 26 Brandes (1999). 25

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radio for the company Brionvega, which was very small and compact according to the standards of the time. A red metal housing with rounded edges; a metal handle that could be pulled out; and sensationally, after setting the station and volume, the radio could be folded up. The speaker continued to work in the folded state. Very easy to use and very attractive. Sapper always worked as a freelance designer for a number of companies, including Kartell, for which he designed furniture. However, his most famous design is the ‘Tizio’ desk lamp for Artemide in 1972 which has become a design icon. A low base on a mostly black base with a red switch, on it three parallel pairs of filigree metal rods, each moveable, and at the top a very flat light that can be dimmed. The ‘Tizio’ is easily rotatable and extremely mobile; thus, it can be moved in any direction on a desk. At the base, no cable is visible, and it was one of the first designs to use low voltage and halogen. Electricity is transmitted through the joints of the rods. The ‘Tizio’ can still be found on many desks around the world—in real life as well as in movies. Some years ago ‘Artemide’, the company producing the lamp, made an embarrassing mistake by transferring money to a leading German office magazine, because the ‘Tizio’ had so frequently featured on the desks of executives on the cover of the magazine. Initially, the lamp did not sell well, but after a few years it became a great sales success. The most commonly sold are in black, but there are versions in white as well as a floor lamp. Following this success, Sapper designed, among other things, the espresso maker ‘9090’ (1979), a water kettle and many other objects for the Italian company Alessi. IBM and many other companies became his clients. For German companies, however, he designed very little. In 1966, he designed a foldable telephone named ‘Grillo’ with Marco Zanuso for Siemens, and in the 1990s, a new public telephone booth for Deutsche Telekom. Sapper always demonstrated great ability with technology and produced excellent designs. Striking, elegant and at the same time always functional.27 The third significant designer in German industrial design after 1950 is Hartmut Esslinger. While still a student he founded his studio Esslinger Design in 1969, and as early as 1971 achieved public recognition, namely by designing the ‘Tribel’ shower head for Hansgrohe, the renowned German company. The power of the shower could be adjusted—as a water jet, spray or normal shower—without any effort. He also designed hi-fi and TV sets for the German company Wega—also successful with their very clean lines and great handling. Hartmut Esslinger renamed his office ‘frog design’, and later just ‘frog’ (an abbreviation of ‘Federal Republic of Germany’),28 and in 1986 moved the headquarters of his design studio to the newly burgeoning Silicon Valley in the US. There he was hired by Apple to design the second generation of their computers, including their handling and use.29 On the basis of the success of this design, frog went on

27

Olivares (2016). Brandes (1998). 29 Esslinger (2013). 28

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to develop multimedia applications for Apple, Samsung, Kodak, Siemens and many other companies. The German studio was never closed and Esslinger continued to work at different locations in a very complex way, but also designed, for example, the service counters at Lufthansa together with the corresponding services. Lighting design has always been a very popular field in design. Understandably, since light means enlightenment, illumination and transparency, it creates vistas in the darkness. Light installations are able to create or change a room and outdoor space, thereby constructing completely new visual worlds and impressions. It is not surprising then that, in the beginning, cinemas were called lichtspiele [light show]. A lot of designers were active in the field of lighting and lamp design, but one stood out—Ingo Maurer.30 A graphic designer by training, he soon changed profession and concentrated on lighting design. He created several lamps and lights, but his big breakthrough came in 1984 with the design of a very complex and thus completely novel low-voltage system. Simply pull two parallel wires through the room, which are connected to electricity and a corresponding transformer system. Another short wire with a halogen light attached to it is now thrown or laid over the other two wires in any position. And it lights up. It is easy to imagine that not only two parallel wires can be fixed somewhere in a room and, if necessary, over a corner, but additionally many wires can be placed crosswise on top of each other and arbitrarily equipped with more halogen lamps. In this way the light and lighting impression can be easily and constantly changed. Ingo Maurer’s invention is a manifestation of the competence of design, namely to simplify something that is very complicated, practically, and to make it accessible and easy to use.31 Ingo Maurer designed many other and extremely novel lamps, a lot of which were manufactured in his studio. His work led to designing complex lighting installations for public and private clients. For example, Ingo Maurer designed dome-shaped light objects for a Munich subway station; and for the Japanese fashion designer Issey Miyake, he designed an installation for his fashion show in Paris (1999) and a lighting object for his London showroom. He produced various other installations and objects. When talking about lighting design, you can’t go past Ingo Maurer.32 Now a brief look at graphic and communication design in Germany. This design field is almost overwhelming. There are countless designs of books, magazines, posters, advertising, logos, as well as corporate design—the design of the overall presence and appearance of a company. The number of designers and design studios involved in this type of work is, realistically speaking, unbelievably large. Two designers from more recent times will be highlighted. The first one is Kurt Weidemann, who holistically designed and supervised graphic design for a number

30

Vegesack and Eisenbrand (2003). Dessecker and Koschembar (2008). 32 Dessecker and Koschembar (2008). 31

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of organizations, including Mercedes-Benz and Deutsche Bahn (a German railway company).33 Just as important and even more relevant is Erik Spiekermann, the famous typographer and typeface designer.34 In 1979, he founded the multi-disciplinary design consultancy MetaDesign.35 From the very beginning, the studio was not interested in the design of individual objects, but instead understood design in its great complexity. MetaDesign became famous for designing orientation and signage systems for airports (e.g., Duesseldorf) and local transport (Berlin), as well as corporate design for Audi, Bosch, Volkswagen and Deutsche Bahn. Spiekermann designed well-known fonts and typefaces such as ‘FF Meta’, ‘ITC Officina’ and ‘LoType’, among others. In 2001, he redesigned the weekly newspaper The Economist. His most innovative development, however, was FontShop—founded in 1988, the first independent company for the manufacture and distribution of digital fonts.36 Erik Spiekermann also set up an office in London and San Francisco. After a few years he left MetaDesign, and later founded United Designers which has been operating under the name ‘Edenspiekermann’ since 2009. The extent to which design had changed over the course of the decades became apparent after 1980, when it gradually started to become more relevant for companies and the general public. Awareness of design has particularly increased in the area of ecology and the environment.37 Designers noticed that there was and still is a great deal to be done in order to avoid even more human-made catastrophes and disasters.38 One designer who was concerned about this issue very early is Günter Horntrich and his studio Yellow Design, which has expanded to Yellow Too and Yellow Lab. The studios provide important research on material and energy savings as well as on reusability and recyclable material and objects. Equally relevant is consideration of the repair of broken devices so that they are not immediately thrown away. The challenge for Yellow Design (and other design offices that focus on environmental issues) is to convince companies of the value of this work, particularly when the cost (at first glance) may be higher than normal. Since the 1980s, Yellow Design has provided such research and services, designing both technical devices as well as pens and tableware for Rosenthal. Another significant area of industrial production relates to mobility and transportation, a broad and increasingly important design sector.39 The automotive industry has always been a very important industry in Germany. This industry usually has in-house design departments, but occasionally engages external designers, such as the Italian

33

Brandes (1996); Weidemann (2000). Erler (2014). 35 Spiekermann (2013). 36 Spiekermann and Middendorp (2006). 37 Miller et al. (2009); Walker (2006). 38 Boehnert (2018). 39 Mitchell et al. (2010). 34

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designer Giorgio Giugiaro for the design of the Volkswagen ‘Golf’.40 This project involved both the production as well as all elements of the car—safety; driving characteristics; driver support; aerodynamics; and even sound design, that is, the sound of the engine, the tires, the doors and the interior. Furthermore, public transport, in particular rail transport, has become a focus of design. One of the most renowned German transportation designers is Alexander Neumeister who ran offices in Munich and Rio de Janeiro.41 He designed express trains as well as regional and metro trains. In the early 1990s, the design of the ‘Shinkansen 500’ emerged from his cooperation with Hitachi. His first assignment in Germany in 1982 was for the predecessor of the Intercity Express (ICE). Thereafter, Neumeister was in charge of the design of many generations of the ICE. The central and recognizable features of these trains are the continuous red window strip on the white trains and the streamlined front section. Neumeister also designed trams and subways for the city of Munich, regional trains and hotel trains as well as the interiors of the Munich tramway. An extremely smart-looking and compact design. However, in the early 1980s, something totally different happened in design—a rebellion by young designers and design students.42 These design rebels opposed the arbitrariness and comfort that characterized social life at that time. Everything seemed to function only to be commercialized and this had become extremely boring. Life was no longer alive. The rebellion went public with an exhibition in Hamburg in 1986: ‘Gefuehlscollagen—Wohnen von Sinnen’ [‘Emotional Collages—To Live Out of One’s Mind’], organized by Claudia Schneider-Esleben and Rouli Lecatsa.43 The exhibition presented provocative and strange objects designed and constructed by young designers. First of all, it was almost exclusively about living and demonstrated with new pieces of furniture that—in contrast to the general state of society—living should be an activity, an action. Most people perceive domestic living as a passive state and not as a living action, despite the word ‘living’ being a verb. In order to re-establish liveliness, objects were designed that not only looked strange but that required people to actively re-learn how to cope and deal with them, and to critically question the concept that the ‘form’ of furniture had to follow an alleged ‘function’. In fact, the objects were intended to provide a new and unfamiliar experience for the audience.44 The ‘New German Design’ movement emerged in Berlin, Hamburg, Cologne, Duesseldorf and Frankfurt (its hotspots), but at the same time similar movements started in France, Spain, England and, of course, in Italy. One of the Berlin protagonists was the group ‘Bellefast’, founded by Andreas Brandolini and Joachim Stanitzek.45 They designed an espresso table that—typical of this rebellious design—is covered with colorful laminate and which causes some optical confusion; and chairs 40

Molineri (2015). Buck (1999). 42 Albus and Borngräber (1989). 43 Albus et al. (1986). 44 Hauffe (1994). 45 Brandolini (1990). 41

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that at first glance do not seem comfortable and that can only be used in unconventional and imaginative ways. Another young Berlin designer who worked under the pseudonym ‘Stiletto’ designed one of the icons of this movement—a supermarket shopping cart slightly modified at the front to transform it into a mobile armchair— called ‘Consumer’s Rest’. Around the same time, the now famous Israeli designer Ron Arad was working in Berlin, where he created the ‘Rover Chair’—now another design icon. In Hamburg, Thomas Bley in particular stood out with his furniture ensembles, such as a table with a round marble top and a blue metal frame underneath. Again in Hamburg, Harald Borkenhagen designed his fabulous chair that stands on its shadow and looks as if it is floating without a firm base. In Frankfurt, it was Volker Albus with his often very ironic objects such as a rolling stool made from rubber in the shape of a gigantic stone called ‘cobble’. Two other young Frankfurt designers—Uwe Fischer and Achim Heine—also appeared on the scene under their group name ‘Ginbande’. Their successful tablebench combination ‘Tabula Rasa’ (1987) was acquired by the company Vitra. ‘Tabula Rasa’ appeared suitable for small spaces. However, its key feature was that it was fully extendible to an impressive length by means of a folding grille mechanism. In the small town of Krefeld, the group ‘Kunstflug’ [‘Art Flight’] was active, and in Cologne you could spot one of the most important young design collectives called ‘Pentagon’,46 which included Gerd Arens, Wolfgang Laubersheimer, Meyer Voggenreiter, Reinhard Müller and Ralph Sommer. Evidently, the group name ironically alludes to both the geometric figure (five corners) and the US headquarters of the Department of Defense. Their designs include completely new low-voltage lights made of steel with small plastic bodies within which a halogen light is fixed and which can be attached anywhere on a steel rod with built-in magnets. The most famous and successful object is the ‘tensioned shelf’ designed by Wolfgang Laubersheimer. Everything made from steel, eight shelves, height 2.20 m, width 0.32 m only. If you think about this in practical terms, it is immediately clear that a shelf with these dimensions is not at all stable and can easily fall over. The young designer prevented this by attaching a very stable steel rope to one side of the shelf from top to bottom and thus stretching it so the shelf was bent and achieved perfect stability by shifting the center of gravity. All these design concepts definitely changed the future of furniture design, even of mainstream companies. In 1987, at the worlds’ largest art exhibition, ‘documenta 8’, a number of works from these young rebels were presented in a design section for the first time.47 It is worth noting that quite a few later became professors at design universities: Brandolini (Bellefast) and Hullmann (Kunstflug) at the university Saarbrücken; Achim Heine at the University of the Arts Berlin; Uwe Fischer in Nuremberg; Volker Albus in Karlsruhe; Heiko Bartels (Kunstflug) at Bauhaus University Weimar; Thomas Bley first in Phoenix, Arizona and then in Cologne; and Wolfgang Laubersheimer in Cologne. This set a precedent. 46 47

Hesse (2020). Schneckenburger (1987).

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Since the 2000s, one successor who had obviously learned from the 1980s context is one of the few German designers who attracts attention by name: Konstantin Grcic.48 His best-known designs are, on the one hand, a lamp named ‘Mayday’ (2000) made of plastic that looks like a bag with a hook on top, and a very long electric cable that can be rolled up on the bag and easily hung anywhere, even outdoors. On the other hand, his ‘Chair One’ (‘Magis’) (2002) created a new technique by transforming the seat of a chair from a flat structure into a three-dimensional shape. Since the beginning of the new century, design concepts and structures have changed in the following ways. Large companies in Germany continued to work independently with their own in-house design departments, but also took note of new design processes and an increase in public awareness of the relevance of design. This, however, also means that design ‘disappears’ somehow within these companies. Siemens, with its complex company structure that produces everything from technical to household appliances; Bosch; the upmarket manufacturer for household appliances, Miele; the luminaire manufacturer, Erco; as well as office furniture producers such as Wilkhahn and Vitra: all increasingly rely on and benefit from the field of design.

11.5 New Design Perspectives But once again, design in Germany changed, albeit on the basis of what had happened up to that point. In 1991, the Köln International School of Design (KISD) was founded at the Cologne University of Technology, with completely new subject areas—each led by professors—such as service design, high-tech design, materials science, audiovisual media, interface design, environmental design, economics and design, and, for the first time internationally, gender and design. In addition, great emphasis was placed on research and design theory. Furthermore, the school adopted a completely interdisciplinary approach—the students were required to study all subject areas which were deeply interconnected. It was not possible to specialize in just one field. KISD opened up new and ground-breaking perspectives for further understanding and for creating advanced design. After all, in society as a whole, as well as in business and in design itself, it must be understood that everything that people do and everything that happens is linked to design—in both positive and negative ways. Every physical and digital object—including weapons, as well as those related to transport, communication and medicine, entertainment, climate challenges and the entirety of everyday life—are created by and through design. There is another reason why great importance should attach to design research: design is always related to use, therefore it is essential to scientifically observe and analyze how and why people use objects. The founding of the KISD was initially met with a lack of confidence, both in terms of individual subject areas (such as service design, which had not been 48

Nollert and Sammlung (2015).

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discussed at all until then, but is now a central field of design work), and because of its interdisciplinary approach. Since then, many of these concepts have been adopted internationally by other design universities. Above all, the KISD approach anticipated what is happening in design today in an exemplary way. It is no longer a question of individual names or stars, but rather many studios and teams working in complex ways and providing holistic design approaches such as consulting, research and design services across all areas—everything from a single source. Nowadays, design networks are often much more important than individual star designers when it comes to important social, cultural and economic developments. Open to future perspectives and efficient in innovative advancements. And this is not only the case in Germany. Many of these networks and studios have long been working internationally. It will be exciting to see what the future will hold for design. The only thing that could be predicted is the fact that national and individual designs will increasingly take a back seat.

References Albus V, Feith M, Lecatsa R, Schepers W, Schneider-Esleben C (eds) (1986) Gefühlscollagen. Wohnen von Sinnen. DuMont, Cologne Albus V, Borngräber C (1989) Design-Bilanz—Neues Deutsches Design der 80er Jahre in Objekten, Bildern, Daten und Texten (cat.). DuMont, Cologne Bauhaus Archiv, Droste M (2019) Bauhaus. 100 jahre bauhaus. Taschen, Cologne Boehnert J (2018) Design, Ecology, Politics. Towards the Ecocene. Bloomsbury Academic, London/New York Brandes U (1990) Dieter Rams, Designer. Die leise Ordnung der Dinge. Steild, Goettingen Brandes U (1996) Kurt Weidemann. Das Nachbild auf der Netzhaut. Steidl, Goettingen Brandes U (1998) Hartmut Esslinger & Frogdesign. Steidl, Goettingen Brandes U (1999) Richard Sapper. Werkzeuge fuer das Leben. Steidl, Goettingen Brandolini A (1990) Der Haken. Herausgeber und Verlag Martin Schmitz, Kassel, Texte über Design Buck A (ed) (1999) Alexander Neumeister. Designermonographien/Designer Monographs 8. form Frankfurt a.M. Buddensieg T, Rogge H, Heidecker G, Wilhelm K, Bohle S, Neumeyer F (1993) Industriekultur: Peter Behrend und die AEG 1907–1914. Mann Verlag, Berlin, Gebr Campbell J (1978) The German Werkbund: The Politics of Reform in the Applied Arts. Princeton University Press, Princeton Chrusciel G (2014) Die Austria Tabakwerke. Ein Industriegebaeude mit Geschichte und Zukunft im Vergleich. AV Akademikerverlag, Riga Dessecker B, Koschembar F (eds) (2008) Ingo Maurer: Designing with Light. Prestel, Munich Erler J (2014) Hello I am Erik: Erik Spiekermann—Typographer, Designer, Entrepreneur. gestalten, Berlin Esslinger H (2013) Keep it Simple: The Early Years of Apple. Arnoldsche Art Publishers, Stuttgart Ewing J (2014): A Brief History of Made in Germany. In: Ewing J (2014) Germany’s Economic Renaissance. Palgrave Macmillan, New York. https://doi.org/10.1057/9781137340542_1 Hass A (2015) Deutscher Werkbund. In: Graphic Communications Open Textbook Collective (ed) Graphic Design and Print Production Fundamentals. https://ecampusontario.pressbooks.pub/gra phicdesign/chapter/chapter-3/. Accessed 25 Oct 2021

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Hauffe T (1994) Fantasie und Härte. Das ‘Neue Deutsche Design’ der achtziger Jahre. WerkbundArchiv, vol 25. Anabas, Giessen Hesse P (2020) Design Gruppe Pentagon (cat.). MAKK, Cologne Hollaender F, Wiedemeyer N (2019) Original Bauhaus. Bauhaus-Archiv/Museum fuer Gestaltung, Berlin Koop A (2002) Das visuelle Erscheinungsbild der Nationalsozialisten 1925–1945. Schule für Gestaltung, Ravensburg Lindinger H (1991) Ulm Design: The Morality of Objects. Hochschule fuer Gestaltung 1953–1968. MIT Press, Cambridge MA Lovell SA (2011) Dieter Rams: As Little Design as Possible. Phaidon, London Miller A, Lupton E, Grundberg A, Vitale A (2009) Design for a Living World. The University of Chicago Press, Chicago Mitchell WJ, Borroni-Bird, CE, Burns LD (2010) Reinventing the Automobile. Personal Urban Mobility for the 21st Century. The MIT Press, Cambridge MA/London Molineri G (2015) Giorgetto Giugiaro: The Genius of Design. Rizzoli, Milan Moraglio M (2017) Driving Modernity. Technology, Experts, Politics, and Fascist Motorways, 1922–1943. Berghahn Books, New York/Oxford Müller J (ed) (2014) A5/06. Lars Müller Publishers, Zurich, HfG Ulm Muthesius H (1979) [1904] The English House, single vol edn. Granada Publishing, Frogmore Nerdinger W (1999) Bauhaus-Moderne im Nationalsozialismus. Prestel, Munich Nerdinger W (2019) Das Bauhaus. Werkstatt der Moderne. C.H. Beck, Munich Neufert E (1936) Bauentwurfslehre. Ullstein, Berlin Neufert E, Neufert P (2012) Architects’ Data, 4th edn. Wiley-Blackwell, Chichester Nollert A, Sammlung DN (eds) (2015) Konstantin Grcic—The Good. The Bad. The Ugly. Walther König, Cologne Olivares JO (2016) Richard Sapper. Phaidon, London Payn H (1888) The Merchandise Mark Act 1887. Steven & Sons, London Rat für Formgebung [German Design Council] (2020) 67 years of Design Culture. The History of the German Design Council. https://www.german-design-council.de/en/about/history/. Accessed 25 Oct 2021 Ravenscroft T (2019) BAUHAUS Architecture and Design from A to Z. Dezeen. https://www.dez een.com/2019/04/12/bauhaus-architecture-design-school-a-z/. Accessed 25 March 2021 Reich S (1990) Volkswagen and the State. In: The Fruits of Fascism. Cornell University Press Ithaca, NY Sachsse R (2006) Zur Kontinuität von Bauhaus und Moderne im NS-Staat. In: Boehnigk V, Stamp J (eds) (2006) Die Moderne im Nationalsozialismus. University Press, Bonn Sarkowicz H (ed) (2004) Hitlers Künstler. Insel, Frankfurt a.M./Leipzig Schneckenburger M (ed) (1987) documenta 8. Weber & Wedemeyer, Kassel Seeger M, Hirzel S, Poeverlein R (1961) Deutsche Warenkunde. Verlag Gerd Hatje, Stuttgart Spiekermann E (2013) Stop Stealing Sheep & Find Out How Type Works. Adobe Press, Berkeley Spiekermann E, Middendorp J (2006) Made with FontFont: Type for Independent Minds. BIS Publishers, Amsterdam Spitz R (2002) hfg ulm: A View behind the Foreground. Axel Menges, Fellbach Tymkiw M (2018) Nazi Exhibition Design and Modernism. University of Minnesota Press, Minneapolis Vegesack A, Eisenbrand J (eds) (2003) Ingo Maurer: Light—Reaching for the Moon. Vitra Design Museum, Weil am Rhein Walker S (2006) Sustainable by Design. Explorations in Theory and Practice. Earthscan, London/Sterling VA Weidemann K (2000) worte: auf die Waage gelegt, auf die schippe genommen. Hatje Cantz, Ostfildern-Ruit

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Welch CR (1993) Mies van der Rohe’s Compromise with the Nazis. E-Pub Weimar University. https://e-pub.uni-weimar.de/opus4/frontdoor/deliver/index/docId/1145/file/Celina_ R_Welch_pdfa.pdf. Accessed 25 Oct 2021 Werner M (2014) Braun History. In Depth. https://www.braun.de/assets/de-de/pdf/braun-history. pdf. Accessed 25 Oct 2021

Professor Dr. Michael Erlhoff (27 May 1946–1 May 2021) was a design expert, author, business consultant and exhibition curator. He completed his PhD in German literature, art history and sociology at the Leibniz University of Hanover. Together with Uta Brandes, he published the magazine Zweitschrift; was editor-in-chief of the art magazine K; and published the Kurt Schwitters Almanach. He was a director of the German Design Council from 1986 to 1990, and a member of the advisory board for documenta 8 from 1985 to 1987. In 1991, he was appointed founding dean of the Köln International School of Design, Technical University Köln, where he was professor of design history and theory until 2013. In 2016, he was appointed honorary professor at Braunschweig University of Art.

Chapter 12

History of Design Protection in Germany Christoph Rademacher

Abstract Schloss Ringberg, a castle in Southern Germany used as a convention site by the Max-Planck Society, might be the spiritual birthplace of contemporary European design law. It is a bit difficult to escape the irony here, considering the rather distant relationship that German legislators and courts have had with design protection over the last 150 years. This chapter follows the development of German design law from establishment of the first design protection law in 1876 to the current day. It also focuses on the overlapping protection of product design provided by copyright law.

12.1 Design Protection During the Nineteenth Century Early signs of design protection in Germany can be traced back to the early nineteenth century. When the first German copyright law was enacted in 1837, the statute provided for copyright protection for literary works and fine art, including sculptures and other types of three-dimensional art. It explicitly withheld protection for industrial designs.1 The driving force behind withholding copyright protection, despite requests for such protection by certain artists, was that the Prussian Ministry of Trade wanted to avoid any application of copyright protection in the industrial sphere.2 This exclusion of copyright protection for visual art applied in manufacturing processes was an early sign of the difficult relationship between applied art and German copyright law over the course of almost 200 years. 1 Prussian Copyright Act of 1837, s. 25: ‘The use of art works as models for products made by hand, factories, and craftsmen is allowed’. 2 In the beginning of the nineteenth century, many parts of German industry were suffering due to a multitude of structural challenges and changes. The Ministry was hoping that the prospering publishing industry could support the development of other industries and therefore wanted to, at least implicitly, encourage such other industries to freely use available designs to facilitate industrial development. See Wadle et al. (1996), p. 565.

C. Rademacher (B) School of Law, Waseda University, Tokyo, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_12

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The overall reception of German craftmanship and manufacturing did not improve during the decades following the enactment of the 1837 Prussian Copyright Act.3 Rather, the continued poor quality of German craftmanship remained evident, for example, during the first world fairs in the second half of the nineteenth century. After the unification of Germany in 1871, representatives from both the manufacturing and design industries reinforced their requests to introduce reliable protection of industrial designs to promote the quality of German industrial production.4 The momentum to establish a design protection system also benefitted from the integration of the French region of Alsace-Lorraine into the German empire, given that France already had a system of design protection before 1870.5 The result of the efforts by artists and industry representatives was the establishment of a system of three separate pieces of copyright-centered legislation, namely the Act on Copyright in Visual Art Works,6 the Act on Copyright in Aesthetic Models,7 and the Act on the Protection of Photography Against Unlawful Imitation,8 which were submitted to the Parliament on 1 November 1875 and which were enacted in January 1876. The Act on Copyright in Aesthetic Models [Geschmacksmuster] provided for protection of registered aesthetic models. To qualify for protection, the underlying design or model had to be novel and original [eigentümlich].9 The novel shape of the protected design had to be determined by considerations not related to the shape’s technical functionality.10 To obtain protection, the creator of the design had to register it in the commercial register maintained by the court at the place of establishment of the registrant,11 and had to submit a prototype or an illustration of the model or the model itself prior to putting products that were manufactured according to the design into circulation.12 The maximum initial term of protection was three years, beginning 3

See Chapter 11 by Professor Michael Erlhoff, at 11.1 ‘The Beginnings: Late Nineteenth Century– 1920s’. 4 The Parliament of the Prussia-dominated North German Federation had passed a revised Copyright Act in 1870. While copyright protection in designs and other works that could be industrially used were discussed prior to enactment, the legislator decided to remove all references to design protection and postpone the discussion on the appropriate level of design protection to a later day. 5 See Chapter 14 by Professor Tsukasa Aso at 14.4 ‘1806 Act for Industrial Design’. 6 Gesetz betreffend das Urheberrecht an Werken der bildenden Künste [Act on Copyright in Visual Art Works], enacted on 9 Jan 1876 (Act on Copyright in Visual Art Works). 7 Gesetz betreffend das Urheberrecht an Mustern und Modellen [Act on Copyright in Aesthetic Models of 1876], enacted on 11 Jan 1876 (Act on Copyright in Aesthetic Models). The Act on Copyright in Aesthetic Models of 1876 remained in force for more than 100 years, see at 12.4 below. 8 Gesetz, betreffend den Schutz der Photographieen gegen unbefugte Nachbildung [Act on the Protection of Photography Against Unlawful Imitation], enacted on 10 Jan 1876. 9 Act on Copyright in Aesthetic Models, s. 1. 10 Reichsoberhandelsgericht [Reich Higher Commercial Court], decision of 3 Sept 1878, published in ROGH 24, 109. To fill the gap between aesthetic model protection and patent law, the legislator passed the Utility Model Act in 1891. 11 Bestimmungen über die Führung des Musterregisters [Regulations on the Maintenance of the Model Register], issued on 9 Feb 1876, s. 1. 12 Act on Copyright in Aesthetic Models, s. 7.

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with the date of application.13 The term of the protection could subsequently be extended, with a maximum term of up to 15 years.14 During the initial three-year term of protection, the owner of the design registration could choose whether or not the design should be made public or should remain under seal.15 The design had to be made public at the latest three years after the application.16 The registration entitled the right holder to prevent third parties from putting imitations of the aesthetic model into circulation.17 The statute clarified that the protection would also be effective against imitations that were • manufactured using a different production method or that were intended for a different industry than the original design;18 and • manufactured in different sizes or colors than the original, or that differed from the original in such insubstantial ways that such differences would not be noticeable other than by careful observation.19 The protection of registered aesthetic models was supplemented with a certain level of copyright protection under the 1876 Act on Copyright in Visual Art Works. This Act provided for a slight expansion with respect to the range of protectable subject matter compared to earlier copyright.20 That said, the owner of a copyright in a two-dimensional drawing could not invoke copyright protection under the Act on Copyright in Visual Art Works to prevent the creation of a three-dimensional model or product.21 Further, courts and commentators were quick to introduce a prevalence theory that aimed to exclude useful art from protection under the Act on Copyright in Visual Art Works. For example, the Reich Court excluded copyright protection for a bronze grandfather clock and for two bronze jardinières created by an artist.22 In its decision, it followed the court-appointed expert opinion that had argued that the objects were commercially useful products with decorative figurative and ornamental features that would not render the product a work of art.23 A prominent academic supporter of the prevalence theory was Professor Josef Kohler, who argued 13

Act on Copyright in Aesthetic Models, s. 8. Act on Copyright in Aesthetic Models, s. 8(2). 15 Act on Copyright in Aesthetic Models, s. 9(3). 16 Act on Copyright in Aesthetic Models, s. 9(4). If the design owner chose a shorter protection term, the aesthetic model had to be made public after the expiration of such shorter term. 17 Act on Copyright in Aesthetic Models, s. 5. 18 Act on Copyright in Aesthetic Models, s. 5(1). 19 Act on Copyright in Aesthetic Models, s. 5(2). Section 6(2), however, excluded protection for twodimensional surface designs against three-dimensional imitations, as well as for three-dimensional models against two-dimensional imitations. 20 Section 1 of the Act on Copyright in Visual Art Works provided for an exclusive right of reproduction for any kind of work of visual art. 21 Act on Copyright in Visual Art Works, s. 6(2). 22 Reichsgericht [Reich Court of Justice], decision of 12 May 1909, Case No. 250/08, published in RGZ 71, 145–152. 23 Reichsgericht [Reich Court of Justice], decision of 12 May 1909, Case No. 250/08, published in RGZ 71, 148. 14

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that utilitarian products with strong artistic originality should only be eligible for copyright protection if the artistic purpose clearly outweighed the useful purpose.24

12.2 The 1907 Art Copyright Act Advancements across multiple fields of technology resulted in calls for broader copyright reform towards the turn of the century. Requests for a revised protection of literary works and music-related art were answered with the enactment of the Literature and Sound Art Copyright Act in 1901.25 At the same time, artist associations started to increasingly criticize the lack of copyright protection for applied art under German law.26 In 1900, a two-third majority of the members of the German Association for the Protection of Intellectual Property recommended the introduction of copyright protection for all types of artistic works, irrespective of their purpose or their method of creation.27 In November of 1905, the Government presented a draft of a new Visual Arts and Photography Copyright Act (which would become the 1907 Art Copyright Act). Section 2 of the draft Act provided for a definition of visual art that included ‘commercial works, as long as they pursued artistic purposes’. In the subsequent legislative discussion, the term ‘commercial works’ was gradually used synonymously with applied art. The discussion concluded with the passing of a slightly revised s. 2, having the following wording: The products of the arts and crafts fall under works of fine arts. The same shall apply to buildings, insofar as they pursue artistic purposes. Designs for arts and crafts products and for buildings of the kind referred to in subsection 1 shall also be deemed to be works of visual art.28

A number of commentators welcomed the new copyright protection of ‘designs for arts and crafts’. As the legislator had removed the requirement of a pursuit of ‘artistic purposes’ from the 1905 draft statute, these commentators argued that going forward every utilitarian object that could be protected as a registered aesthetic model would also qualify for copyright protection.29 Case law, however, approached the concept of copyright protection of applied art with more reservation. In 1909, the Reich Court held that applied art would have

24

Kohler (1897), 6. Gesetz betreffend das Urheberrecht an Werken der Literatur und der Tonkunst [Act on Copyright in Works of Literature and Sound Art], enacted on 19 June 1901. 26 Diefenbach (1906), p. 86. 27 Osterrieth (1904), p. 190. 28 Gesetz betreffend das Urheberrecht an Werken der bildenden Künste und der Photographie [Act on Copyright in Works of Visual Arts and Photography], enacted on 9 Jan 1907 (Art Copyright Act). 29 Osterrieth (1908), p. 223, Riezler (1909), p. 459. 25

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to satisfy higher originality requirements than fine art.30 In the case at issue which involved the design of decals for ceramic objects, the Court found that the decals did satisfy such higher requirements.31 The notion of higher originality requirements was further developed by the Reich Court in a 1911 decision on ‘Fraktur’ typeface, which the Court found to not have satisfied copyright’s originality requirements. In the decision, the Court re-embraced the prevalence theory that had been established under the former law and held that the prevailing aesthetic purpose of applied art would need to have a surplus of originality similar to that of visual art in order to qualify for copyright protection.32 The 1911 ‘Fraktur typeface’ decision was cited heavily as long-standing case law until 2013. In the decade between the end of the First World War and the beginning of the Nazi era, however, its influence was apparently only limited, as both the Reich Court and lower courts handed down a string of decisions in which they found industrial design to satisfy the requirements for copyright protection. Reich Court case law examples include the design for a set of WMF utensils,33 car advertisement announcements,34 and a simple Mart Stam steel chair.35 The copyright reform of 1907 had recognized the advancement of technology and a resulting need to adjust the law. In 1913, the German Government published drafts to fundamentally overhaul and revise the German Patent Act, the German Utility Model Act and the German Trademark Act. Despite several calls to also reform the system of aesthetic model protection that was considered similarly outdated,36 the only law that was not touched in the reform package was the 1876 Act on Copyright in Aesthetic Models, an indication of the comparatively low priority that the Government assigned to design protection. The Government had to allocate resources to 30

Reichsgericht [Reich Court of Justice], decision of 10 Nov 1909, Case No. 502/08, published in RGZ 72, 162–165. 31 Reichsgericht [Reich Court of Justice], decision of 10 Nov 1909, Case No. 502/08, published in RGZ 72, 162–165. 32 Reichsgericht [Reich Court of Justice], decision of 10 Jun 1911, Case No. 133/10, published in RGZ 76, 339–345. 33 Reichsgericht [Reich Court of Justice], decision of 17 Apr 1929, Case No. 2/29, published in RGZ 124, 72. 34 Reichsgericht [Reich Court of Justice], decision of 30 Oct 1926, Case No. 55/26, published in RGZ 115, 180–185. 35 Reichsgericht [Reich Court of Justice], decision of 1 June 1932, Case No. 75/32, published in GRUR (1932), 892–897. In the Mart Stam chair decision, the Court had held that the main features of the simple chair that warranted copyright protection were the ‘strict, consistent lines that avoided any redundant part and that embodied modern objectivity in the most concise form with the simplest means’. The Court further reasoned that a ‘form of art is considered particularly valuable if its purpose is a good and simple expression. For a product of the arts and crafts it is sufficient that a certain aesthetic form is given to an object of daily life, which offers a pleasing impression to the eye’. Neither the Supreme Court nor the lower courts had required a higher degree of originality or of individuality for copyright protection of applied art. 36 See, e.g., Giesecke (1902), p. 78, who called for the substantive examination of aesthetic model applications. See also Plauen (1907), pp. 285, 307, who called for a centralized register with better public access to aesthetic model applications and to registered aesthetic models.

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revise other intellectual property (IP) laws at regular intervals throughout the early twentieth century due to revisions of international conventions to which Germany was a party. Given the lack of substantive or procedural international harmonization of design laws, no such pressure existed in the area of design protection. Further, there were also no recorded concerted demands from industry groups that would have triggered legislative reform during this time.37

12.3 Design Protection Before and During the Nazi Era Design in Germany during the late 1920s was strongly influenced by the Bauhaus school established by Walter Gropius.38 A 1933 Reich Court decision regarding copyright protection of a door knob that was developed by Walter Gropius became effectively another turning point with respect to copyright protection of applied art. The Court, citing the 1911 Fraktur typeface decision,39 found that the simplified forms that were characteristic of Bauhaus design would not qualify for copyright protection.40 It explained that ‘the puritanical renunciation of any ornamental feature’ would be ‘an expression of modern artistic feeling’. Nonetheless, the Court decided that such design would lack the originality necessary for copyright protection. The decision marked a sudden shift of the Reich Court’s attitude toward the copyright protection of applied art that was more in line with the art ideology during the Nazi era.41 The Nazi leadership strongly repudiated modern or abstract art that was famously themed as ‘degenerate art’.42 Thus, it was very much within the ideological school of thought of the upcoming Nazi Government that Bauhaus design should not be gratified with copyright protection. Throughout the Nazi era, the Reich Court’s civil senate followed the line that it had developed in the door knob decision and took a consistently rigid position with respect to copyright protection of modern and simplistic forms of applied art. Examples of designs that were denied copyright protection by the Reich Court in the following years include a bracelet

37

Kelbel (1985), p. 670. Chapter 11 by Professor Michael Erlhoff, at 11.1 ‘The Beginnings: Late Nineteenth Century– 1920s’ and 11.2 ‘1933–1945’. 39 Reichsgericht [Reich Court of Justice], decision of 10 Jun 1911, Case No. 133/10, published in RGZ 76, 339–345. 40 Reichsgericht [Reich Court of Justice], decision of 14 Jan 1933, Case No. I 149/32, published in GRUR (1933), 323. 41 The decision stands in stark contrast to the steel chair decision (Reichsgericht [Reich Court of Justice], decision of 1 June 1932, Case No. 75/32, published in GRUR (1932)) that was handed down by the same senate of the same Court, albeit with a slightly different composition of judges, only a few months earlier. 42 Chapter 11 by Professor Michael Erlhoff, at 11.2 ‘1933–1945’. 38

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made of galalith stones,43 furniture patterns,44 and an airplane-shaped pin that had been designed for a German airshow.45 In 1939, the Reich Court of Justice manifested its deviation from pre-Nazi case law when it denied copyright protection for a modern and simplistic set of utensils that had been widely praised by domestic and international industry journals for its innovative and good design.46 In 1940, the academy of German law proposed a set of revisions to the 1876 Act on Copyright in Aesthetic Models that showed further signs of the restrictive design protection policies. The proposal suggested that a designer who applied for aesthetic model registration should lose any right for copyright protection for the same design.47 Further, the proposal aimed to introduce heightened originality requirements for registered aesthetic models.48 The proposal was, however, not implemented, probably due to the effects of the ongoing Second World War.49

12.4 Post-War Design and Copyright Protection After the establishment of the Federal Republic of Germany, the jurisdiction for aesthetic model and copyright law at the Supreme Court level was assigned to the first senate of the newly-established Bundesgerichtshof [Federal Court of Justice]. One of the most influential members of the first senate was Judge Fritz Lindenmaier, who had been a judge at the senate of the Reich Court of Justice that had spearheaded the more restrictive case law with respect to copyright protection for applied art during the Nazi era.50 The Federal Court of Justice apparently saw little reason to deviate from the case law principles that the Reich Court of Justice had established. In its first decision that touched upon copyright protection of product design, the Federal Court of Justice held that useful commercial product designs could be protected by copyright if they ‘constitute original creations, the aesthetic content of which has reached such a degree that they can—according to prevailing opinion—be considered

43

Reichsgericht [Reich Court of Justice], decision of 2 Dec 1933, Case No. I 116/33, published in RGZ 142, 341–348. In the decision, the Supreme Court acknowledged that it was deviating from previous case law and explicitly mentioned the WMF utensils design case (Reichsgericht [Reich Court of Justice], decision of 17 Apr 1929, Case No. 2/29, published in RGZ 124) as a case where the copyright protection provided had been ‘exceedingly broad’. 44 Reichsgericht [Reich Court of Justice], decision of 12 June 1937, Case No. I 250/36, published in RGZ 155, 199–208. 45 Reichsgericht [Reich Court of Justice], decision of 29 Mar 1938, Case No. I 162/37. 46 Reichsgericht [Reich Court of Justice], decision of 23 Sept 1939, Case No. 42/1939, published in GRUR (1940), 59–60. 47 New Draft of an Aesthetic Model Act, presented by the Expert Committee for Competition and Trademark Law of the Academy of German Law, s. 12 in Academy of German Law (1940), 243. 48 Zentek (2016), p. 244. 49 Zentek (2016), p. 244. 50 Zentek (2016), pp. 261–263.

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as art’.51 In its reasoning, the Federal Court of Justice explicitly referred to Reich Court case law such as the door knob case and the 1940 utensils case that had denied copyright protection.52 The Federal Court of Justice continued to gradually build on such restrictive foundations in the additional relevant case law that it developed through the 1950s. In the 1956 ‘Europapost’ decision regarding copyright protection of a newspaper cover font, the Court held that commercial objects would only be copyright protectable if they satisfied the copyright requirements for visual art.53 The Court also held that the boundary between the protection of art and model protection should be ‘not too low’; copyright protection should be awarded only upon the satisfaction of ‘rigid standards’.54 In the decision, the Court heavily relied on the 1911 Fraktur typeface decision of the Reich Court of Justice as the fundamentally relevant decision,55 and tacitly ignored the case law developments that had occurred in the pre-Nazi time between 1911 and 1933. In subsequent decisions, the Federal Court of Justice applied the requirements developed for type font design in the ‘Europapost’ decision56 to works of architecture57 and to three-dimensional works.58 During the 1950s, the German Government started preparation for the combining of the 1907 Art Copyright Act and the 1901 Literature and Sound Art Copyright Act into one integrated statute. In March 1954, the Ministry of Justice published the first draft bill for an integrated Copyright Act. Section 1 of the draft provided for a list of works that would be subject to copyright protection. The list included ‘works of visual art, including works of architecture and applied arts’.59 Any kind of work, including works of applied art, would have to be the author’s ‘own intellectual creation’ to qualify for copyright protection. The requirement of ‘own intellectual creation’, which had not been a requirement under the 1907 Art Copyright Act, was retained in the second Ministry draft released in 51

Bundesgerichtshof [Federal Court of Justice], decision of 14 Dec 1954, Case No. I ZR 65/53, published in GRUR (1955), 445. 52 Bundesgerichtshof [Federal Court of Justice], decision of 14 Dec 1954, Case No. I ZR 65/53, published in GRUR (1955), 445. 53 Bundesgerichtshof [Federal Court of Justice], decision of 27 Nov 1956, Case No. I ZR 57/55, published in GRUR (1957), 291. 54 Bundesgerichtshof [Federal Court of Justice], decision of 27 Nov 1956, Case No. I ZR 57/55, published in GRUR (1957), 291. 55 Bundesgerichtshof [Federal Court of Justice], decision of 27 Nov 1956, Case No. I ZR 57/55, published in GRUR (1957), 292. 56 See, for another early post-war decision on the copyright protection of type font design: Bundesgerichtshof [Federal Court of Justice], decision of 30 May 1958, Case No. I ZR 21/57. Here, the Court held that type font design would usually not qualify for copyright protection given that ‘the purpose of use [of type fonts] requires simple, clear, easily readable lines, which are largely determined by the given letter forms. Therefore, there is little scope for artistic design’. 57 Bundesgerichtshof [Federal Court of Justice], decision of 29 Mar 1957, Case No. I ZR 236/55, published in GRUR (1957), 391. 58 Bundesgerichtshof [Federal Court of Justice], decision of 9 Dec 1958, Case No. I ZR 112/57, published in GRUR (1959), 289. 59 1954 Copyright Act Draft Bill, s. 1(2)(iii); cited in Zentek (2016), p. 295.

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1959 and in the Government draft released in 1962. The Government draft memorandum explained that adding the requirement for works to be an ‘own intellectual creation’ would ‘not be a revision of pre-exiting substantive law, but would only reflect the copyright requirements imposed by case law and requested by academic commentators’.60 Copyright protection of applied art was discussed again by the Legal Committee of the Parliament, which questioned the necessity of any kind of copyright protection for applied art. In its deliberations, the Committee recognized the ‘socio-political importance of design, which makes it desirable not to hinder industry in its efforts to design its products in an aesthetically pleasing manner by providing too extensive protection for works of applied art’.61 Rather than relying on copyright protection, the parliamentary Committee favored ‘a new unitary system of protection for industrial shapes that should incorporate the registered aesthetic model system’.62 The Committee did, however, also realize that such a new unitary protection system for industrial shapes and design would require a separate legislative process. Therefore, it concluded that until such a unitary system was established, applied art would remain as a copyright-protectable work category.63 The Parliament approved the draft bill based on the parliamentary Committee report and enacted the new German Copyright Act on 9 September 1965. Section 2 of the Copyright Act, which has not been amended since the enactment of the law, provides for protection for works of applied art, as long as the work is the author’s own intellectual creation.64 Case law continued to impose rigid requirements on the copyright protection of applied art, holding, for example, in 1969 that only those designs that would carry higher aesthetic values could qualify for copyright protection.65 In the meantime, the revision of the system of registered aesthetic model protection continued to evolve slowly. As in 1876, an aesthetic model right applicant had to file an application at the local commercial register, making it virtually impossible to conduct a comprehensive search of previously registered aesthetic models. Repeated calls to establish a central register, for example, with the Patent Office were ignored by the legislator.66 While courts recognized that the complex renewal process was not in the best interest of aesthetic model right holders, the process was left unchanged 60

Bundestag-Drucksache [Federal Parliament Print Matter] No. IV/270, B 141/16464 (23 Mar 1962), p. 38. 61 Bundestag-Drucksache [Federal Parliament Print Matter] No. IV/3401, B 141/16481 (14 May 1965), p. 2. 62 Bundestag-Drucksache [Federal Parliament Print Matter] No. IV/3401, B 141/16481 (14 May 1965), p. 2. 63 Bundestag-Drucksache [Federal Parliament Print Matter] No. IV/3401, B 141/16481 (14 May 1965), p. 2. 64 Copyright Act, ss 2(1)(iv), 2(2). 65 See, e.g., Bundesgerichtshof [Federal Court of Justice], decision of 21 May 1969, Case No. I ZR 42/67, published in GRUR (1972), 38, 39. 66 Gerstenberg (1966), p. 473; Reimer (1971), p. 349; Lehmpfuh (1974), p. 707.

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for over 100 years.67 Even fundamental substantive questions such as the standard for novelty remained somewhat ambiguous: while courts favored an ‘objective’ novelty standard that required aesthetic models to be novel in the eye of the relevant local industrial community,68 commentators called for the introduction of a ‘subjective’ novelty standard that would only require novelty in the eye of the designer.69 The discussion on novelty was largely decided by the Federal Court of Justice’s ‘ruffled hood’ decision in 1968, in which the Court held that an aesthetic model would only be novel if ‘the aesthetic elements that constitute its originality are neither known to the domestic trade circles at the time of filing the application, nor could such elements have been known if reasonable attention had been paid to designs existing in neighboring countries or in countries relevant for the particular industry’.70 Deciding the discussion on the applicable standard of novelty was arguably an important factor in extending the life of the law that was otherwise widely perceived as outdated until the 1980s.71 The Ministry of Justice finally decided to put the spotlight on industrial design protection when it included a review of design protection in a raft of legislative actions that it introduced as part of a program against product piracy in 1985.72 The first Ministry bill for a fundamental revision of the Act on Copyright in Aesthetic Models was released in August 1985,73 and the first Government bill followed on 31 January 1986.74 After a relatively uncontroversial, albeit somewhat hurried, review by the Bundesrat, the Parliament passed the new law on 16 October 1986. The new Aesthetic Model Act of 1986 provided for the following institutional, formal, and substantive amendments:75 • the previously decentralized deposit of industrial designs at the local commercial registries was replaced with a centralized register maintained by the German Patent Office;76 67

See, e.g., Oberlandesgericht Düsseldorf [Higher Regional Court of Düsseldorf], Decision of 7 Sept 1961, Case No. 3 W 235/61, published in GRUR (1962), 380, 381; Reimer (1971), p. 351. 68 Bundesgerichtshof [Federal Court of Justice], decision of 3 Mar 1958, Case No. I ZR 8/57, published in GRUR (1958), 509. 69 Hans Furler (1956), 49; Henssler (1957), 8; Nicolini (1963), 407. 70 Bundesgerichtshof [Federal Court of Justice], decision of 8 May 1968, Case No. I ZR 67/65, published in GRUR (1969), 90, 95. In the case at issue, the Court found that the United States of America (US) would generally be a relevant country that designers could be expected to observe. 71 For an account of industrial design protection in Germany in the 1970s in English see Katzenberger (1975), 304. For the detailed proposal for legislative reform prepared under the guidance of the Max-Planck Institute, see Gerstenberg (1978), 26. 72 See Kretschmer (1985), 862. 73 For an overview report on the preparatory stages and hearings regarding the amendment, see GRUR (1985), 1033. 74 Bundesrats-Drucksache [Federal Council Print Matter] No. 62/86 (31 Jan 1986). 75 For a discussion of the 1986 law revision in English see Loschelder (1988), 622. 76 [Geschmacksmustergesetz] Aesthetic Model Act, enacted on 16 Oct 1986 (Aesthetic Model Act), s. 8.

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• under the old aesthetic model law, applicants could deposit one or multiple photographs/drawings or an actual model/product that would embody the protected aesthetic model. The new law largely abolished the option to register an aesthetic model based on the submission of a physical model;77 • the initial term of protection was extended to five years from the date of application, and the maximum term of protection was extended to 20 years;78 • the new law introduced a six-month grace period for disclosure that would not destroy novelty;79 • the German Patent Office was granted the authority to cancel registered aesthetic models upon expiration of the term or upon consent of the right holder. The law did not introduce any substantive or formal examination requirements. The Patent Office was only entitled to ex officio designate the class for which an aesthetic model could be registered.80

12.5 European Harmonization of Design Protection and Its Impact on Copyright Law The completion of the overhaul of German aesthetic model law almost coincided with the beginning of the creation of a harmonized and uniform system of design protection throughout Europe. One of the trigger events was the critical observation of the European Court of Justice in its 1988 CICRA/Régie Renault81 and Volvo/Veng82 decisions that design protection would rely exclusively on national law, which could present an impediment to European market integration. The first significant reaction to these decisions was a discussion draft of a European design regulation that was presented during a workshop held by the Max-Planck Institute for Foreign and International Patent, Copyright and Competition Law at Schloss Ringberg in 1990.83 The MaxPlanck Institute draft formed the basis for the European Commission’s 1991 Green Paper on the Legal Protection of Industrial Design.84 Based on the feedback and discussion of the Green Paper, the European Commission commenced work both on a European directive that would aim to substantively harmonize national design laws and on a European regulation that would provide for a new European design right. 77

Only in case of surface design, the applicant was still entitled to submit an actual model, see Aesthetic Model Act, s. 12. 78 Aesthetic Model Act, s. 9. 79 Aesthetic Model Act, s. 7a. 80 Aesthetic Model Act, s. 10(1). 81 C-53/87, Consorzio italiano della componentistica di ricambio per autoveicoli and Maxicar v Régie nationale des usines Renault ECLI:EU:C:1988:472. 82 C-238/87, AB Volvo v Erik Veng (UK) Ltd. ECLI:EU:C:1988:477. 83 See Ritscher (1990), p. 559. 84 Commission of the European Communities (1991).

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The EU Design Directive was enacted on 13 October 199885 and gave the Member States an implementation period of roughly three years.86 The German Government was not able to meet the implementation deadline and revised the Aesthetic Model Act only in 2004. In the meantime, the EU Design Regulation was enacted on 12 December 2001.87 The 2004 revision to the Aesthetic Model Act that implemented the EU Design Directive brought a number of significant substantive and procedural changes to German national aesthetic model law. While previous German aesthetic model laws could be seen as a subcategory of copyright law, the implementation of the new panEuropean ‘Design Approach’ that was first introduced in the Max-Planck Institute draft changed the conceptual position of design protection in Germany. Under the former law, a designer would obtain protection for a registered aesthetic model upon submitting the registration at the German Patent Office. Under the revised Aesthetic Model Act, protection would commence only upon the Patent Office completing the registration.88 The revised law clarified that the Patent Office would be entrusted with performing a formal examination of the aesthetic model application; if the application contained formal errors, the Patent Office had to reject the application.89 The old law did not contain any explicit definition of the key term ‘aesthetic model’. Case law had developed an understanding that an aesthetic model was ‘any kind of configuration that is intended and suitable to appeal to the viewer’s sense of taste’.90 The revised law contained, for the first time, an explicit definition of an aesthetic model as a ‘two-dimensional or three-dimensional appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation’.91 This very broad new definition was based on a new understanding of design being a marketing instrument rather than an aesthetic expression. The new law codified the substantive requirements for aesthetic model protection, that is, novelty and individual character. An aesthetic model would be novel ‘if no identical aesthetic model was disclosed prior to the date of filing of the application’.92 The revised statute also provided that aesthetic models would ‘be deemed to be identical if their features differ only in immaterial details’.93 The codified requirements for novelty were substantively the same as the requirements under previous case law. 85

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, (1998) OJ L 289/28 (EU Design Directive). 86 EU Design Directive, Art. 19. 87 COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1–24 (EU Design Regulation). 88 Aesthetic Model Act, s. 27(1). 89 Aesthetic Model Act, s. 16. 90 Bundesgerichtshof [Federal Court of Justice], decision of 19 Dec 1979, Case No. I ZR 130/77, published in GRUR (1980), 225. 91 Aesthetic Model Act, s. 1(1). 92 Aesthetic Model Act, s. 2(2). 93 Aesthetic Model Act, s. 2(2).

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The second substantive requirement, originality [Eigentümlichkeit], was replaced with individual character [Eigenart]. The new statute provided that an aesthetic model would ‘have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any aesthetic model which has been disclosed prior to the date of filing of the application. In assessing individual character, the degree of freedom of the designer in developing the model must be taken into consideration’.94 While the immediate practical effect of the revised terminology was arguably rather limited, academic commentators understood the amendment to be at least a symbolic step away from the traditional German copyright approach.95 The 2004 revisions extended the maximum term of protection of registered aesthetic models from 20 to 25 years,96 and extended the grace period during which disclosure would not destroy novelty from six months to one year.97 The deposit of physical models that was still possible in limited circumstances under the 1986 Aesthetic Model Act, was abolished.98 Further and importantly, the amendment introduced a systematic ‘upgrade’ of registered aesthetic model rights from a right that protected the right holder against imitation—conceptually like a copyright—to a fully-fledged industrial property right that enabled the right holder to exclude third parties from any kind of non-authorized third-party manufacture and sale, irrespective of whether or not the infringer was aware of the registration or not.99 To balance such an upgrade, the amendment also introduced a non-transferrable prior-use right to protect the interests of good-faith designers who might have developed a design but failed to make it available to the public and/or to apply for registration.100 The repositioning of registered aesthetic models as industrial property rights led to a re-emergence of the ancient discussion regarding copyright protection of industrial designs as applied art. The Federal Court of Justice had continued to endorse the higher originality standard for applied art.101 With its 1994 ‘Silver Thistle’ decision in which the Court denied copyright protection for an earring, the Court had firmly established the step theory [Stufentheorie], according to which copyright law 94

Aesthetic Model Act, s. 2(3). See, e.g., Wandtke and Ohst (2005), p. 95. The explanatory memorandum of the German Government accompanying the Government Draft stated that the required degree of originality [Eigentümlichkeit] as it had been developed under previous German case law and the requirement of individual character [Eigenart] could be practically the same, though this would depend on how future European and national case law would develop the term ‘individual character’. See Government Draft of 28 May 2003, Bundestags-Drucksache [Federal Parliament Print Matter] No. 15/1075 (28 May 2003), p. 30. 96 Aesthetic Model Act, s. 27(2). 97 Aesthetic Model Act, s. 6. 98 Bundestags-Drucksache [Federal Parliament Print Matter] No. 15/1075 (28 May 2003), p. 31. 99 Aesthetic Model Act, s. 38(1). 100 Aesthetic Model Act, s. 41. 101 Bundesgerichtshof [Federal Court of Justice], decision of 19 Jan 1979, Case No. I ZR 166/76, English translation published in IIC (1980), 116; Bundesgerichtshof [Federal Court of Justice], decision of 27 Jan 1983, Case No. I ZR 177/80, published in GRUR (1983), 377. 95

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and aesthetic model law would cover overlapping subject matter, but with copyright law protection standing at a higher step of an imaginary set of stairs than aesthetic model right protection. Thus, copyright protection would be available for applied art only if the applied art would have a level of creativity significantly higher than that required for mere aesthetic model protection and effectively also higher than that originally required for copyright protection of fine art.102 The Federal Constitution Court confirmed the constitutionality of maintaining different originality requirements for fine art and for applied art in its 2005 ‘Running Eye’ decision.103 While case law had firmly embraced the concept of the step theory for applied art copyright protection, commentators started to point out that the repositioning of German design law in the course of the implementation of the harmonized European design law questioned the validity of such step theory: if European law would systematically direct that design law is no longer a younger sibling to copyright law, why maintain a hierarchy of different originality requirements?104 The Federal Court of Justice gradually accepted such logic. In its 2011 ‘Rope Jungle Gym’ decision, the Court still avoided addressing the originality threshold for the design of a playground jungle gym made of ropes.105 Instead, it denied copyright protection by holding that the aesthetics of the design were solely determined due to technical reasons, thus making it impossible for the design to qualify as a creation of individual character.106 Two years later, the Federal Court of Justice finally corrected its course and abandoned the case law on the required originally of applied art that the Court and its predecessor Court had shaped since the beginning of the Nazi era and, in part, even before. In the 2013 ‘Birthday Train’ decision, the Court departed from the step theory and held that the originality of applied art should be assessed no differently than the originality of non-utilitarian fine art or of literary or musical creations.107 The Birthday Train decision was widely regarded as a landmark decision in German copyright and design law that made copyright protection available to a much greater number of product designs. Commentators also warned against an overprotection of product design which might stifle new design innovation and a potential wave of copyright infringement litigation by allegedly undercompensated product designers.108 That wave is yet to be seen, and lower courts have made sure to curtail the effect of the Birthday Train decision by narrowly construing the scope 102

Bundesgerichtshof [Federal Court of Justice], decision of 22 June 1995, Case No. I ZR 119/93, English translation published in IIC (1997), 140. For a discussion of the step theory see, e.g., Kur (1998), p. 358. 103 Bundesverfassungsgericht [Federal Constitution Court], decision of 26 Jan 2005, Case No. 1 BvR 157/02, published in GRUR (2005), 410. 104 See, e.g., Nordemann and Heise (2001), p. 128; Loewenheim (2004), p. 765. 105 Bundesgerichtshof [Federal Court of Justice], decision of 12 May 2011, Case No. I ZR 53/10, published in GRUR (2021), 58. 106 Bundesgerichtshof [Federal Court of Justice], decision of 12 May 2011, Case No. I ZR 53/10, published in GRUR (2021), 60. 107 Bundesgerichtshof [Federal Court of Justice], decision of 13 Nov 2013, Case No. I ZR 143/12, English summary translation published in IIC (2014), 831. 108 See, e.g., Hoeren (2014), pp. 337–338.

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of the protection of applied art and by continuing to only protect creative designs that are not solely determined due to technical reasons.109 This historical review of design protection under German law should end with mentioning another amendment that does not have a significant substantive impact on design protection, but constitutes mostly a terminological update: three days after the Birthday Train decision in 2013, the Aesthetic Model Act became the Design Act.110 The revised law finally replaced the nineteenth century term ‘registered aesthetic model’ [eingetragenes Geschmacksmuster] with the much more colloquially-used and modern term ‘registered design’.

References Academy of German Law (1940) New Draft of an Aesthetic Model Act, presented by the Expert Committee for Competition and Trademark Law in the Academy of German Law, 22 Feb 1939. GRUR 1940:243–252 Diefenbach F (1906) Bemerkungen und Wünsche zu dem Entwurf eines neuen Kunstschutzgesetzes [Comments and wishes on the draft of a new art protection law]. GRUR 1906:85–100 Furler H (1956) Die Neuheit im Geschmacksmusterrecht [The Novelty in Aesthetic Model Law]. GRUR 1956:49–51 Gerstenberg E (1966) Moderne Industrieform und ihr Recht [Modern Industrial Form and its Law]. GRUR 1966:471–474 Gerstenberg E (1978) Zum Entwurf für ein neues Musterschutzgesetz [About the Draft of a New Model Protection Law]. GRUR 1978:26–31 Giesecke W (1902) Zur Reform des Geschmacksmusterrechts: Die Frage der Vorprüfung [About the Reform of Aesthetic Model Law: Asking for a Preliminary Examination]. GRUR 1902:78–82 Henssler E (1957) Geschmacksmuster- und Urheberschutz für die industrielle Formgestaltung [Aesthetic Model and Copyright Protection for Industrial Design]. GRUR 1957:8–16 Hoeren T (2014) Anmerkung zur Geburtstagszug-Entscheidung [Notes Regarding the Birthday Train decision]. MMR 2014:337–338 Katzenberger P (1975) Protection of Industrial Designs in Germany. IIC 1975:304–319 Kelbel G (1985) Zur Verbesserung des Geschmacksmustergesetzes [Regarding the Improvement of the Design Law]. GRUR 1985:669–676 Kohler J (1897) Kunstwerk und Geschmacksmuster [Artistic Work and Design]. Archiv Für Civilistische Praxis 87:1–39 Kretschmer F (1985) Aktuelle Berichte: Bundesregierung zur Markenpiraterie [Current Reports: Federal Government on Trademark Piracy]. GRUR 1985:862 Kur A (1998) Die Zukunft des Designschutzes in Europa: Musterrecht, Urheberrecht, Wettbewerbsrecht [The Future of Design Protection in Europe: Design Law, Copyright Law, Competition Law]. GRUR Int. (1998), pp 353–359 Lehmpfuh R-S (1974) Die Niederlegung eines Geschmacksmusters [The Deposit of an Aesthetic Model]. GRUR 1974:703–707

109

For an overview of post-2013 case law, see Verweyen (2019), pp. 293–300. Gesetz zur Modernisierung des Geschmacksmustergesetzes sowie zur Änderung der Regelungen über die Bekanntmachungen zum Ausstellungsschutz [Act on the Modernization of the Aesthetic Model Law and on the Amendment of the Regulations on Notices for Exhibition Protection], enacted on 16 Oct 2013, published in BGBl (Federal Law Gazette) I 13, 3799–3812.

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Loewenheim U (2004) Höhere Schutzuntergrenze des Urheberrechts bei Werken der angewandten Kunst? [Higher Copyright Originality Requirements for Works of Applied Art?]. GRUR Int. 2004:765–767 Loschelder M (1988) The New German Model and Design Act. IIC 1988:622–638 Nicolini K (1963) Die Neuheit im Geschmacksmusterrecht [The Novelty in Aesthetic Model Law]. GRUR 1963:407–413 Nordemann A, Heise F-C (2001) Urheberrechtlicher Schutz für Designleistungen in Deutschland und auf europäischer Ebene [Copyright Protection for Design Accomplishments in Germany and at the European Level]. ZUM 2001:128–146 Osterrieth A (1904) Bemerkungen zum Entwurf eines Gesetzes, betreffend das Urheberrecht an Werken der bildenden Künste und der Photographie [Comments on the Draft of a Law Concerning Copyright in Works of Fine Arts and Photography]. GRUR 1904:189–258 Osterrieth A (1908) Lehrbuch des gewerblichen Rechtsschutzes [Textbook of Industrial Property Protection]. Deichert Plauen D (1907) Die Geheimhaltung der Geschmacksmuster und die Zentralisierung der Musterhinsterlegung [The Secrecy of Aesthetic Models and the Centralization of Aesthetic Model Filing: An Inquiry into Model Protection], pp 285–300, 307–334 Reimer D (1971) Ist der heutige Rechtsschutz für die moderne Formgebung in der industriellen Gesellschaft noch zeitgemäß?—Ein Beitrag zur Reform des Geschmacksmusterrechts [Is the Current Legal Protection for Modern Design in Industrial Society Still Up to Date?—A Contribution to the Reform of Aesthetic Model Law]. GRUR 1971:342–352 Riezler E (1909) Urheber- und Erfinderrecht [Copyright and Inventors Law]. De Gruyter Ritscher M (1990) Auf dem Wege zu einem europäischen Musterrecht [Towards an European Design Law]. GRUR Int. 1990:559–586 Verweyen U (2019) Gebrauchskunst nach BGH ‘Seilzirkus’und ‘Geburtstagszug’ [Useful Art after BGH decisions ‘Rope Jungle Gym’ and ‘Birthday Train’]. WRP 2019:293–300 Wadle E (1996) Geistiges Eigentum, Bausteine zur Rechtsgeschichte [Intellectual Property: Building Blocks of Legal History], vol. I. VCH Wandtke A, Ohst C (2005) Zur Reform des deutschen Geschmacksmustergesetzes [On the Reform of the German Aesthetic Model Act]. GRUR Int 2005:91–102 Zentek S (2016) Geschichte des Designschutzes [History of Design Protection]. Lelesken

Christoph Rademacher is a professor at Waseda University School of Law in Tokyo. He teaches graduate and undergraduate level courses in the field of business law and IP law, in both Japanese and English. His publications include the treatise Patent Enforcement in the US, Germany, and Japan (Oxford University Press, 2015) as a co-author and the interdisciplinary volumes Japanese Design Law and Practice (Wolters Kluwer, 2021) as a co-editor with Professor Aso. Professor Rademacher is admitted as an attorney-at-law in New York and as a solicitor in the Republic of Ireland. He obtained his first degree in business and law and his doctorate degree in law from the University of Siegen, Germany, and an LLM from Stanford Law School.

Chapter 13

History and Current Status of Design in France Catherine Geel

Abstract Throughout the last century, France exported luxury products, and recently, the know-how of designers who have little local infrastructure to produce modern or contemporary design. It is an interesting case of a nation where l’art de vivre [the art of living] has been central for four centuries, but where the practice of design, in the contemporary sense of the word, has more recently established itself as essential to the art of living. In France, the doctrine of the ‘uniqueness of art’ and the legal protection of the creator are strong, but the recognition of the role of the latter only slowly took hold in the twentieth century. This chapter explores these developments in parallel with the changes in law described by Professor Tsukasa Aso in Chapter 14. The chapter shows that France can be defined as a nation that exploits, sometimes paradoxically, the French ‘spirit’— the one the eighteenth century defined as ‘pretty’, but also the one that established itself as political, social, critical and structural from the 1950s to the 1970s. The practice of design in France can be statutory and programmatic, industrial and critical. Designers regularly oppose the canons of a historical and patrimonial elegance and create counter-models that reorient them and allow their designs to acquire a position in the national cultural landscape.

13.1 Introduction It is a strange but real fact that there is no French text that sets out the history of French furniture design in the twentieth century. Perhaps this is because furniture in France is not just an economic sector, but a historical adventure and an epic that is still firmly divided into two: decorative arts and furniture on the one hand, and design and industrial design on the other. Furnishings are not only about interiors, but also about what goes into them: pieces of furniture, textiles and hangings, lighting, tableware and objets d’art. However, France has with fashion, for example, a sector that has been able to evolve continuously. It has adopted or invented, from one era to the next, the modes C. Geel (B) École normale supérieure de Paris-Saclay, Gif-sur-Yvette, France © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_13

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of production by organizing the conservation of know-how and by maintaining the image of the couturier (even in the time of art directors) thanks to the management of the consumption of its image and the protection of designs and models.1 Nevertheless, the insurmountable rupture between the decorative arts and design—that is, the creation of rational, mass produced forms which came into play with modernity— remains a problem, which in France, clashes with its history of forms. We sometimes fiercely reject the art of the engineer as opposed to that of the decorator. The French way of entering the twentieth century says it clearly. It was with the figure of the artist-decorator, not the model designer, that France presented itself at the international competitions and exhibitions of the twentieth century. If the origin of these exhibitions is French, with the ‘Expositions des produits de l’industrie nationale’ [‘Exhibitions of the Products of the National Industry’],2 their international and recurrent conception is English from 1851. The 1925 ‘International Exhibition of Modern Decorative and Industrial Arts’ in Paris was a nodal point. It was not the modern designers (Le Corbusier-Perriand-Jeanneret who designed the ‘Pavillon de l’Esprit nouveau’, or Constantin Melnikov who designed the Soviet pavilion), now famous, who demanded the attention of the public or national press, but the offerings of elegant ensembliers [designers and artist-decorators]—JacquesÉmile Ruhlmann, Francis Jourdain, Henri Rapin, René Lalique, Jacques Adnet, Jean Dunand and Robert Mallet-Stevens—who represented a ‘French refinement’. This traditionalism is not that of the conservation of ideas or forms, but rather a social conformism due to the eruptive and revolutionary character of the upheavals in the organization of French society.3 In the national psyche, these revolutions were sometimes brutal revisions of lifestyle, that is, ways of appearing and categorizing oneself on the social scale. Technical progress, better health and hygiene, or the upheaval of manners were the signs of a renegotiation of social structures, and a reorganization of French international influence seems to have been at stake each time. Design and its practices came to France in the twentieth century to both exert an action that corroded certain conceptions of the art of living and to reinforce a certain joy of design, a discussion, within a curious division between theory and practice. Several elements came together: reflections on the evolution of the interior environment were combined with a search for the definition of beauty in the useful arts;4 the enthusiasm of industrial or artisanal manufacturers maintained the commercial spirit of the manufacturing maison; the action of the State gave rise to a Ministry of Culture (1959) under the leadership of the writer André Malraux and allowed for a policy of support which slowly increased. This complex structure was established 1

In this chapter, two-dimensional designs are referred to as ‘design’ [dessin] and three-dimensional designs are referred to as ‘model’ [‘modèle’], in accordance with French usage. 2 Established by François de Neufchateau, Minister of the Interior at the time of the Directoire in 1798, these exhibitions were intended to sell, and to revive and encourage trade in, objects (sold untaxed) from the royal factories which had been damaged by the Revolution. They were also accompanied by festivities. 3 See Elias (2005). A perfect explanation of the conservative forces at work in France. 4 Souriau (1904).

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within the codified tradition of a sometimes rigid art of living and the concerns of social change. France is conservative, it has a lot of heritage and is proud of it, it takes care of its image. Whether this heritage is old regime, Art Nouveau, Art Deco or contemporary. It defends it.

13.2 Introductory and Taxonomic Remarks 13.2.1 A Non-normative Vocabulary A style in France is never only, as is often believed, the reflection of a reign, royal taste or a regime. The designation of furniture by the king’s proper name dates from the nineteenth century and the class organization that saw, before the Revolution, the triumph of bourgeois tastes in the imitation of the styles of the aristocracy is indeed a symptom that confirms The Theory of the Leisure Class of Thorstein Veblen (1899). This is why, when Le Corbusier shifted the notion of style from its corollaries of period or geographical location to the idea of a tool,5 he suddenly shifted the entire French cultural arsenal. Some terminological clarifications are then necessary. French taxonomy is both complex and non-normative. The term ‘decorative arts’, which appeared around 1870, is classically used to designate the design and manufacture of objects and furniture that took place after the creation of the academie (Académie royale de peinture et de sculpture, from 1648), and which separated the liberal arts from the arts. It revalorized this sector of activity. The term artisanat d’art [craft through art] would be a better equivalent, not exactly reducible to Arts and Crafts; ‘industrial art’ is too broad for the sectors that are our subject; and the ‘applied arts’ refer to the activities and processes of production since the nineteenth century and the establishment of educational paths by the State. The term ‘industrial design’ was introduced in the 1960s and replaced ‘industrial aesthetics’.6 Finally, it was only very late, around 1970 to 1980, that the word ‘design’ in French became commonplace. It often remains, in an inadequate way, an adjective. But a leading French critic, Christine Colin, proposed in the 2000s a more interesting taxonomy: ‘design’ is a mode of conception, ‘decorative art’ a field of intervention, and industrial creation a mode of production.7 The three concepts—approached from three different perspectives—could also usefully help describe legal categories of protection for designers, designs and models. While ‘intellectual property’ includes industrial property and literary and artistic property, ‘industrial property’ is more specifically concerned with the protection and enhancement of inventions, 5

Le Corbusier (2006). Le Bouef (2006), p. 42. 7 Colin (2010), p. 9. 6

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innovations and creations. In principle, these are acquired by registration (for patents, designs or trademarks) and sometimes by use (some trade names). The different twentieth-century developments in the law do not specifically call into question this French characteristic of the théorie de l’unité de l’art [theory of the Unity of Art] which can be translated as ‘art is one whatever its manifestations’.8 Finally, the expression ‘artisanat d’art’ is still used in France today, and we could add the term ‘métiers d’art’.9 The latter is the result of two elements. It is a cultural approach to the conservation of intangible know-how, such as the artisanal gestures (including techniques) of skilled workers or craftsmen in manufacturing traditions. It is also a commercial and economic attempt to thwart counterfeiting activities, not only in form, but in the ways of doing and producing. In France, the defense of heritage and economic strategy are never far apart.

13.3 Exporting: France, a Trading Nation (1902–1925) Indeed, reacting to the English approach to the International Exhibitions of 1889 and 1900, France established itself as a commercial nation and found ways to make effective use of its past in the decorative arts, around the production of luxury goods.10 Energetic organization and a developed sense of display and space enabled it to create a material culture of consumption through the development and imposition of a ‘taste’, which a historian such as Nikolaus Pevsner already saw as a retreat from or the abandonment of a Colbertist industrialist aim.11

13.3.1 Image Policy: Spreading French Luxury While the decorative arts remained central, fashion and furniture design imposed a modern vision in which materials and style were linked to a representation, particularly of women, that allowed for the fusion of the individual and national image.12 Fashion shows, social events of ‘elegance’ and maisons de couture were also visual markers. These events were highly organized, centralized in the places of Parisian high society and disseminated throughout the world by newspapers. The Cabinet des modes was the first press title, and in the eighteenth and nineteenth centuries, titles

8

Pouillet (1911). The Institut National Métiers describes the 281 crafts in 16 areas. See Institut National Métiers. 281 métiers. https://www.institut-metiersdart.org/metiers-art/fiches-metiers. Accessed 25 Oct 2021. 10 Silverman (1992). 11 Pevsner (1948). 12 Tiersetn (2001). See also Evans and Breward (2005). 9

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devoted to fashion multiplied.13 The Journal des dames et des modes was the first magazine with a large circulation to include engravings. In the following century, the Gazette du bon ton and Vogue appeared on newsstands. They were mainly, but not exclusively, aimed at women, and some gave pride of place to men’s clothing, such as, at different times, Le Magasin des modes nouvelles, françaises et anglaises, L’Homme du monde and Monsieur. These publications also offered a few pages on the interior design of either ‘beautiful’,14 or ‘modern’ homes.15 The world of fashion is not exempt from a penchant for interior decoration—Paul Poiret created the ‘Atelier Martine’ after a visit to Josef Hoffman, and Jeanne Lanvin had her hôtel particulier decorated by Armand-Albert Rateau. Most often relying on illustration and then photography, fashion journals spread the Parisian taste to Europe and America. The imprint of the illustration and the sketch echoed the art of the portrait, the outfit, the pose. The allure or ‘the chic’ of silhouettes and the details of cuts and materials were dissected and analyzed in words. These may remind us of Muybridge or the chronophotographs of ÉtienneJules Marey (1889), but they are above all the subliminal vehicle of the art of living. The parading and slow moving carriages of elegant women on the Champs Elysées or on the racetracks were organized for this purpose. The ‘mechanical smile’ of the ‘try-on girls’ who would change their dress thirty times in a day is noted by such chroniclers in 1910, just as sales figures were established per model and their ‘chicness’ established in relation to what they ‘make sell’.16 The organization of scientific work in certain houses was in place by 1925 and was part of the modern aesthetic, but even more so, the symbolic representation of the type of modern industrial production that haute couture defended itself against but also resorted to.17

13.3.2 Modern Means: From the Small Silver-Plated Metal Spoon to the Advertising Front Tableware houses in France also adopted new means of production: electroplating, for example, from the Napoleonic era. Major pieces such as surtouts [table tops] were ordered by Napoleon III and the imperial ministries from Christofle,18 which 13

See Galica for over 70 fashion press titles. Gallica. Press de mode. https://gallica.bnf.fr/html/ und/presse-et-revues/presse-de-mode?mode=desktop. Accessed 25 Oct 2021. 14 See Gallica. Press de mode. https://gallica.bnf.fr/html/und/presse-et-revues/presse-de-mode? mode=desktop. Accessed 25 Oct 2021. For example, articles such as ‘Le home de M. Stephen Clark’s à New York’, ‘Un noble intérieur’, ‘Le home de M. Gaston Liebert’ in Vogue (15 Oct, 1920), pp. 33–38; or titles such as ‘Un tel décor repose sur des recherches outrancières des décorateurs modernes’ (‘Such a decor is based on the outrageous research of modern decorators’) in Vogue (15 Oct, 1920), pp. 37. 15 ‘Placcards et armoires dans les maisons modernes’ in Vogue (1 Oct, 1920), pp. 42–43. 16 Evans (2013). 17 Evans (2013), pp. 71–86. 18 Kanowski (2008).

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exported and had a worldwide commercial strategy.19 The richest private clients, such as the Rothschilds, the Camondos or the Comte de La Rochefoucauld, on the other hand, were supplied by Odiot, who only worked to measure and in solid silver.20 This did not prevent Henri Bouilhet, head of the Christofle company, from regretting in his book L’orfèvrerie française aux XVIII e et XIXe siècles, that the artists and manufacturers of his time no longer had a model style at their disposal.21 Le Printemps and Les Magasins du Louvre had opened as early as 1855, on the occasion of the Paris World Fair. Like the shop windows analyzed by Walter Benjamin in Les Passages,22 they were places of economic trade and of looking.23 The essayist describes Paris as urban planning dedicated to consumption, but also to curiosity and the formation of taste and quality.24 These department stores, which had billiard rooms, libraries and buffets, organized parades for up to 7,000 people. In 1925, all of them, from the Magasins du Louvre to the Magasins de la Place Clichy, had pavilions, staged with facades and interiors that affirmed the modern idiom of Art Deco with exceptional craftsmen and decorators or designers using rare materials (for example, exotic woods and animal skins from the colonial territories). This trend gave shape to mass consumption that affirmed the sophistication and prettiness of advertising art—from facades to interiors, from the press to fashion—which lasted until Philippe Starck.

13.3.3 Small Production Units: Democratizing the French Spirit It is therefore through a strong implication of a link between commerce and image that the modernity of twentieth century forms entered into the conservatism of conventions without, however, upsetting the latter. It authorized the birth of generations of famous ensembliers. At the turn of the century, just like the fashion houses, they thought of production units and, behind the sumptuous image of a French art of living, organized small ‘Taylorist’ industries where the means of brand image and 19

Charles Christofle took out a patent for the manufacture of all-metal fabrics in 1837. He then made silver filigree pieces, hangings, epaulettes and braids for the army. On the strength of this diversification, he took part in the Exhibition of French Industrial Products in Paris in 1839. This led to his participation in a series of national and international exhibitions. In 1842, he acquired the patents that gave birth to silver and gold-plated metal. More solid and less harmful than traditional techniques, electrolytic silvering and gilding made it possible to manufacture silverware that was in every way similar to solid silverware. Therefore, for 15 years, Christofle was the only company in France able to manufacture silver-plated metal. His first customers included the French King, Louis-Philippe I. Industrial electroplating was developed by Henri Bouillet in 1852. 20 Kanowski (2008). 21 Bouilhet (1908–1912). 22 Benjamin (2002). 23 Williams (1982). 24 Coquery (2016).

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representation were precisely arranged. For fashion, the Maison Patou, and for furniture, Jacques-Émile Rulhman, are emblematic. His decoration company, created in 1919, was a combination of the wallpaper and mirror company he had inherited and a design agency he had created in 1912. It was so successful that in 1923, in addition to the team of young designers he brought together and trained, he was able to set up his own workshops where, for example, cabinetmaking, upholstery and ironwork were prepared for the 1925 exhibition. A designer such as Hervé van der Straeten is his heir today, producing precious custom-made furniture in his workshops and designing the famous Dior ‘J’adore’ perfume bottle for the perfume industry. In 1912, a year before Rhulman’s company was established, the Atelier Primavera, was set up within the department store, Le Printemps.25 The aim was to offer affordable creations and young artists from the schools of applied art were recruited, such as Louis Sognot, who was to manage the furniture department. Madeleine Sougez and Claude Levy, together with craftsmen and earthenware manufacturers (Longwy, Quimper, Malicorne), maintained a traditional approach to production and built up a ‘modern’ image. Participation in trade fairs confirmed the success of this unit, which was dedicated to the interior decoration of urban and progressive bourgeois households until the 1970s. The departments of stores dedicated to interior and the large goldsmiths, glassmakers and porcelain manufacturers democratized and maintained the tradition of the wedding list for middle-class customers until the beginning of the twenty-first century. Fashion and furniture or interior design were thus inserted into the social and social event, but also into the international and popular economy thanks to images, advertising and the distribution by Pathé and Gaumont (under license) of newsreel sequences, such as those of the Parisian fashion shows from 1910 onward. France is this synthesis of a representation of luxury and the grandes maisons with Taylorist back-kitchens and a concern to hide them … as it was appropriate to hide that foreign buyers and distributors were already more important commercially than the national clientele.

13.4 The Social Orientations of French Design (1900–1950) However, France was to experience a series of developments that brought a more social turn to its thinking on the living environment. In 1851, Prince Albert (of England) sponsored a ‘model cottage’ for working-class families. However, it was in France that the first ‘home economics’ or ‘social economics’ gallery was organized in 1855, bringing together products that were ‘useful’ and bon marché [inexpensive].

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René Guillerat, a lawyer with a passion for modernity and founder of the Salon des artistesdécorateurs, shared the management with his wife Charlotte Gauchet. After World War I, other Parisian department stores followed this departmental model, including, La Maîtrise (Galerie Lafayette), the Studium (Grands Magasins du Louvre), Pomone (Le Bon Marché).

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From the end of the nineteenth century onward, the aim was to share culture more widely or to improve access to material living conditions. The Social Art movement was not directly linked to Arts and Crafts, nor to the statements of William Morris or John Ruskin in England. It was an intellectual and critical melting pot that established these affinities and activist paths. The cultural environment of the applied arts practitioners was varied. Artists, literary and theatrical figures, musicians, politicians and industrial artists developed and shared their convictions. While these were ‘positions’ between the two wars, they became ‘action’ after Liberation. The years from 1945 to the 1960s are referred to as ‘reconstruction’ and then as the Trente Glorieuses [the ‘Glorious Thirty’] as if it were a question of ‘recovering’ a status. However, the hunger and urgency felt by architects and designers was great and their actions were more like a tabula rasa.

13.4.1 Art in Everything… A New Function In the same year as Louis Sullivan’s famous aphorism ‘form ever follows function’ in 1896, the group L’Art dans tout [Art in Everything] was founded. They thought in a fundamentally different way. Less well known than its contemporary, L’École de Nancy [the Nancy School], the architects and decorators who made up this group were industrial artists. They did not consider the office building as Louis Sullivan did,26 but rather the house as the framework for their intervention, and they considered furniture as part of a spatial concept and not as an autonomous creation.27 Multifunctionality appealed to them more than the precepts of abandoning ornamentation that would be promoted by the Austrian architect Adolf Loos (in particular, in Ornament and Crime in 1908). More than ever, the quality of the model is important: it lies in its suitability for the technique, in its practicality for use, in the taste that gives the product its artistic value. How many workshops, factories, plants and factories remain to be occupied and supplied! For art to spread, for the nation to prosper and for the worker to live, perfect prototypes are needed, capable of being repeated in series, impeccably, with the certainty guaranteed to industry by science that is ever more disciplined and ever more flexible.28

The considerations were also contextual: The new place given to the ‘minor arts’ in the academic pyramid of the arts; the scarcity of official commissions and, at the same time, the emergence of a new clientele sensitive to industrial, semi-industrial or artisanal production of art objects; the increasing attention paid by reformers of all stripes to improvements in modest housing, which now had to meet criteria of hygiene and beauty.29

26

Sullivan (1896), pp. 403–409. Froissart-Pezone (2005). 28 Marx (1913), pp. 31–32. 29 Pezone (2005), pp. 13–18. 27

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Its actors were the leaders of a ‘rationalist school’ guided by the financial means of a new social category—an educated middle class—and the smaller size of the new apartments.30 Original solutions for partitioning the reception room into ‘corners’ assigned to different moments of family or relational life made it possible to design composite and multifunctional furniture. These trends gave rise to an early consideration of the flexibility of furniture in living spaces: ‘The living room could in fact serve simultaneously as a boudoir, a study, a smoking room and sometimes even a dining room or a billiard room, and a sofa could double as a library, a display case or a small table for games, work or writing’.31 It was also under pressure from the newly created Société des Artistes Décorateurs (SAD),32 that the law of 10 March 1902 was promulgated.33 The Société ‘assimilated decorative art to pure art’,34 and specified that the same right of ownership belonged to ‘sculptors and ornamental designers, whatever the merit and destination of the work’. However, it did not resolve the debate between supporters of the theory of the Unity of Art and those who opposed such cumulation that Professor Aso details in Chapter 14. Legal protection appears to have been a major issue and the lawyer René Guilleré, a founding member of the SAD, prioritized the issues as follows: The task is, firstly, to have the public authorities recognise the rights of decorative artists equal to those granted to so-called fine artists, in order to establish their status as artists and to recognise their social importance; secondly, to obtain from the laws, jurisprudence and commercial practices, the protection of their artistic interests; thirdly, to organise exhibitions that showcase their talent.35

This movement toward rationalization anticipated the wave of designers who would, between the two wars and after World War II, form the modern cohort. Francis Jourdain, the future founder of the Union des artistes modernes [the French Union of Modern Artists] (UAM), who frequented the Art dans Tout, founded the Ateliers modernes in 1911 to produce inexpensive, elegant and refined furniture in solid wood, deprived of all ornament.36 Le Corbusier’s ‘living machine’ owes 30

The artists Félix Aubert, Alexandre Charpentier, Jean Dampt, Henry Nocq; the architects Charles Plumet, Henri Sauvage and Louis Sorel; the painter Étienne Moreau-Nélaton and the decorator and cabinetmaker Tony Selmersheim, among others. 31 Froissart-Pezone (2005), p. 129. 32 The SAD was founded on 7 February 1901 by some 40 artists who responded to the appeal launched in 1900 by the lawyer of the Association of Sculptors and Modellers, René Guilleré. It was an association under the law of 1901, and was recognized as a public utility in 1924. The terms ‘artist’, ‘designer’ and ‘decorator’ disappeared from the union designation in 1961. 33 Another example is the 1909 law on the protection of designs and models. Article 1 of this law provided for the possibility of cumulative protection of the laws in the following terms: ‘Any creator of a design and his successors in title shall have the exclusive right to exploit, sell or make sell this design, under the conditions provided by this law, without prejudice to the rights that they obtained by other legal provisions and in particular by the law of July 19 and 24, 1793, amended by the law of March 11, 1902’. 34 Fressonet (1981), p. 14. 35 Guilleré (1902), 18. 36 Despond-Barré (1988).

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nothing to the ‘decorative illusion of Art dans Tout’, nor even to the refined designs of Francis Jourdain, but Nancy Troy recalls that it was at the 1913 Salon d’Automne [Autumn Show], where these sets were roundly criticized because of their ‘nudity’,37 that Charles-Édouard Jeanneret, on discovering them, definitively embraced the idea of architectural rational furniture.38

13.4.2 The Positions that Structure Professional Action The bridge was thus built, and industrial artists became modern. They were to distinguish themselves within several organizations that acted at different levels. UAM (1929–1962) gained renown.39 It was a kind of French and international ‘dream team’ of the ‘synthesis of the arts’,40 whose contributions and formation have been re-envisioned in France for some years now.41 Less modern, perhaps more eclectic, finding projects within industry difficult, but fixing an Art Deco imprint on film sets in particular,42 and deploying its members during the reconstruction period. Specific forms of action were organized. Formes Utiles, a special group within the association more focused on industrial household objects, planned an annual educational exhibition on industrial forms at the Salon des arts ménagers [Household Arts Shows].43 Under the presidency of Marcel Gascoin, the constitution of the associations—such as that of the Creators of Models in Series (ACMS), founded in 1952—44 promoted rational, high-quality and mass-produced furniture and also testified to the position that the practitioners wanted to take in ‘the improvement of the living environment’. 37

Froissart-Pezone (2005), p. 217. Troy (1991), p. 132. 39 Despond-Barré (1986). 40 The artists and designers who have been part of the UAM are prestigious. We can find the architects Adrienne Gorska, Le Corbusier, Robert Mallet-Stevens, Pierre Jeanneret, Jean-René Pingusson, André Lurçat, André Hermant, Marcel Lods, René Coulon, Eugène Baudoin, René Herbst, Bernard Zehrfuss, Paul Nelson; the designers and artist-decorators Eileen Gray, Charlotte Perriand, Charlotte Alix, Pierre Chareau, Francis Jourdain, Louis Sognot; the engineer and builder Jean Prouvé; the artists Fernand Leger, Joan Miro, Alexander Calder, Gabriel Guevrékian, Gustave Miklos; the sculptors and decorators Jan and Joël Martel; the glassmaker Louis Barillet; the textile designers Sonia Delaunay and Hélène Henry; the jeweller Raymond Templier; the bookbinder and cabinetmaker Rose Adler; the poster artists A.M. Cassandre and Jean Carlu. In 1950, the association had 80 members. 41 Migeyrou (2018). 42 René Herbst, Robert Mallet-Stevens, Jean Lurçat, Sonia Delaunay and Robert Delaunay collaborated on the sets of Marcel L’Herbier’s films: L’Inhumaine (1923), Le Vertige (1926) and René Le Somptier’s Le P’tit Parigot (1926). Paul Nelson designed Gloria Swanson’s bedroom in What a Widow! (Allan Dawn, 1930). 43 Born in the bosom of the UAM, Formes utiles became independent in 1956. 44 In the association’s documentation, the term ‘decorator’ is used as much as ‘model maker’. The transition in vocabulary was slow to take hold. Archives Nationales: 19850023/62: Statutes, Minutes of Meetings of ACMS, ACMS branding etc. 38

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The ACMS wished to create a legal environment favorable to the recognition of the creator by means of a standard contract which would normalize relations with manufacturers and traders. It thus combined brand policy and the ‘right to sign’ (recognition of the name of the author) by reaffirming the status of the designer.45 Jacques Vienot, a tireless organizer, theorized the term ‘industrial aesthetics’ and for a large part of the twentieth century contributed to positioning, expanding and publicizing the practices of the ‘industrial aesthetician’ in associations, as editor of a professional journal and as a company CEO. He created Technes, both an engineering and design office in 1948, the Institut d’Esthétique industrielle [Institute of Industrial Aesthetics] in 1951, and a trade union in 1954.46 He also organized an international congress in Paris in 1953, under the vice-presidency of Gordon Russel, Director of the Council of Industrial Design, which was a predecessor to the International Council of Societies of Industrial Designers (ICSID).47 Jacques Viennot’s speech at the 1956 Aspen Congress, along with those of Misha Black and Gordon Lippincoat, are noted. But although France took an active part in its organization, tensions arose because Jacques Viennot defended French specificity and reproached the Americans for having made ‘beauty a tactic’.48 In 1959, ICSID buried the term ‘industrial aesthetics’.49 These activities are also informed by intellectual and political associations and important positions in the French context. The majority of designers were informed by social considerations that are situated to the left of the political spectrum, with an attention to the necessary transformation of social structures, not only from a housing point of view. Many of them were engaged in political and intellectual actions or activities to which they applied their know-how. They were involved in youth organizations, trade unions and intellectual movements, which were extremely active in France in the first half of the century. For example, René Gabriel, Jacques Vienot, Jean Prouvé, Charlotte Perriand and Pierre Jeanneret—the list is long. Viennot with the Porza association,50 Charlotte Perriand who joined the Association of Revolutionary Writers and Artists in 1932 (AEAR a section of the International Union of

45

In the Association’s statute, the moral value of the signature was summarized as follows: ‘To give the artist back his true place in the profession; to revalue his talent, to become a source of emulation, to give new talents greater opportunities to reveal themselves, to arouse the interest of the general public who will be able to compare and better realize the difference between signed and unsigned works’: Archives Nationales: 19850023/62: Statutes, Minutes of Meetings of ACMS, ACMS branding etc. 46 Le Bœuf (1986), p. 91. 47 In 2015, the International Council of Societies of Industrial Designers (ICSID) decided at its congress in South Korea to change its name to the World Design Organization (WDO). 48 Le Bœuf (1986), p. 123. 49 Le Bœuf (1986), p. 124. ‘In September 1959, the adoption of the term “industrial design” was proposed, even if […] the Americans also consider the expression “as limiting”. It seems better than the one used in Germany (Industrie Formgebung), in France (Esthétique Industrielle), in Italy (Stile Industria)’. 50 Le Bœuf (1986), p. 61.

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Revolutionary Writers founded in Moscow), Pierre Jeanneret who joined the Resistance like many others. It was with Jeanneret that Charlotte Perriand, before her long and fruitful stay in Japan, worked as much on the ‘equipment’ of the Corbusean villas as with the unions for the agricultural pavilion at the 1937 exhibition. The fresco ‘La grande misère de Paris’ [The Great Misery of Paris]—created in 1936 as part of the exhibition for the housing she produced with Fernand Léger—caused a scandal. They all visited intellectuals, gens de lettres and artists in the international maelstrom that was Paris. The capital was a hub of the art of living and resistance. Groups and friendships were forged that strengthened or armed the convictions of a reflective architectural scene that allowed French designers to fortify their position. It was less a question of being French, and more of being international and internationalist. France was ready to acknowledge, adapt and receive forms, materials and principles that it had hitherto little recognized.

13.4.3 Reconstruct or Transform? The Glorious Thirty After World War II, it was necessary to ‘rebuild’ and major housing programs were launched under the direction of Auguste Perret, André Lurçat, Pierre Pinard, Fernand Pouillon and André Sive. Jean Prouvé, who presented his ‘maison-coque’ at the Salon des arts ménagers in 1951,51 played a thoughtful and misunderstood role in the design of emergency housing. All of them acted under the leadership of the Ministry of Reconstruction and Urban Planning in the context of the welfare state.52 It was a general modernization that went far beyond the framework of urban reconstruction and the middle-class interiors of the Glorious Thirty. The political program of the National Council of the Resistance was implemented. It organized the social system of wealth redistribution and social security for all. The configuration of leisure activities and children’s camps, the planned building complexes of winter sports resorts as well as seaside resorts, and university halls of residence were all part of this modernization, as was the standardized furniture for the collective equipment. The trend for holiday villages gave rise in 1950 to the Club Méditerranée leisure enterprise, for example, where the modern beginnings of the Gropius’ collective ‘Wohnhotel’ building, exhibited by the Werkbund in Paris in 1930, can be considered as a convincing model for the organization of leisure.53 In all these programs, designers were at work. All of them—from Jean Royère, René-Jean Caillette, Charlotte Perriand, Michel Mortier to Jean Prouvé—proposed solutions. They introduced new arrangements of living spaces and new types of furniture to create a more rational, less borrowed and more relaxed way of life. The ‘living room’ combined the salon 51

Jean Prouvé exhibited a ‘double-shell’ house with load-bearing walls (facade panels, storage units) machined in the workshop, but to be assembled by oneself. 52 Eugène Claudius-Petit was the Minister from September 1948 to January 1953. As Mayor of Firminy, he commissioned Le Corbusier to build the architectural complex that we know today. 53 Eisen (2012).

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and the dining room, sometimes opening onto the kitchen. Rationalized, using simple materials, the shelving systems combined bar, radio and bookcase units; the tables were extendable; and the coffee tables were nested. Resting armchairs, day beds, standard lamps, everything was more mobile. The 1950s also witnessed the destruction of industrial infrastructure. French designers emphasized economy of means, even in relation to aesthetics, as they had no choice but to use rustic materials and techniques (wood, rattan, pith, leather); while countries or regions whose infrastructure had been preserved, such as Scandinavia or the United States of America (US) became role models. Young French designers were influenced by the catalogues of Finnish and Danish companies or American magazines. The designer René Gabriel,54 nicknamed ‘the cabinetmaker of the poor classes’, was the figurehead of a new generation of designers, along with Marcel Gascoin,55 a militant of functional design. All were looking for rational furniture, designed to be mass-produced and sold at a modest price. Gascoin led a young team where Michel Mortier, Joseph-André Motte, Pierre Guariche and Pierre Paulin discovered the social stake of design. He introduced them to Scandinavian simplicity—through the example of the ‘Nordiska Kompaniet’ catalogues—and the functionalism of German design.56 With them, he developed a rational thinking, he imagined storage systems and mass-produced furniture. A designer like Pierre Paulin was enthusiastic about this clarity and efficiency, far removed from the ‘French styles’ taught at the Camondo school. He deepened his knowledge by taking a road trip to Aalto’s Rovaniemi and the North Cape in Norway.57 The main organs that carried and allowed the penetration of these new ideas into the French population—from the point of view of techniques, forms, atmospheres and ways of living—were the magazine Maison française under the direction of Solange Gorse and the ‘Salon des arts ménagers’ [‘Household Art Fairs’] directed by Paul Breton. Maison française was established in 1946. The monthly magazine published analyses of housing in the US, Scandinavia and Germany, and supported the young generation that advocated design, Bauhaus, the refusal of gratuitous decoration, and mass production. The revival of the annual Households Arts Shows, after the war in 1948, was an impressive success. The ‘Foyer d’aujourd’hui’ section, in André Bloc’s words, opened ‘new horizons to modern furnishings’, but the young manufacturers 54

René Gabriel (1890–1950), a disciple of Francis Jourdain and a decorator, devoted himself from 1923 onwards to the production of furniture with very simplified forms. In 1935, he imagined a modular layout system, marketed under the name of ‘RG elements’. In 1947, he became President of SAD, and encouraged young designers. On his death, the Salon des arts ménagers created the René Gabriel prize, aimed at rewarding the best furniture intended for industrial manufacture. See also Ferret (2002) and Gencey (2018). 55 Marcel Gascoin (1907–1986) was a member of the Union des artistes modernes where he exhibited for the first time in 1930. He created his own furniture publishing house in 1932. In 1938, at the Salon des arts ménagers, he presented for the first time a piece of storage furniture. He continued his research and carried out a study on the standardisation of everyday household objects, published in 1947 in the magazine Architecture d’aujourd’hui. He created the Gascoin storage system. 56 Nordiska Kompaniet, a Swedish furniture publishing company in the 1940s, offered furniture by modern Swedish architects and in particular sets by Elias Svedberg and B. Söderberg. 57 Geel (2008a), pp. 30–39.

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who supported this vision were few.58 Minvielle, Steiner, Airborne, Meubles TV, Thonet France, Charron or Disderot presented affordable furnishing sets that were in great demand. Designers were also thinking of exporting their creations. In 1954, Maison Française published an article on the exhibition ‘Les jeunes et le cadre de vie’ [‘Young people and the living environment’] held at the Salon des artistes décorateurs at the Grand Palais. It was here that Pierre Paulin exhibited for the first time the models he had designed for Thonet France, the ‘CM141’ desk and the ‘CM131’ chair. At the 1955 Households Arts Show, the ‘CM137’ armchair, the polyester shell of which is molded to the human body, was an innovative model in the French landscape. Registered in 1954, the model was sold by Thonet in 1959—at the designer’s request and under the name of ‘Oyster (F157)’—to the Dutch company Artifort, with which Paulin would collaborate from then on. This export of the designer and his models shows the attraction that foreign manufacturers had to French designers as well as the desire of those designers to work for manufacturers with more of an international focus—a trend which continues today.

13.5 Culture and Industry (1950–2000) From 1950 to 1990, we can observe a ‘domestic landscape’ constructed by designers’ practices.59 These developments may be divided into modern design, industrial aesthetics and the first attempts at design management. The last third of the twentieth century was a period of emulation. It demonstrated to the French public authorities that the design of objects and the living environment could not be neglected and that it was necessary to recognize this field of design. If one sometimes has the impression that only the actions of patrimonialization allow for the recognition of a new field of practice, the public authorities will often attempt a ‘patrimonial counterpunch’. On the one hand, by reviving a prestigious commission to bring to life an environment designed by a designer, and on the other hand, by supporting the creation of an anti-museum institution within a place of art and culture, the Centre Pompidou. The time of museums, the time of objects and the time of questions follow one another …

58

André Bloc founded the magazine Architecture d’aujourd’hui in 1930. This expression refers to a very important exhibition on Italian design, ‘Italy: The New Domestic Landscape’, held at the Museum of Modern Art (MoMA) in New York in 1972 and curated by Emilio Ambasz.

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13.5.1 The Time of Museums: The Élysée and the Centre De Création Industrielle as Anti-Models? Around the 1970s, two state projects aimed to promote design and the living environment. One was a state commission and concerned a house in a semi-official setting of a wing of the Élysée Palace. The other, from 1968, was a combined approach of industrial interest and the cultural world. The Centre de Création Industrielle [Center for Industrial Creation] (CCI) helped to extend the field of product and furniture design into a broader area. It was a question of accepting an expansion of the field of design—which started from a primary function—translated for a more complex world. When he came to power, George Pompidou wanted to revive the French image policy at which France had excelled. He decided to relaunch certain prestigious commissions that had always provided a dynamic of exemplarity. Contemporary creation should be welcomed. The designer, Pierre Paulin, was chosen instead of a decorator to redesign the ‘convenience apartment’ of the Élysée Palace.60 This ‘social apartment’ located in the Jules Grévy wing would be used for receptions to welcome official visitors, for private discussions in a less formal setting. The ambition for these rooms was to be ‘both the cabinet of the modernist amateur and the showcase of French quality’.61 The designer was given the specifications defining the project and came up with a scheme in three weeks.62 The work was completed in the early days of 1972. When the apartments were presented to the press,63 there was complete surprise. The environment created by the textiles, including on the walls, was a very soft beige; and the light, filtered by a mesh textile, was very soft. Pierre Paulin elegantly introduced some gentle provocations into the presidential palace which also, paradoxically, referred to some very French traditions: the importance of the textile revived the tradition of wall hangings. The hidden nature of the structure of temporary self-supporting walls (such as those used in exhibitions and trade fairs) was a counterpart to decorative royal festivities and the sumptuous expenditure of the seventeenth and eighteenth centuries. Finally, the designer made a point of not creating specific furniture. Instead, he took existing furniture models and simply translated the dimensions or adapted the finishing materials. Pierre Paulin put into a space what guided his work on seating. He organized a transition between the protective textile shells of his seats—where the stretch fabric surrounded the seat while concealing its construction—and the space. He also relied on temporary construction techniques, bolted structures, of which he had some experience. These self-supporting walls left the historical walls intact. They were covered with a beautiful custom-made woolen fabric and he created an intimate ceiling and silky walls that separated the inhabitant from rest of the world. The series of lounges 60

Foulon (2000), p. 340. Foulon (2000), p. 341. 62 For details of this operation, see Geel (2007), pp. 12–20. 63 All the French and international newspapers were invited to visit the fairs between January and February 1972: Geel (2008b), pp. 46–55. 61

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are real trade fair booths. The designs came from previous unrealized projects for Marc Bohan at Christian Dior and the forms of these environments—the smoking room and the Salon aux tableaux [salon with the paintings]—were reused and adapted as they were for the Élysée.64 For the furnishings, he took furniture manufactured between 1965 and 1968 and changed the dimensions, but not the proportions. One finds the formulas for almost all the Elysée furniture in the trade fair booths of manufacturers in previous years, for example, the table and chairs in the dining room, and the modules in the Altulor® bookcase. In the end, the designer used the very processes of design, reproducing its formal vocabulary and using the same typologies for the President and for a commercial manufacturer. This politic would show a new facet of the French art of living—a paradox created by the designer. The tradition of weaving and drapery, of decoration, are in the end the historical ‘leitmotiv’ of French furnishing. It was, after all, the importance of the Lyonnais silk industry for fashion and furnishings and the economic power of this industry that generated the first laws on designs. Now, for Pierre Paulin, the idea of showing modernity and the novelty of an environment went beyond the mere representation of the French image. It was a matter of going toward a taste that seemed to him much more international. This exemplary project demonstrates how certain French traditions when mixed with design can be incorporated into commissioned images to renew French know-how. In another way, the birth, life and ‘death’ of the CCI represents a key historical moment in the development of design in France.65 When it was established in 1968, the CCI had the ambition of dealing with urban planning, graphic design and visual communication, industrial design, computation, cultural and social issues. ‘Collective functions’ would be its domain, and the disciplines of industrial design would finally have their place. It is an organization with protean interests: product sheets,66 surveys, the development of a directory of practitioners,67 and the creation of an editorial department. The publication from 1975 of a review such as Traverses, with the publisher Édition de Minuit, included texts by Jean Baudrillard, Paul Virilio and Michel de Certeau. Finally, exhibitions made the CCI a key organization for the mediation of products, design processes and debate. In the beginning, it was logically located within the Musée des Arts Décoratifs, within the Louvre, but in 1976 it left the Union Centrale des Arts Décoratifs to become one of the two departments of the Centre d’Art et de Culture in Beaubourg, Center for the Arts and Culture or Pompidou Centre, the Musée National d’Art Moderne [Modern Art National Museum] being the other. It then had 4000 square meters of floor space, including 64

Geel (2008b), pp. 51. Catherine Geel (2021a). 66 The CCI, was in part, modelled on the Design Council in the United Kingdom (UK) which had developed a series of product sheets to inform the public about various aspects of products and appliances, particularly English household appliances. The CCI adapted and published the product sheets. Initially handwritten (4000 to 7000 according, to François Mathey), they were later digitized which required a large team. 67 Leymonerie (2016). 65

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800 square meters of exhibition galleries;68 a ‘general public’ library focused on industrial design, graphic design and architecture; a specialized library and a media library; as well as a documentation service which carried out research on request. It had nine departments in 1978. The CCI developed its exhibition program along two main lines throughout the 1970s and 1980s: a thematic selection of products, on the one hand; and the exhibition of trends and research in this field, on the other. It was a major institution in the French system that supported cultural policy on design. In this male-dominated world, women were responsible for assisting or organizing exhibitions, but more rarely for curating. Yolande Amic, and later Margo Rouart, Hélène Laroche, Marsha Emmanuelle, Françoise Jollant often hit a glass ceiling that did not allow them to move beyond a certain status.69 By claiming a cultural position or that of a resource center, the CCI positioned its mission within those of the modern museum, where the disciplinary approach extends to the exploration of sociological, scientific and research implications. However, the CCI clashed with its supervisory bodies by refusing to curate a collection. This concept of the ‘anti-museum’ within an institution that increasingly saw itself as such signaled the necessary integration of the CCI into the museum and thus its end. The expansion between 1968 and 1978 and the gradual ‘shrinking’ of the CCI from 1983 until 1992, when it disappeared to make way for the architecture and design department of the Centre Pompidou, illustrates the half-hearted development of a new disciplinary field and the way in which France, in spite of everything, patrimonializes new fields.70 The CCI, however, was a precursor to a range of interesting approaches. Beyond the traveling exhibitions and the variety of subjects covered, it was an innovative institution that explored social and practical subjects. The names of iconic designers and speakers directly involved in these exhibitions are impressive: Archigram, Charles Eames, Verner Panton, Joe Colombo and Roger Tallon, Ettore Sottsass, Gae Aulenti, Achille Castiglioni and Jean Widmer, Roman Cieslewicz, Grapus, Italo Rota, Vincent Perrottet, Pierre di Sciullo but also Haus-Rucker-Co. As for theorists, we see Paul Virilio and François Lyotard involved as curators of certain exhibitions. ‘Bunker Archéologie’ (the seminal survey of Paul Virilio’s work in 1976 at the Musée des Arts Décoratifs) and ‘Les Immatériaux’ (at the Centre Pompidou in 1985, curated by the postmodern philosopher Jean-François Lyotard) were innovative and groundbreaking exhibitions.71

68

Documentary resources description and report of the CCI exhibitions. See Bibliothèque Kandinsky – MNAM-CCI, Centre Pompidou. https://archivesetdocumentation.centrepompidou. fr/ead.html?id=FRM5050-X0031_0000086#FRM5050-X0031_0000086_e0000032. Accessed 25 Oct 2021. 69 Interview with Françoise Jolland on her career at CCI, Paris, on 12 Mar 2021. 70 Marechal (2021). 71 See Chataigner (2021); Sanitas (2018); Chataigner (2021), respectively.

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13.5.2 The Time of Objects: Design in Industry French designers are caught in a contradictory game, between a stimulating but polemical intellectual model and the desire for truly industrial ventures, whereas their methods could be said to be the same as those in Germany or Italy. It is the time of objects,72 as opposed to the immaterial. The profession has been structured in the French economic landscape. But are designers convinced by the collaboration with industry? And does the French industry, other than the luxury industry, have the cultural tools to understand the challenges of design? Jacques Vienot, who moved from the decorative arts to design, possessed the intuition, skill and the initiative to allow him to answer these questions, in part. It is he who developed a strategy that allowed French industrial design to blossom. The strategy consisted of a ‘visa’, an ‘aesthetic committee’ and a select committee that aroused and structured the interest of a few large industrialists who would set in motion a virtuous circle of competition, and pioneer the application of the charter of industrial aesthetics. The ‘Beauté France’ label also played a role, and luminaries such as Marcel Bleustein-Blanchet and Christian Dior drove the machine.73 It was not by educating popular taste, as Formes Utiles did, but from the top—the company directors and opinion leaders—that the industrial design of domestic equipment was developed. Vienot’s aim was the construction of a new profession and a new position for French household equipment, transport, professional machinery and computer companies. Vienot took great care to distinguish the designer—a specialist ‘industrial aesthetician’—from the decorator and the artist. He remained circumspect about the possible transposition of the architect’s activities to industrial creation, despite the Italian examples, in particular. Gradually the notion of the ‘industrial aesthetician’, which was complex, lost its relevance and was replaced by the term ‘designer’ and ‘industrial creator’. These activities were further developed by creative design agencies—the establishment of which was often due to the ongoing support of small household appliance companies. This was the case for Calor with Technès, for Moulinex with Harold Barnett and Jean-Louis Barrault, and for Seb with Savinel & Rozé. The new luxury was now the ‘free time’ provided to women by electrification and the multiplicity of small household ‘robots’. The influence of Frenchman, Raymond Loewy—whose reputation and agency’s approach were developed in the US before returning to France—is important. This model, which was to become the reference—an unsurpassable horizon—for companies, was criticized by the professional design world as a form of submission to the market. The 1970s were the golden age of the French industrial design agency.74 A 1972 survey showed that 30 per cent of companies had a salaried in-house designer, 16 per cent had an in-house designer paid on a fee basis, and 54 per cent had recourse to 72

Leymonerie (2016). Leymonerie (2016), pp. 91–104. 74 Leymonerie (2016), pp. 139–149. 73

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the advice or services of an outside agency.75 Companies preferred the contractual form of the quasi-in-house design service, where the agency or the designer was bound by a contract. This form of contractualization would avoid routine, develop trust and allow whole industries to benefit from the ideas and methods developed by an external agency for an individual company. This period also saw the birth of strong demand by French designers for a collaborative, multidisciplinary approach and for methods such as ‘product planning’ which also governed the transfer of design and model property rights.76 In 1979, statistics place France among the three countries, along with the Federal Republic of Germany and Japan, with the highest number of registered designs. Although each application concerned an average of 11 objects, the figures speak for themselves. Counting foreign registrations,77 the Federal Republic of Germany had 70,282 registrations, Japan 37,215 and France 13,981, noting that the laws regulating design registration and protection differed in each country.78 Industrial property rights and artistic property rights belong to the group of intellectual property rights which give inventors and creators the power to prohibit others from reproducing their work for commercial purposes without their consent. Their common field of expression is industrial design and models which, as we have seen, are often both industrial art and pure art.79 As noted by Professor Aso in Chapter 14, the latter half of the twentieth century saw various developments in copyright law (which is generally considered to be an artistic property right) and the laws that protect designs and models. In 1992, those laws were incorporated into the Intellectual Property Code, which in some cases allows cumulative protection of industrial designs under both copyright laws and design and model laws, and that sets out a range of creator rights. It can be said that, in France, the legal figure of the creator is central, and that the cultural and media status that the designer enjoys in France today is, to some extent, the result of the synthesis of this protection.

13.5.3 Time for Questions: The Designer as a Cultural Figure Therefore, in the latter part of the twentieth century, the designer in France became an actor in the cultural game, entering the field of contemporaneity versus the decorative 75

See survey of one hundred industrialists and designers in Coll. (Mar–Apr 1972). ‘The agency offers its clients a contract in three phases, each of which ends with a billing stage. At the end of the first phase, the CEI undertakes to present three main ideas in the form of a drawing, from which the client indicates the one he prefers, which then becomes his property’: Leymonerie (2016), 147. In phase 2 the designers develop the solution and make up the project. Phase 3, which is optional, includes the industrial synthesis before the production launch. 77 Registrations from foreign companies or designers who trade on French soil and wish to protect their designs. 78 World Intellectual Property Organization (WIPO) in Coll (1981), p. 11. 79 Roubier (1954), p. 64. 76

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arts. It also reinvigorated debate around the issues and definitions of the French art of living. Three features of this period can be highlighted: • an increase in the mediatization of the designer and a re-emergence of the artdesign issue which re-orientated the designer’s status; • Scandinavian and Anglo-Saxon modernity, and Italian postmodernism influenced and played an important role in the furniture industry; and • the formation of a critical corpus of French intellectuals who deconstructed the functionalist discourse and the structures of consumption. Having balanced the roles of auteur, innovator, official personality, anonymous industrial designer, decorator, artist and agency director, the designer is finally able to be identify themselves as an author, artist and industry collaborator. By this time, in Europe, the English, Germans and Italians had long been ‘managing’ the issues associated with the question of design. This was the time when the designers of the Ulm school (from 1953 until 1968), and then the Italian designers, theorized their practice. The period from 1965 onward saw the successful emergence of radical Italian architecture and design; an awareness of the economic importance of design by Italian industry; and then, in the 1980s, the emergence of ‘New Design’. Images of the creations of the Memphis group, in particular, traveled the world. These elements contribute to an understanding of the position of contemporary French designers and the different ways in which they claim to be rooted in the discipline. The French design and production world understood the need to continue to build the discipline. As we have seen, there are characteristics that unquestionably link them to the French furniture tradition, on the one hand, and to modernity on the other. However, more ambiguous and interesting are the signs that identify the role of the designer in the context of key cultural developments as an economic and industrial figure. From the perspective of a conventional history, we can consider three groups, of roughly equivalent fame, in three different periods: • the Perriand-Le Corbusier-Jeanneret triad; • Olivier Mourgue, Roger Tallon and Pierre Paulin; and • Philippe Starck, Elisabeth Garouste and Mattia Bonetti. These high-profile designers form a panorama. In the media, Olivier Mourgue is the young and gifted figure and Roger Tallon, the national industrial designer thanks to the Corail and later the TGV. Pierre Paulin is a more unclassifiable figure. He randomly appears and disappears, taking the floor from time to time. The figure of the designer in this second part of the twentieth century in France is both complete and fragmented. Designers split their activity between, on the one hand, authorial and experimental design, seeking recognition in cultural circles, and, on the other hand, industrial design with the Ulmian objective of service to the community. The figure of the French designer up to Philippe Starck is, despite everything, that of ‘the artist-decorator inventor of forms and committed to industry’. Philippe

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Starck, with an intelligent understanding of the principles of modernity and those of Italian postmodernity, achieved a synthesis with a strong media resonance. On the one hand, he joins the category of superstars thanks to the media and his ambiguous discourse. He never explains the designer’s job, which was relatively unknown in France at that time, and he denies the importance of objects, which in France is a surprising position. But the spirit of irreverence is also part of the French character which Philippe Starck handles with mastery. The concomitant phenomena of cultural industries and French exceptionalism means that designers in other European countries have forged a more homogeneous professional identity.80 But if there is, from some such as Roger Tallon, a critical reflection on the French situation, there is no theorization of the designer’s position. The figure of the designer-theorist is practically unknown in France, even though it is the figure that authorizes the autonomy of the discipline in other European countries. One might wonder whether French structuralist thought which criticizes objects and their consumption does not prevent designers from thinking about these issues. The proximity of Jean Baudrillard or Abraham Moles to certain French design institutions is often ignored outside France. It was in fact with Roland Barthes and semiology, and Jean Baudrillard and the theories of the consumption of the sign, that a dialogue, sometimes complex, was established, which designers or agencies would hijack and integrate with anthropology, psychoanalysis and sociological surveys, so well described by George Perec.81 In contrast to the Frenchman Abraham Moles who, at the Hoschule für Gestaltung, developed neo-functionalist thought based on the observation of kitsch; Roland Barthes and Jean Baudrillard, in particular, set out to deconstruct functionalist precepts and modernist discourses by demonstrating how they are caught up in a capitalist enterprise. The Marxist grid is both used and questioned. This work begins with Roland Barthes’ dry analysis of The Fashion System,82 published in 1967, and continues with Jean Baudrillard’s The System of Objects,83 published in 1968. But it is with For a Critique of the Political Economy of the Sign (1972) that the charge is the most virulent.84 Before taking an interest in the simulacrum and enthusing American universities, Jean Baudrillard, with his talent as an essayist, dismantled the emptiness, even the morbidity, of a conceived and thought-out material world. The analyses of Michel de Certeau or Abraham Moles, although very different, are more measured, but it is Baudrillard who will remain closest to the world of design. He wrote in 1970 the declaration of the ‘French Group’ at the ICSID Congress in 80

The Mobilier National, and through it various government institutions, called on Pierre Paulin regularly for more than fifteen years, including projects for the Maison de la Culture in Rennes (1968–1969), the Élysée Palace (1969–1973), the French Pavilion in Osaka for the International Exhibition (1970), the renovation of the Louvre (1968–1972), prestige furniture (1979–1981), right up to the functional flat of the President of the Georges Pompidou Centre (1978–1979) and the office of François Mitterrand (1984–1985). 81 Perec (1967). 82 Barthes (1990 [1967]). 83 Baudrillard (2005 [1968]). 84 Baudrillard (2019 [1972]).

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Aspen and, the same year, took part in the jury for the Compasso d’Oro, the highest distinction in product design. He was even invited to speak at the ICSID Congress in Tokyo in 1973. These writings and the company of these intellectuals had various effects on the French design world: rejection or fascination, joyful cynicism or dejection. This original period of the 1970s and 1980s therefore saw French intellectuals produce material and analyses that foreign designers, particularly Italian ones, were to seize upon. Beyond the critique of functionalism, they concerned the notion of kitsch or gadgetry … the postmodern, this thought of the continuous flow of information and the loss of narrative, makes a smashing entry into the French design scene, thanks to French intellectuals.

13.6 Concluding Remarks 13.6.1 Designers and Export Here is the designer taking overwhelming responsibility for a world that is spinning out of control or taking the side of the consumer. The twenty-first century, in the French design world, is pragmatic and defies a national ethos to embrace the commercial globalization of design. We would define it as follows: France may not be a country of design but it is a country with designers. In the 1980s and 1990s, new structures were established following the creation of the École Nationale Supérieure de Création Industrielle [National School of Industrial Creation] and the opening of design departments in the sixty or so French art schools. From the 2000s onward, Parisian design galleries functioned as much as spaces for collectors as they did as agents for designers and industrial product design. They presented themselves as laboratories where French and international designers find time for experimentation as well as outlets or a means for industry. On the other hand, designers, as much as their objects, become export products. Philippe Starck is a remarkable example of this strategy. He is a brand name, and his signature logo is an indication of the successful legal protection of designers. The name of his company Ubik also indicates how borders may be overcome by the image of the designer’s personality and even his silhouette. ‘Design is everywhere’, it seems to warn us. Matali Crasset, has her own stylized face as a logo. It is also important to underline the appearance of women who playfully handle this spirit in the communication of their work, such as Inga Sempé or Iona Vautrin. In the 2000s, designers such as the RADI designers adopt mischievous approaches that are no longer characterized by a style but by a benevolent or sometimes ironic spirit. The most prestigious foreign manufacturers, Italian, Dutch, Scandinavian, German or Swiss, are interested in these phenomena and all give work to French designers.85 Finally, the thoughtful and sensitive designers, Ronan and Erwan 85

Examples include Flos, Magis, Artifort, Norman Coppenhagen, Hay, Artek, Vitra and others.

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Bouroullec, slip flexibly into the simplest and most complicated exercises—from the desk systems for Vitra, the simple forms of the Nordic manufacturers, the love of detail of the Italian companies, to ‘equipping’ the Château de Versailles with a chandelier like a large, simple but sophisticated modern necklace. Drawings, in a less technical and more artistic mode, is also a place where the sensibility of French designers is expressed. Pierre Charpin and the Bouroullec brothers exhibit their work, publish books and use Instagram extensively to disseminate them.86

13.6.2 Conclusion The French ethos directly links a French spirit to an expansion of taste that is of the eighteenth century. The work L’Art du dix-huitième siècle by the Goncourt brothers played an important role in the formation of taste in the nineteenth century.87 It disconnects the idea of French greatness from the idea of the French spirit. It is therefore: […] neither [of] the great century, nor [of] the great King [who] had loved truth in art [...] A sublime made of emphasis, pomp and dignity, had dazzled the spirit of France [...] French society had believed to find in a fictitious majesty a supreme law of aesthetics, an absolute ideal.88

For the French spirit is that of the eighteenth century: The pretty, —that, in these hours of light history, is the sign and the seduction of France. The pretty is the essence and the formula of her genius. The pretty is the tone of her morals. The pretty is the school of its fashions. The pretty is the soul of the age [...].89

The sublime, from Nicolas Boileau to Edmond Burke, petrifies, the ‘pretty’ sets in motion. The art of design, pattern, seductive decoration or elegant arrangement belong to and are protected by the pretty. It is the export of the ‘pretty’, which governs part of the French visual relationship to things. On the other hand, it initiates a recurring problem for design: the definition of beauty in the useful. This issue gave rise to the term ‘industrial aesthetician’ and for a moment distorted the perception of the designer’s profession. It shows how difficult it is in France to adopt the modern principles and reject ornament, but it also reveals—literally and figuratively—an ability to grasp the spirit of the times. Reminiscences of the French situation can therefore be found largely by drawing on Walter Benjamin’s concept of dialectical images to explain or illuminate the way in which the past can resonate in the present, but it is Stéphane Mallarmé, poet and theorist, who took a close interest in fashion and questions of furnishing that we call upon. Borrowing an expression from him that could describe the action of French designers throughout the twentieth century 86

Catherine Geel (2021b), pp. 18–29. Goncourt and Goncourt (1873). 88 Goncourt and Goncourt (1873), p. 130. 89 Goncourt and Goncourt (1873), p. 130. 87

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up to the present day: un pollen de chair [pollen of flesh],90 delicate and persistent. French design is not limited of ideologies but, at most, by the politics of its image.

References Barthes R (1990) [1967]) The Fashion System. University of California Press, Berkeley, Los Angeles, London Baudrillard J (2005) [1968]) The System of Objects. Verso Books, London Baudrillard J ((2019) [1972]) For a Critique of the Political Economy of the Sign. Penguin Random House, London Benjamin W (2002) The Arcades Project. Harvard University Press, Cambridge, Massachusetts Bouilhet H (1908–1912) L’orfèvrerie française aux XVIIIe et XIXe siècles. Henri Laurens Éditeur, Paris Chataigner N (2021) ‘Les Immatériaux’: Postmodern Feeling and Undefined Spaces. Available via Geel C (2021a) The Centre de création industrielle and exhibitions (1968–1992): Successive Refocusing. http://problemata.huma-num.fr/en/lignes/4?sort_by=dcterms%3Atitle&sort_o rder=asc Colin C (2010) Question(s) Design. Flammarion, Paris Coll. (1981) Dessins et modèles déposés. Les éditions du Centre Pompidou Coll. (Mar–Apr 1972) One hundred industrialists and design. Cree 4. Private Archives Coquery N (2016) Luxury and Shopping in Eighteenth Century Paris, Capital of Luxury. Creating the Europe 1600–1815. Galleries, Victoria and Albert Museum, Lydia and Manfred Gorvy Lecture Theatre, Friday 8 Apr 2016 Despond-Barré A (1986) Union des artistes modernes. Édition du Regard, Paris Despond-Barré A (1988) Jourdain. Édition du Regard, Paris Eisen M (2012) Der hotelartige ‘Großhaushalt’ in ‘modernster Formgebung’—Die Ausstellung des Deutschen Werkbundes 1930 in Paris. In: Eisen M (ed) Vom Ledigenheim zum Boardinghouse Bautypologie und Gesellschaftstheorie bis zum Ende der Weimarer Republik. Mann Verlag, Berlin, Gebr, pp 245–264 Elias N (2005) The Court Society. University College Dublin Press, Dublin Evans C, Breward C (2005) Fashion and Modernity. Berg, New York Evans C (2013) The Mechanical Smile—Modernism and the First Fashion Shows in France and America, 1900–1929. Yale University Press, New Haven Ferret C (2002) René Gabriel, architecte-décorateur. Dissertation, DEA, University of Paris I Panthéon-Sorbonne Foulon C-L (2000) Georges Pompidou, le Mobilier national et la modernité. Culture et Action chez Georges Pompidou. PUF, Paris, pp 340–352 Fressonet P (1981) La protection juridique des dessins et modèles industriels. In Coll. (1981) Dessins et modèles deposes. Les éditions du Centre Pompidou, Paris Froissart-Pezone R (2005) L’Art dans Tout. Les arts décoratifs en France et l’utopie d’un art nouveau. CNRS Éditions, Paris Geel C (2021a) The Centre de création industrielle and exhibitions (1968–1992): Successive Refocusing: http://problemata.huma-num.fr/en/lignes/4?sort_by=dcterms%3Atitle&sort_o rder=asc Geel C (2021b) Les designers à l’épreuve de la notation photographique via et au-delà d’Instagram. In Transbordeur. Design Et Photographie 5:18–29 Geel C (2008a) Looking North. In: Geel C (ed) Pierre Paulin Designer. Archibooks, Paris, pp 31–40

90

‘La dernière mode’ in Mallarmé (1998 [1874–1875]), p. 354.

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Geel C (2008b) Interior Design, Matrix and Superstand. In: Geel C (ed) Pierre Paulin Designer. Archibooks, Paris, pp 47–56 Geel C (2007) Le design au pouvoir? Point et contrepoints sur un lien. In: Zuber-Cupissol M (ed) Pierre Paulin, le design au pouvoir. RMN, Paris, pp 12–20 Gencey C (2018) René Gabriel. Norma, Paris Goncourt J, Goncourt E (1873) L’Art du dix-huitième siècle. T.I. Rapilly libraire & Marchand d’estampes, Paris Guilleré R (1902) Retranscription du discours de Réné Guilleré à la Société des Artistes -Décorateurs. Bulletin De La Société Des Artistes Décorateurs 1:18 Kanowski C (2008) Les surtouts de table d’orfèvrerie, Signes du Paraître de la riche bourgeoisie et de la noblesse parisiennes au XIXe siècle. In: Paresys I (ed) Paraître et apparences en Europe occidentale du Moyen Âge à nos jours. Presses universitaires du Septentrion, Villeuneuve d’Asq, pp 45–57 Le Corbusier CE (2006) Architecture et purisme in un homme à sa fenêtre, textes choisis, 1925–1960. Fage éditions, Lyon, pp 42–46 Le Bœuf J (1986) Jacques Vienot (1893–1959). Presses universitaires de Rennes, Rennes, Pionnier de l’esthétique industrielle en France Leymonerie C (2016) Le temps des objets, une histoire du design industriel en France (1945–1980). Cité du design, London Mallarmé S (1998 [1874–1875]) La dernière mode In Œuvres complète, T. II. Gallimard, Paris Marechal C (2021) Le Centre de création industrielle, de sa création à son annihilation (1968–1992). Retour sur les aventures d’un lieu singulier. Available via Geel C (2021a) The Centre de création industrielle and exhibitions (1968–1992): Successive Refocusing http://problemata.huma-num. fr/en/lignes/4?sort_by=dcterms%3Atitle&sort_order=asc Marx R (1913) L’Art social. E. Fasquelle, Paris Migeyrou F (2018) États critiques de l’être moderne. In: Cinqualbre O, Migeyrou F, Zuchelli A-M (eds), U.A.M., une aventure moderne [exhibition cat.]. Centre Pompidou, Paris, pp 20–23 Perec G (1967) Things: A Story of the Sixties. Grove Press, London Pevsner N (1948) Design in Relation to Industry Through the Ages. J Roy Soc Arts 97:90–101 Pouillet E (1911) Traité Théorique et pratique des dessins et modèles. Marchal et Gode, Paris Roubier P (1954) Le droit de la propriété industrielle, T.2. Sirey, Paris Sanitas V (2018) Bunker archeologie (1976): l’espace mis en page. Available via Geel C (2021a) The Centre de création industrielle and exhibitions (1968–1992): Successive Refocusing http:// problemata.huma-num.fr/en/lignes/4?sort_by=dcterms%3Atitle&sort_order=asc Silverman DL (1992) Art Nouveau in Fin-de-Siècle France. Politics, Psychology & Style. University of California Press, Berkeley, Los Angeles Souriau P (1904) La beauté rationnelle. Felix Alcan, Paris Sullivan LH (1896) The Tall Office Building Artistically Considered. Lippincott’s Magazine, pp 403–409 Tiersetn L (2001) Marianne in the Market: Envisioning Consumer Society in Fin-de-Siècle France. University of California Press, Berkeley, Los Angeles Troy N (1991) Modernism and the Decorative Arts in France: Art Nouveau to Le Corbusier. Yale University Press, New Haven Williams RH (1982) Mass Consumption in Late Nineteenth-Century France. University of California Press, Berkeley, Los Angeles

Additional Bibliography Bulletin de la Société des Artistes Décorateurs (1902) No. 1, 18. Private Archives

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Chataigner N (2021) ‘Les Immat riaux’: Postmodern Feeling and Undefined Spaces. Available via Geel C (2021a) The Centre de création industrielle and exhibitions (1968–1992): Successive Refocusing http://problemata.huma-num.fr/en/lignes/4?sort_by=dcterms%3Atitle&sort_order=asc

Catherine Geel is a design historian. She is a researcher at the Centre de recherche en design at Ecole normale supérieure (ENS) Paris-Saclay (Paris-Saclay University). She teaches at the ENS, the National School of Art and Design Nancy and Science po Paris. She leads the ‘Problemata’ project, a platform of the Open Sciences associated with the TGIR Human Num (UMR-CNRS). She has written, published, edited or contributed to more than fifteen books on design or design history and is a member of several scientific committees in France.

Chapter 14

History and Current Status of Design Protection in France Tsukasa Aso

Abstract As industry developed in France, the subject matter of design protection expanded from ‘designs’ (two-dimensional designs) of silk fabrics in Lyon to designs other than silk fabric and later industrial ‘models’ (three-dimensional designs). Historical evidence suggests that there was a desire for greater protection of designs and models in France and that the development of design and model law was the result of lobbying. The large number of dépôt [deposits] of designs at the Conseil de prud’homme [local trades councils] indicates the necessity of this type of protection. Furthermore, the théorie de l’unité de l’art [theory of the Unity of Art] established the protection of industrial designs and models by copyright law.

14.1 Introduction France cannot be avoided when it comes to the history of design law. France’s design and model law originated from the Lyon Ordonnance of 1711, prior to the French Revolution, and a law of 18 March 1806 concerning designs that provided for their protection at the Conseil de prud’homme.1 Furthermore, the théorie de l’unité de l’art [theory of the Unity of Art]—wherein designs and models may also be protected by copyright law—has traditionally been accepted in France. The history of design and model protection mirrors the development of designrelated industries in France. The purpose of this chapter is to clarify the types of designs and models that have been the subject matter of protection, and to outline how the law has changed over time.2

1 In this chapter, two-dimensional designs are referred to as ‘design’ [dessin] and three-dimensional designs are referred to as ‘model’ [modèle], in accordance with French legal usage. 2 For an English text on the history of double protection by design and model law and copyright law in France, see Kahn (2018), p. 7. See also Greffe and Greffe (2009) (in French).

T. Aso (B) Kyushu University, Fukuoka, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_14

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14.2 Protection of Designs in Lyon During the Period of the Ancien Regime The silk weaving industry developed in Lyon from the end of the seventeenth century and into the eighteenth century. Lyon became the most important city for silk fabrics in Europe and substantially monopolized silk weaving manufacture in France.3 The protection of designs in Lyon originated from a petition by silk fabric manufacturers and developed out of necessity due to the growth of the silk fabric industry.4 The Ordonnance dated 25 October 1711 in Lyon approved by the Arrêt du Conseil on 1 March 1712 set out: very express prohibitions and defenses to all merchants, master craftsmen, associates and other employees in the manufacture of silk fabrics, regardless of their sex and age, to take, steal, sell, lend, deliver and use directly or indirectly designs that have been entrusted to them to manufacture.5

The Ordonnance implied that manufacturers of new designs had the droit exclusif [exclusive right] to duplicate designs of fabric.6 The word ‘steal’ in the Ordonnance did not refer to ‘stealing’ a physical object, but rather an act of imitation such as duplication.7 The exclusive right was not subject to any time limit.8 However, the subject to be protected was limited to étoffe de soie [silk fabric]; and the prohibited act was detournement [misappropriation] by all merchants, master craftsmen, associates and other employees, namely, abus de confiance [breach of trust]; and the law only applied in the region of Lyon.9 Article 134 of the Ordonnance royale approved by the Counseil du Roi on 1 October 1737 stipulated that: All masters are expressively prohibited from working in a way of selling, lending, delivering, using directly or indirectly the designs which will have been entrusted to them to manufacture, under penalty of confiscation of the fabrics which would have been secretly manufactured based on such designs, of a five-hundred-livres fine, forfeiture of master’s degree and corporal punishment.10

The Arrêt [ruling] approved by the Conseil d’Etat on 19 June 1744 repealed the Ordonnance royale of 1737. Article 12 stipulated that: 3

For the development of the silk fabric industry in Lyon, see Godart (1889). Fauchille (1882), p. 24. 5 Philipon (1882), p. 27. 6 According to Philipon, the exclusive right was ‘propriété’: Philipon (1882), pp. 28–30. Fauchille represents them as ‘propriété industrielle’: Fauchille (1882), p. 21. As to the characterization of the propriété relating to designs during the ancien regime, see Philipon (1882), p. 71. Pouillet and Bouchet-Le Mappian describe the nature of this exclusive right as ‘le droit de propriété’: Pouillet (1911), p. 5; Bouchet-Le Mappian (2009), p. 69. 7 Philipon (1882), p. 28. 8 Philipon (1882), p. 29. 9 Fauchille (1882), p. 21. 10 Quoted in Philipon (1882), p. 33. 4

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Same prohibitions are made to the so-called master craftsmen to sell, give, or lend, for any reason and under any pretext, designs which have been entrusted to them to manufacture, under penalty of a hundred-livres fine and forfeiture of master’s degree, and corporal punishment; non-payment of such fine will entail imprisonment for debt of said master craftsmen, by reason of the judgment of the Consulat [Consulate] which have condemned them to it.

Article 13 provided that: Same prohibitions are made to all designers and other persons whoever they may be to take and copy, have taken and copied directly or indirectly and in any way whatever, any design on fabrics, whether old or new, or on cards of the designs of said fabrics, under penalty of a thousand-livres fine against the designer who would have taken or copied said designs and same fine against whomever made him take or copy them, as well as confiscation of the fabrics made on the designs taken or copied.11

As set out above, not only ouvrier [factory workers], but ‘other persons whoever’ were subject to the Arrêt of 1744.12 This is because, as the consumption of silk handkerchiefs increased, so too did infringement of designs by persons outside of the union.13 The exclusive right had no time limit and its protection covered both existing and new étoffes [fabrics].14 Between the late eighteenth century and the end of the ancien regime,15 the protection that had been offered under the Ordonnance royale of 1737 and the Arrêt of 1744 that protected designs was extended. Article 1 of the regulation approved by the Consulat on 16 April 1765 and approved by the Parliament on 14 May 1765 stipulated that: All merchants, masters and factory workers, commissioner merchants and generally all other persons, regardless of their quality and condition, are prohibited from giving, entrusting, selling, lending, delivering, sending or transporting, directly or indirectly, outside the city of Lyon, the samples of gold, silver and silk fabrics, or from encouraging their sending out of this city.16

This regulation restricted the act of selling échantillons [samples] outside the city of Lyon and covered not only maître-marchand [master merchants] and factory workers, but also commissionnaires [forwarders] who traded samples outside of the guild.17 Then, the Ordonnance dated 3 February 1778 extended the protection of design to cover not only the silk fabric industry but also broderie [embroideries]. While this Ordonnance was limited to manufacturers in Lyon, the expression ‘propriété’ was used to describe the exclusive right, and the term ‘contrefaçon’ [counterfeit] was used to describe the act that would constitute infringement.18 11

Quoted by Philipon (1882), pp. 34–35; Pouillet (1911), pp. 5–6. Philipon (1882), p. 35; Fauchille (1882), p. 23. 13 Bougeard (1986), p. 13. 14 Philipon (1882), p. 37; Fauchille (1882), p. 24; Pouillet (1911), p. 6. 15 Ancien regime refers to the political and social system of France before the Revolution of 1789. 16 Quoted by Philipon (1882), p. 52. 17 Philipon (1882), p. 53. 18 Fauchille (1882), p. 24; Pouillet (1911), p. 6; Bry (1914), p. 418. 12

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The Arrêt approved by the Conseil du Roi on 14 July 1787 was the last legislative instrument during the period of the ancien regime,19 and extended the protection that had been offered under the Ordonnance royale of 1737 and the Arrêt of 1744 to the fabric industry not only in Lyon, but to the entire Kingdom of France.20 Furthermore, the 1787 Arrêt of the Conseil du Roi imposed fixed requirements for the protection of designs. For example, manufacturers had to present designs to the bureau de la communauté [bureau of the community] before selling them (Arts 5, 6 and 7). The term of protection was for a fixed period of time—15 years for fabrics for church decorations and six years for clothing fabrics (Art 1).21 As noted above, both the Ordonnance of 1778 and the Arrêt of 1787 used the term ‘propriété (propriétaire)’ to describe the exclusive protection of designs.22 The Arrêt of 1787 referred to manufacturers as being entitled to such rights. Regardless of its legal nature, the protection of designs in the fabric industry in Lyon during the ancien regime was intended to restrict and prevent competition, and so could be characterized as unfair competition.

14.3 The French Revolution and 1793 Act on Literary and Artistic Property As a result of the French Revolution in 1789, the guilds were abolished and, at the same time, all the regulations described above were abolished. However, unlike ‘inventions’ and ‘works’, a new law was not enacted for designs, and it was unclear whether designs would be protected by the law of 19 and 24 July 1793 (1793 Act on Literary and Artistic Property).23 Article 1 of the 1793 Act on Literary and Artistic Property stipulated that: Authors of writings of all kinds, composers of music, painters and drawers who have engraved pictures or designs, shall enjoy during their entire life the exclusive right to sell, distribute their works in the territory of the Republic and transfer ownership in whole or in part.

Drawers [dessinateurs] were referred to in the provisions, and so there was a question as to whether the 1793 Act covered only art pure [fine art] or also covered art appliqué [applied art] created by the drawers.24 This generated a theoretical

19

Fauchille (1882), p. 25. Bougeard (1986), p. 13. 21 Fauchille (1882), p. 25; Philipon (1882), p. 61. 22 However, as in Art. 1 of the Ordonnance of 1787, this ‘propriété’ was considered to be a ‘privilege’: Philipon (1882), p. 69; Fressonnet (1981), p. 12. 23 Roubier (1954), p. 378. 24 Roubier (1954), p. 378. 20

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conflict between those that thought the law only applied to fine art,25 and those that argued it applied to both applied art and fine art.26 In 1793, the Cour criminelle du Loiret [Criminal Court of the Loiret] determined that the 1793 Act on Literary and Artistic Property was not applicable to ouvrages de dominoterie [works of dominoterie]. However, in 1804, the Cour de Cassation [French Supreme Court] dismissed the final appeal,27 finding that the father of the Plaintiff was not the true creator. From this it was implied that the 1793 Act on Literary and Artistic Property applied to works of dominoterie.28

14.4 1806 Act for Industrial Design It is not possible to say whether the protection of the Lyonese silk fabric industry was adequate without a clear sense of the scope of protection afforded to designs by the 1793 Act on Literary and Artistic Property. It is also unclear whether the 1793 Act required the deposit of designs at the Bibliothèque nationale de France [National Library of France], although it did require the deposit of engravings (Art. 6).29 After Napoleon the Emperor visited Lyon in 1805, a law was enacted on 18 March 1806 which protected industrial designs and models based on a petition by the silk fabric traders in Lyon.30 While the 1806 Act was primarily intended to establish the Conseil de prud’homme, section III of Title 2 provided for the protection of property in designs. The Act stated that the manufacturer was the owner of property in designs and that the deposit of designs was required at the Conseil de prud’homme (Arts 14 and 15).31 The deposit was to be kept secret unless a dispute occurred.32 The period of protection was either one year, three years, five years or in perpetuity, at the option of the manufacturer (Art. 19). While the period of protection had been limited under the Arrêt of 1787, perpetual protection became possible under the 1806 Act. It has been suggested that this was because protection in perpetuity was possible before the Arrêt of 1787 and, while there was an intérît social [social interest] in

25

Vaunois (1898), p. 11; Augustin-Charles (1860), p. 434. Gastambide (1837), p. 323; Blanc (1838), pp. 572–573; Philipon (1880), p. 33; Philipon (1888), p. 23. 27 Cass 5 brumaire an X III in Merlin (1812). 28 Merlin (1812), p. 110, no XI; Philipon (1882), p. 79; Pouillet (1911), p. 23; Roubier (1954), p. 378. For an alternative view, see Vaunois (1898), p. 15. 29 Philipon (1882), p. 80. 30 Roubier (1954), p. 379. Bougeard refers to the 1806 Act as the first law concerning designs: Bougeard (1986), p. 10. 31 According to caselaw, it was impossible to allege infringement unless a deposit was made before the act of selling etc. of the design or model: Cass., 1er jullet 1850, D.1850.1.203. 32 Bougeard (1986), p. 21. 26

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preventing an ongoing monopoly by a patent or a work, this did not extend to designs or models.33 Infringement could result in saisie [seizure],34 as well as criminal penalties under Art. 425 of the Criminal Code.35 The 1806 Act was an act of incorporation of the Conseil de prud’homme in Lyon and so the protection of designs was limited to Lyon. However, the Conseil de prud’homme could also be established in cities which were determined to be suitable by the Government in accordance with a Décret by the Conseil d’Etat (Art. 34), and would have the same authority as the Conseil de prud’homme in Lyon (Art. 35). Conseil de prud’homme did not exist throughout France which made it difficult to establish manufacturing in cities where the Conseil de prud’homme did not exist.36 An Ordonnance of 17 August 1825 established that deposit was also possible at the clerk’s office of tribunal de commerce [Commercial Court] (Art. 1).37 The law of 1806 covered only the designs of étoffe [fabric], and therefore, there was a question as to whether the law applied to industrial designs, such as papiers peints [wallpaper].38 According to an Avis [opinion] of the Conseil d’Etat on 30 May 1823, industrial designs such as wallpapers were not subject matter protected under the 1793 Act on Literary and Artistic Property, but were protected by the 1806 Act.39 Furthermore, the deposit of models in the Conseil de prud’homme became possible and, over time, widely used;40 and case law gradually established protection

33

See Philipon (1882), p. 87: ‘Manufacturers are, it is true, forced to have new designs made up, instead of being able to use those of their competitors’. 34 Décret impérial du 30 mars 1808 contenant règlement pour la police et la discipline des cours et tribunaux [Imperial decree of 30 Mar 1808 containing regulations for the police and discipline by courts and tribunals], Art. 54. 35 Chabaud (1913), p. 38. 36 See Bougeard (1986), p. 18. For example, in the regions where tissus and the étoiffes flourished, Mulhouse, the Conseil de prud’homme was established as early as 7 May 1808: Archives de Paris (1993), p. 46. In 1848, the Conseil de prud’homme existed in 75 cities: Marchal (2009), p. 111. 37 In 1858, in Paris, the Conseil de prud’homme accepted four categories of deposits: métaux [metal], produit chimiques [chemical products], tissus [fabrics] and industries diverces [other industries]. The tribunal de commerce accepted only the deposit of the marques de fabrique [trade marks]: Archives de Paris (1993), p. 21. While the first Conseil de prud’homme in Paris was established in accordance with the Ordonnance on 29 December 1844, it was only intended for the metal industry. In accordance with the Ordonnance on 9 June 1847, the Conseil de prud’homme was established for chemicals, fabrics, and other industries: Marchal (2009), p. 111; Archives de Paris (1993), p. 44. 38 See Philipon (1882), p. 90; Pouillet (1911), p. 30; Greffe and Casalonga (1937), p. 5; Roubier (1954), p. 379. 39 See Philipon (1882), p. 90; Pouillet (1911), p. 30; Greffe and Casalonga (1937), p. 5; Roubier (1954), p. 379. 40 As for the number of deposit of models: 150 in 1840, 4,048 in 1850, and 9,815 in 1904. As for design: 15 in 1813, 440 in 1814, 3,237 in 1825 and 54,372 in 1904: Lespès (1911), pp. 36, 61.

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not only for designs,41 but also models as designs en relief [embossed designs].42 For example, cannonball-shaped chocolate was protected.43 Therefore, the 1806 Act applied not only to the designs of fabrics, but all industrial designs, so that even models came to be protected; and deposits in districts without a Conseil de prud’homme became possible, and so the protection of designs and models became possible throughout France.44

14.5 1902 Copyright Act (Extending the Application of the 1793 Act on Literary and Artistic Property to Works of Sculpture) As noted, the Avis by the Conseil d’Etat in 1823 denied the protection of industrial designs (such as wallpaper) under the 1793 Act on Literary and Artistic Property. However, according to case law, models that had industrial properties—such as bronzes and porcelain falcons—could be protected by the 1793 Act.45 Furthermore, the concept of industrial models itself came to be generally accepted as a result of the development of industry in the middle of the nineteenth century.46 The distinction between the fine arts and industrial arts became a controversial issue, in practice.47 The distinction was unclear when it came to industrial designs, and so even if a design could be protected under the 1793 Act, deposit was still required—and advisable as a precaution—under the 1806 Act for Industrial Design.48 This situation generated various theories about the distinction between the fine arts and the industrial arts,49 and various proposals for new laws were made.50 41

Initially, protection of designs printed on toile [cloth] and étoff [fabric] was assumed: Paris 19 févr 1835, S.1835, 2, 161. However, after a time, the design of other fabrics began to be protected: Trib. com. Seine, 23 mars 1877, Ann.1877, p. 181. 42 See Cass.crim., 25 nov 1881, Ann., 82.133, S.84.1.172. Ducreux (1898), p. 66; Greffe and Casalonga (1937), p. 5; Roubier (1954), p. 380. For the protection of the models during the ancien regime, see: Fauchille (1882), p. 34; Pouillet (1911), pp. 11–14. 43 Nancy, 26 mai 1883, Ann. 1883, p. 279. 44 For more information on the influence of the French textile industry on the English textile industry and the influence of French law on English design law at this time, see Chapter 10 by Professor David Musker. 45 Paris, 22 juin 1818, S.1815-1818, 2, 396 (bronzes); Paris 24 mai 1837, S.1837, 2, 286 (porcelain falcons). 46 Bougeard (1986), p. 23. 47 Pouillet (1911), p. 36; Roubier (1954), p. 380. For more information on the relationship between design and art from the perspective of the field of design, see Chapter 13 by Professor Catherine Geel. 48 Bougeard (1986), p. 27. 49 Pouillet (1911), p. 39; Kahn (2018), pp. 11–12; Pérot-Morel (1968), pp. 41–42. 50 Pouillet (1911), pp. 55–62; Roubier (1954), p. 380. The proposals of sénateur [senator] Bozerian and député [deputy] É.Philipon are famous: Bougeard (1986), p. 29.

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However, Soleau—who was Président de la Réunion des fabricants de bronzes [President of the Union of Bronze Manufacturers]—argued that it was difficult to distinguish industrial designs from works.51 As a result, the 1793 Act was amended by the 1902 Copyright Act in accordance with the théorie de l’unité de l’art, which was said to originate from the writings of Pouillet.52 The following statement was added to Art. 1 of the 1793 Act: ‘The same right shall belong to sculptors and designers of ornaments, regardless of the merit and purpose of the work’. This provision clarified that industrial designs were subject to protection by the 1793 Act (which had been revised by the 1902 Act).53 This understanding was shared by the courts, which held that the 1902 Act also applied to medaillons,54 watch holders for automobiles,55 and catalogs for machines.56

14.6 1909 Act for Designs and Models When the 1793 Act on Literary and Artistic Property was amended to protect industrial designs and models, the role of the 1806 Act for Industrial Design as a design law was reduced.57 Some interpreted this to mean that the 1806 Act had been partially abolished,58 while others thought that fabric designs and models should only be protected by the 1793 Act (to be achieved by abolishing the 1806 Act and revising the 1902 Act).59 However, the 1806 Act still had a purpose—deposit ensured that there was proof of rights.60 Therefore, the 1909 Act for Designs and Models—enacted on 14 July 1909—allowed deposit to continue in the same way as under the 1806 Act.61 Article 1 of the 1909 Act provided that: Any creator of a design and his successors in right shall have the exclusive right to exploit, sell or let others sell this design, under the conditions provided by this law, without prejudice 51

Pouillet (1911), p. 63. See Soleau (1897), pp. 70–76. The 1902 Act is considered to be the result of successful lobbying by the industrial world: Bougeard, p. 30. See Pouillet (1884), p. XI; Bougeard (1986), p. 28; Kahn (2018), p. 13. The théorie de l’unité de l’art was supported by a large number of manufacturers: Bougeard (1986), p. 28. 53 Roubier (1954), p. 381. As for dual protection from 1902 to 1967, see Kahn (2018), pp. 12–16. 54 Paris 23 juin 1905, Ann. 1905, p. 321. 55 Trib civ Seine 1er févr 1905, Ann. 1905, p. 326. 56 Trib. Civ. Seine 5 févr 1906, Ann. 1906, p. 207. 57 Pouillet (1911), p. 67; Greffe and Casalonga (1937), p. 8. 58 For an alternative view, see Lespès (1911), p. 61. 59 Pouillet (1884), p. XI; Pouillet (1911), p. 67. As for the relationship between the 1806 Act and 1902 Act, see, in particular, Deybach (1904). 60 Roubier (1954), p. 382. 61 Fauchille (1882), p. 32; Greffe and Casalonga (1937), p. 8. Bougeard suggests that the 1909 Act was enacted to correct defects relating to the duration of the deposit and proprietary rights: Bougeard (1986), p. 31. 52

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to the rights that they obtained by other legal provisions and in particular by the law of 19 and 24 July 1793, amended by the law of 11 March 1902.

The 1909 Act specified that it protected not only designs, but also models. Moreover, the 1909 Act did not affect the rights (copyright) under the 1793 Act on Literary and Artistic Property, as revised by the 1902 Act; and the compatibility of both laws was explained by the théorie de l’unité de l’art.62 As for the designs or models to be protected, Art. 2(1) of the 1909 Act provided that: This law applies to any new design, any new plastic form, any industrial object that can be distinguished from similar objects, either by a distinct and recognizable configuration giving it a novelty, or by one or more external effects giving it a peculiar and new physiognomy.

Furthermore, Art. 2(2) addressed the demarcation between designs and the subject matter to be protected under patent law.63 While property rights in designs or models were attributed to a creator or their successors in right under the 1909 Act, the déosant [first applicant] was presumed to be the creator based on the deposit (Arts 3(1) and 3(2)) and, in the case of infringement, civil and criminal sanctions applied (Art. 10).64 Further, while designs or models were to be kept secret for five years after the deposit (Art. 6(1)), an applicant could request disclosure of the designs or models during this period (Art. 6(2)). When filing a lawsuit, designs or models always had to be disclosed (Art. 6(3)). The period of secrecy could be extended up to 25 years from the date of the deposit (Art. 6(4)).65 An act by a third party before deposit was not regarded as infringement (Art. 11(1)). Even after deposit, a third party was not mauvaise foi [acting in bad faith] before the disclosure of the deposit and therefore a propriétaire [owner] could not file a civil or criminal lawsuit (Arts 11(2) and 11(3)). Saisie-contrefaçon [counterfeit seizure] was possible in response to infringement (Art. 12). Novelty was necessary as a substantive requirement (Art. 2(1)), but the property of a right holder was not affected by the sale, etc. of a design or models by another person before deposit (Art. 3(3)).66 The duration of protection was for a maximum of 50 years from the date of deposit (Art. 7(1)). Articles 15 to 19 of the 1806 Act were abolished by the 1909 Act (Art. 17). As noted, the 1909 Act presumed that the first applicant was the creator, laying the 62

See Françon (1986), p. 43. As to how applied arts were understood to be protected in a limited manner by the 1793 Act on Literary and Artistic Property, as revised by the 1902 Act, and under the 1909 Act for Designs and Models, see Chabaud (1913), pp. 61–79. 63 See S.1910, Lois Annotés, p. 971. As for discussion in France, see Pollaud-Dulian (2005), p. 657. 64 Therefore, the deposit was declarative: Pouillet (1911), p. 70. 65 As for the deposit, it was necessary to apply for an extension up to 25 years before five years had elapsed; and for an extension up to the maximum of 50 years, before 25 years had elapsed: Art. 7(1). The designs or models in the deposit could only be kept secret for the first 25 years: Françon (1986), p. 40. 66 For discussion of the difference between substantive requirements for designs and patents, see Françon (1986), p. 37.

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basis for the creator, not the manufacturer, to be the owner of the property right.67 Further, the subject matter to be protected was specified as designs or models, and the protection was effective throughout France (and the overseas territories). Therefore, the core elements of modern design law were set out in the 1909 Act. The secret deposit system was maintained as it was thought that it was preferable to not disclose the content of a deposit to competitors.68

14.7 1952 Act for Fashion and Seasonal Creations In 1952, a special law was enacted for clothing products, etc. (sewing, fur, lingerie, etc.).69 The courts had denied the application of the 1806 Act for Industrial Design to clothing products, etc.70 However, there was a court decision immediately prior to the enactment of the 1909 Act for Designs and Models that suggested that the 1806 Act did apply to clothing products.71 The 1909 Act provided for the protection of models and so clothing products became the subject matter of protection; and the 1793 Act on Literary and Artistic Property (as revised by the 1902 Act) also protected clothing products.72 However, fashion products such as clothing often possess a caractère collectif [collective character], as well as a limited ‘shelf life’ that corresponds to fashion trends.73 Therefore, it was considered pointless to make a deposit based on the 1909 Act and pay costs for long-term protection.74 Furthermore, the standard of originality required for protection under copyright law was a barrier to protection.75 Therefore, in order to protect clothing products, etc., from unauthorized reproduction, a law concerning seasonal design was enacted in 1952.76 Article 2 provided that:

67

Pollaud-Dulian (2012), p. 515. Roubier (1954), p. 446. 69 Law No 52–300 of 12 Mar 1952, JORF du 13 mars 1952, p. 2931. For more information on French fashion at this time, see Chapter 13 by Professor Catherine Geel. 70 Pérot-Morel (1968), p. 58. Triv corr. Seine, 14 mai 1897, Ann. 1899, 118; Trib. Civ. Seine 5 juin 1860, Ann. 1860, 396; Paris 25 mai 1895, Ann. 1895, 152. 71 See Roubier (1954), pp. 425–426. Needless to say, the deposit of clothing products also occurred under the 1806 Act: Archives de Paris (1993). 72 See Cass. 8 déc 1934, D.P.1935.85, Cass., 9 nov 1935, Ann.1937, 251. However, the protection of clothing products by the Copyright Law of 1793 had been denied until about 1920: Pérot-Morel (1968), pp. 46 and 58; p.e. Paris, 11 mars 1909, Ann. 1909, 234. See Bertrand (1998), p. 26. 73 Roubier (1954), p. 427. 74 Pérot-Morel (1968), p. 59. 75 In Desbois H (1966), p. 111. Pérot Morel has also pointed out that the sanctions under the copyright law were too soft, even when unauthorzed reproduction resulted in irreparable damage to a creator: Pérot-Morel (1968), p. 59. 76 For a discussion of the purpose of this legislation, see Greffe and Greffe (1988), pp. 240–242. 68

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Within the meaning of this law, seasonal clothing and adornment industries are considered those which, due to fashion requirements, frequently renew the shape of their products, and in particular sewing, fur, lingerie, embroidery, fashion, footwear, gloves, leather goods, the manufacture of highly novel or special fabrics for haute couture and the productions of adornment manufacturers and shoemakers.

As a result of this law, unauthorized reproduction of protected seasonal clothing products was considered to constitute infringement (without requiring prior deposit) (Art. 3).77 While examples of seasonal industries were listed in Art. 2, they were not defined and were left for the court to interpret.78 Although the courts argued that the products of seasonal industries were not limited to single-season products,79 it was unclear what period of time was intended by the term ‘seasonal’.80 The 1952 Act was considered to be a supplementary law to the 1909 Act and the 1793 Act (as revised by the 1902 Act).81 However, the seizure of counterfeit goods could also be performed under the 1793 Act (as amended by the 1957 Copyright Act outlined below).82 Therefore, in 1992, the 1952 Act was abolished at the same time as the codification of intellectual property (IP) law in the Intellectual Property Code (IP Code), and its content was incorporated into the part relating to copyright law (in and after Art. L.111-1).83

14.8 1957 Copyright Act and ‘Total Cumulation’ The 1793 Act on Literary and Artistic Property (as revised by the 1902 law) was again revised in 1957.84 Article 2 of the 1957 Copyright Act clarified that applied art was protected under both the 1909 Act for Designs and Models and the 1957 Act, and that dual protection continued to be possible. In this period, dual protection by both laws was called ‘Total Cumulation’.85 The 1909 Act for Designs and Models imposed a requirement of ‘novelty’ not previously included in the 1806 Act, and the 1957 Act imposed a requirement of ‘originality’ not included in the 1902 Act. 77

Pérot-Morel (1968), p. 65. Desbois (1966), p. 112. 79 Cass., 12 mars 1958, D.1958, 511. S.1958, 265. 80 Desbois (1966), p. 112; Colombet (1990), p. 105. 81 Pérot-Morel (1968), p. 67. 82 See Colombet (1990), p. 106. A specific counterfeit seizure process was a key element of the 1952 Act: Kahn (2018), p. 15. 83 See CPI. L.112–2 no 14. Needless to say, protection by the 1909 Act for Designs and Models was not excluded: Passa (2009), p. 897. 84 Law No 57–298 of 11 Mar 1957, JORF du 14 mars 1957, p. 2723. 85 See Pérot-Morel (1968), p. 47. For a discussion of dual protection from 1957 to 2001, see Kahn (2018), pp. 16–19. 78

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Traditionally, the originality required in copyright law related to the expression of an empreinte de la personnalité [imprint of the personality] in a work by an author.86 However, the presence or absence of originality in a work came to be determined by a comparison with existing works. Therefore, over time, the determination of originality under copyright law became virtually the same as the determination of novelty as an objective requirement under the 1909 Act, and the concepts began to become confused.87 There is also case law to the effect that originality is derived from lack of prior art/existing works,88 and the general understanding of originality and novelty was confused.89 What are the advantages of a system in which the théorie de l’unité de l’art is adopted and total cumulation is permitted? The merits of allowing protection under copyright law in addition to design and model laws include the following.90 While the acquisition of design and model rights requires strict formality, such as filling out an application and registration, no formality is required for acquiring copyright. Moreover, the duration of protection under each of the laws is different, the copyright term being longer. As for the inheritance of rights, design and model laws follow the general law, while copyright law includes a special provision relating to a conjoint survivant [surviving partner]. From the perspective of litigation, even if an action for infringement based on a design and model right is rejected in the first instance, infringement of copyright can be argued in an appeal hearing, as it is not classified as a ‘new appeal’ (for example, under Art. 565 of current Code of Civil Procedure).91 The disadvantages of permitting total cumulation are rarely discussed in France. It is sometimes stated that there is over protection.92 However, problems caused by this are never identified.

86

Pollaud-Dulian (2014), p. 157; Vivant and Bruguière (2019), p. 302; Gautier (2019), p. 50; Caron (2020), p. 84. 87 See also Chatry (2012), p. 54; Kahn (2018), pp. 15–16; Greffe and Greffe (2019), p. 89. 88 CA Paris, 22 nov 1988, PIBD 1989, III, p. 243. 89 See also Trib. Com. 29 oct 1986, PIBD 1987, III, p. 40. 90 Greffe and Casalonga (1937), pp. 9–10, and p. 21; Roubier (1954), p. 409; Pérot-Morel (1968), p. 33; Françon (1986), p. 47. 91 Cass. req., 27 déc 1927: S.1928, 1, p.m137, CA Paris, 29 oct 1935, Ann.1937, p. 255; CA Paris, 30 juin 1992, PIBD 1992, III, p. 634. Although not necessarily an advantage, it is also noted that the design and model law differs from copyright law in terms of requiring documents with regard to the saisie-conrtefaçon [counterfeit seizure], criminal penalties and the transfer of rights. 92 See Gautier (2001), n° 68, pp. 112–113. The first edition of this text does not even include this expression (Gautier (1991), n° 59, p. 93). The eleventh edition states that the period of protection and the formality requirements make design protection less attractive (Gautier (2019), p. 119).

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Examples of designs that are also protected by copyright law include car bodyworks,93 fabrics,94 a lamp shape,95 Pont Neuf of Paris packaging,96 a scarf,97 earrings,98 rings,99 packaging decorations,100 boat models.101

14.9 1990 Industrial Property Act In 1990, the 1909 Act for Designs and Models was revised by the 1990 Industrial Property Act.102 Key features of this reform included simplification of the deposit system, the establishment of certain requirements for examination, a change to the process for extending the period of protection, and establishment of a national register of designs and models.103 The complicated procedure for deposit set out in the 1909 Act—such as, putting two designs or models in a cardboard box and sealing the box after putting a cachet [stamp] along with an applicant’s signature on it—was simplified so that only an applicant’s identification details and a reproduction of the designs or models was required. Further, the deposit was to be administered by the Institut national de la propriété industrielle (INPI). Examinations were not performed under the 1909 Act. However, the 1990 Act stipulated that designs or models were to be examined in terms of formality requirements and public policy, and that a deposit could be refused unless these conditions were met (Art. 6).104 Under the 1909 Act, an extension of the period of protection was to be filed in the fifth and the twenty-fifth year, so that protection for the maximum period of 93

Lyon, 27 mai 1987, PIBD 1987, no 421, III, p. 431. Paris, 5 mars 1987, RDPI 1987. no 13, p. 155. 95 Paris, 5 févr 1987, PIBD 1987, no 420, III, p. 401. 96 Paris, 13 mars 1986, Ann. 1987, p. 223. 97 Paris, 11 mai 1987, Ann. 1988, p. 311. 98 Paris, 7 déc 1988, Cah.dr.aut. 1989, no 12, p. 16. 99 Paris, 30 juin 1986, Ann. 1987, p. 221. 100 Paris, 22 janv 1985, Ann. 1986, p. 97. 101 Paris, 24 janv 1985, Ann. 1986, p. 98. This is based on the example in Azéma and Galloux (2012), p. 723. 102 Law n° 90–1052 of 26 Nov 1990. The requirement to deposit at the Conseil de prud’homme ended on 18 January 1979: Loi n° 79–44 du 18 janvier 1979 portant modification des dispositions du titre 1er du livre V du code du travail relatives aux conseils de prud’hommes. From this time, deposit was required with the Institut National Propriété Industrielle (INPI) or the greffe [clerk] of the tribunal de commerce [Commercial Court]: Fressonnet (1981), p. 16; Françon (1986), p. 38. For a discussion of the state of product design in France in the twentieth century and the role of the Centre de Création Industrielle [Center for Industrial Creation] (CCI), see Chapter 13 by Professor Catherine Geel. 103 Françon (1992), pp. 780–782, Schmidt-Szalewski (1991), pp. 33–34, Boespflug (1991), p. 35. 104 This did not extend to an examination of substantive requirements such as novelty. 94

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50 years could be granted. However, under the 1990 Act, an extension of the period of protection was filed only once in the twenty-fifth year (Art. 7). In addition, a national register system was established that was similar to the system under patent and trade mark laws.105 Furthermore, the right of an applicant to keep a deposit secret for a period of five years and to extend that period up to 25 years was abolished. Even if an applicant desired confidentiality, an application had to be disclosed after a period of three years from filing.106 Therefore, the general rule was one of disclosure, and secret deposits were to be the exception.107

14.10 The Intellectual Property Code, EU Design Directive and Partial Cumulative Protection In 1992, the 1909 Act for Designs and Models and the 1957 Copyright Act were consolidated in the IP Code. The European Union (EU) Design Directive (EU Design Directive),108 which became effective in 1998, was also incorporated into France’s domestic law by the Ordonnance 2001-670.109 The new IP Code specified the subject matter to be protected in the Design and Model Law (Arts 511-1 to L.22-2) and the provisions relating to must-fit designs or models (Art. L.511-8). Furthermore, the overlap of the Design and Model Law and Copyright Law changed from total cumulative protection to partial cumulative protection.110 Partial cumulative protection under both laws is determined in terms of the difference between the substantive requirements under the Copyright Law (Art. L.111-1) and the Design and Model Law. The EU Design Directive, as incorporated into France’s domestic Design and Model Law, clarified that ‘novelty’ (Art. L.511-3) is required and introduced a new requirement of ‘individual character’ (Art. L.511-4). As a result, the requirement for ‘originality’ under the copyright law can no longer be equated with the substantive requirements under the Design and Model Law.111 Therefore, total cumulation may no longer be assumed.

105

Loi n° 68–1 du 2 janv 1968 sur les brevets d’invention; Loi n° 64–1360 du 31 déc 1964 sur les marques de fabrique, de commerce ou de service. 106 Décret, n° 92–792 du 13 août 1992, Art. 9. 107 Pollaud-Dulian F (2012), p. 571. 108 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, (1998) OJ L 289/28 (EU Design Directive). 109 Ordonnance n° 2001–670 du 25 juil 2001 portant adaptation au droit communautaire du code de la propriété intellectuelle et du code des postes et télécommunications. 110 Lambert (2004), p. 20. 111 Bénabou (2002), p. 45; Pérot-Morel (2005), p. 9; Schmidt-Szalewski and Pierre (2007), p. 148; Passa (2009), p. 905; Marino (2013), p. 387.

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Case law has confirmed this approach.112 For example, a Cour de Cassation judgment dated 13 December 2011 clarified that the substantive requirements of both laws are important and must be considered: Article 17 of the Directive dated 13 October 1998 and L. 513-2 of the Intellectual Property Code does not impose total cumulation or full rights to various protection, but authorizes only such a cumulation when all the respective possibilities of different forms of protection are met.113

Therefore, some designs or models may now only be protected under the Design and Model Law. There are decisions from the lower courts that suggest that when protection under the Copyright Law is denied because the originality requirement is not satisfied, protection under the Design and Model Law is possible if the requirements for novelty and individual character are met.114 It has also been suggested that there is now a tendency to exclude ‘industrial works’ from the Copyright Law.115 The interpretation of the nature of a ‘new appeal’ under the Code of the Civil Procedure has also changed. A determination of the Court of Appeal in Paris in 2011 stated that an infringement action based on design and model rights and an infringement action based on copyright ‘do not aim at (achieving) the same objective in the meaning of Art. 565 of the Code of the Civil Procedure’.116 It has been suggested that this decision is not in conflict with the théorie de l’unité de l’art, because both laws do not have the same purpose or requirements. Even if both rights apply to the same subject matter, a different type of injunction to prevent infringement will need to be sought.117 Therefore, after the EU Design Directive was incorporated into domestic law, the approach to dual protection changed from total cumulation to partial cumulation. However, this was because the substantive requirements under the Design and Model Law changed, not because the théorie de l’unité de l’art in the French Copyright Law was abandoned.118

112

This was observed immediately after the Ordonnance in 2001: TGI Paris, 15 févr 2002, PIBD 2002, no 748, III, p. 377. 113 See Cass.crim., 13 déc 2011, PIBD 2012, no 957, III, p. 180. For similar decisions, see Cass com., 20 févr 2007, PIBD 2007, no 851, III, p. 315; Cass.civ., 5 avril 2012, PIBD 2012, no 966, III, p. 523; Cass. crim., 26 nov. 2013, PIBD 2014, no 999,III, p. 122. For lower court decisions, see Paris, pôle 5, 2e ch., 19 avril 2013, n° 12/17382, D. 2014, pan. p. 2212, obs. Galloux. This view is generally shared by academic commenators: Antoine-Lalance (2011), p. 64; De Cande (2011), no 41, p. 426; Kahn (2012), pp. 20–21. 114 CA Paris, 7 avril 2006, PIBD 2006, no 832, III, p. 446; TGI Paris, 11 janv 2011, n° 10/10701, TGI Paris, 29 mars 2011, PIBD 2011, no 942, III, p. 447; CA Paris, 8 juin 2011, PIBD 2011, no 948, III, p. 625; TGI Paris, 10 juin 2011, PIBD 2011, no 951, III, p. 709. 115 Kahn (2011), p. 65; Gasnier (2014), p. 21. 116 Paris, 24 juin 2011, PIBD 2011, no 947, III, p. 589. 117 Gasnier (2014), p. 25. 118 The Report of the ‘Ordonnance’ confirms that the théorie de l’unité de l’art is maintained: Avant-propos, ord. no 2001-670 du juil 2001, JORF, 28 juil 2001, p. 12,132. This interprettaion is also supported by academic commentators: Passa (2009), p. 903; Chatry (2012), p. 67.

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14.11 Protection Under the Intellectual Property Code As noted, the Design and Model Law is now set out in Arts L.511-1 to L.522-2 of the IP Code. The provisions generally follow those of the EU Design Directive, and their interpretation is informed by the Court of Justice of the European Union (CJEU) interpretation of the equivalent provisions of the EU Design Regulation.119

14.11.1 Substantive Requirements 14.11.1.1

Protected Designs and Models

Article L.511-1 of the IP Code provides that a design or model is the ‘appearance of the whole or a part of a product resulting from the features of, and in particular its lines, contours, colors, shape, texture or materials’. Designs and models may include industrial products, handicraft products and typographic typefaces, but not computer programs. The definition has been interpreted to also exclude natural objects and fine arts.120 Designs and models relate to the outer appearances of products, and so visibility is required. For example, components incorporated into a complex product must remain visible during normal use of the product (Art. L511-5(a)). Normal use relates to use by an end user.121 However, even if the requirements for designs and models under the IP Code are satisfied, certain categories of designs or models may not to be protected. First, designs or models that are ‘contrary to public policy’ cannot be protected (Art. L.511-7). For example, designs or models that are considered to be obscene will be refused for being contrary to public policy. Such provisions do not exist in the Copyright Law, and therefore, designs or models that are contrary to public policy may be protected under the Copyright Law.122 Furthermore, the design or model ‘of a product whose features are solely dictated by the technical function of the product’ are not to be protected (Art. L.511-8(1)). This is because product features that are dictated by technical functions are more appropriately protected under the Patent Law (IP Code, Book 6).

119

Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. For a brief overview of the current law in English, see Bouche (2020). 120 Pollaud-Dulian (2012), p. 524. 121 Cass. com, 20 févr 2007, Bull. Civ. IV, no 53, p. 56. 122 Raynard et al. (2016), p. 306.

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Novelty

According to Art. L.511-1, a design or model will be protected if it is ‘new’. Article L.511-3 provides that a design or model will be new if, ‘on the date of the filing of the application for registration or on the date of the priority claimed, no identical design or model has been disclosed’. Even if a creator of a design or model, their successors in right, or any third person, discloses the design or model, novelty will not be lost, and the design or model may still be the subject of an application, if an application is filed within 12 months from the day of disclosure (Art. L.511-6(a)).

14.11.1.3

Individual Character

Article L.511-4 provides that a design or model must also satisfy the requirement for individual character. A design or model has individual character if: the overall visual impression it produces on the informed observer differs from that produced by any design or model disclosed before the date of the filing of the application for registration or before the date of priority claimed.

Furthermore, when assessing individual character, the degree of freedom of the designer in developing the design or model will be taken into consideration (Art. L.511-4). The greater the degree of freedom of a designer, the more likely it is that small differences between the designs or models to be compared will not satisfy the requirement for individual character. Inversely, the more the designer’s freedom is restricted, the more likely it is that small differences between the designs or models to be compared will satisfy the requirement.123

14.11.2 Formality Requirements 14.11.2.1

Application for Registration

Article L.511-9 provides that an application for registration is required in order to protect a design or model. The application for registration must be filed with the INPI (Art. L.512-1). When the application for registration is filed, an applicant is presumed to be a beneficiary of protection (Art. L.511-9). Therefore, the applicant is presumed to be the right holder, unless a true right holder claims ownership and brings legal proceedings before a court under Art. L.511-10. Article L.511-10 also provides that ownership claims are barred five years from the publication of the registration of the design or model or, in case of bad faith, upon the date of publication of the registration or of the acquisition of the design or model, following the expiry of the protection period. 123

Trib. UE, 12 mars 2014, aff.T-315/12, Propr.indust. 2014, comm.31, J.-P. Gasnier.

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Dépôt Simplifié [Simple Deposit]

Article L.512-2 provides, in the case of a design or model pertaining to industries that frequently change the form and presentation of their goods, filing may be affected in a simplified form according to conditions laid down by a Conseil d’Etat decree. According to this process, a design or model is not automatically disclosed unless an applicant desires disclosure. Under Art. R.512-11, a design right will lapse unless an application for disclosure is filed within 30 months. This system has the advantage of providing owners of designs that may be in fashion for a short period a time a fixed period within which to decide whether the acquisition of a design and model right is required.124

14.11.3 Examination According to Art. R.512-9, examination by the INPI involves checking compliance with certain formality requirements and that the design or model is not contrary to public policy. It does not include consideration of the substantive requirements of novelty and individual character. Consideration of the validity of a design or model registration is usually considered in infringement litigation proceedings.

14.11.4 Legal Effect of Design and Model Rights Registration takes effect from the date of the filing of the application for a period of five years, which may be extended by periods of five years within a maximum limit of 25 years (Art. L.513-1). While the design and model right is an absolute exclusive right, under Art. L.513-4, the acts that constitute infringement are limited to making, offering, putting on the market, importing, exporting, using or possession for these purposes of a product without the consent of the design or model owner. The design and model right extends to any design or model which does not produce on an informed observer a different overall visual impression (Art. L.513-5). Therefore, the legal effect of design and model rights covers designs or models that are identical or quasi-identique [quasiidentical] to a registered design or model.125 Design and model rights also cover reproduction of a part of a product.126 Whether an allegedly infringing product causes confusion among users is not considered when determining infringement.127

124

Pollaud-Dulian (2012), p. 570. Raynard et al (2016), p. 343. 126 Pollaud-Dulian (2012), p. 621. Cass. crim., 6 juin 1991, Bull.crim., no 240, p. 617. 127 Cass. com., 19 sept 2006, n° 04–13,871, inédit. 125

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14.12 Unfair and Economic Parasitical Competition In France, in addition to the infringement of IP rights, an action en concurrence déloyale [action for unfair competition] and an action en concurrence parasitaire [action for parasitical competition] are possible. The grounds for these actions are found in Arts 1240 and 1241 of the Civil Code.128

14.12.1 Unfair Competition and ‘Parasitism’ The concurrence déloyale is premised on the fact that parties are in a competitive relationship,129 and has traditionally been accepted in France as the concept on which an action for unfair competition is based. A typical example of the concurrence déloyale is an act which is likely to cause confusion in relation to the origin of another person’s goods or services. In contrast, ‘parasitism’—introduced as a concept in France in the 1950s—does not require a competitive relationship between the parties,130 and was intended to restrict the exploitation of another party’s reputation, for example, the unauthorized use of a famous trade mark on merchandise.131 However, over time, the concept of ‘parasitism’ has expanded and—following a decision by the Cour de Cassation—is now understood to relate to ‘a set of behaviors by which an economic agent interferes with the advancement of another in order to profit, without spending anything, from his efforts and his know-how.’132

14.12.2 Fait Distinct [Distinguishing Fact] A ‘distinguishing fact’ has traditionally been required to support an action for unfair competition or parasitical competition in addition to an action for the infringement

128

As a result of the Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005, the definition of ‘unfair competition’ was incorporated into L.120-1 of the Consumer Code in accordance with the Loi no 2008–3 du 3 janv 2008. 129 Burst (1993), p. 3. 130 This concept was introduced into French law by Saint-Gal (1956), no 24, p. 19: Burst (1993), no 179, p. 97. 131 See Saint-Gal (1956), p. 37; Burst (1993), p. 3. See Buydens (1993) and Tréfigny (2000) on the increasing acceptance of the concept of economic parasitism. Famous trade marks are protected in accordance with the Loi no 91-7, 4 janv 1991 (Art. L.713-5 of the IP Code). 132 See Cass. com., 26 janv 1999, D. 2000, juris. p. 87, note Serra. As described above, the likelihood of confusion is not required to establish infringement of a design right: Schmidt-Szalewski (2003), p. 1000. There are various views as to what is meant by the ‘dommage’ [damage] referred to in this case: Binctin (2020), no 1702, p. 1125.

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of an intellectual property right (IPR).133 This is because the nature of the actions are different.134 For example, ‘likelihood of causing confusion’—which is not required to establish infringement of a design or model right—is a typical example of a distinguishing fact that allows an action for unfair competition to be established separately from an action based on the infringement of an IPR.135

14.12.3 ‘Parasitism’ Theory From the late 1980s, the courts—in particular, the Court of Appeal of Paris— were influenced by academic theory and started to permit the action for parasitical competition based on the theory of ‘parasitism’. The Ungaro decision of the Court of Appeal of Paris on 18 May 1989 is often cited as the decision which introduced the ‘parasitism’ theory.136 This decision had a significant impact. While the case related to a bottle of perfume and its packaging, the Court did not find that it was protected by an IPR. However, it did find that an action was possible for parasitical competition in relation to the form of a product that was common and in the public domain, based on the ‘parasitism’ theory. The Court stated that: relying on the other party’s initiative and effort in order to cause damage to the commercial position includes the ‘faute’ [fault] which imposes responsibility from the viewpoint of Article 1382 [current Article 1240] of the Civil Code. The same applies to a case where, at the time of manufacturing an object, a creator did not use creativity and suspends creative activities, resulting in a slavish creative process such as imitation of the other party’s product.137

The court noted that the reproduction of the bottle of perfume and its packaging in order to give the impression that they were related to famous products constituted parasitical competition. The court granted the request for an injunction and disposal of the perfume bottles and packaging, and ordered compensation for damages. On the other hand, the Lego decision of the Court of Appeal of Paris on 18 October 2000 is often cited as a decision that denies the ‘parasitism’ theory.138 This 133

Cass. com., 9 mars 1981, Bull.civ.IV, no 122, p. 94; Cass. com., 27 mai 1981, Bull civ. IV, no 251, p. 198; Cass. com., 9 oct 2001, PIBD 2002, III, p. 42; Cass. com., 2 févr 2007, Contr. con. cons. 2007, comm.101, note Malaurie-Vignal; Cass. com., 1er juil 2008, prop.Ind. 2008, comm.91, note Schmidt-Szalewski; Cass. com., 7 juin 2016, pourvoi no 14-26,950. 134 Larrieu, comm. sous Cass. com., 12 juin 2007, prop. ind. 2007, comm.73, p. 25; Ripert and Roblot (2016), p. 716; Cass. com., 22 sept 1983, Bull civ.IV, no 236, p. 205. 135 Desbois, obs. sous Paris, 17 juin 1978, RTD com. 1978, p. 107; Schmidt-Szalewski (1994), p. 460; Passa (1997), pp. 63, 191; Malaurie-Vignal (2016), pp. 181–182; Cass. com., 14 janv 2003, prop. intell. 2003, no 7, p. 227, obs. Passa. For examples of other distinguishing facts, see Gaubiac (1986), p. 83. 136 Paris, 18 mai 1989, PIBD 1989, III, p. 519. 137 See also Cass. com., 4 avril 1995, RDPI 1999, no 61, p. 62. 138 Paris, 18 oct 2000, D. 2001, p. 850, note Passa.

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case relates to slavish copying, in particular, the manufacture of blocks that had similar forms and colors to blocks produced by Lego, a company famous around the world for producing block toys for children. The concept of ‘parasitism’ was raised as an issue. The Court of Appeal of Paris expressed the view that duplication of a product that was in the public domain did not constitute parasitism: The fact of duplicating the other party’s product alone does not constitute the acte de concurrence fautif [act of fault concurrence]. This is grounded on the basic rule stipulating that it is possible to freely duplicate a product which is not protected by intellectual property rights or which has been protected by intellectual property rights but is not protected anymore. The monetary savings inevitably accrued by the party performing the above duplication do not constitute the ‘faute’.

However, the denial of parasitical competition in this case did not greatly influence later cases. In France, the ‘parasitism’ theory is widely accepted, and so it is possible to protect designs or models by bringing an action for unfair competition or parasitical competition.

14.13 Conclusion In this way, design laws developed to address a particular issue in a particular region— the protection of the silk fabric industry in Lyon—were expanded and developed into a national design and model protection system for France. As industry developed, so did the subject matter of protection—from designs of silk fabrics produced in Lyon, to designs other than silk fabric, and later to industrial models. Historical records suggest there was a desire for greater protection of designs and models in France, and that the development of design protection was urged by the lobbying of industry. The large number of dépôt of designs at the Conseil de prud’homme indicates the necessity of this type of protection. Furthermore, over time, the théorie de l’unité de l’art established the protection of industrial designs and models under copyright law. The protection of designs and models has a long history in France; and the théorie de l’unité de l’art is a key element of the protection of designs in France.

References Antoine-Lalance M (2011) Les acquis de la pratique. Les conditions de protection : du cumul à la distributivité. RLDA 3618:59–65 Archives de Paris (2006) Le conseil de prud’hommes du département de la Seine 1844–1940 (1762–1971). Paris-Musées, Paris Archives de Paris (1993) Objets: dessins et modèles de fabrique déposés à Paris 1860–1910. Centre Geroges Pompidou/CCI, Paris Augustin-Charles R (1860) Du Droit industriel dans ses rapports avec les principes du droit civil sur les personnes et sur les choses. Guillaumin, Paris

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Tsukasa Aso is an associate professor of law (with tenure) at Kyushu University School of Design in Fukuoka where he teaches IP and design law courses at the graduate and undergraduate level. His research focuses on patent law, design law and copyright law as well as the intersection of civil and IP law. He obtained his bachelor’s, master’s and doctorate degrees in law from Keio University in Tokyo and has recently been a visiting scholar at the Center for International Intellectual Property Studies (CEIPI), University of Strasbourg and Visiting Professor, Le Centre d’Etudes et de Coopération Juridique Interdisciplinaire (CECOJI), University of Poitiers.

Chapter 15

Italian Design Paolo Tumminelli

Abstract Across one century, Italian design has mutated from a cultural avant-garde experiment into a global financial business. As an expression of national culture, evidence of design precedes the foundation of the discipline, which in Italy took a long time to develop between 1956 and 2000. Beginning in 1909, the Futurismo movement expressed design thinking at many levels, delivering an extraordinary heritage of experiences. The political situation between 1920 and 1940 greatly limited the manifestation of modernist thinking, thus also of industrial design theories and practice. In the post-war decades, fertile cultural debate and the economic boom led to the creation of an Associazione per il Disegno Industriale. At the same time, particularly between the late 1940s and the early 1970s, coach building established itself as a distinct manifestation of Italian design, whose cutting edge quality was acknowledged worldwide. In the 1960s, politically concerned, genuinely Italian, radical design thinking brought about a reconsideration of the creation and the consumption of goods. Establishing itself as a professional practice through the 1980s, when industry and culture entered a harmonious discourse, Italian design finally acquired global recognition towards the end of the twentieth century. In so doing, Italian design lost its national connotation and became, in every way, a global phenomenon.

15.1 1910s the Futurist Vision Futurismo—an artistic, literary and social movement that originated in 1909 around the eclectic figure of Filippo Tommaso Marinetti—can be understood as the origin of modern Italian design, from a number of perspectives. The fact that the term ‘design’ was not officially used by or associated with Futurist theories and activities is not significant, considering that no country had yet developed a precise understanding of industrial or other forms of design. Specific to Italian Futurismo was an admiration of speed, technology and youth, as expressed in the form of cars, airplanes and the industrial city. The Futurists did P. Tumminelli (B) Faculty of Cultural Sciences, Cologne University of Applied Sciences, Cologne, Germany e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_15

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not specify industrial design as a discipline, nor did they develop a univocal style. Beyond that, their comprehensive, interdisciplinary approach to production, which the Futurists considered more as a science than as an art and which was anti-traditional by definition, came to include and entangle diverse design dimensions ranging from architecture to typography, from sound to food design. A most striking element of Futurist design thinking was an understanding of complexity, contradiction and integration in design, which was best represented by Antonio Sant’Elia’s visionary project of a ‘Station for cars, airplanes and trains’ (1913)—an anticipation of contemporary multimodal mobility systems. The same interdisciplinary approach led to experimental projects such as ‘Futurist Cooking’ (1930). This included not only the creation of new dishes, whose recipes referenced the emerging consumption culture and the industrial brands that fostered it, but also extended to the entire user experience. The tabletop, the interior design, the appliances of the ‘Taverna del Santopalato’, the first Futurist restaurant founded in 1931, all were specifically and in some way scientifically designed with a multisensorial experience in mind, one that would link taste with visual, haptic and acoustic dimensions of design. With this, Futurist design thinking not only anticipated the age of experience and user-centred design introduced almost one century later. It also promoted social innovation through communication campaigns that targeted new ways and forms of nutrition—including a subversive attempt to abolish pastasciutta, Italy’s traditional and famous noodle dishes. Last but not least, Fortunato Depero’s iconic design of the bottle of ‘Camparisoda’ (1932), a convenient, single shot sparkling aperitif by Davide Campari, showed the Futurist’s understanding of packaging design as part of a broader branding campaign that included advertising and communication. In spite of all the criticism of Futurismo, especially regarding its bond to the Fascist dictatorship, the lack of specific design education, the intuitive freedom of action and the open dialogue with fine arts and architecture which characterized the Futurist’s approach to creation and innovation came to define the distinct yet intangible quality of what would later be referred to as ‘Italian Design’.

15.2 1920–1940 Limited Rationalism The formulation of an Italian design culture between the two wars went necessarily hand-in-hand with the rise and growth of the Fascist movement, among whose goal was the definition and propagation of a national popular culture—Italy had been unified as a kingdom only half a century earlier. It is no coincidence that the Gruppo del Novecento, Italy’s first and leading modern artistic movement was founded in 1922, the same year as the March on Rome and the beginning of the Ventennio, the twenty years of Benito Mussolini’s dictatorship. Margherita Sarfatti, the elitist intellectual who gathered Italy’s finest artists around Novecento, maintained a very close relationship with the dictator—both in

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professional and personal terms. Liberally crossing between fine and applied arts, Novecento promoted a refined, classic, thus politically innocuous style. Among the first champions of Italian design were the architects Carlo Mollino of Turin, Carlo Scarpa of Venice and Gio Ponti of Milan, each of them developing their own design philosophy that reflected ‘high culture’, which was typical of the growing international discourse. Acting as a consultant for the porcelain factory Richard Ginori of Doccia near Florence, Ponti believed in the need to promote the aesthetics of industrial products. With the intent to renew Italy’s architecture, interior design and decorative arts, in 1928, he founded Domus magazine. In the same year and with a similar intent, the art critic Guido Marangoni founded the magazine La Casa Bella [The Beautiful Home]. Both titles started a public discourse about the look of things, that is, about a modern understanding of design. 1922 also saw the foundation of the Superior Institute for Artistic Industries in Monza (ISIA), a Bauhaus-inspired attempt to link applied arts and industry, educating a generation of modern industrial designers. Again in Monza, 1923 saw the launch of the first ‘Biennale’, the International Exhibition of Decorative Arts, which exhibited work by, among others, Fortunato Depero, Marcello Nizzoli and Gio Ponti. The fourth event in 1930 saw a name change to ‘Triennale’. Its most noteworthy exhibit was ‘La Casa Elettrica’, the forward-looking electric home by the architects Luigi Figini and Mario Pollini. Soon afterwards, the Triennale moved to Milan, where the fifth event was celebrated in 1933 in the new Palazzo delle Arti, a bespoke building designed by the modernist architect Giovanni Muzio. The influence of European modernism was strong, but rather short lived in Italy. The Italian interpretation, called ‘Razionalismo’, the object of which was a rationalist approach to design, manifested itself through the foundation of the Milanese Gruppo 7 in 1926 and the Italian Movement for Rationalist Architecture (MIAR) in Rome in 1928. But by the time the second exhibition of rational architecture was held in Rome in 1931, it became clear that its international, progressive and technological approach to modern living, which undermined a concept of free society, was not compatible with the down-to-earth, autarchic values promoted by the fascist propaganda. By 1932, when Margherita Sarfatti eventually lost the dictator’s support, the MIAR had dissolved. While rationalist architects such as Giuseppe Terragni and Figini and Pollini would continue their work, the design debate was not the object of much public discourse. Aware of the political influence of intellectuals, the fascist regime sought a compromise by tolerating much while supporting little. Nevertheless, the fascists favoured progress through the mechanization of agriculture and selected industries, which was very much driven by Mussolini’s personal views. Two new companies stood out during the Ventennio. FIAT of Turin, Italy’s preeminent car manufacturer, launched a modern popular car in 1932, the ‘Fiat 508 Balilla’—the name referring to the nickname given to ‘Opera Nazionale Balilla’, the Fascist youth organization founded in 1926. Olivetti, another Piedmontese company, introduced the ‘M40’ in 1931, one of the first modern typewriters and a cutting edge design which found worldwide appreciation. Olivetti also initiated a collaboration with Figini and Pollini, who rapidly took over as consultants for the company, realizing several architecture and design projects for the enlightened entrepreneurs.

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In 1933, Alfonso Bialetti produced its first ‘Moka Express’, an innovative stovetop coffee maker which introduced a new ingenious way of brewing coffee at home. Today, the iconic twelve facet, cast aluminium body with black bakelite handle, qualifies as a modern design icon. The Phonola ‘Radio model 547’, designed by Livio and Pier Giacomo Castiglioni together with Luigi Caccia Dominioni, was presented at the Triennale VII of 1940. The unconventional shape of its shell made of bakelite, a modern plastic material, clearly surpassed the traditional aesthetic of the wooden cabinet. With its singular, sophisticated style, the Phonola 547 is the first true Italian design object.

15.3 1950–1960 Style, Industry, People The end of World War II brought about radical political changes in Italy: not only the liberation from the Fascist dictatorship, but also a referendum that abolished the monarchy and transformed the Kingdom into a constitutional republic in 1946. Supported by the Marshall Plan, production and consumption took on a very positive dynamic, referred to as ‘Miracolo Economico’ [the ‘Economic Wonder’]. Entering the 1950s, Italian design, animated by a polyhedric, mostly autodidactic set of designers, engineers, inventors and industrialists, qualified as a motor of social innovation. Peculiar to the Italian business culture was the creative partnership between designer and entrepreneur. The product that best represents this spirit is the ‘Piaggio Vespa’, a motor-scooter designed by Corradino D’Ascanio, a pioneer of helicopter construction, for Enrico Piaggio. The patent read ‘motorbike in rational complex of parts’, thus purporting the idea of a functional design. Styling, with the characteristic teardrop tail reminiscent of a wasp’s abdomen, was not a priority in the aerodynamic engineer’s design process. Numerous innovative aspects—the weather protective pressed steel monocoque, the easy-mount small wheels, the handlebar mounted gearshift leverage—defined a new vehicle typology that enabled new forms of usage. First introduced in 1946, within 10 years, one million Vespas were sold worldwide. Former futurist artist and architect Marcello Nizzoli was adamant in supporting the expansion of Olivetti. Active both as graphic and product designer, under the guidance of Adriano Olivetti, Nizzoli developed a comprehensive corporate identity program for the company. Nizzoli designed among others the ‘MC 4S Summa’ of 1940, which became the world’s leading electric calculator, followed by the bestselling ‘Lexicon 80’ typewriter (1948) and ‘Lettera 22’ portable typewriter (1949). Typical for Nizzoli’s work, and unique among competitors worldwide, were sculptural organic shapes rendered in a palette of matt pastel colours. The painter Gino Valle graduated in architecture which, in a typically Italian fashion, paved the way to a career as an industrial design consultant. His collaboration with the brothers Remigio and Fermo Solari, whose company held the patent for the split-flap display, led to the production of groundbreaking innovations, beginning in 1956 with the

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‘Cifra 5’ clock and the moving information panels of the Liege railway station, later seen in airports and stations all around the world. In his position as director of Domus magazine and a professor at the Polytechnic school of Milan, Gio Ponti enjoyed strong connections with industry. Evolving from the rather artistic approach which characterized his pre-war designs, Ponti turned towards a rather expressive, Mediterranean form of functional modernism. Top in a list of noteworthy post-war designs were the groundbreaking ‘La Cornuta’ professional coffee maker for La Pavoni (1948) and the lightweight wooden chair ‘Leggera’ for Cassina (1952). Together with his business partner and son-in-law Alberto Rosselli, Ponti played a key role in establishing the magazine Stile Industria (1953), the first magazine dedicated specifically to industrial design (which would be later incorporated in Domus), and the Compasso d’Oro (1954), the most important Italian design award. The Compasso d’Oro [Golden Compass] was endorsed by Umberto Brustio’s La Rinascente, Italy’s preeminent department store based in Milan. Rebuilt in 1950, the store gathered a number of creative talents: Architect Carlo Pagani designed the shop windows and the interiors following the leading American model, and visual designers Max Huber and Albe Steiner were responsible for the logo, the graphics and all communication. The Compasso d’Oro award paved the way to the Associazione per il Disegno Industriale (institution of ADI) in 1956 which reunited designers, companies, retailers, journalists, critics, researchers, students and teachers active in the field of design. Gio Ponti’s ultimate contribution was the invention of the ‘Linea Diamante’ (1953–57), a design principle based on his theory of architecture as a crystal. As opposed to the soft, organic shell shapes of the 1950s, the edgy, rectilinear and dynamic diamond line, which culminated in the ‘Pirelli skyscraper’ (1956), anticipated the 1960s ‘International Style’ in architecture and design. Milano and the surrounding regions gradually developed into a design hub, supported by the gradual conversion of local craftsmanship into small to medium family businesses. The enduring artisanal tradition both in wood and metal working, as well as a fertile textile industry, was the premise for the proliferation of technologies that were functional and the growth of a new design industry mainly oriented to furniture, tabletop and household fittings and appliances. Pre-war businesses like Alessi of Cruisinallo, Lagostina of Omegna, Sambonet of Vercelli for cookware and cutlery and Cassina of Meda and Molteni in Giussano for furniture were followed by new businesses like Osvaldo Borsani’s Tecno in Varedo (hitech furniture), Ernesto Gismondi’s Artemide of Preganana Milanese (illumination), Giulio Castelli’s Kartell in Noviglio (injection moulded plastics), Leopoldo Pirelli’s Arflex in Milan (polyurethane foams) and Giuseppe Brion’s Brionvega (audio–video appliances). Starting the companies who bore their names between 1954 and 1960, Bruno Danese, Dino Gavina and Aurelio Zanotta inaugurated a new business methodology: that of publishers of design objects. Through these eclectic personalities, research work by an emerging generation of designers like the brothers Piergiacomo, Livio and Achille Castiglioni, Enzo Mari, Bruno Munari and Marco Zanuso was channelled into product development by a network of small, specialized businesses. This clever

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outsourcing strategy enabled creative experiments unknown to competitors worldwide, thus distinguishing Italian design. An example of this process was the stool ‘Mezzadro’ designed by Achille and Piergiacomo Castiglioni for Zanotta (1957): a clever combination of chromed steel, wood and an actual tractor’s seat. With their designs, the Castiglionis promoted a less rigid, ironic, surprising home environment, where functional innovation met aesthetic sophistication, as seen in the iconic lamp ‘Arco’ for Flos (1960). An almost logical consequence of such a vivid furniture and home design scene in and around Milan was the foundation, in 1961, of the ‘Salone del Mobile’ trade show, and in 1966, the Istituto Europeo di Design—a private, professional school directed by Francesco Morello to fill a surprising void: Italy was still missing a specific, official course of studies in design.

15.4 1950–1980 Coachbuilding and Car Design Coach building was the single most prominent manifestation of Italian design between 1950 and 1980. While the mass production of pressed steel monocoques caused traditional craftsmanship to fade out in most automobile-making countries, the Italian specialized companies, mostly based in and around Turin, were able to turn around their business. Cheap labour coupled with high skills enabled them to transform into manufacturers of limited editions and low run series of bespoke, socalled fuoriserie [custom built] automobiles. Research and development conducted through self-initiated projects fulfilled the twofold goal of selling vehicles to selected customers and promoting design consultancy services to manufacturers worldwide. In doing so, the Turinese and Milanese coach builders rapidly established a global leadership. Looking at the whole system of creation, manufacture and promotion, Turin was to car design what Paris was to fashion. The coach builders typically employed in-house and freelance designers, most of them autodidacts in the field. For the sake of public relations, the brands of the coach building firms were promoted, thus leaving many of these names undercover for decades. The two leading firms, both established before World War II, were Pininfarina and Bertone, which flourished in post-war days under the entrepreneurial spirit of Battista ‘Pinin’ Farina and Giuseppe ‘Nuccio’ Bertone. Pinin Farina produced the ‘Cisitalia 202’, the only post-war design exhibited at the groundbreaking New York Museum of Modern Art (MoMA) exhibition ‘Eight Automobiles’ (1951). Around the same time, Pinin Farina was granted a long-term contract for the design of Nash automobiles in the United States of America (US). A personal and financial relationship with the Lancia family granted him the commission for the ‘Lancia Aurelia B20’ (1950), the prototype of the modern Gran Turismo car. Furthermore, Pininfarina landed a profitable manufacturing contract for the Alfa Romeo ‘Giulietta Spider’ (1954) and became the exclusive design consultant for, among others, Ferrari and Peugeot. In his early post-war days, Pininfarina was supported by Count Mario Revelli de Beaumont and Felice Mario Boano, two outstanding designers, but also relied on an internal design staff constituted by Francesco Salomone and Aldo

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Brovarone. Admired for the timeless elegance and sophistication of its designs, Pininfarina was the preferred bespoke coach builder for royalty and celebrities, but the firm also fostered research in safety and aerodynamics, securing its position as above and beyond the coach building capabilities of the most advanced car makers worldwide. In spite of his education as an accountant, Nuccio Bertone was a veritable talent scout who discovered young designers which he employed as single chief designers of his firm. One following the other, Franco Scaglione, Giorgio ‘Giorgetto’ Giugiaro and Marcello Gandini characterized Bertone’s extravagant, innovative, radical approach to design, best seen in the Alfa Romeo ‘Berlinetta Aerodinamica Tecnica’ series (1953–1955) by Scaglione, the ‘Corvair Testudo’ (1963) by Giugiaro, and Alfa Romeo ‘33 Carabo’ (1968) by Gandini. Bertone began building his industrial fortune designing and producing the Alfa Romeo ‘Giulietta Sprint’ in 1954. He moved on to become the in-house designer for, among others, Iso-Rivolta and Lamborghini. The fame of Ghia, a firm originally founded by Giacinto Ghia, was very closely linked to the ongoing collaboration developed by the managing director Luigi Segre with Chrysler’s chief designer Virgil Exner, out of which emerged a series of striking concept cars and a few limited edition vehicles, most importantly the tail fin pioneer Ghia Streamline X ‘Gilda’ of 1955 and the opulent Crown Imperial limousines. With bombastic names like ‘Supersonic’, Ghia’s creations provided a stylish interpretation of the flamboyant, glamorous American look. Under the creative direction of Giovanni Savonuzzi and Sergio Sartorelli, Ghia developed as the all-round consultancy responsible for, among others, the Ghia ‘VW Karmann’ (1955) and the Volvo ‘P1800’ (1961) but also as the manufacturer of a successful series of charming, FIATbased ‘spiaggina’ [‘beach’] cars called ‘Jolly’. The most outstanding personality was the freelance, self-taught Giovanni Michelotti, who in the course of his career was responsible for hundreds of car designs, working for all Turinese coachbuilders. Most of the Ferrari automobiles built by Vignale were his work. Michelotti acted as in-house designer for Triumph of the United Kingdom (UK) and played a key role in defining the modern BMW design. The Italian firms rapidly developed business relationships with Japanese companies, respectively, Pininfarina with Nissan and Honda, Bertone with Mazda and Suzuki, Ghia with Isuzu and Michelotti with Prince and Hino. Other noteworthy names in Turinese coach building were Allemano, Boano, Frua and Vignale. Consistent with the fact that both Revelli de Beaumont and Savonuzzi were directly employed by US companies like General Motors (GM) and Chrysler, the Turinese car design system qualified as an early example of transnational, global design activity. Milan and Modena developed a coach building industry of a different kind, more hi-tech and performance-oriented. Touring Superleggera patented a super lightweight manufacturing system which was licensed among others by David Brown of Aston Martin. Building on their familiarity with both racing and aircraft design, the Milanese Zagato brothers specialized in aerodynamic bodies and pioneered the introduction of the ‘coda tronca’ Kamm tail design. In Modena, Sergio Scaglietti and Medardo Fantuzzi promoted an ingenious way for the fast manufacturing of racing car bodies for, among others, Ferrari, Maserati and OSCA (Officine Specialized in Construction of Automobiles).

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15.5 1960–1970 Radical Revolutions Perhaps Italy’s single most important contribution to the global design discourse was the wave of ‘Disegno Radicale’ that emerged in the second half of the 1960s and continued through 1972, the year of Emilio Ambasz’s groundbreaking exhibition ‘Italy: The New Domestic Landscape’ held at MoMA. The flood in Florence of November 1966 gathered youth from all over the world, the ‘angels of mud’, which generated a spontaneous melting pot of ideas and visions, greatly inspired by the American Beat generation, and which paved the way to both the ‘New Hollywood’ and the 1968 Paris revolts. Florence really could be seen as the cradle of the Cultural Revolution which had disruptive consequences for society’s status quo. Political discourse, centred towards human rights, freedom of thinking and pacifism, reframed the role of design within society at large. New patterns of creation and consumption of goods were imagined, and utopias were formulated, which design helped envision. Young designers emerging from the University of Florence gathered in collectives with provocative names such as Archizoom and Superstudio, whose preeminent personalities were Andrea Branzi, Paolo Deganello, Massimo Morozzi and Adolfo Natalini. The first exhibition of their work, held in Pistoia at the end of 1966, proclaimed ‘Superarchitecture as the architecture of superproduction, superconsumption, superinduction to consume, the supermarket, the superman and super petrol’. Blatantly ironic and provocative, the radical designers went on reacting against all design establishment and rewriting the forms of life through the shape of objects. The intent was highly critical, moving from designed objects to the design of new forms of use to the formulation of negative utopias, such as the ‘Monumento Continuo’ [‘Continuous Monument’], an endless building that invaded the planet, devouring past design evidence and establishing an ‘alternative model for life on earth’. Today, the ‘Monumento Continuos’, a neutral platform for exchange, could be easily seen as a primordial, physical World Wide Web. Emerging in Tuscany from this mid-60s spirit, the Centro Studi Poltronova embodied the radical idea of a design factory, working as a magical place where young designers could present, discuss and ideally make their ideas come true. Among Poltronova’s iconic creations were the couch ‘Superonda’ (1967) by Archizoom, a two-piece modular shape designed in striking contrast to the bourgeois idea of a living-room, and ‘Joe’ (1970) by De Pas, D’Urbino and Lomazzi, an irreverent supersize copy of a baseball glove. Another newly founded company, Gufram of Barolo (1966), concentrated on the transformation of self-skinning polyurethane into furniture pieces that challenged the status quo. Designed in 1971, ‘Pratone’ by Giorgio Ceretti, Pietro Derossi and Riccardo Rosso was a conceptual piece that played with the revolutionary habit of holding outdoor sit-ins while metaphorically referring to the habit of smoking grass. A macro–micro piece of turf which enforced a radically new way of sitting, Pratone was clearly anti-status in spirit. Equally challenging was the ethereal, antimaterial ‘Blow’ (1971) by De Pas, D’Urbino and Lomazzi, and the

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iconic beanbag ‘Sacco’ (1968) by Gatti, Paolini and Teodoro, both for Zanotta. In 1966, Cesare Cassina supported Piero Ambrogio Busnelli in founding C&B (today B&B Italia). Making use of advanced technologies, C&B produced the ‘UP’ chair (1969) by Gaetano Pesce, whose bulbous, voluminous shape, reminiscent of a pregnant woman’s womb, was contrasted with the flat vacuum sealed packaging it was sold in. The metaphor of birth was recreated as the customer removed the packaging and saw the chair literally take shape before their eyes. Not a radical and yet one of the most daring designers was Joe Colombo, whose plastic fantastic open spaces of vibrant colours were filled with technological innovations and otherworldly visions for contemporary living, as seen in his project for Bayer’s ‘Visiona’ (1969) in Cologne. All of these designs had the obvious goal of shocking the establishment, as would be seen at the MoMA exhibition in 1972, where architect Mario Bellini, aided by Cassina and Citroën presented ‘Kar-a-Sutra’, a controversial one-box vehicle with an uprising roof, that doubled as a mobile lounge filled with pillows which abolished any division between the occupants and the driver. Radical revolution was further expressed through a wedge-shape car design, a concept that abolished the traditional symbolic function of a prominent grille in favour of an anonymous and therefore visually powerful identity. Concept cars like the Ferrari ‘512 S Berlinetta Speciale Pininfarina’ by Filippo Sapino and the Lancia Strato’s ‘HF Bertone’ by Marcello Gandini (1969 and 1970) paved the way to the adoption of the design concept in series production cars, like the ‘Fiat X1/9’ (1972) and the ‘Innocenti Mini 90/120’ (1975), both by Bertone. During this wave of radical thinking, 1971 saw the foundation of DAMS in Bologna, a highly experimental school for drama, art and music studies that framed design in the context of philosophy and culture. The same creative intellectual influence was seen in the work of fashion designers Elio Fiorucci and Bruna Bini as well as actors Franca Rame and Dario Fo, all operating in Milan. The political connotations of radical design came to be associated with the sociopolitical conflicts emerging in Europe during the 1970s and which led to the formation of terrorist groups such as the ‘Brigate Rosse’. Accordingly, by the second half of the decade, radical design gradually came to a still stand. Studio Alchimia, founded in 1977 around the artist Alessandro Guerriero, with the notable participation of architect Alessandro Mendini, already qualified as post-radical. With the declared mission to materialize a non-existent thing into being, Alchimia’s focus shifted to an intellectual, almost philosophical dimension of design.

15.6 1980s Consolidation and Professionalization In the wave of a more conservative, postmodern approach to design, the 1980s saw a consolidation and expansion of the Italian design business. Representative of this era was the bed ‘Nathalie’ (1978) designed by Vico Magistretti for Flou. Fully upholstered and held together by textile ribbons, it was an overtly romantic return to a settled way of life. Cassina focused on the ‘I Maestri’ collection of avant-garde

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and classic furniture pieces designed by Charlotte Perriand (officially attributed to Le Corbusier), Frank Lloyd Wright and Gerrit Rietveld. Artemide launched the lamp ‘Tolomeo’ (1987) by Michele de Lucchi and Giancarlo Fassina, a contemporary, lightweight reinterpretation of the classic Anglepoise. Compared to that other Artemide milestone, the ‘Tizio’ (1972) by Richard Sapper, with its conventionally cabled light bulb, ‘Tolomeo’ looked far less advanced and yet was accepted by a larger customer base. Alessi started a collaboration with renowned architects on the oldfashioned topic of serving tea and coffee. A collection of stainless steel, whistling tea-kettles rapidly became the totemic object par excellence. If the ‘9091’ design by Richard Sapper (1983) with a thick black plastic handle was just mildly reminiscent of archetypical 1950s shapes, the ‘9093’ (1985) by Michael Graves, with its pale blue handles, decorative moulding and characteristic whistle in the shape of a little red bird, stood as the epitome of nostalgic postmodern design. Alessi’s limited edition ‘Tea and Coffee Piazza’ silverware collection (1983) by Aldo Rossi presented in a glazed showcase in the guise of neoclassic architecture, established a new understanding of design products made to please the self-expressive aspiration of an affluent, international bourgeoisie. Intended to question the role of the industry in dictating design rules, as well as the role of design in contemporary living, in 1981, a group of designers gathered around the leading figure of Ettore Sottsass Jr, another polyhedric architect-artist-designer, to establish Memphis, perhaps the most successful Italian design movement. Half proposition, half provocation, Memphis almost immediately reached international recognition not just through the strong visual language it adopted, but also and most significantly through the clear departure from traditional design principles such as ‘form follows function’. As shown by the shelf and/or room divider ‘Carlton’ (1983) by Ettore Sottsass, Memphis objects were unnecessarily hypercomplex and yet immediately sympathetic in their colourful playfulness, cheap in their material constitution and yet expensive in their limited edition. These highly recognizable artefacts qualified as collector items, and they finally broke, if it ever really existed, the wall between fine arts, applied arts and industrial design. Even more significantly, the Memphis initiative doubled as a vehicle to promote the new collection of plastic laminate surfaces designed under the creative direction of Sottsass for the Milanese company Abet Laminati. With that, the design object became a medium of communication, whose storytelling function surpassed its mere use value. Memphis was international not only by name. In addition to Ettore Sottsass, the art critic Barbara Radice and the architect Michele de Lucchi, its early members included international designers such as Arata Isozaki, Michael Graves, Shiro Kuramata, Javier Mariscal, Nathalie du Pasquier and Hans Hollein. Later in Bologna, a group of graduates from the University of Florence founded Bolidismo (1986) among whose exponents ranked Massimo Iosa Ghini and Stefano Giovannoni. Inspired by both Streamline Moderne and Futurismo, Bolidismo hailed electronic speed reintroducing dynamism and fluidity as formal qualities. Fast in every way, the movement was quickly greeted as ‘the next big thing’. Both Memphis and Bolidismo ultimately functioned as a platform to launch individual members and in 1988 and 1989, respectively, both movements phased

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out. Attracting talent from all over the world became the new mantra within the Italian design community. In Moncalieri, near Torino, Giorgetto Giugiaro’s Italdesign, a car design firm that had gained notoriety for having designed the Volkswagen ‘Golf’ (1974), expanded its consultancy to a varied category of products. In 1981, the sister company Giugiaro Design was founded to serve a growing international customer base, including Nikon and Seiko of Japan. In 1982 in Milan, the Mazzocchi family, publishers of Domus magazine, founded Domus Academy, Italy’s first postgraduate design school. Initially directed by the architect Andrea Branzi and with staff including the architect and fashion designer Gianfranco Ferré, the privately run and quite exclusive Domus Academy catered for a select, mostly international student base. The sudden emergence of a new fashion scene in Milan—supported by newcomers such as Giorgio Armani, Gianni Versace and Franco Moschino—fuelled the growth of a metropolitan spirit. Opening up to international collaborations, in educational, professional and commercial terms, gradually positioned Milan as the worldwide epicentre of design.

15.7 1990–2010 Global Design Business With all this cultural and economic dynamic, it was only in the 1990s that design was finally recognized as a profession, to which the Politecnico University in Milano first dedicated a course of studies in 1993, and finally an entire school in 2000. Expanding the concept of design studies, in 1994 the textile and fashion company Benetton inaugurated Fabrica, a private research centre for communication sciences. On the verge of a true globalization wave after the fall of the iron curtain, Milan became the hub for even more trans-disciplinary thinking and handling. Expanding the established formats, the Fuori Salone event calendar (1991) and the Salone Satellite exhibition program (1998), offered space for more cross fertilization and forward thinking in design and helped build a global community around Milan Design Week. New market conditions required a shift in the self-awareness of design-oriented firms. While IKEA invaded the design territory with the ‘PS collection’ in 1995, Italian furniture companies like B&B Italia and Molteni upsized to a truly international scale. Giulio Cappellini played a pioneering role, transforming his family’s business into a high end collection of the newest and finest pieces of design. The catalogue read like a modern-art-museum exhibition of highly diverse design, best represented by Marcel Wanders’ ‘Knotted Chair’ (1996) as opposed to Jasper Morrison’s ‘Thinking Man’s Chair’ (1988). Yet the core visual message was an architectural, super minimal look, enhanced by a sophisticated treatment of surfaces. Interestingly, Cappellini concentrated on promoting mostly foreign designers such as Tom Dixon, Marc Newson, Shiro Kuramata, Werner Aissilinger, Marcel Wanders and Jasper Morrison. In Cappellini’s view the product, not the customer, was king, for which the highest prices could be sought, provided the right context was created, such as lavish showrooms and state-of-the-art advertising.

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Alessi adopted a different strategy, declaring that the object was a toy to play with and shifting down to introduce a fanciful and colourful collection of affordable plastic products called ‘Family Follows Fiction’, designed by, among others, Stefano Giovannoni and Guido Venturini. Companies like Poltrona Frau, for leather furniture, and Boffi, for kitchens, were rejuvenated and positioned at the highest end of the market. At the same time, original interior design stores, such as the legendary De Padova, became a product label, while new retailing concepts, such as 10 Corso Como launched in 1990 by the art gallery owner Carla Sozzani, were established. A vibrant, eclectic space, 10 Corso Como presented design, fashion, music, cooking, art and culture together, forming a contemporary global lifestyle. Envisioning and promoting a global lifestyle became the new frontier for Italian designers, as exemplified by Antonio Citterio and Piero Lissoni. Moving from the idea of the autodidactic artist-designer, the two architects grew to be entrepreneurs acting as creative directors for several brands at the same time and with responsibility for a network of large studios. Noteworthy is the engagement of Citterio for Bvlgari Hotel and of Piero Lissoni for Boffi. Now, Italian design was no longer targeting the nice middle class home, but rather large-scale contracting projects for hotels, restaurants and offices all around the world. If Italian design was born from a rib of architecture, the rib was now growing to control the whole body: design from the spoon to the city. A gradual loss of control and focus was the price the Italian design system had to pay for a pole position in the run to global leadership. Suddenly in Milan, it seemed pretty normal that that former Centre Pompidou director, the Swiss François Burkhardt, sat as director of Domus (1996), while the ‘Salone Satellite’ (1998) was managed by Venezuelan born Marva Griffin, and German Birgit Lohmann founded designboom.com, one of the leading web portals dedicated to design (1999). The appointment of Japanese Ken Okuyama as design director of Pininfarina (2004) matched the ascension of Milanese Walter de Silva from design director of Audi to chief designer of the Volkswagen Group (2007). In the new millennium, just as brand value was being recognized as a financial asset, Italian design companies became the object of financial speculation. In 2003, the private equity company Charme Investments started an acquisition campaign that would bring together such diverse companies as Poltrona Frau, Cassina, Cappellini, Gufram and Thonet. In 2014, the Gruppo Poltrona Frau was sold to the American furniture giant Haworth. The Italian design industry thus transformed from a local human endeavour to a global financial business. Gradually, the interest of designers shifted from creating culture through speculative design that challenged the individual customer’s taste, to creating business through adaptive design solutions that fulfilled the aspirations of an unspecified global community. Confronted with the task to fill many, new, large, empty and undefined spaces around the world, designers shifted their interest from the individual object to the overall environment, from detail to concept. The idiosyncratic identity of Italian design dissolved in a powerful, yet standardized global look.

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Additional Bibliography Alessi A (2016) La Fabbrica dei Sogni. Alessi dal 1921. Rizzoli, Milan Alfieri B, Pininfarina S (1990) Pininfarina Complete Works. Automobilia, Milan Ambasz E (1972) Italy: The New Domestic Landscape. Exhibition Catalogue. MoMA, New York Anselmi AT (1979) Carrozzeria italiana. Cultura e progetto. Exhibition catalogue Bouilhet-Dumas S, Forest D, Licitra S (eds) (2018) Gio Ponti Archi-Designer. Silvana, Milan Branzi A (1984) La casa calda, Esperienze del nuovo design italiano. Idea, Milan Branzi A (1988) Learning from Milan: Design and the Second Modernity. MIT Press, Boston Branzi A (2018) Il design. Storia e controstoria. Giunti, Milan Branzi A (2021) Big Book of Design. 24 Ore Cultura, Milan Cappellieri A (2007) Antonio Citterio. Architettura e design. Skira, Milan Casciani S (2021) Gio Ponti. Life and Works 1923–1979. Taschen Celant G (1968) Marcello Nizzoli. Comunità, Milan Cennamo M (1976) Il MIAR. Società Editrice Napoletana, Naples De Fusco R (1985) Storia del Design. Laterza, Bari De Fusco R (2010) Una Storia dell’ADI. Franco Angeli, Milan Didero MC (2017) Superdesign: Italian Radical Design 1965–75. Monacelli, New York Fiell C, Fiell P (2017) Domus (1928–1939). Taschen Greggio L (2002) Bertone 90 Years. Giorgio Nada, Milan Guarnaccia M (2016) Elio Fiorucci. 24 Ore Cultura, Milan Maldonado T (1976) Disegno Industriale: un riesame. Feltrinelli, Milan Marinetti FT, Colombo L (1932) La Cucina Futurista. Sonzogno, Milan Mastrigli G (2016) Superstudio. Opere 1966–1978. Quodlibet, Macerata Mojana M, Masoero A (2010) Depero con Campari. Exhibition Catalogue. De Luca, Rome Molineri G (2015) Giorgetto Giugiaro. Rizzoli, Milan Mollino C (2017) Architettura di Parole. Bollati Boringhieri, Turin Polin G (1983) La casa elettrica di Figini e Pollini. Officina, Rome Ponti G (1957) Amate l’Architettura. Vitali e Ghianda, Milan Radice B (1984) Memphis. Ricerche, esperienze, risultati, fallimenti e successi del nuovo design. Electa, Milan Saccoccio A, Guerra R (2015) Sintesi della critica futurista. Armando, Rome Serrazanetti F (2016) Metodo Cappellini. Il sogno declinato. Electa, Milan Sozzani C (2014) A-Z 10 Corso Como. Rizzoli, Milan Sullivan B, Sarfatti M (2014) My Fault: Mussolini As I Knew Him. Enigma, New York Tumminelli P (2011) Car Design Europe. Myths, Brands, People. TeNeues, Düsseldorf Tumminelli P (2014) Automobildesign Entwicklung und Formensprache. In: Ebel B, Hofer M B (eds) Automotive Management. Springer Gabler, Wiesbaden Van Lennep J (2021) Alchimia. Mediterranee, Rome Various (1914) I manifesti del futurismo lanciati da Marinetti, Boccioni, Carrà, Russolo, Balla, Severini, Pretella, Mme de Saint-Point, Appolinaire, Palazzeschi., VV.AA. Lacerba, Florence Various (1926) Catalogo della Prima Mostra d’Arte del Novecento italiano. Palazzo della Permanente, Milan Various (1951) 8 Automobiles. Exhibition catalogue. MoMa, New York Vercelloni M (2014) Breve storia del design italiano. Carocci, Rome

Paolo Tumminelli warmed up by studying architecture in Milan, sped into design, slid into marketing, rushed through strategic brand consulting and landed as a fully tenured professor for design concepts at the Faculty of Cultural Sciences at TH Köln (Cologne University of Applied Sciences). Professor Tumminelli’s general approach to design is from the perspective of a global consumption culture. The focus of his research is private individual mobility, having curated

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numerous exhibitions and published several books and essays on the topic. His long-term appointments as freelance author include editor for Domus, the international architecture and design magazine and columnist for Handelsblatt, Germany’s business newspaper.

Chapter 16

History of Design Protection in Italy Margherita Cera

Abstract Nowadays, depending on the value that can be attributed to a shape, there are several possible means of protection for industrial design, including design, copyright and trade mark. These types of protections are now cumulative due to the process of harmonization of industrial property law provided by the European Union (EU), but for a long time, they were alternative and not cumulative in Italy. Before the EU Design Directive, the aesthetic shape of industrial designs could be protected by a type of patent called an ‘ornamental design patent’ if it gave the products a ‘special ornamentation’. This special protection could not be cumulated with that provided under copyright law, which provided protection only for an applied art work if it was possible to separate its artistic value from its function (the so-called separability criterion). Moreover, since a shape trade mark could be registered only if the shape did not provide ‘substantial value’ to the goods, it was not possible to register an industrial design as a shape trade mark if it provided special ornamentation of the product in which it was embedded or if it had artistic value that was distinct from its function. In this case, the design was considered to have substantial value.

16.1 Introduction: Industrial Design in Europe Between Creative Works and Inventions Due to their nature, industrial designs are hybrid works, a mix of creative work and industrial invention. For this reason, the question of the proper protection of this kind of work has always been a very controversial issue in Europe since industrial design was developed during the so-called Industrial Revolution. In 1474, the Republic of Venice conferred on inventors an exclusive right to implement inventions and designs in order to protect and enhance glass production.

M. Cera (B) Venice Bar Association, Venice, Italy e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_16

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Italy became a unitary modern state in 1861, and the first Italian law regarding ‘factory designs’ was the Royal Decree no. 4578 of 30 August 1868,1 which provided protection for just two years, granted by a registration procedure to be initiated before the disclosure of the design. However, in 1883, Italy decided to constitute, with some other countries, a special union to protect industrial property, signing the Paris Convention for the Protection of Industrial Property.2 The Paris Convention set out the modern fundamental principles for the protection of industrial property providing in particular in Art. 5 that ‘[i]ndustrial designs shall be protected in all the countries of the Union’. Some national legislation adopts the ‘patent approach’ and others the ‘copyright’ approach to protect industrial design. The countries, like Italy for instance, that chose the ‘patent approach’ and considered that industrial designs were not eligible for copyright protection, provided a special protection more similar to the patent system. In Italy, this choice was to be determined in accordance with a rigid separation between fine arts and applied arts that had been adopted in the Middles Ages. The fine arts (drawing, sculpture and architecture) had always been considered important and so eligible for protection under copyright law; whereas applied art or decorative art, which focused on the application of art including its technical aspect and processes, was considered less so, and so was not eligible for protection. However, countries like France, for instance, that chose the ‘copyright approach’, considered industrial design to be the same as other creative works protected by copyright, in accordance with the théorie de l’unité de l’art [theory of the Unity of Art] which considers all creative works to be artistic works, and without difference. The consequence of this different approach was principally reflected in the duration of the protection in the different countries. Due to the long protection provided by copyright law (seventy years after the author’s death) in countries where industrial designs works were protected by copyright, it was not possible to commercialize industrial designs works without the author’s authorization until the copyright protection expired. Whereas in countries where industrial designs were protected in a different way, for a shorter period, it was possible to freely commercialize industrial designs after the protection expired. The different types of protections provided for industrial designs in different countries translated into obstacles to the establishment of the single European market, and therefore, the EU Design Directive provided,3 in Art. 17, that ‘[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’. This

1

Royal Decree no. 4578 of 30 Aug 1868, available at https://www.senator.it.41498242-96c0-4aeeb7a3-4a0c2fe61127.pdf (senato.it). Accessed 25 Oct 2021. 2 Paris Convention for the Protection of Industrial Property, 20 Mar 1883 (revised 14 July 1967), 828 U.N.T.S. 305 (Paris Convention). 3 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, (1998) OJ L 289/28 (EU Design Directive).

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provision stated that the principle of cumulation of protection under copyright law and design law applied in Europe. The same Directive also provided that the extent of the copyright protection and the condition under which such protection is conferred shall be determined by each Member State. So, on the one hand, the EU Design Directive prevents a Member State from excluding copyright protection for industrial designs works, providing strong harmonization of different national legislation; but on the other, it allows a Member State to decide the conditions under which such protection is conferred, re-establishing some differences in national laws. This chapter aims to explore the peculiarity of industrial design protection in Italy, before the EU Design Directive and the conditions under which industrial designs are eligible for protection under copyright law after the transposition of the Directive. A specific section is then devoted to the possibility of claiming trade mark protection for industrial designs. Such protection has been affected for many years by the prohibition on registering shape trade marks consisting of a shape that provides substantial value to products. Such substantial value was considered present when a shape could be protected under copyright law or design law. The EU harmonization process also changed this approach confirming the possibility of cumulation of different forms of protections, under the conditions established by each Member State.

16.2 The Protection of Industrial Designs Before the EU Design Directive 16.2.1 Utility Model and Ornamental Design Patent Before the adoption of the EU Design Directive by the European Parliament and Council, the protection of industrial designs was provided by arts 2592, 2593 and 2594 of the Italian Civil Code (ICC)4 and by the Royal Decree no. 1411 of 25 August 1940 (Design Law),5 which partially amended the Royal Decree no. 4578 of 30 August 1868. According to the Italian law, industrial designs were protected by a special type of patent for industrial design with two sub-categories: (i) utility models, which aimed to protect utility aspects, and (ii) ornamental design patents, which aimed to protect aesthetic aspects. Utility models were provided in Art. 2592 of the ICC which protected small inventions with the merit ‘to confer particular efficiency, or convenience of application, or use, on machines, or parts thereof, instruments, tools or articles of use in general, 4

Royal Decree no. 262 of 16 Mar 1942, available at Gazetta Ufficiale. https://www.gazzettauffi ciale.it/anteprima/codici/codiceCivile. Accessed 25 Oct 2021. 5 Royal Decree no. 1441 of 25 Aug 1940, available at Normattiva. https://www.normattiva.it/urires/N2Ls?urn:nir:stato:regio.decreto:1940-08-25;1411. Accessed 25 Oct 2021.

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such as the new models consisting of particular configurations, arrangements configurations or combinations of parts’. The protection of utility models could be claimed by a patent applicant in the event that the invention was deemed to lack the requisite validity requirements to obtain protection under patent law. The rules relating to utility models are still in force in the current legislation, without significant changes, whereas the provisions aiming to protect the aesthetic aspects of products by means of ornamental design patent have been significantly changed over the years and are therefore much more interesting for the purposes of this chapter. In particular, Art. 2593 of ICC provided that an ornamental design patent could be granted in respect of a new design which was capable of conferring on certain industrial products a special ornamental character by virtue of shape or by a particular combination of lines, colours or other features: ‘Who, according with this law, has obtained a patent for a new design which gives to some categories of industrial products a special ornamentation thanks to the shape or to the special combination of colour or line, has the exclusive right to realize such design, to dispose of it and to commercialize the products in which the design is incorporated’.6 According to this provision, industrial designs were protected, having regard to their aesthetic aspects, by the so-called ornamental design patent if the requirement of ‘special ornamentation’ was satisfied. This requirement was determined to be satisfied by the courts,7 independently from the novelty of the product, if the design had a special and relevant aesthetic value. The ‘special ornamentation’ was therefore a type of criterion to ensure protection of the most innovative designs from an aesthetic point of view. The ‘special ornamentation’ was also supposed to provide the goods with a special market value thanks to the particular characterization conferred by the aesthetic value.8 To confirm satisfaction of this requirement, it was necessary to take into account the overall impression produced on a normal user of the goods in which the design was incorporated.9 According to Art. 2591 of the ICC: ‘The requirements and procedure to obtain patents and registration, the enforcement of the rights conferred by patents and registration and their duration are provided for by the special laws’, that is, the Design Law. Both utility models and ornamental design patents were required to be registered with the Italian Office of Patent and Trade mark—Ufficio Italiano Brevetti e Marchi (UIBM). The maximum term of protection for utility models was (and currently is) 10 years, whereas the maximum term of protection for ornamental design patents was 15 years from the date of filing of the request for registration. 6

Italian Civil Code, Art. 2593 (translation by author). See, e.g., Court of Verona, 16 Jan 1997; Court of Appeals of Florence, 16 Mar 1995; Court of Naples, 22 June 1996; Court of Milan, 24 Sept 1991; Court of Torino, 7 July 1995. 8 Italian Supreme Court, 3 Jan 2001, no. 60. 9 Court of Appeal of Torino, 18 Jan 1993. 7

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16.2.2 No Cumulation of Protection Under Design Law and Copyright Law As stated above, the maximum term of protection for the ornamental design patent was 15 years; it was not possible to extend such duration by cumulating the specific protection provided by Design Law with the one provided under the Italian copyright law (Copyright Law).10 The decision to consider industrial designs not eligible for copyright was justified by a balancing of interests. The choice of the best protection for industrial designs, which are basically works of applied art, involves balancing the different interest protected by the Italian Constitution, the primary and fundamental source of law in Italy (and also by the Constitution of other EU Member States). On the one hand, it is important to protect the interests of designers and innovators who should have the opportunity to exploit their works; on the other, it is necessary to safeguard competition in the market by not providing exclusive rights which could prevent third parties from engaging in business activities.11 The Italian Constitution protects both these interests in Art. 42 and in Art. 41, which provide, respectively, the fundamental right to private property and the freedom to operate in the private market. In this regard, the exclusive rights provided by copyright to protect ‘pure’ artistic works have less important consequences in the market than the exclusive rights provided to protect industrial designs. Indeed, industrial designs could be offered for sale to a large number of potential buyers, since they are functional products and not collectible items. Moreover, given the investment in the development of external shape of products, the kind of protection provided for such shapes should be certain in terms of the requirements and duration of protection. To this effect, the protection provided by means of a registration ensures certainty of the existence of protection, and the duration of the rights conferred by registration. For all these reasons, Art. 5.2 of the Design Law excluded the possibility of cumulative copyright protection and the specific protection conferred by ornamental design patents, establishing the most important difference between the Italian system and, for instance, the French one (see Chapter 14 by Professor Tsukasa Aso).12 An industrial design already registered as an ornamental design patent before the national office could not also be protected by copyright, at least until the expiration of the protection. Moreover, an industrial design not registered before the national office as an ornamental design patent, but eligible for such registration, could never be protected by copyright.

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Royal Decree no. 633 of 22 Apr 1941, available at Normattiva. https://www.normattiva.it/urires/N2Ls?urn:nir:stato:legge:1941-04-22;633!vig. Accessed 25 Oct 2021. 11 Morri (2013), p. 182. 12 Cortesi (2006), p. 309.

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16.3 The Protection of Industrial Designs Under Copyright Law Before the EU Design Directive: The Criterion of ‘Separability’ Pursuant to the Design Law, before the adoption of the EU Design Directive, it was possible to protect industrial designs by copyright only after the expiration of the registered ornamental design patent. However, the Copyright Law also very clearly stated that only industrial designs that were considered works of applied art could be protected under Copyright Law for a maximum period of 25 years after the author’s death. In general, the condition of protection required by Copyright Law was (and actually, still is) the ‘originality’ of the work. However, Art. 2.4 of the Copyright Law provided another condition: industrial designs could be protected only if it was also possible to distinguish its artistic value from its functional value. The so-called separability criterion. The concept of ‘separability’, as a border between an ornamental design patent and a work of applied art, has been the subject of extensive doctrinal discussion and has been interpreted in different ways by the courts over the years.13 In particular, ‘separability’ has been recognized when it is possible to reproduce the work in a different object to the one to which the work was originally assigned.14 Since it was always possible to reproduce a two-dimensional design in another object, twodimensional designs were always eligible for copyright protection, whereas threedimensional models were never eligible. According to the interpretation of this criterion,15 the artistic value of a work allows it to be exploited in different ways; whereas the functional shape of a product, which cannot be different, is simply embellished by ornamentation,16 and protected by an ornamental design patent. Therefore, the lines, contours, colours, shape, texture and/or materials of the product were considered characteristics of such a product and not artistic works ex se. On the other hand, when the designer’s choices were not dictated by the shape and function of a product, being a real art work separable from the object, such a work could be protected by copyright. In brief, copyright protected the shapes with an absolute aesthetic value, to be present even when changing the object, whereas ornamental design patents protected a shape which could not be other than the shape of a product, even if it was embellished.

13

For an in-depth discussion of the interpretation of the ‘separability’ criteria, see Morri (2013), pp. 187–195. 14 See, for example, Italian Supreme Court, 21 Jan 1977, no. 3238 in Giur. Ann. Dir. Ind., 1978, no. 993; Court of Appeal of Milan, 19 July 1985, ivi, 1986, no. 2005. 15 Sanna (2019), pp. 408–409; Ercolani (2011), pp. 2862–2865. 16 Buonpensiere (1996), pp. 982.

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Of course, to be protected by copyright, the work also had to meet the requirement imposed by the Copyright Law: originality. Therefore, to be an artistic work, an industrial design also had to be very original.17 This strict approach resulted in a lack of protection for some of the most important designs, for instance, those of Le Corbusier, commercialized by Cassina (see Chapter 15 by Professor Paolo Tumminnelli) were considered not eligible for copyright protection because: ‘(1) the so-called industrial designs should be considered as applied art works; (2) in three-dimensional works it is not possible to distinguish the artistic value from the industrial product, so such works could not be protected by copyright’.18 As mentioned above, the Italian approach was very different from that of countries that adopted the ‘copyright approach’ with lots of consequences for the establishment and functioning of the European internal market in regard to goods embodying designs. Indeed, such differences could distort competition within the internal market (see Recital 2 of the EU Design Directive).

16.4 The EU Design Directive and Its Transposition in Italy In order to overcome the differences between the national laws of the EU Member States regarding the protection of industrial designs, Art. 17(1) of the EU Design Directive provides that ‘[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 Directive established the principle of cumulation of protection under specific registered design protection law and under copyright law. However, Art. 17(2) also provides that ‘[t]he 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’. If the harmonization procedure has unified the protection of artistic works applied to industrial designs, it has also given Members States an opportunity to choose the conditions under which copyright protection can apply to industrial designs. In Italy, the EU Directive has been transposed by the D.lgs. no. 95 of 2 February 2001,19 which was then repealed by the D.lgs. no. 30 of 10 February 2005 (the Industrial Property Code (IPC)) which consolidated the law concerning industrial

17

Supreme Court of Italy, 5 July 1990, no. 7077, in Giur.it., 1991, I, 1, 47. Supreme Court of Italy, 7 July 1994, no. 10516, in DeJure, (translation by author). 19 Legislative Decree no. 95 of 2 Feb 2001, available at Parlamento Italiano. https://www.camera. it/parlam/leggi/deleghe/01095dl.htm. Accessed 25 Oct 2021. For discussion of the problems in transposing the EU Design Directive see Floridia (2020), pp. 360–362; Galli and Maggi (2011), pp. 1589–1601. 18

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property. The Copyright Law is still in force with the changes introduced by the D.lgs. no. 95 of 2 February 2001 transposing the EU Design Directive. However, because the principle of cumulation of protection under specific registered design protection law and under copyright law was very revolutionary in Italy, the transposition of the Directive faced some problems. The problems were mostly related to the commercial activities of a particular lobby group consisting of furniture manufacturers who had, for a long time, manufactured the designs of famous architects and designers whose registrations had expired. Since the copyright on industrial designs lasted 25 years after the author’s death, once the cumulation of protection was established, such designs and models ‘became’ still eligible for copyright protection. Therefore, these manufacturers would have to stop production of such designs, losing a large part of their revenue. For these reasons, and to protect the interests of this lobby, at first Art. 44 of the IPC provided that copyright protection for designs and models would last for 25 years after the author’s death instead of 70. However, the most important designs would be eligible for protection. Moreover, the EU Directive harmonizing the term of protection of copyright and certain related rights20 provides that copyright lasts 70 years after the author’s death. Italy did not comply with this rule, and so the EU commenced infringement proceedings (no. 2005/4008) until Art. 44 was changed by the D.lgs. no. 131 of 8 August 2010, providing a duration of 70 years after the author’s death for copyright in industrial designs.21 According to the EU system, a national rule could be disregarded by judges if it was non-compliant with an EU one, which is directly enforceable, such as the rule concerning the term of copyright protection. Therefore, Art. 239 of the IPC was introduced granting a type of right of prior use to manufacturers who, during the year before the D.lgs. no. 95 of 2 February 2001 (transposing the EU Design Directive) entered into force on 19 April 2001, produced or offered for sale the designs and models that become eligible for copyright protection as a result of the principle of cumulation. The right of prior use would have lasted for 10 years after this date and so for 10 years the manufacturers of the design furniture could continue to produce and offer for sale the protected items. However, this rule was also not compliant with the EU Design Directive. At this point, the Court of Justice of the Union (CJEU) was required to decide whether Art. 17 of the EU Design Directive must be interpreted as precluding the law of a Member State which—either for a substantial period, namely 10 years, or completely—excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered into the public domain before the date of entry into force of that legislation. The Courts stated that ‘a transitional period of 10 years does not appear to be justified by the need to safeguard the economic interests of third parties acting in good faith, since it is apparent that a shorter period would also allow the part of their 20

Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights OJ L 290/9. 21 Maggi (2011), pp. 544–548.

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business that is based on earlier use of those designs to be phased out and, even more so, their stock to be cleared’.22 Furthermore, the Court stated that ‘a 10-year moratorium in respect of copyright protection appears to go beyond what is necessary, since, by taking 10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application of copyright protection is deferred for a substantial period’.23 Therefore, Art. 239 of the IPC—which provided a term of 10 years for the prior use right of a manufacturer—was not compliant with the EU legislation, and so the term of the prior use right was reduced to five years by D.lgs. no. 131 of 13 August 2010. Therefore, the manufacturers of designs, which again became eligible for copyright protection due to the adoption of the EU Design Directive, should have the right to produce and offer for sale such designs, but only until 19 April 2006; that is, five years after the adoption of the D.lgs. no. 95 of 2 February 2001 transposing the EU Design Directive (which entered into force on 19 April 2001). This term was later extended until 19 April 2014 by the D.L. no. 216 of 19 December 2011, providing a transitional period of 13 years, despite the decision of the CJEU. Since the new legal provision was not compliant with the EU laws, including the decision of the CJEU, and because the EU law prevails over national legislation, Italian judges disregarded the right of prior use provided for in Art. 239 of IPC.24 Therefore, the copyright of the rights holder was finally recognized as opposed to the rights of the manufacturer of design furniture.

16.5 The Cumulation of Copyright and Design Protection After the EU Design Directive As mentioned above, after the adoption of the EU Design Directive, the possibility to cumulate protection under copyright law and design law could not be completely eliminated by Member States, which could only decide the conditions according to Art. 17. In Italy, such conditions are provided by Art. 2(10) of the Copyright Law according to which industrial designs can be protected by copyright if such a work provides by itself ‘artistic value’, in addition to the usual creativity and originality required for other creative works. On the one hand, the creativity and originality requirement is satisfied if the work shows the imprint of the author—to be creative and original, it is sufficient that the work has not been copied. To this effect, it is possible to compare creativity with the authorship of the work. Since copyright protection does not depend on the content of the work or the idea, creativity should be determined with regard to the form of 22

C-168-2009, Flos S.p.A. vs. Semeraro Casa e Famiglia S.p.A., ECLI:EU:C:2011:29, para. 61. C-168-2009, Flos S.p.A. vs. Semeraro Casa e Famiglia S.p.A., ECLI:EU:C:2011:29, para. 62. 24 Decision no. 9917/12, Court of Milan, 13 Sept 2012. 23

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expression, which is the result of the intellectual activity of the author, and must be new.25 On the other hand, artistic value is an additional criterion required only for the protection of industrial designs under copyright law, granting protection only to such works which present a particular aesthetic value. The courts and commentators provide many possible interpretations of this requirement which is important in order to understand the real extension of copyright protection in light of the EU harmonization process.26 An interpretation that artistic value may be shown by the work itself if the work can be separated from its functional value seems very dangerous and inappropriate. As has been stated, such an interpretation reintroduces the criterion of ‘separability’.27 According to this point of view, copyright protection could not be enforced against the manufacturer or the distributor of counterfeited designs, only against those who use the original work for other purposes, for instance, against the exploitation of an image of the work in advertising. This is because, in this case, the work is not performing its function, but is used only because of its artistic value. Equally inappropriate is an interpretation that artistic value exists only if the design is exploited in the art market, distinguishing the destination market of products.28 According to this interpretation, copyright protection would be granted only if the design is used like an objet d’art in the art market. It has been observed that such interpretations of the artistic value are contra jus because copyright law and design law have the same purpose but they do not grant the same rights and if the EU Design Directive had provided the possibility to cumulate the two forms of protection, the national law must be interpreted according to that provision.29 Therefore, the most appropriate interpretation of the artistic value criterion is a type of classification criteria to select the works which can be appreciated from an aesthetic point of view, regardless of the product’s function and of any judgement as to its beauty. However, even if such an interpretation respects the provisions of the Directive, it is very difficult to enforce the artistic value criterion. It is very important that when judges evaluate artistic value they are not guided by a subjective evaluation related to the beauty of the industrial design or its evocative nature. For these reasons, the Italian courts have determined further sub-criteria to guarantee the objectivity of such determinations. Artistic value may be recognized by a judge if the industrial design is appreciated by the public and critics, for example, if it has: been exhibited in a museum or at an exhibition; been entered into a competition for contemporary art, design or 25

De Sanctis (2012), pp. 29–33; Vanzetti and Di Cataldo (2012), p. 533. Sanna (2019), pp. 410–413; Ercolani (2011), pp. 2862–2865. 27 Auteri (2002), p. 272; Valdani (2010), pp. 323–324; Spada (2002), p. 269. 28 See Ghidini (2002), p. 277 who offers the example of the famous ‘Juicy Salif’ lemon squeezer designed by Philippe Starck which, if copied by a producer of home objects, could be protected only under design law, whereas if it was copied by an art dealer for sale in an art gallery, it could be protected by copyright. 29 Auteri (2002), p. 272. 26

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architecture; received a prize or award; been published in a specialized review; or been sold at a higher price than normal. Of course, all of these indicators are useful but could not be considered legal requirements for copyright protection, otherwise young designers would be penalized, since a work just created is often unknown. Indeed, the principle is that copyright should be granted only because of the creative act. Given that, the artistic value should be evaluated with reference to the time of creation when the work is supposed to be unknown. Therefore, all the indicators mentioned above can be an aid for judges, but a design should not be considered ineligible for copyright protection only because the public does not know about it. Despite all the difficulties described above, some of the most famous industrial designs have obtained protection under copyright law. For example, • the ‘Arco’ lamp designed by Pier Giacomo and Achille Castiglioni in 1962 and produced by Flos S.p.A. (see Chapter 15 by Professor Paolo Tuminelli) has been considered to have artistic value ‘because it is an expression of the post-war style, governed by essentiality and formality; because of the dynamism of its essential design; because of the perfect harmony of lines, shapes and volume; because of the absolutely innovative conception as regard to functionality; and because of its ability to grab the attention of consumers. Such judgement is not to be done ex post, in relation to the success obtained by the authors or by the products, but with reference to the characteristics of the product when it was created’.30 • the ‘LC1’ and ‘LC2’ arm chairs and ‘LC4’ chaise longue designed by Le Corbusier, Pierre Jeanneret and Charlotte Perriand in 1928 and produced by Cassina S.p.A. (see Chapter 15 by Professor Paolo Tuminelli) have been found to be eligible for protection under copyright law because ‘they have been recognized by many museums and cultural institution as one of the most relevant expressions of design and design practice’, ‘whose interest and value is still untouched even after decades from their creation’.31 • the ‘Moon Boots’ produced by Tecnica Group S.p.A. have been considered to have artistic value because they have a particular ‘aesthetic impact which, when they appeared in the market, deeply changed the aesthetic concept of après ski, becoming a real icon of Italian design and of its attitude to irreversibly change the fashion taste of an entire period, in regard to daily objects. The Moon Boots not surprisingly won many national and international awards and have been the object of many national and international publications dedicated to contemporary design. Moon Boots have received favourable reviews from experts and designers, and they have been continuously much appreciated by the public. Moreover, they

30

Court of Milan, 28 Dec 2006, available at Puris database. https://pluris-cedam.utetgiuridica.it/. Accessed 25 Oct 2021 (translation by author). 31 Court of Milan, 26 Apr 2011, available at Puris database. https://pluris-cedam.utetgiuridica.it/. Accessed 25 Oct 2021 (translation by author).

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have been chosen by the Louvre Museum as one of the one hundred most relevant symbols of international design of the twentieth century’.32 • the Italian ‘Vespa’ scooter designed by Corradino D’Ascanio and produced by Piaggio & C. S.p.A. (see Chapter 15 by Professor Paolo Tuminelli) has been recognized as eligible for protection under copyright law as ‘it has won a lot of awards from the artistic sector (not only the industry), which has celebrated its qualities and creativity, as much as it has become an icon and a symbol of Italian habits and industrial design’ so therefore ‘even if a work of industrial design has been created as a mere aesthetic shape of an industrial vehicle, it could then acquire an artistic value which exceeds its primary functional value as a result of public recognition’.33 The result of the requirement for artistic value is that it is not easy to state if an industrial design is protected by copyright or not until there is a judicial decision. The consequence is a degree of uncertainty regarding the existence of copyright to protect the shape of a product in Italy. Therefore, registration under the Design Law is always recommended. If, during the protection period provided by such law, the industrial design is greatly appreciated by the public and critics, it will be easier to claim copyright protection.

16.6 The Protection of Industrial Designs Under Design Law After the EU Directive In addition to the principle of cumulation of protection of industrial designs under copyright law and design law, which was certainly the most revolutionary change as a result of the introduction of the EU Design Directive in Italy, there were significant changes to the Design Law. The Directive provides that each Member State shall protect a design by registration to the extent that a design is new and has individual character (Art. 3). This has been transposed in Italy by the D.lgs. no. 95 of 2 February 2001 which changed the Design Law by eliminating any reference to a patenting procedure and to the special ornamentation requirement. Later, the whole subject of industrial property (patent, design and trade marks) was systematized by the IPC. In accordance with the EU Design Directive, Arts 31, 32, 33, 34 of the IPC provide that design is protected by registration if it is new and it has individual character.34 32

Court of Milan, 12 July 2016, available at Puris database. https://pluris-cedam.utetgiuridica.it/. Accessed 25 Oct 2021 (translation by author). 33 Court of Turin, 17 Mar 2017, available at Puris database. https://pluris-cedam.utetgiuridica.it/. Accessed 25 Oct 2021 (translation by author). 34 Sanna (2019), pp. 376–415.

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A design shall be considered new if it has not been disclosed to the public before the date of filing of the application for registration. A design shall be deemed to have been disclosed if it has been published following registration or otherwise, or if it has been exhibited or used in trade before the date of filing of the application for registration. However, not all disclosure will destroy novelty which is considered to be ‘relative’, in contrast to the patent system. Firstly, the publishing or exposing should reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the EU, otherwise a design shall not be deemed to have been made available to the public and the requirement of novelty is therefore satisfied.35 Secondly, these actions should not be taken into consideration if they occurred during the 12 months before the date of filing of the application. This period, called a ‘grace period’, allows the design owner to test the success of the design in the market to decide whether to register it. Moreover, the design shall not be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under express or implied conditions of confidentiality or without the owner’s consent, as a consequence of an abuse. In any case, a design shall be deemed to have been made available only if it is identical to the one already disclosed, or only differs in terms of secondary details. According to Art. 33 of IPC and to Art. 5 of the EU Design Directive, the second requirement for design validity, individual character, is considered to be satisfied ‘if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing’.36 Of course, the degree of freedom of the designer in developing the design must also be taken into consideration. Therefore, the validity of a design could not be challenged only because it has the standard shape of a product. A design is considered to not be valid also if it consists of features of the appearance of a product: • which are solely dictated by its technical function;37 • which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function. However, the last provision does not apply if a design serves the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system. In this case, a design may be registered. In addition, a design right shall not subsist in a design that is contrary to public policy or to accepted principles of morality. 35

Fabbio (2014), pp. 401–406. Bogni (2011), pp. 482–493; Fabbio (2014), pp. 407–425. 37 Fabbio (2014), pp. 460–466. 36

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According to Art. 41(3) of the IPC and Art. 9 of the EU Design Directive, a registered design is protected against any copy which does not produce on the informed user a different overall impression. Therefore, the criterion to determine whether a design has individual character is the same used to determine if a design infringes a registered design. Registration (and therefore the rights conferred by registration) lasts five years and can be renewed five times for a total of 25 years. Therefore, the EU Design Directive changed design protection quite significantly: • the concept of the ornamental design patent, which was a type of patent granted only for aesthetic characteristics, was replaced by the concept of a design, which is not a patent but a different type of industrial property; • the condition of special ornamentation, required for the validity of ornamental design patents, was replaced by the requirements of novelty and individual character of the design; • the term of protection, which had been 15 years for an ornamental design patent, was extended to a maximum of 25 years. The EU Design Directive did not change or modify the utility model, which is a second-tier patent system, granted for minor inventions and which is not concerned with the aesthetics of a product. The original utility models law was replaced by the IPC which reorganized the whole industrial property law without changing the relevant provisions. Industrial design in Italy is regulated also by the EU Design Regulation.38 The Regulation provides for an EU registered Community design (RCD) and an EU unregistered Community design (UCD). The EU Design Regulation, like all EU regulations, is directly enforceable by Member States without the need for a transposing law. Of course, the provisions of the EU Design Regulation are common to all EU Member States and therefore seem less interesting for the purpose of this chapter which sets out the history of Italian design protection. However, for the sake of completeness, it seems necessary to spend some time on its application in Italy. Firstly, the EU Design Regulation requirements with regard to the validity, scope of protection and the term of protection are aligned with the provisions of the EU Design Directive. It only changes the territorial scope of protection conferred by registration. The RCD is directly enforceable in each Member State through only one application made to the European Union Intellectual Property Office (EUIPO) in accordance with a single procedure, by paying only one registration fee. According to Recitals 16 and 17 of the EU Design Regulation, the UCD is provided because there are some industrial sectors which ‘produce a large numbers of designs for products frequently having a short market life where protection without the burden

38

COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1–24 (EU Design Regulation).

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of registration formalities is an advantage and the duration of protection is of lesser significance’. Subject to the same conditions as the RCD, the UCD is protected for a period of three years as from the date on which the design was first made available to the public within the EU.

16.7 The Three-Dimensional Shape Trade Mark The shape of a product can be protected in Europe, and therefore in Italy, under trade mark law by registering a so called shape trade mark (three-dimensional trade mark). Before the harmonization of national trade mark law—provided for, at first, by the 1988 EU Trade Marks Directive—39 the national Italian trade mark law (Trade Mark Law)40 did not expressly provide for the possibility to register the shape of a product as a trade mark. According to Art. 16 of this law, any new word, design or sign able to distinguish goods produced or offered for sale could be registered as a trade mark. The shape of a product was mentioned in Art. 18, which stated that ‘designs and signs whose distinctiveness is inextricably connected with the utility and shape’ could not be registered as a trade mark. Even if it was very difficult to understand the significance and literal meaning of this provision, commentators and the courts concluded that it was possible to register the shape of a product as a trade mark. However, the most common interpretation of the rule was that it was possible to register the shape of a product as a trade mark only if such a shape was unusual and arbitrary, being free of any functional or aesthetic implication41 Indeed, according to this interpretation, the aesthetic value of a shape should be protected by an ornamental design patent and its function, by a patent or utility model, with the consequence that the scope for trade mark protection of a shape was very limited. Ornamental design patent, utility model and shape trade mark protection were considered to be alternative forms of protection, not cumulative. This strict interpretation of the rule limited trade mark protection to unaesthetic and ugly shapes, without any utility. This was indeed paradoxical: beautiful and useful shapes were protected for a shorter period than ugly and useless ones. At the time, aesthetic shapes were protected by the ornamental design patent for 15 years and functional ones by utility model or patent for 10 or 20 years, respectively, whereas trade mark protection was potentially endless. Therefore, the new rules concerning shape trade marks, introduced in Italy by the 1988 EU Trade Marks Directive, were well received, particularly considering the 39

First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC), L 40, 11 December 1989, pp. 1–7. 40 Royal Decree no. 929 of 21 June 1942, available at Gazetta Ufficiale. https://www.gazzettauffi ciale.it/eli/gu/1942/08/29/203/sg/pdf. Accessed 25 Oct 2021. 41 Mayr (2019), pp. 177–178.

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importance that industrial design had acquired, including in the field of containers and everyday objects. Some products had become very distinctive as consumers came to perceive a shape not only as the shape of a product but also as a way to link the product to its manufacturer.42 The 1988 EU Trade Marks Directive which first harmonized the trade mark law within the EU (at that time, the European Economic Community) provided in Art. 2 that ‘[a] trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods’. This clearly stated that the shape and the packaging of goods could be a trade mark. However, some conditions were provided in relation to the validity of a shape trade mark, in particular, Art. 3(e), which provided that the following could not be registered—signs which consist exclusively of • the shape, or another characteristic, which results from the nature of the goods themselves; • the shape, or another characteristic, of goods which is necessary to obtain a technical result; • the shape, or another characteristic, which gives substantial value to the goods. The 1988 EU Trade Marks Directive was transposed in Italy by law no. 480/1992,43 which introduced the above provision in the national Trade Mark Law. The Trade Mark Law therefore provided new harmonized grounds for invalidity, replacing the ground of invalidity for a sign ‘whose distinctiveness is inextricably connected with the utility and shape’. The protections provided by the ornamental design patent, utility model/patent and trade marks, however, were still alternative and not cumulative. Art. 3(e)(ii) of the 1988 EU Trade Marks Directive prevented a shape which had been registered as a patent or utility model as well as a shape which had been registered as an ornamental design patent from being registered as a trade mark. Indeed, it was considered that if a shape included special ornamentation it had a substantial value. After the adoption of the EU Design Directive and the Italian transposing law no. 95 of 5 February 2001 something changed in relation to the interpretation of Art. 3(e)(iii) (the third ground of invalidity) and in general in relation to shape trade marks. The EU Design Directive replaced the requirement of ‘special ornamentation’ for the registration of a design with the requirement of ‘individual character’ which is less related to the aesthetic improvement of a product and more to the marketing and investment required to produce new products. The notion of the ‘substantial value’ of a shape was no longer a legal requirement for the protection of a design, and so the protection offered by trade mark law and design law became cumulative.

42

Bogni (2013), p. 330; Galli (2011), p. 128. Royal Decree no. 480 of 4 Dec 1992, available at Gazetta Ufficiale. https://www.gazzettauffi ciale.it/eli/id/1992/12/16/092G0523/sg. Accessed 25 Oct 2021.

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However, it is not easy to understand the meaning of ‘substantial value’ of a shape as something in addition to ‘individual character’. A shape provides ‘substantial value’ to goods if it actually helps determine the choice of purchase, on the basis of its level of differentiation from other forms available on the market,44 giving to its owner a form of competitive edge.45 Furthermore, the substantial value of a shape can also change over time when new alternative shapes appear, and therefore, the shape could be registered as a trade mark if it is able to inform the public about the origin of the goods, in accordance with the general requirements for trade mark protection. For the sake of completeness, it is also worth noting that the IPC also reorganized trade mark law, repealing the Royal Decree no. 929 of 21 June 1942 and providing in Arts 7 and 9 identical rules to those set out in Arts 2 and 3 of the 1988 EU Trade Marks Directive, mentioned above. The later European Union Directive 2008/95/EC46 and EU 2015/243647 did not modify the provisions relating to shape trade marks in the 1988 EU Trade Marks Directive, and therefore, it has not been necessary to modify the IPC in that regard. Given this legal framework, it is of note that a lot of European and Italian industries have registered shape trade marks in order to protect their iconic products. For example, the ‘Tolomeo’ lamp designed by Michele De Lucchi and Giancarlo Fassina (see Chapter 15 by Professor Paolo Tumminelli), produced and offered for sale by Artemide S.p.A. is registered as a shape trade mark,48 as well as the ‘Vespa’ scooter, produced by Piaggio & C. S.p.A, referred to above.49 However, other historical Italian designs have not been registered as shape trade marks because, over time, their shapes have become the standard shape of a product and have lost their distinctiveness. This is the case with the ‘Moka’ coffeemaker by Bialetti Industrie S.p.A. (see Chapter 15 by Paolo Tumminelli) because a lot of coffeemakers with the same shape are now available in the market.50

44

Mayr (2019), pp. 177–178. Bogni (2011), p. 108. 46 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, L 299/25. 47 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, L 336/1. 48 EUIPO Trade Mark Application no. 007469737 (registered 31 May 2010), available at TM View. https://www.tmdn.org/tmview/#/tmview/detail/EM500000007469737. Accessed 25 Oct 2021. 49 EUIPO Trade Mark Application no. 011686706 (registered 22 Aug 2013), available at TM View. https://www.tmdn.org/tmview/#/tmview/detail/EM500000011686706. Accessed 25 Oct 2021. 50 Court of Milan, 2 May 2012, available at Pluris database. https://pluris-cedam.utetgiuridica.it/. Accessed 25 Oct 2021. 45

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References Auteri P (2002) Industrial design e opere d’arte applicata (dialogo tra Paolo Spada e Paolo Auteri commentato da Gustavo Ghidini). Riv. Dir. Civ. II:267–280 Bogni M (2013) Moda e proprietà intellettuale, tra estetica e comunicazione. Il dir Ind IV:329–333 Bogni M (2011) Commento all’art. 9 del c.p.i. In: Galli C, Gambino AM (eds) Codice commentato della proprietà intellettuale e industriale. Utet, Milano, pp 95–129 Bogni M (2011) Commento all’art. 9 del c.p.i. In: Galli C, Gambino AM (eds) Codice commentato della proprietà intellettuale e industriale. Utet, Milano, pp 482–493 Buonpensiere V (1996) La moda è creazione di modelli ornamentali (commento Trib. Napoli 22 giugno 1996, ord.), Il dir Ind XXII Cortesi G (2006) I nuovi disegni e modelli: una disciplina in cerca d’autonomia. uno studio comparato nell’esperienza iataliana francese. Riv. Comm. Int. II:302–320 De Sanctis VM (2012) Il diritto d’autore. Giuffrè editore, Milano. Ercolani S (2011) Commento all’art. 2 l.d.a. In: Galli C, Gambino AM (eds) Codice commentato della proprietà intellettuale e industriale. Utet, Milano, pp 2846–2865 Fabbio P (2014), Disegni e modelli. In: Scuffi M, Franzosi M (eds) Diritto industriale italiano. Cedam, Padova, pp 387–528 Floridia G (2020) Diritto industriale proprietà intellettuale e concorrenza. In: Auteri P, Floridia G, Mangini V, Olivieri G, Ricolfi M, Spada P, Diritto industriale, proprietà intellettuale e concorrenza, 6th edn. Giuffrè, Torino Galli C, Maggi M (2011) Commento all’art. 239 c.p.i.. In: Galli C, Gambino AM (eds) Codice commentato della proprietà intellettuale e industriale. Utet, Milano, pp 1589–1601 Galli C (2011) Comunicazione d’impresa e segni distintivi: le linee evolutive. Il Dir Ind I:119–135 Maggi M (2011) Commento all’art. 44 c.p.i. In: Galli C, Gambino AM (eds) Codice commentato della proprietà intellettuale e industriale. Utet, Milano, pp 544–548 Mayr C E (2019) Commento all’art. 9 del c.p.i. In: Ubertazzi LC (ed) Commentario Breve alle leggi di Proprietà Intellettuale e Concorrenza. Cedam, Milano, pp 171–178 Morri F (2013) Le opere dell’industrial design tra diritto d’autore e tutela come modelli industriali: deve cambiare tutto perchè (quasi) nulla cambi? Riv Dir Ind I:177–208 Sanna F (2019) Commento all’art. 44 del c.p.i. In: Ubertazzi LC (ed) Commentario Breve alle leggi di Proprietà Intellettuale e Concorrenza. Cedam, Milano, pp 376–415 Spada P (2002) Industrial design e opere d’arte applicata (dialogo tra Paolo Spada e Paolo Auteri commentato da Gustavo Ghidini). Riv Dir Civ II:267–280 Valdani E (2010) Il valore di mercato negli asset Ip nel settore della moda e dei luxury good. Il dir. Ind V: 321–328 Vanzetti A, Di Cataldo V (2012) Manuale di diritto industriale. Giuffrè editore, Milano

Margherita Cera graduated from the University of Padua and completed a LLM in European and international intellectual property law at the Center for International Intellectual Property Studies (CEIPI), University of Strasbourg. She has been a lecturer in industrial and competition law at the University of Padua since 2015 and has held seminars on intellectual property (IP) law as part of the International Business Law Masters Degree Course at the University of Padua. Margherita Cera is also a lawyer in Venice and has always worked for international law firms, such as Bardhele Pagenberg and Rödl & Partner. She advises corporations in relation to the best strategy for the development of their IP assets—trade marks, patents, designs, copyright and trade secrets—and assists companies in drafting contracts for the license and transfer of those assets. She also has experience in the field of arbitration, litigation and preliminary measures, including in relation to cross-border litigation relating to IP rights and unfair competition.

Chapter 17

History and Current Status of Design in Scandinavia Stina Teilmann-Lock

Abstract This chapter makes the case that the development of Scandinavian industrial design in the twentieth and twenty-first centuries should be understood in the light of social developments including educational reform, the role of the functionalist movement and the influence of Scandinavian (especially Danish) designers on the shaping of a modern legal framework for design protection. Inspiration from Japanese design aesthetics on the Scandinavian design idiom is discussed. Furthermore, it is argued that Scandinavian design must be viewed as ‘identified design’ in the sense that consumers are typically familiar with the names of the designers behind their furniture, lamps, tableware and other furnishings and that, in the twentieth century, many designers were prominent public figures. Brief object biographies of a number of Scandinavian designs, that have acquired an iconic status within material culture (due to their ubiquity, their mediagenic character or similar cultural-symbolic status), are provided in the chapter, including Poul Henningsen’s ‘PH5’ lamp for Louis Poulsen, Arne Jacobsen’s ‘Ant’ Chair for Fritz Hansen, Hans Wegner’s ‘Round Chair’ for PP Furniture, Märta Måås-Fjetterstrøm’s textile designs, Aino & Alvar Aalto’s ‘Aalto Vase’, Armi Ratia’s ‘Unikko’ design for Marimekko and Peter Opsvik’s ‘Tripp-Trapp’ chair for Stokke Furniture.

17.1 Introduction In the twentieth century, Scandinavian design became associated with furniture (mostly wooden), lighting, silverware, kitchen implements, glassware and porcelain. Among the most famous figures of modern Scandinavian (and Nordic) design are usually counted the Danish designers Hans Wegner, Finn Juhl, Børge Mogensen, Arne Jacobsen, Poul Kjærholm, Poul Henningsen, Nanna Ditzel, Grethe Meyer, Poul Volther, Kay Bojesen and Verner Panton; Finnish designers Alvar and Aino Aalto, Kaj Franck, Armi Ratia and Eero Aarnio; and Swedish designers Bruno S. Teilmann-Lock (B) Copenhagen Business School, Frederiksberg, Denmark e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_17

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Mathsson, Sixten Sason, Astrid Sampe, Nisse and Kajsa Strinning, Gillis Lundgren, Märta Måås-Fjetterström, Gunilla Magerhem Ullberg and Josef Frank. Many of these designers practiced as architects as well, but their architectural works will not be the subject of this chapter. Prominent twentieth-century manufacturers of modern Scandinavian design include the furniture and furnishing companies Fritz Hansen, Fredericia Furniture, Carl Hansen, PP furniture, Louis Poulsen, Le Klint, String, IKEA and Artek; glass and ceramics manufacturers Holmegaard, Arabia, Iittala, Kosta Boda and Rörstrand; cutlery and cookery manufacturers Georg Jensen, Fiskars and Hackman and the textile and fashion company Marimekko.1 Importantly, modern Scandinavian design is ‘identified’ design. That is, since the first half of the twentieth century, consumers have been familiar with the names of the designers behind their furniture, lamps, tableware, houses and so forth. In many ways, the consumption of modern Scandinavian design has been linked to particular lifestyles.2 In the 1950s and 1960s, when Scandinavian design became a major export industry with large markets in North America and other countries, the ideology of cultural leftism and progressiveness became associated with the consumption of Scandinavian designs.3 Decades later, by the turn of the twenty-first century, national and international consumption patterns altered—furniture, lamps, kitchen implements and more created by twentieth-century Scandinavian designers, which had signalled a modern lifestyle and liberalism in the mid-twentieth century, turned into prestige items.4 Today, many of the chairs, pendant lamps and knives and forks have become status symbols and markers of class and expensive taste.

17.2 From Industrial Art in Scandinavia to Scandinavian Design For the sake of terminological clarification, here follows a brief overview of the shifting terms that have been used to designate design since the nineteenth century. Thus, in the history of Scandinavian design, there has been a distinction between ‘free art’ and ‘applied art’. In the nineteenth century, ‘applied art’ was often referred to as ‘decorative art’, and a further distinction was introduced between ‘arts and crafts’ and ‘industrial art’. In the mid-twentieth century, the term ‘industrial design’ was introduced. Today, we use the term ‘design’ to refer to what was formerly referred to as ‘applied art’. In 1888, the ‘Nordic Exhibition of Industry, Agriculture and Art’ took place in Copenhagen. The exhibition, which was the biggest ever in the Nordic countries, is evidence of the way that industrial art was gaining economic and cultural importance 1

For introductions in English see, for example, Fiell et al. (2017) and Hollingsworth (2009). See Dybdahl (2016). 3 See Guldberg (2011). 4 See Hansen (2018). 2

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in Scandinavia.5 This was a development which had begun with the organization of World’s Fairs with ‘The Great Exhibition’ in the Crystal Palace in 1851 in London being the first. Stylistically, in the nineteenth century, industrial art had been eclectic and historicist; by the end of the century, art nouveau, jugendstil and art deco became favoured styles in European and North American industrial art. In industrial art, the task of the designer—who would usually be trained as a visual artist—was to add decoration to industrially manufactured products.6 In other words, the production of industrial art was divided into two separate stages—a technical process and an artistic process. By the turn of the twentieth century, design movements began to challenge this approach. In particular, the British Arts and Crafts Movement, the Deutsche Werkbund in Germany and the Wienerwerkstätte in Austria formulated new ideals for the making of industrial design. Scandinavian design conforms to the aesthetic norm of abandoning ornament which had also been a defining characteristic of the designs that were created in the 1920s and 1930s by members of the Bauhaus School in Germany. The aesthetic of shunning ornamentation had been promoted by the Austrian architect Adolf Loos in his essays ‘Ornament and Crime’, which had been published in 1908. Loos, in turn, had been inspired by the American architect Louis Sullivan’s famous dictum that ‘form follows function’ (originally proclaimed in an essay of 1896).7 Loos’ rejection of ornamentation was based on a claim of ‘natural selection’ in industrial art prescribing that the ‘evolution of culture is synonymous with the removal of ornament from utilitarian objects’ adding that ‘the greatness of our age, [is] that it is incapable of producing a new ornament. We have outgrown ornament; we have fought our way through to freedom from ornament’.8 This approach came to inspire the strive for unity and formal purity in modern Scandinavian design.

17.3 Turn of the Twentieth Century: Functionalist Design Functionalism has been the driving ideology of modern Scandinavian design. Social involvement has been a driving force of functionalism, manifesting itself in a commitment by designers to make furniture practical for use and to strive (on the part of some Scandinavian designers) to keep prices sufficiently low so as to be affordable for middle-income people. The functionalist idiom of Scandinavian design has been characterized by simple clean lines and natural materials. In the early twentieth century, the role of design in establishing the Scandinavian welfare state was a topic of public debate. A new generation of architects and 5

See Jensen (2015). For example, in the ceramics industry—which, in the nineteenth century, played a major role in many European economies—it was customary to appoint academy-trained visual artists to design decorative motifs for tableware. 7 See Sullivan (1896). 8 See Loos (1970), p. 19. 6

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designers aired their views on the ways that functionalist design was to go hand in hand with political visions of a modern society. Along these lines, in 1930, a Danish student of architecture pointed out the superiority of functionalist design as compared with typical nineteenth-century ornamental styles. The general population still pays homage to the sentimental pompous style; the working classes desire bad imitations of upper-class art only. When will they open their eyes to the beauty of our time, the pure lines, the beauty of a useful object that clearly expresses its function in its design and in the whole treatment of the material, the sober, rational solution. People continue to think that in order for an article of everyday use to be beautiful it has to be muddled up by meaningless ornaments: only then it will be in concordance with the plush-covered couch and the plaster casts after Thorvaldsen [Danish neoclassicist sculptor]. They prefer the silver coffee pot from Georg Jensen because it is expensive and impractical to a beautiful, cheap, simple coffee pot in blue enamelled tin.9

Modern design introduced a distinction between the beauty of the functional solution in itself and the unattractiveness and meaninglessness of ornaments that served, more often than not, to conceal a deficiency in design due to, for example, the use of low quality materials or a lack of functionality. Twentieth-century Scandinavian design conceptualized design as simple and rational solutions to practical problems, where the intended use of a design would be obvious and its materials of enduring quality.

17.4 The Kaare Klint School of Furniture Design In the 1920s, institutional reform in the education of designers was introduced in Denmark, which came to be of great significance to the later development of Danish and Scandinavian design. In 1923, a school of furniture design was founded within the Danish Royal Academy of Fine Arts with the architect Kaare Klint acting as its leader from 1924 to 1954. Kaare Klint’s furniture school introduced a reorganization of the way that designers worked with a focus on teaching the ‘functional’ aspects of design and emphasizing the functional as an aesthetic ideal. Notably, the generation of designers—including Arne Jacobsen, Hans Wegner, Finn Juhl and Poul Kjærholm— who became distinguished representatives of the ‘Danish Modern’ movement in the 1950s, was educated by Klint in accordance with his functionalist principles for design. The design principles that Klint developed as head of the Royal Academy’s school of furniture design were linked to the processes of measuring and recording both human anatomy and traditional furniture—such as Chippendale furniture, Windsor chairs and so forth—and rendering these measurements as the basis for the creation of new designs.10 Students were taught to analyse traditional chairs and their function, and define them according to what was labelled the ‘type’. The task of the designer 9

See H.L. (1930), p. 6. See Hegner (2009).

10

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would then be to create contemporary furniture by refining and bringing the ‘types’ to perfection. Students would be told to disassemble and measure traditional chair types including, as mentioned, Windsor or Chippendale chairs as well as traditional peasant chairs and Quaker chairs and then design on the basis of their analysis. This formula proved hugely successful, as we know, and later, during the heyday of Scandinavian Design, acclaim from overseas critics of Scandinavian design emphasized that it maintained the continuity of traditional craftsmanship above anything else.11 Klint’s students were trained to use this methodology to refine the designs of traditional furniture while also paying heed to a modern framework that took into account ergonomics, social space and economy. As a practising designer, Kaare Klint became known for, among other designs, a series of chairs that have proved to be longlasting—the ‘Faaborg Chair’ (1914) and ‘Safari Chair’ (1933), both produced by the manufacturer Rud Rasmussen/Carl Hansen—and that are still in production today. The design principles developed by Kaare Klint according to which ‘functionalist’ furniture was to be designed came to be cornerstones of Danish design in the twentieth century.12 As a social side effect of their common training at the Royal Academy’s school of furniture design, industrial designers came to constitute a professional class of graduates who played an important role as public figures in the mid-twentieth century— both via their profession and as opinion makers in the press. In this way, designers came to contribute to the direction of design-related branches of intellectual property (IP) law. The Danish National Association of Crafts and Industrial Art was deeply involved in law-making, pushing for more consistent copyright protection of design works. By contrast, the designers were sceptical of design protection associated with the registration of designs. For example, in a memorandum for the Danish National Association of Crafts and Industrial Art in the late 1940s authored by the chair of the Association’s Legal Affairs Committee, design law was portrayed as a type of legal protection that was inferior or even inappropriate for designers.13 In the view of the members of the Association of Crafts and Industrial Art, it would be natural for art 11

See Guldberg (2011). See Sommer (2015). 13 Altogether, historical registration records suggest that during the twentieth century, generally designers did not choose design registration as a means for legal protection. In Sweden, under the Design Act of 1899—which protected metal works only—applications and registrations were few. Activity increased under the 1970 Design Act (which applied the Locarno classes) rising to approximately 2,000–3,000 applications and 1,000–2,000 registrations per year. In Norway, the numbers of applications and registrations climbed from, respectively, 317 and 280 in 1911 to approximately 1,000–2,000 in the 1930s and the following decades until activity decreased in the 1960s and figures fell below 1,000 per year. In the first year of the Act, there were 501 applications and 422 registrations. By 1933, the numbers of applications had gone up to 3,534 and registrations to 3,482. During World War II, numbers decreased only to peak in 1946 with 4,084 applications and 3,901 registrations. After 1946, the numbers of applications and registrations per year dropped and remained under 1,000 per annum until 1974. Under the 1970 Design Act, applications stabilized at 1,000 to 1,500 per year; of these, typically about 80% were granted registration. If one looks into the types of subject matter for which applicants sought protection, it is shown that the types of designs usually associated with the Scandinavian design movement—for example designed goods 12

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and design to be protected by the same branch of IP law, namely copyright law. This theoretical viewpoint went hand in hand with the fact that industrial designers were educated at the same institution, the Royal Danish Academy of Fine Arts. The stance toward legal protection of design taken by the designers’ association is indicative of the professional and creative self-perception, as well as of the social position, that Danish, and more generally Scandinavian designers, came to hold in the twentieth century. In a nutshell, designers were recognized not only for the functionality of their products, but equally so for the creative and artistic expression of their designs. It also became the norm that industrial designers worked in their own name, that consumers would not only know the company that had manufactured their designed products—furniture, lamps, tableware—but also the designer’s identity. As in the case of free art, the name of the creator would add value to the product. Just as the name of an artist adds value to a work of art, the name of the designer would add value to a work of design even though it was industrially and serially made. In

for the home including glass and porcelain ware, cutlery, furniture, apparel and leather ware— are not represented, despite the fact that Nordic design industries were known for manufacturing these types of products. Thus, for example, the records of the Danish Patent and Trademark Office (DKPTO) for the period from 1970 to 2014 reveals the highest level of activity was in Locarno Class 9: ‘Packages and Containers for the Transport or Handling of Goods’. The makers of ‘closing means and attachments’, ‘bottles, flasks, pots, carboys, demijohns and containers with dispensing means’ and ‘boxes, cases, containers, (preserve) tins or cans’ were the major applicants for design protection. During the 31-year period when the Danish 1970 Design Act was in force, a total of 3,653 designs were registered in Locarno Class 9. In comparison, during the same period, out of the thirtytwo Locarno Classes, there were less than 500 registrations in thirteen classes. In ten classes, there were less than 1,000 registrations; in six classes, there were less than 2,000 registrations. In Locarno Class 6, ‘Furnishing’, there were 2,808 registrations; in Locarno Class 7, ‘Household goods’, there were 2,069 registrations. Interestingly, this has since changed. For the period 2004–2008, the top Locarno Class used in Denmark was for furnishing. While the dispersion of DKPTO registrations across the diverse Locarno Classes may simply reflect the strength of different industries in Denmark, it is worth noting that there is an extraordinary lack of registrations by the leading manufacturers of design. Most of the designers and manufacturers who led the Danish design and Scandinavian design movements in the twentieth century have not made use of design registration as a means of protecting their IP. Putting the above DKPTO figures above in perspective, in the period from 1883 to 1982, the highest level of applications and registrations in countries that were signatories to the Paris Convention for the Protection of Industrial Property were in France, Germany, Britain and Switzerland. Activity in these countries peaked in the late nineteenth century and the early twentieth century. In 1897, there were 73,964 applications and registrations in France; in 1909, there were 221,991 applications and registrations in Germany; in 1912, there were 43,015 applications and 42,077 registrations in Britain. In 1913 in Switzerland, the records show 483,648 applications and 483,545 registrations. Following their early peaks the numbers fell substantially, with some ups and downs, during the twentieth century. By 1970 and for the rest of the period, the number of applications and registrations in France ranged between, respectively, 4,000 to 13,000 and 12,000 to 16,000; in (West) Germany between, respectively, 1,000 to 6,000 and 34,000 to 76,000; in Britain between, respectively, 4,000 to 9,000 and 3,000 to 6,000; and in Switzerland, the number of applications and registrations both ranged between 500 and 900. The source of this data is WIPO historical data, available at World Intellectual Property Organization. Intellectual Property Statistics. http://www.wipo.int/ipstats/en/statistics/designs/. Accessed 27 Apr 2021. See further Schovsbo and Teilmann-Lock (2016).

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this way, the aesthetics of Scandinavian functionalism depended as much on artistic choices associated with taste as on design choices related to utility.

17.5 Influences from Japan in Scandinavian Design Japanese influence on Scandinavian design began as early as the 1880s when decorative artists from Scandinavia began to take an interest in Japanese aesthetics and design principles.14 In particular, the painted decoration of porcelain from the factories Bing & Grøndahl and the Royal Danish Porcelain Factory bear witness to inspiration from Japanese decorative motifs, including Japanese depictions of birds, insects, plants and more.15 Moreover, Japanese standards of quality and design principles became an inspiration for change in an industry where decorative art had been used to camouflage the industrial origin of products, and where there had been a weakening of regard for craftsmanship and the particular qualities of different techniques and different materials.16 Dissemination of knowledge of Japanese design happened mainly through the mediums of exhibitions—for example, there had been an exhibition of Chinese and Japanese art in 1886 organized by the Danish Association for Industry to inspire the Danish and Scandinavian applied arts sector. Moreover, the ‘Nordic Exhibition of Industry, Agriculture and Art’ in 1888 included a Japanese stand where ceramics, both porcelain and earthenware, were on display. Further, items on display included works in lacquer, ivory, woodwork, textiles, teapots, bronze vases, bamboo furnishing, sculptures, drawings and prints.17 Fifty years later, in 1938, there was a special exhibition on Japanese applied art at the ‘Den Permanente’ exhibition site in Copenhagen, which at the same time was the main site for showcasing the works of young Danish designers dedicated to the principles of functionalism in design. The exhibition of Japanese design fed into the modern movement for furniture, furnishing and architecture that was gaining pace in the Scandinavian countries. One of the principles that the functionalists had in common with their Japanese colleagues was the ideal of ‘applied art for the many’.18 Commentators have also remarked on what has been labelled the aesthetic kinship of Japanese and Scandinavian design.19 Thus, in several ways, Japanese applied art came to contribute to the direction taken and remarkable achievements of Scandinavian modern designers in the twentieth century. Some Scandinavian modernist designers intentionally used and referenced Japanese styles in their designs including, for example, the Danish furniture designer Finn Juhl who designed a set of furniture 14

See Weisberg et al. (2016). See Jørgensen (2013). 16 Jørgensen (2013), p. 28ff. 17 Jørgensen (2013), p. 63f. 18 Jørgensen (2013), p. 212ff. 19 See Weisberg et al. (2016). 15

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for the manufacturer France & Son and named the pieces ‘The Japanese chair’ and ‘The Japanese sofa’ (1953).

17.6 Scandinavian Design: Convergences and Divergences While Scandinavian design throughout the nineteenth and twentieth centuries has been defined and united by a number of common characteristics, it is also part of a broader picture characterized by the convergence and divergence of different national design traditions of the Scandinavian countries. A remarkable convergence took place in the mid-twentieth century when a major travelling exhibition entitled ‘Design in Scandinavia: An Exhibition of Objects for the Home’ toured North America. The promotion of the cultural value of Scandinavia was part and parcel of gaining an international commercial foothold. Meanwhile, divergences became visible at a small exhibition at the Royal Academy of Fine Arts in Copenhagen organized by the Danish National Association for Industrial Art in the early 1960s with the somewhat distinctive title of ‘The Cabinet of Plagiarism’. This exhibition brought to light a lack of alignment especially between the Danish and the Swedish design sectors. The international name and reputation that Scandinavian design made for itself was very much a phenomenon of the mid-twentieth century. This was the period when the labels of ‘Scandinavian Design’, ‘Danish Modern’ and ‘Swedish Modern’ gained worldwide brand recognition. Commentators beyond the Scandinavian countries began to recognize the originality and distinctness of the Scandinavian idiom in works of design, and a number of the most prestigious international design awards were granted to Scandinavian designers and design institutions.20 Importantly, in the years from 1954 to 1957, the travelling exhibition ‘Design in Scandinavia: An Exhibition of Objects for the Home’ visited 24 North American cities including New York, Toronto and San Francisco. The exhibition featured 700 items of furniture, glassware, ceramics, textiles, knitwear and metalwork from Sweden, Denmark, Finland and Norway. The objects on display were contemporary products that were suited for sale in shops at the various locations where the exhibition travelled. In this way, the ‘Design in Scandinavia’ exhibition led not only to international recognition but also to commercial success.21 What was especially admired in Scandinavian design was its ‘simplicity’ and ‘honesty’, and the way that each piece of furniture would contribute to the general functionality of the ‘democratic’ Scandinavian living room. Scandinavian design was praised in the influential interior magazines Interior and House Beautiful,22 and as mentioned above, it was often pointed out that its 20

For example, the Danish exhibition co-op ‘Den Permanente’, which existed from 1931 to 1981, received the important award, the Compasso d’Oro Gran Premio Internazionale, in 1958. The designer Finn Juhl was awarded gold medals and an honorary diploma at the Triennale di Milano and Hans Wegner received the Lunning Prize. See Fallan (2014) and Guldberg (2011). 21 See Hansen (2018). 22 See Gough (1959).

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key quality was that it maintained the ‘continuity’ of traditional craftsmanship and workmanship in Scandinavia. In the United States of America (US), Scandinavian Design was acclaimed by Edgar Kaufmann Jr. who was Director of the Industrial Design Department at the Museum of Modern Art (MoMA), New York, and counted as one of the most influential figures of the global design scene.23 MoMA acquired a selection of works by Scandinavian designers for their collection. Shops that were marketing Scandinavian designs began to open in North American cities. An example of a specialized store for Scandinavian design was The Lunning Collection shop run by Georg Jensen Inc, which opened on the prestigious Fifth Avenue in New York. In other countries, Scandinavian design was included in the collections of major museums and entered many national consumer goods markets.24 At the same time, in the Scandinavian countries, designers experienced similar success in terms of creative recognition as well as steadily increasing sales. Contract sales of designed furniture and furnishings accounted for a significant share of sales. Thus, corporate headquarters (for example, the pharmaceutical company NOVO Nordic), hotels (for example, the SAS hotel in Copenhagen) as well as schools and municipal buildings were furnished with modern Scandinavian designs. This phenomenon gained pace in the 1960s and is still seen today.25 Significantly, there were many features that the national design traditions of Scandinavian countries had in common, including the idiom, techniques and choice of materials. However, as indicated above, there were a number of structural differences—for example, in the production, regulation and marketing of design in Denmark and Sweden. This was what the Danish architect Bent Salicath wanted to expose when he, in 1961, published an article entitled ‘Sverige—kunstnerrettens Panamastat’ [‘Sweden—the Panama State of Artistic Rights’] in the Danish journal Dansk Kunsthåndværk [Danish Arts & Crafts]. He pointed out that, after 20 years of preparatory work, Sweden had still failed to live up to the clear objective of Herman Kling—who was the Swedish Minister for Justice at the time—which was to harmonize Nordic law with respect to, among other things, the legal protection of design. The Swedish Copyright Act of 1960 had been introduced with the notorious s. 43 which restricted the term of protection for design to a maximum of 10 years. The term of protection for types of works other than design was the life of the artist or author plus 50 years after his or her death. Notably, in the Bill, presented before the introduction of the 1960 Act, the term of protection for design had been the lifetime of the creator plus 50 years post mortem auctoris. Salicath had carefully gone through the transcriptions of the Swedish parliamentary debates and found that design’s status under Swedish copyright law was borne out of a compromise with the Svenske Industriforbundet [Swedish Association of Industry]. In fact, the Swedish Association of Industry had objected outright to the 23

See Hansen (2018). For example, in the collections of the Victoria and Albert Museum, Die Neue Sammlung, Design Museum Gent and Musée Des Arts Décoratifs. 25 See Hansen (2018). 24

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introduction of statutory copyright protection for designs, and this had effectively set the political agenda. The Swedish Association of Industry had argued for a sui generis design act with an even shorter term of protection than 10 years. In Denmark, as Salicath pointed out, the Danish Industry Association had recognized that design or industrial art would fall under copyright law. It was generally acknowledged in Denmark that, despite being industrially made, product designs would have specific protection needs that differ from other types of industrial products. Notwithstanding, the Swedish Association of Industry claimed that long protection would stifle innovation and that introducing or increasing design protection would result in the production and marketing of less attractive goods. In particular, the Swedish Association maintained that if manufacturers were to face the complication of having to use protected designs, then, in the future, their production of products would be based on standardized, anonymous forms. Salicath mocked this view arguing that ‘the situation is that industry itself has had and will continue to have an increasing need to employ artists or designers in order to develop products where the “design concept” adds value to the products—and where the design element is brought out in advertising and marketing for the sake of attracting attention to individual products’.26 As Salicath maintained, in Denmark, the growing number of companies that were involving designers in many stages of their production lines had in fact been campaigning for increasing the term of legal protection. And, as Salicath argued, plagiarism of a Finn Juhl design could not be justified based on the excuse that there was a market demand for furniture that looked like the works of the designer Finn Juhl. At the same time as Salicath was airing his views, the annual show of industrial art at the Royal Academy of Fine Arts was focusing on the issue of Swedish plagiarism of Danish designs. As mentioned above, the Danish National Association for Industrial Art organized an exhibition entitled the ‘Cabinet of Plagiarism’. Its purpose was to highlight the detrimental effect of the deficiencies of legal protection of design in Sweden. The problem addressed by the exhibition was that a large amount of manufacturing and marketing of pirated Danish designs was taking place in Sweden. In the exhibition were a collection of original Danish designs (including Kay Bojesen’s wooden toy monkey, Hans Wegner’s ‘Folding Chair’ and more) displayed along with their pirated counterparts that were legally marketed in Sweden. The exhibition occasioned a considerable stir in the Scandinavian press and Herman Kling, the Swedish Minister of Justice, went to see it for himself. Importantly, Herman Kling expressed support for the Danish designers and manufacturers and soon after the Swedish approach to the legal protection of design changed. The duration of copyright in designs was harmonized with other types of copyright subject matter (lifetime of the author plus 50 years post mortem auctoris), and joint Nordic design legislation came into effect in 1970.

26

See Salicath (1961).

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17.7 Iconic Scandinavian Designs Some of the Scandinavian designs of the twentieth century have acquired iconic status. Such a status may have been brought about by the ubiquity of certain designs— the designs have been so popular among consumers and are to be found in enough Scandinavian households, corporate offices, municipal spaces and other places to be well known to the general public. Or, it may be that some types of design due to their sculptural qualities lend themselves to becoming iconic. This, arguably, is the case for a number of chair and lamp designs.27 In particular, representations in visual media, including photography and film, have contributed to the iconic and symbolic status of some chair and lamp designs.28 As a result, a number of designs have become emblematic of Scandinavian design as a whole. Some of the designs that have achieved this status are described below.

17.7.1 Poul Henningsen’s ‘PH5’ Lamp (1958) The ‘PH5’ lamp was created by the Danish designer and architect Poul Henningsen (1894–1967) and has been produced by the lighting manufacturer Louis Poulsen since 1958 as a pendant lamp, a floor lamp and a table lamp in different colours and sizes.29 In the 1920s, Poul Henningsen had begun designing incandescent lamps distinguished by a patented three-shade design that enables glare-free lighting. In the patent specification, Poul Henningsen’s design was described as a ‘reflector for diffusing the light of incandescent lamps comprising a plurality of concentric downwardly concave shades disposed above and below the plane of the source of light, the inner surfaces of said shades being directed toward the source of light’ (US patent US1757527).30 Poul Henningsen’s approach to lamp design was informed by a scientific ideal of optimizing the light source while at the same time preventing the glare of direct light. To achieve this functionality, Henningsen meticulously calculated and tested the reflections of light in his designs—the PH-lamp shade was the result of such an experimental design methodology. As such, it represented a significant step away from the approaches of the Victorian Age that favoured ornamentation. Nevertheless, as time has gone by, consumers have come to value the PH lamp more for its aesthetic and stylistic qualities than for its technical specifications.

27

See Dybdahl and Engholm (2009). See Breunig (2012). 29 On Poul Henningsen and his designs, see Jørstian and Nielsen (2007). 30 See Teilmann-Lock (2019). 28

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17.7.2 Arne Jacobsen’s ‘Ant’ Chair (1952) The ‘Ant’ chair was designed by Arne Jacobsen (1902–1971), who was a Danish industrial designer and architect. The Ant chair was first marketed in 1952 by the furniture manufacturer Fritz Hansen, a Danish company that also produces a number of other Arne Jacobsen designs including the ‘Egg’ and the ‘Swan’ lounge chairs, both of which were created for the SAS Royal Hotel in 1958, and the ‘Series 7’ dining chair from 1955.31 The ‘Ant’ chair was originally commissioned by the Danish pharmaceutical company NOVO Nordic for the company’s canteen. Arne Jacobsen’s preference for organic modernism is visible in the Ant’s style, its appearance and lines and the characteristic narrowing of its back which gives it the likeness of an ant’s raised head. The ‘Ant’ chair was the first of a series of lightweight, stackable plywood dining chairs designed by Arne Jacobsen. Technically speaking, it owes its existence to steam bending methods developed by the Vienna-based furniture manufacturer Thonet in the nineteenth century and more specifically to the ways that these techniques were applied by Ray and Charles Eames in their ‘LCM’ chair. Jacobsen developed these techniques further—the seat of the ‘Ant’ is made from a single shell of double-curved, steam-bent plywood rendering the seat and backrest as one. The legs are made of chromed steel tube. Originally the chair was designed with three legs, but a four-legged version was introduced in 1971. The ‘Ant’ chair continues to be marketed globally by the Fritz Hansen Company.

17.7.3 Hans Wegner’s ‘Round Chair’ (1949) The Danish furniture designer Hans Wegner’s (1914–2007) armchair the ‘Round Chair’ was first launched in 1949 with a caned seat, with the series number PP50, and in 1950 with an upholstered seat, with the series number PP503. This chair was made famous when John F. Kennedy and Richard Nixon sat in it during the televised US election debate in 1960. After that occasion, Wegner’s chair was redubbed by American commentators—as a sign of admiration—as simply ‘The Chair’. The refined balancing of materials, idiom and construction in ‘Round Chair’ accounts for its particular status in Scandinavian design history. As such, it is exemplary of what established the international reputation of Scandinavian modern furniture—it is made only of solid wood and other natural materials; its style is ‘artless’ yet refined— its shape and scale are aesthetic features; and its construction is simple consisting of a seat, four legs and a combined top rail and arm rest assembled with traditional craftsmanship.32 Moreover, as it is sometimes noted, the ‘Round Chair’—like many other chair designs that have come out of the Scandinavian modern movement—does not have a ‘reverse’ side. It is designed to be looked at from all angles. Even when it is turned upside down the joints and details are neat enough to bear scrutiny. Wegner’s 31 32

See Dybdahl and Engholm (2009). See Olesen (2014).

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‘Round Chair’ is produced by the Danish company PP Furniture which has kept its production in Denmark unlike a number of other Scandinavian furniture companies.

17.7.4 Alvar and Aino Aalto’s ‘Aalto Vase’ (1936) Alvar Aalto (1898–1976) designed the ‘Aalto Vase’—also known as the ‘Savoy Vase’—in collaboration with his wife Aino Aalto (1894–1949) as an entry in a design competition arranged by the Karhula-Iittala Glassworks factory in 1936. The following year, in 1937, the vase was displayed at the World Fair in Paris. The distinctive design of the vase has been likened to shapes from Finnish folklore and nature—the dresses of Sami women as well as the outline of Finnish lakes.33 Both Alvar and Aino Aalto practiced as architects as well as industrial designers. Alvar Aalto is internationally renowned for his buildings in the International Modernism style, both private and public and in both Finland and abroad. The Aalto couple cofounded the furniture company Artek which produces chairs, stools, tables, lamps and more. Similar to the Bauhaus designers, the Aalto couple addressed their commissions as Gesamtskunstwerke [total works of art] where the exterior and interior of a building would be designed according to a master plan. Thus, the ‘Aalto Vase’ was part of the customized furnishings of the Savoy Restaurant in Helsinki that opened in 1937. The ‘Aalto Vase’ has been manufactured in a range of different colours and sizes, and it is made and marketed by the Iittala Glassworks factory in Finland. Today, Iittala, which dates back to 1881, is one of the strongest Finnish design brands and is known, in particular, for glassware, cookware and tableware.

17.7.5 Maija Isola’s ‘Unikko’ Floral Pattern (1964) As the story goes, the Finnish textile and print designer Maija Isola (1927–2001) created the ‘Unikko’—which in Finnish means ‘poppy’—pattern for Marimekko as a reaction to Marimekko’s founder, Armi Ratia’s, proclamation in public that floral designs and fabrics did not belong within Marimekko’s stylistic universe. For a number of years, Maija Isola was the principal designer at Marimekko, and while she was a prolific creator of prints for textiles in this capacity, her textile works have also been on display in museums including the Victoria and Albert Museum in London and at other design museums around the world. Her artistic style ranged from the colourful and playful style of the ‘Unikko’ pattern to minimalist and geometric designs, as in the ‘Kivet’ (‘Stone’ in Finnish) fabric, as well as in the depictions of plants in toned-down colour schemes in the ‘Luonto’ (‘Nature’ in Finnish) series.34 Marimekko, which to this day is a producer and marketeer of textiles, apparel and 33 34

See Grönstrand (1988). See Aav (2003).

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accessories for the home, continues to make and sell Maija Isola’s ‘Unikko’ prints. The prints are applied to a range of products including bedding, tableware, curtains and accessories.

17.7.6 Märta Måås-Fjetterstrøm’s ‘Bruna Heden’ (1931) The Swedish artisan weaver Märta Måås-Fjetterström (1873–1941) was both prolific and entrepreneurial. The flat weave carpet ‘Bruna Heden’, made in 1931, is one of the numerous designs—over 600 in the course of 22 years—she created in her own studio that she established in 1919. In the mid-twentieth century, Märta Måås-Fjetterström became internationally known for her range of heavy-pile carpets, hooked rugs, kilim rugs and tapestries in which she combined traditional Scandinavian crafts skills with a modern style and colour scheme of stylized depictions of Scandinavian plants and landscapes. Her aesthetic was inherently modern in its linking of technique and form and its integration of artistic elements with materials. In the manner of an artist, she signed all of her works with her initials ‘MMF’. In her studio—in which at one point twenty weavers were employed—she collaborated with other notable Swedish Modern designers, in particular with Barbro Nilsson.35 Today, Märta Måås-Fjetterström’s works are part of the collections of leading museums, including the Louvre in Paris, the Victoria and Albert Museum in London, the Metropolitan Museum of Art in New York and the National Museum of Stockholm. The studio that carries her name still exists in the southern Swedish town of Båstad.

17.7.7 Peter Opsvik’s ‘Tripp Trapp’ Highchair (1972) The ‘Tripp Trapp’ highchair, designed by the Norwegian industrial designer Peter Opsvik (1939–), has been marketed by the furniture company Stokke in Scandinavia and globally since 1972. The chair’s distinctive L-shaped construction—which was protected by a patent from 1974 until 1994—represented a radical shift in the design of high seats for small children. The marketing of the Tripp Trapp highchair emphasizes, in particular, its functionality—the flexibility and adjustability of both the seat and the footplates that allow for an ergonomic seating position for children of many different ages. As such, the Tripp Trapp chair is considered to be a very successful functionalist design—wherein function and form are indistinguishable—in that, as commentators have observed, there are no ‘designerly’ components in the chair other than those that are dictated by function.36 The functionality of the chair may account for its market position and significant market share. Arguably, the ingenuity of the 35

Hagströmer (2001). DK: U.2001.747H, Judgment of the Supreme Court of 5 Jan 2001, Peter Opsvik and Stokke Fabrikker v. Tvilum Møbelfabrik.

36

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chair’s shape and style have also contributed significantly to the marketing of the Tripp Trapp highchair. Peter Opsvik is the designer of a number of other pieces of furniture, many of which concern the ergonomics of seating.37

17.8 Scandinavian Design Today A number of structural features have come to define the Scandinavian design sector as it exists today. In the early twenty-first century, design education has been reformed to conform to the academic standards of the European Bologna declaration for higher education.38 While most of the generation of designers that created a name for Scandinavian design have passed away, most of the manufacturers are still in business (including the manufacturers mentioned in this chapter), although many of them have now partly outsourced their production.39 Notably, many of the designs that date back to the mid-twentieth century continue to be the most celebrated and by far the best-selling items produced by these companies. Even though it is not the subject of this chapter, it is worth mentioning the prominent international role played by a new generation of Scandinavian architects, for example, the Norwegian architectural company Snøhætta and the Danish company BIG (Bjarke Ingels Group), both of which have set a new direction for architecture around the world with their series of iconic projects for governments and corporations.40 A range of distinctly new Scandinavian design companies have been founded in the past few decades such as the Danish companies Hay Copenhagen, Normann Copenhagen and Muuto; the Swedish companies Design House Stockholm and Pholc and the Finnish companies Secto Design and Lokal Helsinki. Characteristic of many of these and other new Scandinavian design companies is the way that the Scandinavian design legacy is actively used and drawn upon by present-day designers. Aesthetically speaking, the Scandinavian design tradition, in terms of style and functionality, is very present in contemporary designs. Yet the production and consumption of industrial design today must be understood against the backdrop of new value and supply chains brought about by globalization. Thus, many of the new design companies provide online global distribution of their goods. However, the products are not necessarily made nor sourced in Scandinavia. A further development is that these new design companies have introduced what may be labelled as ‘fashion logic’ 37

See Opsvik (2009). See The Bologna Process and the European Higher Education Area. Europe website: European Commission. The Bologna Process and the European Higher Education Area. https://ec.europa. eu/education/policies/higher-education/bologna-process-and-european-higher-education-area_en. Accessed 25 Oct 2021. 39 Teilmann-Lock (2016). 40 See BIG. https://big.dk/#projects. Accessed 25 Oct 2021; and Snøhetta. https://snohetta.com. Accessed 25 Oct 2021. 38

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into the production, promotion and consumption of design products.41 In particular, the styling of furniture and furnishings in terms of season, colour trends or lifestyle markers has entered the design industry. For example, chair designs by Arne Jacobsen, Verner Panton and Hans Wegner have been launched in pastels that were in vogue in the 2010s, and there is an increasing tendency to co-brand furniture with home accessories—including candle holders, napkins and cushions—that reflect particular and fashionable lifestyles. On a more problematic note, a major current concern in the Scandinavian design sector is the fact that the copying and marketing of counterfeits of original designs of independent designers has become frequent and widespread. This has been enabled and fuelled by globalized production designed for cheap and rapid mass production and distribution.42 A recent case involving the Danish design school-trained ceramist Anne Black is typical of this state of affairs—a number of her most popular ceramic designs were copied by a production company and the copies were marketed widely in Denmark and Norway by a major supermarket chain.43 Importantly, the Anne Black case has shed light on a number of societal implications of the unrestrained marketing of cheap copies of design originals by chain stores. Arguably, innovation and the advancement of creative sectors deteriorate if cheap mass-produced copies are allowed to flood the markets. Marketing and consumption of cheap copies undermine the value chains of original design. For example, the value of an Anne Black design lies not in its appearance alone which is what gets reproduced by the counterfeiters. Crucially, Anne Black ceramics have a variety of innate qualities that add up to important social, cultural and environmental value. Thus, Anne Black has created a brand for herself in Scandinavia with ceramic products that are handmade in a Vietnamese factory, which she owns together with a local family that has worked in ceramics for generations. Her company has defined policies for renewable energy, labour standards, social welfare and equal opportunity that serves to support the wellbeing of both labourers and consumers. This system that supports social, cultural and 41

See Petersen et al. (2016). See OECD and EUIPO (2019) and Teilmann-Lock (2014). 43 At the time of writing, the case is on appeal to the Danish Supreme Court in relation to the calculation of damages. The dispute began in 2016 when a Danish supermarket chain marketed unauthorized copies of three of Anne Black’s most popular products—a cylinder-shaped hanging flowerpot in porcelain with leather straps, a monochrome porcelain vase and a porcelain jar with a convex lid. Anne Black turned down several offers of out-of-court settlements and won compensation amounting to DKK 1.5 million in the first instance from the Danish Maritime and Commercial Court, which ruled in her favour. The Danish Maritime and Commercial Court declared that the three designs reflected the unique creative and intellectual input of Anne Black and, as such, amounted to original works as defined by the European INFOSOC directive, and so were eligible for protection under the Danish Copyright Act. The compensation granted to Anne Black of DKK 1.5 million was historically high, and the Danish design industry was hoping that it would represent a new direction in the meting out of damages in copyright infringement cases involving works of design, that, in the past, have not been considered commensurate with the losses incurred by injured designers. However, the second court, the Eastern High Court of Denmark, lowered the compensation to DKK 300,000. Anne Black was granted permission to appeal to the Supreme Court, and the case will be heard in 2022. 42

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environmental values is undermined by counterfeiters who may jeopardize the health and safety of consumers as well as workers in their pursuit of cheap production.44 Significantly, Anne Black’s design practice is emblematic of the value system that has been underlying Scandinavian design since the early twentieth century. Considerations of human and environmental welfare have been guiding principles that designers have been trained in since the founding of the Klint School of Furniture. The United Nations Sustainable Development Goals are taught in Scandinavian design schools today,45 and before them, sustainability in other guises was part of the training of Scandinavia designers. It could be argued that this is yet another dimension of the inseparability of form and function that the functionalists were proposing in the early twentieth century. The future will show how Scandinavian design invents new ways of adapting the aesthetic and the functional in design.

References Aav M (2003) Marimekko: Fabrics, Fashion, Architecture. Bard Graduate Center for Studies in the Decorative Arts, Design, and Culture, The Design Museum Finland, New York and Helsinki Breunig M (2012) Exhibitable Furniture: Interpreting Images of Design. In: Fallan K (ed) Scandinavian Design: Alternative Histories. Bloomsbury Academic, Oxford Dybdahl L (2016) 101 Danish Design Icons. Hatje Cantz, Karlsruhe Dybdahl L, Engholm I (eds) (2009) Design: Stolen. Gyldendal, Copenhagen EUIPO (European Union Intellectual Property Office) (2019) Qualitative Study on Risks Posed by Counterfeits to Consumers. https://euipo.europa.eu/tunnel-web/secure/webdav/guest/doc ument_library/observatory/documents/reports/2019_Risks_Posed_by_Counterfeits_to_Con sumers_Study/2019_Risks_Posed_by_Counterfeits_to_Consumers_Study.pdf. Accessed 25 Oct 2021 Fallan K (2014) Milanese Mediations: Crafting Scandinavian Design at the Triennali di Milano. J Art Hist 83:1–23 Fiell C, Fiell P, Englund M (2017) Modern Scandinavian Design. Laurence King Publishing, London Gough M (1959) Hans J. Wegner—Poet of Practicality. In House Beautiful July: 65–114. In: Hansen PH (2004) The Construction of a Brand: The Case of Danish Design, 1930–1970. Paper presented at European Business History Association Conference, Barcelona, Sept 2004 Grönstrand S (1988) Alvar and Aino Aalto as Glass Designers. Iittala-Nuutajärvi Oy, Littalan Lasi Guldberg J (2011) Scandinavian Design as Discourse: The Exhibition ‘Design in Scandinavia’ 1954–57. Des Issues 27(2):41–58 Hagströmer D (2001) Swedish Design. Swedish Institute, Stockholm Hansen PH (2018) Danish Modern Furniture, 1930–2016: The Rise, Decline and Re-emergence of a Cultural Market Category. University of Southern Denmark Press, Odense Hegner K (2009) Moderne Traditionalisme. In: Dybdahl L, Engholm I (eds) Design: Stolen. Gyldendal, Copenhagen, pp 49–62 H.L. (1930) Lidt om ’Funktionalisme’. Epoke 1:4–6 Hollingsworth A (2009) Danish Modern. Gibbs Smith, Layton Jensen NF (2015) Den nordiske Industri-, Landbrugs- og Kunstudstilling i København i 1888—en introduktion til arkivet og dets anvendelsesmuligheder. Erhvervshistorisk Årbog 6:52–98 44

See EUIPO (2019). United Nations, Department of Economic and Social Affairs, ‘The 17 Goals’, UN SDG website https://sdgs.un.org. Accessed 25 Oct 2021.

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Jørgensen MG (2013) Influences from Japan in Danish Art and Design, 1870–2010. The Danish Architectural Press, Copenhagen Jørstian T, Nielsen PEM (2007) Tænd! Gyldendal, Copenhagen Loos A (1970) Ornament and Crime. In: Conrads U (ed) Programs and Manifestoes on 20th-Century Architecture. MIT Press, Cambridge, pp 19–24 OECD (Organisation for Economic Co-operation and Development), EUIPO (European Union Intellectual Property Office) (2019) Trends in Trade in Counterfeit and Pirated Good, Illicit Trade. OECD Publishing, Paris Olesen CH (2014) Wegner: Just One Good Chair (trans: Mussari M). Distributed Art Pub Incorporated, New York Opsvik P (2009) Rethinking Sitting. W.W. Norton & Company, New York Petersen TB, Mackinney-Valentin M, Melchior MR (2016) Fashion Thinking. Fash Pract 8:1–9 Salicath B (1961) Sverige—kunstnerrettens Panamastat. Dansk Kunsthåndværk 34:52–53 Schovsbo J, Teilmann-Lock S (2016) We Wanted More Arne Jacobsen But All We Got Was Boxes: Experiences from the Protection of Designs in Scandinavia from 1970 till the Directive. Int Rev Intellect Prop Compet Law 47:418–437 Sommer AL (2015) Kaare Klint. Lindhardt & Ringhof, Copenhagen Sullivan LH (1896) The Tall Office Building Artistically Considered. Lippincott’s Magazine, pp 403–409 Teilmann-Lock S (2014) Danish Design: Legal Restrictions and Creative Responses. Des Cult 6(2):291–302 Teilmann-Lock S (2016) The Myth of Danish Design and the Implicit Claims of Labels. In: LeesMaffei G, Fallan K (eds) Designing Worlds: National Design Histories in an Age of Globalization. Berghahn Books, New York, pp 156–171 Teilmann-Lock S (2019) The PH lamp. In Op den Kamp C, Hunter D (eds) A History of Intellectual Property in 50 Objects. Cambridge University Press, Cambridge, pp 177–184 Weisberg GP, von Bonsdorff AM, Selkokari H (eds) (2016) Japanomania in the Nordic Countries, 1875–1918. Yale University Press, New Haven

Stina Teilmann-Lock is an associate professor at Copenhagen Business School in Denmark. Her scholarly work focuses on design, IP and digital transformations, and she has published widely on these topics. She is a coordinator of the cross-institutional MA programme ‘Strategic Design and Entrepreneurship’.

Chapter 18

Design Protection in the Nordic Countries: The Past, the Present and Maybe the Future Jens Schovsbo

Abstract The Nordic countries adopted similar Designs Acts in the 1970s and these Acts remained in place until the European Union (EU)-harmonized design regime took over in the early 2000s. This chapter first describes the background to the panNordic Acts and then moves on to point out how they generally failed to live up to the expectations of the legislators in providing a tailor made protection system for the ‘modern’ functional (‘Scandinavian’) designs that had emerged from the 1950s. Next, the chapter turns to the current protection in the Nordic countries under the EU regime. It is shown how designers in some of the Nordic countries have more or less abandoned the national system based on the national Design Acts and instead have turned to the EU Design Regulation. It is also argued that the national (Danish) courts are becoming better at following the guidance from the Court of Justice of the European Union and are coming out of the shadows of the pan-Nordic Acts and into the harmonized EU-based design system. The final part uses the Nordic experiences to reflect on the recommendations in the recent Evaluation of EU Legislation on Design Protection.

18.1 Introduction The protection of ‘designs’ is notoriously hard to anchor in the legal system, but the Nordic countries early on identified a need for specific Acts to protect design and designers in and on their own right.1 Thus, for more than 50 years, the Nordic countries (Denmark, Finland, Iceland, Norway and Sweden) have protected industrial designs by similar sui generis Design Acts. In the first part of this period, the J. Schovsbo (B) Faculty of Law, Center for Information and Innovation Law (CIIR), University of Copenhagen, Copenhagen, Denmark e-mail: [email protected] 1

This chapter is based on a paper presented at a seminar on design law in Scandinavia at Waseda University, Tokyo Japan, in January 2020. Thanks to Christoph Rademacher, Faculty of Law, Waseda University and to Tsukasa Aso, Faculty of Design, Kyushu University for arranging the seminar and to the participants.

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_18

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protection was offered by pan-Nordic Design Acts which had been adopted on the basis of a joint Nordic legislative initiative. Those Acts remained in force until the EU Design Directive was implemented in the early 2000s.2 The Directive is binding both for the countries who are members of the EU (including Denmark, Finland and Sweden) and of the European Economic Area (EEA) (including Norway and Iceland).3 The EU Design Regulation only applies to the EU countries.4 In the first part of the chapter, I describe the background to, and evaluate, the panNordic Acts. Apart from the value in itself of such an exercise, the Nordic legal model was part of the inspiration for the so-called ‘Design Approach’ which constitutes the backbone of the EU design system, and for this reason, the ‘Nordic model’ is of more general interest.5 In the second part of the chapter, I describe how designers and courts have adapted to the EU system which nowadays protects designs and designers in the Nordic countries. The EU system is about to be changed. In the last part, I use the Nordic experiences to reflect on the current recommendations.

18.2 The Historical Development of the Protection of Design in the Nordic Countries6 As the pan-Nordic Acts constitute the gravitational point around which the Nordic development has turned, it is necessary to provide a basic understanding of those Acts. In addition, history might hold some lessons of importance even for the evaluation of the present design system.

18.2.1 Before the Pan-Nordic Design Acts In the beginning and middle of the twentieth century, Scandinavian courts and legislators found it hard to fit modern, functionalist designs into the existing system for the protection of product designs. Like in other countries,7 copyright had been developed with a view to protecting printed matter. Even though Denmark had since 1908 2

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, (1998) OJ L 289/28 (EU Design Directive). 3 The EEA Agreement is from 1992 and extends the EU single market to the non-EU countries who are parties to the Agreement. EEA-countries are bound to observe the EU rules which affect the internal market including the EU directives and regulations in the field of intellectual property rights. 4 COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1–24 (EU Design Regulation). 5 For a condensed description of the ways and purposes of the EU ‘Design Approach’, see Kur and Levin (2018) and see also Kur (2020). 6 This section reuses text from Schovsbo (2020a). 7 See Derclaye (2018).

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acknowledged works of applied art as copyright protectable subject matter, Danish courts continued to regard works of applied art with some scepticism and struggled to accept that products which were intended for mass production and designed according to the functionalist idiom (where, as it were, ‘form follows function’) and without the opulent ornaments or decorations of former days could be considered as ‘artistic’.8 The situation was similar in the other Nordic countries. In Sweden, works of applied art were not accepted in copyright until 1926 and then only granted a 10-year term of protection; in Norway, authors of applied art had to wait until 1930, before copyright opened its doors.9 Copyright was not, however, the only avenue for designers who sought intellectual property rights (IPRs) protection for their product designs. Most notably for this period, a specific Design Act had been in place in Denmark since 1905.10 On the face of it, this Act seemed to be able to cover the needs of many of the early designers who found copyright’s doors closed. According to its wording, the scope of the Act was very broad as it allowed for the protection for up to 15 years of ‘the outer appearance’ of industrially produced items which were ‘novel’ (in the patent law sense; that is, ‘global and objective’) and ‘characteristic’ (‘ejendommeligt’ in Danish). Protection was dependent upon registration, but the examination was limited to formalities and ordre public and morality. It was not a requirement that the design should have certain inherent qualities. Instead the concept of what constituted a ‘design’ was neutral and open to the ‘outer appearance’ of all products which satisfied the criteria. However, despite its seemingly broad scope and neutral starting point, the development in case law led to a limitation of the protection to designs that either had ‘an aesthetic effect’ or that were designed according to ‘aesthetic intentions’ (in Danish called smagsmønster after the German expression Geschmackmuster). In other words: products which were shaped primarily to be fit for their purpose and without added elements (ornaments, etc.) would often not be protected under the 1905 Design Act. This clearly limited the effectiveness of the Act to provide protection for designers of the ‘formfollows-function’ designs who even found themselves barred from copyright. The situation in the other Nordic countries was similar.11 To complete the picture, it should be added that at that time, designers would find little relief outside of copyright or design law. At this point in time, unfair competition law (what is now the Marketing Practices Acts) normally did not offer protection of

8

See Chapter 17 by Professor Stina Teilmann-Lock, and for the development in law, see Schovsbo and Rosenmeier (2018) with references, including to three decisions from the Supreme Court reported in Ugeskrift for Retsvæsen (1935), 692, 695 and 699, which denied protection to Mart Stam and Marcel Breuer’s ‘Freischwinger’ chairs and tables. 9 Schovsbo and Rosenmeier (2018). 10 Lov om Mønstre [Design Act], No. 107 of 1 Apr 1905. 11 At the time, Finland did not have a Design Act. The Norwegian Design Act from 1910 provided for protection of up to 15 years after the first registration and even applied a neutral definition of protectable design. In practice, however, that Act was rarely used. In Sweden, the Design Act from 1899 was limited to ornaments within the metal industry, see Schovsbo and Rosenmeier (2018).

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the shape of products against ‘slavish imitation’. Also, trade mark protection was not available to the shape of products themselves.12

18.2.2 The 1970s Pan-Nordic Design Acts 18.2.2.1

Background and Overview of the Acts

The initiative that was to become the pan-Nordic Design Acts commenced in 1960 when the Swedish Government invited the other Nordic governments to take part in a joint legislative committee with a view to developing a system for the protection of designs which could be implemented in all the Nordic countries by similar national Acts. The committee delivered its report in 1966,13 and by 1970 and 1971, all the Nordic countries had uniform, national Design Acts in place.14 This is quite a remarkable achievement but also in tune with the general trend at the time for close Nordic collaboration in the legal field. A similar development took place in the areas of copyright, trade mark and patent law (just to mention examples from IPR). Apart from being ‘up in the air’ at the time, it would seem that the decision to choose design law for such a legal initiative was due to what was perceived as a lack of protection for modern functional design not least via the copyright system. Furthermore, the reason for this perception had to do with the general developments in the Nordic countries in the post-war era, what could be described as the emergence of the welfare state and ‘consumerism’. Also in the 1950s and 1960s, ‘Scandinavian design’ became a major export industry with large markets abroad.15 The Nordic legislators, therefore, knew what they wanted when they set out to reform the Design Acts: Along with growing wealth, consumers will demand that products—industrially made or craft-made—are not only suited for their purpose but have also an attractive outer form. This goes, in particular, for personal articles for everyday use such as apparel and furniture but the demand for good design has also increased considerably in relation to tools, industrial

12

For more, see Schovsbo and Riis (2017). The Design Law Report (1966) leading to the Danish Design Act, see Schovsbo and TeilmannLock (2016). 14 Lov om mønstre [Design Act], No. 218 of 27 May 1970 (Denmark); Mönsterrättslag [Design Act], No. 221/1971 of 12 Mar 1971 (Finland); ov om Mønster [Design Act], No. 33 of 29 May 1970 (Norway) and Mönsterskyddslag [Design Act], 1970: 485 (Sweden). The international context of the Nordic law reform was the inclusion of Article 5quinquies in the Paris Convention in 1958 (Lisbon). According to this rule, ‘Industrial designs shall be protected in all the countries of the Union’. The obligations created by the provision are very vague and do not even require the protection of designs by sui generis legislation. However, it was found at the time that the Swedish Act did not meet the obligations imposed by this Article and Finland did not even have an Act. Therefore, some legal initiatives were thought to be needed. 15 Schovsbo and Teilmann-Lock (2016) and Chapter 17 by Professor Stina Teilmann-Lock. 13

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machines, transport and so forth. In order to meet such demands it seems fair to encourage innovation in craft-based and industrial design.16

Looking more closely at the Acts, and using the Danish Act as an exemplary model, the Design Act of 1970 defined the object of protection (a mønster) as ‘a model for a commodity’s appearance or for an ornament’.17 Significantly, the definition is neutral and unlike the practice which had developed under the 1905 Design Act (see above) there was no requirement of ‘aesthetic intentions’ or similar. Protection was simply available for the appearance of products. In this way, the Act (and this was clearly the intention) allowed for the protection of the appearance of mainly functional designs. The function itself, however, could not be protected by the Design Act (but may be via the Patent Act). In order to be registered, a design should ‘differ essentially’ from what was known prior to the priority date. Novelty was defined in the sense familiar from patent law (objective and global) and included ‘everything made available to the public by depiction, by exhibition, offer for sale, or in any other way’. Patent law also provided the baseline for exclusivity. Thus, unlike in copyright law, the holder of a design right could prevent even third parties who were acting in good faith (without knowledge of the design) from using the design. Design was not protected in ‘the abstract’ but only against the use of a similar design in regard to goods which incorporated the design or goods of a similar kind. Specific limitations were contained for prior use and repair of aircrafts. A narrowly defined compulsory licensing rule was also provided for in cases where a third party had ‘very particular reasons’ and had no knowledge of the application and, moreover, had not reasonably been able to acquire such knowledge. The rule was never applied in case law. As can be seen, the Nordic Design Acts were based on a ‘patent approach’.18 Protection could only be obtained on the basis of a written application. All applications were subjected to a patent-style pre-examination of all conditions including novelty. In the examination of an application for registration of a design, the registration authority (the Nordic national Patent and Trade Mark Offices (PTO)) would examine whether the conditions for registration of the design were fulfilled, including the requirements of novelty and ‘essential difference’. In principle, the search was to include all information available to the PTO. However, in practice it was limited to design registrations in force, applications and previous registrations which had been cancelled within the past five years. 16

The Design Law Report (1966), p. 34, translation by Schovsbo and Teilmann-Lock (2016), p. 420. English and French language versions are available on the World Intellectual Property Organization (WIPO) website. The English version is available at Denmark—The Danish Designs Act (Act No. 218 of 27 May 1970). Available via WIPO. The Danish Designs Act (Act No. 218 of May 27, 1970). https://www.wipo.int/wipolex/en/details.jsp?id=1121. Accessed 25 Oct 2021. 18 Traditionally, design protection has been based either on a ‘patent’ (registration) or a ‘copyright’ (no registration) approach. Both of these approaches can be criticized for failing to meet the needs of ‘designs’ and ‘designers’. It was to get away from the deadlock created by this traditional choice that the framers of the EU design system developed a ‘Design Approach’ as a ‘third way’, see Kur and Levin (2018). 17

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If the application conformed to the formal requirements and no objection to the registration was found, the application was published in order to give the public an opportunity to file any opposition. If no opposition was filed within two months, the design could be registered for up to 15 years.

18.2.2.2

Evaluation of the Acts

Looking back, it would seem fair to say that the 1970s Acts did not deliver on the expectations of the legislators. Firstly and perhaps most importantly, and as I have pointed out elsewhere with Stina Teilmann-Lock, at least in Denmark, the designers for whom the system had been developed simply rejected it.19 Hardly any of the important designers of the time filed for design registration of any of their designs. Instead, they relied on copyright which expanded its reach at the time and most likely was also perceived as representing a better, more ‘worthy’ (and even free!) kind of protection as it implicitly recognized its recipients—the designers—as being on par with ‘other artists’. Secondly and more broadly, the patent approach was criticized for being too cumbersome, and since the PTOs were in practice unable to guarantee the validity of design registrations, the legal certainty which constituted the core benefit of the registration process evaporated, and only the costs remained. The inner weaknesses and flaws, furthermore, were accentuated by the rise of copyright (and unfair competition law) which basically absorbed at least the most valuable of the designs which the Design Acts had been put in place to cater for.

18.3 The Present Protection of Designs Denmark had joined (what became) the EU by 1973 and Finland and Sweden by 1995. Norway is a member of the EEA. As all countries are thus bound by the EU Treaties and the EU IPR acquis, the drivers of legal development have shifted from the national and Nordic arenas to the EU.

18.3.1 The New EU-Harmonized Design Acts20 The EU Design Directive was implemented in Denmark and Sweden in 2001, in Finland in 2002 and in Norway in 2003.21 This ended the reign of the pan-Nordic 19

Schovsbo and Teilmann-Lock (2016) and see also Chapter 17 by Professor Stina Teilmann-Lock. This section reuses text from Schovsbo (2020a). 21 Bekendtgørelse af designloven [Consolidated Designs Act] Consolidated Act No. 89 of 29 Jan 2019 (Denmark)—an English version is available at Danish Patent and Trademark Office (DKPTO) 20

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Design Acts. For the Nordic EU countries (Denmark, Finland and Sweden), the EU Design Regulation and its combination of a registered Community design (RCD) right and an EU unregistered Community design (UCD) right offer an attractive alternative to the national design system (see below). The present Nordic Design Acts are based closely on the EU Design Directive. Using once more the Danish Design Act as illustration, its s. 1 provides that the creator of a design (the designer), or their successor in title, may in accordance with the Act by registration (and by registration only) obtain an exclusive right to the design (‘design right’). The basic concepts (‘design’, ‘product’ and ‘complex product’) are defined (in ss 2 and 3) in accordance with the EU Design Directive as are the conditions for protection (novelty and individual character). For component parts of complex products, the special conditions (‘visibility during normal use’) have been incorporated. No ‘repair clause’ applies but protection for ‘must match’ parts (notably ‘spare parts’ of automobiles such as fenders) is limited to a maximum of 15 years (the maximum period under the 1970 Act). Novelty is global and objective but with an exception for ‘remote’ designs and a 12-month grace period. Design protection is not available for designs which are contrary to ordre public or morality or which make use of prior rights such as another person’s trade mark, work protected by copyright or earlier design. That design protection may not be obtained in respect of features which are solely dictated by the technical function of the product or ‘must fit’ aspects is stated in s. 8. Section 9 contains the rule of exclusivity, and like in the EU Design Regulation (and for RCDs), protection is very broad: ‘Nobody may exploit the design without the consent of the holder of the design right’, for example, by ‘the making, offering, putting on the market, importing, exporting or use of a product’ which does not produce on the informed user a different overall impression.22 Exclusivity is patent style and covers also ‘accidental copying’ done by third parties without knowledge of the design.23 A narrow list of limitations is found in s. 10, including for acts done for private or experimental purposes or for making citations. For Denmark, applications for design protection must be filed with the Danish Patent and Trademark Office (DKPTO). The registration fee is DKK 1,200 (approximately e150). The Office makes sure that the application relates to a ‘design’ in the Act’s sense and that the requirement of ordre public and morality has not been violated. If the Office finds that these ‘formal’ conditions have been fulfilled, the The Consolidated Designs Act. http://old2.dkpto.org/media/23039373/the%20consolidate%20desi gns%20act%202019.pdf. Accessed 25 Oct 2021; Mönsterskyddslag [Design Protection Act] (1970: 485) as amended up to Act (2020: 542) (Sweden); Mallioikeuslaki [Registered Designs Act], Act No. 221 of 12 Mar 1971, as amended up to Act No. 718 of 25 Aug 2016 (Finland); LOV-200303-14-15: Lov om beskyttelse av design (designloven) [Designs Act, Act No. 15 of 14 Mar 2003, relating to Design Protection] consolidated version of 2019 (Norway). The Acts may be found at WIPO, WIPO Lex Database. https://wipolex.wipo.int/en/main/legislation. Accessed 25 Oct 2021 (where machine tools for translation are also available). 22 Emphasis added. 23 This is similar to the protection for CRDs under the EU Design Regulation. Unregistered EU designs protection is only provided against ‘copying’, see EU Design Regulation, Art. 19.

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design is registered and made available to the public. The Office does not check for novelty and individual character; in other words, no ‘substantive’ examination is carried out. Third parties may at any point in time, however, challenge registrations by making a request to the Office for a partial or entire cancellation of a registration on the basis of lack of novelty because of ‘earlier designs’ or, for example, a prior copyright (the fee is DKK 3,000 (approximately e400)). Registrations may also be challenged before a court even as a counterclaim in an infringement suit (normally before the Maritime and Commercial Court in first instance). Part 7 of the Act contains provisions on liability to punishment and liability for damages. The measures reflect those found in the EU Directive on Enforcement of IPRs.24 Compensation (which is the most practical enforcement mechanism) includes reasonable compensation to the injured party for the exploitation and damages for the further injury which the infringement has caused (see s. 37). The maximum protection period is 25 years, that is, five periods of five years (for ‘spare parts’, the maximum is 15 years, see above). Apart from the registration of designs under the Design Act, the DKPTO also offers an informal system called DesDoc® . The fee is very low (approximately e75) but merely records the design (by way of a description and a picture/drawing) and the time of the registration. This in turn may be used to support claims for protection of the design, for example, as a UCD.25 The rights under the Design Act (like under the EU Design Regulation) arise with the ‘designer’ who has developed the design. This is by definition a physical person (not a legal person, such as a company) and all rights vest with the designer, unless they have been assigned by way of contract.26 This principle applies also to designs that have been produced as part of an employment relationship. The Danish Design Act contains no specific rules on ‘employee’ designs’ (and Art. 14(3) of the EU Design Regulation does not apply by extension, see below). Therefore, any transfer of a design right from a designer to their employer must be based on contract. Often, the employment contract stipulates a transfer of the design rights to the employer. However, even in the absence of an explicit contract to that effect, Danish courts normally find design rights to have been transferred to the employer by an implied license to the extent that this is ‘usual’ in the light of the employment and falls within the scope of the normal use of the employer.27 For designs which are also protected under copyright law as works of art, the designer could rely even on the copyright

24

Corrigendum to Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights, OJ L 157, 30.4.2004, OJ L 195, 2.6.2004, pp. 16–25. 25 Information in Danish and recorded designs can be found at DesDoc®. https://desdoc.dkpto.dk/. Accessed 25 Oct 2021. 26 This was held explicitly by the Court of Justice of the European Union in C-32/08, Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo SL and Acierta Product & Position SA, ECLI:EU:C:2009:418. The same principles apply with regard to the Danish Design Act. 27 See, e.g., Schovsbo and Svendsen (2013), pp. 93–96.

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protection vis-à-vis their employer.28 However, even here a transfer of copyright law would normally be deemed to follow implicitly from the employment relationship.29 Article 14(3) of the EU Design Regulation contains an explicit ‘work for hire’ rule. For Community designs which are developed by an employee in the execution of their duties or following instructions given by an employer, the right to the design shall vest in the employer. The rule applies ‘unless otherwise agreed or specified under national law’. Since Danish law has not provided for anything in this regard, Art. 14(3) covers designs by designers employed in Denmark. As this constitutes the vast majority of protected designs, cf. below, Art. 14(3) in fact constitutes the ‘main rule’ in Danish design law. The effects of Art. 14(3) are, however, arguably limited. Firstly, for designs which are also protected by copyright law, it follows from Recital 32 of the EU Design Regulation that the individual EU states are free to apply the rules and principles of national copyright law. Therefore, designers (as ‘authors’) may rely on copyright to control the employer’s use of their design. Secondly, as lex specialis, the principle in Art. 14(3) does not apply to designs which are protected solely by the Design Act. Lastly, the Court of Justice of the European Union (CJEU) ruled in Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo SL and Acierta Product & Position SA that Art. 14(3) should be construed narrowly and only applies to traditional employment relationships where the designer works under the instruction of the employer.30 Therefore, the principle espoused by the Article does not affect the rights to designs made by freelancers. In those cases, the general principles of contract law (and copyright, if the design qualifies as an original work of art) apply.

18.3.2 Design Protection ‘In Action’ To assess the effects of the current design system, I focus on two parameters: protection strategies and practice from the courts and the PTOs. First, I provide a brief account of the legal context of design protection in the Nordic countries.31

18.3.2.1

Design Law In Its Legal Context

It is an important point to keep in mind when assessing the effects of design law that the Nordic countries (like other legal systems) offer protection of ‘designs’ 28

This is so because the Nordic countries follow the principle of cumulation, see Schovsbo and Rosenmeier (2018). 29 Most likely, courts would find the transfer of copyright to be more narrow than the transfer for design rights. Therefore, it matters even in employment situations whether or not the product is protected both by design and copyright law. 30 C-32/08, Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo SL and Acierta Product & Position SA, ECLI:EU:C:2009:418, para. 50. 31 For more detail, see: Schovsbo (2020a).

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even outside of the Design Acts and EU Design Regulation such as in copyright law, unfair competition law (the protection against ‘slavish imitation’ found in the national Marketing Practices Acts) and at times even trade mark law (shape or threedimensional trade marks).32 For copyright, the CJEU has ruled that ‘originality’ constitutes the sole criterion for copyright protection for all types of works within the EU.33 Following these rulings, courts in the EU countries, therefore, have to grant copyright protection even to works of applied art which are as follows: 1. 2. 3. 4.

not determined by technical constraints or by following rules; the result of the author’s free and creative choices; stamped with the author’s ‘personal touch’; and expressed in a manner which makes it identifiable with sufficient precision and objectivity.34

In one of the first decisions following this development, the Danish Supreme Court relied on Cofemel and denied copyright in fancy rubber boots.35 Even though the Court acknowledged that the boots had some degree of aesthetic appeal, it also found that the designer had merely combined well know elements and was inspired by older leather boots. Therefore, the boots were not ‘original’ in a copyright sense. This decision and the Court’s reasoning is good news for those who (like I) have feared that Cofemel would allow (maybe even encourage) national courts to drive copyright all the way across design law’s territory. The Danish decision clearly does not do that. At the same time, however, as the Supreme Court kicked the boots out of copyright, it also made it clear that fashion items as such may be protected in copyright according to the same principles as other types of works. This willingness to accept fashion items in copyright on the basis of the standard requirements represents a break with Danish traditions as Danish courts have been reluctant to accept clothing, accessories and other fashion items as original works of art. By the same token, even though the Supreme Court did not find the actual products (rubber boots) to qualify for copyright, the judgment may in fact have opened to door to copyright protection for the very type of products which were intended to constitute a central part of design law’s ‘special area’: fashion items.36 The effect of the judgment—and indirectly of Cofemel—in Danish law could, therefore, be an expansion of the overlap between copyright and design law. 32

Schovsbo and Riis (2017) and see also Schovsbo (2020a). In particular C-5/08, Infopaq International A/S v Danske Dagblades Forening, ECLI:EU:C:2009:465; C-145/10, Eva-Maria Painer v Standard Verlags GmbH and Others, ECLI:EU:C:2011:798; C-310/17, Levola Hengelo BV v Smilde Foods BV, ECLI:EU:C:2018:899; C-683/17, Cofemel—Sociedade de Vestuário SA v G-Star Raw CV, ECLI:EU:C:2019:721; and C-833/18, SI and Brompton Bicycle Ltd v Chedech / Get2Get, ECLI:EU:C:2020:461. 34 These points are deduced from the case law cited in the previous note. 35 The Danish judgment is reported in Ugeskrift for Retsvæsen (2020), p. 2817. C-683/17, Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, ECLI:EU:C:2019:721. 36 Schovsbo (2020c). 33

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For the Nordic countries, the Marketing Practices Acts provide for additional protection too. Unlike copyright, these Acts are largely unharmonized when it comes to the relationship between commercial parties. Also, the Acts vary between the Nordic countries. In Norway and Sweden, protection of the shape of products is limited by law to instances where the imitation implies a risk of confusion.37 In Denmark, however, the right to oppose imitation is based on the general principle of ‘good marketing practices’, and here, courts have been very generous in granting protection against imitation even without any clear risk of confusion.38 This, in turn, has meant that, for Denmark in particular, the protection against ‘slavish imitation’ is being applied rather generously by the courts. As this protection is not limited in time but exists as long as the product has ‘commercial value’, protection may be had even after the expiration of any design rights in the product. This is particularly important to the UCD where design protection is limited to just three years from the date on which the design was first made available to the public within the EU (EU Design Regulation, Art. 11(1)). Because of these developments, in practice, copyright and unfair competition law offer very attractive supplementary—even alternative—protection to design law. As will be demonstrated in the following, designers rely on the full arsenal of protection offered to them.

18.3.2.2

Protection Strategies

Nordic designers use their national design system less and less. In recent years, the number of direct applications (that is, excluding international applications via the Hague system) to the DKPTO is down to around 100 (201 in 2009, and 113 in 2019). The same trend is observable for Finland (213 in 2009, and 129 in 2019) and Sweden (678 in 2009, and 303 in 2019). For the non-EU country Norway, the numbers are higher, but the trend is the same (517 in 2010, and 391 in 2019).39 For Denmark, these figures are manifestly below the level of 1,500 applications per year which was estimated at the time of the adoption of the new Design Act (and which corresponded more or less with the number of applications under the 1970 Act). The low number of applications filed at the PTOs does not reflect a lack of interest among Nordic designers in design protection as such. In 2020, Danish applicants applied for 1,904 RCDs. For Finland the number was 1,058 and for Sweden 1,613.40 As can be seen, in practice EU registered designs have more or less overtaken the role of the national designs in the Nordic EU countries. 37

Schovsbo(2020a). Schovsbo(2020a). 39 See World Intellectual Property Organization. WIPO Statistics Data Center. https://www3.wipo. int/ipstats/. Accessed 25 Oct 2021. 40 For all countries, see the statistics at European Union Intellectual Property Office (EUIPO). WIPO Statistics for Community Designs. https://euipo.europa.eu/tunnel-web/secure/webdav/ guest/document_library/contentPdfs/about_euipo/the_office/statistics-of-community-designs_en. pdf. Accessed 25 Oct 2021. 38

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The shift from national to EU applications is hardly surprising given that the cost of a registration with the European Union Intellectual Property Office (EUIPO) is just e230. In comparison, the basic fee for a Danish registration is e150. A registration with the EUIPO covers not only Denmark (and her 5.8 million inhabitants) but also all of the other EU countries (with its approximately 450 million inhabitants, post Brexit).41 For this reason, it is really no surprise that so few Nordic applications are filed. Reasons to register nationally nonetheless vary. For Small and Medium Sized Enterprises (SMEs), ignorance of the EU system and the comfort and safety of the national office have been suggested.42 For Denmark specifically, a need to obtain protection for Greenland points to the Danish Act only.43 Finally, several commentators mention how the lack of a repair clause or similar in the Nordic Design Acts makes it attractive for car manufacturers to register spare parts in the Nordic countries.44

18.3.2.3

Case Law

Turning to judicial courts, Estelle Derclaye has recorded that between 28 October 2001 and 31 August 2017 the following number of cases involving national or EU designs had been heard in the Nordic EU countries: Denmark: 35; Finland: 24; and Sweden: 23.45 For Denmark, the majority of the 35 court cases (32 court cases) were based on the EU Design Regulation and not the Design Act. Also, in most of the cases, the plaintiff relied on design protection in combination with other types of protection systems. According to a survey, out of 32 Danish court cases (first, second and third level) where the claimant used design rights, there were 14 cases in which copyright was used in addition to design rights, 23 in which ‘slavish imitation’ was also relied on and two where risk of confusion was argued in addition to design protection.46 Assuming that litigation is normally reserved for the most ‘valuable’ designs, the figures clearly suggest that RCDs have outnumbered national protection not just in terms of quantity (as it was documented just above) but even in terms of quality; designers do not register their most valuable designs under the Design Act. This should not come as a surprise. Moreover, litigants in the design cases often rely on Danish copyright and unfair competition law protection in addition to the EU Design 41

For a ‘full comparison’ on the costs of protection in Denmark and EUIPO, see Løje (2020), p. 316 f. 42 Bengtson (2020), p. 311 (on Norway) and Kristensen (2020) (on Denmark). 43 Greenland is a part of the Kingdom of Denmark (and is covered by the Danish Design Act by Royal Decree No. 656 of 11 June 2010) but not a member of the EU. 44 On spare parts, for Denmark, see Løje (2020); for Finland, see Alhonnoro (2020), p. 305; and for Sweden, see Harnesk (2020), p. 300. 45 Derclaye (2021), p. 59. For more information based on the same dataset, see Church et al (2019) and Church et al (2021). 46 Figures generously provided by Professor Estelle Derclaye from the dataset described in Church et al (2019) and Church et al (2021).

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Regulation. In this way, the exclusive role of the Design Act has been completely marginalized. Turning next to the actual decisions, an interesting question is whether Danish (Nordic) courts have been able to move out of the shadows of the long history of the pan-Nordic Design Acts and to apply the rules of the Acts in a way which acknowledges fully the EU harmonization. Looking first at the object of design protection and the definition of a ‘design’, it was explained above how Nordic design law traditionally adopted a more narrow view on the types of objects which could be protected as designs. According to the pan-Nordic Acts, protection was thus limited to ‘products’. Even though case law had recognized, for example, small (and moveable) buildings as protectable products, the pan-Nordic Acts did not recognize, for example, parts of products, typefaces or interior design as objects which could be protected by the Design Acts.47 This has changed and designs, for example, of hotel rooms, restaurants or cabins have been registered.48 In a similar vein, Danish courts also recognize that protection under the Design Act is ‘abstract’ and like in copyright the holder of a design may invoke their right against, for example, the use of a photograph (two dimensional) of a design protected product (three dimensional).49 This is unlike under the pan-Nordic Acts where protection was only given in regard to the actual design/product configuration, see above. Moreover, and also unlike under the previous pan-Nordic Acts, protection is no longer limited to the type of goods for which the design was registered (or similar) but may be invoked in all instances where the use of the design produces the same overall impression on the informed user.50 Furthermore, Danish courts are in line with the guidelines issued by the CJEU in Karen Millen, that the person who challenges the validity of a previous (even unregistered) design bears the ‘burden of proof’ and should present concrete earlier designs.51 In short: Danish courts have correctly assumed the basic starting points of the EU design system.

47

Schovsbo and Svendsen (2013), pp. 104 ff. See generally Schovsbo et al (2021), p. 419. ‘Concepts’, however, have been rejected. The Maritime and Commercial Court thus found that the combination of a dispenser for soap, a brush for doing dishes and a holder for the two items could not be protected as such. Instead, protection had to be claimed for the individual items, see V-34-10, Maritime and Commercial Court, 12 Feb 2012. 49 See the judgment from the Maritime and Commercial Court reported in Ugeskrift for Retsvæsen (2018), p. 2595. The abstract nature of design protection follows from C-24/16 and 25/16, Nintendo Co. Ltd v BigBen Interactive GmbH og BigBen Interactive SA, ECLI:EU:C:2017:724. A third party’s use of a design cannot be prevented if the use is covered by an exception such as the right to make a citation under the EU Design Directive, Art. 13(1)(c). See also Kur (2020), p. 241 (pointing out that the ‘nature’ of the protection (that is, abstract or actual) was not dealt with clearly in the travaux). 50 Judgment from the Maritime and Commercial Court reported in Ugeskrift for Retsvæsen (2018), p. 2595 and see also Schovsbo et al (2021), pp. 442 f. 51 C-345/17, Karen Millen Fashions Ltd v Dunnes Stores og Dunnes Stores (Limerick) Ltd, ECLI:EU:C:2014:2013. 48

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Turning next to infringement cases, Danish courts have found it harder to adjust to the EU system. Correctly, Danish courts base their assessment on the design registration (not the product itself),52 but when it comes to deciding on the scope of protection, for a time, courts stuck to the pre-EU harmonization principles. Most notably, Danish courts did not focus much on the identification of the ‘informed user’ but instead engaged in a broad overall assessment.53 However, this might well be changing. In recent decisions, the Maritime and Commercial Court has applied the principles developed by the EU Courts and the EUIPO and engaged in a full-fledged (and arguably completely correct) assessment based on the ‘informed user’ standard.54 As the Maritime and Commercial Court is the specialized court in first instance for IPR matters in Denmark (and the Community design court in first instance) the apparent change in behaviour of this Court is going to have major effects on the case law in design matters in Denmark and is bringing case law in line with the CJEU. For products which have been designed primarily or exclusively with a view to performing a specific function, protection is excluded where the form has been ‘dictated by the function’. In Doceram, the CJEU adopted the so-called causality test. Following this test, design protection is not possible for the shape of products or parts thereof when the technical function has been the only factor which determined those features.55 This decision implies a risk that courts might overextend the exclusion and reject functional products such as packaging because of a lack of ‘quality’.56 Such an application would trespass on the statement in Recital 14 of the EU Design Directive that the exclusion of design protection to features dictated solely by a technical function does not entail that a design must have an ‘aesthetic quality’. For Danish design law, in particular, an over-exclusion of ‘non-aesthetic designs’ would also raise the spectre of the ‘smagsmønster’ regime which had developed on the basis of the 1905 Design Act. As explained above, it was the very purpose of the neutral starting point of the Nordic Acts to get away from such as starting point. So far, there is nothing to suggest such dangers in Danish case law. Perhaps on the contrary. Recently, the Maritime and Commercial Court relied on Doceram in an infringement case and found that the scope of protection for functional products, which have left 52

See V-0004-12, Maritime and Commercial Court, 23 Apr 2013. See Schovsbo et al (2021), pp. 425 ff. 54 See BS-9628/2020-SHR, Maritime and Commercial Court, 30 Mar 2021. The case concerned a smoke alarm, and the ‘informed’ user was defined as: ‘someone who without being a designer or technical expert is acquainted with various designs in the relevant sector, has a certain level of knowledge about the parts of which such products consist and on that basis pays a certain amount of attention to the various products or designs’ (translation by author). This definition seems to compare well with the case law from the EU Courts and the EUIPO, for an overview of the latter, see Stone (2016), para. 12.17 ff. And see also Levin (2018), pp. 56 ff. (focusing on the decisions from the EU Courts). From Danish case law see also BS-28148/2019-SHR, Maritime and Commercial Court, 14 June 2021. Here, the Maritime and Commercial Court found that since the parties had not provided any information as to the definition of the informed user for the product in question, the Court was unable to decide on the (in)validity of the design which was, therefore, upheld. On similar grounds, the Court could not rule on infringement. 55 C-395/16, DOCERAM GmbH v CeramTec GmbH, ECLI:EU:C:2018:172, para. 31. 56 As suggested by Schovsbo and Dinwoodie (2018), pp. 151 ff. and 170. 53

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limited freedom for the designer, should be slim.57 In a later decision, the Court went even further and stated that for highly functional designs the protection is deemed to be narrow.58 By channelling the legal assessment towards the stage of infringement and scope (ex post) rather than use it to deny protection (ex ante), Danish courts have found a way to a flexible assessment and at the same time avoided limiting access to protection for functional designs as such.59 For the repair clause in Art. 110 of the EU Design Regulation, the Danish Supreme Court found in 2015 that this rule was limited to ‘must match’ parts (such as body parts of cars (fenders, etc.) whose shape depends on the appearance of the car) and did not apply to parts such as wheel trims.60 For this reason, independent producers of spare parts for cars could not rely on the repair clause to manufacture wheel trims which were protected as RCDs. This reading of the Article was rejected by the CJEU in Acacia.61 Unlike the approach of the Danish Supreme Court, the decisive question according to the CJEU does not relate to the abstract nature of the part (whether its shape depends on the design of the main product). Instead, it relates to the decision of the producer of the main product to include a specific part (such as wheel trims) in a particular car. Therefore, independent producers of spare parts are in fact able to produce wheel trims but only to replace such wheel trims which have originally been included by the producer. Manufacture for other purposes, such as customizing cars which did not come with those trims, is not allowed. Even though Acacia leaves very limited space for the repair clause, it did ‘overrule’ the interpretation of the Danish Supreme Court. Be that as it may, it has been pointed out that it was noticeable that the Supreme Court did not refer a question to the CJEU on the interpretation of Art. 110.62 According to Art. 267(3) of the Treaty on the Functioning of the European Union (TFEU),63 courts in the final instance (such as the Danish Supreme Court) are obliged to do so. The only reasonable explanation for not involving the CJEU, would be that the Supreme Court relied on the doctrine of acte clair. According to this principle, courts (even at last instance) do not have to refer a question to the CJEU if ‘the law is clear’.64 It is remarkable that the Danish Supreme Court apparently did not feel itself to be in ‘enough doubt’ about the interpretation of Art. 110 to refer the issue to the CJEU. Not only is the Article 57

BS-16630/2020-SHR, Maritime and Commercial Court, 24 Aug 2020. BS-28148/2019-SHR, Maritime and Commercial, 14 June 2021. 59 Schovsbo and Dinwoodie (2018), p. 170. 60 Judgment of the Supreme Court in Ugeskrift for Retsvæsen (2015), p. 2011. 61 C-397/16, Acacia Srl v Pneusgarda Srl and Audi AG and Acacia Srl and Rolando D’Amato v Dr. Ing. h.c.F. Porsche AG, ECLI:EU:C:2017:992. 62 Fenger and Broberg (2020). 63 Treaty on the Functioning of the European Union, 13 Dec 2007, Official Journal C 326, 26/ 10/ 2012 P. 0001–0390. 64 Defining the limits of this principle is controversial, compare C-283/81, Srl CILFIT and Lanificio di Gavardo SpA v Ministry of Health, ECLI:EU:C:1982:335 (a very narrow reading) with C-160/14, João Filipe Ferreira da Silva e Brito m.fl. v Estado português, ECLI:EU:C:2015:565, para. 42 (which gives more leeway to national courts). 58

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very complicated and the subject of differing opinions among courts in the EU,65 but as was demonstrated by the CJEU’s judgment, the Danish Supreme Court erred on the interpretation of the rule. The case probably illustrates a more general reluctance on Danish courts (perhaps, in particular, the Supreme Court) to involve the CJEU. The failure of the Supreme Court to seemingly even grasp that the law was not (at all) clear in this regard might also indicate a more fundamental lack of appreciation of Danish courts of the degree to which the design system has become EU-harmonized. As is evidenced by the recent judgments from the Maritime and Commercial Court on the ‘informed user’ discussed above, this might be about to change.

18.4 Final Remarks and Perspectives in Light of the EU Evaluation As has been demonstrated above, Nordic designers use their national design systems less and less. For the Nordic EU countries in particular, the EU protection system has more or less taken over. For Denmark, national design protection is virtually non-existent. Furthermore, even when Danish designers go to court they rely on a combination of legal tools found in design law (the EU Design Regulation) and in copyright and unfair competition law. Finally, Danish courts (and practitioners) have found it difficult to adapt to the EU system and its specific normative system such as the informed user. This, however, seems to be changing. With these observations in mind, we now turn to the coming ‘upgrade’ of the EU design system.66 An important background document to the coming changes to the EU Design Regulation and EU Design Directive is the EU Commission’s recent Evaluation of EU Legislation on Design Protection (Evaluation).67 It is among the Evaluation’s conclusions that the EU legislation on design protection is working well and is still largely fit for purpose. The basic premises and principles underlying the legislation are found to ‘have stood the test of time’.68 More specifically, the Evaluation finds that the objectives of EU legislation on design protection ‘continue to be highly relevant in light of the substantial contribution made by design-intensive industries to the EU economy’.69 In terms of effectiveness, the Evaluation finds that EU design protection has largely been successful ‘in building a single market for products that embody designs’.70 As far as efficiency goes, even though it has not been possible to fully quantify the costs and benefits of EU legislation on design protection, it is still concluded that ‘there is no doubt that the costs involved in implementing both the 65

See Stone (2016), paras 20.29 ff. European Commission (2020a). 67 European Commission (2020b). For background, see in particular, European Commission (2016). 68 European Commission (2020b), p. 72. 69 European Commission (2020b), p. 72 f. 70 European Commission (2020b), p. 73. 66

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Directive and the Regulation are outweighed by the benefits they have brought’.71 Furthermore, the Directive and Regulation are found to be generally coherent with each other, even though the lack of harmonization of procedural rules under the Directive has resulted in some inconsistencies between the Member States and in relation to the Regulation.72 In terms of added value, it is concluded that most likely without the Directive and the Regulation the national laws on design protection would have remained widely disparate.73 Of course, the analyses in the present chapter do not allow for any Nordic ‘response’ or deep reflection on the conclusions in the study. However, a few observations seem to be justified in two respects: (1) the future of the national designs systems alongside the EU Design Regulation, and (2) the problem of overlapping rights.

18.4.1 The Future of the National Designs Systems Alongside the EU Design Regulation One of the basic premises and principles underlying the EU design legislation which the Evaluation has found has stood the test of time is the existence of two parallel systems for the protection of registered designs: a national track and the EU one based on the EU Design Regulation and RCDs. The dual track system found strong support in the Legal Review on Industrial Design Protection in Europe where it was remarked that: There are cogent and economic reasons for retaining the national registration regime. It is recommended that the current parallel systems of registration, via national offices and the EUIPO be retained, but that cooperation be strengthened in relation to areas which have caused divergences.74

The acceptance without any reflection of the dual track system is surprising considering the traveaux leading to the adoption of the EU Design Regulation and the EU Design Directive. As I have pointed out elsewhere, it was projected in the Green Paper (that proposed the EU design system) that once an effective EU system with a combination of registered and unregistered design rights and cumulation with copyright was in place, the national design systems may ‘slowly fade out’.75 It was also stated that such a development would lead to ‘a general simplification—fitting well in the framework of the completion of the Internal Market—of the European design protection map’. It was concluded, however, that the time was not ripe for any such

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European Commission (2020b), p. 73. European Commission (2020b), p. 73. 73 European Commission (2020b), p. 73. 74 European Commission (2016), p. 12 and see also, European Commission (2020b), p. 50 ff. 75 Commission of the European Communities (1991), p. 132 f. 72

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initiative and that no efforts should be displayed ‘in the near future’ to abolish existing national protection systems.76 Based on the experiences with the dual systems, the time seems to have come to revisit this conclusion for the Nordic EU countries. The collapse of national registration in the Nordic countries (Denmark in particular) clearly indicates that for these countries the existence of ‘cogent and economic reasons’ to uphold national systems cannot simply be taken for granted anymore (if indeed they ever could). On the contrary, for the Nordic countries (except Norway), there is arguably a need to reconsider the viability of the national registration systems alongside the EU Design Regulation with an open mind.77 There might be rational reasons to uphold the national design systems in the Nordic countries despite the dismal numbers. For example, and as indicated above, some designers (in particular SMEs) may be reluctant to apply for EU protection, and therefore, a lack of national protection may leave valuable designs unprotected.78 Also, broader and ‘softer’ reasons could speak in favour of maintaining national protection. If national Design Acts disappear, the competencies and experiences in the PTOs would vanish too. Moreover, the national Acts may provide the PTOs with an exposure to SMEs that an EU protection would not, and this could make it easier for the national PTOs to advise national applicants, which may include advice to file an application with the EUIPO. Arguably, these are all good and relevant arguments. To assess their overall value, however, they need to be qualified. It is thus not just local SMEs which use the national design systems. For Denmark, Finland and Sweden, it has been reported that applications are also filed by multinational companies seeking to reserve aftermarkets in spare parts for themselves. To what extent should national systems be upheld for such purposes? And in the same vein, what if a repair clause (or similar) becomes part of the Design Directive,79 and spare parts disappear leading to a further decline in the number of national design applications? Is there no minimum level for the number of applications? This chapter does not allow for conclusions to be drawn. However, in light of the development in users’ behaviour, the existence of the national design Acts in the Nordic EU countries should no longer be taken for granted. If all of the benefits of design protection could be achieved by the EU design system alone, additional national systems would be superfluous. Not only that, they could even be harmful to society as there would be no benefits to offset the (albeit limited) costs which are necessarily associated with running a national registration system. To uphold national protection systems for designs in those circumstances would completely lack 76

Commission of the European Communities (1991), p. 134. The following reuses text from Schovsbo (2020a). 78 Indeed, the importance of this aspect is highlighted in European Commission (2016), p. 53. From Denmark, see also Kristensen (2020), p. 247 (that the inexperienced designer from Denmark might be reluctant to seek protection in ‘far-away’ Alicante or Geneva) and in the same vein Alhonnoro (2020), p. 307 (on Finland) and Bengtson (2020) (on Norway). 79 As is suggested in European Commission (2016), p. 15 and also clearly hinted at in European Commission (2020b), p. 68. 77

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evidence and become irrational. The element of irrationality could in turn challenge the legitimacy of design law in the first place, but in the longer run, even of IPRs. For this reason, it should be made clear in the coming review that EU states remain free to decide whether or not to operate national designs Acts alongside the EU Design Regulation.80

18.4.2 The Problem of Overlapping Rights The framers of the EU design system did little to carve out a place for design rights vis-à-vis copyright law and unfair competition law. Instead, they expected the combination of the EU registered and unregistered design system to be so attractive that designers would not look elsewhere.81 However, as has been shown above, designers in the Nordic countries continue to rely on copyright and unfair competition law both in combination with design law and instead of design law. Such an amalgamation of protection may upset some of design law’s in-built balancing mechanisms. By way of example, if spare parts are protected also in copyright or unfair competition law, then the limitations in design for such products become eroded. In a similar vein, if designers can rely on alternative protection to claim exclusivity in their designs after the lapse of the three-year term of protection for unregistered design, then the twostage protection model of the Design Approach, with short-term protection based on use of the design and a longer protection based on registration, is being compromised. As a result, designers who decided not to register, and whose designs should therefore become part of the public domain after the short term, may end up being over compensated. Finally, since protection against imitation based on unfair competition law remains largely unharmonized, the result is divergent national practices. As seen in the light of the Evaluation, a high degree of supplementary and even alternative protection of designs by, in part, unharmonized laws hampers the effectiveness of the EU design protection system insofar as it erodes part of the basis for the ‘single market’ for products that embody designs. Also, the degree to which Nordic designers rely on additional protection tools makes it even harder to assess the efficiency of the design protection scheme. To measure the effects of protecting designs, one needs to include also the costs, for example, of the additional protection via the Danish Marketing Practices Act after the lapse of the term of protection for an unregistered design. If one does not know the ‘real’ costs, how may one conclude that the costs are ‘outweighed by the benefits they have brought’ or not? Lastly, the current system of overlapping national rights clearly challenges the coherency of the EU design system. Against this background, it seems safe to recommend that the Nordic experience suggests that any future reforms of the EU design system should adopt a holistic view 80

Schovsbo (2020a) argues that the obligation in the Paris Convention does not imply an obligation to apply a national design system alongside the EU Design Regulation. 81 Kur (2020) and Schovsbo and Riis (2017).

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of the protection of designs,82 and clarify the relationship between design law and the supplementary protection of designs offered in copyright and unfair competition law.83

References Alhonnoro M (2020) Is There Still a Need for National Design Protection? A View from Industry. Nordiskt Immateriellt Rättsskydd:302–308 Bengtson H (2020) Is There Still a Need for National Design Protection? Nordiskt Immateriellt Rättsskydd:309–314 Church O, Derclaye E, Stupfler G (2021) Design Litigation in the EU Member States: Are Overlaps with Other Intellectual Property Rights and Unfair Competition Problematic and are SMEs Benefitting from the EU Design Legal Framework? Eur Law Rev 1:37–60 Church O, Derclaye E, Stupfler G (2019) An Empirical Analysis of the Design Case Law of the EU Member States. Int Rev of Intellect Prop and Compet Law 50:685–719 Commission of the European Communities (1991) Green Paper on the Legal Protection of Industrial Design. EC Commission Working Document, III/F/5131191-EN (Brussels, June 1991). Available via University of Pittsburgh, Archive of European Integration (AEI). http://aei.pitt.edu/1785/1/ design_gp_1.pdf. Accessed 25 Oct 2021 Derclaye E (2018) (ed) A Model Copyright/Design Interface: Not an Impossible or Undesirable Task? In: Derclaye E (ed) The Copyright/Design Interface: Past, Present and Future. Cambridge University Press, Cambridge, pp 421–452 Derclaye E (2021) EU Design Law: Transitioning Towards Coherence? 15 Years of National Case Law. In: Bruun N, Dinwoodie G, Levin M, Ohly A (eds) Transition and Coherence in Intellectual Property Law. Cambridge University Press, pp 56–67 European Commission (2020a) Making the Most of the EU’s Innovative Potential—An Intellectual Property Action Plan to Support the EU’s Recovery and Resilience. 25 Nov 2020, COM (2020) 760. https://ec.europa.eu/docsroom/documents/43845. Accessed 25 Oct 2021 European Commission (2020b). Commission Staff Working Document. Evaluation of EU Legislation on Design Protection. Brussels, 6 Nov 2020, SWD(2020) 264 final. https://ec.europa.eu/ info/law/better-regulation/have-your-say/initiatives/1846-Evaluation-of-EU-legislation-on-des ign-protection_en. Accessed 25 Oct 2021 European Commission (2016) Legal Review on Industrial Design Protection in Europe. Under the contract with the Directorate General Internal Market, Industry, Entrepreneurship and SMEs. MARKT2014/083/D. https://op.europa.eu/en/publication-detail/-/publication/43fd4a5c6c26-4639-ac9a-281ab57687de. Accessed 25 Oct 2021. Fenger N, Broberg M (2020) Danske domstoles forhold til EU-Domstolen. Ugeskrift for Retsvæsen B: 177–188 Kristensen TE (2020) National Designs—Against the Wind. Nordiskt Immateriellt Rättsskydd 2:246–248 Kur A (2020) The EU Design Approach—What is Left and What is Right? Nordiskt Immateriellt Rättsskydd 2:230–245 Kur A, Levin M (2018) The Design Approach Revisited: Background and Meaning. In: Kur A, Levin M, Schovsbo J (eds) The EU Design Approach—A Global Appraisal. Edward Elgar, pp 1–27 82

See also Derclaye (2018) (on the interface between copyright and design law). See, for example, the suggestion by Ohly (2018), p. 140 to amend the EU Design Regulation and EU Design Directive to limit parallel protection by unfair competition law after the lapse of the three-year period to instances where there is a risk of confusion. See also Schovsbo (2020a).

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Levin M (2018) The Harmonizing Decisions from Luxembourg. In: Kur A, Levin M, Schovsbo J (eds) The EU Design Approach—A Global Appraisal. Edward Elgar, pp 49–80 Løje J (2020) The Danish Design Act in the Light of the EU Design Regulation. Nordiskt Immateriellt Rättsskydd 2:315–322 Ohly A (2018) ‘Buy me because I’m cool’: The ‘Marketing Approach’ and the Overlap Between Design, Trade Mark and Unfair Competition Law. In: Kur A, Levin M, Schovsbo J (eds) The EU Design Approach—A Global Appraisal. Edward Elgar, pp 108–141 Schovsbo J (2020a) Design Protection in the Nordic Countries: Welcome to the Smorgasbord. Nordiskt Immateriellt Rättsskydd 2:323–343 Schovsbo J (2020b) Copyright and Design law: What is Left After All and Cofemel?—Or: Design law in a ‘Double Whammy.’ Nordiskt Immateriellt Rättskydd 2:280–285 Schovsbo J (2020c) Danish Supreme Court Denies Copyright in Rubber Boots. J Intel Prop Law & Pract 15(9):679–681 Schovsbo J, Dinwoodie G (2018) Design Protection for Products that are ‘Dictated by Function.’ In: Kur A, Levin M, Schovsbo J (eds) The EU Design Approach – A Global Appraisal. Edward Elgar, pp 142–171 Schovsbo J, Rosenmeier M (2018) The Copyright/Design Interface in Scandinavia. In: Derclaye E (ed) The Copyright/Design Interface: Past, Present and Future. Cambridge University Press, Cambridge, pp 108–127 Schovsbo J, Riis T (2017) Design Law: Caught Between Chairs? In: Ghidini G, Ullrich H, Drahos P (eds) Kritika: Essays on Intellectual Property, vol 2. Edward Elgar, pp 88–118 Schovsbo J, Rosenmeier M, and Salung Petersen C (2021) Immaterialret [Intellectual Property Law], 6th edn. DJØF Publishing, Copenhagen Schovsbo J, Svendsen NH (2013) Designret—Designloven med kommentarer [Design Right – the [Danish] Design Act with commentaries], 2nd edn. DJØF Publishing, Copenhagen Schovsbo J, Teilmann-Lock S (2016) We Wanted More Arne Jacobsen But All We Got Was Boxes: Experiences from the Protection of Designs in Scandinavia from 1970 till the Directive. Int Rev Intellect Prop Compet Law 47:418–437 Stone D (2016) European Union Design Law: A Practitioners Guide, 2nd edn. Oxford University Press, Oxford The Design Law Report (1966) Betænkning 417/1966 vedrørende en ny dansk lov om mønstre udarbejdet af den af handelsministeriet den 5.2.1960 nedsatte kommission i samarbejde med tilsvarende finske, norske og svenske kommissioner (’mønsterlovsbetænkningen’) [Parliamentary Report No. 417/1966 concerning a new Danish Act on Designs Prepared by the Commission which was formed by the Ministry of Trade on 5 Feb 1960 in collaboration with similar Finnish, Norwegian and Swedish commissions]

Jens Schovsbo LL.D., PhD, is professor in intellectual property law at the Center for Information and Innovation Law (CIIR), University of Copenhagen. He has published extensively in Danish, Nordic and international law journals. He is, among other things, President of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP) (2019–2022).

Chapter 19

History of Design in Russia: 1917–2021 Alexandra Sankova

Abstract This chapter provides an overview of the main phases of design development in the Union of Soviet Socialist Republics (USSR) and the Russian Federation (Russia) from 1917 to 2021, setting them against the political and economic context of the time. The first post-Revolution design professionals had to create a new material world from scratch. All the innovative know-how was immediately passed on to students but implementation in nationalized factories remained problematic. The dramatic political changes of the 1930s introduced a new style: the Communist leadership wanted to go back to the classics. The huge industrialization effort cost millions of human lives but the achievements were impressive. World War II put design evolution on hold, and the post-war regime renounced the ‘excesses’ of the past. The ‘Khrushchev Thaw’, mass housing construction, new technologies, space flight and efforts to improve international relations changed the lifestyle and the mindset of the Soviet people. Design officially became an integral part of any production process, and the Soviet design system took shape. The All-Union Scientific Research Institute of Technical Aesthetics (VNIITE) acted as a central coordinating body while every ministry got a specialized research institute or design office. The system collapsed with the rest of the Soviet Union and a new generation of Russian designers once again had to start from scratch. This time, they relied both on the reinvented Soviet legacy and the inventions of the avant-garde to find a distinctive national identity.

19.1 Early Days of Soviet Design. The First Designers: 1917–1932 The development of design in Russia, just like elsewhere around the globe, is determined by the economic, social and political context. Over the last century, Russia had to go through a lot of extremely painful experiences, including world wars and revolutions. The entire political system had to be entirely rebuilt, not once, but twice. Global turmoil swept away all existing arrangements and forced people to start from A. Sankova (B) Moscow Design Museum, Moscow, Russia © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_19

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scratch. But the design profession survived against all odds. Knowledge was transferred from tutors to students within a relatively small bubble of the initiated, and from time to time ideological shifts and operational requirements imposed a demand for certain branches of industrial design. The October Revolution of 1917 cancelled every achievement of the old regime. The young Soviet nation made a point of renouncing the old ways, including social structures, religion, traditional values and lifestyles. Private property was abolished and businesses—factories, plants, trading companies—were nationalized overnight. Noble and merchant families were forced into exile or uprooted and pushed to hide their identities. Lifestyles had to be reinvented, moved away from the individual to embrace the communal. Families had to adapt to communal living:1 individual housing was hardly available any more.2 The plan was to move everyone to new communal living units with food prepared in kitchen factories and children brought up in communal nurseries. The masses had to be indoctrinated and educated, raising the general cultural standard. The former noble mansions and estates were turned into public libraries, leisure parks, community centres and sports facilities. The new socialist way of life required a holistic approach to the design, development and production of new buildings and interiors that were to be made complete with new kinds of furniture, household devices, clothing, textiles, etc. Nationalized production facilities were in need of a new vision of arts and crafts. The Higher Artistic-Technical Workshops (Vkhutemas) were established by Vladimir Ulyanov-Lenin’s decree on 19 December 1920 to train specialists for industrial production and promotion of industrial art.3 The teaching staff of the school included the most innovative and influential artists and architects of the time. Similar facilities were established in major industrial centres across the country. A new profession was introduced to help create the new world: internally Soviet designers became known as ‘construction artists’. Indeed, artists of the Constructivist movement became the first Soviet designers.4 They worked and taught in parallel, passing on their know-how and their ideas about the new ways of life, documenting their creative research in the LEF (Left Front of Arts) magazine that featured their own works in ceramics, textiles, furniture, fashion and graphic design as well as student projects and proposals by like-minded artists in various fields.5 They believed that designers, or construction artists, must be closely 1

Formal marriage was optional in the early years of the Soviet regime. Having an entire room for one family’s use was a luxury. Sometimes up to four families would share a room, or a living unit, while kitchens and bathrooms were all communal. 3 Administration of the USSR Council of People’s Commissars (1920), pp. 773–774. 4 The original movement took shape in the 1920s within the Institute of Artistic Culture (INKhUK). The group included Alexei Gan, Alexander Rodchenko, Varvara Stepanova, Vladimir and Georgy Stenberg, Konstantin Medunetsky, Karl Johansson, and many others. 5 LEF magazine was the mouthpiece of the Left Front of the Arts, a Moscow artistic group of 1922–1928. Dominated by the poet Vladimir Mayakovsky, this association of ex-futurists included Nikolai Aseyev, Osip Brik, Sergei Tretyakov, Boris Arvatov, Boris Kushner, Nikolai Chuzhak and a number of others. They all believed themselves to be the only true revolutionaries in art, much 2

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involved in all aspects of production. Their manifestos urged: ‘Your school is the factory’.6 The Constructivists put an emphasis on the functional structure of every item, the articulation of its form as well as the technical aspects.7 Upon graduation, students were sent out to plants and factories across the country to realize the ideas they embraced during their studies, popularize new principles and promote new products (Fig. 19.1).

Fig. 19.1 ‘LEF (Left Front of Arts) Magazine Front Covers’ by Alexander Rodchenko for V Mayakovsky (ed) LEF, Issue No. 1, Mar 1923; V Mayakovsky (ed) LEF, Issue No. 2, Apr-May 1923; V Mayakovsky (ed) LEF, Issue No. 3, June-July 1923 (Gosizdat Publishing House) (source: collection of the Moscow Design Museum)

Unfortunately, they failed to implement most of their designs because of the dire economic situation. A weak production base in combination with organizational difficulties made matters even worse. A professional workforce was lacking, the available labourers were half-starving, struggling to keep up work in unheated buildings: there was a shortage of both raw materials and fuel. Consumer goods had to be produced mainly at nationalized old factories while the efforts of the state were focused on heavy industry, aviation and huge infrastructure projects such as power plants, dams and railroads. ‘GOELRO’, the first Soviet plan for national economic recovery and development, was the utmost priority, and this included electrification rather than beautification. And yet, there were quite a few success stories. The biggest chinaware manufacturer, the State (former Imperial) porcelain factory, under the new artistic director Sergei Chekhonin launched an experimental line of ‘agitation porcelain’ (from 1918). The pieces featured Soviet paraphernalia such as hammers and sickles, red stars, flags, figures of workers and peasants. These images more relevant than the competing October Group collective and Proletarian Writers’ Association. A number of literary groups in Odessa, Ivanovo-Voznesensk, Tiflis, and Novosibirsk shared the agenda of LEF. Their magazines were LEF (1923–1925) and The New LEF (1927–1928). 6 LEF (1923), p. 48. 7 Lavrentiev (2007), p. 138.

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were ubiquitous at the time: they appeared on garments, tableware, buildings, cars and printed matter. The dinner and tea sets as well as decorative plates were sent to Soviet embassies and used as representational gifts. Agitation porcelain was quite expensive, mostly because of the experimental production process. Every piece was unique: a display of Soviet luxury for international markets rather than a product for the masses. And yet they were milestones of Soviet design. Sergei Chekhonin cultivated the polychrome overglaze painting technique and designed highly expressive agitation plates: ‘Red Ribbon’ or ‘Cubist Design with Hammer and Sickle’, to name but a few. The factory employed the most innovative artists of the time, including the mastermind of Suprematism Kazimir Malevich and his students Nikolai Suetin, Ilya Chashnik and Mikhail Mokh. The most radical porcelain innovations were envisaged by the ‘Laboratory of Forms’, an experimental section launched by Malevich in 1923. It reached its apex with the ‘Suprematist’ white tea set (Fig. 19.2).

Fig. 19.2 ‘Suprematist’ White Tea Set (1923) by Kazimir Malevich for State Porcelain Factory. Photo of a set reissued by State Porcelain Factory in a limited series in the 1960s (source: collection of the Moscow Design Museum)

One hardly felt at ease while drinking tea, but in this particular case, form came before function: the cups and the teapot looked like abstract sculptures rather than tableware. Nikolai Suetin took over the artistic direction of the factory in 1933 and remained in charge until his death in 1954. He stepped up the factory production and introduced more formal novelties. Under his guidance, the factory delivered geometrical, minimalist moulds. His own cups, saucers, dinner sets and ‘Architecton’ vases showcased the new aesthetics that drew on the spatial and architectural thinking of Kazimir Malevich.

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Other factories specialized in accessible mass productions. These included the porcelain manufacturers in Dulevo and Verbilki—Red Tractorist chinaware and the Budyansky faïence works. The prints were made with airbrush stencils and ceramic decals. For instance, the Budyansky factory was famous in the 1920s and 1930s for its ‘Pioneers of the East’ series. It featured young pioneers with neckerchiefs, bugles and drums. The All-Ukrainian production enterprise (Vseukrtrest) boasted fast food plates bearing the motto ‘Five-year plan in four years’. Many production facilities went on using old, pre-revolutionary moulds since making new ones was a demanding and costly enterprise that did not guarantee instant success: the new tableware had to be decorated with the same old geometric or floral patterns in order to make it appealing for the customers. On the whole, both propaganda and classical imagery were applied on anything that was in stock. The bulk of the output ended up in public food services. In textiles, new creative ideas were adopted with more ease. Textiles were referred to as ‘ideological goods’: produced in immense quantities, they were believed to affect the feelings of the people beyond any logic.8 The professionals that remained in spite of the change of regime trained the young graduates of Vkhutemas to use the outdated pre-revolutionary machinery. In 1924, Constructivist artists Lyubov Popova and Varvara Stepanova came to work at the Cotton-Printing Factory Number 1 in Moscow (the former Tsindel manufactory) (Fig. 19.3).

Fig. 19.3 ‘Textile’ (1924) by Varvara Stepanova for the Cotton-Printing Factory Number 1, Moscow (source: Rodchenko and Stepanova archive)

They were tasked with updating the product range with geometric prints. Of 120 proposals, approximately 15 were approved for mass production and eventually won 8

Fyodorov-Davidov (1928), p. 4.

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the acclaim of critics and colleagues, especially due to the painstaking care they took over the appearance of the prints in joints and seams. The Ivanovo-Voznesensk State Textile Trust was among the first enterprises to take up the new ideals and apply them to mass market production. The Trust—consolidating 27 major factories—was established in 1921 and became the biggest industrial and commercial enterprise in Russia.9 In 1922, the Trust set up a centralized creative studio that brought together the most experienced artists in the region. The tasks at hand ranged from creating new prints to revisiting the traditional pre-revolutionary ornaments. In 1924–1925, Sergei Burylin created his iconic ‘Sickle and Hammer’ series, thus laying the groundwork for a new trend in textiles.10 Burylin was the pioneer of new revolutionary motifs and symbols in cotton prints. The new designs featured a broad range of issues on the agenda: young pioneers, sports, agricultural mechanization, electrification and the industrialization of the national economy.11 Artists were inspired by mechanical elements such as gears, barrels, machines, tools, aircraft, steamships, tractors, trucks and locomotives. The Red Rose textile factory employed the Vkhutein (the Vkhutemas was renamed the Vkhutein in 1927) graduate Natalia Kiseleva who was experimenting with dynamic patterns. Her designs featured sophisticated combinations of olive, black and orange colour grades that departed from the classical avant-garde schemes. The transparency effect was achieved through the use of airbrush—a technique developed and taught at the Vkhutein/Vkhutemas by Ludmila Mayakovskaya, the sister of the revolutionary poet. Next, the airbrush stencils and geometric patterns of a broad range of shades were adopted by the Ivanovo-Voznesensk State Textile Trust. Another example of the same approach is the work of Andrey Golubev for the Sosnev Amalgamated Textile Mills (‘Triangles and Cog-Wheels’, a 1930 calico design created to be exported into Turkey). Further examples are: the 1930 muslin ‘Ploughs’ by Alexander Medvedev and Darya Preobrazhenskaya for Kokhma textile manufacture; the ‘Tractors’ by an unknown designer developed for Teykovo textiles around 1930; and other industrially-minded designs. It is only to the end of the 1930s that the geometric propaganda textiles gave way to floral prints. These became increasingly popular in the Ivanovo and the Trekhgorny factories in Moscow. Red five-point stars would peep out of the floral garlands, but mostly the new trend called for a bounty of colourful details with no straightforward ideological message. Some of the textile projects never materialized. For instance, Vladimir Tatlin’s 1923 ‘Normal clothing’ failed to make it to the production line. The idea was to provide a range of everyday apparel for men and women that would be extremely easy to make. Tatlin himself designed a capsule collection of basic items drawing on his own ideas for a new life, the most sensible of all the avant-garde slogans: ‘Not the old, not the new, but the necessary’.12 9

Ivanovo-Voznesensk (1923), pp. 11–15. Yasinskaya (1977), p. 13. 11 The Vladimir Lenin Young Pioneer Organization was established on 19 May 1922. 12 Tatlin’s project of ‘normal clothing’ was unveiled in an anonymous article entitled ‘New Living’ in the Leningrad-based Red Panorama magazine. 10

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Unlike tableware and garments, printed materials did not take much to make: propaganda worked on any surface, from soap wraps to huge panels at world expos. Graphic design was the ultimate tool of avant-garde artists and the Soviet Union achieved a lot by employing this design sector. The national literacy programme and the importance of propaganda made sure that the printing industry flourished and became one of the priorities of the Government. It had enough budget for artists to be integrated into the production process. Graphic works were circulated by State publishers in huge quantities. The same publishers produced a huge amount of books and illustrated magazines on almost any subject, from music to technology. Posters were most important to the Soviet mass art as a powerful propaganda and communication tool reaching all audiences. They were produced centrally at Isogiz (Visual arts) publishers. Poster artists formed two associations based in Moscow and St. Petersburg (then Leningrad). The Moscow branch alone employed 14 graphic artists, all Vkhutemas graduates. The first graphic design studio of Isogiz and the art studios of the Leningrad branch, Lengiz, enjoyed special treatment (good working conditions) and production was streamlined from the first concept design to in-house typography. The studios and print production were located in the same building to ensure maximum efficiency. Starting from the early 1930s, artists were sent out to research the realities of industrial and agricultural centres across the country and to get a better understanding of their target audiences. The ever growing demand meant that eventually the production of posters had to be organized locally. Visual propaganda sections were eventually established in enterprises and industrial clusters.13 The 1920–1930 posters relied mainly on block (sans-serif) lettering, strong geometric shapes, diagonal or symmetric layouts, colour painting, text boxes and capital letters. The designers preferred photographs to graphics and often played with photomontage. Gustav Klutsis was the most prominent figure when it came to political posters. His striking designs featured minimal colour palettes with catchy red accents and diagonal layouts with infinite ranks of collaged workers and peasants. The advertising posters shaped the iconic visual identity of the short-lived Soviet commercial enterprises: Mosselprom (the Moscow Association of Agricultural Production Enterprises), Gosizdat (State Publishing House) and Rezinotrest (Rubber Industry Trust). They owed their success to the creative duo of Vladimir Mayakovsky and Alexander Rodchenko and their signature advertising style: the poet wrote the text and the letters were used by the Constructivist mastermind Alexander Rodchenko to interplay with the visuals, creating an integral puzzle-like image (Fig. 19.4). The USSR In Construction monthly was another clear example of the role of graphic design.14 The first issue was edited by one of the most influential literary figures, Maxim Gorky. The next editions were designed by El Lissitzky, Alexander Rodchenko, Varvara Stepanova and Solomon Telingater. The high-profile magazine had double page spreads without margins that reminded the reader of movie screens 13

Babaev (1931), pp. 8–12. USSR In Construction was published from 1930 to 1941 and again in 1939. It was the main propaganda publication aimed at an international audience and was translated into five foreign languages. The magazine promoted the new ideology and lifestyle of the Soviet people.

14

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and origami-like stitched sections. The artists made full use of photo collages, infographics and other eye-catching techniques emphasized by two-colour printing on quality paper. Every issue had a central theme narrated through photo stories with a minimal amount of text. Images provided much more convincing evidence of the success of communist policies and the thriving new nation. Fig. 19.4 ‘BUY CHEAP BREAD!’ Poster by Alexander Rodchenko and Vladimir Mayakovsky for Mosselprom (source: Rodchenko and Stepanova archive)

. The experimental ‘communal’ and ‘transitional’ type housing offered further proof of the 1920–1930s Constructivist achievements. These buildings were designed as multifunctional complexes with individual living areas, shared zones featuring a canteen, a nursery, fitness facilities and a library, and a separate service wing with showers, wash-houses, airing cupboards, etc. The living areas were only made for short periods of rest or sleep. The term ‘minimal living unit’ was coined to define the minimal living space possible for a certain number of residents. The rest of the day

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had to unfold in shared environments. The first residential projects for workers— fachwerk buildings with timber framing—were realized in Ivanovo-Voznesensk.15 The workers’ clubs were designed alongside residential quarters to showcase the new life in a novel environment. These projects invited a completely novel approach to interior design, furniture and household appliances. The very first competitions to design mass produced workers’ furniture were launched in the early 1920s. People needed simple and cheap Soviet-style designs. The Constructivists obliged with light, collapsible, multifunctional solutions: a transforming chair doubled as a table, a sofa doubled as a bed, a dining table was also a drawing desk. El Lissitzky formulated the terms of reference for ‘new furniture’ and designed a series of interiors himself, notably for the ‘F units’ of the Narkomfin building on Novinsky Boulevard in Moscow (a 1929 project by Moisei Ginzburg and Ignaty Milnis). The furniture was built-in rather than freestanding and belonged to the room regardless of the current occupant as if it were a ship cabin or a train compartment. Indeed, there was no private housing in the USSR: people were constantly uprooted and resettled. Therefore, moving around with few personal belongings and no furniture was a practical solution. However, despite the growing need for furniture in the new State and the constructive, low-key solutions for mass production proposed by the avant-garde designers, the industry failed to embrace the new ways. Primitive workshops and amateur cooperatives preferred to stick to time-tested models. The avant-garde designs remained on paper or were produced in limited editions. In addition to buildings, architects and design engineers had to deal with all kinds of vehicles. Nikolay Brilling and Alexey Kuzin designed the ‘BeKa’ snowmobile that was mass-produced from 1920.16 Later that year, a strategic operation to design a new light tractor was launched as one of the top national priorities. The machine had to be extremely easy to drive to meet the needs of the illiterate peasants who were used to horse or manual ploughs. The arrival of the very first Soviet diesel locomotive engineered by Yakov Gakkel in 1924 was another landmark: a closed, heated and sound-isolated cabin made a difference in a vast and snowy country, busy with reclaiming its northern areas.17 Unfortunately, most of the prototypes never went into mass production due to economic difficulties.18 A definite definition of a style is only possible when it has matured and realized its potential in a full range of formats, from household items to buildings. Constructivism showed the world it was up to any challenge in 1925 when the USSR was first invited to take part in the Exposition internationale des arts décoratifs et industriels modernes 15

Snitko (2007), p. 11. The development of the aerosani (snowmobile) began 12 years earlier, before the Revolution. 17 Kholmyansky (1985). 18 Kick-starting the industrialization process was facilitated by the adoption of five-year plans. The 14th Communist Party Congress of December 1925 proclaimed the policy goal of transforming the country into a major economy through intense industrialization. The first Five-Year Plan (1928– 1932) was realized in four years with over 500 production units operating across the country. These impressive achievements were made possible by repression and command administrative systems. 16

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[International Exhibition of Modern Decorative and Industrial Arts]. It was a turning point that shaped the development of design and architecture for many years to come. The Russian pavilion designed by Konstantin Melnikov impressed the international jury and visitors alike. The architecture won the Grand Prix, Sergei Burylin of the Ivanovo-Voznesensk State Textile Trust was awarded a gold medal for his ‘Hammer & Sickle’ prints,19 Rodchenko’s posters earned a silver medal, and the fashion designer Nadezhda Lamanova won the Grand Prix for folk-influenced outfits. More Soviet participants were awarded for their achievements in arts, theatre, filmmaking and design. All in all, the Soviet exhibits caused a sensation (Fig. 19.5).

Fig. 19.5 ‘Workers’ Club’ (1925) by Alexander Rodchenko for the International Exhibition of Modern Decorative and Industrial Arts in Paris (source: Rodchenko and Stepanova archive)

Back at home though the Constructivist ideals were embraced only for a very short period. Then the focus shifted, bringing about a reframing of every design activity. The wild and restless avant-garde experiments were no more in line with the party policies. Constructivist beliefs were accused of formalism, condemned for an incapacity to uphold new socialist values, charged with ideological non-compliance and finally abandoned to make way for the new trend, socialist realism.

19

Yasinskaya (1977), p. 13.

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19.2 Industrialization, Soviet Art Deco and the Stalinist Empire Style: 1932–1955 Socialist realism officially hails from 1932, the year of the resolution On the Restructuring of Literary and Artistic Organizations issued by the Central Committee of the Communist Party.20 The new policy called for a return to the classical heritage. The resulting style has been labelled ‘post-constructivism’, ‘Soviet revival’, ‘Stalinist Empire style’ or ‘Soviet Art Deco’. Actually, for a while, several trends coexisted, each stemming from its own political and historical undercurrents. At that time, most of the people in the USSR lived in poverty, driven by sheer enthusiasm. But the ideological drive of the State left no place for individual comforts. All effort was hurled into infrastructure megaprojects or the palatial, lavishly decorated public buildings. The statement was clear: equal rights, amenities and frugal lifestyles for all. Setting up efficient production chains for everyday consumer goods proved much more difficult than erecting a handful of iconic monuments. Instead of improving everyone’s daily lives and constructing efficient, low-cost communal living units, the Soviet State prioritized new transportation systems and public places. Among the most telling examples was the All-Union Agricultural Exhibition organized in Moscow to celebrate the twentieth anniversary of the Soviet regime (1935–1939) and the construction of the Moscow metro, launched in 1931. A massive programme aimed at the construction of retreats and recreation facilities was initiated across the country. In a way, it was an implementation of the ideals of communal living, but in a completely different aesthetic register. The construction of seven skyscrapers known as the ‘seven sisters’ or ‘Stalin’s high-rises’ was an important milestone for the development of the new style. Originally the project was introduced to support and complement the megalomaniac Palace of the Soviets, a 415-metre-high pedestal for a monument of Lenin.21 Lowkey Constructivist solutions were replaced by fancy symbolic decorations with spires crowned by red stars, mosaics, bas-reliefs, lavish stucco work, magnificent lobbies, giant bronze chandeliers and massive door handles. Soviet symbols—five-point stars, hammers and sickles interwoven with cornucopias, laurel garlands and wheat sheaths—ran rampant in art, architecture, industrial products and printed materials, interspersed with the portraits of the heroes of the moment, party and military leaders. Stalin’s personality cult spread from the mid1930s onwards. His image featured on posters, letterhead, newspaper covers as well as artworks, pushing back Vladimir Lenin and lesser figures. The mid-1930s saw the parallel development of another stylistic trend that some art historians consider post-Constructivist,22 while others prefer the definition of 20

Central Committee of the Communist Party (1932), p. 62. The project of Boris Iofan was selected as a result of an ambitious competition launched in 1931. However, the utopian nature of the project combined with construction difficulties ensured the tower never materialised. 22 Notably, Alexander Lavrentyev in his seminal History of Design: Lavrentiev (2007). 21

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Soviet Art Deco.23 It was more understated than the Empire variety and seldom used state paraphernalia. Instead, it favoured symmetrical, vertically oriented, elongated proportions and skyward movements of geometric tiered forms referring to Babylonian, Egyptian and Chinese imagery as well as sophisticated, precious materials and elegant aerodynamic curves, typical of Art Deco around the globe. The use of streamlined forms was favored in the appearance of new moulding technologies. Rather than inner frames, designers and engineers now opted for external ones that combined structural and aesthetic functions.24 In a way, this approach was a practical application of the Constructivist proposition of emphasizing the structural framework and fabricating all kinds of items by combining standard parts. At the same time, Soviet cultural practices were heavily influenced by the travels to the United States of America (US) and Europe undertaken by the leading Soviet artists, writers, poets and engineers.25 They returned impressed and inspired by the soaring skyscrapers and the streamlined silhouettes of Art Deco designs. Those who could not travel were free to consult Western magazines in the libraries. This exchange of experiences and know-how played a pivotal role in the evolution of Soviet design thinking. Soviet Art Deco was the prevailing style of the Moscow metro stations that were hailed as ‘the underground museum’, a chain of ‘palaces for the people’ crafted by the best artists. The design of the stations—most notably the elegant Kropotkinskaya (then Palace of the Soviets) by Yakov Lichtenberg and Alexey Dushkin;26 Mayakovskaya, once again by Alexey Dushkin and his team;27 Krasnye Vorota by Ivan Fomin and Nikolai Anrikanis;28 and a number of others—won a series of prestigious international awards and accolades. The Moscow metro was arguably the very first integrated transportation system with a unified design philosophy: trains, ticket gates, kiosks, escalators and ticket offices were all conceived in a distinctive aerodynamic style with curvilinear surfaces and shiny mouldings. The artist Lazar Rappoport was responsible for designing the iconic red letter ‘M’ for the logo. The navigation and staff uniforms conformed to the general graceful look.29 The megaproject of the metro as well as the new public buildings required a single-minded, uniform approach to the design of interior details, furniture and light fixtures. To that end, Naum Borov set up a dedicated Studio Number 12 that brought 23

Notably, the avant-garde art historian Alexandra Selivanova. Mikhailov (2003), p. 86. 25 Travels to the US were undertaken by many Soviet cultural figures: architects Vyacheslav Oltarzhevsky and Boris Iofan, poet Vladimir Mayakovsky, authors Ilya Ilf and Evgeny Petrov, to name but a few. 26 Kropotkinskaya won the Grand Prix at exhibitions in Paris (1937) and Brussels (1958) as well as the Stalin Prize for architecture and construction (1941). 27 Mayakovskaya was awarded the Grand Prix at the World’s Fair in New York in 1939. 28 Krasnye Vorota station was awarded the Grand Prix at the 1937 Exposition Internationale des Arts et Techniques dans la Vie Moderne [International Exposition of Art and Technology in Modern Life] in Paris. 29 Mikhailov (2003), pp. 92–93. 24

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together the best designers and artists, many of them Vkhutein graduates,30 students of Rodchenko and Tatlin: notably Grigory Zamsky, Iosif Yang and Abram Damsky. The latter architect was in charge of lighting solutions (Fig. 19.6).

Fig. 19.6 ‘Armchair and Sofa’ for the Baths of the Moscow Council (Mossovet) (1936) by Studio Number 12 as shown in Studio Number 12 (1936) (source: collection of the Moscow Design Museum)

The same workshop was responsible for designing change booths and the foldaway newspaper booths of the Association of State Publishers, the furniture and interiors for the Belorussky Rail Terminal, Dinamo Arena, Moskva Hotel, Pravda Publishing Plant (designed by Solomon Golosov in 1934), and the furniture of the Consumer Goods Commissariat. Streamlined items in precious materials (mahogany, nutwood, fumed oak) with Karelian birch veneer or other expensive finishings and leather upholstery were popular from the late 1930s through to the end of the 1950s, especially when it came to custom-made bedroom or desk sets. Most fittings were made in bronze, brass, steel and marble, accentuated with innovative chrome and nickel plating and new varieties of plastic that became increasingly popular at the time: bakelite, celluloid and plexiglass. Armrests and other details were often made in elegantly curved wood, for instance in the lounge chair designed by Naum Borov, Grigory Zamsky, and Iosif Yang in 1933 for the Rogozhsky-Simonovsky district bath house. It seems to have strayed off some ancient Roman fresco.31 Another fine example is offered by a beautiful living room set created by the cabinet makers of Uzhgorod in Transcarpathia after a design by Yuri Soloviev to the end of the 1940s. Soft furniture sets for studies were produced in limited editions until the end of the 1940s. Most of the designs were never approved for serial production, but the styles were used in public and private interiors for the next two decades.

30 31

Heritage Art Gallery (2018), pp. 6, 65–85, 109. Studio 12 (1936), pp. 18–22.

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The Empire style and Soviet Art Deco advanced in parallel over the 1930s but eventually the ideological component, the symbolic abundance and the representational aspect of the Empire style came out on top. As for Art Deco, it remained a strictly professional phenomenon. At the same time, the USSR was determined to boost the national economy. To that end, the country signed several international agreements on technical and engineering cooperation. There was no time to waste on inventing autonomous solutions and training local specialists. Technologies, industrial equipment, design documentation and technical procedures were largely imported from the US, Germany and other countries. International professionals were contracted to contribute to the industrialization effort. Manufacturing vehicles for air, land and water transport became the topmost priority. One of the contracted parties was the office of Albert Kahn, an industrial architect from Detroit, who was tasked with designing and setting up 521 plants across the country from 1930 to 1932.32 Many of these were ready to convert into military production when needed. This was by far not the only case of international cooperation. In 1929, the Supreme Council for National Economy signed a deal with Ford Motor Company to set up mass light and heavy vehicle production. The Soviet ‘GAZ-A’ passenger car and ‘GAZ-AA’ truck produced at the Gorky Automobile Plant (in the city that is now known as Nizhny Novgorod) were based on the Ford ‘Model A’ and Ford ‘Model AA’, respectively, while the 1936 ‘GAZ M1’ car was a licenced version of the Ford ‘Model B’,33 slightly retouched to meet the local road conditions. The trick would work for many years to come: the Italian Fiat ‘600’ provided the blueprint for the locally produced economical vehicle ‘ZAZ 965’—a product of a 1966 Fiat-Soviet collaborative agreement. In some cases, the Western models were simply copied: for instance, the legendary ‘Ural M-72’ motorcycle produced at the Moscow motorcycle plant from the 1940s to the 1960s was a copy of the German BMW ‘R71’, a material result of a study trip undertaken by the motormaker Nikolay Serdyukov.34 At a later stage, the production of these machines was set up at the motorcycle plants of Kharkiv and Leningrad (this modification was known as the ‘Dnipr’). But emulating the West was obviously not enough. The Soviet engineers proceeded with their own experimental projects such as the ‘ball train’ designed by Nikolay Yarmolchuk: a monorail express moving on ball-shaped wheels and reaching speeds up to 300 km per hour. Sevastian Waldner, a self-taught engineer, built a new vehicle using two aircraft engines with monorail cars. However, the aerotrain never got past Gorky Park public testings in 1933.35 One year later, the huge propaganda plane named after Maxim Gorky made its first test flight. It had eight engines and a wingspan greater than a 747, carrying a 32

Meyerovich (2009). RIA Novosti (2017). 34 Kasheev and Reminsky (2000). 35 Kholmyansky (1985), p. 90. 33

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maximum of 72 passengers that could enjoy all the mod cons, including sleeping cabins, wash basins, showers and toilets. The part of the plane dedicated to the distribution of propaganda included film projection equipment and a printing press.36 It was the biggest civil plane ever produced until the record was broken in 1950.37 Unfortunately, the plane crashed during the first publicity flight, but not as a result of a design defect. The ‘OSGA-25’, the world’s only passenger high-speed catamaran designed by Vasily Gartwig, could hold up to 150 passengers. The 24-metre-long and 12-metrewide prototype shuttled between Sochi and Sukhumi between 1939 and 1941, astonishing the public with its futuristic streamlined silhouette and elegant interiors where ceiling decorations, handrails, light fixtures, bent tube furniture and all other features conformed to the same refined style. The person responsible for interior design was the Vkhutein graduate Vladimir Mescherin.38 The industrialization effort required gruelling labour and dire living conditions. The State had to come up with new incentives for very hard and intensive work, and by 1930 the solution was found: material interest! Instead of renouncing the individual to enhance the collective and striving to achieve the socialist ideals of the Constructivists, the Soviet citizens were offered an exchange: more work for more goods. The Stakhanovites—named after Alexey Stakhanov who had mined 102 tons of coal, or 14 times his quota, in one shift in 1935—became the new role models. The best workers got access to incredible benefits: hefty bonuses, individual apartments, exchange visits to the West, clothing ateliers and restricted furniture outlets. They set an example for the rest of the toiling masses, proving a simple point: the more you worked, the better you were off. As a result, the Soviet State witnessed an increased demand for material goods. It still had to be met by mass production and struggled with whatever funds remained from heavy industry. Enterprises started to develop their own design offices, or construction bureaus, but instead of design professionals they still employed architects and engineers. The early trend for improving the population’s lifestyles through consumer goods manufacturing was interrupted by World War II. During the War years, the development of design was put on hold while every possible effort was focused on providing for the front. Most of the people who stayed behind the lines had no money to spare even for the cheapest commodities. The conditions were very harsh. So the new era of Soviet design had to wait until the end of the War. The very first qualified design practice in the USSR was the AKhB (Architecture and Art Bureau), set up in 1945 under the Ministry of Transport Engineering in order to improve Soviet passenger transportation. The 25-year-old Yuri Soloviev was placed at the head of the Bureau after winning a competition to design the new passenger carriage for the Kalinin engineering plant. In the early stages, Soloviev had to deal with rapid staff turnover: it was very hard to find the right professionals. For 36

Mikhailov (2003), p. 94. Kotelnikov (2004), pp. 20–22. 38 Mikhailov (2003), p. 98. 37

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a while he had to make do with the same old architects and engineers. However, the Bureau successfully designed the ‘Joseph Stalin’ steam icebreaker vessel, the ‘Lenin’ diesel-electric passenger ship, U-boat interiors and four executive sea yachts.39 All the design solutions promoted a comfortable user experience: additional toilets in the ‘Joseph Stalin’ icebreaker and expanded living units in the U-boats originally met some resistance from production management. It took Veniamin Samoylov a long time to develop the original design of ‘GAZM20 Pobeda’ because this executive car had no Western prototypes. Its ‘sunken’ headlights, lack of running boards, and aerodynamic wings that blended smoothly into the fluid body lines were unparalleled at the time. The Gorky Automobile Plant produced this vehicle from 1946 to 1958,40 with several variations: the range included a convertible (‘M20 B’), a cross country vehicle (‘M-72’) and even a snowmobile (‘Sever-2’ or ‘North 2’).41 The post-war recovery period set new priorities: the Soviet economy had to pick up momentum instantly, there was even less time and money to lose than before in developing original technologies and machines. The USSR transported entire factories from Germany and launched production lines with Western equipment dating back to the 1930s. There were several admirable attempts to design original products, but otherwise the main source of inspiration from the late 1940s through the 1960s were professional invitation-only expos of Western products and materials. Enterprises would examine, acquire and take them to pieces in order to try and reproduce the originals with available materials and technologies: this method was known as ‘assimilation of Western technologies for domestic use’.42 Most of the outcomes were far from identical, and the USSR took the precaution of never selling ‘assimilated’ products abroad in order to avoid licencing and copyright problems. A nice example was the ‘Zvezda 54’ radio set, a copy of the French ‘Excelsior-52’ released two years earlier, in 1952. The most popular Soviet table lamp in carbolite produced from the 1930s to the 1960s in Orekhovo-Zuevo, outside Moscow, was originally based on the 1929 German design by Christian Dell. The ‘Melody MG56’ reel recorder of 1956 was a replica of the German 1955 ‘Grundig TK820’. The ‘FED’ camera (the name stands for the initials of the Soviet secret police founder, Felix Dzerzhinsky) was a doppelganger of the German 1932 ‘Leica II’ model, while the ‘Chaika’ (Seagull) vacuum cleaner of the 1960s was inspired by a Dutch model that was marketed in North America as ‘Eatonia’, also known in the United Kingdom (UK) as ‘Remoco’ and in the rest of Europe as ‘Erres’. ‘Tula’, the very first Sovietmade electric sewing machine, was launched in 1955 after a thorough investigation of the German trophy models.43

39

Solovyov (2004), pp. 67–108. The project was launched in 1938, but the War put it on hold. 41 Moscow Design Museum (2020), p. 189. 42 According to Alexey Kostenko, a policy official of the Soviet and Russian Government from 1969 to 1996, in an interview conducted by the Moscow Design Museum, Moscow, 14 Oct 2020. 43 Moscow Design Museum (2020), p. 21. 40

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19.3 The Khrushchev Thaw, the New Mindset and Lifestyle: 1955–1962 From 1955, the USSR adopted a new, functional official style: a radical shift in the aesthetic policy was prompted by a resolution of the Central Committee of the Communist Party condemning ‘excesses’ in design and construction.44 The document anticipated an even more radical change in the political course: in 1956, the new party leader Nikita Khrushchev would denounce the excesses of Stalin’s rule. Once again, the new beginning took the form of a competition to finally build the Palace of the Soviets, the utopian colossus first envisaged in the early 1930s. The new tender took place from 1957 to 1959; the brief was to design ‘an exceptional feat of architecture, a monumental building of noble simplicity, fulfilling the requirements of Soviet Socialist culture’.45 At the same time, new ambitious programmes were kick-started in 1957 to deal with the critical post-war housing shortage.46 The prefab panel buildings (also known as ‘Khrushchyovkas’) were quick to construct so the process became truly mass scale, but the apartments were very tiny, calling for a completely new approach to interior planning and design. The new apartments had to be filled with furniture and other household items, the new stylistic findings had to be applied to schools, nurseries, cafes, department stores and cinemas. With the hard and dangerous times finally over and income levels slowly rising, the demand for consumer goods began to grow. The industry had to find ways to expand the range of available products. The answer lay in the conversion of the national economy, still dominated by the defence industry. In order to provide more job opportunities and restructure operations, all enterprises were ordered to diversify their production. In this way, military know-how and innovative materials were used for civilian purposes, providing a boost for the consumer industry. The oldest Russian automobile factory ZiL (established in 1916) launched an eponymous refrigerator line. Engineering plants across the country were busy producing soda fountains, the Kalinin machine factory celebrated 50 years of the 1917 revolution with an anniversary tea set, and the Octava factory switched from aviation and U-boat radio components to reel and tape recorders (‘MD 55’ and ‘ML 16’).47 NAMI, the Automotive Research Institute established in 1918, changed its focus to passenger cars (previously trucks, buses and trolleybuses accounted for up to 85% of the entire market) and came up with the ‘Belka’ (squirrel) minicar designed by Vladimir Aryamov and Yuri Dolmatovsky in the mid-1950s (Fig. 19.7).

44

State Committee for Construction (1955), p. 4. Khmelnitsky (2007), pp. 323, 334. 46 The programme was initiated by the Resolution On the Development of Housing Construction in the USSR: Central Committee of the Communist Party, USSR Council of Ministers (1957). 47 Moscow Design Museum (2020), pp. 15, 24, 32, 70. 45

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Fig. 19.7 ‘Squirrel’ (IMZ-NAMI-A50) Experimental Subcompact Car, (1955) by NAMI (Chief Designer: BM Fitterman; Designers: VA Aryamov, YA Dolmatovsky, KV Zeyvang, KV Korzinkin, AE Oxentievich) (source: NAMI archive)

Yet another model was developed jointly with the Irbit motorcycle plant. Unfortunately, none of the prototypes made it to mass production.48 The All-Union Fashion House established back in 1944 created two collections per year, providing nationwide guidelines for the textile industry. Fashion magazines and shows travelled across the country. Porcelain and glass factories updated their range of designs and patterns. Most of the enterprises launched experimental innovation departments. These developments, urged by diversification, mass housing construction, and increase in demand, were additionally boosted by several events that acted as catalysts for the advance of Soviet design. Most importantly, the Iron Curtain that had fallen in 1946, after the end of World War II, was raised for the World Festival of Youth and Students in 1957. Moscow welcomed 34,000 delegates from 131 nations. The event required massive preparations involving graphic designers and product designers that had to think of street decorations, posters, postcards, souvenirs and presentation booklets. New textile patterns featuring big and bright flowers were used for a fashion competition. The festival provided incredible new opportunities for the creative industries: anything labelled ‘souvenir’ was welcomed and approved for production. Innovative products developed for the space and motor industry as well as consumer goods and other designs were showcased at the 1958 Brussels World’s Fair that elaborated on the central theme, ‘Evaluation of the World for a More Humane World’. The Soviet pavilion was a great success. In total, it received 500 awards, 48

Runge (2006), p. 3.

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including the Grand Prix. Andrei Tupolev was awarded for his ‘TU-114’ turboproppowered long-range airliner, the Gorky Automobile Plant brought home the Grand Prix for the ‘Chaika’ and ‘Volga’ models, later exported to over 70 territories. The Minsk automobile plant won the prize for its ‘MAZ-350’ dump truck, and the Altai tractor factory was celebrated for its ‘TDT-60’ crawler skidder while the VEF electrotechnical factory in Riga had designed an award-winning radio. Among the other winners were textile manufacturers from Oryol, Moscow, Lviv and Kaunas (Drobe), chinaware from Dulyovo and Leningrad, hydrofoils from Gorky, to name but a few.49 Essentially, the exhibition was a triumph of the 1920s industrialization. By the 1950s, the country had nuclear power plants, icebreakers and U-boats, missile-carrier aircraft, jet passenger planes and most importantly, it launched the first man-made Earth satellite on 4 October 1957. Three models of the first ‘Sputniks’ were on display with some of their equipment; miniature beeping ‘Sputniks’ were even offered as souvenirs.50 One of the visitors left the following review: ‘This pavilion proves the fact that the will of the proletariat effectively transformed a country considered backward just one generation ago’.51 On a roll, the USSR held several industrial fairs. It dawned upon the country’s leaders that the national industry required a shake-up. Most notably, ‘construction artists’, which was the Soviet alias for designers, had to be integrated into the production process but first of all properly trained. The USSR made official overtures to the US: on 27 January 1958, the two nations signed the first of a series of official agreements on exchanges in the cultural, technical and educational fields. Indeed, it paved the way for a series of research missions and professional visits. On 29 June 1959, a Soviet exhibition was unveiled in the ‘Coliseum’ in New York, showing off advances in science, technology and art and highlighting the achievements of the Soviet space industry. Among the exhibits were models of the then-biggest passenger aircraft ‘TU-114’, an ‘Il-18’ liner, a nuclearpowered icebreaker and a nuclear power plant. In addition, the exhibition focused on everyday life: there was a model of a one-bedroom apartment, some furniture prototypes, and a number of textile, glass and porcelain items. The US responded with a show of the ‘American lifestyle’ in Sokolniki Park in July 1958. People were eager to see the wonders from overseas with their own eyes, especially since legendary figures such as Charles and Ray Eames, Buckminster Fuller and George Nelson were there in person to answer questions through interpreters. The display featured the newest automobiles, kitchen appliances, washing machines and even the first IBM computers.52

49

Pravda (1958), p. 6. Grigoriev (1958), Part 5. 51 Union of Artists of the USSR (1958), p. 17. 52 Manhattan Publishing (1959). 50

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The exhibition became the arena of the historic ‘Kitchen Debate’ between the then US Vice President Richard Nixon and the Soviet First Secretary Nikita Khrushchev.53 The two leaders discussed the advantages of Communist and Capitalist systems, with Nixon emphasizing the accessibility of the displayed technologies for ordinary Americans.54 Khrushchev pointed out that Soviet industries had longer term plans and broader goals, with a focus on the chemical, nuclear, and space industries. The Soviet leaders relied on the acceleration of technological developments. However, when all the Party’s top brass and over three million people visited the American exhibition, it became clear that consumer goods also needed some attention. The diversity and quality of household appliances was a revelation. Clearly, the efforts of just one design bureau, Yuri Soloviev’s AKhB, was not enough for a breakthrough, even with the support of several art construction offices strategically located within various enterprises. Soloviev advocated for an ambitious design development system that would allow the country to put an end to copying and become autonomous. His idea was to train a new generation of industrial designers. In 1957, Soloviev met Sir Paul Reilly, Director of the UK Design Council, who shared his experience of setting up the very first Council of Industrial Design in 1944.55 Its aim was to promote the improvement of design in the products of British industry, thus making them more competitive in global markets. It was active in organizing shows and competitions, developing a system of registration and comparative analysis, and amassing a library and multimedia collection.56 Its most important publication was the Design monthly journal launched in 1949. The British model was followed by other countries: France and Germany set up similar structures in 1951 and Austria joined in 1957. The USSR tried to emulate the UK example as far as possible within its planned economy.

19.4 Design Systems of the USSR, VNIITE, Departmental Research Institutes, Fashion Design Bureau: 1962–1992 The game-changing moment for Soviet design arrived in April 1962: the USSR Council of Ministers passed a resolution on enhancing industrial and consumer product quality through design technologies. Design finally became a legitimate part of any construction process. To make it possible, the Council established VNIITE (All-Union Scientific Research Institute of Technical Aesthetics) helmed by AKhB’s Yuri Soloviev, and launched design-oriented curriculums in 53

The series of impromptu exchanges took place within an installation featuring a model house that, according to the organizers, anyone in America could afford, complete with furniture and all kinds of appliances. 54 A full transcript of the debate is available at: Uporova (2007). 55 Solovyov (2004), p. 112. 56 Design Council. https://www.designcouncil.org.uk/. Accessed 25 Oct 2021.

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three universities (Moscow, Leningrad and Yekaterinburg), for the first time since Vkhutemas/Vkhutein. Soloviev undertook a major reform, building a nationwide system inspired by his many official visits abroad and meetings with international design luminaries. In just a couple of years, VNIITE established 10 branches in major industrial centres across the country: Leningrad (now St. Petersburg), Sverdlovsk (now Yekaterinburg), Khabarovsk, Tbilisi (now the capital of Georgia), Baku (now the capital of Azerbaijan), Yerevan (now the capital of Armenia), Minsk (now the capital of Belarus), Kyiv (now the capital of Ukraine), Kharkiv (also in Ukraine) and Vilnius (now the capital of Lithuania). All of them had their own research facilities and prototype development labs, drawing on the specificity and strengths of their regions. VNIITE trained designers, developed and implemented new techniques and technologies, created vehicles, home appliances, radio and photographic equipment, new materials, athletic equipment, furniture, PRM (people with reduced mobility) solutions, corporate identities, navigation, urban design projects, industrial spaces—in short, everything there was to design. Along with design departments, the Institute had sections specialized in new materials, ergonomics, information technologies and design promotion, design theory and history, research and development.57 There was no market in the planned economy and thus no regular incentives for designers. In order to inspire producers to improve the quality of consumer goods, in 1967, the Institute launched a quality certification programme. Products that met the criteria meant bonuses for their creators and their enterprises. They even brought extra revenue as their prices were higher. That said, it is worth noting that Soviet industrial designers mostly worked out of love for what they were doing. Their wages did not correlate with the scale of production of their creations. They only received bonuses for patented innovations or their implementation. For graphic designers, life was much easier: propaganda commissions like posters or national festivities were well paid. But industrial designers were mostly just hoping to make the world a better place. From 1964, VNIITE produced the Technical Aesthetics monthly journal, developed standards, held educational programmes, conferences and exhibitions,58 and offered consultancy and technical expertise to over 1500 design bureaus and production facilities throughout the country. The Institute was a design trailblazer and trendsetter, working on thousands of projects. Some of the projects were extremely practical, others were so advanced they never came near to being realized. In 1965, VNIITE joined the International Council of Societies of Industrial Designers (ICSID). Soloviev was elected the Council’s Vice President twice (in 1969 and 1973) and served as President from 1977 to 1980. In 1975, VNIITE hosted the prestigious ‘Design for Individual and Society’ international conference. It was the first ever international design event to be held in the USSR. The Minsk branch hosted an ICSID international project workshop with the participation of many Western professionals. In 1972, the Centre for Technical Aesthetics was launched in the very 57 58

Solovyov (2004), pp. 113–126. Sankova and Druzhinina (2018), p. 49.

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heart of Moscow, in the basement of the Izvestia building on Gorky street (today’s Tverskaya). The Centre was focused on exhibitions and educational programmes: it offered professional training for designers and specialists with related areas of expertise. In the 1970s, VNIITE launched the ‘Design Programme’ methodology that promoted design thinking as the key approach to address complex challenges. It was the only way to scale up the solutions and make them available throughout the country. The first enormous undertaking of the team led by Dmitry Azrikan (with Alexander Grashin, Lev Kuzmichev, Dmitry Schelkunov, Ramiz Gusseinov) spanned almost five years (1975 to 1979),59 and involved electronic measuring devices. The programme proposed concepts for every type of product, system or set, including logos, packaging and interfaces. It promoted innovative, ergonomic solutions that laid the groundwork for the optimization of nationwide production and offered a new vision for designers working in the field. The next successful design system project (1977 to 1985) took care of the whole range of home electric appliances: sewing machines, irons, telephones, vacuum cleaners, hairdryers, watches and razors. As a result, their production was optimized through a substantial reduction in the numbers of parts and consumers were offered more options in terms of style, shape, colour and texture. The visual identity of the products was maintained through colour codes.60 VNIITE staff experts provided ‘technical assistance’ to their colleagues working on the ground. For instance, to the end of the 1960s, Valentin Kobylinsky was dispatched to the Ministry of Construction and Mechanical Works to design mobile cranes for mass production, and later on to the Zhodino truck factory to design mining trucks (‘BelAZ-540’, ‘BelAZ-548’, ‘BelAZ-549’) and airfield tractors (‘BelAZ-7421’). The world’s biggest dump trucks were even exported to the West (Fig. 19.8).61

Fig. 19.8 ‘BelAZ-548V’ Dump Truck Train (1964) by Valentin Kobylinsky. Model in 1:25 scale with a variant of the radiator grille (source: collection and archive of the Moscow Design Museum)

Vladimir Runge, Head of Design at the Krasnogorsk Mechanical Works (KMZ), relied on regular consultation with the VNIITE experts in his work on film cameras. Later on they established a procedure whereby VNIITE would provide expert design advice for any product before the launch of mass production. The development of the 59

Azrikan (2000). Azrikan (2000); Sankova and Druzhinina (2018), p. 107. 61 Kobylinsky tells the story in detail in his interview: Kobylinsky (2015). 60

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‘Zenit’ cameras was supervised by the VNIITE from the phase of concept design. The Institute experts provided targeted market research and benchmarking studies of national and international models. Very often their advice was in line with the factory’s own engineering thinking.62 However, most of VNIITE’s experience of cooperation with manufacturers was far from smooth. Many factories took their time in implementing the projects that had been commissioned and fully paid for by the Institute, be they single innovative products or complex solutions. Models and prototypes were shelved, only to be displayed to official delegations as material proof of the factory’s bright future. When asked about the delays in implementation, management would explain that the prototypes were technically imperfect and designed with no consideration of production specifics. These explanations were not true, explained Soloviev, in one of his last interviews in 2012: the research and development teams were required to inspect the production lines before committing to a project. Some of the Institute’s innovative ideas never made it to production lines: the first ever enclosed cab snowmobile (1980, designed by Nikita Kaptelin and Alexander Popov) received high international acclaim but never hit the uncharted lands of the Arctic. Another impressive case of design thinking applied to global challenges was the Secondary Material Resources (VTOMAR) system developed by VNIITE’s Leningrad branch to collect and reuse municipal recyclable waste. The proposed solution took care of every aspect, from the visual identity of containers, dump trucks and worker uniforms to marketing elements encouraging recycling and ideas for recycled products. However, the system was never tested in practice.63 Meanwhile, the Research and Development department was busy with the Soviet version of smart home technology: ‘Project SPHINX’ (Super Functional Integrated Communication System), created by a team led by Dmitry Azrikan (with Igor Lysenko, Marina Mikheeva, Elena Ruzova, Alexei Kolotushkin, Maria Kolotushkina and a number of others). The complex system for home automation included a central memory unit, a remote control, and specialized devices such as flat-panel displays, video phones and an audio system. The plan was to install the SPHINX system in most Soviet homes by 2000. Amazingly, the project was based on existing technologies that had been beta-tested (Fig. 19.9).64 VNIITE was the central coordinating body, but by far not the only design institution. From 1962 onwards, an entire network of research and development institutions and specialized design offices was organized on the basis of the fledgling innovations departments of the 1950s. Basically, every ministry had a specialized design centre of its own, tasked with supervising the development of the industry and providing trendsetting futuristic concepts as reference points.

62

Druzhinina (2018), p. 36. VNIITE (1987), pp. 11–15. 64 VNIITE (1986), pp. 4–6. 63

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Fig. 19.9 Super Functional Integrated Computer System ‘SPHINX’ (1986) by VNIITE (Dmitry Azrikan, Igor Lysenko, Marina Mikheeva, Elena Ruzova, Alexey Kolotushkin, Maria Kolotushkina and others) (source: collection and archive of the Moscow Design Museum)

An 800-strong Institute of Furniture (VPKTIM) was set up in 1962 under the Committee for Wood-Based Industries to coordinate production efforts throughout the country, developing a unified system for standards and quality control. The effort was all the more timely since the massive nationwide building programme required new standard furniture for homes, schools, medical centres and sports facilities. People moved from communal apartments into tiny but individual homes that required new kinds of solutions, preferably modular, built-in or transformable. The Head of Design, Yuri Sluchevsky, introduced a holistic approach that made the furniture easier and cheaper to produce (Fig. 19.10). The next step was to set up specialized production lines: some factories focused on chairs, others on tables or modular furniture or wall units. Many of the Institute’s projects received prestigious awards at national and international exhibitions. The central office had branches in Bryansk, Ivanovo, Karachaevsk and Tula.65 But here, just like in other industrial sectors, promising developments requiring advanced production technologies often failed to reach the implementation phase or were amended and compromised beyond recognition. The Ministry of Consumer Goods had been design-oriented since early Soviet times. There was the All-Union Institute for Consumer Goods Industry and Garment Culture (VIALegProm), the All-Union Knitwear Fashion House, the All-Union Footwear Fashion House, etc. There were also regional fashion houses in the republican capitals of Kyiv, Minsk and Riga where the garment factories were supposed to get their patterns. The trendsetting collections were shown once a year with running commentary by art historians. Some of the collections were then sent on tours across the country. Local VIPs—celebrities or wives of top Party officials—were offered a pick of the collections after the show. In the end, the models were simplified for mass production that had to make do with available materials. Those who were not happy with the results were incentivized to make their own clothes using patterns from fashion magazines.

65

Maistrovskaya (2007).

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Fig. 19.10 ‘Furniture for Small Apartments’ (1957) by Yuri Sluchevsky. Illustration for Technique of Youth magazine, Issue No. 4, 1957 (source: author’s family archive)

In 1966, the Ministry launched a Special Design Office headed by the fashion designer Alla Levashova who used to say: ‘Fashion is different from theatre. It has to go out in the streets’. The only way to create a fashion industry in a Socialist society was to focus on ‘industrial fashion’, producing small ranges of items with a single basic framework and different sizes or colour schemes. Two factories in Moscow embraced this approach to spectacular economic benefit. The resulting garments were inexpensive and accessible to ordinary people. Unfortunately, it was not possible to expand the solution to a national scale (Fig. 19.11). The Special Design Office also had a research and development branch with a laboratory for product lines where senior management would examine the available ranges of products and develop new materials to fit the collections. There were

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specialized sections for shoes, accessories and knitwear that provided consultancy services for textile and garment makers. The trade mark section was responsible for designing the visual identity for all the consumer goods producers of the Soviet Union.66

Fig. 19.11 ‘Warm Coat Made of Bolognese Fabric’ by Alla Levashova for SHKB Legprom 1960-e (source: archive of the Moscow Design Museum)

66

Orlova (1955), p. 18. Fashion Magazine was the official publication of the Ministry of Light Industry of the USSR, which had been published since 1945 and was the main Soviet fashion magazine. In 1988, Lydia Orlova was appointed editor-in-chief, which initiated a relaunch of the publication. Having gathered a new team of journalists, freelance authors and photographers and organized a photo studio for her photography, she turned Fashion Magazine into a fully-fledged publication about fashion.

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While the fashion design office was responsible for the image of the Soviet people, the All-Union Toy Research Institute took care of the education and moulding of children into proper Soviet citizens. From 1946, the Institute was in charge of all toy production in the country as well as historical and theoretical research and development of new materials. In addition, the Institute took care of the psychological, learning, technical and safety aspects of toys which had to be designed in a way to promote ideologically correct education along with entertainment. By the mid1970s, the USSR had thousands of enterprises active in the mass production of toys and the Institute spawned several regional branches. The Soviet Union of Artists established the Foundation of Arts, a production facility that included textile, sculptural, graphic, leather and ceramic works in many regions of the country, in practice, offering a way to create ambitious decorative projects along with limited edition series and thematic souvenirs. In 1954, the Moscow Union of Artists launched PromGraphics, a dedicated studio for logos and corporate visual identities. From 15 May 1962, all the production facilities of the USSR, be they public, national, or cooperative, had to use registered trademarks. The Poster section was responsible for the creation of thematic posters for every national holiday and took care of propaganda designs. The Ministry of Food industry had its own Packaging Institute. In total, these institutes and research centres as well as industrial research and development departments employed hundreds of thousands of professionals. However, the most innovative, daring and imaginative projects in design as well as in technologies could not be realized in the underperforming, outdated production system of the planned economy. The best design proposals remained purely theoretical or had to undergo a gruelling series of adaptations and modifications that meant the original design became unrecognizable. The production facilities had their share of difficulties: adapting or upgrading the existing production lines was difficult and time-consuming, and in the meantime, senior management risked their jobs due to underperformance. As a result, the product ranges remained the same for many years. Millions of identical items were produced by factories using identical equipment and technologies throughout the country. It was only to the end of the 1980s that design became a popular profession. In 1987, after the establishment of the Union of Designers, the word that had been in use among professionals since the 1960s was finally legalized: designers took the place of construction artists, modelling artists, graphic artists, etc. However, the reform coincided with a major political shift: Mikhail Gorbachev initiated Perestroika. The country had a hard time adjusting to the new political course and eventually collapsed to the end of 1991. Total privatization meant that production facilities fell into private hands, research institutes had no more subsidies or commissions, their properties were sold and their archives were destined for landfill. Young designers had nowhere to go on graduation. The design system fell apart along with the country that generated it.

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19.5 Russian Design, New Trends and Developments: 1993–2021 The designers were left with commercial odd jobs. They formed small creative teams and taught in art and design schools. That way, the exchange of knowledge and know-how continued. It was also facilitated by the fact that many of the students or aspiring professionals came from established artistic and designer families and had vivid memories of idealistic kitchen discussions held by their parents and their friends who designed to improve working or living spaces, to make changes that mattered. They tried to pass this approach on to the next generation. Some of the new Russian designers successfully used the best Soviet practices in their work, adapting them for contemporary needs. For instance, Dmitry Mordvintsev was a student of Valery Akopov, the original founder of PromGraphics and later of ABCdesign studio. The corporate identities, catalogues and books they create are an integral part of the Moscow cultural landscape. Stepan Lukyanov, son of the acclaimed poster designer Miron Lukyanov, is well known for the visual identity and posters of the experimental Stanislavsky Electrotheatre,67 as well as subtle and elegant exhibition designs (Fig. 19.12).

Fig. 19.12 ‘Moscow International Film Festival 2011’ and ‘Moscow International Film Festival 2012’ posters by Stepan Lukyanov (source: archive of the Moscow Design Museum)

67

The Electrotheatre is a reinvention of the original Konstantin Stanislavsky theatre in Moscow.

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The Moscow Design Museum has been honoured to work with him from the very beginning. The fashion designer Valeria Andreyanova began her career at LegProm (later renamed Russian Fashion Centre) and still uses the framework developed by that institution as a guiding principle in her collections and commissioned lines. Her works include uniforms for the Russian railroads, the Moscow metro and the Tretyakov gallery. Many internationally acclaimed designers are looking back to Russian heritage, most importantly to avant-garde art and the work of the Constructivists. For instance, Nina Donis, the fashion brand created by Nina Neretina and Donis Pupis in 2000, is inspired by Kazimir Malevich and Vladimir Tatlin, evoking their avant-garde palettes and geometric forms.68 Vadim Kibardin’s award-winning ‘White & White’ LED clock is inspired by the electronic displays of the Soviet metro stations and factories, but the new materials and technologies add a cutting-edge look (Fig. 19.13). His black paper chairs that any user can make from packaging cardboard using Vadim’s free online manual are a variation of textbook classics and the Constructivist approach.

Fig. 19.13 ‘White & White’ LED clock (2011) by Vadim Kibardin (source: Kibardin Design)

Sergei Smirnov of Smirnov Design was definitely inspired by the practices of his father, the Soviet industrial designer Albert Smirnov who designed the first space

68

Nina Donis. http://www.ninadonis.com/ru_collections.html. Accessed 25 Oct 2021.

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camera at KMZ.69 Smirnov Design Studio is an internationally renowned, awardwinning practice. Its many achievements include the disposable medical transportation splint (Red Dot Award, 2013); ‘Divider Bimedico’ (Red Dot Award, 2014); ‘FUBAG INTIG 200 DC PULSE’ and ‘FUBAG IN 226 CEL’ welding machines (iF world design awards, 2019); as well as the ‘Zenit M’ camera, a joint project of KMZ (currently part of the Shvabe Holding) and Leica AG (Good Design Award, 2019) evoking the most popular 1965 ‘Zenit E’ model (Fig. 19.14).70

Fig. 19.14 ‘Zenit M’ Camera (2018) for Shvabe Holding by Smirnov Design Studio (Project Manager: Sergey Smirnov; Project Team: Anna Reshetnikova, Ekaterina Grigorieva, Dmitry Ponomarev) (source: Smirnov Design Studio)

Every project of the studio involves in-depth research that results in solid visual concepts, innovative engineering, optimal technical performance, safety and excellent usability. Some of the success stories include ‘Arena’ stadium chairs, light switches and ‘Barrier’ water purification filters produced in millions of copies. The future-oriented studio collaborates with several Russian startups, including on the production of augmented reality ‘Livemap’ motorcycle helmets, created to help drivers with road navigation and motorcycle control. The interface is projected directly onto the shield so that the driver is not distracted by external devices or gadgets (Fig. 19.15).71 Another experimental project is ‘Veter’, an unmanned aircraft 69

Albert Smirnov patented his invention on his own, without including management or the rest of the team as patent holders, as had been the standard Soviet practice. However, in the end, he had to leave the factory. 70 Smirnov Design Studio. https://eng.smirnovdesign.com/portfolio-item/zenit-m/. Accessed 25 Oct 2021. 71 Unlike many other augmented reality helmets, Livemap is fully compliant with the USA DOT and European ECE 22.05 standards. Smirnov Design Studio. Livemap Helmet is an Intelligent Augmented Reality Helmet. https://eng.smirnovdesign.com/portfolio-item/livmap-helmet/. Accessed 25 Oct 2021.

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with vertical take off and landing capability, a cross between a plane and a drone that uses propellers to get airborne like a quadcopter but relies on wings to fly. The device can be used for cartography, crop monitoring, herd counting and the prevention of poaching.72 Fig. 19.15 ‘Livemap Helmet—An Intelligent Augmented Reality Helmet’ (2021) for Livemap by Smirnov Design Studio (Project Manager: Sergey Smirnov; Project Team: Ivan Shchipunov, Anna Reshetnikova, Dmitry Kovalev, Dmitry Modin, Daniil Morozov, Nikolai Kuzev, Dmitry Ponomarev, Ekaterina Grigorieva, Alex Tsyganko) (source: Smirnov Design Studio)

The founder of Slava’saakyan studio started with futuristic automobile design and has now switched to defence industry projects: the ‘Falkatus’ assault vehicle was developed for the FSB (Federal Security Service) anti-terrorism team, and the ‘Berkut 3 ‘utility helicopter (a product that can be used by civilians as well as the military) that is as relevant for the defence industry today as it was in the 1950s.73 The machine can be used for pilot training, police and forestry monitoring, and medical aid in remote areas. Major state-owned companies and holdings are increasingly active in design collaborations: some opt for project work, others create in-house design departments and seek out internationally trained young professionals. For instance, Evgeny Maslov’s 15 years’ of experience as a designer at BMW was relevant when he was chosen to head the design department of TransMashHolding, the largest national manufacturer of rolling stock. It supplies passenger trains and coaches, metro cars, locomotives, engines and components to railway operators and manufacturers in 30 countries. Its new, forward-looking design vocabulary and brand DNA was created by Italdesign in November 2019 and adapted to national requirements by the 2050.lab industrial design studio. The new concept trains won the Good Design 2020 award.74 72

Smirnov Design Studio. Unmanned Aircraft with Vertical Take-Off and Landing Veter. https://smirnovdesign.com/portfolio-item/unmanned-aircraft-with-vertical-takeoff-and-lan ding-veter/. Accessed 25 Oct 2021. 73 Slava’saakyan. Multipurpose Helicopter. http://www.slavasaakyan.ru/projects/66.html. Accessed 25 Oct 2021. 74 TMX. Development and Production of Rolling Stock for Rail and Urban Rail Transport. https:// www.tmholding.ru/media/events/7409.html. Accessed 25 Oct 2021.

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Rostec, the state corporation for development, production and export of advanced technologies, was launched at the end of 2007, integrating over 700 enterprises across the country with a brand portfolio comprising of KamAZ trucks, AvtoVAZ cars, JSC Russian Helicopters, UralVagonZavod machine company and the Kalashnikov group.75 This concentration of unique technologies and research potential easily propelled Rostec to the leading position in the development of national industry. Along with machine tools, aircraft, armaments and vehicles, the corporation is focused on medical, telecommunications and optical technologies. Some of the enterprises—notably Shvabe Optical Holding which produces over 6,500 high-tech items exported to 95 countries—have in-house research facilities, engineering and design offices. Their production includes defibrillators, arterial scan bracelets, non-contact thermal scanners, neonatal incubators and cameras. The Kalashnikov group, arguably the most well-known Russian brand, is not limited to ‘AK-47’ rifles: it produces high-speed boats, space equipment and electric versions of the iconic ‘IZH-49’ motorcycle dating back to 1951. The range was expanded to include the ‘IZH Pulsar’ and ‘IZH Café’ racers. JSC Russian Helicopters is currently focusing on the ‘M 38’ heavy utility helicopter, a 2015 model that took 34 years to complete. Its more recent innovations include the ‘Ansat’ light twin helicopter and the ‘Ka-62’ medium-class utility helicopter.76 ‘Meteor’, the iconic line of hydrofoil river boats, got the first update in 20 years in August 2021. The cruising speed of 75 km per hour makes it an ideal tourist vessel. The very first passenger hydrofoil was designed by the Alexeev Engineering Bureau in 1959. Over 400 of these fast, manoeuvrable and high-performing boats were shuttling the rivers in Soviet times. The new version has new engines and new integrated control systems with AI elements. ‘We had to design a twenty-first century boat in line with our historic legacy’, says the principal designer Georgy Antsev.77 It took the professional design community over 20 years of persistent effort to ensure its place as an integral part of the production cycle at the national level and to fully appreciate the value of Soviet industrial design heritage. The Moscow Design Museum, so far the only design museum in Russia, launched in 2012 with an ambitious exhibition of Soviet products from 1950 to 1980 in the Manege Central Exhibition Hall. The exhibition attracted over 150,000 visitors. At the moment, the Museum is based within the New Tretyakov Gallery and its permanent exhibition includes highlights of Russian design from 1917 to 2021.78 The institution has an intense public and publication programme (Fig. 19.16).

75

Rostec. About. https://rostec.ru/en/about/. Accessed 25 Oct 2021. RHC Helicopters. https://www.rhc.aero/en/. Accessed 25 Oct 2021. 77 Filippova (2021). 78 Moscow Design Museum. http://moscowdesignmuseum.ru/en/. Accessed 25 Oct 2021. 76

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Fig. 19.16 Photographs of Moscow Design Museum ‘The History of Russian Design 1917–2017’ Travelling Exhibition (2019) in Tumen Museum and Exhibition Complex. The exhibition was shown from 2017 to 2021 in 11 Russian cities (source: archive of the Moscow Design Museum)

A new focus on industrial design was made official by the establishment of the Design and Engineering Council at the Ministry of Industry and Trade on 24 December 2013. In 2018, the MISiS University of Science and Technology in Moscow launched an Engineering Centre for the development of highly complex industrial prototypes. The Centre’s focus areas are aviation, bioengineering, medicine and space technologies. The team was involved in the creation of the Russian Federation crewed spacecraft; the ‘Rus-M’ concept launch vehicle for crewed spaceflights (with Energia Rocket and Space Corporation); several satellites; a prototype twin-aisle aircraft; a new generation space chair; a functional prototype of a lunar rover, and some more earthly projects such as the visual identity and colour schemes for Sukhoi ‘Superjet 100’ planes. The Centre is directed by Vladimir Pirozhkov, a designer with 20 years’ experience at Citron and Toyota.79 Since 2020, the city of Moscow has had its own Creative Industries Agency, AKI, aimed at developing the creative economy and infrastructure. Russian designers are visible at international expos and professional exhibitions. In spite of all the vicissitudes of history, Russian design is still following its own distinctive path instead of treading in Western tracks. Structurally, it is developed along several lines: some designers establish their own small studios with fully integrated production, others prefer project-based work with companies and startups. Graphic design, advertising, fashion and interior design adapt to the rules of the market economy, but when it comes to defence or the space industry, vehicles or heavy industries, state subsidies and support programmes are the only way to progress. State holdings and corporations often prefer in-house creative offices. But wherever they are employed, designers are working towards a strong national identity based on history and an artistic legacy, renounced and repudiated so many times over the course of the twentieth century. The continuity of traditions and preservation of cultural codes are key components of today’s design industry.

79

Varikhanov (2017).

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References Administration of the USSR Council of People’s Commissars (1920) Collection of Laws and Directives Issued by the Government of the Workers and Peasants, 1943. Issue No. 98, 19 Dec 1920. Moscow, pp 773–774 Azrikan D (2000) VNIITE, Dinosaur of Totalitarianism or Plato’s Academy of Design. Design Issues, Nov 2000, pp 70–71 Babaev P (1931) What Poster Do We Need? Journal of the Association of Artists of the Revolution ‘For Proletarian Art’. Issue No. 1, pp 8–12 Central Committee of the Communist Party (1932) On the Restructuring of Literary and Artistic Organizations. Constructing the Party. No. 9, p. 62 Central Committee of the Communist Party, USSR Council of Ministers (1957) On the Development of Housing Construction in the USSR. Resolution of 31 July 1957 N 931. Available via Kodeks. https://docs.cntd.ru/document/765714291. Accessed 25 Oct 2021 Druzhinina O (2018) Vladimir Runge: from ‘Horizon’ to ‘Zenith.’ Moscow Design Museum, Moscow Filippova L (2021) The First Hydrofoil Moto Ship Meteor in 20 Years was Launched. 3 Aug 2021. Available via Channel One. https://www.1tv.ru/news/2021-08-03/410810-na_vodu_spuschen_p ervyy_za_20_let_teplohod_meteor_na_podvodnyh_krylyah. Accessed 25 Oct 2021 Fyodorov-Davidov AA (1928) The Meaning and Purpose of the Exhibition. Soviet Everyday Life Textiles. Exhibition Catalogue. Glaviskusstvo, Moscow Grigoriev R (1958) Brussels – 1958 (documentary film) Heritage Art Gallery (2018) Postconstructivism or The Birth of Soviet Art Deco: Paris — New York – Moscow. Heritage Art Gallery, Moscow Ivanovo-Voznesensk (1923) Ivanovo-Voznesensk Textile Trust: Activity Overview During 1 Nov 1921 – 1 Jan 1923. GAIO Kasheev LB, Reminsky VA (2000) ZiS cars in the Red Army. In: Military Vehicles. Kirov Khmelnitsky DS (2007) Stalin’s Architecture: Psychology and Style. Progress-Tradition, Moscow Kholmyansky LM (1985) Design. Textbook. Prosveshenie, Moscow Kobylinsky V (2015), Monologue, June 2015 (Part 3). http://www.gruzovikpress.ru/article/2568kobylinskiy-monolog. Accessed 25 Oct 2021 Kotelnikov V (2004) The Era of Giants. Aviamaster. Issue 6, pp 20–22 Lavrentiev AN (2007) History of Design. Gardariki, Moscow, p 138 LEF (1923) Who Is LEF Warning? LEF. Issue No 1, Mar 1923 Maistrovskaya MT (2007) RNIFDT/VPKTIM (The Russian National Institute of Furniture Design and Technology) — 1960–1980 — the Centre for the Domestically Produced Furniture Design (Organization, Exhibitions, Competitions, Methodologies). https://stroganov-academy.org/ima ges/content/nauka_vestnik/vestnik-articles/vestnik-2-2-2020/m-t-majstrovskaya-vpktim-19601980-gg-centr-proektirovaniya-otechestvennoj-mebeli-organizaciya-vystavki-konkursy-met odiki.pdf. Accessed 25 Oct 2021 Manhattan Publishing (1959) The American National Exhibition in Moscow. Manhattan Publishing, New York Meyerovich MG (2009) Albert Kan in the History of Soviet Industrialization. Available via Archi.Ru. https://archi.ru/elpub/91506/albert-kan-v-istorii-sovetskoi-industrializacii. Accessed 25 Oct 2021 Mikhailov SM (2003) Design of Industrial and Postindustrial Society. In History of Design, Volume 2. Union of Russian Designers, Moscow Moscow Design Museum (2020) Diversification: 60 Years of History. Moscow Design Museum, Moscow Orlova L (1988) She Was Ahead of Her Time. Season Models 1988. Supplement to Fashion Magazine. No 1, p 18 Pravda (1958) More than 500 Awards at the World’s Fair in Brussels. Pravda. Issue 278, 5 Oct 1958, p6

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RIA Novosti (2017) Gorky Automobile Plant. Available via RIA Novosti. https://ria.ru/20170101/ 1484653454.html. Accessed 25 Oct 2021 Runge VF (2006) History of Design, Science and Technology. Architecture, Moscow Sankova A, Druzhinina O (2018) VNIITE. Discovering Utopia: Lost Archives of Soviet Design. Unit Editions, London Snitko AV (2007) Workers’ Settlements of Historical Industrial Cities of the Centre of Russia. Housing Construction. Issue 12, p 11 Solovyov YB (2004) My Life in Design. Union of Russian Designers, Moscow State Committee for Construction (1955) Central Committee of the Communist Party and USSR Council Resolution on Eliminating Excesses in Design and Construction. Moscow Studio Number 12 (1936) Works of Architectural Workshops, Studio No. 12, Volume II. Moscow 7th Printing House, Mosoblpoligraf Union of Artists of the USSR (1958) USSR Decorative Art. Issue 12, Dec 1958 Uporova E (2007) Khrushchev and Nixon. Kitchen debate, 1959 + Goodbye capitalists! Available via Podstation (Wayback Machine, internet archive, 13 Oct 2013) http://web.archive.org/web/ 20131028195442/, http://www.podst.ru/posts/28/. Accessed 25 Oct 2021 Varikhanov S (2017). World Class Engineering and Industrial Design. Available via Kommersant. https://www.kommersant.ru/doc/3343847. Accessed 25 Oct 2021 VNIITE (1986) The ‘Vtomar’ Experiment in Action. Technical Aesthetics, Issue 7, pp 4–6 VNIITE (1987) “SPHINX” — Radio Electronic Equipment of the Desired Future. Technical Aesthetics, Issue 9, pp 4–6 Yasinskaya IM (1977) Soviet Textiles 1920s–1930s. Khudozhnik RSFSR, Leningrad

Alexandra Sankova is the General Director and founder of the Moscow Design Museum (www. moscowdesignmuseum.ru), which was established in 2012 with the mission to collect, preserve, and promote the design heritage of Russia. Alexandra Sankova received her Master of Arts degree in graphic design from the Stroganov University of Design and Applied Arts. She is currently curating exhibitions and working on her Ph.D. research on the role of the Centre for Technical Aesthetics in shaping the Soviet design community from 1977 to 1992. Alexandra’s articles on the history of Soviet and Russian design have appeared in leading publications in Russia and beyond.

Chapter 20

History of Design Protection in Russia Natalia Kapyrina

Abstract This chapter provides an overview of the history of design protection in Russia, with a focus on industrial design protection since the first industrial design Act of 1864. This overview shows that, throughout the deep economic and political transformations of the twentieth century, successive legislators pursued a variety of objectives, such as securing private investment, enhancing workers’ rights, raising consumers’ standard of living, regulating competition on the mass-market and increasing trade volume. The outcomes were not always satisfactory, but they did provide life-size experiments that involved different rationales and forms of design protection in various political and economic environments. Today, design is protected under several chapters of Part IV of the Civil Code, in particular the provisions on industrial design and copyright.

20.1 Introduction In the past 150 years, the journey of the legal protection of industrial designs in Russia has been all but linear.1 Separate protection for designs and models was introduced at the outset of the Industrial Revolution, refashioned after the October Revolution, abolished for about three decades, reintroduced to serve the goals of the socialist economy, adapted to the market economy right before the fall of the Soviet Union and fine-tuned ever since.

1

At the time of writing, it has been almost 160 years, since the first industrial design Act was adopted in 1864. In April 2014, the Federal Institute of Industrial Property Service (FIPS) organized an international conference to celebrate this anniversary and published valuable bibliographic references, which were very helpful when writing this chapter, in particular: Federal Institute of Industrial Property Service (2014). N. Kapyrina (B) Department of Integration Studies, Moscow State University of International Relations (MGIMO University), Moscow, Russia e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_20

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At every legislative stage,2 industrial design protection was the result of an important theoretical effort and was aimed at supporting great achievements in industry and the economy. However, in practice it usually fell short of expectations due precisely to those industrial and economic factors. Along the way, industrial design protection was questioned again and again, in particular, its relationship with copyright protection, and whether it should be coupled with utility model protection, or simply merged with other patent rights. Depending on the political context, various actors—including, merchants, manufacturers, inventors and authors, the State itself—received more or less acknowledgement, legal protection, rights and powers. Before sketching out this chronology, a short deviation through linguistics is necessary to better grasp certain legal meanings. In literature on design theory and methodology, it is emphasized that design has a ternary nature: first, it is the planning process; second, it is the preliminary results embodied in prototypes, or drawings; third, it is the finalized product.3 The legal term designating industrial design protection since 1924 is firmly attached to the second meaning: ‘ppomyxlenny obpazec’/‘promyshlennyj obrazec’ means ‘industrial sample’ or ‘specimen’. This expression conveys the legal meaning of such a form of protection, which only concerns the result of intellectual activity, not an abstract idea, a method or the commodity itself. An idea is too elusive, and the product itself has an independent value, utility and existence.4 A similar observation applies to another word that persists through various definitions of the subject matter of protection from 1965 on: the substance of a design is equated with the term ‘pexenie/reshenie’.5 This noun may be translated as both ‘solution’, as in the ‘technical solution’ (to a technical problem) of a patent; and as ‘decision’, moving closer to the copyright concept of an ‘author’s own choice’ (originality). Apart from a common reference to the result of an intellectual activity, the ambiguity or hybridity6 of the subject matter of design protection is also evident when looking at various other terms—such as ‘artistic’, ‘art-engineering’ or both, etc.—that qualify the ‘solution’ or ‘decision’.7

2

In this chapter, the following terms are used to describe laws: ‘Decree’ when the law is revolutionary decree of a legislative nature passed during the period 1919 to 1922; ‘Act’ when the law was adopted following a legislative process; ‘Regulation’ when adopted by the Government without a legislative process. 3 Runge and Senkovsky (2003), p. 5. 4 A slightly different approach was presented in Shershenevich (2003 [1908]), §61, p. 25: ‘the drawing and the model are inseparably related to the article. Hence there may be no distinct right on the drawing or model itself. As a consequence, the right to the drawing or model may be acquired only by the manufacturer, who produces the article, not the inventor who, through his intellectual capacities, his artistic taste has created this drawing or model’. As will be further explained, this rationale was central in the industrial design Act of 1864, but was later abandoned. 5 See Table 20.1. 6 Pérot-Morel (1968), p. 16; Reichman (1990), p. 10; Reichman (1994), pp. 2432–2558. 7 See Table 20.1.

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Table 20.1 Overview of the History of Industrial Design Protection (source: Author’s own) Date

Law

Terminology

Subject matter

Criteria for protection

1864

Act on the Right of Property in Industrial Drawings and Models

Industrial drawings and models [fabrichnyïe risunki i modeli]

Designs and models, intended to be reproduced in industrial, manufacture and handicraft articles

Novelty (no examination)

1924

Act on Industrial Designs (Drawings and Models)

Industrial designs (drawings and models) [Promyshlennyïe obrazcy (risunki i modeli)]

Artistic-industrial Novelty (no drawings intended for examination) reproduction in corresponding articles, that are new in appearance or shape Models that are new in appearance, shape, mechanism or configuration, intended for industrial or artisanal production, trade, craftsmanship, home use or other use for another type of occupation

1965

Regulation on Industrial Designs

Industrial designs

Solution of an article

Novelty, industrial applicability, artistic character, unity of technical and aesthetic qualities (examination)

1981

Regulation on Industrial Designs

Industrial designs

Art-engineering solution of an article, defining its outer appearance

Novelty, industrial applicability, requirements of technical aesthetics (artistic and informational expression, unity of composition, rationality of the form, ergonomics, quality of production), positive effect (examination)

1991

Act on Industrial Designs

Industrial designs

Artistic and art-engineering solution of an article, defining its outer appearance

Novelty, industrial applicability, originality (examination) (continued)

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Table 20.1 (continued) Date

Law

Terminology

Subject matter

Criteria for protection

1992

Patent Act

Industrial designs

Art-engineering solution of an article, defining its outer appearance

Novelty, industrial applicability, originality (examination)

2003

Patent Act

Industrial designs

Art-engineering Novelty and solution of an article, originality produced by industry (examination) or craftsmanship, defining its outer appearance

2014

Part IV of the Civil Code of the Russian Federation (Ch 72 on patent rights)

Industrial designs

Result of intellectual Novelty and activity in the area of originality design/solution of the (examination) outer appearance of an industrial or a handicraft article

A quick overview of the terms used in setting the protection requirements also reinforces the impression of design’s multifaceted nature8 and nonlinearity.9 Probably less evident is the way in which these terms and definitions reflect the political and economic context at the time the regulations were adopted: • pre-revolutionary ‘fabpiqnye picynki i modeli’/’fabrichnyïe risunki i modeli’ [‘drawings and models’] is directly transposed from French legal terminology (‘dessins et modèles de fabrique’),10 which reminds us of the important contribution of French entrepreneurs and inspiration in French legal thought; • post-revolutionary ‘ppomyxlennye obpazcy (picynki i modeli)’/‘promyshlennyïe obrazcy (risunki i modeli)’ [‘industrial samples (drawings and models)’] includes elements from the previous scheme as well as some changes, ‘sample’ is closer to the German ‘Muster’; • later the subject matter of design protection, referred to as ‘xydoectvennokonctpyktopckoe resheniïe’/‘hudozhestvenno-konstruktorskoe resheniïe’ [‘art-engineering solution’], relates to the term substituting ‘design’ in the official discourse of the 1960s (‘xydoectvennoe konctpyipovanie’/’khudojestvennoïe konstruirovanie’). It has been reported that artists, art historians and philosophers preferred the term ‘xydoectvennoe ppoektipovanie’/‘hudozhestvennoe proektirovanie’ [‘artistic planning’], and very few other authors directly refer to ‘dizan/dizaïn’.11 8

Suthersanen (2000), §6-003. See Table 20.1. 10 For a historic account in English, see Chapter 14 by Professor Tsukasa Aso; Kahn (2018). 11 Runge and Senkovsky (2003), p. 80; Alekseeva (2006a), p. 27. See, however, VNIITE (All-Union Scientific Research Institute of Technical Aesthetics) (1977)—a very official scientific publication 9

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Both domestic societal changes and twists in foreign affairs had a strong influence on industrial design protection. Indeed, it is difficult to find any socio-legal mechanism that in the past 150 years was not conceived or operated as a function of Imperial, Soviet and then Russian politics. Despite many challenges, a number of forms of design protection have been tested in various economic and political environments. This chapter provides a chronological overview of the history of design protection in Russia, from the early beginnings of the market economy to the centralized planned economy and back again.12

20.2 1864–1917: Imperial Legislation on the Eve of the Industrial Revolution The first legislation providing a property right to a merchant or manufacturer for the particular appearance of goods was introduced in 1864 under the reign of Alexander II (1818–1881).13 During his reign (1855–1881), the Emperor undertook extensive structural social, political, judicial and economic reforms. In 1864, the degree of mechanization and urbanization in Russia was relatively low,14 but the emancipation of serfs that occurred three years earlier increased the transfer of the workforce from rural and small-scale artisanal production to factories.15 Patent-like legislation that applied to a range of inventions had existed since the Manifesto of 17 June 1812 on Privileges on Various Inventions and Discoveries in Arts and Crafts,16 which was that uses both ‘complex art-engineering’ and ‘design’. From here, all terms will be translated as ‘design’, which is the most appropriate translation. In Table 20.1, the differences are artificially preserved. 12 It is impossible to provide an accurate account of the various economic and political developments in this chapter. For an overview, see Mau and Drobyshevskaya (2013). 13 Act on the Right of Property in Industrial Drawings and Models of 11 July 1864, Complete collection of laws of the Russian Empire (1864), 1867, vol. XXXIX No 41044, pp. 579–581. From 1896, this Act was incorporated into the Ustav o promyshlennosti [Industrial Code] of the Svod zakonov Rossiyskoy Imperii [Legislative Code of the Russian Empire], vol. XI pt 2, Ch. 3, arts 199–209. The Act was included in the part on privileges and benefits, together with provisions on patents for inventions, whereas trademarks were located in a part on manufacturers’ rights and duties. 14 It is worth noting that at the Great Exhibition of 1851 in London, the Russian Empire presented an ingenious and unique stone mosaic table and a wardrobe. Meanwhile, iron casting factories were built in the Ural region starting from the eighteenth century, and the first national industrial exhibition took place in Saint-Petersburg in May–June 1829 gathering 326 participants, showing 4,041 exhibits. In the same year there were 5,244 factories and manufacturers in Russia: Korepanova (2007), pp. 55–56. It is generally acknowledged that modernization and industrialization resulted from the reforms of 1860–1870, after Russia lost the Crimean War: Korepanova (2007), p. 90. 15 For the debate on the consequences of the abolition of serfdom, see Markevich and Zhuravskaya (2018). 16 Manifesto of 17 June 1812 on Privileges on Various Inventions and Discoveries in Arts and Crafts, Complete collection of laws of the Russian Empire vol. XXXII (1812–1815), Saint-Petersburg, 1830. No 25143, pp. 355–356.

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updated in 1833.17 According to some authors, this legislation covered what could be considered as design subject matter.18 The 1864 Act on industrial drawings and models was amended to various extents, while keeping its main features, in 1896, 1900 and 1913. Thus, while industrialization was at its early stages, the Russian Empire offered a type of modern protection for two-dimensional and three-dimensional designs for the benefit of manufacturers: they could obtain property rights19 in designs created by their workers or otherwise acquired from ‘inventors’.20 The extent of the exclusive right was particularly broad: protection was granted against the reproduction of the whole design, its parts, be it in larger or smaller dimensions, and in any other material. The 1864 Act offered one to ten years of protection, at the applicant’s choice. The form of protection was a transferable exclusive right granted on a ‘first come, first served’ basis by applying to the Department of Manufactures and Trade of the Ministry of Finance (Saint-Petersburg) or to the Moscow branch of the Manufacture Council,21 which was a consultative body also in charge of patent examination. No examination of designs was conducted. However, in the case of a dispute over validity or infringement, the Department or Council was in charge of a preliminary assessment, and all legal issues related to remedies and sanctions were dealt with by the courts. The main registry was kept in Moscow, where anyone could inspect designs a year after they were applied for, unless confidentiality for up to three years was requested by the applicant. To ensure effective notification of the public, a standard sign indicating the fact of registration, the holder and the duration of the protection was required to be attached to all goods to which the protected design was applied. At a time when industry and art were institutionally and technologically separated,22 the 1864 Act drew an arguably clear line between copyright and industrial 17

Patent legislation had reached a significant degree of sophistication by the end of the century with the Act on Privileges for Inventions and Improvements of 20 May 1896. 18 Alekseeva (2006a), p. 7. 19 The nature of these rights (property or exclusive right) was debated at that time, notably by Pilenko and Shershenevich, see reports in Krasheninnikov (2019) and Murzin (2019). 20 Act on the Right of Property on Industrial Drawings and Models of 11 July 1864, Ustav o promyshlennosti [Industrial Code], vol. XI part 2, Ch. 3, art. 199, comm. 2, p. 1221 (1864 Act), comment 2 to art. 1. See Shershenevich (2003 [1908]), §61, p. 25, who continues: ‘In reality drawings and models are made by specific workers, the so-called draughtsmen or ornamentalists. Active in workshops at factories or plants, these persons, provide the result of their labour, based on employment contracts, this labour resulting in creating a drawing or design. Our law strongly denies worker’s rights in their inventions, recognising only the right to it of the owner of the factory or plant’. Shershenevich refers to justifications provided by Vidari (1877–1880), pp. 154–155. 21 Later, in Saint-Petersburg the application process was taken over by the Ministry of Industry. As was the case in several Western European countries, registration was decentralised from the outset to be closer to the regions where the factories were located. Moscow, the old capital, was an important city for trade and industry, especially in textiles, and surrounded by industrial regions. 22 Only later did the new Russian industrial elite pioneer collections of European and Russian avantgarde art, promoting a local ‘modern’ style (such as ‘Jugendstil’ or ‘Art nouveau’), a movement that was to be a game changer for the merging of art and industry and for design protection.

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design rights. It contained the following rule: a pre-existing work of art did not destroy the novelty of a drawing or model applying it (e.g. a tapestry or wallpaper made from a painting).23 In this situation, the manufacturer did not infringe the author’s right. Artistic property was protected under copyright in Russia along with scientific and literary works.24 It was clear that, due to the limited ability to reproduce works of art, in contrast to books,25 additional investment was needed to apply them to industrial articles. A detail of no lesser importance is that the 1864 Act was particularly favourable to foreigners: it did not draw a distinction between foreigners and nationals,26 and it also expressly stated that novelty was destroyed if the design represented an imitation or a copy of a foreign product in commerce.27 Later in 1913, legislation offered a priority period of four months if bilateral agreements were signed with Russia.28 This all came to an end in 1917, when all Imperial laws were repealed.

20.3 1922–1936: A Short Period of Post-Revolutionary Legislation Following the 1917 Revolutions, a Decree of 1919 proclaimed that all useful inventions could enter the public domain if the Highest Council of the People’s Economy decided so, after examination by the Committee on Inventions Affairs.29 Heifetz contrasts the logic of the Decree of 1919, celebrating the public domain, to the postrevolution French Patent Act of 1791, which affirmed the right of the inventor.30 Under art. 4 of the 1919 Decree, inventor’s rights were guaranteed to the extent of attribution and remuneration. Article 3 of the Decree provided that inventions could enter the public domain only based on an agreement with the inventor or through a 23

1864 Act, comment 3 to art. 5. Copyright in Russia originated in legislation on censorship, where reference to literary, scientific and art works appeared in 1826. Thus, the production and commercialization of drawings, engravings, and other artistic or technical visual two-dimensional works were regulated before the introduction of copyright in the Collection of Civil Laws (vol. X, art. 420) in 1857, followed by the first modern Copyright Act of 20 March 1911. 25 One author, in particular, questioned the specificity of artistic property within other intellectual property rights: Kantorovich (1928), p. 220. He noted that in some Western countries protection for works of art was granted under specific legislation. 26 1864 Act, comment 1 to art. 1. 27 1864 Act, comment 1 to art. 5. 28 The only such agreement before the Revolution seems to have been the 1912 agreement with Japan: Heifetz (1930), p. 196. We are yet to find additional information on this agreement. 29 Decree of the RSFSR Council of People’s Commissariat of 30 June 1919 ‘On Inventions’, Sobranie uzakoneniï RSFSR [Collection of Russian Soviet Federative Socialist Republic (RSFSR) Acts], 1919, No 34, art. 341, Izvestia VTSiK No 144, 04.07.1919; Heifetz (1930), p. 42; Krasheninnikov (2019), p. 13; Alekseeva (2006a), p. 10; Gavrilov (1969), p. 50. Authors mention that models (utility models) were protected under this Act according to the General Instruction to the Decree. 30 Heifetz (1930), p. 42. 24

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remunerated compulsory licence. This new focus on balancing public interests with the need to remunerate the natural person (the author, the inventor) would become a leitmotiv of USSR intellectual property (IP) legislation. Soon after the period of the ‘War Communism’, the implementation of the ‘New Economic Policy’ (NEP) from 1921 resulted in the revival of the market economy for small enterprises, while the proletarian State kept control of medium and large enterprises. During this period of reconstruction and relative prosperity, intellectual and industrial property rights were reintroduced, not without opposition and adaptation to the new social economic reality. At first, rights relating to inventions, trademarks, industrial designs and models, as well as copyright, were listed as rights in rem, directly after the right to property and the right to bail, in the Decree of 22 May 1922 on the basic private economic rights recognized in the Russian Soviet Federative Socialist Republic (RSFSR), protected by its laws and enforced in RSFSR courts. Detailed legislative acts on patents for inventions and on industrial designs were adopted in 1924.31 Regarding patents on inventions, the main difference from former bourgeois legislation was the proclaimed aim to cease worker expropriation on behalf of their employers and to curtail heavy reliance on foreign investment. The new rules benefited the actual inventor, not the first applicant; the patent was subject to a working requirement and gave no monopolistic exclusive rights; while a compulsory licence was aimed at applying inventions in State-owned industrial facilities.32 While inspired by these new ideals, the 1924 Act on Industrial Designs (Drawings and Models) (1924 Act) kept some remarkable features of the Imperial law.33 In contrast to the law protecting inventions, in which the applicant had to be the inventor or else face criminal sanctions, industrial designs relied on the presumption of authorship of the first applicant. Also, prior contractual transfer of a designers’ rights to their employers was facilitated, whereas for inventions many safeguards were put in place to empower workers.34 Furthermore, the 1924 Act did not impose any working requirement. Broad protection was also maintained—its scope covered all possible imitations, including copies in different dimensions, colours and even industrial sectors. Only three-dimensional reproductions of two-dimensional designs were not covered. In addition, foreigners were not completely excluded: they could benefit from protection 31

Act on Patents for Inventions, adopted by the Ordinance of the Central Executive Committee and of the USSR Council of People’s Commissariat of 12 September 1924, Sobranie zakonov SSSR [USSR Collection of Laws], 1924, No 9, art. 97; Act on Industrial Designs (Drawings and Models), adopted by the Ordinance of the Central Executive Committee and of the USSR Council of People’s Commissariat of 12 September 1924, Sobranie zakonov SSSR [USSR Collection of Laws], 1924, No 9, arts 98. 32 Heifetz (1930), p. 45 ff. 33 Ordinance of the Central Executive Committee and of the USSR Council of People’s Commissariat of 12 September 1924 on Industrial Designs (Drawings and Models), Sobranie zakonov SSSR [USSR Collection of Laws], 1924, No 9, art. 98, pp. 142–144; Vestnik (Bulletin) of the Committee on Inventions Affairs, 1924, No 1, pp. 21–24. This Ordinance was supplemented by two Instructions. 34 Heifetz (1930), p. 146.

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and from a priority right based on bilateral agreements. Such agreements were signed with Germany in 1925 and with Norway in 1928.35 However, in contrast to the pre-revolutionary legislation, from 1924, novelty was assessed on a national basis. Thus, although after the Revolution many legal instruments had to be developed from scratch, there was some continuity that can be explained by the educational background of the new lawmakers and legal elites, as well as by the tradition of comparative legal research.36 Another specific feature of the 1924 Act was that it covered two types of subject matter, offering the same protection to ‘normal’ industrial designs and to utility models, reminiscent of the German distinction between Geschmacksmuster and Gebrauchsmuster.37 The former was defined as ‘artistic-industrial drawings, new in type or form, intended to be reproduced in the corresponding articles’ and concerned both two-dimensional and three-dimensional shapes.38 There was no examination beyond formal requirements by the Committee on Inventions Affairs, where designs were registered. Subsequent practice of this Committee in relation to invalidity established that ideas, methods and non-movable objects were excluded from protection.39 Therefore, applications for a modular game made of cubes, a house project and a melting furnace were rejected.40 Protection was granted for an initial period of three years which could be extended up to 10 years (three, then four years), provided a fee, established on a progressive scale, was paid by the applicant. Heifetz underlines that, compared to patent rights, industrial designs rights applications were very limited: from 1924 to 1929 roughly 50,031 inventions were registered, while only 2,308 designs were registered.41 Heifetz also shows that litigation relating to both the infringement of patent rights and design rights was very limited at this time.42 A new bill for the protection of industrial designs, was discussed in 1931, but was never adopted.43 Gavrilov estimates that from 1924 to 1936, only 6,394 designs were registered; and shows that, in 1934–1935, applications were predominantly filed by private persons, not by State entities or foreign applicants.44

35

Gavrilov (1969), pp. 59 and 63 ff. It is very perceptible when reading both Kantorovich (1928) and Heifetz (1930). 37 Heifetz (1930), p. 144 ff. Utility models were already protected under the 1919 Patent Decree: Gavrilov and Dubovski (1970), p. 9. See also Table 20.1 for the definition of both objects. 38 ‘Utility models’ were defined as ‘models that are new in type, form, construction or configuration, and intended for industry, craft production, commerce, handicrafts, households and, in general, for all types of occupations’. 39 Heifetz (1930), p. 146; Gavrilov and Dubovski (1970), pp. 9–10. 40 Gavrilov and Dubovski (1970), pp. 9–10. 41 Heifetz (1930), p. 148. Heifetz suggests that one of the reasons for this was that registration for inventions was free, whereas a fee was applied for industrial designs. 42 Heifetz (1930), p. 205 ff. 43 Gavrilov (1969), p. 61; Alekseeva (2006a), p. 13. Gavrilov describes this proposed legislation which contemplated offering, on an applicant’s choice, either 10 years’ protection as an exclusive right or an unlimited author’s right. 44 Gavrilov (1969), p. 65. 36

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In parallel to these developments in the area of industrial design protection, the NEP legislators made significant efforts to promote creative industries and to adapt copyright to the new social and economic realities after the first post-revolutionary period in which the public domain was the primary focus.45 The post-revolutionary period at the beginning of the 1920s saw an incredible surge in creativity: avant-garde approaches and techniques flourished, promoted by the ideas of freedom, equality and social progress. Utility and accessibility prevailed over sophisticated aristocratic and decorative bourgeois tastes. In 1920, Vkhutemas (from 1926, ‘Vkhutein’) replaced the old Academies,46 erasing the boundaries between ‘pure’ and ‘applied’ art through innovative multi-disciplinary education programmes, often compared to the German Bauhaus, which had opened in 1919. The foundation for new copyright protection was established by a legislative Ordinance of 30 January 1925 relating to author’s rights (1925 Copyright Act),47 amended on 16 May 1928 (1928 Copyright Act).48 In both laws, the list of protectable works included drawings, paintings, sculptures, architecture and graphic works but not applied art. In the 1925 Copyright Act, the ideas of pre-revolutionary legislation were re-employed: applying a work of art or photography in industry did not infringe an author’s rights (1925 Copyright Act, art. 4(i)). Starting with the 1928 Copyright Act, such use became subject to remuneration at a pre-established rate to be received by the author (1928 Copyright Act, art. 9(p)). Thus, protection could be secured for both a work and the industrial design applying the work, but an author could not get double remuneration if they decided to register their work as a design for themselves.49 Despite this provision, many questions remained unanswered and Kantorovich is critical of the fact that neither the 1925 Copyright Act nor the 1924

45

Among others, Decree of the RSFSR Council of People’s Commissioners of November 26, 1918 ‘On Recognition of Scientific, Literary, Music and Artistic Works as Public Domain’, Sobranie uzakoneniï RSFSR [RSFSR Collection of Acts], 1918, No 86, art. 900. See Heifetz (1930), p. 145; Alekseeva (2006a), p. 14 ff. 46 See Chapter 19 by Alexandra Sankova. 47 Act on the Foundations of Authors’ Rights, adopted by the Ordinance of the USSR Central Executive Committee and of the USSR Council of People’s Commissioners of 30 January 1925, Sobranie zakonov SSSR [USSR Collection of Laws], 1925, No 7, art. 66. At the level of the RSFSR, it was followed by the adoption of the Decree of the RSFSR All-Russian Central Executive Committee and of the RSFSR Council of People’s Commissioners of 11 October 1926, On Author’s Right, Sobranie uzakoneniï RSFSR [RSFSR Collection of Acts], 1926, No 72, art. 567. 48 Ordinance of the USSR Central Executive Committee and of the USSR Council of People’s Commissioners of 16 May 1928 Introducing the New Edition of the Foundations of Authors’ Rights, Sobranie zakonov SSSR [USSR Collection of Laws], 1928, No 27, art. 245; followed by the adoption of the Ordinance of the RSFSR All-Russian Central Executive Committee and of the RSFSR Council of People’s Commissioners of 8 October 1928 On Author’s Rights, Sobranie uzakoneniï RSFSR [RSFSR Collection of Acts], 1928, No 132, art. 861. 49 Gavrilov and Dubovski (1970), p. 10.

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Act on industrial designs provided an answer to the crucial question of the distinction between artistic works and designs.50 Soon enough, both forms of protection appeared to be of little use: the NEP was abolished, the first Five-Year Plan commenced in 1928, and collectivization began in 1929. Industrial rights lost their function as the economy turned more and more into a State monopoly and centralized production.51 This transformation, which changed both production and consumption patterns, is very clear when we look at trends in industrial design applications. After a rise from 223 applications in 1924–1925 to 1,324 applications in 1929–1930; registration numbers decreased from 1933 by more than a half, in 1935, falling to 452 registrations.52 This decline, which cannot be explained simply by the gap between application and registration numbers, can be partly explained by the introduction of the 1931 Inventor’s Rights Act covering ‘technical improvements’, a very broad subcategory of patentable subject matter, that included some utility models.53 Heifetz also explains that applications for inventions were free of charge, while a fee had to be paid for designs.54 Furthermore, in the 1930s, the State encouraged large-scale industrial projects based on a symbiosis between design and engineering, such as aeroplanes, trains and such complex infrastructure endeavours as the Moscow Metropolitan, which began operation in 1935.55 Therefore, in 1936 industrial design protection came to an end, and the 1924 Ordinance was simply repealed.56 Industrial design protection was not required for such types of industrial products, especially since no market competition was encouraged, and both the internal and external demand for diversified goods was low.57 Finally, copyright rules were sufficient for the remaining goods which included textiles, graphic design and architectural projects.58 The 1940s and 1950s witnessed World War II, reconstruction and reindustrialization. It was not until the early 1960s that industrial design protection came back on the legal agenda.

50

Kantorovich (1928), p. 241. After setting out the differences between both regimes and their possible coexistence, the author criticises the absence of any distinguishing criterion and then over 24 pages sets out the evolution of the French and German legislation and jurisprudence. 51 Heifetz (1930), p. 8. 52 Gavrilov (1969), p. 64. 53 Act on Inventions and Technical Improvements, adopted by the Ordinance of the USSR Central Committee and the USSR Council of People’s Commissariat of 9 April 1931 No 3/256, Sobranie zakonov SSSR [USSR Collection of Laws] 1931, No 21 (Inventor’s Rights Act), art. 181. 54 Heifetz (1930), p. 149. 55 Runge and Senkovsky (2003), p. 24. See Chapter 19 by Alexandra Sankova. 56 Ordinance of the Central Executive Commitee and of the Council of People’s Commissioners No 60/956 of 27 May 1936 repealing the Ordinance of the CEC and CPC of 12 September 1924 on Industrial Designs (Drawings and Models). 57 For an outline of the different reasons for the 1936 repeal, see Gavrilov (1969), pp. 65–66. 58 Alekseeva (2006a), p. 15. Indeed, authors clearly state that, after 1936, designs were protected under copyright and models laws, as an inventor’s right on technical improvements: Gorodov (2005); Murzin (2019).

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20.4 1965–1991: The Socialist Experiment Fostering ‘Technical Aesthetics’ From the late 1950s to the early 1960s, the State economists were looking for new incentives to alleviate the negative effects of the centrally planned economy after a decade of reconstruction, which required great effort. Aspirations for building trade relations with other Socialist countries resulted in closer cooperation on innovation policies.59 Progressively, relationships with Western countries also moved into a more relaxed and stable phase. In March 1965, the USSR finally acceded to the Lisbon Act of the Paris Convention,60 followed by the Stockholm Act in 1967–1970, which could be seen as a positive factor for developing trade relations. Although the enacted industrial protection laws to comply with art. 5quinquies of the Paris Convention, introduced by the Lisbon Act in 1958, could be seen as a valid justification, State policy in the field of industrial designs pursued a grander design. After post-war shortages, a policy shift was needed to raise the standard of living. New design legislation followed a massive effort to develop ‘technical aesthetics’ or ‘artistic engineering’, that is, activities of the design profession and education.61 Unlike the 1924 Act, which was far from the socialist ideal, the 1965 Regulation on Industrial Designs (1965 Regulation) aimed at establishing a form of protection that was radically different from bourgeois patent laws.62 The latter were deemed to regulate only procedural and enforcement aspects,63 whereas in the Soviet Union, industrial property protection was envisaged as a system of integrated solutions to a wide range of issues from planning and development to efficient implementation.64 The legal regime had to succeed both in providing moral and material support to the natural person for intellectual achievements, as well as securing industrial implementation conducted solely by the State without market-driven competition. A solution to this problem had already been implemented in the 1931 Inventor’s Rights Act. Inventors had an option between:

59

Gavrilov and Dubovski (1970); Alekseeva (2006a), pp. 16–17. The authors mention discussions held in the Comecon (Council for Mutual Economic Assistance (CMEA)) which touched on common IP standards, including rules on industrial designs. 60 The negotiation of this instrument dealt with several issues related to industrial designs and resulted in the introduction of article 5quinquies: ‘Industrial designs shall be protected in all the countries of the Union’. 61 See Chapter 19 by Alexandra Sankova and the section above on terminology. 62 Regulation on Industrial Designs adopted by the Decree of the USSR Council of Ministers 9 July 1965 No 535; Sobraniïe postanovleniï pravitelstva SSSR [Collection of Decrees of the USSR Government], 1965, No 15, art. 119. Further detail was added by the Decree of the USSR State Committee on Inventions and Discoveries (Goskomizobretenie) of 3 August 1965 No 49 and the Decree of the USSR State Committee on the Coordination of Scientific Research of 5 August 1965 No 232. 63 Gavrilov and Dubovski (1970), p. 5. 64 Gavrilov and Dubovski (1970), p. 5.

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• a ‘patent’, providing an exclusive right, which in practice had limited prospects for autonomous exploitation; and • an ‘inventor’s certificate’ which secured attribution and remuneration rights, together with additional non-financial benefits, while leaving exploitation and enforcement rights to the State.65 A hybrid ‘service patent’ provided a third way for those who worked at some industrial facilities.66 It is worth mentioning that only certificates could be granted to authors and inventors working in State regulated entities, which covered almost all the employment market. Thus, as was the case for inventions, following the implementation of the 1965 Regulation, almost all Soviet authors applied for inventor’s certificates for designs. Most applicants for the very few patents that were applied for were foreign entities.67 Under the 1965 Regulation, protection was available through registration at the State Committee of the USSR Ministerial Council on Inventions and Discoveries. However, examination was transferred to a quite unfamiliar institution, the newly established All-Union Scientific Research Institute of Technical Aesthetics (VNIITE).68 This was because examination comprised not only the ‘usual’ substantive criteria, such as novelty and industrial applicability, but also design-specific criteria—the unity of technical and aesthetic qualities that characterize a certain level of artistic and technical conception.69 These criteria were not only far from the generic patent requirements, but were also meant to raise the bar in terms of design quality. As a result, only 40 to 50 per cent of applications were registered.70 In retrospect, Gavrilov suggests, not without irony, that the cornerstone of this regulation, the so-called ‘technical aesthetics’, was conceived in an almost mystic way—it was ‘neither a science, nor technics, nor art’, but something approaching the ‘divine’. According to Gavrilov, the term ‘solution’ to identify the subject matter was also coined by specialists in ‘technical aesthetics’, not by legal experts.71 The 1965 Regulation expressly excluded haberdashery, clothing, knitwear, textiles (except decorative), footwear and headwear (art. 2(2)) because they were not considered to be ‘technical aesthetics’. Categories of goods for which industrial design protection was intended can be found in the additional Instruction on remuneration:72 65

Murzin (2019); Gavrilov and Dubovski (1970), p. 6. This distinction is still present in art. 4 paragraph I of the Paris Convention. In Russian, the term is ‘avtorskoïe svidetelstvo’ (‘author’s certificate’), but here I use the term in the Paris Convention. 66 Murzin (2019). 67 From 1965 to 1970, out of 2,000 applications only 18 were for patents, and all from foreign applicants: Gavrilov and Dubovski (1970), p. 6. 68 See Chapter 19 by Alexandra Sankova. 69 On subject matter and criteria, see Gavrilov and Dubovski (1970), pp. 52–58. 70 Alekseeva (2006a), p. 22. 71 Gavrilov (2014). 72 Instruction on Remuneration for Industrial Designs, adopted by the Decree of the USSR Council of Ministers of 9 July 1965 No 535, Decree of the State Committee of the USSR Council of Ministers on

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packaging, tableware, bench tools, etc.; electrical lighting, furniture, sports goods, etc.; vacuum cleaners, machines, complex tools, bikes, modular furniture, etc.; complex machines, calculating instruments, refrigerators, motorbikes, etc.; aircraft, vehicles, boats, passenger coaches, etc.

These categories were arranged according to levels of complexity, and they guaranteed substantial remuneration, given that the average monthly salary in 1965 was around a 100 rubles: up to 150 or 250 rubles for categories 1 and 2; up to 1,250 rubles for category 3; up to 2,500 rubles for category 4; and 5,000 rubles for category 5. If the design was co-designed, these sums were divided based on the authors’ agreement. Thus, this legal framework was clearly focused on the author’s remuneration rights, rather than on the right to prevent or permit use in commerce. It also provided for no taxation of an author’s remuneration up to 1,000 rubles, and non-financial benefits, such as additional living space to be provided by the employer (the State) or benefits under labour law. As remuneration was established at fixed rates per exploited design, there was no need to limit the duration of the inventor’s certificate. The 1965 Regulation only provided for a limited duration of five years, renewable once for patents (art. 11). In the absence of any reference to the term of protection in the Paris Convention, the choice of a ten-year limit can be understood as a reference to the minimum duration for works of applied art under the Universal Copyright Convention, which the USSR joined later in 1973.73 The 1965 Regulation also established procedures for litigation concerning validity and the establishment of the true designer (art. 14). As in most cases (inventor’s certificates) exploitation rights were directly assigned to the State, infringement litigation was not envisaged in the Regulation. There was also a drawback to the focus on the right to remuneration—inventors’ certificates guaranteed remuneration only when the design was implemented in industry or sold abroad (art. 19). Unfortunately, many of the designs were never implemented.74 The rigidity of the planned economy made it impossible, particularly because of the top-down approach to establishing specialized design departments in various plants, and there was an absence of real competition for consumer choice. The 1965 Regulation was supplemented by many additional instructions, decisions, and so on, some of which concerned either the situation of foreigners in the USSR, or the scheme for protecting Soviet designs abroad. Two important legal events occurred in 1981, the first being more symbolic, the second having important practical consequences. First, industrial designs were finally introduced among the subject matter regulated by the Foundations of Civil

Sciences and Techniques of 28 December 1965 No 23, Decree of the State Committee on Inventions and Discoveries of 21 September 1965 No 62. 73 Universal Copyright Convention (as revised on 24 July 1971 and including Protocols 1 and 2) U.N.T.S. 13444, vol. 943, pp. 178–325. 74 Runge and Senkovsky (2003), p. 26.

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Law adopted in 1961.75 Prior to that, industrial designs were mainly regulated by sui generis or sectoral legislation on trade and industry, not civil law. By the way, from 1965, regulations were not adopted following a legislative process, but through governmental acts only. Second, on 8 June 1981, the 1965 Regulation was amended by the Regulation on Industrial Designs (1981 Regulation).76 The 1981 Regulation reflected existing practice, but also addressed certain gaps. Paradoxically, it resulted both in greater specificity for industrial designs but also pushed the design protection system a little closer to a ‘patent approach’. Under the 1981 Regulation, examination was transferred back to a body specialized in patents, the All-Union Scientific and Research Institute of Patent Expertise (VNIIGPE). Additional expertise could still be requested at the VNIITE, and VNIIGPE experts used VNIITE methodologies of assessment. The ‘aesthetic’ requirements of protection remained in place, although they were slightly modified to include artistic and informational expression, unity of composition, rationality of form, ergonomics and quality of production. An additional socio-economic requirement of ‘positive effect’, that is, utility, was further added.77 The formulation of the subject matter was also slightly changed by a reference to the outer appearance of an article. A set of exclusions was provided for in art. 12: articles with no utility function, houses and other large constructions (but not small constructions, such as kiosks); non-visible items; items with an appearance which is exclusively defined by a function (such as bolts, nuts and screws). Previously excluded subject matter—haberdashery, clothing, knitwear, textiles (except decorative), footwear and headwear—was also reintroduced with the clear aim of promoting light industry, indicating a renewed concern for answering consumer needs (art. 13).78 The general division between a patent and an inventor’s certificate remained in place; although for the latter, the exclusive right of the State to exploit the industrial design was limited to 10 years (art. 10). The focus on the author’s remuneration was retained and enhanced: authors were entitled to receive additional remuneration not only when their designs were implemented, but when the designs were registered (art. 49). Also, remuneration for implementation had to be calculated, within specific limits, based on exploitation results of the first year of implementation; or, upon the designer’s choice, the results in any of the first four years of exploitation (art. 51). As had previously been the case, infringement was only possible in situations when a patent was granted, so in the vast majority of cases, disputes revolved around 75

Foundations of the Civil Law of the USSR adopted on 8 December 1961, as modified on 4 November 1981; Vedomosti Verkhovnogo Soveta SSSR [Bulletin of the USSR Supreme Council], 1961, No 50, art. 525. 76 Regulation on Industrial Designs, adopted by the Ordinance of the USSR Council of Ministers of 8 June 1981 No 539; Sobraniïe postanovleniï pravitelstva SSSR [Collection of Decrees of the USSR Government] No 19, art. 114. Alekseeva (2006a), p. 24. 77 See Table 20.1. 78 See the List of Goods of Light Industry, the Art Engineering Solutions of Which are Subject to Legal Protection as Industrial Designs, adopted by the Decree of the USSR State Committee on Inventions and Discovery, 27 November 1981, No 4 (26).

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the issues of validity, entitlement, remuneration, co-authorship, to which was added a possible action for prior use (Part VII). Validity issues were to be determined by a special council of the USSR State Committee on Inventions and Discoveries, whereas other issues were determined by tribunals. All in all, the decades that followed the reinstatement of design protection were characterized by strong involvement of the State in regulating industrial design. Creativity, progressive theorization, outreach activities and various publications were fostered, while implementation was often a weak spot. However, some experts say that the measures that were undertaken were so effective that many designs developed during this period continue to support design practice today.79 However, when it comes to industrial design protection, it is clear that, while the system established by the 1965 Regulation and 1981 Regulation—that is, a set of complex non-legal requirements and a standardized approach to remuneration—made registration important for individual designers, it did not constitute a pragmatic industrial property system. The 1980s and 1990s saw a new period of scarcity in consumer goods, economic and political instability, and so industrial design protection was not a matter of concern. However, many concepts from the 1981 Regulation were later re-employed in the market-oriented industrial property legislation that began to emerge closer to the end of the 1980s.

20.5 1991–The Present: Liberalization and Modernization 20.5.1 1991–2014: Back to the Market The late 1980s were a period of economic and political liberalization in the USSR, prompting the re-establishment of market-oriented industrial property legislation. A new industrial design law was adopted on 10 July 1991,80 that is, a few months before the fall of the Soviet Union. After decades of a prevailing ‘socialist’ approach (inventor’s certificate) over a ‘capitalist’ approach (patent), the latter gained full recognition. Another symbolic change happened the following year, when the first Russian Federation Patent Act was adopted on 23 September 1992.81 Industrial designs were merged with other patentable subject matter—utility models and inventions.82 Before 79

See various opinions cited in Gershman et al. (2020), p. 247. USSR Act of 31 May 1991 No 2213-1 on Inventions in the USSR, Vedomosti S’ezda narodnykh deputatov i Verkhovnogo soveta SSSR [Bulletin of the USSR People’s Deputies Congress and of the Supreme Council] 1991, No 25, art. 703; and USSR Act of 10 July 1991 No 2328-1 on Industrial Designs, Vedomosti S’ezda narodnykh deputatov i Verkhovnogo soveta SSSR [Bulletin of the USSR People’s Deputies Congress and of the Supreme Council] 1991, No 32, art. 908. 81 Patent Act of the Russian Federation of 23 September 1992 No 3517-1, Rossiïskaya Gazeta, No 225, 14 Oct 1992. 82 Plant varieties were addressed in a separate law. 80

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that, industrial designs had a separate legislative existence, despite an ambiguous relationship to patent and copyright laws.83 The result was an increased degree of similarity with ‘pure’ patent protection, while the main requirements of protection were reduced to ‘novelty’ and ‘originality’.84 The latter requirement was intended to replace the quality-oriented requirement of protection that prevailed in the 1965 and 1981 Regulations. Highlighting significant changes to design protection on the eve of the Soviet Union collapse would not have been sufficient without mentioning that, in May 1991, the Supreme Council of the USSR adopted new Foundations of the Civil Legislation of the USSR and its Republics, in which ‘design’ [dizan] was listed among protected subject matter under copyright law, separately from ‘applied arts’.85 This statute, and the first Copyright Act of the Russian Federation enacted in 1993, were based on market-oriented principles. Additionally, a regulation was adopted to fix minimum remuneration rates for works of visual art and applied art,86 continuing the tradition of the government’s focus on remuneration.

20.5.2 Onwards: Modernizing Industrial Design Law In 2003, a new patent law introduced an important amendment: validity and infringement of a design patent were now to be assessed with reference to the graphical representation and the list of essential features filed by the applicant.87 Thus, the gap between patent and industrial design was reduced, as the interpretation of ‘claims’ was now central to the protection granted. The initial idea was to offer the applicants the ability to define what they claimed. However, this amendment resulted in narrowing the protection—the applicants were not always able to define those 83

For the relationship to copyright, see Kantorovich (1928) and Gorodov (2008); on the relationship to patents, see Gavrilov (1969) and Alekseeva (2006a), p. 12. 84 However, these two requirements were the internationally agreed standard if we look at the negotiation history of the Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (TRIPS Agreement). In relation to the TRIPS Agreement, although Russian entry to the World Trade Organization (WTO) meant the imposition of several changes to IP legislation, no such changes can be seen with regard to industrial designs. 85 Foundations of USSR and Republic’s Civil Legislation, adopted by the USSR Supreme Council on 31 May 1991 No 2211-1. Art. 134 §2, Vedomosti S’ezda narodnykh deputatov i Verkhovnogo soveta SSSR [Bulletin of the USSR People’s Deputies Congress and of the Supreme Council] 1991, No 26, art. 733. 86 Gavrilov (2014). See the Ordinance of the Government of 21 March 1994 No 2018 On Minimum Author’s Fees Rates for Certain Uses of Works of Literature and Art, Sobraniïe aktov Prezidenta i Pravitelstva RF [Collection of Acts by the President and the Government of the Russian Federation], 2 Mar 1994, No 13, Art. 994, Annex 3. 87 Federal Law No 22-FZ of 7 February 2003 amending and adding to the Patent Act of the Russian Federation, Sobraniïe zakonodatelstva RF [Collection of Legislation of the Russian Federation], 10 Feb 2003, No 6, art. 505; Savitsky (2013); Alekseeva (2006a), p. 42 ff.

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features from the outset, and the absence of one feature in a subsequent design was enough to avoid a finding of infringement.88 An additional difficulty raised by this system was that the scope of protection was limited to the function of the goods that the right holder specified in the application.89 In 2008, IP laws were codified in Part IV of the Civil Code,90 which did not change any substantive aspects. It was only in 2014 that new legislation brought positive changes, directly inspired by the European Union (EU) ‘Design Approach’.91 Although they had been prepared over several years, these amendments coincided with the adoption of the 2014 strategic programme ‘Development of Engineering Activities and Industrial Design’,92 which allocated significant financial support from the federal budget to these sectors. Joining the Hague Agreement was on the Russian agenda and Moscow also offered to hold the diplomatic conference for the adoption of the Design Law Treaty,93 negotiated since 2005 and oversighted by a specialized standing committee of the World Intellectual Property Organization (WIPO). However, the Crimean crisis in the Spring of 2014 interrupted these initiatives, as well as many other projects and trade opportunities. EU influence was instrumental in the 2014 reform, in particular, providing that the assessment of a design is a visual assessment. Significant differences with the EU system still exist, such as substantive examination by the Federal Service for Intellectual Property (Rospatent). The scope of protection is still limited to products with the same function or utility. The ‘originality’ requirement also differs from the EU’s ‘individual character’ requirement, as it focuses on the designer’s creative input, inter alia by comparing overall impressions produced by two designs on the informed consumer. The grounds of invalidity also differ from those listed in the EU directive and regulation on design protection. Some features of the patent-oriented approach are also very evident in the Russian law, such as the provisions relating to compulsory licences and the prior use defence. Apart from accession to the Hague Agreement in 2017,94 further geographical expansion to benefit applicants was made possible within the Eurasian regional group of countries, more particularly, within the Eurasian patent system established after the 88

Alekseeva (2006a), p. 44; Savitsky (2013). Alekseeva (2006a), p. 46. 90 Federal Law No 231-FZ of 18 December 2006 on the Enactment of Part Four of the Civil Code of the Russian Federation, Sobraniïe zakonodatelstva RF [Collection of Legislation of the Russian Federation] 2001, No 17, art. 1644. On codification generally, see Dietz (2009), pp. 687–702. 91 Federal Law No 35-FZ of 12 March 2014 on Amendments to Parts One, Two and Four of the Civil Code and Certain Laws of the Russian Federation, Sobraniïe zakonodatelstva RF [Collection of Legislation of the Russian Federation], 17 Mar 2014, No 11, art. 1100. On the preparatory work, see Alekseeva (2005); Alekseeva (2006b); Vasilets (2017). 92 See Gershman et al (2020), p. 252. 93 Discussions and decision of the WIPO General Assembly held at Geneva from 10 to 12 December 2013 at its 44th session. See World Intellectual Property Organization (2013). 94 Federal Act No 55-FZ of 3 April 2017 on the Ratification of the Hague Agreement on International Registration of Industrial Designs, Rossi˘ıskaya gazeta No 71, 5 Apr 2017, Parlamentskaïa gazeta, No 13, 7–13 Apr 2017, Sobranie zakonodatelstve RF 10 Apr 2017, No 15 (Part I), art. 2130. 89

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fall of the USSR. In 2019, a new Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention of 9 September 1994 was signed,95 and entered into force in 2021 with the adoption of relevant regulations. The ratification progress is currently in progress, but the system will allow centralized industrial design registration by participating members of the Eurasian Economic Union (EAEU). Concerning national protection, most recently, a change to art. 1392 of the Civil Code introduced a mechanism through which the right holder may claim a fee for a third party’s activities in relation to a design after an application is filed and before protection is granted.96 This provisional protection is conditional upon the application’s official publication, which has to be requested by the applicant (art. 1385). Although this reform was provided as a response to calls from the fashion industry, its efficiency is still to be assessed in relation to the drawbacks of early disclosure and potential misuse. There is also a general trend towards easing examination. The first step will be the introduction of an opposition procedure in relation to some grounds of invalidity.97 In 2020, 7,740 applications were filed with Rospatent.98 From 2015 to 2019, the duration of examination was reduced from 6.7 months to 4.4 months, but still, this duration is thought to be an obstacle to registration. Such acceleration can only be detrimental to the examination quality, and therefore the legal security attached to the registration certificate on the market. Moreover, limited examination was introduced from the outset at the Eurasian level. The Eurasian Patent Office only checks formalities and for violation of the public interest, principles of humanism and morality requirements,99 and preregistration opposition proceedings may be filed within two months after the publication of the application. Interestingly, prior to 2014, utility models were granted in Russia without examination. However, commentators raised concerns over dishonest practices which led to the introduction of examination.100 The same concerns may be preventing the abolition of ex ante examination for industrial designs, but it seems that the progressive easing of such examination is inevitable.

95

Protocol on the Protection of Industrial Design to the Eurasian Patent Convention of 9 September 1994, adopted by the Contracting States of the Eurasian Patent Convention on 9 September 2019 at the Diplomatic Conference in Nur-Sultan, the Republic of Kazakhstan, Bulleten’ mezhdunarodnykh dogovorov, 2021, No 7 (Protocol on the Protection of Industrial Design to the Eurasian Patent Convention of 9 September 1994). 96 Federal Law No 549-FZ of 27 December 2018 on Amendments to Part Four of the Civil Code of the Russian Federation, Sobranie zakonodatelstva RF, 31 Dec 2018, No 53 (Part I), art. 8475. 97 Ivliev (2020). 98 Rospatent (2021), pp. 16–17. 99 Protocol on the Protection of Industrial Design to the Eurasian Patent Convention of 9 September 1994, art. 3(2)(i). 100 Novoselova (2019).

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20.5.3 Copyright Protection for Designs It is necessary to emphasize that the protection of designs—and more generally, the outer appearance of goods—is available through various forms of protection, provided the respective requirements are met. External features of a variety of goods may be protected by three-dimensional trademarks, copyright, as well as by the law against unfair competition, which covers a wide range of illegal conduct.101 The current copyright law adopts quite a generous approach to subject matter and criteria for protection.102 Works, including designs and works of applied art, are protected if they result from creative labour. A lack of novelty, uniqueness or originality does not mean that a design does not result from an author’s creativity.103 Copyright legislation has never disappeared, but it is noteworthy that from the 1993 Copyright Act on, works of dizaïn [design] and works of applied art are listed among other artistic works in the Berne-style art. 1259 (1) of the Civil Code. Recently, the Supreme Court held that as long as the requirements for protection of each title are fulfilled, both copyright and design protection may coexist and be enforced independently.104 In practice, copyright on designs extends to various objects, such as packaging,105 suits for rhythmic gymnastics,106 toy furniture,107 and furniture.108 Recently, a first instance court quite surprisingly endeavoured to formulate a definition of design in the context of a case concerning copyright protection, which was upheld by the appellate court’s judgement:

101

Federal Law of the Russian Federation on the Protection of Competition of 26 July 2006 N° 135-FZ, as amended, Sobranie zakonodatelstva RF, 31 July 2006, No 31 (Part 1), art. 3434. 102 For an overview of Russian copyright legislation and practice, see von Lewinski (2021). 103 Punkt 80 Postanovlenia Plenuma Verkhovnogo Suda Rossi˘ısko˘ı Federatsii ot 23 aprelia 2019 No 11 ‘O primenenii tchasti tchetvertoy Grajdanskogo kodeksa Rossi˘ısko˘ı Federatsii’ [Resolution of the Plenary Session of the Supreme Court of the Russian Federation On the Application of Part Four of the Civil Code of the Russian Federation, No 10 of 23 Apr 2019], para. 80, reported in English in GRUR International (2020). 104 Punkt 80 Postanovlenia Plenuma Verkhovnogo Suda Rossi˘ısko˘ı Federatsii ot 23 aprelia 2019 No 11 ‘O primenenii tchasti tchetvertoy Grajdanskogo kodeksa Rossi˘ısko˘ı Federatsii’ [Resolution of the Plenary Session of the Supreme Court of the Russian Federation On the Application of Part Four of the Civil Code of the Russian Federation, No 10 of 23 Apr 2019], para. 74. 105 Postanovlenie Deviatogo Apel’atsionnogo Arbitrazhnogo Suda ot 18 fevralia 2019 g. po delu No A40-33912/18 [Ruling of the 9th Commercial Court of Appeal of 18 Feb 2019 in case No A40-33912/18]. 106 Postanovlenie Suda po intellektual’nym pravam ot 8 iyulia 2020 g. po delu No A71-6193/2019 [Ruling of the Intellectual Property Court of 8 July 2020 in case No A71-6193/2019]. 107 Postanovlenie Suda po intellektual’nym pravam ot 9 aprel’a 2021 g. po delu No A40105646/2017 [Ruling of the Intellectual Property Court of 9 Apr 2021 in case No A40-105646/2017]. Validity and entitlement were sufficiently shown by the right holder using evidence such as drawings, affidavits, catalogues, etc. 108 Case N° A76-12136/2014. There have been several first instance, appeal and cassation decisions since 2014, and the case is ongoing. Valid subject-matter and requirements of protection have been substantiated.

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Design is an intention, an idea, an unusual, non-standard activity. Design creates a unique, recognizable image, helps to distinguish a product (company) from a variety of similar products (companies). A designer’s activity is aimed at the creation of an object-spatial environment in harmony with humans. Contemporary design is a sphere, which combines the latest achievements of science, technology, humanities and artistic and aesthetic spheres, using the data of ergonomics (a science, studying the psycho-physiological and functional characteristics of humans), economics, ecology. The designer is guided by the principle of functional forms, uses modern materials and technology, takes into account fashion trends.109

The introduction of such a definition in the text of a judicial decision is uncommon, but it shows the judge’s holistic approach to design subject matter under copyright legislation. A current issue related to copyright protection is the lack of legal certainty and the need, beyond the existing presumption, to prove authorship or entitlement when bringing an infringement action. The frequent use of private registers held by collective management organizations or other entities has recently proved inefficient. In several cases, the claimant has not succeeded in showing entitlement as they relied solely on such records or other uncertain evidence.110 Thus, easing the requirements for State industrial design registration appears to be the appropriate response to such a recurrent problem for some market players, specifically as these cases show that designers or commercial entities that make, import, or sell goods with attractive visual features are looking for the legal certainty achieved through registration.

20.6 Final Remarks and Perspectives The history outlined in this chapter shows the zigzag course that industrial design protection has taken throughout the twentieth century and the first two decades of the twenty-first century. Industrial design protection retained some pre-revolutionary features until 1936 and was instrumental in regulating a form of market economy before becoming obsolete. In the 1960s, industrial design protection was reintroduced in the USSR on a revised ideological base. This system did not last for a long time, the pendulum swung back in the mid-1980s. The revival of a liberal economy 109

Postanovlenie Deviatogo Apel’atsionnogo Arbitrazhnogo Suda ot 18 fevralia 2019 g. po delu No A40-33912/18 [Ruling of the 9th Commercial Court of Appeal of 18 Feb 2019 in case No A40-33912/18], upholding the judgment of the Moscow Commercial Court of 21 Nov 2018, where infringement of the packaging design for nutritional supplements was found. 110 Postanovlenie Verkhovnogo Suda Rossi˘ısko˘ı Federatsii ot 17 sentiabr’a 2020 N° 305-ES20-8198 po delu A40-46622/2019 [Ruling of the Supreme Court of the Russian Federation of 17 Sept 2020 N° 305-ES20-8198 in case A40-46622/2019], reported in English in GRUR International (2021) (an infringement claim relating to the design of modular toys); Postanovlenie Suda po intellektual’nym pravam ot 19 marta 2021 g. po delu No A41-51614/2019 [Ruling of the Intellectual Property Court of 19 Mar 2021 in case N° A41-51614/2019] (infringement of the design of packaging for oils, cosmetic treatments); Postanovlenie Suda po intellektual’nym pravam ot 22 iyun’a 2021 g. po delu No A60-72170/2019 [Ruling of the Intellectual Property Court of 22 June 2021 in case N° A60-72170/2019] (infringement of the design of valenki (traditional Russian shoes)).

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prompted a need for novel IP laws, including specific protection for industrial designs. This journey was very much influenced not by legal practice, but by economic and political circumstances. Several trends related to the introduction and improvement of industrial design legislation may be thus highlighted. The adoption of new design legislation coincided with major economic reforms and/or State interest in promoting industrial designs, mainly for consumer satisfaction and improving the trade balance. Regarding the former, in the twentieth century, scarcity of consumer goods due to economic policy choices or periods of war showed that design protection was not a priority. Regarding the latter, variations in trade policy have had a strong impact both on the will to attract foreign applicants and to introduce changes that will ultimately help Russian actors secure protection abroad. The 2014 reform of industrial design legislation is a good example of this mix of rationales. Studies show that currently, the market for design services in Russia is not at a high level, its size is relatively small.111 Among the factors hindering the development of industrial design in Russia one finds: consumer hesitance to buy products with novel shapes; educational and occupational issues in the field of design, such as low salaries and a disconnect between education programmes and the realities of the industry; a high degree of concentration of the industrial design market; and a lack of capacity to break through at the international level.112 Notwithstanding these difficulties, the existing legal framework provides several avenues for protecting designs. Current industrial design law protection seems to be fit for purpose, but still a work in progress. Following the 2014 reform, several amendments and proposals have attempted to make protection more accessible, both procedurally and in terms of geographic scope. Other forms of protection are also used in practice, notably copyright protection. To conclude, the main challenge today appears to be that enforcement mechanisms and litigation processes are relatively young and need time and resources to mature into a secure and coherent judicial practice in all the legal areas that converge in relation to designs. This is true from the perspective of institutions and litigating parties. Apart from systemic issues related to the fact that the Russian market economy is still in transition in some respects, this situation can be explained by a relatively long tradition of industrial property legislation in which individual remuneration rights prevailed over exclusive rights. An important step was the establishment, in 2013, of a specialized court for IP rights, which has jurisdiction over infringement actions between economic entities.113 As this court has jurisdiction over infringement actions at the level of cassation appeal only, coherent judicial practice across Russia’s judicial map will need time to consolidate.

111

Gershman et al (2020). Gershman et al (2020), p. 252. 113 This court also hears appeals on validity issues from the Russian Patent Office. 112

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References Alekseeva OL (2005) Obem ppavovo oxpany ppomyxlennyx obpazcov v Poccii i EC: ppoblemy i pyti pexeni [The Scope of Protection for Industrial Designs in Russia and in the EU: Problems and Possible Solutions]. Part I. Patenty i Licenzii 12:12 Alekseeva OL (2006a) Ppavova oxpana ppomyxlennyx obpazcov v Poccii: volci i pepcpektivy [The Legal Protection of Industrial Designs in Russia: Evolution and Perspectives]. INITS Patent, Moscow Alekseeva OL (2006b) Obem ppavovo oxpany ppomyxlennyx obpazcov v Poccii i EC: ppoblemy i pyti pexeni [The Scope of Protection for Industrial Designs in Russia and in the EU: Problems and Possible Solutions]. Part II. Patenty i Licenzii 1:14 Dietz A (2009) Incorporation of Patent Law into Part Four of the Russian Civil Code—A Structural Analysis. In: Prinz zu Waldeck, Pyrmont W et al (eds) Patents and Technological Progress in a Globalized World, Liber amicorum Joseph Straus. MPI Studies on Intellectual Property, Competition and Tax Law 6. Springer, Berlin, pp 687–702 Federal Institute of Industrial Property Service (2014) Legal Protection of Industrial Designs in Russia, vol I. Normative Acts: Bibliographical Index. FIPS Library, Information and Bibliographic Department, FIPS, Moscow Gavrilov EP (2014) Ppavova oxpana ppomyxlennyx obpazcov v Poccii: ppoxloe, nactowee, bydywee [Legal Protection for Industrial Designs in Russia: Past, Present, Future]. Patenty i Licenzii 5:13–18 Gavrilov EP (1969) Ppavova oxpana ppomyxlennyx obpazcov po covetckomy zakonodatelctvy (1919–1936) [Legal Protection for Industrial Designs in the Soviet Legislation (1919–1936)]. Izobretatelskoye pravo, Trudy TsNIIPI, Moscow, pp. 49–70 Gavrilov EP, Dubovski ES (1970) Ppavova oxpana ppomyxlennyx obpazcov v CCCP i dpygix cocialictiqeckix ctpanax [The Legal Protection of Industrial Designs in the USSR and Other Socialist Countries]. TsNIIPI, Moscow Gershman M, Thurner W, Chudaeva M (2020) Industrial Design for Economic Growth: Russia’s Efforts to Improve its Manufacturing Sector. Creative Ind J 13(3):244–258 Gorodov OA (2005) Patentnoe ppavo [Patent Law]. TK Velby, Prospekt, Moscow Gorodov OA (2008) Boppocy ppavovo oxpany ppomyxlennyx obpazcov [Issues on the Legal Protection of Industrial Designs] Zakon 2:101–108 GRUR International (2020) Resolution of the Plenary Session of the Supreme Court of the Russian Federation No. 10, 23 April 2019. GRUR International 69(9):928–942 GRUR International (2021) Legal Effect of the Deposit of Copyrighted Works. GRUR International 70(4):397–398 Heifetz IY (1930) Ppomyxlennye ppava i ix xozctvennoe znaqenie v Coze CCP i na Zapade [Industrial Rights and their Economic Value in the Union of SSR and in Western Countries]. RSFSR State Legal Editions, Moscow Ivliev GP (2020) O celecoobpaznocti vvedeni v Poccicko Fedepacii ppocedypy oppozicii ppi pegictpacii ppomyxlennyx obpazcov [On the Introduction of the Opposition Procedure for the Registration of Industrial Designs in Russia]. Is Promyshlennaya Sobstvennost 8:5–10 Kahn A-E (2018) The Copyright/Design Interface in France. In: Derclaye E (ed) The Copyright/Design Interface: Past, Present and Future. Cambridge University Press, Cambridge, pp 7–35 Kantorovich YA (1928) Ocnovnye idei gpadanckogo ppava [Basic Ideas of Civil Law]. Legal Editions of the NKU Ukrainian SSR, Kharkov Korepanova SA (2007) Ppomyxlennye vyctavki Poccii XIX veka [Industrial exhibitions in Russia in the XIXth century]. Kvadrat, Ekaterinburg Krasheninnikov PV (2019) Pontie i obwa xapaktepictika patentnogo ppava [The Notion and General Characteristics of Patent Law]. In: Novoselova LA (ed) Ppavo intellektyalno

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cobctvennocti, T.4. Patentnoe ppavo [Intellectual Property Law, vol 4, Patent Law]. Statut, Moscow, pp 10–21 Markevich A, Zhuravskaya E (2018) The Economic Effects of the Abolition of Serfdom: Evidence from the Russian Empire. American Economic Review 108(4–5):1074–1117. https://pubs.aea web.org/doi/pdf/10.1257/aer.20160144 Mau V, Drobyshevskaya T (2013) Modernization and the Russian Economy: Three Hundred Years of Catching Up. In: Alekseev M, Weber S (eds) The Oxford Handbook of the Russian Economy. Oxford University Press, Oxford, pp 29–50. Preprint: https://www.iep.ru/files/RePEc/gai/wpa per/0032Mau.pdf Murzin DV (2019) Ictopi i ictoqniki patentnogo ppava [History and Sources of Patent Law, in Novoselova]. In: Novoselova LA (ed) Ppavo intellektyalno cobctvennocti, T.4. Patentnoe ppavo [Intellectual Property Law, vol 4, Patent Law]. Statut, Moscow, pp 22–62 Novoselova LA (ed) (2019) Ppavo intellektyalno cobctvennocti, T.4. Patentnoe ppavo [Intellectual Property Law, vol 4, Patent Law]. Statut, Moscow Pérot-Morel MA (1968) Les principes de protection des dessins et modèles dans les pays du marché commun, Publications de la faculté de droit et des sciences économiques de Grenoble. Mouton, La Haye Reichman J (1990) Design Protection and the New Technologies: The United States Experience in a Transnational Perspective. U Balt L Rev 19:6 Reichman J (1994) Legal Hybrids Between the Patent and Copyright Paradigms. Columbia Law Rev 94(8):2432–2558 Rospatent (2021) Rospatent Annual Report 2020 (English). https://rospatent.gov.ru/en/reports2020. Accessed 25 Oct 2021 Runge VF, Senkovsky VV (2003) Ocnovy teopii i metodologii dizana, yqebnoe pocobie [Foundations of Design Theory and Methodology, A Handbook]. M3-Press, Moscow Savitsky P (2013) Protection of Product Design Appearance in Russia. Eur Intellect Prop Rev 35(3):143–154 Shershenevich GF (2003 [1908]) Kypc topgovogo ppava tom II: Tovap, Topgovye cdelki [Course on Trade Law, vol II: Goods, Commercial Transactions]. Statut, Moscow Suthersanen U (2000) Design Law in Europe. Sweet and Maxwell, London Vasilets A (2017) Russia. In: Carani CV (ed) Design Rights: Functionality and Scope of Protection, AIPPI Law Series. Wolters Kluwer, Alphen aan den Rijn, pp 483–493 Vidari E (1877–1880) Corso di diritto commercial, vol III, pp 154–155 VNIITE (All-Union Scientific Research Institute of Technical Aesthetics) (1977) Komplekcnoe xydoectvennoe konctpyipovanie i voppocy cictemnogo podxoda v dizane [Complex art-engineering and issues of system approach in design], Acts of an All-Union Conference ‘Khudozhestvennoe konstruirovaniïe kompleksnykh ob’ektov v mashinostroïenii I proborostroïenii’, 3–5 Nov 1976, Kuzmichev et al (eds) State Committee of the USSR Council of Ministries on science and technique. VNIITE, Moscow von Lewinski S (ed) (2021) Copyright Throughout the World. Wolters Kluwer, Alphen aan den Rijn World Intellectual Property Organization (2013) WIPO General Assembly. Forty-Fourth (23rd Extraordinary) Session. Geneva, 10–12 Dec 2013 (English). https://www.wipo.int/edocs/mdocs/ govbody/en/wo_ga_44/wo_ga_44_6.pdf. Accessed 25 Oct 2021

Natalia Kapyrina is an assistant professor at the Department of Integration Studies in the Moscow State University of International Relations (MGIMO University). Prior to joining the Department in 2020, she obtained a doctorate degree in law at the Centre for International Intellectual Property Studies (CEIPI) at the University of Strasbourg, where she also obtained her master’s degree in intellectual property law (CEIPI) and in art history (Faculty of History).

Part III

North America

Chapter 21

American Design, Breaking the Mold Matthew Scott Waldman

Abstract In this chapter, Professor Matthew Waldman provides his perspective on American design. He explores design as a concept through the ages and discusses the changing role of the American designer, covering various innovations, innovators, designers and movements. Professor Waldman does not write about architecture or graphic design and would recommend the many great histories of these fields already in publication.

21.1 What is Design? ‘Design’ is an overused and often misunderstood word. Within the art and fashion industries, there are well-accepted curatorial voices exploring ‘What is fashion?’ and ‘What is art?’ or even declaring ‘This is fashion’, ‘This is art’.1 This was often tied to celebrity culture where designers sought favor and patronage of royalty to launch and/or validate their careers. The American model elevated the magazine editor and movie star to this role for fashion, and similarly, the curator/gallerista to these roles for art (past century). More recently, internet and business celebrities (influencers) have become validation role models. At its very core, design is creating solutions for a desired goal. The solutions can indeed be aesthetically pleasing. But who is to judge? When it comes to design, applying criteria of a curatorial voice can be problematic—the curatorial voice is often better suited for fields where aesthetics is essential (fashion and fine arts). For this reason, design competitions and even design museums have a challenge educating the general public on ‘design’. The curator’s bias or focus on particular 1

Neuendorf (2016); Greenberger and Selvin (2021); Black (2012); Henderson (1992).

This chapter would not be possible without the work of Senior Researcher Sophia Ppali, Ph.D. Candidate, University of Kent, United Kingdom. M. S. Waldman (B) Graduate School of Media Design, Keio University, Tokyo, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_21

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exhibition goals can sometimes be more important than defining and measuring the success of a design, which could best be described as ‘problem-solving’. This is not to devalue the important work of design museums—they are some of my favorite institutions! In a survey I recently conducted, I asked people to define the word ‘design’. Some answers linked design to aesthetics, art and creativity. Some people described giving meaning, making things and composing elements to achieve a purpose. One participant wrote, ‘absolutely everything is designed by someone’. The answers and the perceptions of what design is are varied, which is true not just within the survey, but also within the broader design community.

21.2 What is American Design? We don’t need to go far to see the impact of American design in our own lives. The Coca-Cola bottle we drink from (Fig. 21.1), the Levi’s jeans we wear and the iPhones we communicate on are all pieces of the same puzzle that tell the fascinating story of American Design. Similar to every other form of human creative expression, design is interwoven with societies, their histories, and their economies, influencing aspects of daily life. The history of design is directly linked with the history of cultures. Therefore, when looking at the evolution of American society, from the late nineteenth century up to now, design can give us an overview of the characteristics of each era.

Fig. 21.1 The Evolution of the ‘Coca-Cola Bottle’ (source: ©Andrade WS (2013))

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To write about the history of design in America is a difficult task, considering the varied perceptions of what design is: • What examples of design are regularly recognized in the historical record? • Do we consider work and processes only from people who identify themselves as ‘designers’ as design? • Is ‘design’ a new term in the context of current media explanations and representations? • If we consider award-winning designs, how do we factor in the biases of curators and industry? • What metrics are at our disposal to define the role of design in America over the past few decades? Going further, the perceptions of design vary from person to person. Is the image of a designer limited to, for example, graphics or furniture? • Should we include architects in the same discussion when that discipline has its own nomenclature? • How has the perception of design changed over the years in the American context? • How has the definition also evolved in meaning and in social value? • Most importantly, what is ‘American design’? I am perhaps best known as a product designer. Yet, I have never seen my role as such. My approach to design is linguistic in nature, and I am more comfortable talking about ‘design language’ than I am about aesthetics. This chapter will focus on the historical connotations of ‘design’ and the role of the ‘designer’. I’ll describe different moments that shaped American and international design to create a framework for outlining a history of design in America, inspired by my experiences as an American designer.

21.3 Birth of Design and the Shifting Role of the Craftsman The word ‘design’ has been associated with the production of artifacts since the end of the sixteenth century.2 This coincides with the early modern period of Western history. Design as a profession evolved in the eighteenth and nineteenth centuries with the rise of industrialization. During the first Industrial Revolution, more and more things were mass-produced in factories or mills, and designers were employed to draw or model products that would then be molded, cut out, assembled and finished by machines. Prior to factory production, most things that people used were handmade by craftsmen. However, as the craftsman’s role shifted toward the designer’s role, the emphasis on the individual artisan gave way to the realm of manufacture. Within the American context, the focus on the quality of an item was disassociated from the actual person making it. Therefore, the role of the craftsman-cum-designer shifted

2

Côrte-Real (2010).

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from a behind the scenes service provider to one of celebrity importance, as we will later see. The designer was tasked with creating systems to produce consistent outcomes— creating a universal language for production. Guidelines became part of the design process, more important than the aesthetics of the craftsman. This universal language of consistency became part of a new aesthetic. Indeed, ‘consistency’ is the key component when designing a successful brand.

21.4 The Arts and Crafts Movement and Tiffany Lamps Paradoxically, with the rise of machines came the Arts and Crafts movement. An aesthetic movement that emerged in Britain at the end of the nineteenth century and lasting through the early twentieth century, its influence also reached America.3 Practitioners of this movement considered the machine a root of problems as factorymade products at the time were often poorly made, ignorant of material quality, and repetitive or even excessive in their decorations. Therefore, they championed a refocus on handcrafted items and higher decorative design standards. The Arts and Crafts movement didn’t last long in America due to the inevitable rise of technology use, which captured the attention of both designers and consumers. This was linked to a pursuit of national identity and brought an end to the era of handcrafted products.4 In contrast to the Arts and Crafts movement, the Art Nouveau, and later the Art Deco, movements did not position themselves against machines, but used them to their advantage. This is the style followed by the iconic Tiffany lamps. These are handmade lamps, constructed with similar techniques to stained-glass windows in churches. They feature flowers and other nature-inspired decorations. These famous lamps were quite costly and sought after by fashionable decorators and homeowners worldwide. Even though Louis Comfort Tiffany is the namesake for these iconic lamps, many of them were actually designed by Clara Driscoll—a rare moment in the history of American design when a female designer is recognized (Fig. 21.2).5,6

21.5 The Story of Bakelite A critical feature of American design is its disregard for old traditions. New design traditions were established through the adoption of technology and material science, which were new at the time, but have since become part of our everyday lives.

3

Meikle (2005), p. 77. Obniski (2008). 5 Couldrey (2001), pp. 114, 144. 6 Meikle (2005), p. 74. 4

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Fig. 21.2 ‘Pony Wisteria Lamp’ (c. 1902–1910) by Clara Driscoll, Tiffany Studios. Cleveland Museum of Art, Bequest of Charles Maurer (source: ©Evanson (2019))

An early and enduring example of this new design approach is the story of Bakelite, the first synthetic plastic, invented in New York City by Leo Baekeland in the early 1900s and patented in 1907.7 This revolutionary new material was heat-resistant and non-conductive, launching a new world of possibilities, and leading to a vast range of technological and design innovations used even to this day. Plastic materials are everywhere: They hold the food we consume, the toys our kids play with and, in general, are part of most objects we buy. It was also important in the development of electronics as it is non-conductive. It is one of the most essential materials we use, alongside wood and metal. It is cheap, effective and can take many shapes.

7

Heskett (1980), p. 155.

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Fig. 21.3 ‘Radio Nurse’, Bakelite (1938) by Isamu Noguchi (source: ©Sailko (2016))

An early baby monitor by Zenith 1938. Designed by Isamu Noguchi, a New York City based artist (Fig. 21.3). This gorgeous piece shows the futurism inspired by the material bakelite, and also an early ‘artist X brand collaboration’, which I feel is also an American design innovation. So much of what defines American design starts with the influence of Bakelite: • Bio-design: Baekeland was inspired by the chemical properties of the natural lacquer produced by insects and the properties of tree resins. Bio-design is indeed experiencing a massive resurgence in the United States of America (US), as best exemplified by the lab-grown leather of Modern Meadow or the plant-based meat replacements from Beyond Meat.8 • Democratization: Bakelite resembles tortoiseshell, an expensive and hard to work with material. Bakelite made this aesthetic more affordable to the masses, allowing the development of a new form language for ornamentation of objects such as jewelry and home decor. • Environmental impact: Bakelite saved the lives of many turtles, tortoises, elephants and rhinos by creating an affordable and local alternative to expensive animal products. However, we may need to re-evaluate after considering the negative impact of ushering in the plastics revolution.

8

Beyond Meat. https://www.beyondmeat.com. Accessed 25 Oct 2021.

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• Diversity: Another fascinating driver and unique feature of American design is diversity. Baekeland was an immigrant, persuaded to live in New York City by a professor at Columbia University during his US tour in 1889. A free exchange of ideas and an openness to collaboration is an important component of innovation, and America has a proven track record of fostering this environment. Even with current societal changes, the US is still the country most open to immigrants and refugees.

21.6 The Beginnings of Consumerism Design began to flourish at the end of the 1920s, beginning of the 1930s, during the Great Depression. The devastating economic crisis left consumers fearful and cautious; sellers were left little business. Manufacturers had to invent innovative new ways to revitalize the economy. The American Government at the time also recognized the crucial role of arts and culture in contributing to the well-being of society. Therefore, unprecedented national attention and unparalleled funding were directed to the arts.9 This sparked the beginning of an era that is still very much alive today: consumerism. New materials such as vinyl, chrome, aluminum and plywood excited consumers again, and products became sleek and attractive in unforeseen ways. This helped the field we now call industrial design to grow as a discipline.10 Designers and inventors had a new, prominent role to play in this new age. The novel, attractive prototypes from their studios were being mass-produced in big factories around the country. These items had a new purpose; they had to persuade consumers to buy them, signaling an end to the bad days of the Depression.11 Objects were no longer just functional, they had to look good and inspire dynamism and power. From cars to electric hoovers, everything was supposed to look confident, stimulate consumer demand, and provide faith in the future. Companies relied on designers to create these enticing new products that would hopefully excite buyers. One of the most influential figures of those years was Raymond Loewy, called by many ‘the father of industrial design’ or ‘the man who reshaped America’.12 He designed things from furniture and Coca-Cola vending machines and bottles to locomotives for the Pennsylvania railroad.13 Inspired by aerodynamics, he used streamlining across a whole range of products. Consequently, many familiar objects such as refrigerators and hoovers were given a more modern look, making them 9

Britannica. Great Depression—Federal Arts Programs. https://www.britannica.com/event/GreatDepression/Federal-arts-programs. Accessed 25 Oct 2021. 10 Sparke (1987), p. 167. 11 Sparke (1987), p. 189. 12 Raymond Loewy—Biography. Available via raymondlowey.com. http://www.raymondloewy. com/about/biography/. Accessed 25 Oct 2021. 13 Gill et al. (1999), p. 149.

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more desirable.14 Loewy’s work symbolized his progressive ideas about design. He showcased how design could help America move toward a better future following the Great Depression. With objects like his pencil sharpener,15 he showed Americans that design is not just about function; its symbolic power can influence people’s aspirations. The industrial design movement breathed personality and life into American’s belongings for the first time and had a ripple effect on disciplines like advertising and product branding (Fig. 21.4).

Fig. 21.4 ‘Car Sketch’, undated by Raymond Loewy (source: Library of Congress (2017))

Loewy brought a sense of futurism to a wide range of American products, including the iconic Coca-Cola bottle.

21.7 Getting Ready for War The recovery of the American economy coincided with dramatic events unfolding in Europe with the rise of fascism. Thousands of intellectuals, scientists, artists and designers—many of them Jewish—emigrated to the US. In 1937, members of the European Bauhaus movement established a new radical design school, the New Bauhaus, in Chicago. Though the school closed a year later (re-opening in 1939), it managed to bring together some of the most creative European minds of that era. The difference between their work in their home countries and the US was that their designs would no longer be just for the elite; they were destined to be in every American house. Bauhaus philosophy was one of democratic access to design, but they were in the wrong place at the wrong time. The relocation of European designers to the US post-World War II created a perfect environment—the American capitalist drive that brought factory manufacturing techniques to production, the end result of 14 15

Forty (1986), pp. 156, 170. Wilkinson (2013), pp. 70–71.

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which was the invention of ‘affordable luxury’—for democratization of access to well-designed physical products. While some credit IKEA with introducing cheap, accessible design to the world when it opened in Europe in 1958, the world had been exposed to ‘design for all’ for many years, and they owe it to America. In 1940, American designer Norman Bel Geddes designed the ‘Patriot Radio’. Colored to resemble the American flag, it looked very different from all other radios of the time and set a new standard for the design of electric appliances. Bel Geddes’s radio inspired national optimism at a time when Americans were wondering if and when their country would join the growing conflict in Europe (Fig. 21.5).

Fig. 21.5 ‘Patriot Radio’ (1940) by Norman Bel Geddes. Cooper Hewitt, Smithsonian Design Museum (source: ©Daderot (2015))

When World War II came to America, it profoundly affected traditional architecture and design. Steel, aluminum and copper were rationed for use in the War effort, challenging designers to use materials not considered ‘essential’, such as cardboard or glass. Moreover, it is worth mentioning that several designers, such as Charles and Ray Eames, helped develop new products that would help with the wartime needs.

21.8 The ‘American Dream’ World War II had a considerable impact on American design. The years following the War became pivotal in the development of American design, as focus shifted to designing items affordable to a growing middle class. Moreover, much of the new technology developed during the War, including materials, found its way into furniture design. For example, Charles and Ray Eames developed their now-iconic

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‘LCW’ chair using molded plywood, adapting techniques from their molded plywood military leg splint during the War.16 Across the country, American design was being promoted by promising unique products for any budget. Designers started developing new approaches to styling, covering everyday items with striking, often streamlined appearances and conveying the fresh ideas of the time. It was an age of standardization and commercialization, known as ‘Contemporary’. Design became synonymous with good taste, consumer appeal, and high exports on the world market. After years of economic and political uncertainties, this newfound American prosperity meant that consumers had access to enormous quantities of modern design products. This could be seen in the suburbs of many cities, where the ‘American Dream’, as James Truslow Adams defined it back in 1931, was unfolding.17 The typical American family of the ‘baby boomer’ generation enjoyed post-war peace and prosperity. The gentlemen drove Chevrolets, the most iconic car on the American roads in the 1950s, with the Bel Air wings.18 In the office, they took their break with a packet of Lucky Strike cigarettes. Happy housewives, like the ones in the magazines, were content with a new red blender by General Electric and containers bought from Tupperware parties. Little girls were playing with brand new Barbie dolls; they were modern, had a lovely silhouette, moved their arms and legs, and looked like Hollywood stars. Hundreds of new and attractive products encouraged consumption. In turn, consumption fueled huge industrial production chains, which began from the designer’s ateliers and ended up in orders of hundreds of products in factories. Mass production and the spread of new materials like plastic, nylon and steel changed everything. Simultaneously, we witnessed the democratization of style. The same ‘Tupperware’ plastic containers that sat in the kitchens of the White House also belonged to the kitchen of a housewife in a suburb in Iowa.19

21.9 Buckminster Fuller and the Whole Earth Catalogue Buckminster Fuller is perhaps the best example of the American design experience. His career influenced architecture, product design and material science in profound ways. He was an early techno-progressivist, and many concepts he coined are part of our cultural heritage: ‘Spaceship Earth’ and his concept of ‘ephemeralization’ are strangely prescient for the process of convergence we have witnessed since 2000.

16

Votolato (1998), p. 136. Adams (2012 [1931]). 18 Votolato (1998), pp. 116–117. 19 Votolato (1998), p. 133. 17

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Fig. 21.6 ‘Fly’s Eye Dome’ (1965) by Buckminster Fuller (source: ©WMpearl (2019))

In the 1960s, Fuller was famous for popularizing the geodesic dome and was granted US patents for them (even though they were previously patented in Germany by someone else) (Fig. 21.6).20 His designs helped define the 1960s sci-fi-inspired futurist view of the world we live in today, and he was an early environmentalist with a global view of resources.21 . Fuller suggested that in the future, the same or more output (products, services, information) would require less input (effort, time, resources), or as he put it ‘more and more with less and less until eventually, you can do everything with nothing’.22 Fuller’s version of the great convergence in technology and design would help raise living standards for a growing population despite finite resources.23 Another critical influence of the late 1960s was the Whole Earth Catalogue, published by Stewart Brand. It was a counterculture magazine with an editorial focus on ‘do it yourself’ (DIY) articles, which would later inspire the DIY movement and the idea of user-generated content.24 In his June 2005 commencement speech at Stanford University, Steve Jobs described The Whole Earth Catalog as ‘Google before Google’, and talked about it as an inspiration.25 20

Gill et al (1999), p. 30. Raizman (2010), pp. 364–366. 22 Fuller (1938). 23 Rawsthorn (2013), pp. 21–23. 24 Raizman (2010), p. 365. 25 Jobs (2005). 21

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In the 1970s, San Francisco-based design studio Ant Farm produced a wide range of inspirational speculative designs as well as some wonderful realized pieces still famous today. ‘Cadillac Ranch’ (1974) in Amarillo Texas is an art installation critical of American consumer culture you can still visit today. Their ‘Truckstop Network’ project was prescient of the ‘information superhighway’ and hacker culture ethos, and they produced many designs demystifying the ‘network effect’. Ant Farm also created inflatable furniture and architecture that helped define the 1970s design aesthetic. Their once counterculture ideals of eco-friendly utopianism are very much relevant today.

21.10 Jay Chiat, the Open Space Office, and New York Zoom A large influence on American design during the 1980s was Jay Chiat, founder of the Chiat/Day advertising agency in Los Angeles. Although not considered a designer by profession, he popularized concepts that were ridiculed at the time, but nowadays are common practice. Chiat championed the idea of an open office, motivated by removing the politics of fighting over private office space, and with the hope of inspiring and fostering more collaboration and innovation between employees. However, his implementation was not ideal. People felt victimized by having no control over their workspaces, which often affected their feelings of autonomy. While Chiat’s experiment in combining ideas and research on how the design of physical space affects work at a large company proved unsuccessful, this failure is perhaps because the concept was ahead of its time. The tools and materials necessary to do one’s job as a creative or designer at an advertising agency were not as mobile as they are now. Inspired by Chiat’s ideas as a high-school graduate in 1983, I dreamed of working as an art director at his agency. It was by chance that I met him in my interactive design studio, New York Zoom, in 1997. The design of my office space motivated him to hire me to create the identity for a start-up called ‘Screaming Media’. The idea behind ‘Screaming Media’ was to use technology to monetize small bits of content for the internet. Once again, Chiat was ahead of his time.

21.11 The Peak Design Years 1983 to 1989 seems to be the peak of American design and design globally. This was before the word ‘convergence’ was common; people simply owned more things. Playing music involved stereo equipment, speakers, record players, tape decks (cassette, 8-track, reel-to-reel) and amplifiers. Print media was also perhaps at its height in the 1980s, giving rise to many famous graphic designers, creative directors and photographers. There was a lot of work for designers, and the salaries were relatively high.

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The design process itself created opportunities for product designs, though this is a global and not necessarily American phenomenon. Before the digital revolution, you needed the skills to use stat camera machines, drafting equipment, tables, special pens and inks, specialized reproduction machines, phototypesetting, instant lettering solutions, adhesives and more. The 1980s provided some glimmers of the world to come, with ‘Minitel’ in France and personal audio with the Sony ‘Walkman’.26,27 Moreover, the digital revolution was just starting, and American innovators like Apple provided a foundation for software companies like Adobe and Autocad to revolutionize the design process. Many of the technology trends that led to the digital revolution in the US had their first commercial launches in the 1980s and early 1990s and would become dominant forces in their industries. Before the digital revolution, there was a distinction between product design and service design. A physical product is manufactured, money is paid, the product is purchased and used. A service is designed, you pay directly or an agent to access the service, the service is provided. The digital revolution blurred the line, and now we see much confusion regarding the role of the designer and, moreover, what a ‘product’ is. A crucial moment in the early twentieth century that would impact design and innovation and lead to this digital revolution was the establishment of Bell Labs (formerly Bell Telephone Laboratories and AT&T Bell Laboratories) in 1925.28 Bell Labs is the American industrial research and scientific development company where many technologies, such as the transistor (without which there would be no personal or portable consumer electronics), were invented. Their innovations enabled the evolution of many new products and designs, paving the path to the communication revolution, which then led to the digital revolution. Of course, we cannot mention Bell Labs without also highlighting XEROX Palo Alto Lab (PARC), which contributed to the development of computers and interface design that informs so much of our world today.29 Visits to Xerox Labs inspired people like Steve Jobs to create new categories of products, cementing its place as where the first steps on the path from graphical computer interfaces to the smartphone were taken.30 Steve Jobs, the son of a Syrian immigrant, is another example of how the immigrant experience is tethered not only to the mythology of the ‘American Dream’ but also to the birth of American design culture. I highly recommend the book: The Idea Factory: Bell Labs and the Great Age of American Innovation by Jon Gertner for more on the history of Bell Labs, the research and development wing of AT&T, as well as many of the eccentric personalities that

26

Meikle (2005), p. 192. Gill et al. (1999), p. 197. 28 Nokia Bell Labs. https://www.bell-labs.com. Accessed 25 Oct 2021; Pulos (1988), p. 309. 29 Parc. https://www.parc.com. Accessed 25 Oct 2021. 30 The Xerox PARC Visit. Available via Stanford University. https://web.stanford.edu/dept/SUL/ sites/mac/parc.html. Accessed 25 Oct 2021. 27

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worked there such as Claude Shannon and William Shockley.31 A great book on XEROX PARC is Dealers of Lightning: Xerox PARC and the Dawn of the Computer Age, by Michael Hiltzik.32

21.12 Redefining Product Design, the Birth of NOOKA, and the ‘Design Entrepreneur’ I came up with the idea of NOOKA—using design and brand to tell a larger story of optimism and techno-progressivism—in the late 1990s.33 ‘Information architect’ was not a job title or a common term at the time, but I was inspired by the optimism of the internet to create the gestalt of the collective consciousness written about by Karl Jung. NOOKA was the synthesis of the new design theory of passive intelligent interface design (intuitive design) and fashion design to create objects that express the personality of designers and technologists and dispel the idea of these fields as ‘geeky’ or inaccessible (Fig. 21.7). Fig. 21.7 ‘NOOKA ZIZM’, timepiece (2010) by Matthew Waldman (source: Author’s own)

31

Gertner (2012). Hiltzik (1999). 33 Nooka. https://nooka.com. Accessed 25 Oct 2021. 32

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NOOKA was a small independent design brand from New York City. The ZIZM shows the graphical interfaces designed to express concepts of universal communication and also to bring ideas from the digital revolution to physical products. The first product took the form of a watch, but this product choice was more about the limitations of the technology, access to technology and access to capital than it was about intention. The core theme was ‘universal communication’, and my design of visual interfaces for expressing time without any letters, numbers or familiar clock hands struck a chord within the design and music communities. The brand also was part of an exciting period of American design we can refer to as ‘design entrepreneurship’—designers who manufacture and sell their own products.34 This is different from designers like Michael Graves, who licensed their designs and names, which started in the 1970s.35 The design entrepreneur movement is driven in large part by designers’ dissatisfaction from not seeing their ideas and expertise brought to market by their clients. For me as well, NOOKA was almost an art piece to show what a perfectly executed brand can be: start with a concept and use design as a tool to express the ideas. Start with a vision and create emotional connections with users. This was not commonly referred to as ‘design thinking’ in the 1990s when I conceptualized NOOKA. Still, this concept-driven as opposed to aesthetics-driven approach produced an aesthetically pleasing result.

21.13 The 1990s and 2000s—The Age of Disruption Napster and Amazon are but two companies formed in the first internet bubble of the 1990s that ushered in massive disruptions in their industries. Napster disrupted the means of distribution for music with a peer-to-peer platform. Despite starting as just an online book retailer, Amazon disrupted the very structure of the retail economy for all physical goods. What is often not discussed, and what I sometimes refer to as the ‘death of design’, can be tied to these American business innovations. The design of music album art and packaging was disrupted, and the value of these services and the designer’s role were diminished. The same can be said for the design of book covers. Moreover, interior design and marketing have all had to evolve to leverage this change of values. The digitization of products and business is an American innovation but has had enormous ramifications for the whole planet.

34 35

Gunes (2012). Meikle (2005), pp. 175–210.

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21.14 Designer Example of the 2000s One influential designer during these years is Karim Rashid, an Egyptian-born and Canadian-raised industrial designer based in New York City. He has been described as ‘the most famous industrial designer in all America’ by Times magazine as well as the ‘prince of plastic’.36 Karim has designed furniture, buildings, lighting, packaging and more for many big American and international brands. One of his notable works is the ‘Ottawa Dining Collection’, designed for BoConcept, which includes a dining room set with chairs, a table and a sideboard.37 His furniture won the Red Dot Award, a prestigious international design award.38 His work is often inspired by nature and has a sensual minimalist aesthetic, as he describes it.39 He is yet another example of an immigrant experience shaping American design. The iPod leveraged the digital revolution in music. It was a cornerstone design on the path from developments in computers to the ubiquitous smartphones we see today, which Apple still leads in design innovation, not just for physical product design, but service design as well (Fig. 21.8). Fig. 21.8 ‘iPod’, product released in 2001, designed by Apple (source: ©Miguelon756-5303 (2016))

36

Luscombe (2001); Daubs (2016). The Ottawa Dining Collection. Available via BoConcept. https://www.boconcept.com/en-gb/ins piration/products/ottawa-dining. Accessed 25 Oct 2021. 38 Red Dot. https://www.red-dot.org. Accessed 25 Oct 2021. 39 BoConcept. Karim Rashid—The Rebel Without a Pause. Available via BoConcept. https://www. boconcept.com/en-gb/inspiration/people/karim-rashid. Accessed 25 Oct 2021. 37

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21.15 Convergence No longer a theory, technological convergence is when seemingly unrelated technologies become integrated and unified.40 Telecommunication devices, timepieces, computers, televisions, audio equipment, social media platforms and cameras all began as distinct and primarily unrelated technologies, yet have all converged into one device: the smartphone.41 Another device that epitomizes convergence is the Apple iPad, first released in 2010. An improvement on existing tablets at the time, the iPad made the internet, email, photographs, music and other functions available all within the same convenient device. The hardware was elegant, designed with a clean, functional aesthetic, and the software was user-friendly and accessible, which set a standard for future tablet designs.42 Moreover, whereas people once dreamed of owning their own car, they are now content to have robust ride-sharing and load-balanced taxi apps like Uber and Lyft (also American design innovations).43,44 This means that fewer physical objects need designing, which is good for the planet, but does cause redefinitions of the role and titles of the design industry. Raymond Kurzweil, an American inventor, and futurist, published a book early in the twenty-first century about the power of technological advancements growing exponentially.45 He wrote about the concept called ‘technological singularity’. As technology evolves, more and more disciplines will merge, making one ‘super technology agent’, and technological growth will become more and more unpredictable. The future is exciting, with ambient computing and sensing technologies becoming more commonly accepted. However, the social issues of privacy will also evolve beyond personal data into the more important topics of security and transparency. This evolution will be complex, as governments have not seriously considered meaningful regulation. As a techno-progressivist, I believe we come up with solutions that work for everybody.

21.16 Design in the Era of COVID-19 At the beginning of 2020, the designer’s role changed once again, not only in America but worldwide. The dawn of the new year marked the dawn of a new virus, COVID19, which would become a pandemic that affected people in every corner of the 40

Bainbridge and Roco (2016). Bryan et al. (2015). 42 Wilkinson (2013), pp. 216–217. 43 Uber. https://www.uber.com. Accessed 25 Oct 2021. 44 Lyft. https://www.lyft.com. Accessed 25 Oct 2021. 45 Kurzweil (2005). 41

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world. The virus devastated the US and has resulted in the loss of over 610,000 lives at the time of writing. Designers, researchers, and innovators rushed to help, coming up with new ideas to help as many people and as quickly as possible. The most iconic object of 2020 was the face mask. The rate at which the pandemic accelerated meant that healthcare staff lacked protective equipment such as face shields and face masks. This gave a new ‘design brief’ to designers and companies all over the world. Companies like Apple rushed to help by designing new face shields. Nike went as far as to use shoe parts to create new forms of personal protective equipment. Within months, masks were reconsidered and redesigned in many ways: masks for children, single-use masks, multi-use masks, fashion masks, etc. Design innovation did not stop there. Techniques like 3D printing were used to build new more affordable forms of ventilators for hospitals in response to the high demand. Healthcare facilities popped up in parking lots, cinemas and parks. Hospitals were reimagined and repurposed to accommodate the myriad of patients while still providing safe environments for patients and staff. In one New York City hospital, doctors wore GoPros on their heads to show designers the hospital’s space without them having to be there.46 This assisted in creating safer floor plans and optimizing space. Furthermore, the vast amount of information and data disseminated daily to the public could be hard to comprehend. Sounds, images, facts and figures about COVID19 bombarded us from everywhere: the media, our workspace, our educational environments and our everyday interactions. This gave designers another challenge: find new ways to communicate life-saving information in a way that people can understand and take action on. Lastly, the office as we knew it had to change to allow people to keep working during the pandemic. Physical spaces became unnecessary, and working culture had to be reimagined. Collaborative work software like ‘Mural’ became mainstream,47 and video-chat services like ‘Zoom’ added new features to meet the needs of their new users.48 Undoubtedly, healthcare workers were the main heroes of this pandemic, but designers also helped fight the war in the background. These were all changes predicted in the 1980s by American innovators like Jay Chiat, who tried and failed to create open and fluid work spaces.49 It took advances in technology and a global pandemic to make these changes part of the mainstream.

46

GoPro (2020). Mural. https://www.mural.co/. Accessed 25 Oct 2021. 48 Zoom. https://zoom.us. Accessed 25 Oct 2021. 49 Berger (1999); American Association of Advertising Agencies (1994). 47

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21.17 Reflections and the Lasting Impact of American Design Before taking a position as a professor at Keio University, my career was in New York City. Until the 1990s, my impression of the local design culture was that, although highly skilled and refined, it was not cutting edge. This related mainly to the field of graphic design, as there was very little industrial or product design (aside from package design) done in New York City. At the time, it appeared that cutting-edge design was often Japanese or European. Therefore, I was surprised the internet revolution was as much in New York City as it was in Silicon Valley. I was surprised again in the 2010s, when New York City became the center for innovation in 3D printing and additive manufacturing. Now in 2021, I realize that the US has often led in design and emergent technology innovation. It is my belief that the density and diversity of human capital in New York City is the main reason that so much innovation is happening in the city, cementing its position as a design capital. In many ways, ‘diversity’ is also an American innovation. Looking back at the past of American design, we can clearly see its impact is everywhere. American design differentiates itself from that of other regions through innovation and operating without historical or cultural restraints. It is often born from material and technological advancements, as seen through innovations such as Bakelite, the internet and 3D printing. However, one of the most essential features of American design which helped it evolve, and in turn, influence global design, was the lack of deep adherence to traditions in the crafts. These traditions—which include the systems of apprenticeships and guilds, and government-defined denominations for consumer products ranging from food and wine to fashion—are still evident in Japan and were undoubtedly strong in Europe through the twentieth century and now. (We do see some of this traditionalism in the US with some states introducing legislation on what can be called ‘meat’ in reaction to the many meat substitutes being developed. The same reactionism is seen in Europe as well). These attitudes can have a stifling effect on innovation. The American disregard of tradition explains some of the standard design innovations we see today, especially when viewed in the context of how technology products are often borne from a curatorial process of creation (utility patents) that spawns new iterations of an invention. America’s political and economic success following World War II helped introduce American design philosophies worldwide. Style became as important as function, and the production of goods became the base of consumerism in society. Moreover, American design epitomized the propagation of machine aesthetics. This mindset is still seen today, where consumerism and consumption drive a design’s success. Government and corporate research labs fill a great need by bringing speculative design to practical applications, and the rise of higher design education programs,

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like the MIT Media Lab,50 will continue to contribute to a growing body of American design. Prioritizing a diversity of thought and experience continues to allow American institutions to foster creativity and innovation. We have been researching the changes to design and the role of the designer at the SAMCARA design research lab at Keio University to help companies and industries attract talent for innovation.51 A general overview of the shift in terms of designer roles. Terms through the 1940s. • Commercial Artist • Architect • Fashion Designer (including specific distinctions, for example, Milliner, Cordwainer) • Interior Designer • Set Designer Terms becoming more common in the 1950s–1980s. • • • •

Graphic Designer Art Director Illustrator Product Designer Terms becoming more common in the 1990s–2000s.

• Interaction Designer • Design Consultant • Brand Designer Terms becoming more common in the 2000s–2020s. • • • • •

Experience Designer Information Architect User Experience Engineer Brand Experience Designer Virtual Product Designer

Historically, these roles were often identified by the word ‘design’ and ‘designer’, but as roles have become more specialized, so too have the terms that describe them. While people in the US are less sensitive to these shifting distinctions and titles, there are times, such as when musician Kanye West declared himself to be a designer, when the design community pushes back. However, without requiring licensing as we have for doctors and lawyers, anyone can be a ‘designer’. More importantly, being a designer holds no indication of quality or talent. An abridged timeline of major American design innovations.

50 51

MIT Media Lab. https://www.media.mit.edu. Accessed 25 Oct 2021. Samcara. https://samcara.org/. Accessed 25 Oct 2021.

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• Electrification of cities giving birth to the telegraph, the radio, and the telephone – In addition to the design of these products, their introduction necessitated innovation in network and infrastructure design. • Bakelite, kicking off the plastics revolution • Taking the US dollar off the gold standard – This shows the US’s flexibility in currency can be viewed as revolutionizing service design, setting the stage for many finance innovations including blockchain and new expressions of value. • Car culture and post-World War II futurism – Along with popular American science-fiction, these developments set the tone for a new aesthetic, influencing all design to follow. • XEROX PARC Lab, giving rise to visual interface design and home computing • Bio-design, exemplified in clustered regularly interspaced short palindromic repeats (CRISPR), Modern Meadow, and Beyond Meat, bringing design thinking to material science. What has been the impact of American design? • American culture values greater freedom from defined job titles, traditions and materials. • A cultural openness allows technological innovations and inventions to be closely connected to design processes and commercial/pop culture. • Higher rates of immigration allow the concentration of innovators in American cities. • A disregard for cultural values of design and craft opens a cross-pollination of ideas and disruption to industries. • Laissez-faire government regulation allows for faster commercialization of new materials, processes and disruptive ideas.52

21.18 The Future of Design? The future of design will be exemplified by the genetic engineering of new materials and products, artificial intelligence (AI) and bio-design. I believe the designer’s role as a professional in aesthetics will continue to be devalued as software-derived information regarding consumer psychology informs design choices. This is not just speculation. This is already happening and will continue to evolve until computers will be able to develop design market-ready solutions based only on consumer data. In terms of bio-design, companies like Modern Meadow are creating 52

For a good overview of twentieth century American architecture, I recommend Wiseman (2020); for graphic design up until 1990, Friedman (1989). For screen-based interface design post-1990, Ford (2019)

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lab-grown leather and designers such as Neri Oxman, push the boundaries of design and science for purely circular and organic solutions for fabrication (Fig. 21.9).53

Fig. 21.9 ‘Vespers III’ project (2018) by Neri Oxman (source: ©Oxman N and The Mediated Matter Group (2018))

The designer used to need a rich skillset to operate the tools to produce designs. As AI progresses, skill will take a back seat to concept creation. The designer will become more of a director, and dare I say it, a curator, and eventually, even this role will disappear. But for now, we see amazing things in the US: CRISPR is developing gene-therapeutic pharmaceuticals in Massachusetts, Modern Meadow is based in New Jersey, and Beyond Meat is innovating plant-based meat substitutes out of California. Whether America maintains this lead in product design and AI software remains to be seen. The political influence of the religious right in the US has put a dampener on genetic engineering research with human tissues, which could affect research that might propel design to a new era where materials and products are grown in a lab. But this too will evolve, and I feel that the magic formula of diversity of thought, diversity of people, and diversity of experience places the US in a unique position for continuing dominance.

References Adams JT (2012 [1931]) The Epic of America. Routledge, New York City American Association of Advertising Agencies (1994) Chiat\Day and the Invention of the ‘Open Office’. https://www.aaaa.org/timeline-event/chiatday-invention-open-office/?cn-reload ed=1. Accessed 25 Oct 2021 Andrade WS (2013) Coca-Cola bottles (CC BY-SA 2.0). Available via flickr. https://www.flickr. com/photos/will_spark/8602471913. Accessed 25 Oct 2021 Bainbridge WS (2016) Roco MC (2016) Science and Technology Convergence: With Emphasis for Nanotechnology-Inspired Convergence. J Nanoparticle Res 18(7):1–19. https://doi.org/10.1007/ S11051-016-3520-0 Berger W (1999) Lost in Space. Available via Wired, 2 Jan 1999. https://www.wired.com/1999/02/ chiat-3/. Accessed 25 Oct 2021

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Modern Meadow. https://www.modernmeadow.com. Accessed 25 Oct 2021; Dvir (2019).

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Black H (2012) The Art of the Distinguished: How Fashion Magazines Influenced the Definition and Understanding of Modern Glamour. Dissertation, Graduate School of Clemson University. https://tigerprints.clemson.edu/cgi/viewcontent.cgi?article=2363&context=all_theses. Accessed 25 Oct 2021 Bryan P, Seppälä T, Kenney M (2015) One Ring to Unite Them All: Convergence, the Smartphone, and the Cloud. J Ind Competition Trade 15(1):21–33. https://doi.org/10.1007/S10842014-0189-X Côrte-Real E (2010) The Word ‘Design’: Early Modern English Dictionaries and Literature on Design 1604–1837. Working Papers on Design 4(5) Couldrey V (2001) The Art of Tiffany. Eagle Editions, London Daderot (2015) Radio exhibited in the Museum für Angewandte Kunst Köln — Cologne, Germany (CC0 1.0). Available via Wikimedia Commons. https://commons.wikimedia.org/wiki/File: Radio_Model_400_(FC-400)_Patriot,_Norman_Bel_Geddes,_Emerson,_Catalin_case_-_Mus eum_f%C3%BCr_Angewandte_Kunst_K%C3%B6ln_-_Cologne,_Germany_-_DSC09461.jpg. Accessed 25 Oct 2021 Daubs K (2016, 15 May) Karim Rashid’s Message: Lose the Fear and Face the Future. Toronto Star. https://www.thestar.com/news/insight/2016/05/15/karim-rashids-messagelose-the-fear-and-face-the-future.html. Accessed 25 Oct 2021 Dvir N (2019) Neri Oxman Is Redesigning the Natural World. Available via Surface. https://www. surfacemag.com/articles/neri-oxman-material-ecology/. Accessed 25 Oct 2021 Evanson T (2019) Pony Wisteria Lamp—Cleveland Museum of Art (CC BY-SA 2.0). Available via flickr. https://www.flickr.com/photos/timevanson/49325173518/. Accessed 25 Oct 2021 Ford R (2019) Web design. The evolution of the digital world 1990–Today. Taschen, Cologne Forty A (1986) Objects of Desire. Pantheon Books, New York City Friedman M (1989) Graphic design in America: a visual language history. Harry N. Abrams, New York Fuller RB (1938) Nine Chains to the Moon: An Adventure Story of Thought, 1st edn. Lippincott, Philadelphia Gertner J (2012) The Idea Factory: Bell Labs and the Great Age of American Innovation. Penguin, New York City Gill D, Hurrell K, Prescott-Walker R, Raymond M, Richardson V (1999) Style and Design (History of the 20th Century). Parragon Plus GoPro (2020) Hero Alert: Celebrating International Nurses Day with Mt. Sinai ICU. Available via GoPro. https://gopro.com/fr/fr/news/hero-alert-nurses-week-mt-sinai-hospital. Accessed 25 Oct 2021 Greenberger A, Selvin C (2021) 20 Curators Who Changed the Way We See Art, 22 Apr 2021. Available via ARTnews. https://www.artnews.com/list/art-news/artists/greatest-historical-curators-ofall-time-1234590491/. Accessed 25 Oct 2021 Gunes S (2012, 1 Jan) Design Entrepreneurship in Product Design Education. Procedia—Social and Behavioral Sciences 51: 64–68. https://doi.org/10.1016/J.SBSPRO.2012.08.119 Henderson A (1992) Media and the Rise of Celebrity Culture. OAH Mag Hist 6(4):49–54. https:// doi.org/10.1093/maghis/6.4.49 Heskett J (1980) Industrial Design. Thames and Hudson, High Holborn Hiltzik, MA (1999) Dealers of Lightning: Xerox PARC and the Dawn of the Computer Age. Orion Business, New York City Jobs S (2005) ‘You’ve got to find what you love,’ Jobs says. Commencement address delivered by Steve Jobs, CEO of Apple Computer and of Pixar Animation Studios, 12 June 2005. Available via Stanford Report. https://news.stanford.edu/news/2005/june15/jobs-061505.html. Accessed 25 Oct 2021 Kurzweil R (2005) The Singularity Is Near: When Humans Transcend Biology. Viking. https://doi. org/10.2307/20031996. Accessed 25 Oct 2021

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Library of Congress (2017) Raymond Loewy sketch of the 1963 Studebaker Avanti (public domain in the US). Available via Library of Congress. https://www.loc.gov/rr/print/guide/port-5.html. Accessed 25 Oct 2021 Luscombe B (2001, 2 July) Design: The Poet Of Plastic. Available via TIME. http://content.time. com/time/subscriber/article/0,33009,1000244,00.html. Accessed 25 Oct 2021 Meikle J (2005) Design in the USA. Oxford University Press Miguelon756-5303 (2016) iPod 1G (CC BY-SA 4.0). Available via Wikimedia Commons. https:// commons.wikimedia.org/wiki/File:IPod1stWIKIPEDIA.png. Accessed 25 Oct 2021 Neuendorf H (2016) Art Demystified: What Do Curators Actually Do? Available via artnet news. https://news.artnet.com/art-world/art-demystified-curators-741806. Accessed 25 Oct 2021 Obniski M (2008) The Arts and Crafts Movement in America, 10 Nov 2016. Available via The Met. https://www.metmuseum.org/toah/hd/acam/hd_acam.htm. Accessed 25 Oct 2021 Oxman N and The Mediated Matter Group (2018). Project Vespers III. Available via Neri Oxman. https://oxman.com/projects/vespers-iii. Accessed 25 Oct 2021 Pulos AJ (1988) The American Design Adventure, 1940–1975. The MIT Press, Cambridge, Mass Raizman DS (2010) History of Modern Design, 2nd edn. Laurence King Publishing, London Rawsthorn A (2013) Hello World: Where Design Meets Life. Hamish Hamilton, London Sailko (2016) Furniture in the Milwaukee Art Museum (CC BY 3.0). Available Wikimedia Commons. https://commons.wikimedia.org/wiki/File:Isamu_noguchi_per_zenith_radio_ co.,_radio_nurse,_1937.jpg. Accessed 25 Oct 2021 Sparke P (1987) Design in Context. Bloomsbury Votolato G (1998) American Design in the Twentieth Century. Manchester University Press, Manchester Wilkinson P (2013) Great Designs: The World’s Best Design Explored & Explained. Penguin Random House, London Wiseman C (2020) Twentieth-Century American architecture: the buildings and their makers. W.W. Norton & Company, New York WMpearl (2019) Fly’s Eye Dome by Buckminster Fuller, 50-foot prototype, Crystal Bridges Museum of American Art (CC0 1.0). Available via Wikimedia Commons. https://commons. wikimedia.org/wiki/File:Fly%27s_Eye_Dome_by_Buckminster_Fuller,_Crystal_Bridges_Mus eum.JPG. Accessed 25 Oct 2021

Additional Bibliography Gibson E (2018). Eight of Buckminster Fuller’s Most Forward-Thinking Ideas. Available via Dezeen. https://www.dezeen.com/2018/08/27/eight-forward-thinking-ideas-buckminster-fullerexhibition-los-angeles/. Accessed 25 Oct 2021 Lanxon N, Hoyle A (2011) The Complete History of Apple’s iPod. https://www.cnet.com/pictures/ the-complete-history-of-apples-ipod/. Accessed 25 Oct 2021 Polletta D (2019) Tiffany Lamp Designer Clara Driscoll Receives Her Due. https://www.ideast ream.org/news/tiffany-lamp-designer-clara-driscoll-receives-her-due. Accessed 25 Oct 2021 Rago (2020) Modern Design. https://www.ragoarts.com/auctions/2020/05/modern-design/207. Accessed 25 Oct 2021 Ren Y (2017) Design World of Raymond Loewy. Available via Book Binding Fox. https://bookbi ndingfox.com/2017/07/05/design-world-of-raymond-loewy/. Accessed 25 Oct 2021

Professor Matthew Waldman Designer, Inventor and Educator. Matthew Waldman is best known as the founder of NOOKA—the lifestyle design brand that brought the revolution of interface design to physical products and created unique timepieces that reinterpreted how time was told.

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Before NOOKA, Matthew gained recognition as a pioneer in digital interactive and UX design, founding New York Zoom in 1997, building an award-winning global team at Reuters in 2002, and with his interactive design studio, creating narrative-driven design for brands. At Keio University Graduate School of Media Design (KMD), Professor Waldman turned his focus to circular design, in particular, expanding the designer toolkit to material science and bio-design. Professor Waldman founded the SAMCARA ‘evolution by design’ research lab at KMD in the Fall of 2017. SAMCARA seeks to build a new language for the circular economy and to prepare innovators to embrace a new era of design that has an increased focus on bio-design, circular design and material design. SAMCARA participates in the International BioDesign Challenge in New York City each year and works with Japanese corporations to develop new approaches to their businesses.

Chapter 22

History of Design Protection in the United States of America Tatsuyuki Suemune

Abstract This chapter provides an overview of the history of design protection in the United States of America (US), in particular, the historical development of the design patent system. The chapter first looks at the background and legislative process leading up to the enactment of the 1842 Act, the first design protection law in the US. The features of the 1842 Act are described and discussed, its various revisions are outlined, and design practice is briefly considered as background to the legislation. This history shows us that the development of design patent law— especially in relation to utility patent law—has had many twists and turns. The final section of the chapter provides an overview of current design patent law and briefly mentions other design protection laws, namely copyright and trade dress.

22.1 Introduction There are several measures to protect designs in the US. Nowadays, design patents are still the most important means among them, although federal copyright protection and trade dress protection under trademark and unfair competition law are also available.1 The design patent system dates back to 1842, when the first design protection statute in the US was enacted in order to fill a gap between copyright, trademark and utility patent protection.2 This chapter provides an overview of the history of the US design protection system, focusing on the design patent system. It outlines the various revisions to

1 15 U.S.C. §1051 et seq. Trademark and unfair competition laws under relevant state law are also relevant. 2 Chisum (2021), §23.02. See also Hudson (1948), p. 380; Du Mont and Janis (2013), pp. 843–844; McKenna and Strandburg (2013), p. 31.

T. Suemune (B) Kinjo Gakuin University, Nagoya, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_22

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the design patent law, as well as relevant judicial precedent and background circumstances. Other legal measures, such as copyright law and trademark law, are also considered. However, the primary focus of this chapter is the design patent system.

22.2 The 1842 Act: The First Design Protection Legislation in the US 22.2.1 Background The attention of US manufacturers to industrial design had been increasing for some time before the establishment of the design patent system.3 However, the US manufacturing industry at that time was characterized by widespread imitation and copies of foreign designs rather than the creation of original industrial designs.4 The enactment of design protection legislation in England,5 in the context of ongoing trade between the US and England, may have spurred US design manufacturers to call for similar design protection.6 In the past, it was thought that Congress had enacted the 1842 Act—the first design protection legislation in the US—in response to the recommendations in the report of Commissioner of Patents, Henry Ellsworth.7 However, a more recent study by Jason J. Du Mont and Mark D. Janis has analyzed the legislative process of the 1842 Act in detail and shown there were many twists and turns in the legislative

3

See Pulos (1983), p. 133: ‘By 1840 manufacturers had realized that what Bishop refers to as the “Polite, Fine and Ornamental Arts” had become an indispens[a]ble ingredient in the success of domestic furnishings. They realized that, although the consumer might not always understand the mechanism or construction of a manufactured product, he felt that he could always depend upon what his senses told him about it. They realized that the consumer would always seek to elevate his taste by purchasing fashionable products that reflected a higher level of aesthetic appreciation. […] Many others […] began to pay particular attention to the notion that artistic values applied to utilitarian manufactures might also increase their saleability’. See also Du Mont and Janis (2013), p. 851. Jason J. Du Mont and Mark D. Janis point out that industry in general, not only manufacturers in the field of iron casting, had begun to pay more attention to industrial design. 4 See Pulos (1983), p. 134: ‘It would seem that American manufacturers were too dependent upon imported inspiration to tolerate any interference with their practice of borrowing and putting out for sale any newly imported design, especially in the area of fabrics, as soon as it became or threatened to become popular. American mills, operating behind a shield of domestic tariffs, were so adept at copying foreign designs and so quick to get them to market that the best of the imports were quickly beaten out of their fair market’. 5 An Act to Secure to Proprietors of Designs for Articles of Manufacture the Copyright of Such Designs for a Limited Time, (1839) 2 Vict, c. 17. 6 Mueller and Brean (2010), p. 448; Pulos (1983), p. 134. 7 Hudson (1948), pp. 380–381. Du Mont and Janis point out, that in this respect, Hudson relied on the following design patent treatises which did not describe any background to the legislation: Fenton (1889), pp. 1–2; Simonds (1874), p. 173. See Du Mont and Janis (2013), p. 847.

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process,8 including the petition and lobbying of Jordan L. Mott,9 a leading New York manufacturer, and the failed bill introduced by Senator John Ruggles.10 The petition of Mott insisted that while ‘ornamental and useful changes can […] be made in the design and form […] for which no patent can be obtained’, ‘the frequent ornamental and other improvements […] have rendered necessary a registration of new designs and patterns’.11 Some view Mott’s petition as a registration system that provided neither patent nor copyright protection,12 while others argue that it was consistent with the design-copyright approach of the British legislation.13 In any case, it is clear that the registration system under the petition did not operate within a patent framework. Ruggles’ failed bill was also a design-copyright system similar to the British design protection legislation at that time, except for the examination requirement, which was his own idea.14 In his annual report to Congress regarding the Patent Office’s operations for the year 1841, the Commissioner of Patents, Henry Ellsworth, recommended enacting legislation protecting ‘new and original designs for articles of manufacture, both in the fine and useful arts […] for a limited time’.15 As the report points out,16 there were no legal measures to protect designs in the US at that time.17 Therefore, the proposed legislation was required ‘to fill a gap between copyright protection for authors and patent protection for inventors in the mechanical arts’.18 Despite using the copyright terminology of ‘original’ for the subject matter, Commissioner Ellsworth proposed that the protection could be provided ‘by simply authorizing the Commissioner to issue patents for these objects, under the same limitations and on the same conditions as govern present action in other cases’.19 Therefore, Commissioner Ellsworth proposed establishing a design protection system as a system similar to utility patents

8

See Du Mont and Janis (2013), pp. 848–873. JORDAN L. MOTT ET AL., PETITION OF A NUMBER OF MANUFACTURERS AND MECHANICS OF THE UNITED STATES, PRAYING THE ADAPTION OF MEASURES TO SECURE TO THEM THEIR RIGHTS IN PATTERNS AND DESIGNS, S. Doc. No. 154 (2d Sess 1841) (Manufacturers’ Petition). 10 It was Senator Ruggles who presented the petition to Congress (Cong Globe, 26th Cong., 2nd Sess., 139 (1841)): Du Mont J and Janis M (2013), p. 858. 11 Manufacturers’ Petition, p. 1. 12 Du Mont and Janis (2013), p. 856. 13 Mueller and Brean (2010), p. 449. 14 Du Mont and Janis (2013), pp. 858–863. 15 REPORT FROM THE COMMISSIONER OF PATENTS, SHOWING The operations of the Patent Office during the year 1841, S. Doc. No. 169, p. 2 (2d Sess. 1842) (Report from the Commissioner). 16 Report from the Commissioner. 17 Hudson (1948), p. 380. 18 Chisum (2021), §23.02. See also Hudson (1948), p. 380; Du Mont and Janis (2013), pp. 843–844; McKenna and Strandburg (2013), p. 31. 19 Report from the Commissioner. 9

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rather than a copyright-like system.20 However, it is noted that ‘under the same limitations and on the same conditions as govern present action’ was intended to mean ‘limitations related to the acquisition of these new rights’,21 not ‘to meet the identical patentability requirements imposed on utility inventions’.22

22.2.2 The 1842 Act On 29 August 1842, Congress enacted the 1842 Act, the section relating to design patents provided as follows: SEC. 3. And be it further enacted, That any citizen or citizens, or alien or aliens, having resided one year in the United States and taken the oath of his or their intention to become a citizen or citizens who by his, her, or their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials, or any new and original design for the printing of woollen, silk, cotton, or other fabrics, or any new and original design for a bust, statue, or bas relief or composition in alto or basso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed or painted or cast or otherwise fixed on, any article of manufacture, or any new and original shape or configuration of any article of manufacture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent therefor, and who shall desire to obtain an exclusive property or right therein to make, use, and sell and vend the same, or copies of the same, to others, by them to be made, used, and sold, may make application in writing to the Commissioner of Patents expressing such desire, and the Commissioner, on due proceedings had, may grant a patent therefor, as in the case now of application for a patent: Provided, That the fee in such cases which by the now existing laws would be required of the particular applicant shall be one half the sum, and that the duration of said patent shall be seven years, and that all the regulations and provisions which now apply to the obtaining or protection of patents not inconsistent with the provisions of this act shall apply to applications under this section.23

Design patents appeared to have a mixed character under the 1842 Act.24 It is noted that the Act referred to the subject matter as ‘any new and original shape or configuration of any article of manufacture not known or used by others’, reminiscent of patentability requirements for utility inventions at the time.25 Also, the requirement that protectable designs be invented or produced ‘by his, her, or their own industry, genius, efforts, and expense’ is similar to phrases used in several copyright decisions around that time.26 20

Du Mont and Janis (2013), p. 865; Mueller and Brean (2010), p. 451. Du Mont (2009), p. 542. 22 Mueller and Brean (2010), p. 451. 23 Act of 29 Aug 1842, Ch 263, §3, 5 Stat. 543, 543–544 (1842). 24 Du Mont and Janis (2018), pp. 345–346. 25 McKenna and Strandburg (2013), p. 36. 26 McKenna and Strandburg (2013), p. 36. 21

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It appears that ‘anything more than novelty and originality’ was not required for the patentability of design patents, indicated by the use of the conjunction ‘or’ in the phrase ‘invented or produced’.27 This view is supported by the fact that the 1842 Act predated the Supreme Court judgment in Hotchkiss v. Greenwood,28 which is considered to be the origin of the ‘invention’ requirement,29 a predecessor of the modern requirement of non-obviousness. However, the Hotchkiss decision would later influence design patents, even though the decision did not relate to a design patent.30 Why was design protection incorporated into the patent system? Thomas B. Hudson has listed three reasons: 1.

2. 3.

designs applied to articles of manufacture were to be ‘distinguished from purely intellectual products’ and so ‘the needed protection was more closely related to the patent than the copyright field’; ‘the suggestion for the [1842 Act] and its basis came from the Commissioner of Patents’; and the lack of a central copyright depository.31

On the other hand, Du Mont and Janis dispute reasons (1) and (3) proposed by Hudson.32 They emphasize Commissioner Ellsworth’s political considerations,33 including the establishment of revenue streams for the Patent Office.34

22.3 The 1861 Act The 1861 Act is said to have been enacted primarily to reform the practice of the Patent Office.35 The 1861 Act made the following changes to the rules concerning design patents: 36 27

Mueller and Brean (2010), p. 453. Mueller and Brean (2010), p. 454; McKenna and Strandburg (2013), p. 32: ‘Thus, at the time the design patent statute was enacted, the patentability standard appears to have required only rather minimal advances and, most importantly, paid no attention to whether the invention went beyond what the market would have produced in the ordinary course’. 29 Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1850): ‘unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor’. 30 Burstein (2012), p. 177. 31 Hudson (1948), p. 383. See also Peterson (2008), pp. 891–892; Mueller and Brean (2010), p. 452. 32 Du Mont and Janis (2013), p. 868. 33 Du Mont and Janis (2013), pp. 866–868. 34 Jason J. Du Mont has made the same point: Du Mont (2009), p. 544. 35 Du Mont (2009), p. 546. 36 Act of 2 Mar 1861, Ch 88, §11, 12 Stat. 246, 248 (1861). 28

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the term of protection changed to ‘three and one half years, or for the term of seven years, or for the term of fourteen years, as the said applicant may elect in his application’; the fee structure was amended for each term of protection; ‘or any new and original design for the printing of woolen, silk, cotton, or other fabrics’, provided for in the 1841 Act in relation to the subject matter eligible for protection, was deleted; ‘all the regulations and provisions which now apply to the obtaining or protection of patents not inconsistent with the provisions of this act shall apply to applications under this section’, provided for in the 1841 Act, that is, the ‘catch-all’ clause, was deleted.

Regarding (1), this system—whereby an applicant could elect a term of protection—continued under each law until the 1952 Act. Regarding (3), some viewed this change as not a substantial change to the subject matter eligible for protection because the deleted category was captured by ‘any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on, any article of manufacture’.37 On the other hand, there is an opinion that the 1861 Act ‘made some slight changes to the subject matter that was eligible for protection’.38 Regarding (4), according to Du Mont, the catch-all clause was ‘no longer needed’ because ‘the 1861 Act now specified most of the terms in the 1842 Act that were made by reference to the general patent laws’ including the rules related to fees.39

22.4 The 1870 Act: The Word ‘Useful’ Added The 1870 Act,40 among other changes, expanded the single provision of previous laws into six clauses and revived the catch-all clause which had been abolished under the 1861 Act. The Act also deleted the following qualifications of applicants, provided for under both the 1842 and 1861 Acts: ‘any citizen or citizens, or alien or aliens; having resided one year in the United States, and taken the oath of his or their intention to become a citizen or citizens’.41 Given the political situation at the time of the enactment of the 1842 Act, it is noted that the provision concerning the qualifications of applicants was important to ensure the passage of the Act.42 37

Simonds (1874), p 179: ‘this difference is more apparent than real’; Hudson (1948), p. 384; Du Mont and Janis (2018), p. 354. 38 Du Mont (2009), p. 547. 39 Du Mont (2009), p. 548. 40 Act of 8 July 1870, Ch. 230, §§71–76, 16 Stat. 198, 209–210 (1870). 41 Chisum (2021), §23.02, n. 4. 42 Du Mont and Janis (2013), p. 873: ‘Consistent with protectionist ambitions, the Senate amended the pending 1842 design patent legislation in order to limit design patent protection to citizens

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In relation to subject matter, the word ‘useful’ was added and so now a design had to be ‘any new, useful, and original shape or configuration of any article of manufacture’ to be protected. Some commentators have noted that the intention of Congress here is unclear.43 Others suggest that this change may have been ‘an effort to distinguish the subject matter of design patents from the newly copyrightable subject matter’44 because the 1870 Act45 defined copyrightable subject matter to include three-dimensional works of art.46 However, Du Mont and Janis have suggested that Congress did not intend ‘to change the scope of eligible subject-matter of design patents’.47 The 1870 Act is also considered to have resulted in a form of ‘complementary protection’ under the design patent and utility patent systems,48 to the extent that it gave rise to the possibility of a design patent protecting subject matter that failed to meet utility patent requirements.49 In 1871, the Supreme Court decided one of the most famous design patent cases— Gorham v. White—concerning a design for the handles of tablespoons and forks.50 The Court noted the design patent legislation was ‘plainly intended to give encouragement to the decorative arts’.51 The Court also set out a test to determine infringement in design patent cases—the ‘ordinary observer’ test.52 Many years later, the Court of Appeals for the Federal Circuit (CAFC) declared that this test should be ‘the sole test

or aliens who resided in the United States and intended to become citizens.[…] The citizenship provision was likely far more important to the ultimate passage of the legislation than the suggestion to incorporate patent law rules.’ 43 Magliocca (2003), p. 876: ‘There is no legislative history to indicate why Congress made the alteration, and it does seem unlikely that such a major policy shift would have been undertaken without any discussion at all’. Du Mont (2009), p. 565 n. 203: ‘Unfortunately, there is very little legislative history for this Act’. 44 McKenna and Strandburg (2013), p. 38. 45 Act of 8 July 1870, Ch. 230, §§86, 16 Stat. 198, 212 (1870). 46 Mazer v. Stein, 347 U.S. 201, 209 (1954): ‘The Act of 1870 defined copyrightable subject matter as: “[…] any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statue, statuary, and of models or designs intended to be perfected as works of the fine arts.” (Emphasis supplied.) The italicized part added three-dimensional works of art to what had been protected previously.’ 47 Du Mont and Janis (2018), p. 361. 48 Magliocca (2003), p. 876; Du Mont (2009), pp. 565–566; McKenna and Strandburg (2013), p. 38. 49 Even before the 1870 Act, the Crane case provides an example of this: Ex parte Crane, 1869 Dec. Comm’r Pat. 7 (1869) reprinted in Simonds (1874), pp. 59–61. 50 Gorham Mfg. Co. v. White, 81 U.S. 511 (1871). 51 81 U.S. 511, 524. However, this reference does not necessarily support the adoption of a patentlike system ‘since analogous constitutional language would be used to justify a design copyright scheme’: Du Mont and Janis (2013), p. 845. 52 81 U.S. 511, 528: ‘We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other’.

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for determining whether a design patent has been infringed’ in its en banc decision in Egyptian Goddess.53

22.5 The 1874 Act: Impact of the Term ‘Invention’ The provisions relating to design patents were consolidated into the Revised Statutes in 1874 and were ‘substantially a reprint, in almost the same phraseology’ of the 1870 Act.54 However, a small change had a significant impact on the substantive requirements of design patents. The change related to a conjunction—‘[a]ny person […] has invented or produced any new and original design’55 became ‘[a]ny person […] has invented and produced any new and original design’ (emphasis added).56 While several commentators have pointed out that this change was likely a typographical error,57 this ‘meant [the requirement of] “invention” and all of its baggage from utility patents applied to designs’.58 In Northrup v. Adams, a case concerning a design patent for a ‘provision or cheese-safe’, the Court stated that: The law applicable to this class of patents does not materially differ from that in cases of mechanical patents […] The same general principles of construction extend to both. To entitle a party to the benefit of the act, in either case there must be originality and the exercise of the inventive faculty. […] Mere mechanical skill is insufficient. There must be something akin to genius—an effort of the brain as well as the hand.59

This decision is considered to have required designs to satisfy the ‘invention’ requirement and supported the view that the substantive criteria of utility patents and design patents were now merged.60 It is also noted that the Court cited the catch-all clause61 when it applied the substantive requirements of utility patents.62 The Supreme Court maintained its position of not requiring the ‘invention requirement’ for some time,63 including in Lehnbeuter, a case concerning a design patent for a ‘show-case’.64 However, the Court changed its position in Whitman Saddle, a 53

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008). Hudson (1948), p. 384. 55 Act of 8 July 1870, Ch. 230, §71, 16 Stat. 198, 209–210 (1870). 56 Revised Statutes of the United States, Passed at the First Session of the Forty-Third Congress, 1873–’74, §4929, at 954 (2d ed. 1878). 57 Mueller and Brean (2010), pp. 456–458; Du Mont (2009), p. 575. 58 Du Mont (2009), p. 575. 59 Northrup v. Adams, 18 F. Cas. 374, 374 (C.C.E.D. Mich. 1877). 60 Du Mont (2009), p. 578. 61 Revised Statutes of the United States, Passed at the First Session of the Forty-Third Congress, 1873–’74, §4933, at 954 (2d ed. 1878). 62 Du Mont (2009), pp. 581–582. 63 See Mueller and Brean (2010), p. 473; Du Mont (2009), pp. 583–584. 64 Lehnbeuter v. Holthaus, 105 U.S. 94, 96 (1881): ‘The design patented by the complainants differs essentially from any other which has been called to our attention. It is not covered by the other patents 54

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case concerning a patent for a design for saddles. In that case, the Court held for the first time that designs were required to satisfy the ‘invention’ requirement,65 stating that: The exercise of the inventive or originative faculty is required, and a person cannot be permitted to select an existing form, and simply put it to a new use, any more than he can be permitted to take a patent for the mere double use of a machine. If, however, the selection and adaptation of an existing form is more than the exercise of the imitative faculty, and the result is in effect a new creation, the design may be patentable.66

In this case, the Court stated that, ‘[n]othing more was done in this instance […] than to put the two halves of these saddles together in the exercise of the ordinary skill of workmen of the trade, and in the way and manner ordinarily done’,67 and held the patented design lacked the ‘invention’ requirement. Some commentators have pointed out the importance of considering the historical context of the Court’s decision.68 They note that the decision predated the concept of the ‘industrial designer’ and that, at that time, the same people designed and made saddles.69 Therefore, ‘the Whitman Saddle Court’s conflating of the manufacture and design of the claimed saddle is understandable’.70 After Whitman Saddle, most courts no longer questioned ‘invention’ as a requirement for the patentability of a design patent.71

22.6 The 1887 Act: Special Provision for the Remedy of Design Patent Infringement The 1887 Act provided a special rule concerning damages for infringement of design patents.72 The Act stated that. it shall be unlawful for any person other than the owner of said letters patent […] to apply the design […] or any colorable imitation thereof, to any article of manufacture […] or to sell or expose for sale any article of manufacture to which such design or colorable imitation shall […] have been applied, knowing that the same has been so applied.73

which are set out in the record. Whether it is more graceful or beautiful than older designs is not for us to decide. It is sufficient if it is new and useful’. 65 Mueller and Brean (2010), p. 459; Du Mont (2009), p. 584. 66 Smith v. Whitman Saddle Co, 148 U.S. 674, 679 (1893). 67 148 U.S. 674, 681. 68 Mueller and Brean (2010), p. 477. 69 Mueller and Brean (2010), p. 477. 70 Mueller and Brean (2010), p. 477. 71 Du Mont (2009), p. 586; Burstein (2012), p. 177: ‘By the twentieth century, most courts recognized an “invention” requirement for patentable designs’. 72 Act of 4 Feb 1887, Ch. 105, §§1–2, 24 Stat. 387, 387–388 (1887). 73 Act of 4 Feb 1887, Ch. 105, §1, 24 Stat. 387, 387 (1887).

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It also noted that: Any person violating the provisions […], shall be liable in the amount of two hundred and fifty dollars; and […] he shall be further liable for the excess of such profit over and above the sum of two hundred and fifty dollars; and the full amount of such liability may be recovered by the owner of the letters patent[.]74

The legislation was a response by Congress to the Dobson decisions,75 rendered by the Supreme Court.76 According to the report of the House of Representatives at the time: It now appears that the design patent laws provide no effectual money recovery for infringement. This is the result of the statute, as applied to the peculiar character of property involved, in a test case decided in April last by the Supreme Court of the United States. […] The bill provides a rule of recovery for infringement of design patents, merely supplying what the case referred to shows to be lacking in the existing law.77

Later, these provisions were codified into 35 U.S.C.§289 under the 1952 Act, at which time the knowledge requirement—‘knowing that the same has been so applied’—was removed without explanation.78 The amended provision was criticized. It was thought that this strict liability offense was too harsh for independent designers and that they would ‘be liable for their entire profit, whether attributable to the design or not’.79

22.7 The 1902 Act: The Rise of Industrial Design Until the nineteenth century, the US was largely an agricultural economy, and so the design patent law satisfied the requirements of industry.80 However, momentum for more effective design protection legislation accelerated in the early twentieth century due to a number of factors, including ‘the continued growth of mass-production, the increased variety and diversification of products, and the increased importance of design in determining consumer choice’.81 The 1902 Act made some amendments to §4929 of the Revised Statutes of the United States. First, the 1902 Act simplified the previous provision by defining the subject matter as ‘any new, original, and ornamental design for an article of

74

Act of 4 Feb 1887, Ch. 105, §1, 24 Stat. 387, 387 (1887). Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885); Dobson v. Dornan, 118 U.S. 10, 6 S. Ct. 946 (1886). 76 Chisum (2021), §23.05 [1][a]. 77 18 Cong. Rec. 834 (20 Jan 1887). 78 Chisum (2021), §23.05 [1][a]. 79 Lemley (2013), pp. 223–224. 80 Ringer (1959), p. 25. 81 Ringer (1959), p. 25. 75

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manufacture’. That ‘there was no intent to change the basic meaning is clear’.82 The Act substituted the word ‘useful’ with ‘ornamental’ in order to ‘further clarify that design patents were not substitutes for utility patents’.83 The wording of the Act was also changed from ‘[a]ny person who, by his own industry, genius, efforts, and expense, has invented and produced any new and original design’84 to ‘[a]ny person who has invented any new, original, and ornamental design’.85 The 1902 Act deleted the phrases ‘by his own industry, genius, efforts, and expense’ and ‘produced’. Some interpreted the removal of these words as Congress’s intent ‘to indicate a lower threshold of patentability for designs, thus eliminating designs produced by industry, genius, efforts, and expense from the statute’.86 These changes appear to have had ‘a drastic impact on the types of designs that were granted’ design patent protection.87 After the 1902 Act amendments, ‘most courts universally required designs to be the product of invention or one of its closely analogous tests’.88 At the time, however, design quality in the US had not advanced enough to regularly meet the ‘invention’ requirement, and domestic design quality remained poor.89 This raised concerns about such a strict requirement.90 Around this time, there was movement to seek a new form of design protection legislation. It is also noted that ‘the importance of simplicity in product design aesthetics’ began to be emphasized in the 1920s and 1930s.91

82

Hudson (1948), p. 390. See Du Mont and Janis (2018), p. 373: ‘The 1902 Act was not intended to shrink the scope of subject-matter […] but it may have had that effect for some types of subjectmatter. […] the Patent Office may have considered itself to have more discretion to extend design patent protection only to those statues and busts that were created for large-scale reproduction’. 83 McKenna and Strandburg (2013), p. 38. See Du Mont and Janis (2018), p. 373. 84 Revised Statutes of the United States, Passed at the First Session of the Forty-Third Congress, 1873-’74, §4929, at 954 (2d ed. 1878). 85 Act of 9 May 1902, Ch. 783, §4929, 32 Stat. 193 (1902). 86 Du Mont (2009), p. 590. 87 Du Mont (2009), p. 590. See ANNUAL REPORT OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1902, H.R. DOC. No. 324, at viii (2d Sess. 1903): ‘The operation of the new design patent law, which was approved upon the 9th day of May, 1902, has been to decrease by 1191 the number of applications for design patents, for this law has operated, as it was intended to operate, to make clear the fact that mechanical devices of little importance unaccompanied by the development of new mechanical functions were not to be protected by design patents. These patents are now restricted to those ornamental characteristics of manufactured articles which were intended primarily to be the subject for the application of this law before its employment had been widened beyond its originally-intended scope’. Hudson (1948), p. 392; Mueller and Brean (2010), p. 459. 88 Du Mont (2009), p. 592. 89 Mueller and Brean (2010), p. 461. 90 Mueller and Brean (2010), p. 461. 91 Mueller and Brean (2010), pp. 462–463.

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22.8 The 1952 Act and Current Status of Design Protection 22.8.1 1952 Act: Current Design Patent Law The 1952 Act codified the design patent laws in 35 U.S.C. §§171 to 173 and 289.92 Section 171 includes rules related to subject matter as well as the catch-all clause.93 Furthermore, designs are now required to satisfy the non-obviousness requirement,94 given that ‘§10395 is a condition of patentability for all patents’,96 and that the Graham decision stated that §103 is a codification of Hotchkiss.97 Many difficulties, however, remain in applying §103 to design patents.98 Regarding the term of protection, the original version of §173 in the 1952 Act provided that ‘[p]atents for designs may be granted for the term of three years and six months, or for seven years, or for fourteen years, as the applicant, in his application, elects’, as was provided in the 1861 Act. Later, the term of protection of design patents was changed to a uniform 14 year period,99 which was further extended by the Patent Law Treaties Implementation Act of 2012 to ‘15 years from the date of grant’.100 92

Act of 19 July 1952, Ch. 950, §§171–173, 289, 66 Stat. 792, 805, 813–814 (1952). Du Mont (2009), pp. 595–596. See Act of 19 July 1952, Ch. 950, §171, 66 Stat. 792, 805, §171: ‘Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.’ 94 L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993): ‘A patented design must meet the substantive criteria of patentability, including non-obviousness in accordance with the law of 35 U.S.C. §103’. In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996): ‘Design patents are subject to the same conditions on patentability as utility patents, including the non-obviousness requirement of 35 U.S.C. §103’. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996): ‘Pursuant to 35 U.S.C. §171 (1994), one may obtain a design patent for “any new, original and ornamental design for an article of manufacture.” To obtain such a patent, however, one must satisfy the patentability requirement of 35 U.S.C. §103 (1994)’. Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380 (Fed. Cir. 2009): ‘Design patents are subject to the non-obviousness requirement of 35 U.S.C. §103. See 35 U.S.C. §171’. 95 See Act of 19 July 1952, Ch. 950, §103, 66 Stat. 792, 798 (1952), §103: ‘A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.’ 96 Du Mont (2009), p. 596. 97 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966): ‘We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability’. 98 Burstein (2012), p. 181. 99 97 P.L. 247, 96 Stat. 317. 100 112 P.L. 211, 126 Stat. 1527. 93

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As noted above, §289 sets out a special provision regarding design patent infringement, as provided for under the 1889 Act, although the current provision as amended lacks the ‘knowledge’ requirement. Recently, in Samsung v. Apple, the Supreme Court considered the meaning of ‘article of manufacture’ for the purpose of applying §289.101 In this case, concerning the infringement of design patents for smartphones, the Supreme Court rejected the CAFC interpretation that only the entire smartphone constituted an ‘article of manufacture’, and not the smartphone components.102 The Supreme Court ruled as follows: the term ‘article of manufacture’ is broad enough to encompass both a product sold to a consumer as well as a component of that product. A component of a product, no less than the product itself, is a thing made by hand or machine. That a component may be integrated into a larger product, in other words, does not put it outside the category of articles of manufacture.103

There is no system to keep a design registration secret for a certain period of time as a system specific to design patent, such as secret designs under Japanese Design Law.104

22.8.2 Other Design Protection Laws While design patents used to be the only way to protect designs, federal law now provides other forms of protection, in particular, copyright protection and trade dress protection.105 These laws are briefly outlined below. Section 102 of the current US copyright law states that protectable works of authorship include ‘pictorial, graphic, and sculptural works’.106 This category of works is defined in §101 as follows: two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.107 101

Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016). 137 S. Ct. 429, 432. 103 137 S. Ct. 429, 435. 104 Ish¯ oh¯o [Design Act], Act No. 125 of 13 Apr 1959 (Design Act), Art. 14. 105 However, there is no unregistered design right system as under European Union law: COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1–24. 106 17 U.S.C. §102 (a)(5). 107 17 U.S.C. §101. 102

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‘Useful article’—as referred to in the above definition—is also defined in §101 as follows: an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a ‘useful article’.108

In other words, protectable works under the copyright law may include the design of a useful article ‘only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article’. This test is called the ‘separability test’. In the past, courts have developed two criteria to determine separability: ‘physical’ separability,109 and ‘conceptual’ separability. It has been noted that these tests ‘measure the separation between “art” and “utility” features’.110 However, in Star Athletica v. Varsity Brands, the Supreme Court considered the ‘separability’ test under §101 in relation to the copyright protection of designs and decided to end the distinction between ‘physical’ separability and ‘conceptual’ separability.111 This copyright infringement case concerned ‘two-dimensional designs appearing on the surface of’ uniforms and other garments. In response to the Respondents’ claim that ‘the surface decorations are protected two-dimensional works of graphic art without regard to any separability analysis under §101’, the Court stated as follows: The statute […] provides that the ‘design of a useful article’ can include two-dimensional ‘pictorial’ and ‘graphic’ features, and separability analysis applies to those features just as it does to three-dimensional ‘sculptural’ features.112

Regarding the distinction between ‘physical’ separability and ‘conceptual’ separability, adopted by lower courts, the Supreme Court stated: The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction. […] it requires that the separated feature qualify as a nonuseful pictorial, graphic, or sculptural work on its own. […] Because we reject the view that a useful article must remain after the artistic feature has been imaginatively separated from the article, we necessarily abandon the distinction between ‘physical’ and ‘conceptual’ separability, which some courts and commentators have adopted based on the Copyright Act’s legislative history.113

The Court set out a new test: 108

17 U.S.C. §101. For example, Chosun Intern., Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 329 (2d Cir. 2005): ‘when a component of a useful article can actually be removed from the original item and separately sold, without adversely impacting the article’s functionality, that physically separable design element may be copyrighted’. 110 Afori O (2008), p. 1121. 111 Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). 112 137 S. Ct. 1002, 1009. 113 137 S. Ct. 1002, 1013–14. 109

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We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.114

It will be interesting to monitor the development of case law in this area to see how this new test will be applied in specific cases. Now we turn to trade dress protection. 15 U.S.C. §1125(a)(1) and (3) provides as follows: (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. […] (3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.115

Under this article, trade dress may be protected. A well-known treatise notes: Traditionally, ‘trade dress’ was thought to consist only of the appearance of labels, wrappers and containers used in packaging the product. However, in modern parlance, ‘trade dress’ includes the total look of a product and its packaging and even includes the design and shape of the product itself.116

In Wal-Mart Stores v. Samara Bros—an unregistered trade dress infringement case relating to children’s clothing—the Supreme Court held that ‘a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning’ under 15 U.S.C. §1125(a).117 Although certain requirements must be satisfied, trade dress protection now extends to product designs.

114

137 S. Ct. 1002, 1016. 15 U.S.C. §1125(a)(1) and (3). 116 McCarthy (2021), §8:4. 117 Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000). 115

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22.9 Conclusion The following two observations may be made in relation to the historical development of the US design protection system (primarily focusing on design patents) outlined in this chapter. First, the position of design patent law in the design protection system has changed over time. Second, although design practice has changed significantly over time, design patent law has not always responded to those changes. With regard to the first point, as we have seen, the 1842 Act was originally the only measure to protect designs in the US. The aim of this law was to fill the gap between copyright and utility patent protection.118 Designs are now protected under copyright law, trademark and unfair competition law. Design patent law now holds a very different position in the US design protection framework than when it was first enacted. Since that time, design patent law has gone through many changes, especially in the context of utility patent law. Although the position, role and nature of design patent law has changed, it still appears to be a major player in the design protection system. This is because, for industrial design, it is often unknown whether protection under copyright law will be possible. For trade dress protection, the following requirements must be met: distinctiveness, non-functionality, and the likelihood of confusion. In light of this, it is said that ‘[p]roving trademark infringement of a design is arguably more difficult than proving design patent or copyright infringement of a design’.119 Regarding the second point, there is some debate as to why design protection was incorporated into patent law. That is, while there is a view that, the nature of design meant patent law protection was more suitable than copyright protection, there is also a counter view.120 This suggests that the nature and practice of design were not fully considered at the time. Furthermore, in light of the changing circumstances surrounding design in the twentieth and twenty-first centuries, it may be questioned whether design patent law continues to reflect design and design practice and whether it can continue to adapt. It might be said that the design patent system is at a crossroads.121 However, design patent law may continue well into the future, given that the fundamental elements of design patent law remain despite the significant changes in design practice. In addition, the potential for some designs to now be protected under copyright and trade dress laws also emphasizes the distinct characteristics of design patent protection.122

118

Chisum (2021), §23.02. See also Hudson (1948), p. 380; Du Mont and Janis (2013), pp. 843–844; McKenna and Strandburg (2013), p. 31. 119 Beebe (2018), p. 577. 120 See discussion on the 1842 Act above. 121 See, for example, Brean (2008), p. 380: ‘Ultimately, it might be more shocking and difficult to impose even a few of the above recommendations on the design patent system than it would be to abolish the system altogether’. 122 See Du Mont and Janis (2018), p. 382: ‘Today, the design patent system is in its ascendancy’.

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References Afori O (2008) Reconceptualizing Property in Designs. Cardozo Arts & Ent LJ 25:1105–1178 Beebe B (2018) Design Protection. In: Dreyfuss RC, Pila J (eds) The Oxford Handbook of Intellectual Property Law. Oxford University Press, Oxford, pp 572–593 Brean D (2008) Enough Is Enough: Time to Eliminate Design Patents and Rely on More Appropriate Copyright and Trademark Protection for Product Designs. Tex Intell Prop LJ 16:325–382 Burstein S (2012) Visual Invention. Lewis & Clark L Rev 16: 169–214 Chisum D (2021) Chisum on Patents. Matthew Bender Du Mont J (2009) A Non-Obvious Design: Reexamining the Origins of the Design Patent Standard. Gonz L Rev 45:531–609 Du Mont J, Janis M (2013) The Origins of American Design Patent Protection. Ind LJ 88:837–880 Du Mont J, Janis M (2018) US Design Patent Law: A Historical Look at the Design Patent/Copyright Interface. In: Derclaye E (ed) The Copyright/Design Interface: Past, Present and Future. Cambridge University Press, Cambridge, pp 341–382 Fenton H (1889) Law of Patents for Designs. W.J. Campbell, Philadelphia Hudson T (1948) A Brief History of the Development of Design Patent Protection in the United States. J Pat off Soc’y 30:380–399 Lemley M (2013) A Rational System of Design Patent Remedies. Stan Tech L Rev 17:219–238 Magliocca G (2003) Ornamental Design and Incremental Innovation. Marq L Rev 86:845–894 McCarthy J (2021) McCarthy on Trademarks and Unfair Competition, 5th edn. Thomson West McKenna M, Strandburg K (2013) Progress and Competition in Design. Stan Tech L Rev 17:1–52 Mueller J, Brean D (2010) Overcoming the Impossible Issue of Nonobviousness in Design Patents. KY LJ 99:419–554 Peterson D (2008) Seizing Infringing Imports of Cinderella’s Slippers: How Egyptian Goddess Supports U.S. Customs and Border Protection’s Enforcement of Design Patents. J Pat Trademark off Soc’y 90:888–917 Pulos A (1983) American Design Ethic: A History of Industrial Design. MIT Press, Cambridge, Mass Ringer B (1959) The Case for Design Protection and the O’Mahoney Bill. Bull Copyright Soc’y USA 7:25–32 Simonds W (1874) Law of Design Patents: Containing All Reported Decisions of the U.S. Courts and the Patent Office, in Design Cases, to A.D. 1874, with Digests and Treatise. Baker, Voorhis and Co., New York

Tatsuyuki Suemune was appointed as a lecturer of private law (with tenure) at Kinjo Gakuin University in 2021. Prior to joining the faculty at Kinjo Gakuin University, he was an Assistant Professor (without tenure) at Waseda University. He obtained his doctorate degree in law from Waseda University with a dissertation on design law in 2019 and also obtained his master’s degree and bachelor’s degree in law from Waseda University.

Part IV

South America

Chapter 23

History and Current Status of Design in Brazil Almir Mirabeau da Fonseca Neto

Abstract This chapter seeks to introduce the reader to the history of Brazilian design, offering an overview of the process of institutionalization of the field of design in the country. It is not my intention to exhaust the subject, we will only fly over the field and comment on historical, political, economic and social factors that contributed to the establishment of the field of design in Brazil. I also propose some categories of analysis developed by Brazilian researchers and, whenever possible, I have sought to provide examples that illustrate these concepts.

23.1 Introduction Every area of specialization has the right to have its story told. The History of Design as a whole can be considered a recent scientific discipline. It is worth mentioning, for example, that the foundation of the Design History Society in Great Britain took place in 1977.1 When studying the field of History, in this case the History of Brazilian Design, historians frequently approach it from various perspectives. In this sense, we must keep in mind that when we try to record past events, we are always at imminent risk of doing so only from the point of view of our own time. By analyzing historical phenomena through the prism of historicism, history will only become a reflection of its chronicler’s attitudes and needs. It is necessary to strive to be objective, to seek insights and meanings despite the limitations of individual knowledge. The History of Design can be analyzed from a unified point of view, combining graphic design, fashion, product design, architecture, and other areas in one discipline, but we run the risk of establishing imprecise relationships between areas of design with different relationships with society. If we understand that design has 1 For more information, see: Design History Society. https://www.designhistorysociety.org/about/ overview. Accessed 25 Oct 2021.

A. M. da Fonseca Neto (B) Escola Superior de Desenho Industrial (ESDI), Universidade do Estado do Rio de Janeiro, Rio de Janeiro, Brazil e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_23

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a functional aspect, whatever it may be, the design disciplines are clearly distinct. Although historical periods are present in all forms and ways that design presents itself to society, it is almost never possible to directly relate the real meaning of a modernist building with a glass front, brise-soleil and pilotis with an ephemeral magazine cover or even the furniture of a Renaissance palace with a book printed in letterpress. The relationship of these objects with time, their life cycle, their cultural influence within society, all of this generates too great a diversity to be encompassed in just one unified field of study. Unifying such disparate fields can end up excluding artifacts that don’t fit into dominant styles or pre-established categories. It is worth remembering that differentiating the fields does not mean creating a traditional hierarchy, from top to bottom. In fact, these fields of study should be understood as a rhizomatic network of interactions formed by different actors in the sense that philosopher Pierre Lévy talks about in his book Tecnologia das Inteligências [Intelligence Technologies: The Future of Thinking in the Information Age].2 In this way, we avoid generating a value judgment where certain objects of study of material culture are more important than others. In studies on the History of Design, it is not uncommon to give more importance to a chair designed by a renowned architect than to packaging designed by an anonymous printer, but the importance of each of these objects in society should not be measured only by these criteria, which to some extent are easily shown to be arbitrary and imprecise. After all, can’t a poster designed by an anonymous person impact society as much as a project by a renowned architect? Therefore, research methodologies for studying the various design disciplines can and should vary. Beat Schneider, paraphrasing Professor John Walker, states that ‘it is a widespread opinion that the fulcrum of the history of design is in the designers, in the design process and in the design objects.’3 We then see that when researching Design History, it is essential to be aware that material products also represent manifestations of the human spirit and that includes an understanding of the relationship between designers, design processes, and design products. In Brazil, a field of research that has grown in recent decades is the Brazilian Graphic Memory. Priscila Farias comments that studies in this field aim, among other things, ‘to review the meaning and value of visual artifacts and, in particular, ephemeral prints, to establish a notion of local identity through design’.4 Studies in Brazilian Graphic Memory seek to understand the social relations that arise from design activities. Together with an official historiography they complement each other. Studies in Brazilian Graphic Memory seek to understand the social relations that arise from design activities; moreover, an official historiography tends to be based on major landmarks and names. In this sense, they complement each other and, in relation to the objects of study of the Brazilian Graphic Memory, I agree with the statement by Priscilla Farias that: 2

Lévy (1993). Schneider (2010). 4 Farias (2014), p. 201. 3

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Most of the artifacts chosen as a theme for those studies are popular, commercial or vernacular items, produced by anonymous people, in many cases derivative, usually seen as commonplace and of low status. Artifacts like these have always been denied a place in Europeancentric, modernist design histories inaugurated by the import of Ulm and Bauhaus models for design education in the 1960’s. By taking a distance from traditional art history methods that tend to focus on outstanding authors and their exceptional and innovative works, studies on graphic memory allows for an unbiased approach to print and visual culture of the local past, showing that its products can be exciting and empowering research topics.5

In this way, the Brazilian Graphic Memory imposes on itself the task of dealing with issues related to the History of Design not only seen from above, through styles or movements. It also assumes that the study of the History of Design involves understanding the exchange between the design project and the production process in a given social, economic and cultural industrial context. In this sense, and to enable us to analyze the History of Design and its current status, in this chapter, we will use two concepts proposed by the anthropologist Darcy Ribeiro in his book O processo civilizatório: etapas da evolução sociocultural [The Civilizing Process: Stages of Sociocultural Evolution],6 that could be construed today as a decolonial approach. As consumers of imported technologies and not because they do not have technological autonomy, Brazilian industries reflect their dependence throughout their organizational and productive structure. The import of goods, inputs, and machinery—and the consequent translation of technical terms—for the Brazilian industry ended up shaping it throughout its modern history, which generated evident impacts in the field of design. When we use technologies from different sources that have their own terminology that is different from the Brazilian context, it is natural that divergences occur. In this sense, Darcy Ribeiro, when dealing with civilizing processes, defines them in two basic categories: the general civilizing process and the specific civilizing process. If general civilizing processes are characterized by generic evolutionary sequences, the specific processes are the concrete historical sequence in which the general civilizing processes unfold.7 It is the specific civilizing processes that prepare the ground for the progressive general civilizing processes to bring people from the ‘tribal condition to national and modern macro-society’.8 The realization of a civilization happens when ‘crystallizations of singular civilizing processes take place in it as an individualized socio-cultural complex’.9 The relationship between different peoples in their specific civilizing stages generates the discrepancy between the development of some and the backwardness of others, and the inequality between them. This historical stage is characterized by the relationship between technology and economic and social activities. When a people are pioneers in production or military technologies, they are restructured by them, 5

Farias (2014), p. 205. Ribeiro (1979). 7 Ribeiro (1979), p. 52. 8 Ribeiro (1979), p. 53. 9 Ribeiro (1979), p. 53. 6

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which changes the way in which they relate to other societies, enabling the domination of one by the other and leading to a restructuring of the dominated society. This type of restructuring takes place through two processes: evolutionary acceleration and historical updating. Evolutionary acceleration is the autonomous development of a society through new technologies, generally disruptive, which lead to rapid economic, social, educational and cultural development of almost all of its population. Historical update also has the bias of meeting the interests of societies that are pioneers in the development of new technologies. It appears in societies that develop reflexively, that is, in less developed societies that use technology imposed by more developed societies. They are subjugated, and only a part of their population enjoys technological advances. In Brazil, the development of the field of design was mainly influenced by this second process. Portugal was exploring new technologies at the time of our colonization, a moment of technological revolution and, upon arriving in Brazil, it imposed a process of historical updating on the so-called primitive peoples, updating their systems. The anthropologist Darcy Ribeiro says that we must not forget that Brazil has always been a supplier of commodities, producing ‘a stick of ink for European luxury. Then, sugar to sweeten the mouth of the whites and gold to enrich them. After independence, we structured ourselves to produce cotton and coffee, and today, we produce soy, ore’.10 I would add oil, cellulose, meat, animal feed etc. Not even the globalization process has significantly changed this condition, since patents and rights for products produced by multinationals in Brazil often make the complete transfer of technology difficult or unfeasible, except for exceptions that only confirm the rule. These general abstract concepts, although very enlightening, do not by themselves explain all the issues that have brought Brazil to the present situation, they are too generic. It would be necessary to address other issues such as the historical–cultural configurations that explain how a society is formed. However, this chapter is not the proper stage for us to deal with them. I cite these points only to illustrate the depth of the problems in Brazilian industry; many examples that will be presented in this article will be clearly recognized as symptoms of our process of historical updating.11 With this in mind, I reinforce that both the complexity inherent in the study of Design History and the specificity of the development of industry and design in Brazil must be taken into account when analyzing phenomena and broad panoramas as I am proposing in this chapter.

10

Ribeiro (1979), p. 56. For more information, see: Mirabeau (2010). It contains case studies from the Brazilian graphic industry, analyzed from the perspectives of historical update and evolutionary acceleration.

11

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23.2 A Story Before the Beginning The thought of design as a professional activity, logically, preceded its institutionalization in the country, through the implementation of university courses of which the Escola Superior de Desenho Industria [Superior School of Industrial Design] (ESDI) at the Rio de Janeiro State University (UERJ), founded in 1962, is commonly considered the first. Much has been said about its teaching philosophy and how it helped shape the current profession, but little has been studied about those who preceded this phase and crafted the design field in Brazil, an area that would only take on clearer contours in the following decades. Even before the twentieth century, graphic artists, architects, designers and several other professionals who worked in the Brazilian industry, contributed to the consolidation of a field that had not been established even after the independence of Brazil (in a process that took place between 1821 and 1825, but marked by the date of 7 September 1822, when Brazil proclaimed independence). Four years before the proclamation of independence, a Decree of 12 August 1816 founded the Royal School of Sciences, Arts and Crafts. Its teachers were, for the most part, from the group that would come to be known as the ‘French Mission’. Lead by Joaquim Lebreton, the team also included Pedro Dellon, JeanBaptiste Debret, Nicolas-Antoine Taunay, Auguste-Marie Taunay, Auguste-HenriVictor Grandjean de Montigny, Charles-Simon Pradier, François Ovide, CharlesHenri Levasseur, Louis Meunié and François Bonrepos. In 1820, two decrees, both dated 23 November, changed the name of the institution to the Royal Academy of Drawing, Painting, Sculpture and Civil Architecture and then to the Academy of Arts. In 1826, the building designed by Grandjean de Montigny was completed and the school became fully operational, with the name of the Imperial Academy of Fine Arts. However, it was only in 1831, by the Decree of 30 December, that a new regulation was approved that provided that the Academy taught Historical Painting, Landscape, Architecture, and Sculpture. As design schools, heirs of this knowledge made in the practice of the pioneers, allocating little bibliographical material for the transmission of knowledge and data that gave voice to the profession in the country, their work, and reflections on the subject are gradually forgotten. Thus, subjects that should address the issue of design in Brazil and, consequently, the identity of Brazilian Design in relation to the productive sector, lack content and are often not adequately emphasized in the curricula and, even more importantly, are not part of the discourse of the formative years of design students. We can follow the basic assumption made by Professor Guilherme Cunha Lima in his project as a Conselho Nacional de Desenvolvimento Científico e Tecnológico [National Council for Scientific and Technological Development] (CNPq) researcher in the Pós-graduação em Design da Escola Superior de Design Gráfico da Universidade do Estado do Rio de Janeiro [Postgraduate Course in Design at the School of Graphic Design] (PPD ESDI) at UERJ. Contributions to the history of Brazilian design may be divided into three distinct and consecutive periods: precursor, pioneer,

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and contemporary. This construction in historical phases was theoretically based on the work of North American researchers R. Roger Remington and Barbara J. Hodik in their work Nine Pioneers in American Graphic Design.12 Although, even before the Proclamation of independence, still in the colonial period in Brazil, we can identify products from the material culture as design products. Even before, in the pre-colonial period, with the original peoples and all their wealth of material culture, as Darcy Ribeiro points out in the book A Tecnologia da Tecnologia [The Technology of Technology] by Gui Bonsiepe about the Indigenous peoples: ‘They lack the ability to build useless, unique and singular objects that are the hallmark of artistic creation’.13 In this text, the anthropologist approaches the object system of the Brazilian original peoples not from the objectivism of modern design, but from a rich and conceptual approach to it, design as reason and way of thinking. This approach can refer us to a design that was born with culture, in a period before history, prehistoric, which is not the objective of this chapter.

23.3 Brazilian Design If we consider that formal design education was implemented in Brazil in 1962, we can say that when this took place, the conflict over the role of art applied to industry as an agent of economic development dated back almost 150 years. During this period and after, the challenge of assisting development was a constant objective of the field of design. This objective was achieved in virtuous cycles of renewal that generated interest in the subject in each new generation. The creation, in 1996, of the Programa Brasileiro de Design [Brazilian Design Program] (PBD) and similar state programs to promote design is part of the most recent stage of this trajectory. In any period after the Industrial Revolution that is analyzed, it is unthinkable not to take into account that design was intrinsically related to the social changes of its time. Industrial design was established with the Industrial Revolution, which historian Eric Hobsbawm defines as the moment when productive capacity grew to the point of generating its own demand instead of supplying it.14 In the nineteenth century, industrialization in Brazil was incipient. We can point out the importance of the War Arsenal and the Court’s Navy Arsenal as important promoters of industrialization methods. The arms industry together with the mining industry can be considered as important pillars of this process. The alleged ‘agricultural vocation’, which is a very popular concept among the Brazilian ruling classes and, consequently, among politicians, meant that there was not the necessary continuous and systematic support of national industry. Not even the efforts of the Auxiliadora da Industria Nacional [National Industry Supporter] and the effort and wit of industrialists such as Visconde

12

Remington and Hodik (1992). Bonsiepe (1983), p. 8. 14 Hobsbawm (1964), p. 50. 13

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de Mauá were sufficient to overcome this situation.15 However, it did end up helping to form an internal consumer market on a small scale. There is evidence of at least one factory producing furniture on a large scale in 1880, Moreira Carvalho e Cia, established in the city of Rio de Janeiro. Brazilian visual communication in the production of graphic design products also became more established in this same period. This happened in the early days of industrialization in many other parts of the world. Gutenberg’s invention of the printing press cannot only be considered pre-Industrial Revolution because it was much more than that. Although it is not difficult to recognize that a printing shop is an industry, it is not common to propose that the Gutenberg invention was the beginning of the Industrial Revolution. Especially because the Industrial Revolution was long preceded by the invention of the printing press, which was publicized in the eighteenth century, it is usually considered that the Industrial Revolution dawned as a result of the eighteenth century. As an autonomous industrial system, very consolidated, and capable of producing originals from matrices with enormous flexibility and diversity, the printing industry in general has rapidly proliferated since its inception. In this sense, it is important to point out the enormous delay in the introduction of the letterpress in Brazil, which, due to the strict control of the Portuguese Crown, only officially started, despite some previous incursions, with the arrival of the royal family in 1808. If a researcher proposed only to study the cycles of historical updating and evolutionary acceleration that occurred following the emergence of the Brazilian graphic design industry and combine them with the cycles of other industries, they would find different realities, especially until the first half of the twentieth century. A printing shop, unlike most other industries, can theoretically produce products as disparate as a business card and a bible, a magazine or newspaper and an encyclopedia. In this sense, as Professor Rafael Cardoso points out in the ‘Design, Industry and the Modern Consumer’ chapter of his book Uma Introdução à História do Design [An Introduction to the History of Design], the growth of urban elites in the second half of the nineteenth century was probably a decisive factor in this rapid proliferation.16 In addition, it also met the demands of the domestic market, producing inputs for other industries such as packaging. The production of packaging for cigarettes may be considered a trigger for the creation of more robust legislation for the registration of trademarks and patents. In 1873, in the city of Recife in the state of Pernambuco, the Moreira & Cia factory placed on the market a package for ‘Rapé Areia Parda’ cigarettes, in the same year it was accused of plagiarism by the French-Brazilian Méuron & Cia. Pernambuco was apprehended, but as plagiarism was not a crime punishable by Brazilian law, Méuron & Cia was obliged to compensate Moreira & Cia and also pay the costs of lawyers. This case had significant repercussions and led in 1875, to Law No. 2682 which related to the establishment of commercial courts, which at a later time would be called ‘Juntas Comerciais’ [Boards of Trade], in the main provinces of the empire. Trademarks were registered at these Boards of Trade and the production of 15 16

Suzigan (2000), pp. 39–45. Cardoso (2008).

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three copies of the trademarks to be registered was mandatory. One was registered at the Royal Court, another at the stakeholder’s, and a third at the Board of Trade. In addition, it was mandatory to publish this record in local newspapers.17 The design professor Edna Cunha Lima says, ‘[c]uriously, the first record made in Recife is of snuff, exactly the “Rapé Areia Preta” by Méuron & Cia, which was registered again in 1881’. Another example related in some way to the registration of intellectual property, this one being the most commonly cited, is the ‘Cama Patente’ [Patent Bed]. Usually presented as a pioneer of modern Brazilian design, the Cama Patente was designed by the Spanish naturalized Brazilian Celso Martinez Carrera at the beginning of the twentieth century to replace metal hospital beds imported from England. It got its name because the businessman Luigi Liscio decided to produce the Cama Patente on a large scale and obtained patents for the project in 1915. Built with wood, it was composed of a basic set of three parts, headboard, foot support and platform, which allowed for its industrialization at a reasonable price, which made it a bestseller for decades. In the twentieth century, despite the influences brought to the production of furniture by the import of furniture from other countries and trends such as the ‘good design’ from the Bauhaus and the Ulm School of Design, among others, it is possible to identify technical and aesthetic solutions with a ‘Brazilian style’ from the end of World War II. The design of Brazilian furniture combined ideas and concepts from the Modern Movement and national elements, such as fabrics, natural fibers, and the use of other local inputs. Innovation, within the scope of Brazilian design, was often the absorption and promotion of the ideals of alternative technology in a more orderly manner, and as a response against the European industrialization model. In some cases, these processes resulted in evolutionary acceleration, as Brazillians acquired more autonomy from the great centers. After the 1920s and 1930s, the 1940s saw the emergence of pioneering professionals who designed furniture and other housing equipment, especially after World War II. With innovative proposals for the national industry, they were concerned with producing furniture with more Brazilian characteristics. During this period, it is worth highlighting the competition for the design of the building called ‘Palácio Capanema’, considered the first modernist project on a monumental scale. Brazil was governed by President Getúlio Vargas for three periods. Between two of these periods, the end of the Constitutional Government and the beginning of the Estado Novo, from 1936 to 1943, the first modern building was built, the Palace of the Ministério da Educação e Saúde [Ministry of Education and Health] (MES). As the anthropologist Lauro Cavalcanti comments: Brazil was going through, during the 1930s, a moment of certain economic importance, notable for its governmental efforts towards modernization. The Vargas government wanted to leave its legacy on the landscape of the federal capital, and chose as one of its priorities the construction of palaces to house the new administration’s ministries and public bodies.18 17 18

See the work of Professor Edna Cunha Lima: Lima (1998). Cavalcanti (2006), p. 12.

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This moment is a milestone, the project was carried out by a team led by Lucio Costa in consultation with Le Corbusier. The team included Carlos Leão, Affonso Reidy, Jorge Moreira, Ernani Vasconcellos, and the young Oscar Niemeyer who worked with Lucio Costa. This meeting produced one of the defining projects of the Modern Movement and can be considered the awakening of Niemeyer’s genius. It is interesting to note that it was a government initiative that provided evolutionary acceleration where we can see a process of knowledge acquisition that later continued to renew itself autonomously. From the 1950s onwards, Brazil experienced more unique progress. Under the slogan ‘Fifty Years of Progress in Five’ by President Juscelino Kubitscheck, the city planning of Brasília and other ambitious projects emerged. A favorable economic environment encouraged the opening of new companies and led to the appearance of precursors of design. The Modern Movement in Brazil was, for a long time, synonymous with industrialization and prosperity, but with the military coup of 1964, the socialist dream of the modernist project, identified as the solution to the country’s social problems, was interrupted. Moraes has hypothesized that the practice of appropriating technology occurs notably in periphery countries, such as Brazil; is advanced as a concept in more developed industrial countries; and then is returned to periphery countries as a design methodology.19 However, during the period of the military dictatorship it is possible to find other relevant examples of Brazilian design. Aiming to end dependence on foreign suppliers for the production of money and demonstrate that Brazil was a ‘Country of the Future’, the military government initiated a project that best represented the ideals of a modern and progressive country.20 The winner of the contest was Aloísio Magalhães (founder of ESDI and an important pioneer of modern Brazilian design) who, in addition to presenting the best graphic design, also introduced a new security technology, ‘Moiré Controlado’ [Controlled Moiré]. The Moiré effect is caused when there is a failure in the printing record, according to Frederico Porta: a term used in photogravure to indicate a defect that is sometimes noticed in the reticulated clichés,21 when the original is also an autotypical (reticulated) engraving. The superposition of the two cross hairs, the original and the reproduction, can give the cliché tarnished tones, which can make the image confusing.22

However, by printing the Moiré in a controlled way, Aloísio proposed a way to increase the security of the banknotes. The issue of security, for obvious reasons, is fundamental in the production of money. With the project completed, Aloísio traveled to Europe together with technicians from Brazil’s Mint and a Central Bank employee with the objective of preparing the printing matrices, training personnel and purchasing equipment. After a few months and many setbacks, the objective was achieved, and it was possible to establish new skills in Brazil in the printing of money. 19

Moraes (2006). Lessa et al. (2009), pp. 443–455. 21 In this context, ‘cliché’ refers to a matrix for letterpress printing. 22 Porta (1958), p. 276. 20

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This process resulted in a technical and conceptual leap that was first consolidated in 1970 with the launch of the series of Cruzeiro Novo banknotes, conceived and printed in Brazil, and completed in 1979 with the beginning of the manufacture of paper money. Brazil achieved autonomy in the production of its own money as a result of a design project. In the 1980s, with the gradual recognition that the modernist proposal had failed to transform Brazilian society, a more explicit concern with the idea of a ‘Social Design’ began to gain importance, but experiences with Social Design remain insufficient. The Brazilian experience of alternative technology, despite the socio-political and humanistic debate, did not bring a solution to the problems and challenges that needed to be addressed by local design. Starting with the creation of ESDI and extending to the establishment of design faculties in a large number of public universities; one of the most important areas of collaboration between design and public authorities has been in the field of education. It should be noted that the ideals of postmodern culture arrived in Brazil precisely in the decade in which the long period of military dictatorship came to an end. Brazilian designers took on postmodern thinking as a flag of protest against the state of local design, which had not developed autonomously. Brazilian companies were constantly copying foreign solutions and had not taken up the challenge of decoding local cultural values and incorporating them, through their design activity, into industrial artifacts. This fact contributed to a further distancing of industrial design and Brazilian cultural identity. Thus, I agree with Moraes, the postmodern condition in Brazilian design can also be a political expression in favor of freedom of expression and against the military regime and the strong influences from abroad on the local industrial production system.23 In this sense, the trajectory of the Postmodern Movement in Brazil became something of a contestatory practice close to what the counterculture was. Through the decoding of ethnic pluralism, a national model in its most mature form only emerged in the second half of the 1990s. This time, local diversity was accepted in Brazilian design as a positive aspect, a plural design, which originated from the different cultures existing within the country. A multiple aesthetic, in which a particularly strong Brazilian presence is evident. Brazilian design, in this position between Post-Modernity and the established model of globalization, began to refer to the richness and expressiveness of the country’s culture. Popular culture, carnival, kitsch as mass popular taste, television as aesthetic reference, all of this shapes a diverse and fragmented body that, despite multiple Eurocentric references, manages to preserve its own identity. All these transformations that took place from the 1980s onwards in Brazil are very close to the thinking and references of a multiple culture that are present in the postmodern and globalization models. The ideal of Brazilian design continues to present challenges, as it develops in a society whose greatest conflicts were, and still are, generated by the complexity of decoding the great diversity that exists internally, the great social inequality and the process of abolition of slavery which resulted in a society riddled with structural racism. The practice of this Brazilian design model is no longer 23

Moraes (2006).

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linked to the dogmatic methodological rigor prevailing in the European rationalfunctionalist model in force until then, but it inherited other major challenges to be faced. The revision of patent laws in response to globalization of the Brazilian market, had significant consequences for the national technological development process. The opening of the national market stimulated companies to launch new products with frequency. The need to increase the use of design as a way to improve the competitiveness of Brazilian products became clear. In 1995, the PBD, the Brazilian design program, was created to mobilize various sectors. With this new scenario, a large part of the problems that existed at the national level became global. The new reality promoted the emergence of new modes of production and new industrial goods, this time no longer within the scope of just a regional market, but within the scope of a global market. According to Moraes, at this time and within this scenario, Brazilian design began to distance itself from references from abroad. As a result of this, Brazilian designs began to plot a course toward an identity of their own.24 Through multiculturalism, new design references that reflect our hybrid culture and our own country began to emerge.

23.4 Conclusion, Design, and Public Policy Since the official establishment of design courses in universities, Brazilian design has supported the modern rational-functionalist model as its main reference to guide the country toward industrialization. Following this rational-functionalist path made it difficult to insert elements of Brazilian local culture into its material culture and industrial artifacts. It was not the rationalist model that placed national production on the world stage, but rather a model that values our local characteristics. Brazil did not always assert itself as a leading figure in the international market through a historical updating process. When it did so, it managed to establish autonomous processes such as those that Darcy Ribeiro has called ‘evolutionary acceleration’. With the industrialization of the last sixty years and globalization, the concept of the ‘agricultural vocation’ had to be significantly changed to take account of the new context. This concept ended up suffering a reversal. Instead of being used to combat industrialization, the fundamental premise of this concept was used by other political segments to promote industrial evolution. In Brazil, there is massive investment in the slogan, ‘Agro é Pop’, which states that agriculture is the largest industry in the country. In this context, we should not underestimate the role of multinational companies. These companies, through the transfer of their production practices across the planet, also brought different elements to the Brazilian domestic market which, as a consequence, brought positive and negative changes. A large part of Brazilian industrial production is under the responsibility of multinational companies and the policy of most of these companies is to import design 24

Moraes (2006).

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projects directly from the head offices of foreign companies, which could be considered a clear demonstration of a relationship of dependency. This is especially clear in the case of product design. What was once a historical update process through machinery and even imported labor now takes place at the project level. We have the manufacturing plants, we have the technicians, but we don’t develop the product design projects and we don’t even have the patents. Even during the economic boom and the strong industrialization achieved by Brazil in the late 1970s, the largest in the country’s history, it did not extend to the scope of local industrial design, despite the evolution of sectors that emerged in isolation. The general situation of industrial development in Brazil did not correspond, and still does not correspond, to the development of design. This phenomenon also explains, in part, why the greatest evolution in Brazilian industrial design has been in the area of graphic design. In the first decades of the twenty-first century, during the center-left governments of the workers’ party, the commodity boom provided a moment of great growth and, consequently, investment. Brazil hosted the Soccer World Cup, the Olympics, there was an increase in social policies and affirmative action. Social inequality in the country decreased, for the first time hunger was practically eradicated and almost all children were in school. There were large investments in education and Brazil went from dozens of undergraduate courses in design to hundreds, establishing postgraduate courses in design throughout the country, and today, there are several doctorates in the area. The Ciência Sem Fronteiras [Science Without Borders] program made it possible for a large number of students to study abroad. This is a historical moment that made Brazilian design grow in quality and quantity. Unfortunately, in recent years, there has been an increase in social, economic, and political crises. This has undermined the social achievements gained by previous governments and put them at risk. Therefore, in the field of design, the situation has greatly deteriorated. In the two examples of evolutionary acceleration presented in this chapter— Palácio Gustavo Capanema and Projeto Cruzeiro Novo—we saw how public policies strengthened the field of design and enabled progress. Even with those authoritarian governments, incentives and public policies made possible the execution of innovative projects, with their own identity and which enabled the country’s autonomy in the fields of design and technology. This attitude from politicians took place in many countries around the world throughout the twentieth century, but in Brazil, this action was always negligent, and perhaps this is where one of the greatest difficulties for the development of Brazilian design during its history resides. The lack of a clear, consistent, and regular public policy that would place design in its real position as an agent for consolidation and innovation in a country’s industrialization process.

References Bonsiepe G (1983) A Tecnologia da Tecnologia [The Technology of Technology]. Editora Blucher, São Paulo

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Cardoso R (2008) Uma Introdução à História do Design [An Introduction to the History of Design], 3rd edn. Blucher, São Paulo Cavalcanti L (2006) Moderno e Brasileiro. Jorge Zahar, Rio de Janeiro Farias PL (2014) On Graphic Memory as a Strategy for Design History. In: Barbosa H, Calvera A (eds) Tradition, Transition, Trajectories: Major or Minor Influences. Proceedings of the 9th International Committee for Design History and Design Studies. UA Editora, Aveiro Lessa WD, Mirabeau A, Lima GC, Lima ELC (2009) A articulação visual do projeto de Aloísio Magalhães para a primeira família de papel-moeda im-pressa no Brasil. In: 4º CIDI—Congresso Internacional de Design da Informação, 2009, Rio de Janeiro. Anais do 4º CIDI Congresso Internacional de Design da Informação, pp 443–455 Lévy P (1993) As tecnologias da inteligência: o futuro do pensamento na era da informática [Intelligence Technologies: The Future of Thinking in the Information Age]. São Paulo: Editora 34 Lima EC (1998) Cinco Décadas de Litografia Comercial no Recife: Por uma história das marcas de cigarros registradas em Pernambuco, 1875–1924 [Five Decades of Commercial Lithography in Recife: For a History of Cigarette Brands Registered in Pernambuco, 1875–1924]. Dissertação de Mestrado. Rio de Janeiro: PUC-RIO. Available via https://www.academia.edu/2772930/Cinco_ D%C3%A9cadas_de_litografia_Comercial_no_Recife. Accessed 25 Oct 2021 Mirabeau A (2010) See Latt-Mayer, um estudo de caso: tecnologia na história do design gráfico brasileiro. Dissertation, Universidade do Estado do Rio de Janeiro. Available via Biblioteca Digital Brasileraira de Teses e Dissertações (BDTD). http://bdtd.ibict.br/vufind/Record/UERJ_2 69c5b8641782fa049d3337568526998. Accessed 25 Oct 2021 Moraes D (2006) Análise do Design Brasileiro. Editora Blucher, São Paulo Porta F (1958) Dicionário de Artes Gráficas. Editora Globo, Porto Alegre Remington RR, Hodik CJ (1992) Nine Pioneers in American Graphic Design. The MIT Press, Cambridge Massachusetts Ribeiro D (1979) O processo civilizatório: etapas da evolução sociocultural [The Civilizing Process: Stages of Sociocultural Evolution]. Vozes, Petrópolis Schneider B (2010) Design—uma introdução: o design no contexto social, cultural e econômico. Blucher, São Paulo Suzigan W (2000) Indústria brasileira: origem e desenvolvimento. Hucitec/Campinas: Unicamp, São Paulo

Additional Bibliography Hobsbawm EJ (1995) A era dos extremos: o breve século XX: 1914–1991. Companhia das Letras, São Paulo Mirabeau A, Cavalcanti LAP, Lima GC, Lima ELC (2009) Ciclo modernizante: exemplos de aceleração evolutiva no Brasil. 4º CIDI—Congresso Internacional de Design da Informação, 2009, Rio de Janeiro. Anais do 4º CIDI Congresso Internacional de Design da Informação, pp 471–479

Almir Mirabeau da Fonseca Neto Doctor in Design from the Superior School of Industrial Design (ESDI) at the Rio de Janeiro State University (UERJ), Almir Mirabeau da Fonseca Neto has been working in the graphic design industry since 1984. He has participated in several visual communication projects, both as a graphic design producer and as an art director. As a researcher, he focuses on the themes of Brazilian graphic memory, Brazilian graphic design industry, history of design, history of technology and information design. He teaches subjects related to data visualization, typography, visual communication, graphic production, design history, colors in design and game design in several Brazilian educational institutions. He is also

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president of the Sociedade Brasileira de Design da Informação [Brazilian Society of Information Design] (SBDI), acts as a project manager and consultant and presents, together with Rafael Ancara and Ricardo Cunha Lima, the podcast Visual+mente.

Chapter 24

History and Current Status of Design Protection in Brazil Roberto Carapeto

Abstract Brazil’s modern history as a country started in 1822 with its independence from Portugal. Since that time, Brazil’s intellectual property (IP) protection system has developed and been the subject of discussion. Brazil included a provision on industrial property in its first Constitution in 1824; and was the first country in Latin America to provide any form of copyright protection in its Criminal Code of the Empire of Brazil in 1830. IP protection in Brazil has been largely influenced by French law and international treaties such as the Berne Convention and the TRIPS Agreement. IP rights for designs may be granted under two laws, namely the Law on Copyright and Neighboring Rights and the provisions related to industrial design rights in the Law on Industrial Property. The scope of the two laws naturally overlap. Dual protection is possible because, in Brazil, the reproduction of a work of art by an industrial process or the industrial application of a work of art does not distort or remove its artistic nature.

24.1 Introduction Although Latin America’s modern history is shorter than those of Asia and Europe, the region is known as a land of vibrant creative activity. There are many Brazilian artists and designers who are recognized worldwide. For example, Romero Britto, an artist famous for his contemporary silkscreens and sculptures, and Sergio Matos and the Campana brothers, who create environmentally friendly furniture, are well known.1 Google’s logo was designed by Brazilian-born Ruth Kedar. Design activities

1

For further information on Romero Britto: Romero Britto (2008). For further information on Sergio Matos: Sergio J. Mattos Studio Design. http://sergiojmatos.blogspot.com/. Accessed 25 Oct 2021. For further information on Fernando Campana and Humberto Campana (the Campana brothers): Campana. http://estudiocampana.com.br/. Accessed 25 Oct 2021. R. Carapeto (B) Waseda University, Tokyo, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_24

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have increased in Brazil—a multi-ethnic country—since the 1960s, and have since expanded to the rest of the world. The development of IP protection in Brazil has been the subject of discussion since the nineteenth century. The protection of designs has been discussed in this context. In Brazil, IP rights for designs may be granted under two different laws, namely the Law on Copyright and Neighboring Rights (Copyright Law) and the Law on Industrial Property (Industrial Property Law) (although its provisions relate to industrial design rights).2 Under the Copyright Law, two-dimensional and three-dimensional artistic creations that are original may be protected (copyright). In addition, any ‘ornamental plastic form of an object or any ornamental arrangement of lines and colours that may be applied to a product’ may receive protection as an ‘industrial design’ under the provisions of the Industrial Property Law (design rights).3 The scope of the two laws naturally overlap and the possibility of dual protection has been the subject of much debate among scholars. In Brazil, it is largely understood that the reproduction of a work of art by an industrial process or the industrial application of a work of art does not distort or remove its artistic nature. Therefore, there are no grounds under the general civil law or competition law to prevent a creator from obtaining and enforcing either copyright or design rights, or both, depending on the facts of the case and whether the right holder wishes to enforce their rights under one or both of the laws.4 A design can also be the subject of trademark rights if, for example, it is a logo. Therefore, trademark rights and copyrights may exist at the same time and can be in conflict. Furthermore, design owners may also be protected against infringement by provisions in the Industrial Property Law aimed at preventing acts of unfair competition. Under this law, there is a general provision prohibiting the act of deceiving another person’s customers through the use of fraudulent means.5 There is also a specific provision prohibiting the use of goods that imitate the form of another’s goods.6 There are few cases in which design protection has been granted based solely on the unfair competition prevention provisions due to their broad scope of application. Claims based on unfair competition prevention are more often combined with claims of infringement of IP rights.7 2

Law No. 9.610, 19 Feb 1998, Law on Copyright and Neighboring Rights (as amended by Law No. 12.853, 14 Aug 2013) [Lei Nº 9.610, de 19 de fevereiro de 1998, Diário Oficial da União - Seção 1 de 20 de fevereiro de 1998] (Copyright Law); Law No. 9.279, 14 May 1996, Law on Industrial Property (as amended by Law No. 12.853 of 14 Aug 2013) [Lei Nº 9.279, de 14 de maio de 1996, Diário Oficial da União - Seção 1 de 15 de maio de 1996] (Industrial Property Law). 3 Industrial Property Law, Art. 95. 4 Gama Cerqueira (1982), p. 656. 5 Industrial Property Law, Art. 195(iii). 6 Industrial Property Law, Art. 195(iv), (viii). 7 See, for example, TJ-SP, Apelação: 1017473-43.2014.8.26.0405, Relator: Des. Fortes Barbosa, 22.08.2018, publicado em 28.08.2018.

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However, the focus of this chapter is the protection of designs under the Copyright Law and as ‘industrial designs’ under the Industrial Property Law. The chapter sets out a brief history of design protection under both laws and then outlines the scope of protection of designs under the Copyright Law and design rights under the Industrial Property Law.

24.2 History and Development of Design Protection in Brazil 24.2.1 Design Protection Under the Copyright Law Brazil was the first country in Latin America to provide any form of copyright protection in the Criminal Code of the Empire of Brazil in 1830.8 Under Art. 261, it was a crime to reproduce (for example, to print or to engrave) printing, engraving, lithography, or to reproduce any writings, or designs (prints), that had been made, composed, or translated by Brazilian citizens, during their life, and ten years after their death, if they had heirs, under penalty of transferring all unauthorized copies to the author, or the author’s heirs.9 Alternatively, when the transfer of copies was not possible, a fine could be set, ranging from the minimum value of the copies to a maximum of three times the value of the copies. The Criminal Code of 1890, enacted after establishment of the Republican Government in Brazil, continued a similar style of protection, in the form of criminal provisions.10 Article 350 specifically related to works of art and expanded the scope of the criminal provision to also cover partial reproductions of another work. Later, in 1891, the newly promulgated Republic of Brazil Constitution brought for the first time the protection of copyright to a constitutional level.11 Article 72 paragraph 26 guaranteed authors (and their heirs) the exclusive right to reproduce literary and artistic works by printing or any other mechanical means. It is thought that the inclusion of copyright protection in the 1891 Constitution was influenced by discussions related to the signing of the Berne Convention in 1886. The 1891 Constitution established principles that are in place today, such as the temporality of protection, and the possibility that heirs can claim copyright after the death of authors.12

8

Chaves (1985), p. 288. Law 16, 1 Dec 1830, Criminal Code. Available via Câmara dos Deputados. http://www.planalto. gov.br/ccivil_03/leis/lim/lim-16-12-1830.htm. Accessed 25 Oct 2021. 10 Decree 847, 11 Oct 1890. Criminal Code. Available via Câmara dos Deputados. http://www.pla nalto.gov.br/ccivil_03/decreto/1851-1899/d847.htm. Accessed 25 Oct 2021. 11 Constitution of the Republic of the United States of Brazil, 24 Feb 1891. Available via Câmara dos Deputados. http://www.planalto.gov.br/ccivil_03/constituicao/constituicao91.htm. Accessed 25 Oct 2021. 12 Santos (2008), pp. 53–54. 9

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Since the establishment of the Republic in Brazil, general civil law, industrial property law and copyright law have been heavily influenced by French law. This influence was first evident in the Copyright Law when it was enacted as a stand-alone law in 1898.13 Under the Law at the time, copyright was considered an exclusive right to reproduce and adapt works of art. Literary or artistic works were protected for 50 years from the time they were first made public, with a requirement of registration with the National Library. Mandatory registration was required within two years of the publication of the work in order for protection to be granted. It is thought that the registration system restricted the impact of the law because many authors were unable to claim their rights due to a lack of registration.14 The protection offered under the 1898 Copyright Law was initially limited to works of art located in Brazil. However, the sole revision of the Law in 1912 extended protection to works of art by foreigners, on condition that those authors were from nations that adhered to international conventions on copyright, or had signed treaties with Brazil, ensuring the reciprocal treatment of Brazilian works.15 This resulted in a more effective law as it allowed foreign authors of well-known works to seek protection in Brazil.16 After Brazil became a Republic in 1916, the first comprehensive Código Civil [Civil Code] was enacted.17 The new Code included provisions for copyright protection and revoked the Copyright Law of 1898. Articles 649 to 673 provided for the protection of ‘Literary, Scientific or Artistic Property’. The term of protection was extended to 60 years after the author’s death. The Brazilian Civil Code, like the Copyright Law of 1898, was greatly influenced by French Law. The 1916 Civil Code did not require registration for copyright protection to be granted, which generated a heated discussion about the need for registration. According to Hammes, ‘by 1919, there was a court decision in which the judge applied the law as if registration was still mandatory’.18 The issue became even more pertinent after 1924 when copyright provisions were included in a new decree, which included a reference to the registration requirement under the 1898 Copyright Law.19 This led a new director of the National Library, who took over the role in 1925, to solicit from the General Counsel of the Republic an opinion on the matter, which advised that registration was necessary. This, in turn, led Clóvis Beviláqua, the main 13

Law 496, 1 Aug 1898, Copyright Law. Available via Câmara dos Deputados. https://www2. camara.leg.br/legin/fed/lei/1824-1899/lei-496-1-agosto-1898-540039-publicacaooriginal-39820pl.html. Accessed 25 Oct 2021. 14 Hammes (2002), p. 59. 15 Decree 2.577, 17 Jan 1912. Available via Câmara dos Deputados. https://www2.camara.leg.br/ legin/fed/decret/1910-1919/decreto-2577-17-janeiro-1912-578060-publicacaooriginal-100961-pl. html. Accessed 25 Oct 2021. 16 Ribeiro (2014), p. 72. 17 Law 3.071, 1 Jan 1916. Civil Law [Código Civil]. Available via Planalto. http://www.planalto. gov.br/ccivil_03/leis/l3071.htm. Accessed 25 Oct 2021. 18 Hammes (2002), pp. 61–62. 19 Decree 4.790, 2 Jan 1924. Copyright Law. Available via Câmara dos Deputados. https:// www2.camara.leg.br/legin/fed/decret/1920-1929/decreto-4790-2-janeiro-1924-565512-republica cao-89686-pl.html. Accessed 25 Oct 2021.

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drafter of the Brazilian Civil Code of 1916, and the code’s first commentator, to publish an opinion refuting the opinion of the General Counsel of the Republic.20 Although a minority argued that such a requirement could not have been overturned without an express provision, the majority understood that registration had served merely as proof of ownership. The opinion of the majority was largely influenced by the 1908 Berlin revision of the Berne Convention.21 In 1922, Brazil became a signatory to the Berne Convention.22 At that time, designs were only protected as general works of art under the copyright provisions in the Civil Code.23 Gama Cerqueira notes a decision by Nelson Hungria, a famous Brazilian judge who later became a Supreme Court Justice, concerning designs that would fall within the scope of a pure work of art prior to 1934. The decision interpreted the scope of the expression ‘artistic work’, as employed by the 1898 Copyright Law, to have the broadest meaning, therefore, granting protection to industrial designs that could be considered works of art.24 Provisions relating to copyright protection remained part of the Civil Code until 1973, when copyright once again became the subject of a specific law.25 The Copyright Law of 1973 consolidated several complementary laws that were not included in the Civil Code, including several provisions that were enacted in response to the Berne Convention. The Law provided for the protection of related rights (neighboring rights) and copyright collecting societies,26 and also included a number of significant developments in relation to the protection of designs—‘works of plastic art’ (designs, paintings, sculptures, lithographs, engravings, etc.) were distinguished from the concept of ‘works of art’, and a provision was added that clarified the protection of ‘applied arts’.27 A key feature of the Brazil copyright system is that the 1988 Constitution of the Federative Republic of Brazil (the Constitution) grants fundamental rights to authors.28 Article 5(XXVII) of the Constitution provides that copyright is (1) an

20

Hammes (2002), pp. 61–62. Orlando (1939), pp. 54–55. 22 Berne Convention for the Protection of Literary and Artistic Works, 9 Sept 1886 (revised 24 July 1971), 828 U.N.T.S. 221 (Berne Convention). 23 As will be explained below, protection of designs by industrial property law commenced with the enactment of Decree No. 24.507, 29 June 1934 which regulated design patents, trade names and the prevention of unfair competition. 24 Gama Cerqueira (1952), p. 298. 25 Law No. 5.988, of 4 Dec 1973, Copyright Law (Copyright Law of 1973). Available via Planalto. http://www.planalto.gov.br/ccivil_03/leis/l5988.htm. Accessed 25 Oct 2021. 26 Menezes (2007), p. 26. 27 Copyright Law of 1973, Art. 6(XI). 28 Constituição Federal [C.F.] [Constitution], Art. 5: ‘All persons are equal before the law, without any distinction whatsoever, Brazilians and foreigners residing in the country being ensured of inviolability of the right to life, to liberty, to equality, to security and to property, on the following terms: […] (XXVII) The exclusive right of use, publication or reproduction of works rests upon their authors and is transmissible to their heirs for the time the law shall establish’. 21

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exclusive right; (2) regarding the acts of use, publication or reproduction; (3) that exists for a limited amount of time. After Brazil became a signatory to the TRIPS Agreement,29 a new Copyright Law—Law 9610/98—was enacted in 1998,30 which is Brazil’s current Copyright Law. Under the new Law, designs are protected as ‘content of literary, artistic or scientific works’ and ‘drawings, paintings, prints, sculptures, lithographs and kinetic art’. Article 6(XI) of the Copyright Law of 1973 had provided that, ‘works of applied art, provided that their artistic value can be separated from the industrial character of the object on which they are superimposed’ could be protected. However, this was omitted when the current Copyright Law was enacted. The reason for the removal of this provision was not recorded as part of the legislative process. However, according to prevailing opinion, the list of works in Art. 7, which replaced Art. 6 of the Copyright Law of 1973, is illustrative and non-exhaustive,31 and does not exclude the protection of applied arts.32 Furthermore, ‘applied arts’ is not included in the list of subject matter excluded from copyright protection under both the former Art. 6(XI) or the current Art. 8, which further reinforces that protection of ‘applied arts’ is possible under the Copyright Law.33

24.2.2 Design Protection Under the Industrial Property Law Until 1934, there was no special protection system for designs as an industrial property right.34 When a system was introduced in 1934, it was established as a type of patent right and divided into two categories: • desenho industrial [industrial design], which was a two-dimensional combination of figures and colors; and • modelo industrial [industrial model], which was a three-dimensional shape that exists in three dimensions. Design rights in Brazil continued to be protected as a type of patent right under the Industrial Property Laws of 1945, 1969 and 1971 until they were protected as a separate type of industrial property right under the current Industrial Property Law, enacted in 1996. Although there have been few changes to design protection laws 29

Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (TRIPS Agreement). 30 In addition to the 1998 Law, the Penal Code was amended in 2003, and penalties related to copyright were revised. Also, in 2009, the government expressly recognized the neighboring rights of voice actors in film works. 31 Pletsch (2009). 32 Barbosa (2003), p. 575. 33 Silveira (1997), pp. 35–43. 34 Gama Cerqueira (1982), p. 641.

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over the last 60 years, the protection of design rights has been the subject of constant discussion. For example, because designs were treated as a type of patent, novelty was determined based on the same standard of absolute novelty. It was argued, however, that the novelty of designs should not be judged on absolute grounds but on relative novelty grounds.35 In other words, even if a design is partially known, if it is a unique combination of elements, it is still novel and should be protected. The majority of opinion was that the standard of novelty for design registration should not be as strict as the standard required for the protection of an invention.36 Like copyright, industrial property rights are treated as fundamental rights under the Constitution. Although the wording of Art. 5(XXIX) on industrial property does not refer to ‘design’ or ‘designs’, it is generally understood that designs are included in the concept of criações industriais [industrial creation].37 After Brazil joined the TRIPS Agreement, it immediately revised its Industrial Property Law as a way to attract foreign investment. The new Industrial Property Law—which was enacted in 1996—protected design rights as independent industrial property rights, rather than as a type of patent. The new Industrial Property Law also established that design rights would be granted with no substantive examination in order to shorten the time required to register a design.38 In addition, novelty and originality were established as requirements for protection; and the standard of novelty was changed from absolute novelty to relative novelty. Many users and scholars agreed that these changes ensured the appropriate protection of designs in Brazil.39

24.2.3 Dual Protection Under the Copyright Law and the Industrial Property Law As noted above, the IP system in Brazil has been influenced by France. As a result, the théorie de l’unité de l’art [theory of the Unity of Art]—which was proposed by Pouillet, a leading French scholar of the nineteenth century, and referred to by many Brazilian scholars—is essential to understand the dual protection of designs in Brazil. According to this theory, works of art such as paintings and sculptures, as well as designs and models by craftsmen, are all ‘art’ and cannot be distinguished from each other. Therefore, the Copyright Law does not impose any special requirements on the protection of applied arts as distinct from pure art. As a result, regardless of whether a design is applied art or pure art, as long as it satisfies the requirements for 35

Silveira (1982), p. 65. Silveira (1982), p. 65. 37 Barbosa (2003), p. 583. 38 Garcia (2006). 39 Instituto Dannemann Siemsen de Estudos Jurídicos e Técnicos (2001), p. 190. 36

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protection under both laws, it will be granted dual (cumulative) protection under the Copyright Law and the Industrial Property Law. Newton Silveira, a famous scholar and lawyer in Brazil, supports the possibility of dual protection. Silveira argues that the protection of designs is supplementary and that any artistic expression, regardless of its utility, should be protected by copyright law.40 The close relationship between copyright protection and ‘artistic’ industrial activities is not an uncommon idea in the world of IP, particularly when one considers the connection between the development of the printing industry during the Industrial Revolution and the availability of applied art works. Although a literary work can be mass-produced as a book, it does not lose its copyrightability.41 Works that can be reproduced in large quantities—such as books, music and movies—receive copyright protection. Therefore, it is unreasonable to exclude a work from copyright protection simply because it can be manufactured industrially.42 However, when an aesthetic feature cannot be separated from its functionality, it is not appropriate to grant protection through copyright or design rights. Creations that are purely functional should only be protected by a patent or utility model.43 Carla Eugenia Caldas Barros, who also supports the Unity of Art theory, states that in the case of a design with absolute originality, overlapping protection should be possible due to the originality of the design itself, regardless of its application.44 In other words, if a design right is registered in addition to copyright (which arises automatically as a result of creative activity), overlapping protection should be possible. In addition, Tulio Ascarelli argues that, from an artistic point of view, it is extremely difficult to judge whether something is a pure work of art or not, and therefore, dual protection should be allowed as long as the work to be protected has evident artistic characteristics.45 On the other hand, according to a famous Brazilian scholar named Gama Cerqueira, from a jurisprudential point of view, copyright law is a general law that protects aesthetic expressions, in a broad cultural sense; while design law protection, within industrial property law, is a special law that protects industrial aesthetic expressions.46 However, there are many grey areas when trying to distinguish between purely artistic works and works of applied arts. Gama Cerqueira argues that, since design rights and copyrights are protected for different purposes, a system should be developed that clearly distinguishes the scope of protection of both rights, as well as claims based on those rights.47

40

Silveira (2005), pp. 7–10. Silveira (2003), pp. 27–34. 42 Silveira (2003), pp. 27–34. 43 Silveira (1982), pp. 137, 138. 44 Caldas Barros (2007), p. 399. 45 Ascarelli (1970), p. 615. 46 Gama Cerqueira (1982), p. 643. 47 Gama Cerqueira (1982), p. 654. 41

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However, Gama Cerqueira also states that, although dual protection is not ideal, in practice, the application of the theory of the Unity of Art is desirable.48 For works protected only by copyright, there is the advantage of no registration. However, in infringement lawsuits, it must be proved that there was prior access to the work by the infringer, which is not always easy to do. Furthermore, in many cases the scope of the protection is relatively narrow. Also, in the case of applied arts, which are more practical in nature, there is the possibility that copyright protection will not be recognized by the courts in the first place. On the other hand, if all works of art that can be industrially reproduced are to be protected by industrial property rights, the registration system and formal requirements, which are not necessary for simple artistic activities, will become a burden for creators.49 One of the main opponents of dual protection is José de Oliveira Ascensão, one of Brazil’s prominent copyright law scholars. According to Ascensão, only pure works of art should be protected under copyright law. Works of applied art can be protected under copyright law only when they have an artistic value analogous to pure works of art. He also argues that since the scope of copyright protection is wider than the scope of design rights protection, dual protection is unnecessary.50 In a 1991 decision, based on the Industrial Property Law of 1971 and Copyright Law of 1973, the Superior Court of Justice (STJ) confirmed a finding that a design for foldable chairs and tables—registered with the Brazilian Patent and Trademark Office (PTO) and consisting of registrations made by the School of Beaux-Arts of the Federal University of Rio de Janeiro (UFRJ)—had been infringed under the Industrial Property Law. However, it denied infringement under the Copyright Law.51

24.3 Current Protection of Designs in Brazil 24.3.1 Protection Under the Copyright Law According to Art. 7 of the Copyright Law, a protected work includes ‘creations of the mind, whatever their mode of expression or the medium, tangible or intangible, known or susceptible of invention in the future, in which they are fixed’. Article 7 lists the creations that are recognized as a work, which includes Art. 7(I) ‘the texts of literary, artistic or scientific works’ and Art. 7(VIII) which specifies ‘drawings, paintings, engravings, sculptures, lithographs and works of kinetic art’. According to Brazilian scholars, the following requirements are necessary in order for a creation to qualify as a protected work under the Copyright Law: 48

Gama Cerqueira (1982), p. 646. Gama Cerqueira (1982), p. 646. 50 Ascensão (1997), p. 611. 51 STJ, REsp: 15424 / SP (0000318-19.1983.8.26.0506), Relator: Ministro Ruy Rosado de Aguiar, Data de Julgamento: 06.12.1994, Publicado no DJe 13.02.1995. 49

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• it must fall within the general scope of literature, science, art, or music; • it must be creative—the Brazilian law does not use the term ‘original’, but it is argued that there should be a creative part that is either novel or distinguishable from other works;52 • it must be expressed in a medium (by some means, whether tangible or intangible); • it must be protected for a limited term.53 Under Art. 22 of the Copyright Law, copyright (the rights of authors in relation to their created works) is divided into moral rights and economic rights. An author is defined in Art. 11 as a natural person who has authored a literary, artistic or scientific work. It is also stated in Art. 11 that the protection given to authors may be conferred on legal entities in the cases provided for in the Copyright Law. Article 13 of the Copyright Law provides for the presumption of authorship. As for the identity of the creator, Art. 12 states that the author may use their real name or an abbreviated name, initials, pen name, or any other appropriate name. The name used in connection with a work is therefore presumed to be the name of the author when the work is made available or presented to the public. Moral rights are inalienable and non-transferable rights granted to the author in order to protect their personality as an author, such as the right to be properly named or credited when a work is used, and the right to exercise some influence in the way a work is treated and shown. Moral rights belong only to the original author.54 The transfer or waiver of moral rights is prohibited under Art. 27. It is also argued that moral rights are perpetual and non-forfeitable rights and, therefore, the author or their heirs may exercise the moral rights at any time. Article 24 of the Copyright Law sets out the different moral rights owned by authors. Items I and II provide for the right to claim authorship, and the right of an author to have their name associated with the work. Items III and VI provide for the right to publish the work and to withdraw the work from circulation. Item IV provides for the right to ensure the integrity of the work, and Item V stipulates that the author has the right to change the work, whether before or after use. Under Item VII, an author has the right to access a sole or rare copy of the work that is lawfully in a third party’s possession with a view to preserving its memory by means of a photographic or similar process, in a way that causes the least inconvenience possible to the holder, who is to be compensated for any damage or loss caused. Article 24, Paragraph 1, provides in principle that, on the death of the author, all moral rights held by them will be transmitted to their heirs. According to Art. 28, the author has the exclusive right to use their literary, artistic or scientific work, to derive benefit from it and to dispose of it. In other words, a third party may not use a work without the author’s permission, and unauthorized use is considered copyright infringement. Brazil, as a signatory to the Berne Convention, has adopted the no-formality principle and so protection is provided independent of 52

Junior et al. (2014). It is said that the phrase ‘creativity’ includes originality and novelty. Ascensão (1997), p. 46; Junior et al. (2014). 54 Ascensão (1997), p. 46; Junior et al. (2014). 53

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registration.55 However, according to Art. 19, registration is possible, but the role of registration is mainly to prove the date of creation.56 Article 29 of the Copyright Law further defines the economic rights of the author by stating that their express prior authorization is required for use of the work, including, partial or full reproduction (Item I), edition (Item II), adaptation, arrangement and other transformation (Item III), translation into any language (Item IV), incorporation in a phonogram or in an audiovisual production (Item V), as well as any other form of use that exists at present or might be devised in the future (Item X). The term of protection of copyright is set out in Art. 41, which guarantees the right for a period of 70 years as from the first of January of the year following the author’s death. Article 77 states that, unless otherwise agreed, the author of a plastic artwork, in transferring an object in which it materializes, transmits the right to exhibit it, but does not give the purchaser the right to reproduce it. In addition, authorization to reproduce a work of plastic art by whatever process shall be set down in writing and presumed to be granted for a consideration.57

24.3.2 Copyright Law Cases In Brazil, the definition of a copyright work is ‘creations of the mind, whatever their mode of expression or the medium, tangible or intangible, known or susceptible of invention in the future, in which they are fixed’. Copyright works must also be a ‘literary, artistic or scientific work’. Although the definition is vague, the scope of protection is widely understood. A recent example is a case involving the Brazilian Carnival.58 Escola Samba Dragões da Real, a samba team from São Paulo, sold shirts as goods for a 2017 parade. The same pattern was also used for mugs and other products. The picture used in the pattern was created by the Brazilian designer and plastic artist, Eric Lima. The samba team used and edited an image of Lima’s pattern from the internet without permission. In response, Lima sued the samba team for copyright infringement. Judge Rossana Alzir Diógenes Macêdo of the 13th Civil Court of the Province of Natal held that Eric Lima owned the copyright in the design and ordered the seizure of the products manufactured by the São Paulo team.59 The court ruled that the samba 55

Copyright Law, Art. 18. Ascensão (1997), p. 46; Junior et al. (2014). 57 Copyright Law, Art. 78. 58 TJ-RN, Processo: No. 0803945-69.2017.8.20.5001, Juíza: Rossana Alzir Diógenes Macêdo, 10.02.2017, publicado em 02.03.2017 na pp. 368 do Diário de Justiça do Estado do Rio Grande do Norte. 59 TJ-RN, Processo: No. 0803945-69.2017.8.20.5001, Juíza: Rossana Alzir Diógenes Macêdo, 10.02.2017, publicado em 02.03.2017 na pp. 368 do Diário de Justiça do Estado do Rio Grande do Norte. 56

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team’s reproduction of the design not only constituted unauthorized use of the work, but that the act of extracting a part of the work and hiding the name of the author was an issue. Not only the economic rights but also the moral rights of the author—such as the right to have their name associated with the work and the right to maintain the integrity of the work—were infringed. In another case, a São Paulo-based fashion brand ‘284’ sold a product called ‘I’m Not Original’, which closely resembled the ‘Birkin’ handbag manufactured and sold by Hermes (the French global fashion brand) since 1984. The first instance Court ruled that the Hermes bag was highly artistic and had a design that was not commonplace at the time it was created. Therefore, copyright protection was granted to the design of the bag.60 In the second instance, the Ninth High Court of the State of São Paulo issued an order prohibiting the manufacture, import or export, inventory storage and sale of bags that closely resembled the Birkin handbag made by the French company due to copyright infringement.61 The Court also ordered 284 to report within 30 days its accounting records showing the number of bags it had manufactured, sold and stocked in order to calculate the total damage Hermes had suffered from 284’s infringing products. In addition, similar to an order to pay punitive damages,62 284 was ordered to pay compensation equal to 50 per cent of the total economic damage suffered by Hermes as a result of damage to its brand image. Finally, in a case related to videogame visual designs, Zynga, a United States of America (US) game company, filed a lawsuit against Vostu, a Brazilian company, for copyright infringement and unfair competition in relation to a number of games Zynga had developed for Facebook, including Farmville and Cityville. The São Paulo District Court accepted Zynga’s claim and ordered Orku, the social network platform where Vostu provided its games, to remove MegaCity and Café Mania within 48 hours of receiving the judgment.63 Zynga filed a similar lawsuit against Vostu in the US.64 After a similar ruling in the US, the two companies settled the dispute.

60

TJ-SP, Processo: No. 0187707-59.2010.8.26.0100, Juíz: João Omar Marçura, 20.05.2011, publicado em 02.06.2011 em Fls. 1779/1793 - Sentença no. 1107/2011 registrada em 23/05/2011 no livro no. 879 às Fls. 27/37 da Publicação SIDAP. 61 TJ-SP, Apelação No. 0187707-59.2010.8.26.0100, Relator: Des. Jose Carlos Costa Netto, 16.08.2016, Diário Eletrônico: 2201, 15.09.2016. 62 Punitive damages are damages paid under tort law—in addition to damages intended to compensate a Plaintiff for actual damage—primarily for the purpose of deterring future similar acts. 63 TJ-SP, Processo: No. 583.00.2011.174324-1, Juíza: Andrea de Abreu e Braga, 02.08.2011, publicado em 27.09.2011 na Página 307 da Judicial—1ª Instância—Capital do Diário de Justiça do Estado de São Paulo (DJSP). 64 Zynga Inc. v. Vostu USA, Inc. et al., No. 5:2011cv02959 (N.D. Cal. 11 Aug 2011).

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24.3.3 Protection Under the Design Law Article 95 of the Industrial Property Law stipulates that a design is an ‘ornamental plastic form of an object or any ornamental arrangement of lines and colours that may be applied to a product’. In accordance with this provision, a design will not be protected unless it is visually recognizable.65 There are a number of requirements that must be satisfied in order to obtain a design registration under the Industrial Property Law. The substantive requirements are novelty and originality. According to Art. 96, an ‘industrial design is considered new when not comprised by the state of the art’. In Brazil, in order to prevent the granting of registrations for similar designs, a standard of absolute novelty is applied.66 Therefore, the state of the art comprises everything made accessible to the public before the date of filing of the application, in Brazil or abroad, by use or any other means.67 However, designs that have been disclosed within 180 days preceding the date of filing of the application or of the priority claimed are not considered to be included in the state of the art, provided a number of conditions are met.68 According to Art. 97, a design is considered to be original when it results in a distinctive visual configuration in relation to other prior objects. This has been interpreted as meaning that a design will be original if it is based on an original idea as a relative expression of the creator of the design and is not likely to be confused with other articles and designs.69 Silveira argues that originality is relevant to both authorship and research and development activities in relation to an industrial design. In the case of copyrighted works, originality is required only for the form of the work itself. However, in the case of designs and utility models, even if the form itself is not unique, the originality requirement may be met if the industrial application of a design is unique.70 The requirements for novelty and originality are somewhat similar. As noted earlier, novelty is recognized only when no other similar design already exists. Similarly, a design is considered to be original when it is not a copy of another article. Although not a direct requirement, Art. 100(II) has been interpreted to mean that functional designs are not to be protected by design rights,71 and that a design must include a non-functional element to be protected under the Industrial Property Law.72

65

Faria (2007), pp. 11–26. Caldas Barros (2007), p. 396. 67 Industrial Property Law, Art. 96(1). 68 Industrial Property Law, Art. 96(3). 69 Instituto Dannemann Siemsen de Estudos Jurídicos e Técnicos (2001), p. 199. 70 Silveira (1982), p. 80. 71 ‘Art. 100. The following items shall not be eligible for registration as a design (…) (II) The inevitable shape that an object normally or generally has, or the shape that is essentially determined by technical or functional considerations’. 72 Silveira (1982), p. 57. 66

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In addition to the above, the industrial applicability requirement must also be satisfied for a design to be registered with the Brazilian PTO.73 In Brazil, industrial designs are granted registration without substantive examination. Therefore, applications that do not raise any formality issues are automatically registered. The duration of protection is a minimum of 10 years and a maximum of 25 years. It is possible to request a substantive examination after registration in order to demonstrate that registration requirements have been met.74 However, because registration has already been granted, the design right is enforceable even before the substantive examination is requested.75 The scope of the design right has been the subject of much academic commentary. The right to use a design is limited to its ornamental elements, even if the entire article is shown in the specification or drawing in an application. To determine whether a design right has been infringed, differences are examined in light of their use in commerce.76 Since a design right is an exclusive right, it is possible to prevent a third party from using the design without permission. A finding of indirect infringement is also possible. The penalties relating to the design right are set out in Arts. 187 and 188 of the Industrial Property Law. In Brazil, an infringement of a design right may result in both criminal and civil liability.77 ‘A simple act of reproduction (for example, making a copy)’ is sufficient for civil liability to be found, and ‘in order for criminal liability to arise against an infringer, proof of de facto confusion or a high likelihood of confusion is required’.78 In Brazil, the limitation for actions for repairing damages caused to design rights is five years.79

24.3.4 Design Protection Cases The key issue in many design rights cases is the validity of a design right. Nonetheless, the analysis of a few cases does provide some insight into design protection issues in Brazil, even though the stare decisis doctrine does not apply in Brazil, and there is not a clear test for assessing validity claims.

73

Instituto Nacional da Propriedade Industrial. Desenhos Industriais. https://www.gov.br/inpi/ptbr/servicos/desenhos-industriais. Accessed 25 Oct 2021. 74 Industrial Property Law, Art. 106. 75 The need for substantive examination is currently being discussed as a requirement for the enforcement of design rights in Brazil. 76 Barbosa (2003), p. 583. 77 Industrial Property Law, Art. 207. A plaintiff may, in addition to criminal proceedings, bring civil proceedings as deemed appropriate in accordance with the Brazil Code of Civil Procedure. 78 Barbosa (2003), p. 583. 79 Industrial Property Law, Art. 225.

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In one case, a Brazilian sandal company named Grendene sued Pucci & Smokovitz, a manufacturer and distributor of sandals called ‘Sandy’, for infringing the design right of their ‘Melissa Furadinha’ product, which is a registered design. In the first instance, the Court ruled that the ‘Melissa Furadinha’ design registered with the Brazilian PTO lacked novelty and originality. The Court also ruled that consumers were unlikely to confuse the Plaintiff’s sandals with the Defendant’s sandals at the time of purchase.80 The Third High Court of São Paulo, the appellate court, upheld the judgment of the first trial Court and dismissed the Plaintiff’s case. However, the High Court did not base its finding on the ground that the sandals were not original. Instead, it found the sandals were not novel because they belonged to the public domain and were free to be used by third parties.81 On the other hand, Grendene was able to obtain design protection for other models. The São Paulo District Court found that a sandal called ‘Charmosa Chic’ made by another Brazilian shoe manufacturer, Frad, infringed Grendene’s design for its ‘Melissa Aranha’ product.82 The Court of Appeals also upheld the judgment of the first trial Court.83 Many design disputes relate to automobile designs, in particular, the protection of repair parts (spare parts) of automobiles as designs. Automobiles are composite products formed from many different parts. Therefore, some countries allow the registration of designs for spare parts that are used to restore the original appearance of such composite products, but restrict the enforcement of the design rights. In Brazil, spare parts that are part of the ornamental composition of an automobile are not considered to be eligible for registration as a design under Art. 95 of the Industrial Property Law if they are not distinguishable from the automobile. For example, a Brazilian parts manufacturer, Orgus, filed a lawsuit to invalidate Ford’s design rights for bumpers and headlights. The Court ruled that Ford’s design was highly functional and that granting a design right would prevent the use of repair parts for repair purposes. In such a situation, the range of choices for consumers to make repairs would be unreasonably restricted and free competition would be harmed. This would be contrary to the principles of protection of economic order set out in Art. 170 of the Constitution, especially the principles of free competition (Item IV) and consumer protection (Item V). As a result, 31 design registrations relating to bumpers and 16 design registrations relating to headlights for Ford’s cars were declared invalid.84 80

TJ-SP, Processo: No. 0153824-68.2003.8.26.0100, Juíza: Ana Luiza Liarte, 16.10.2006, publicado no SIDAP Fls. 636 em 23.11.2011. 81 STJ, REsp: 1374053 SP 2013/0072756-8, Relator: Ministro Villas Bôas Cueva, Data de Julgamento: 16.02.2016, Publicado no DJe 23.02.2016. 82 TJ-SP, Processo: No. 0002283-04.2010.8.26.0565, Juíz: Ana Lucia Fusaro, 03.06.2013,publicado em 06.06.2013. 83 TJ-SP, Apelação 0002283–04.2010.8.26.0565, Relator: Tasso Duarte de Melo, 17.11.2014, 2ª Câmara Reservada de Direito Empresarial, publicado em 19.11.2014. 84 JF-RJ, Processo: No. 0809326-30.2010.4.02.5101 (2010.51.01.809326-0), Juíz: Guilherme Bollorini Pereira, 14.05.2012, publicado em 25.07.2012.

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There are also cases where protection of an entire automobile design under the Industrial Design Law has been denied. For example, BMW, the German automaker, sued Lifan, a Chinese company, on the grounds that a car called ‘Lifan 320’ that Lifan had produced since 2009 infringed its design for the Mini Cooper. BMW acquired the rights to use the Mini Cooper in 2000. It claimed that the sale of the ‘Lifan 320’ was an act of unfair competition because the ‘Lifan 320’ used several ornamental features of the ‘hatchback’ in its appearance, making the overall appearance similar and creating a high risk of confusion. As part of the evidence presented at the lawsuit, BMW submitted the results of a questionnaire that showed that likelihood of confusion among average consumers. The Rio de Janeiro District Court accepted BMW’s claim and issued a preliminary injunction prohibiting the importation, sale, display, distribution, promotion and advertising of the ‘Lifan 320’.85 However, the Court of Appeal ultimately found that BMW’s design had not been infringed.86

24.4 Conclusion Copyright law has been harmonized to some extent worldwide through the Berne Convention and the TRIPS Agreement. On the other hand, there has been little international harmonization of design rights. Articles 25 and 26 of the TRIPS Agreement relate to industrial designs,87 but they are not detailed provisions. One of the key features of design protection in Brazil is its ‘Unity of Art’ approach, which makes it possible for dual protection to be afforded to some designs. Of course, whether design protection is possible under the Copyright Law or the Industrial Property Law will always depend on the type of design and other factors. Nonetheless, it can be said that designers have a range of options to protect their creations in Brazil.

References Ascarelli T (1970) Teoría de la concurrencia y de los bienes inmateriales. Bosch, Barcelona Ascensão JdO (1997) Direito autoral, 2nd edn. Renovar, Rio de Janeiro Barbosa DB (2003) Uma introdução à propriedade intelectual, 2nd edn. Lumen Juris, Rio de Janeiro Britto R (2008) Romero Britto Colors Around the World: Beyeler — For the Love of Art. BirkenHalde Verlag 85

TJ-RJ, Processo: No. 0152267-32.2012.8.19.0001, Juíz: Maria Isabel Paes Goncalves, 18.05.2012, publicado no DJERJ fls. 588/589 em 20.07.2012. 86 TJ-RJ, Agravo de Instrumento No. 0038588-57.2012.8.19.0000, Relator: Des. Luciano Saboia Rinaldi de Carvalho, 24.10.2012, publicado no DJERJ fls. 219/224 em 26.04.2013. 87 For example, members should provide for the protection of independently created industrial designs that are new or original; owners of protected industrial designs should have the right to prevent the making, selling or importing of articles bearing or embodying a design which is a copy or substantially a copy in certain circumstances; the duration of protection should be at least 10 years.

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Caldas Barros CE (2007) Manual de Direito da Propriedade Intelectual. Evocati, Aracaju Chaves A (1985) Direito de Autor. Apanhado Histórico. Legislação Brasileira De Caráter Interno, Revista Faculdade De Direito 80:284–303 Faria AXd (2007) O desenho industrial e os direitos de propriedade intelectual Revista da ABPI 87: 11–26 Gama Cerqueira Jd (1952) Tratado da propriedade industrial, vol. II, t. I, Parte II, ed. Revista Forense, Rio de Janeiro Gama Cerqueira Jd (1982) Tratado da propriedade industrial. Revista dos Tribunais, São Paulo Garcia GFC (2006) Desenho industrial e indicações geográficas na ótica da lei de propriedade industrial brasileira. https://revistas.ufpr.br/dint/article/view/6859. Accessed 25 Oct 2021 Hammes BJ (2002) O direito de propriedade intelectual: conforme a Lei n° 9.610 de 19 Feb 1998, 3rd edn. São Leopoldo, Unisinos Instituto Dannemann Siemsen de Estudos Jurídicos e Técnicos (2001). Comentários à lei da propriedade industrial e correlatos. Renovar, Rio de Janeiro Junior SV, Souza BM, Souza CA, Kameda K, Moncau LF, Valente M, Maciel M, Martini P, Augusto P, Moniz P, Lemos R (2014) Direitos Intelectuais. https://direitorio.fgv.br/sites/direitorio.fgv.br/ files/u100/direitos_intelectuais_2014-2.pdf. Accessed 25 Oct 2021 Menezes ED (2007) Curso de direito autoral. Belo Horizonte, Del Rey Orlando P (1939) Direitos autorais: seu conceito, sua prática e respectivas garantias em face das convenções internacionais, na legislação federal e da jurisprudência dos tribunais. Nova Jurisprudencia, Sao Paulo Pletsch LW (2009) Desenho Industrial: Possibilidade De Dupla Proteção. Available via. http://doc player.com.br/7671089-Desenho-industrial-possibilidade-de-dupla-protecao-1.html. Accessed 25 Oct 2021 Ribeiro EX (2014) O direito do autor na qualidade de fator de proteção fundamental da obra:c aracterística e responsabilidades morais e patrimoniais. Revista AREL FAAR, Ariquemes, RO, v.2(3): 60–88. https://doi.org/10.14690/2317-8442.2014v23139 Santos M (2008) Direito autoral na era digital: Impactos, controversias e possiveis solucoes. Dissertation, Pontificia Universidade Catolica de Sao Paulo. PUC-SP, pp. 53–54. http://www.domini opublico.gov.br/download/teste/arqs/cp063159.pdf. Accessed 25 Oct 2021 Silveira N (1997) Comentários à nova Lei de Direito Autoral n 9.610, de 19/02/98. Revista Da ABPI 31:35–43 Silveira N (1982) Direito de autor no desenho industrial. Revista dos Tribunais, São Paulo Silveira N (2003) Direito de autor no desenho industrial. Seminário Nacional Da Propriedade Intellectual, São Paulo. In O redesenho dos direitos intelectuais no contexto do comércio mundial. ABPI, São Paulo Silveira N (2005) Propriedade intelectual. Manole, Barueri

Roberto Carapeto has extensive experience working both as a researcher and an attorney, dealing with IP matters in both full service and boutique IP law firms. Roberto obtained his Juris Doctor degree from Rio de Janeiro State University (UERJ), and a MA in law and later a doctoral degree of law from Waseda University in Tokyo, Japan. He is currently a lecturer at the Graduate School of Law of Waseda University, and a research collaborator at Waseda University’s Research Center for the Legal System of Intellectual Property (RCLIP). Roberto is also a partner at the Brazilian Law Firm Licks Attorneys.

Part V

Oceania

Chapter 25

A Chronological History of Australian Design D. J. Huppatz

Abstract This chapter comprises an overview of Australian design history, from the continent’s earliest inhabitants to the present. Although Australian design is not well known, its history nevertheless offers some unique and provocative case studies. Design historians have thus far focused primarily on a modernist ideal of designers as form and image-makers and compiled histories based on the resulting artefacts of their practice. But recent scholarship on decolonization has challenged such characterizations of design by highlighting alternative possibilities for understanding design’s history in settler colonial societies. In this light, Australia’s colonial foundation and its legacy require further scrutiny, and the uneasy relationship between professional design culture, colonial expectations and Indigenous culture is juxtaposed in the following account.

25.1 Introduction With its origins in the 1788 penal colony of New South Wales (NSW), the modern nation-state of Australia remains inextricably tied to its British colonial roots. Settlers’ early concepts of design were connected to circuits of international trade, communication and migration, and there was little local industry until the twentieth century. In the inter-war era, early professionals working in commercial and industrial art typically adapted European techniques and ideas. Design, as a modern profession dedicated to the conception and creation of a functional and original product, visualization or communication, was not well established until after World War II. In the 1950s and 1960s, increasing local manufacturing, advertising and corporate commissions gave designers a range of new opportunities. Design education and promotion began at this time too, resulting in a small but vibrant design culture that has grown in size and expanded in its practices to the present. Yet running parallel to this ongoing narrative of a progressive, modernizing colonial culture, Indigenous culture proposed a radically different concept of design. D. J. Huppatz (B) School of Design and Architecture, Swinburne University of Technology, Melbourne, Australia e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_25

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25.2 Indigenous Design To consider design within an Australian Indigenous context is to reconsider our common-sense definition of the word. For Aboriginal people, any equivalent of the English word ‘design’ is situated within an alternative cosmology that challenges European frameworks of design and the law, as well as what constitutes designed products or communication systems. Rather than consider discrete artefacts or symbols, an Indigenous approach to design demands a holistic understanding of which ‘weapons and tools derived from stone and wood are loaded with moral and spiritual obligation and significance.’1 In this expanded definition, ‘Design is how all living beings co-operate to co-create.’2 Contemporary Indigenous designers continue this worldview that integrates objects, people and their interwoven relationships with environmental, sacred and social systems.3 While there are parallels with contemporary Western participatory and sustainable design, such a definition goes further, embedding design within an inclusive cosmology rather than extracting it as a professional practice with limited parameters and purpose. From a legal perspective, Jonathan Dobinson notes the ongoing limitations of the Design Act 2003 (Cth) that only protects the visual appearance of ‘products’ for ten years—the subject matter and duration of protection do not accord with certain Indigenous notions of design and clan ownership.4 Two centuries of colonialism ‘resulted in a progressive elimination and near extermination of Indigenous Australian social systems, knowledge, governance, economy and education.’5 At the same time, various white Australian designers engaged in appropriation and exploitation of Indigenous visual culture, a practice that only started to diminish after the increased visibility of Indigenous art and culture in the 1980s.6 Under colonial and later Australian law, Aboriginal and Torres Strait Islander people had little or no rights or were prevented from exercising rights with regard to ownership of cultural property or symbols until this time. This history, combined with the relatively recent renaissance of Aboriginal culture, presents numerous challenges for reconsidering Australian design. In 2011, Norm Sheehan proposed the practice of ‘Respectful Design’, based on Indigenous Knowledge, ‘founded on how design positions itself in relation to natural systems and the social world.’7 Indigenous Knowledge is understood here as a system accumulated over 60,000 years of continuous occupation of the Australian continent. This complex, holistic knowledge system incorporating humans and the environment is specific and intertwined with place, so that ‘design is ancestral and 1

Pascoe (2014), p. 134. Moran et al. (2018), p. 73. 3 Page and Memmott (2021), p. 2. 4 See Chapter 26 by Jonathan Dobinson in this volume, especially 26.11 ‘Indigenous Design’. 5 Foley (2007), p. 177. 6 See St John (2018). 7 Sheehan (2011), p. 70. 2

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alive in Country.’8 In this context, the limited Western concept of design as a practice dedicated to creating original, functional products is tied to a colonial perspective. Respectful Design challenges this conceptual framework that founds much mainstream Australian design, specifically its narrow emphasis on function, form and technological innovation.

25.3 Early Colonial Design (1788–1850) In the first decades of Sydney’s existence as a colony after 1788, the official British visions—from penal settlement to self-sufficient agrarian utopia—did not include industrial development or modernization. Instead, a one-way flow of designed products from Britain and its colonial trade network resulted in a dependant, importoriented culture. For early settlers, it ‘was always considered more fashionable to have imported pieces than locally made examples.’9 But high freight costs and tariffs also encouraged limited local production in Sydney, particularly of small-scale, household items. Early industries manufactured iron tools, utensils, pottery and bottles, for example; while imported furniture, decorative arts catalogues and pattern books maintained a connection to British design tastes.10 The colonists brought eighteenth-century British print culture with them, including a hand printing press for administrative broadsheets that arrived with the First Fleet. The colony’s first book, the New South Wales Standing Orders, was issued in 1802 by Governor King,11 but it was not until 1810 that ex-convict George Howe established a commercial printing business to publish books, pamphlets and broadsheets. In 1833, ex-convict William Moffitt established a more specialized bookbinding and engraving business in Sydney that produced a wide variety of printed material, including advertisements, labels, maps, business cards and letter-heads. With this growth of print culture, Alexander Thompson’s type foundry began ‘as early as 1843, and some type may have been made in Sydney as early as 1841.’12 Thompson exported his locally made type to New Zealand, but such cross-colonial trade was relatively rare.

8

Sheehan (2011), p. 76. Daniels (1996), p. 43. 10 On the early manufacturing in Sydney, see Rich (1987), pp. 24–25. 11 Richards (1988), p. 12. 12 Bryans (1996), p. 76. 9

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25.4 Free Settlement and Prosperity (1850–1900) The decline of convict transportation, free settlement and wealth generated by the 1850s gold rush changed the composition of Australia’s population. As former colonial outposts grew into cities, commercial and applied artists began to ply their trade with increasing opportunities. Artist-designers such as German-born Charles Troedel, for example, established a business in Melbourne in 1863 that engaged in a wide range of commercial art work, including illustration, advertising, typography and sign-writing, as well as three-dimensional ornamental objects and architectural details.13 Troedel’s lithography in particular, ‘as the technological arrangement mediating early colonial Australian society, was responsible for transforming advertising in nineteenth-century Australia and the legal categories under which such advertising was protected.’14

25.4.1 Exhibitions and Technological Innovation Australian manufacturers and artists participated in international exhibitions and world’s fairs beginning with London’s Great Exhibition of 1851, and, with growing confidence and prosperity, held their own. These began with the Sydney International Exhibition in 1878 and major exhibitions in Melbourne in 1880 and 1888. Modelled on European precedents, these exhibitions organized arts, manufactures and natural products within the same taxonomic system as London’s Great Exhibition. Through their extensive exhibitions of mineral and agricultural products and ethnographic displays of Indigenous people, Australian exhibitors sought to display the progress made by the colonies.15 Meanwhile, displays of decorative arts, transportation, communications and building technologies provided evidence of cultural sophistication, technological progress and urbanization.16 Notable Australian technological innovation in the late nineteenth century comprised mainly of agricultural implements and mining machinery. Perhaps the best known is Hugh McKay’s ‘Sunshine Harvester’, patented in 1885.17 While harvesting wheat previously required winnowing or threshing to finish the grain, McKay’s harvesting machine streamlined the process, and his production grew from manufacturing a handful of harvesting machines a year in the late 1880s to 1926 machines a

13

See Scardamaglia (2020). Scardamaglia (2017), p. 2. 15 See Orr (2006). 16 On the Sydney Exhibition of 1879–1880, see Proudfoot et al. (1988). On the Melbourne Exhibitions, see Davidson (1988), pp. 158–177. Early Australian design laws provided that exposure of a design at intercolonial or international exhibitions did not prevent a design from being ‘new’ and its registration: see, e.g., Patents, Designs and Trade Marks Act 1893 (Tas), s. 65. 17 See Chapter 26 by Jonathan Dobinson for a brief overview of colonial patent laws. 14

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year in 1905.18 He established a significant export market for his harvesters to South America and South Africa and later contributed to manufacturing for the war effort in World War I.

25.4.1.1

Designing Australian-ness

The colonists adopted British modes of art and design education and read the writings of established authorities such as Charles Eastlake, A.W.N. Pugin and John Ruskin. Some émigré artists, designers and architects of the 1880s and 1890s began to selfconsciously use local motifs in their adaptation of Arts and Crafts furniture and decorative arts. After his arrival in 1879, French-born artist Lucien Henry had a significant impact in this regard as a teacher at Sydney’s Working Men’s College and the Sydney Technical College. His studio-based approach to art and design education was new, and his championing of the use of native flora and fauna in decorative work proved influential.19 Beginning in the 1880s, some artists and designers began a concerted effort to establish a distinctive Australian visual culture. Artists associated with the Heidelberg School, for example, tried to capture the ‘essence’ of the landscape, while commercial artists adopted local flora, fauna and even the continental map as distinctive icons in advertising, trademarks and promotional material.20 Writers and illustrators associated with The Bulletin (a journal that started in 1880) were at the forefront of a bourgeoning nationalism founded on the concept of a white Australia and the establishment of nationalist myths based on rural nostalgia, indigenous flora and fauna and a masculine pioneering spirit. Australians also looked to British Arts and Crafts design and architectural techniques at this time.21 Wealthy Adelaide couple Robert and Joanna Barr Smith, for example, were major clients of William Morris’ London shop from 1884, decorating their mansions with imported Morris and Co. furniture. Local designers and architects, inspired by such models, substituted local for English flora and fauna in their furniture and architectural ornaments. Architects such as Harold Desbrowe-Annear, Walter Butler and Robert Haddon designed detached houses based on English Arts and Crafts models that later came to be known as the Federation Style. Germanborn cabinet maker Robert Prenzel, who moved to Melbourne in 1888, designed elaborately hand-carved furniture and architectural panels using local timber and decorative motifs comprising eucalyptus leaves, koalas and kookaburras.

18

Pearce and Bakes (2020), p. 259. See Bogle (2002). 20 See the remarkable collections of early trademarks and labels contained in Cozzolino (1990). 21 See Montana (2000); Miley (2001). 19

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Migrant Cultures

Migrants also brought production skills that they adapted to the local context. Examples include Irish-born manufacturers in the clothing, printing and vehicle building industries, and Henry Upton Alcock, who ‘invented a variety of products and processes’ with local timber and mechanization in his Melbourne billiard table factory.22 Another significant migrant industry, beginning in the 1880s, and peaking in 1911–1912, comprised 88 Chinese cabinet-making factories operating in what is now Melbourne’s Chinatown. They manufactured furniture based on popular English models but utilized skills, techniques and tools brought from China. The precinct’s decline in the 1930s can be attributed to the combined effects of the depression, increasing mechanization of the furniture industry, popular anti-Chinese sentiment and government anti-Chinese policy.23 Finally, during the first century of colonization, the British authorities understood the local inhabitants to be primitive people without civilization. Although some collected Aboriginal artefacts out of curiosity, they failed to grasp their social, cultural and ecological context. Yet Aboriginal material objects such as boomerangs or woomeras were sophisticated designed products: hand-crafted in local materials, sustainable, useful and aesthetic. Post-contact adaptations, such as a wooden spear with a glass shaft or a wooden axe with an iron head, are (contrary to the colonial perspective of a backwards, primitive people) evidence of an innovative, dynamic culture capable of utilizing new materials and techniques.24

25.5 Federation and the Inter-War Years (1901–1939) In 1901, the colonies united into a single nation and designers were keen to establish distinctive cultural characteristics and visual forms for the new nation. With a growing urban middle class and expanding publishing and manufacturing industries, a new design culture emerged.25 Early advertising agencies such as Sydney’s Smith and Julius commercial art studio (founded in 1906) designed print advertisements, illustrations, posters and typography. One of its founders, Sydney Ure Smith, became an influential publisher and taste-maker through his journal The Home (1920–1942).26 In addition to articles about modern design and architecture, The Home featured covers designed by artist-designers such as Hera Roberts, Thea Proctor, Adrian Feint 22

Pescod (2007), p. 224. See Leckey (2004), especially Chapter 9, ‘Lim Kee Tye and the Chinese Cabinetmakers’, pp. 256–307. On the role of anti-Chinese sentiment and the White Australia Policy’s effects on the Chinese furniture industry, see Markus (1974), pp. 1–10. 24 See Jones (2018). 25 See Chapter 26 by Jonathan Dobinson, especially 26.5 on the replacement of colonial laws with new national laws with respect to ‘copyrights, patents of inventions and designs, and trade marks’. 26 See Underhill (1991). 23

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and Roy de Maistre. For these early modernists, there was little distinction between fine and applied art, and many worked across painting, cover design, illustration and interior decoration. While British ties remained strong, some designers and architects sought ideas from the United States of America (US), particularly for new techniques, technologies and Art Deco styling. In 1912, American architect Walter Burley-Griffin won the competition to design the nation’s new capital, Canberra, and he and his wife Marion Mahoney lived and worked in both Sydney and Melbourne where they designed buildings, interiors and devised urban plans. In the 1920s and 1930s, Australians enthusiastically embraced modern technologies—from electric trains to elevators and modern commercial spaces such as hotels, department stores, cafes and cinemas. This period was also critical in the development of Australian manufacturing, factory employment rose significantly, and areas of expansion included metal manufacturing, textiles and consumer products, including domestic appliances and automobiles.27 In Melbourne in the 1930s, Cynthia Reed’s retail store Modern Interiors became a hub for modernist designers. It sold furniture by Fred Ward, textiles by Michael O’Connell and abstract art and furniture by Sam Atyeo. Ward particularly became well-known for his line of modern timber furniture for the Myer Department store.28

25.5.1 Commercial Artists A new generation of commercial artists including Douglas Annand, Gert Sellheim and Eileen Mayo designed tourism material, promotional material and exhibitions that depicted Australia as a modern nation. Utilizing modern photographic techniques, abstraction and montage and including Indigenous motifs, these designers sought to establish a modern visual language for Australia. One of their key forums was work for The Australian National Travel Association (ANTA), founded in 1929, an organization that employed graphic designers to create striking lithographic posters, many of them capturing elements of Australian landscape and lifestyles that might appeal to foreign tourists and settlers.29 European migrants with art and design education, designers who travelled abroad, and professional journals enabled local practitioners to engage European and American modernism. Expatriates such as Estonian Gert Sellheim designed modern book covers, tourism posters, magazine covers and advertisements with block colours, geometric forms and minimal, sans-serif type. Perhaps the culmination of this period that exemplified Australian modernism was ‘The Australian Pavilion’ at the 1939 New York World’s Fair. The pavilion contained a modern installation featuring graphics by Dahl and Geoffrey Collings (recently returned from London), murals by 27

Rich (1987), pp. 38–39. Bogle (1989), p. 70. 29 See Spearitt (1991). 28

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Douglas Annand and photographer Russell Roberts’ innovative illuminated panels. Though formally and technically innovative, the ‘photomontages projected Australia as a prosperous and egalitarian society on a vast continent, living in peaceful coexistence with the Indigenous hunters and gatherers.’30

25.5.2 ‘Indigenous’ Modernists Yet rather than simply copying from European models, Australian modernists adapted to local conditions, from using local timber for furniture to creating graphic icons based on local flora and fauna, perhaps most famously Gert Sellheim’s 1947 ‘winged kangaroo’ logo for Qantas. Modernist designers such as Sellheim, Annand and O’Connell also appropriated Indigenous motifs in their search for distinctive local references during the 1920s and 1930s.31 Boomerangs and woomeras, as well as caricatures of Aboriginal people, appeared on posters, packaging and advertising, while Aboriginal people, displaced from their land, lived in poverty in missions and government settlements. Artist Margaret Preston was one of the few artists in the inter-war period with an interest in Aboriginal art. In her 1925 article, ‘The Indigenous Art of Australia’, Preston celebrated the simple forms, patterns and natural colours of Aboriginal visual culture and argued that ‘returning to primitive art’ could provide a foundation for a national culture.32 Using designs from shields and artefacts in the Sydney Museum as examples, Preston proposed Australian artists and designers should use Aboriginal forms and colours for home décor, on textiles, graphic art, ceramics or furniture. But, in a 1930 article on the same theme, Preston adds ‘please do not bother about what the carver meant in the way of myths, rites, etc.; that is not the decorators’ affair.’33

25.6 Post-War Modernization (1945–1969) World War II had a two-fold effect on Australian design: manufacturing and material restrictions during and immediately after the War generated an innovative design culture, while new methods and materials developed during the War created new possibilities.34 Along with Melbourne designer Fred Ward’s DIY Patterncraft furniture, launched in 1947, and Grant Featherston’s experiments with moulded plywood, the post-war generation of Australian designers represented a new, entrepreneurial design culture. Beginning with small batch productions of simple, functional, light 30

Stephen (2006), p. 36. See Huppatz (2018). 32 Preston (2006), p. 156. 33 Preston (1930), p. 3. 34 See Grant (2014). 31

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chairs upholstered in modern colours, this generation revelled in the possibilities suggested by new technologies and the optimism surrounding post-war life. In Sydney and Melbourne, a generation of locally-trained furniture designers emerged in the post-war years. Douglas Snelling, Fred Lowen, Clement Meadmore and Grant Featherson all manufactured their own small batches of functional, lightweight modern furniture. They represented a new, entrepreneurial design culture inspired by new technologies and the optimism of post-war Australia. Featherston’s ‘Contour’ series of moulded plywood chairs and lounges (1951–1955), for example, captured the emerging ethos of domestic relaxation and comfort. But the limitations of available manufacturing technology and a small market made mass manufacturing difficult. Although the scale was relatively small, locally designed furniture and homewares received considerable support from department stores such as Anthony Hordern in Sydney and Melbourne’s Myer Emporium and in magazines such as Australian Home Beautiful. Modern Australian design featured, for example, in the 1949 ‘House of Tomorrow’ in Melbourne’s Modern Home Exhibition. Designed by architect Robin Boyd, with furniture by Grant Featherston and textiles by Francis Burke, this futuristic home was a showcase of local modernism. The growing public awareness of modern design was further stimulated by Geoff Collings’ 1950 film By Design and Boyd’s 1961 television series, Design in Australia. One of the more successful businesses mass manufacturing furniture in Australia was Fler. Founded by émigré furniture designer Fritz Loewenstein (later Fred Lowen) and Ernest Rodeck in 1946 to produce wooden bowls and metal pencils, Fler soon began producing modern furniture too from their Melbourne factory. By 1955, Fler developed a production line, and Lowen’s chairs were made under licence in Sydney, Brisbane and Auckland.35 Lowen’s trip to Britain to see the Festival of Britain in 1951 included contact with manufacturers and stores such as Heal’s and Liberty’s, and he declared that British design ‘was really far ahead of any other.’36

25.6.1 Promoting Good Design Edited by Sydney Ure Smith, Australia National Journal’s inaugural issue in 1939 set out its aim as ‘to give expression to our progress in Art, Architecture and Industry.’37 Promoting industrial progress and development in transport were part of Smith’s initial agenda, and the architecture, industrial design, furniture, even the advertisements featured in the journal were unashamedly modernist (although the art was not). Included in this first issue was the article ‘The Designer In Industry: A Serious National Need’, by Richard Haughton-James. In it, Haughton-James advocated ‘good

35

See Lane (1997). Lowen (2000), p. 117. 37 Ure Smith (1939), p. 15. 36

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design’ and a Bauhaus-like educational program to train professional designers in Australia.38 Such ambitions later came to some fruition through the Society of Designers for Industry, of which Haughton-James was the first President, formed in Melbourne in 1948 to define professional practice and standards. Haughton-James arrived in Australia from England just before the start of World War II and initially worked as creative director at advertising agency J. Walter Thompson in Sydney. He later founded a modern design consultancy, the Design Centre, with Dahl and Geoffrey Collings; and became a passionate promoter of modern art and design through writing articles, organizing exhibitions and regular radio broadcasts.

25.6.2 The Professionalization of Industrial and Interior Design Interior designer Margaret Lord had also returned from London just before the War, along with expat friends Alistair Morrison and Dahl and Geoffrey Collings, and quickly became an influential promotor for modernist design through her articles for Australian Home Beautiful, and in authoring the first Australian guide to interior design, Interior Decoration: A Guide to Furnishing the Australian Home (1944). Her interior design consultancy created interiors for various modern corporations, hospitals and passenger ships in the decades following the War, and Lord was a founder member of the Society of Interior Designers in 1950.39 Founded in 1958, the Industrial Design Council of Australia, based on the British organization, aimed to promote design standards in local manufacturing, promote design to the public and advise government. Its activities over the next two decades included a ‘Good Design’ swing tag for local products (1960–1975), a publication, Design Australia (1967–1975), and in 1977, the Australian Design Awards. After a period of decline in the 1980s, it was revived as the Australian Design Council in 1987. Marketed as ‘Australia’s Own Car’, the General Motors Holden began production in 1948 and quickly became an icon of local design and manufacturing. Industrial designers found work with companies such as Amalgamated Wireless Australia (AWA) and Crown Crystal Glass (Crown Corning from 1957), both as part of in-house design teams and as independent consultants. Professional consultancies such as Melbourne-based Rosenfeldt-Gherardin & Associates (founded in 1955) and Sydney-based Carl Nielsen & Associates (founded in 1961) confirmed the establishment of a viable professional design industry. But the industrial design profession remained relatively small. In a 1968 article, ‘Product Design’, Grant Featherston lamented the poverty of the local design scene: ‘[t]he critical eye must find Australia’s products dull, unoriginal and even ugly. 38 39

See Haughton-James (1939). See Whitehouse (2008).

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However, the buying public appears to be satisfied. Manufacturers claim they give the public what they want. Yet the design, at best, falls far short of world standards.’40 This echoed architect and critic Robin Boyd’s earlier claims of superficiality in The Australian Ugliness (1960) in which Boyd was critical of ‘a thin but well-established Australian veneer on international Western culture.’41 Boyd, meanwhile, looked to Japanese and American architecture and culture, creating a unique and sophisticated mix as both architect and critic. Large-scale corporate and government commissions in the 1950s and 1960s further stimulated the profession. Grant and Mary Featherston, for example, developed holistic corporate fit-outs including furniture, storage systems and fixtures, closely aligned with the new modernist architecture of steel and glass—for example ‘ICI house’ in Melbourne (1955–1958) and the National Gallery of Victoria (1966– 1968). Grant Featherston’s 1963 chair ‘Delma’ was a successful mass-produced chair, one of the most successful chairs ever manufactured in Australia (Artistoc Industries made 250,000 of them). Another iconic chair was the ‘Expo Talking Chair’ for the Australian Pavilion at the 1967 Montreal World Expo.42 Mary Featherston worked in design for education in the 1970s and continues to work to the present.

25.6.3 Fashion and Graphic Design Consultancy The local fashion and textiles industries also expanded in the post-war era. Speedo, for example, gained an international reputation for its innovative nylon racing swimwear in the 1950s onto which colour-fast designs could be printed—these were extended into fashion swimsuits in the 1960s. Meanwhile, companies such as Alcorso and Modernage Fabrics commissioned local designers and artists to create printed woollen textiles for both the fashion and interior design industries and the flamboyant entrepreneur Florence Broadhurst’s bold, vibrant and exotic wallpaper and textile designs of the 1960s, presented a local alternative to imported products.43 Graphic design consultants such as Alistair Morrison, Gordon Andrews and British-born Richard Beck found a wide range of commercial work from corporate communication systems and logos to government-commissioned tourism posters and postage stamps. Perhaps the most iconic graphic of the era was Beck’s 1956 Melbourne Olympics poster, a relatively sparse, geometric design that contrasted the traditional emphasis on human figures typically featured in Olympics design programs.44 Another expatriate, Californian Les Mason, arrived in 1961 to work for advertising agency USP Benson then founded his own graphic design studio a year later, one that had an enduring impact on the development of local graphic design. 40

Featherston (2002), p. 92. Boyd (1960), p. 2. 42 See Barnes and Jackson (2012). 43 See O’Neill (2006), Karaminas (2007). 44 See Hughson (2012). 41

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His art direction of Epicurean magazine, the magazine of the Food and Wine Society of Australia, was influential and innovative and garnered an international reputation. From a legal perspective, Gordon Andrews’ designs for the 1966 decimal currency is an interesting case study. The new bank notes featured the head of a prominent Australian man on each side except for the one dollar note which featured the Queen’s head on one side, and on the other, unusually, Aboriginal art. By including Aboriginal art on a bank note, Andrews ‘hoped to celebrate their culture through something all citizens would handle and come to respect.’45 Yet he knew nothing about the origins of the art, and his design comprised of a pastiche from photographs of bark paintings and rock art. After the notes were released, it emerged that the artist of the main image featured on the note, David Malangi Daymirringu, was alive and living in Arnhem Land and had not been consulted about the use of his painting of the Gurrumurringu story. The Governor of the Reserve Bank, H.C. Coombs, arranged for compensation for Malangi, in what was the first public acknowledgment of Indigenous images being used without permission.

25.7 The Late Twentieth Century (1970–2000) The effects of the global recession in the early 1970s had a significant effect on Australian manufacturing. Already struggling against the ‘economies of scale’ in development and manufacturing available in the US, Europe and Japan, small Australian industries relied on protection and tariffs on imports. This meant there was little incentive to innovate, develop new processes or invest in design. While agricultural exports fell, mineral exports grew to become the mainstay of the economy. Despite this, Australian designers continued to develop new products during this decade, including Charles Furey’s 1973 ‘Integra Chair’ for Harry Sebel’s furniture company.46 A stackable chair made from a single piece of moulded polypropylene, the Integra became a popular institutional chair during the 1970s and 1980s and remains in production today. In the 1980s, some Australian products and innovations began to reach a global market. In 1984, for example, Nielsen Design Associates and the NSW Department of Main Roads designed the ‘PB/5’ pedestrian button, or ATPD (Audio-Tactile Pedestrian Detector), a device designed to aid in pedestrians’ safety at traffic light crossings (including hearing- and sight-impaired pedestrians). A baby safety capsule, the ‘Safen-Sound’ child seat restraint, designed by Richard Boyson Heath and Colin Michael Nagel in the same year also found export success. A bassinette inside a base that can be secured by a seat belt, the Safe-n-Sound was designed to fit into existing car seat 45

Andrews (1993), p. 145. As noted in Chapter 26 by Jonathan Dobinson, a Sebel chair was the subject of judicial consideration in D. Sebel & Co. Ltd v. National Art Metal Co. Pty Ltd (1965) 10 FLR 224. The Court found the chair was ‘new’, noting its ‘distinctive splay of the two legs’, ‘in-setting of the supports of the back rests’ and ‘simplicity of outline’.

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spaces and its bassinette removed and carried separately. The Cochlear ‘bionic ear’ implant, designed by Graeme Clark, was the result of collaboration between scientists and medical electronics engineers to create successful hearing implants that allow deaf patients to hear through electrical stimulation. First implanted in 1978, Clark designed the self-curling electrode array to fit the shape of a human cochlea with minimal surgery. The well-known industrial designer Marc Newson, after beginning his career in Sydney, left Australia to establish a global career in Tokyo, Paris and London in the 1990s. He forged a reputation on sculptural furniture and luxury products such as his iconic 1986 ‘Lockheed Lounge’ that went on to set world records at auction. Since 1997, he has run a London-based design studio that works on commissions across luxury branding, furniture and interiors. By the end of the twentieth century, Australia’s low tariffs, relatively high labour costs and government policy directed towards mining, agriculture and tourism had an adverse effect on local manufacturing and, subsequently, on design. The demise of the local automotive and furniture industries, for example, was symptomatic of the failure of local manufacturing to compete globally, while the increasing market share of foreign-designed and manufactured cars and furniture (such as the spread of IKEA, for example) signalled a return to an import-oriented culture. In graphic design, global branding agencies established Australian branches, partnered with local affiliates or took over local consultancies. Small-scale production by designer-makers of furniture, textiles, homewares and ‘life-style brands’ remained strong, and some achieved global success. These include surf-ware brands Billabong and Rip Curl and streetwear brands Crumpler and Mambo. Since 1984, Mambo’s colourful and humorous graphics, epitomized by Richard Allen’s ‘Farting Dog’ logo and the surreal suburban landscapes of Reg Mombassa, have adorned t-shirts, textiles and promotional material. Another example, Dinosaur Designs, founded by Louise Olsen, Stephen Ormandy and Liane Rossler in 1985, began designing small-scale jewellery made from cast resin, then expanded into metalware, glassware and developed a successful global brand.47 In the 1980s, Aboriginal artists, particularly those associated with Western and Central Desert ‘dot’ painting, began to achieve fame abroad and in Australia.48 While Indigenous material culture was traditionally discussed in anthropological terms and framed in anthropological collections, it began to be framed as contemporary art. Included as part of this revival were design-related activities, such as textiles by Tiwi Designs and the Utopia collective. Perhaps the most high-profile was Ros and John Moriarty’s Balarinji Studio that adorned five 747 Qantas aircraft with contemporary Aboriginal designs. These began with ‘Wunala (Kangaroo) Dreaming’, a 747-400 airliner designed as a huge artwork.

47 Jonathan Dobinson, in Chapter 26, highlights the 1995 Australian Law Reform Commission report which noted how design practice had changed since enactment of the 1906 Act and proposed a new law to support it which took account of global developments such as these. 48 Fisher (2016), especially Chapter 6, ‘The Emergence of Aboriginal Art in the 1980s’, pp. 75–101.

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25.8 The Twenty-First Century (2001–Present) Digital design and the expansion of the internet and mobile communications have transformed design practice. In the twenty-first century, Australian designers began working in service, systems and strategic design, practices beyond creating material products.49 In this definition of design, designers working within corporation and government environments create solutions to problems, develop innovation, strategies or design systems.50 Early Australian exponents of these new directions include 2nd Road, a consultancy founded in 2002 (and now part of global consulting firm Accenture), and strategic design consultancy ThinkPlace, founded in 2005. The latter has expanded to eight studios in five countries engaged in service and systems design for everything from health care in Kenya to transport in Singapore. Another notable example of a large-scale digital design project is the Service NSW platform for the NSW Government. Established in 2012, the designers of Service NSW aimed to centralize and streamline customer experience across multiple government agencies into a unified web design, call centre and customer experience. Service NSW’s Digital Design Standard, launched in 2018, aimed to create ‘a living, breathing repository of a standard, guides and reusable components to help teams across government deliver consistent and cohesive digital services.’51 Such design projects, involving citizen engagement and continual upgrades as services and technologies change, are fundamentally dynamic. A final, topical case worth considering is that of the Aboriginal Flag. In 1971, a Luritja artist from central Australia, Harold Thomas designed the flag, comprising a horizontally divided rectangle, black above and red below, with a yellow disc in the centre. In 1995, the flag became an official flag of Australia and by this time had been broadly adopted by both Aboriginal and non-Aboriginal Australians as a symbol of Indigenous solidarity. But, as a copyrighted design, the Aboriginal flag attracted controversy in 2018 when Thomas granted exclusive commercial licensing rights for use of the flag on clothing and merchandise, leading to legal threats for unauthorized use.52 This led to an ongoing ‘Free the Flag’ campaign by Aboriginal entrepreneurs who could not freely reproduce the flag.53 A 2020 Federal Government Select Committee inquiry rejected calls for the Federal Government to compulsorily acquire the copyright (to ‘free’ the flag) as this would ‘perpetuate the dispossession, injustices and racial discrimination endured by Aboriginal Australians for more than 200 years’ and set a dangerous precedent. Instead, negotiations were undertaken with 49

See Sobel and Groeger (2013). Jonathan Dobinson notes that the Design Act 2003 is yet to fully embrace the digital age. The law is still expressed in terms of a ‘product’, on which basis, screen displays and type fonts have been refused registration. This means the Design Act 2003 is unlikely to protect service, systems and strategic design (although some of these new practices may be protected under other laws). See Chapter 26. 51 Easton (2018, 8 Dec). 52 Higgins (2019, 11 June). 53 Mao (2020, 4 Sept). 50

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all parties to attempt to achieve a model for the future use of the flag—an independent body that would have custodial oversight of the Aboriginal Flag and its future use.54 However, in January 2022, copyright in the flag was transferred to the Commonwealth in a confidential agreement in which Thomas retained ‘moral rights’ yet the Aboriginal Flag is now free for anyone to reproduce.

25.9 Conclusion Australian design, while not distinctive in terms of its aesthetics, techniques or ethos, nonetheless reveals some critical issues in how we define design and its history. From 1788, a British colonial culture brought with it both an inherited design sensibility and a sense of inferiority due to distance from design’s perceived centre in Europe (and later the US and Japan). Designers in Australia created artefacts and visual symbols for a relatively small local market, engaged with global ideas and occasionally broke into global markets. Running parallel to this narrative is an unresolved tension between Indigenous frameworks of knowledge, ecological and social relationships, and white Australian ones, a friction that exposes design’s limitations and possibilities.

References Andrews G (1993) Gordon Andrews: A Designer’s Life. New South Wales University Press, Sydney Barnes C, Jackson S (2012) Staging Identity: Australian Design Innovation at Expo ’70, Osaka. J Des Hist 25(4):400–413 Bogle M (1989) Design in Australia, 1880–1970. Craftsman House, Sydney Bogle M (2002) Designing Australia: Readings in the History of Design. Pluto Press, Sydney Boyd R (1960) The Australian Ugliness. FW Cheshire, Melbourne Bryans D (1996) The Beginnings of Type Founding in Sydney: Alexander Thompson’s Type, His Foundry, and His Exports to Inter-Colonial Printers. J Des Hist 9(2):75–86 Cozzolino M (1990) Symbols of Australia, 3rd edn. CIS Educational, Melbourne Daniels R (1996) Problems in Identifying Early Australian Colonial Furniture. Regional Furniture 10:42–51 Davidson G (1988) Festivals of Nationhood; The International Exhibitions. In: Goldberg SL, Smith FB (eds) Australian Cultural History. Cambridge University Press, Cambridge, pp 158–177 Easton S (2018, 8 Dec) NSW government sets a new standard in digital public service design. The Mandarin. https://www.themandarin.com.au/102694-nsw-government-sets-a-new-standardin-digital-public-service-design/. Accessed 25 Oct 2021 Featherston G (2002) Product Design. In: Bogle M (ed) Designing Australia: Readings in the History of Design. Pluto Press, Sydney Fisher L (2016) Aboriginal Art and Australian Society: Hope and Disenchantment. Anthem Press, London and New York

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Foley D (2007) Leadership: The Quandary of Aboriginal Societies in Crises, 1788–1830, and 1966. In: Macfarlane I, Hannah M (eds) Transgressions: Critical Australian Indigenous Histories. ANU E-Press, Canberra, pp 177–192 Grant K (ed) (2014) Mid-Century Modern: Australian Furniture Design. NGV, Melbourne Haughton-James R (1939) The Designer in Industry: A Serious National Need. Australia National Journal 1:87–91 Higgins I (2019, 11 June) New Licence Owners of Aboriginal Flag Threaten Football Codes and Clothing Companies. Available via ABC News. https://www.abc.net.au/news/2019-06-11/newlicence-owners-of-aboriginal-flag-threaten-football-codes/11198002. Accessed 25 Oct 2021 Hughson J (2012) An Invitation to ‘Modern’ Melbourne: the Historical Significance of Richard Beck’s Olympic Poster Design. J Des Hist 25(3):268–284 Huppatz DJ (2018) Visualising Settler Colonialism: Australian Modernism and Indigenous Design. RMIT Design Archives Journal 8(2):35–41 Jones P (2018) Ochre and Rust: Artefacts and Encounters on Australian Frontiers. Wakefield Press, Adelaide Karaminas V (2007) Imagining the Orient: Cultural Appropriation in the Florence Broadhurst Collection. Int J Design 1(2):11–20 Lane T (1997) Schulim Krimper and Fred Lowen: Two Melbourne Furniture Makers. In: Butler R (ed) The Europeans: Émigré Artists in Australia. National Gallery of Australia, Canberra Leckey JA (2004) Low, Degraded Boots? Industry and Entrepreneurialism in Melbourne’s Little Lon, 1860–1950. Australian Scholarly Publishing, Melbourne Lowen F (2000) Fred Lowen: Dunera Boy, Furniture Designer, Artist. Prendergast Publishing, Castlemaine Mao F (2020, 4 Sept) The Fight to ‘Free’ the Aboriginal Flag. Available via BBC News: https:// www.bbc.com/news/world-australia-49315063. Accessed 25 Oct 2021 Markus A (1974) Divided We Fall: The Chinese and the Melbourne Furniture Trade Union, 1870– 1900. Labour Hist 26:1–10 McCarthy M (2020) Select Committee on the Aboriginal Flag, Chapter 6: https://www.aph.gov.au/ Parliamentary_Business/Committees/Senate/Aboriginal_Flag/AboriginalFlag/Report/section? id=committees%2freportsen%2f024548%2f73975. Accessed 25 Oct 2021 Miley C (2001) The Arts Among the Handicrafts: The Arts and Crafts Movement in Victoria, 1889–1929. St Lawrence Press, Melbourne Montana A (2000) The Art Movement in Australia: Design, Taste and Society 1875–1900. The Miegunyah Press, Melbourne Moran C, Harrington G, Sheehan NW (2018) On Country Learning. Des Cult 10(1):71–79 O’Neill H (2006) Florence Broadhurst: Her Secret and Extraordinary Lives. Hardie Grant, Melbourne Orr K (2006) A Force for Federation: International Exhibitions and the Formation of Australian Ethos (1851–1901). Ph.D. dissertation, University of New South Wales, Sydney Page A, Memmott P (2021) Design: Building on Country. Thames and Hudson, Melbourne Pascoe B (2014) Dark Emu, Black Seeds: Agriculture or Accident? Magabala Books, Broome Pearce L, Bakes W (2020) Wheat, Wages and Weapons: The Story of the Sunshine Harvester Works. Griffith Rev 69:259 Pescod K (2007) The Emerald Strand: The Irish-Born Manufacturers of Nineteenth-Century Victoria. Australian Scholarly Publishing, Melbourne Preston M (1930) Applications of Aboriginal Design. Art in Australia 31:3 Preston M (2006) The Indigenous Art of Australia. In: Stephen A, Goad P, McNamara A (eds) Modernism and Australia: Documents on Art, Design and Architecture 1917–1967. Melbourne University Publishing, Melbourne Proudfoot P, Maguire R, Freestone R (eds) (1988) Colonial City, Global City: Sydney’s International Exhibition of 1879. Crossing Press, Sydney Rich DC (1987) The Industrial Geography of Australia. Croom Helm, London

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Richards M (1988) People, Print and Paper: A Catalogue of a Travelling Exhibition Celebrating the Books of Australia, 1788–1988. National Library of Australia, Canberra Scardamaglia A (2017) A Legal History of Lithography. Griffith Law Rev 26(1):1–27 Scardamaglia A (2020) Printed on Stone: the Lithographs of Charles Troedel. Melbourne Books, Melbourne Sheehan NW (2011) Indigenous Knowledge and Respectful Design: An Evidence-Based Approach. Des Issues 27(4):68–80 Sobel L, Groeger L (2013) The Future of Design Thinking in Australia: Barriers and Opportunities. Des Manage Rev 24(2):26–31 Spearitt P (1991) Sites and Sights: Australian Travel Posters 1909–1990. In: Spearitt P, Butler R (eds) Trading Places: Australian Travel Posters 1909–1990. Monash University Gallery, Melbourne St John N (2018) Australian Communication Design History: An Indigenous Retelling. J Des Hist 31(3):255–273 Stephen A (2006) Designing for the World of Tomorrow: Australia at the 1939 New York World’s Fair. reCollections: J Natl Museum Austr 1(1): 29–40 Underhill N (1991) Making Australian Art, 1916–49: Sydney Ure Smith, Patron and Publisher. Oxford University Press, Melbourne Ure Smith S (1939) The Aims of this Journal. Austr Natl J 1(3):15 Whitehouse D (2008) Pen to Pixel: 100 Years of Design Education at Swinburne, Exhibition Catalogue. Chapel off Chapel, Prahran, Melbourne, 17 July–3 Aug 2008, curated by Nanette Carter

D. J. Huppatz is a design historian and an associate professor in the School of Design and Architecture, Swinburne University of Technology, Melbourne. He is the author of Modern Asian Design (Bloomsbury, 2018) and Design: the Key Concepts (Bloomsbury, 2019) and editor of Design: Critical and Primary Sources (Bloomsbury, 2016).

Chapter 26

A History of Australian Design Law Jonathan Dobinson

Abstract Histories of Australian intellectual property law usually emphasise British influence. While Australian design laws have often reflected those of the United Kingdom (UK), at times the Australian colonies resisted imperial uniformity and enacted laws that departed from those of the UK. In the latter part of the twentieth century, the Australian law became more unique and distinct. It continued to reflect its British heritage but increasingly responded to local concerns and new external forces, often reflected in recommendations of Government-initiated policy reviews, culminating in the current Designs Act 2003 (Cth).

26.1 Introduction This chapter traces the development of Australian design law from ‘settlement’ by the British in 1788 to the present day.1 In Australia, a design may be protected under a number of laws. However, the focus of this chapter is the Designs Act 2003 (Cth) and its predecessor the Designs Act 1906 (Cth). In telling the story of this ‘rather peculiar’ law,2 a number of themes emerge: external forces have shaped and continue to influence Australia’s design protection system; in an attempt to demarcate what design law is and protects, Australia has continuously ‘tinkered’ with provisions that address the overlap of design and copyright protection, while its approach to design features that serve a technical function has sometimes been unique. The chapter also briefly considers the future of Australian design law and how it may better recognise and protect the interests of Aboriginal and Torres Strait Islander people.

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Weatherall (2018), p. 292. The development of Australian design law has often reflected changes in Australian design and design practice. This chapter should be read alongside Chapter 25 by Professor D.J. Huppatz. 2 Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725, 729 per Dixon J. J. Dobinson (B) Research Center for the Legal System of Intellectual Property, Waseda University, Tokyo, Japan © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_26

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26.2 Overview of Design Protection in Australia It is useful to provide an overview of Australia’s current design protection system before tracing the history of the law that is the focus of this chapter. The Designs Act 2003 provides for the registration of a new and distinctive ‘design’, defined as ‘the overall appearance’ of a product ‘resulting from one or more visual features’. A ‘visual feature’ includes the ‘shape, configuration, pattern and ornamentation of’ a product. The owner of a registered design has a number of exclusive rights during the registration term, up to a maximum of 10 years. While it is possible to register a design that is comprised of features that serve a functional purpose, the Designs Act 2003 is intended to protect a product’s visual appearance, not its function. The function of a product may be protected under the Patents Act 1990 (Cth) if it is a patentable invention.3 For a time, a product’s function could also be protected under a second-tier patent system—first, as a ‘petty patent’ and later as an ‘innovation patent’. However, both systems failed (the innovation patent system is currently being phased out). The Copyright Act 1968 (Cth) automatically protects a range of ‘original’ works including ‘artistic works’ such as drawings and sculpture, as well as ‘works of artistic craftsmanship’. These works are protected for the life of the author plus 70 years or, if published after the death of the author, 70 years after first publication. Depending on its nature, a design can be protected under design law or copyright law or both laws. For example, a chair could potentially be protected as a ‘design’ under the Designs Act, or as an ‘artistic work’ under the Copyright Act based on a drawing of the chair, or as a ‘sculpture’ or a ‘work of artistic craftsmanship’. Australian law has tested various approaches to this overlap. The current policy is partial cumulation (dual protection is permitted for certain two-dimensional designs) and demarcation (dual protection is not permitted for other types of designs).4 Subject matter that can be registered as a ‘design’ under the Designs Act 2003 may also be registered as a ‘trade mark’ under the Trade Marks Act 1995 (Cth) if it is capable of distinguishing a trader’s goods or services.5 The Trade Marks Act 1995 protects various types of signs (including packaging, shape, colour, sound or scent) for 10 years (renewable, potentially indefinitely). Examples of designs on both the design and trade mark registers include perfume bottles, confectionery, toys, pens and tools (or elements of them).6 Some protection may also be available under the Australian Consumer Law (ACL) including against ‘misleading or deceptive conduct’ and ‘false or misleading representations’;7 as well as from common law actions such as ‘passing off’ and the

3

Patents Act 1990 (Cth), s. 18. See Copyright Act 1968 (Cth), Pt III, Div 8; Davison et al. (2020), para. 7.10. 5 Trade Marks Act 1995 (Cth), ss. 6, 17. 6 ACIP (2013), para. 3.8.2. 7 Competition and Consumer Act 2010 (Cth), Sch 2, ss 18 and 29(1)(a). 4

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equitable doctrine of breach of confidence.8 However, while this chapter considers the potential overlap of design and copyright protection and how Australian design law has treated functional design features, its focus is the Designs Act 2003 and its predecessor, the Designs Act 1906 (Cth).

26.3 ‘Settlement’ (1788–1850) The British colonies—New South Wales (NSW), Victoria, South Australia (SA), Western Australia (WA) and Van Diemen’s Land (Tasmania from 1856)—were established in the period from 1788 to the 1850s. The Australian continent was regarded as ‘settled’ through the establishment of mostly penal settlements, and the legal fiction of terra nullius assumed that the land was ‘empty and without an owner’. This was despite thousands of years of Aboriginal and Torres Strait Islander culture, knowledge, law and sovereignty.9 All English laws ‘applicable to their own situation and condition’ were exported to Australia, and so, in early colonial days, English intellectual property (IP) laws that protected specific areas of manufacturing could have applied in the colonies.10 However, it has been noted that such laws may have been largely irrelevant to most ‘new arrivals’—that is, convicts transported from Britain.11 As the settlements expanded, commerce, industry and cultural production grew, and legal autonomy slowly increased.12 In 1828, the UK Parliament passed the Australian Courts Act 1828 (UK). As a result, UK IP statutes passed prior to 1828 or passed after 1828 and expressed to apply by ‘paramount force’ formed part of the law of the colonies of NSW and Van Diemen’s Land.13 Therefore, while the Literary Copyright Act 1842 (UK)—which was expressed to extend to ‘colonies and settlements’—applied;14 early and influential UK design laws—such as the Ornamental Designs Act 1842 (UK) and the Utility Designs Act 1843 (UK)—were not so expressed, and so did not.15 8

Passing off relates to damage to a plaintiff’s reputation or goodwill as a consequence of a misrepresentation by a defendant. Breach of confidence relates to unauthorised use of information that was communicated in circumstances importing an obligation of confidence: see, e.g., Davison et al. (2020), paras. 14.2, 8.3. 9 See, e.g., Kercher (2020), pp. xi, 6. 10 Kercher (2020), pp. xi, 4. For example, the Designing and Printing of Linens Act, 29 Geo. III c. 19 (1789). 11 Alexander (2018), para. 7.2.1. Some small-scale manufacturing did exist: see Huppatz (2014), p. 215. 12 Alexander (2018), para. 7.2.1; Kercher, p. xxi. 13 Australian Courts Act (1828) 9 Geo. IV c. 83, s. 24 in Alexander (2018), para. 7.2.1. For information on the other colonies, see Kercher (2020), pp. 69–75. 14 Literary Copyright Act 5 & 6 Vict. c. 45 (1842), s. 2. See Ailwood and Sainsbury (2014), Bently (2011), p. 173. 15 Ornamental Designs Act 5 & 6 Vict. c. 100 (1842) and Utility Designs Act 6 & 7 Vict. c. 65 (1843). See Chapter 10 by Professor David Musker. See also Sherman and Bently (1999), Chs 3–5.

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26.4 Colonial Design Protection (1850–1900) By the mid-1850s, transportation of convicts had eased, and the colonies began to grow and draft constitutions that established parliaments with powers over domestic matters.16 The Colonial Laws Validity Act 1865 (UK) provided that colonial parliaments were bound only by paramount force Acts of the Imperial Parliament, and could otherwise pass whatever laws they wished.17 The colonies began to enact a ‘multiplicity’ of domestic IP laws that still followed UK law—while aware of the benefits of uniform IP law, colonial legislators were not prepared to risk colonial interests in an imperial system dominated by British industry.18

26.4.1 Colonial Patent Laws In the early nineteenth century, UK patent law was uncertain and complex, and some argued it should be abolished.19 At this time, UK patent laws carried equal force in Australia. On payment of a fee, British patent owners could ‘extend their patent protection to all British colonial possessions’.20 Once colonial legislatures were established, a person could also petition parliament for a patent to be granted by way of a private bill. The first of these was a SA Private Act granted for an ‘improved windlass’ in June 1848 for a period of 10 years.21 By the 1850s, the UK patent system had been transformed.22 However, there was colonial resistance to a unified imperial patent system, some colonies wanted their own patent laws, and it was decided that British grants should not be extended to them.23 Patent laws were soon enacted across the colonies. NSW enacted the first statute, driven by concerns about the application of UK patent laws and proposals for the first Australasian Industrial Exhibition.24 The Letters of Registration for Inventions Act 1852 (NSW) provided the NSW Governor General with power to grant Letters This appears consistent with a policy that the colonies should be dependent and import-oriented rather than modernised and industrialised: see Chapter 25 by Professor D.J. Huppatz. 16 Such as the New South Wales Constitution Act 1855 18 & 19 Vic. c. 54. See Kercher (2020). 17 Colonial Laws Validity Act 1865 (28 & 29 Vict. c. 63). See Bently (2011); Kercher (2020), pp. 98–103, 125. 18 Bently (2011); Finn (2000), pp. 113–114. 19 Bowrey (1997), p. 95; Seville (2018), para. 2.1.3; Sherman and Bently (1999), Ch. 3. 20 Weatherall (2018), p. 298. 21 Finn (2000), p. 119; Scardamaglia (2011), p. 278. In Chapter 25, Professor D.J. Huppatz notes how notable Australian technological innovation in the late nineteenth century comprised mainly of agricultural implements and mining machinery. 22 An Act for Amending the Law for Granting Patents for Inventions 1852, 15 & 16 Vict., c. 83. See Sherman and Bently (1999), Chs 4 and 5; Seville (2018), para. 2.1.3. 23 Finn (2000), p. 121; Bently (2011), pp. 163–164. 24 Bently (2011), pp. 163–164; Alexander (2018), para. 7.2.1.

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of Registration for ‘a period of not less than seven nor more than 14 years for all inventions and improvements in the Arts or Manufactures to the author or authors or designer or designers thereof’.25 Despite the references to ‘improvements in the Arts or Manufactures’ and ‘designers’, it is not clear to what extent this law was used to protect ‘design’ as we understand it today.26

26.4.2 Colonial Copyright Laws In 1868, a House of Lords decision clarified that the protection offered by the Literary Copyright Act 1842 (UK) did not extend to works first published in the colonies.27 Around this time, the colonies started to enact their own copyright laws. While some laws were based on the Literary Copyright Act 1842 (UK), that Act only applied to books and music, and so there was ‘room for colonial variation’.28 Some of these laws began to diverge from UK law and protect not only artistic, literary, dramatic and musical works, but also designs. The design protection scheme under the Copyright Act 1869 (Victoria) was an amalgam of the Ornamental Designs Act 1842 (UK) and Utility Designs Act 1843 (UK).29 Like the UK Acts, designs were required to be ‘new and original’ and registered to attract protection, and infringing acts were described in a similar way. A ‘design’ protected the ‘pattern, shape, configuration or ornamentation’ of an ‘article or work of manufacture or art’, as did the 1842 UK Act. However, rather than demarcate ‘ornamental’ and ‘utility’ designs, it protected ‘any new and original’ designs ‘for purposes of utility ornament or otherwise’; and, while the UK Acts distinguished designs from art works such as ‘sculpture’, the Victorian Act allowed cumulative protection.30 The Copyright Act 1878 (SA) and the Copyright Act 1878 (NSW)—enacted almost a decade later—closely followed the Victorian law.31 However, the Queensland, WA and Tasmania Acts adopted the approach of the Patents, Trade Marks and Designs Act 1883 (UK) which had been enacted in a climate of international IP arrangements.32 As a consequence, these laws protected ‘new or original’ designs 25

Letters of Registration for Inventions Act 1852 (NSW), s. 1. Bently (2011), p. 165. For the laws of other Australian colonies, see Alexander (2018), para. 7.2.1. 27 Routledge v. Low (1868) LR 3 HL 100; Literary Copyright Act 5 & 6 Vict. c. 45 (1842), s. 15. 28 Bentley (2011), p. 174. 29 Copyright Act 1869, 33 Vict. No. 350 (Vic). See Alexander (2018), para. 7.2.1. 30 See, e.g., Ornamental Designs Act 5 & 6 Vict. c. 100 (1842), s. III; Utility Designs Act 6 & 7 Vict. c. 65 (1843), s. 2; Copyright Act 1869 (Vic), s. 3. 31 Copyright Act 1878, 41 & 42 Vict. No. 95 (SA); Copyright Act 1878, 42 Vict. No. 20 (NSW). 32 Such as the Paris Convention for the Protection of Industrial Property, 20 Mar 1883 (revised 14 July 1967), 828 U.N.T.S. 305 (Paris Convention). A number of reasons have been posited for the delay, including the small number of local creators and other possible means of protection: see, e.g., Weatherall (2018), p. 300. The Attorney General of WA stated ‘there was no great hurry’, ‘the 26

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for a period of five years,33 and addressed the international protection of designs.34 They also adopted the 1883 UK Act definition of ‘design’ which referred to ‘pattern’, ‘shape or configuration’ and ‘ornament’, but excluded sculptures.35 Other than sculptures, protection under both design and copyright laws was permitted—creators were left to decide the appropriate protection. Colonial copyright laws did share some common features. For example, under each colony’s law, anyone who applied a design, or fraudulent imitation of a design, for the purposes of sale knowing they did not have the consent of the proprietor, would be liable to a penalty.36 The purpose of these laws was not always made clear. Many parliamentarians considered the laws to be transcripts of UK Acts.37 However, we know the Victorian law was urged by a ‘deputation including designers’; there had been ‘instances of valuable designs, which could not become the subject of patent, being pirated’; and the law aimed to protect designers.38 The WA Attorney-General highlighted the utilitarian benefits of such laws, noting that they let the public know that if they did ‘invent, design, or manufacture’ an ‘article of superior quality’ it would be protected, and this was of benefit to the public and manufacturers.39 The only colonial design rights case that is known to have been officially reported was decided around this time. R v. Radke, ex parte Dyke concerned an appeal of a conviction under the Copyright Act 1869 (Vic) for the selling of a safe— to which a registered design had been applied—without the proprietor’s consent. The court quashed the conviction, finding that the ‘iron frame for safe’ may have formed ‘a subject for a patent’, but ‘not for copyright of a design’ under the Victorian Act.40

colony having done so long with it’: Western Australia, Parliamentary Debates, Legislative Council, 22 July 1893 (A.P. Hensman), p. 44. 33 Patents, Designs and Trade Marks Act 1884 (Qld), ss. 47, 50; Designs and Trade Marks Act 1884 (WA), ss. 4(1), 7(1); Patents, Designs and Trade Marks Act 1893 (Tas), ss. 55, 58. 34 See, e.g., Patents, Designs and Trade Marks Act 1893 (Tas), Part V. 35 Patents, Designs and Trade Marks Act 1884 (WA), s 17; Patents, Designs and Trade Marks Act 1884 (Qld), s. 3(1); Patents, Designs and Trade Marks Act 1893 (Tas), s. 4. 36 See, e.g., Copyright Act 1869 (Vic), s. 10; Copyright Act 1879 (NSW), s. 41; Copyright Act 1878 (SA), s. 10; Designs and Trade Marks Act 1884 (WA), s. 15; Patents, Designs and Trade Marks Act 1884 (Qld), s. 58. Some of these laws also distinguished protectable designs from subject matter such as ‘label wrappers’ or ‘other coverings used for sale’: see, e.g., Copyright Act 1869 (Vic), s. 51, similar to 1843 Utility Designs Act, s. 9. 37 See, e.g., Queensland, Parliamentary Debates, Legislative Assembly, 22 July 1884, p. 130 (The Premier). 38 See The Leader, 17 Apr 1869, p. 12; Victoria, Parliamentary Debates, Legislative Assembly, 31 Aug 1868, pp. 1837-8 (G. Paton Smith); Victoria, Parliamentary Debates, Legislative Assembly, 9 June 1869, p. 1006 (G. Paton Smith). See also ‘Parliamentary Bills, Patents, Designs, and Trade Marks’, The Mercury (Hobart, Tasmania), 2 Aug 1893, p. 4 in relation to laws to protect designs ‘which can scarcely be called works of art’. 39 Western Australia, Parliamentary Debates, Legislative Council, 18 July 1884, p. 27 (AttorneyGeneral). 40 R v. Radke, ex parte Dyke (1882) 8 VLR (L) 23, 25. See Alexander (2018), para. 7.2.1.

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26.5 Nationhood and the Designs Act 1906 (Cth) (1900–1906) In the late 1800s, the idea of amalgamating the colonies into a nation took hold. With the enactment of the Commonwealth of Australia Constitution Act 1900 (UK) Australia came into existence as a political entity, and the power to make IP laws shifted from the colonies (now ‘states’) to the Federal Parliament.41 The Parliament exercised this power by enacting the Patents Act 1903 (Cth), Trade Marks Act 1905 (Cth), Copyright Act 1905 (Cth) and the Designs Act 1906 (Cth), which would replace the colonial laws, and ‘secure the international protection which Britain obtained for herself and her Colonies by the Convention of 1894’.42 Around this time, IP law reform in the UK was particularly concerned with the interpretation of registration documents; international uniformity; and the overlap of design and copyright law, partly driven by the proposal that copyright protection should be automatic and not conditional on registration.43 The Designs Act 1906 reflected some of these concerns and was based on the Patents, Designs and Trade Marks Act 1883 (UK). However, it protected designs under a separate law and took a different approach to the previous WA and Tasmanian laws—rather than echoing the UK law, the Designs Act 1906 ‘sought to express those legislative principles alongside their judicial interpretation and development’.44 Section 4 of the Act defined ‘design’ as ‘an industrial design applicable, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article, or to any two or more of those purposes’. This differed from the lengthy definition in the UK Act and the colonial laws.45 The design right was expressed as ‘copyright in the design’ which was ‘the exclusive right to apply the design, or to authorise another person to apply the design, to the articles in respect of which it is registered.’46 The term of protection was five years from the date registration took effect.47 A ‘Registrar of Designs’ and ‘Designs Offices’ were established in each state to examine applications and register designs.48 While the UK Act required a design to be ‘new or original’, s. 17 of the Australian Act set out that ‘[a]ny new and original design’, not previously published in Australia, could be registered ‘in respect of all or any of the articles’ included in one or more 41

Australian Constitution, s. 51(xviii). Commonwealth, Parliamentary Debates, Senate, 20 June 1906, p. 392 (Senator John Keating). ‘Convention of 1894’ is assumed to be an error and a reference to the Paris Convention: Alexander (2018), para. 7.2.2. 43 Sherman and Bently (1999), Chs 8, 9; Burrell (2006), pp. 240–242; Bently (2011), pp. 161, 188–193. 44 Alexander (2018), para. 7.2.2. See also Baron (1999), p. 204. 45 See Patents, Designs and Trade Marks Act 1883 (UK), s. 60. 46 Designs Act 1906 (Cth), s 12. This differed slightly to the UK Act: Alexander (2018), para. 7.2.2. 47 Designs Act 1906 (Cth), ss 13, 26(2); as under the Patents, Designs and Trade Marks Act 1883 (UK), s. 50(1). 48 See Designs Act 1906 (Cth), ss 8, 9, 23, Pt VI. 42

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classes in the prescribed classification. Section 15 provided that the person registered as the owner was the owner of the copyright in the design. Under s. 30, copyright in a registered design was infringed if a person, without the owner’s licence or authority: applied the design or any fraudulent or obvious imitation of it to any article in respect of which the design was registered; or sold, offered or kept for sale, any article to which the design or any fraudulent or obvious imitation of it had been applied in infringement of the copyright in the design. Unlike the UK law, the Designs Act 1906 did not exclude sculptures from protection; and it appears that some form of dual protection under copyright and design law was permitted.49 Consistent with the UK Act and earlier colonial laws, the new Australian Act did not distinguish ‘ornamental’ and ‘utility’ designs, or specify ‘technical function’ as a reason for refusal.50

26.6 New Approaches to Design (1906–1967) The Designs Act 1906 was amended 10 times between 1906 and 1967, including in 1912, to extend the maximum term to 15 years; 51 and in 1934, to provide that a design must be a ‘new or original design’ to be registered, which reflected the UK law.52 Design applications and registrations increased, but only a small number of cases came before the courts.53

26.6.1 Modern and Functional Designs for Mass-Produced Products The beginning of the twentieth century saw the growth of an Australian urban middle class, and the emergence of a design culture that sought to develop a distinctive style for the new nation. New modernist approaches to product design developed in Europe

49

For example, an ‘artistic work’ under the Copyright Act 1905 (Cth) included drawings and sculpture; and owners of artistic works had the right to reproduce a work in any form: Copyright Act 1905 (Cth), ss. 4, 34. 50 By this time, UK case law distinguished subject matter suitable for protection under design law (‘something which appeals to the eye’) and patent law (inventions): Cooper v. Symington (1893) 10 RPC 264, p. 267. See also Chapter 10 by Professor David Musker in relation to how UK courts came to exclude mechanical devices and methods or principles of construction from protection. 51 Designs Act 1912 (Act No. 14 of 1912), s. 3. See also Designs Act 1933 (Act No. 36 of 1933), s. 2. 52 Designs Act 1934 (Act No. 42 of 1934), s. 3 (amending s. 17). 53 Alexander (2018), para. 7.2.3.

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that emphasised function and mass production found their way to Australia and were adapted to local conditions.54 During this period, Australian courts distinguished an article’s function, which was not to be protected under the Designs Act 1906, from the design of an article’s features that served a functional purpose, which could be protected by the Act. For example, in Macrae Knitting Mills Ltd v. Lowes Ltd—a 1936 case concerning the alleged infringement of a ‘bathing garment’ design that was intended to produce both a ‘particular appearance’ and a ‘practical effect’ (in fit and fastening)—the court noted the ‘latter element’ was to be disregarded because the Act was ‘concerned with shape and configuration, not function’.55 In 1949, the UK enacted the Registered Designs Act 1949 (UK) (1949 UK Act) which defined ‘design’ as ‘features of shape, configuration, pattern or ornament applied to an article by any industrial process or means’, being features which ‘appeal to and are judged solely by the eye’; and excluded ‘features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform’.56 Australia did not follow the UK on this occasion. Australian courts continued to allow the protection of the design of features while disregarding a product’s function. In re Wolanski—a 1953 case concerning the cancellation of a registered design for a ‘neck tie support’ due to prior publication—Kitto J stated he was ‘not concerned with any question of function’ and emphasised that a ‘design’ is something that is distinct from the article to which it is applied, noting that a ‘design’ is a ‘conception or suggestion as to shape, configuration, pattern or ornament … and accordingly what the proprietor of a design gets by its registration is a monopoly for … one particular individual and specific appearance’.57 In Malleys Ltd v. J. W. Tomlin Pty Ltd—a 1961 decision concerning whether the design of the ‘bottom’ of a ‘toilet pan’ was a ‘new or original design’—the High Court of Australia stated there must be ‘sufficient individuality of appearance’ to distinguish a design from the ‘fundamental form’ of an article and that this was ‘to be determined by the eye’. However, a representation of a design only needed to show enough individuality to distinguish it and to enable it to be visually compared with an article to determine whether it was the same or an imitation. The Court concluded that the features of the design and their arrangement—including a ‘Jshaped rim’ which the NSW Supreme Court had previously regarded as a ‘method of construction’—were of sufficient individuality to justify registration.58

54

See Chapter 25 by Professor D.J. Huppatz, which also describes the influence of the UK and the United States of America (US), as well as the impact of immigration, modernism and World War II, during this period. 55 Macrae Knitting Mills Ltd v. Lowes Ltd (1936) 50 CLR 725, 730. 56 Registered Designs Act 1949 (UK), s. 1. See Chapter 10 by Professor David Musker. 57 In re Wolanski (1953) 88 CLR 278, p. 280 citing Pugh v. Riley Cycle Co Ltd [1912] 1 Ch 613, 619. 58 Malleys Ltd v. J. W. Tomlin Pty Ltd (1961) 180 CLR 120.

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In D. Sebel & Co. Ltd. v. National Art Metal Co. Pty. Ltd—a 1965 case concerning the alleged infringement of a design of a metal chair—the Court sought to distinguish the simple and modern design of the chair from its ‘fundamental form’. The Court noted that, when it came to an article such as a chair, ‘novelty or originality would of necessity be likely to be within a small compass’. However, the Court concluded that the conjunction of the various features of the chair were ‘new’, noting its ‘distinctive splay of the two legs’, ‘in-setting of the supports of the back rests’ and ‘simplicity of outline’. Despite this outcome, commentators would later question whether identifying ‘fundamental form’ was ‘purely subjective’ and favoured ‘obviously ornamental design at the expense of ‘modern functional design’.59

26.6.2 Design and Copyright Overlap Over this period, support grew for a uniform ‘imperial copyright system’, and the Copyright Act 1905 (Cth) was replaced by the Copyright Act 1912 (Cth) which implemented the Copyright Act 1911 (UK).60 The 1912 Act protected a wider range of ‘artistic works’, did not specify a standard of aesthetic merit, and broadened rights to include the right to produce or reproduce a work or any substantial part of it in ‘any material form whatsoever’.61 These developments increased the potential for a design to be protected under both copyright and design law, and so provisions that attempted to demarcate copyright and design protection were introduced. Section 22 of the Copyright Act 1912 provided that the Act did not apply to ‘designs capable of being registered under the [Designs Act 1906]’, except for designs ‘not used or intended to be used as models or patterns to be multiplied by an industrial process’.62 In 1929, the NSW Supreme Court in Buzacott & Co. Ltd v. Dutch found that s. 22 excluded copyright protection of illustrations of gates and other articles in a catalogue because they were ‘capable of being registered’ under the Designs Act 1906 and were ‘intended to be used as models or patterns to be multiplied by an industrial process’.63 However, in a 1960 case, it was found that s. 22 did not exclude copyright protection of building plans for an experimental concrete house as a literary work because ‘reinforced concrete walls, etc.,’ could not be classed as an article, and

59

D. Sebel & Co. Ltd v. National Art Metal Co. Pty Ltd (1965) 10 FLR 224, 227 in Lahore (1971), pp. 193–4. 60 Copyright Act 1912 (Cth), s. 8 and Sch 1. While the UK Act abolished copyright registration, it remained optional under the Australian Act: Copyright Act 1912 (Cth), s. 26. See Bently (2011) and Burrell (2006), p. 257. 61 Copyright Act 1912 (Cth), Sch, ss. 35(1), 1(2); Alexander (2018), para. 7.2.3. 62 Alexander (2018), para. 7.2.3. 63 Buzacott & Co. Ltd v. Dutch (1929) 30 SR (NSW) 22, 46 WN (NSW) 210.

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the drawings were ‘not those of an article used or intended to be used as models or patterns to be multiplied by any industrial process’.64

26.7 Reform Part I (1968–1985) While Australian manufacturing struggled as a result of the global recession in the early 1970s, the Australian economy had matured and some Australian products and innovations began to reach a global market.65 Up until this point, the Designs Act 1906 had tended to develop in parallel with UK law. However, from the late 1960s, the laws began to diverge. Local Australian interests became the subject of ‘responsive reform’, while the UK started to look to Europe and pursue the common market and harmonisation of commercial law.66

26.7.1 Design and Copyright Overlap Revisited The new Copyright Act 1968 (Cth) continued to protect a broad range of works, including ‘artistic works’. Adopting the UK approach at the time, s. 31 provided that artistic works were protected against reproduction in ‘a material form’. However, s. 71 provided that a three-dimensional object did not infringe the copyright of a two-dimensional artistic work, and vice versa, if the object did not appear to be a reproduction to persons who were not experts in objects of that kind (the ‘non-expert’ defence). The potential remained for a design to be protected under both the Copyright Act and the Designs Act 1906. Sections 74 to 77 of the Copyright Act sought to address this by drawing a line to demarcate copyright and design protection (not the new UK approach at that time). Copyright would subsist in an artistic work regardless of whether it was a registrable design. However, the rights of a copyright owner were restricted if a ‘corresponding design’—a design applied to an article that resulted in the reproduction of an artistic work—was either registered or ‘industrially applied’ to more than 50 articles without being registered. In both situations, it was an exception to copyright infringement to do anything with an article that was within the scope of protection under the Designs Act 1906 for 15 years (after which, the same extended to

64

Inala Industries Pty Ltd v. Associated Enterprises Ltd [1960] Qd R 562, p. 570. See the Spicer Committee’s consideration of s. 22 and an alternative approach: Copyright Law Review Committee (1959), paras 428–437. 65 For a discussion of Australian design during this period, see Chapter 25 by Professor D.J. Huppatz. 66 Weatherall (2018), p. 304.

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associated designs and articles).67 The Design Regulations 1906 were also amended to prevent the registration of certain categories of designs.68

26.7.2 Franki Committee and the Designs Amendment Act 1981 (Cth) In 1970, the Designs Law Review Committee (Franki Committee) was appointed to review the Designs Act 1906.69 The Committee reviewed the law in relation to the UK law and commercial and industrial needs, and its final report included a large number of reform recommendations, some of which suggested significant departures from UK law.70 The Government took almost a decade to respond. Still, the Designs Amendment Act 1981 (Cth) (1981 Amending Act)—which came into effect on 1 April 1982—implemented a significant number of the recommendations.71 For example, the 1981 Amending Act included a number of amendments to clarify the nature of the design right, including the removal of the reference to ‘Copyright in Industrial Designs’ from the Designs Act 1906. The Committee had recommended that the word ‘copyright’ should no longer be used in relation to rights obtained by registration under the Act—it was not a right against copying, but rather a ‘monopoly’.72 The definition of ‘design’ was amended to be: ‘features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction’.73 This closely followed the Committee’s recommendation, which was based on the 1949 UK Act, but which omitted ‘appeal to’ the eye because the Committee thought this could suggest an aesthetic requirement, and it was the eye of the court, not the customer, that was to judge the features of a design.74

67

Copyright Act 1968, ss. 74, 75 and 77. For further discussion, see Alexander (2018), para. 7.2.4. The Designs Act 1906 was amended to implement the scheme: Designs Act 1968 (Act No. 64 of 1968), ss. 4–9. 68 Design Regulations (Amendment) (SR 1969, No. 64), reg. 2. 69 Designs Law Review Committee (1973), para. 1. The Committee was also asked to consider a utility model scheme which led to the introduction of a ‘petty patent’ scheme in the Patents Act 1952 (Cth). 70 Pearce (1974), p. 81. 71 Designs Amendment Act 1981 (Cth), s. 2 and Australia, Government Gazette, 23 Mar 1983 (No. G 12) 4. 72 1981 Amending Act, s. 4; Designs Law Review Committee (1973), para. 133. 73 For the origins of the ‘method or principle of construction’ exclusion, see Bently (2018), para 6.2.2. 74 1981 Amending Act, s. 5; Designs Law Review Committee (1973), paras 22–39. This differed to the approach of the House of Lords in Utilux Pty Ltd v Amp Inc [1972] RPC 103. See Chapter 10 by Professor David Musker.

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A new s. 18 was inserted which provided ‘[a]n application for registration of a design shall not be refused, and a registered design is not invalid, by reason only that the design consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose’. This implemented another of the Committee’s recommendations. The Committee had noted that the 1949 UK Act excluded design features ‘dictated solely by the function’ an article had to perform.75 In the Committee’s view, this ‘should not be the basis of any test’. This did not mean that function should be protected, rather, function should not be a bar to registration of particular features, provided that the design was otherwise registrable.76 Section 18 may also have been intended to address the divided opinion of the courts. While decisions such as Malleys appeared to allow the protection of functional features, later decisions such as Mangraviti v. Vardi—a 1976 case concerning a label holder—appeared to exclude features that were ‘dictated by the standard size of a registration label’ or a ‘well-known means of achieving a functional end’.77 There was also a concern that such exclusions could enliven copyright protection and lead to overprotection of functional industrial products.78 In the UK, there had been a view that the exclusions relating to a ‘method or principle of construction’ and features dictated solely by function were ‘synonymous’.79 The Franki Committee clearly distinguished the exclusions. While it rejected the exclusion relating to features dictated by function, it concluded that design protection should not be available when it would provide a monopoly in a mode or method of construction.80 The 1981 Amending Act also amended s. 17 of the Designs Act 1906 which required that a design be ‘new or original’ but that did not provide guidance on how this was to be judged. The Committee thought s. 17 should be replaced by a more detailed provision. A new s. 17 provided that a design was not ‘new or original’ if the same design—or a design which differed from it in only immaterial details or an obvious adaptation—had been registered, published or, unlike the UK provision, used.81 The Committee paid particular attention to the overlap of design and copyright protection. It strongly rejected dual protection and concluded that provisions similar to ss 74 to 77 of the Copyright Act 1968 should be retained but made more stringent.82 75

This phrase was not in the Australian Act, but see Clive Investments Pty Ltd v Paul Segeart Pty Ltd (1966) 36 OJ 1577. 76 1981 Amending Act, s. 11; Designs Law Review Committee (1973), paras 43–45. See Pearce (1974), p. 76. 77 Mangraviti v. Vardi [1976] 2 NSWLR 225. 78 Alexander (2018), para. 7.2.4. 79 Bently (2018), para. 6.2.2. However, see Cow & Co. Ltd v. Cannon Rubber Manufacturers Ltd [1959] RPC 240. 80 Designs Law Review Committee (1973), paras 40 and 43–45. 81 1981 Amending Act, s. 9(a); Designs Law Review Committee (1973), paras 60–71. 82 In stark contrast to the UK approach at that time: Designs Law Review Committee (1973), paras 245–288.

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The 1981 Amending Act did not implement these recommendations.83 However, regulations set out a list of literary and artistic articles that could not be registered as designs.84 Another key recommendation was the introduction of a process to allow any person to notify the registrar of ‘any matter’ published in Australia which may affect the validity of a registration, which also had the effect of extending the maximum term of protection of a design to 16 years. The 1981 Amending Act introduced a new s. 27A to implement this process—but only in relation to matters relevant to whether the design was ‘new or original’—and extended the maximum term of protection to 16 years.85

26.8 Reform Part II (1986–2002) A series of court decisions in the mid-1980s identified that ss 74 to 77 of the Copyright Act 1968 could ‘lead to very considerable injustice’. By denying design and copyright protection to an ‘artistic work’ or ‘design’ until registration of a design under the Designs Act 1906 was finalised (except retrospectively), the provisions effectively destroyed copyright protection before it was ‘replaced’ by protection under the Designs Act 1906.86

26.8.1 New Approach to Design and Copyright Overlap A review by the Attorney-General’s Department resulted in the Copyright Amendment Act 1989 (Cth) (1989 Amending Act) which repealed the ‘non-expert’ defence under s. 71 and amended ss 74, 75 and 77 of the Copyright Act 1968 to continue to demarcate design and copyright protection, but also to introduce partial cumulation for the first time.87 The effect of the amendments, which included a new definition of ‘corresponding design’, was that dual protection was possible for two-dimensional commercial reproductions of artistic works. However, copyright protection would not be available to three-dimensional reproductions of artistic works that had been either registered or ‘industrially applied’ (for example, reproduced in quantities of 50 or more) (except

83

See Designs Law Review Committee (1973), paras 245–292. For a summary of the recommendations, see Alexander (2018), para. 7.2.4. 84 Designs Regulations 1982 (Cth), reg. 11. Designs Law Review Committee (1973), paras 288–292. 85 1981 Amending Act, s. 18; Designs Law Review Committee (1973), paras 115–122. 86 See, e.g., Glamagard Pty Ltd v. Enderslea Productions Pty Ltd (1985) 1 NSWLR 138, 142. 87 Attorney-General’s Department (1987); Copyright Amendment Act 1989 (Cth), s 10 and Sch, s. 17.

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when the Regulations excluded the designs from registration). In these circumstances, an owner could only invoke rights under the Designs Act 1906. Copyright would continue to protect industrialised works of artistic craftsmanship, buildings and models of buildings, unless registered as designs.88 The provisions were considered by the High Court of Australia in Burge v Swabrick which found that a ‘Plug’ for a racing yacht (a full scale model of the hull and deck) was not a work of artistic craftsmanship, and that this assessment involved considering the extent to which a work’s artistic expression ‘in its form, is unconstrained by functional considerations’ and whether the work in designing it was that of an ‘artist craftsman’.89

26.8.2 Lahore Inquiry into Intellectual Property Protection for Industrial Designs Concerns expressed about the Bill that became the 1989 Amending Act led to the Inquiry into Intellectual Property Protection for Industrial Designs (Lahore Inquiry). The Inquiry’s final report, published in 1991, included recommendations on the overlap of copyright and design protection.90 It was critical of the 1989 Amending Act and recommended a new definition of ‘corresponding design’, or alternatively that the concept be deleted from the Copyright Act 1968, and s 75 and s 77 be amended to provide for a new approach.91 The Committee also considered the definition of ‘design’. It recommended the removal of the ‘method or principle of construction’ exclusion as it had led to dissatisfaction. For example, in Firmagroup Australia Pty Ltd v. Byrne & Davidson Doors (Vic) Pty Ltd, the High Court of Australia noted the exclusion applied to features that did no more than ‘identify a general characteristic of shape’ and held that a design for ‘a combination handle and lock for shutter doors’ had not been infringed as the features that had been copied were ‘insufficiently precise’ to convey a ‘unique shape or configuration’.92 Such decisions led to a perception that design law did not adequately protect designs for functional articles.93 In the Committee’s view, methods or principles of construction should be protected by patent law, but their exclusion in the definition of ‘design’ had not improved design protection.94 88

See Alexander (2018), para 7.2.6 and Copyright Amendment Bill 1988 (Cth), Explanatory Memorandum (taking account of amendments made by the House of Representatives to the Bill), paras 23–24. 89 Burge v Swarbrick (2007) 234 ALR 204. 90 Lahore (1991). 91 Alexander (2018), para. 7.2.6; Lahore (1991), para. 2.19 cited in ALRC (1995), para. 17.32. 92 Firmagroup Australia Pty Ltd v. Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483, 488–489. Lahore (1991), para. 3.23 in ALRC (1995), para. 4.26; Alexander (2018), para 7.2.6. 93 Designs Law Review Committee (1973), paras 40–45; Alexander (2018), para. 7.2.6. 94 Lahore (1991), para. 4.1 in ALRC (1995), para. 4.11.

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The report also recommended significant changes to the design infringement test, including a list of factors a court should consider when determining infringement,95 and a test of ‘substantial reproduction’.96 A number of these recommendations would later be considered in the Australian Law Reform Commission (ALRC) review and influence its recommendations.97

26.8.3 Australian Law Reform Commission Review In 1992, in the light of ongoing industry concerns, the ALRC was commissioned to conduct a review of the design system. The ALRC consulted a broad range of stakeholders and considered legal developments, not only in the UK, but also in Europe, New Zealand, North America, Asia and Africa.98 The final report, published in 1995, concluded that Australian designs law needed to meet its objective of encouraging innovation. Design practice had changed and expanded since the enactment of the Designs Act 1906 to become an integral part of manufacturing and marketing. However, the legal concept of design was much narrower and the law often treated it as ‘a minor cosmetic aspect of a product’.99 While this might suggest design rights should be broadened, the ALRC emphasised that any expansion needed to be assessed in terms of economic impact; international context (including Australia’s obligations under the new TRIPS Agreement and overseas developments); 100 and other forms of legal protection such as patent, copyright, trade mark, passing off and breach of confidence. Developments in Australian IP laws—such as the proposed extension of trade mark protection to ‘shapes, colours, sound and scent’, later enacted in the Trade Marks Act 1995 (Cth)—also limited the scope for extending design protection.101 All these considerations led to recommendations to improve design law—the centrepiece being enactment of a new Act to replace the Designs Act 1906—as well as an anti-copying right, to be considered in a separate review.102 Some of the key recommendations are outlined below.

95

Lahore (1991) in ALRC (1995), para. 6.30. Lahore (1991) in ALRC (1995), para. 6.8. 97 See, e.g., ALRC (1995), paras 4.11, 6.8, 6.29, 14.19, 17.19, 17.26, 17.30–17.44. 98 See, e.g., ALRC (1995), Overview and paras 1.5–1.15. 99 See, e.g., ALRC (1995), paras 2.1 and 2.18. See also Chapter 25 by Professor D.J. Huppatz. 100 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (TRIPS Agreement). 101 ALRC (1995), paras 2.20–2.33. 102 ALRC (1995), recs 2 and 6. 96

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What is a Design?

The ALRC recommended that new designs legislation should maintain its focus on visual appearance, and so ‘design’ should be defined as ‘one or more of the visual features of a product’.103 This was supported in consultations, and was consistent with general practice and overseas design laws. In the ALRC’s view, the definition no longer needed to refer to ‘judged by the eye’ or include aesthetic criteria. Such criteria were outdated or inconsistent with international practice, would produce arbitrary decisions or inappropriately exclude designs.104 A product’s ‘visual features’ should include its ‘shape, configuration, pattern, ornamentation, colour and surface’. A ‘product’ was anything manufactured, including anything hand made. However, while a component part could be a product, the ALRC did not recommend the protection of partial designs.105

26.8.3.2

The Innovation Threshold

The ALRC considered the requirement under s. 17 of the Designs Act 1906 that only ‘new or original’ designs may be registered. It noted the ‘originality’ test had always been unclear, stakeholders supported its removal and that this would not conflict with Art. 25 of the TRIPS Agreement because ‘originality’ would be covered by a new test for ‘distinctiveness’.106 The ALRC proposed a stricter test—to be registered, a design should be ‘new and distinctive’, to be assessed in relation to prior art in Australia and ‘anywhere in the world’. The ‘new’ test would exclude identical designs, and a ‘distinctive’ design should ‘differ substantially in overall impression from previous designs’. This approach reflected design practice and was more focused on the degree to which a design was an advance on prior art.107 It was also influenced by the proposed ‘Design Approach’ in Europe—under the ALRC’s proposed test, distinctiveness was to be assessed by considering the ‘overall impression’ of a design, from the perspective of an ‘informed user’, and the ‘freedom of the designer’ was a relevant consideration.108

103

ALRC (1995), para. 4.2 and recs 3, 4, 7. ALRC (1995), paras 4.34–4.42 and rec 21. 105 ALRC (1995), paras 4.3–4.9, 4.13–4.14 and recs 8, 10–12. 106 ALRC (1995), paras 5.4–5.5 and rec. 29. 107 ALRC (1995), paras 5.7–5.14 and recs 30 and 32. See also recs 40–41 in relation to the prior art base. 108 ALRC (1995), paras 5.15–5.24 and recs 33, 34 and 37. See Commission of the European Communities (1991); Commission of the European Communities (1993). 104

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When is a Design Infringed?

The ALRC noted criticisms of the infringement provisions and court interpretations of them. There was a perception that ‘fraudulent or obvious imitation’ had been interpreted so narrowly that design owners were only protected against exact copies. The ALRC proposed that a design would infringe a registered design if it was ‘substantially similar in overall impression’, to be determined from the position of an informed user. The ‘substantially similar’ test was familiar to courts and aligned with the recommended distinctiveness test. The ALRC also specified a list of factors to be considered when determining infringement.109

26.8.3.4

Duration of the Design Right

Section 27A of the Designs Act 1906 provided for a total registration period of 16 years—an initial period of one year followed by three five-year extensions. The ALRC noted the initial period limited the availability of opposition to renewal to the first 11 months of a design’s life. It recommended its removal and that the maximum duration of protection should be 15 years with renewal at five years.110

26.8.3.5

Spare Parts Protection

The ALRC also addressed concerns that design protection of spare parts could have an anti-competitive effect. The ALRC considered excluding spare parts from protection on the basis of design characteristics, such as ‘must fit’ or ‘must match’, as in the UK and Europe. However, it concluded such definitions were arbitrary and covered categories of spare parts that did not have any anti-competitive effect. Instead, it recommended the referral of potentially anti-competitive spare part designs to the then trade practices regulator. If a design right would contravene trade practices law, the design would not be registrable.111

26.8.3.6

Copyright and Design Overlap

The ALRC noted that ss 74 to 77 of the Copyright Act 1968 were uncertain in operation. It recommended their repeal and the introduction of an adaptation right for artistic works to give a copyright owner the right to industrially apply a version of a copyright work that was itself an artistic work in two or three dimensions. This option received broad support in consultations. The ALRC also recommended

109

ALRC (1995), paras 6.6–6.34 and recs 35, 45–56. ALRC (1995), paras 10.2–10.14 and recs 104–110. 111 ALRC (1995), Ch. 16. 110

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that if these recommendations were not accepted, the existing provisions should be amended to clarify existing policy.112

26.8.3.7

Functional Design Features and Methods and Principles of Construction

The ALRC recommended the retention of s. 18(1) which provided that design features that serve a functional purpose should not be an automatic bar to registration or validity. The ALRC observed that this provision, and the balance in design law which focuses on visual appearance ‘but allows some incidental protection of function’, was not well understood. Research showed that some design registration applicants had expected to gain protection for the functional aspects of their design. The ALRC considered whether design protection should be expanded to cover function directly. However, it concluded that the Act should continue to focus on visual appearance; and that any gap was in patent protection, and should be addressed in a petty patent system review. (In 1979, the Patents Act 1952 (Cth) had been amended to create a scheme for petty patents which had a shorter term, and were easier and cheaper to obtain than standard patents.)113 Other stakeholders argued that design protection should not be available where it protects function and suggested that Australia adopt the UK approach (the dictated solely by function exclusion) or the US approach (allowing protection only when a design is ‘ornamental’). The ALRC concluded such exclusions were inappropriate, did not recognise the relationship between visual appearance and function in modern design, were ‘arbitrary’ and ‘likely to lead to unproductive litigation and to distort design practice’. It also recommended the repeal of the ‘methods and principles of construction’ exclusion.114

26.8.4 Other Developments In 2001, an ‘innovation patent’ system for minor or incremental innovations was introduced to replace the petty patent system, in part, to fill the ‘gap’ between design and patent protection. It included a lower threshold of inventiveness, lower fees and a faster process.115

112

ALRC (1995), Ch. 17. Patents Amendment Act 1979 (Act No. 9 of 1979) (Cth). 114 See ALRC (1995), paras 3.48, 4.46, 4.48, 4.50–4.52 and recs 25 and 26. 115 Patents Amendment (Innovation Patents) Act 2000 (Cth). As recommended in ACIP (1995), recs 1–15. 113

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26.9 Designs Act 2003 (Cth) In February 1999, the Australian Government announced it would implement the ALRC report and, on 17 June 2004, the Designs Act 2003 (Cth) commenced. The Act adopted most of the ALRC recommendations. For example, ‘design’ is now defined as the ‘overall appearance of the product resulting from one or more visual features’; ‘visual features’ include ‘shape, configuration, pattern and ornamentation’, but not ‘surface’ or ‘colour’ as recommended by the ALRC; and a ‘product’ may be manufactured, handmade or a component part.116 A design application may be filed for one design or multiple designs, and may include a ‘statement of newness and distinctiveness’ which sets out the visual features that an applicant believes are novel and distinctive.117 Once a formalities check is complete, a design is registered and its details published. Registration provides the owner with a range of exclusive rights, including the right to make a product that embodies the design; import for sale, sell, hire, dispose of or use the product. However, while substantive examination is an optional postregistration procedure, a registered design will not be enforceable until it is examined and a certificate of examination is issued by IP Australia, the agency responsible for administering the designs system.118 As recommended by the ALRC, a design is registrable if it is ‘new and distinctive’. A design is ‘new’ unless identical to a design that is part of the prior art base, and ‘distinctive’ unless substantially similar in overall impression to a design that is part of the prior art base.119 Section 19(1) provides that, when determining whether two designs are substantially similar in overall impression, more weight is to be given to similarities than differences. Section 19(2) provides that relevant factors when assessing substantial similarity include the prior art base; features that have been identified as new and distinctive; the amount, quality and importance of a substantially similar part; and the freedom of the creator to innovate. The prior art base includes designs that have been used in Australia, published in a document in Australia or overseas, or disclosed in a published design application; and only includes designs that were made available before a design’s priority date.120 When assessing substantial similarity in overall impression, the court is to apply the standard of the ‘familiar person’ (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).121 The standard requires that the person be only familiar with a product, and may incorporate, where relevant, the views of consumers, experts, 116

Designs Act 2003 (Cth), ss 5–7. Designs Act 2003 (Cth), ss 21, 22, 69, Pt 3, Div 1. 118 Designs Act 2003 (Cth), ss 10, 11, 14 and 73(3). 119 Designs Act 2003 (Cth), ss 15–19. 120 Designs Act 2003 (Cth), ss 15, 27. 121 Designs Act 2003 (Cth), s. 19(4). Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323, para. 63. 117

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specialists and skilled tradespersons. Until 11 September 2021, the relevant standard was the ‘informed user’.122 The Act adopts the ‘substantial similarity’ infringement test, as recommended by the ALRC. Section 71 provides, in determining whether an allegedly infringing design is substantially similar in overall impression to a registered design, a court must consider the factors set out in s. 19. Remedies include an injunction and either damages or an account of profits.123 A unique feature of the Designs Act 2003 is that highly functional designs may be registered. While not adopting the ALRC approach, s. 7(2) provides that a ‘visual feature may, but need not, serve a functional purpose’. A range of functional designs have been registered, such as screw fasteners, excavator buckets and wind turbine blades. However, such designs may not have been examined and so could still be challenged and removed from the register on the basis that they are not new or distinctive.124 When functionality has been raised in litigation, courts appear to focus on the appearance of design features and the overall impression produced by them, and then de-emphasise the importance of functional features which, in some cases, may have ‘limited the freedom of the designer to innovate’.125 While the ALRC recommended a 15-year maximum duration of the design right, the Designs Act 2003 provides only for a 10-year maximum (five years from the filing date of the design application, renewable for up to 10 years). This reduction was justified on the basis that the TRIPS Agreement provides for a minimum registration period of 10 years.126 The ALRC proposal for an adaptation right to address the copyright and design overlap was also rejected. Instead, ss 74 to 77 of the Copyright Act 1968 were clarified. For example, the definition of ‘corresponding design’ was amended and the provisions now address features ‘woven into, impressed on, or worked into’ a product; plan-to-plan copying; and reproduction in the course of, or incidental to, making, selling or hiring a product. The policy of demarcation and partial cumulation continues. Dual protection remains available for certain two-dimensional designs. Copyright protection is not available when a corresponding design (visual features of shape or configuration which result in a reproduction of an artistic work) (generally, a three-dimensional design) is registered or industrially applied. However, copyright protection is available to works of artistic craftsmanship and buildings and models of buildings that have been industrially applied (except certain swimming pools and portable buildings), unless registered as designs. 122

Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021, Sch. 7, Pt 1. See ACIP (2015), pp. 25–26 and rec. 10. 123 Designs Act 2003 (Cth), ss 71, 75(1), 75(3) and 77. 124 See, e.g., Slater and Wulff (2017), p. 109. 125 See, e.g., Multisteps Pty Ltd v Source & Sell Pty Ltd (2013) 214 FCR 323. See also Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796. 126 Designs Bill 2003 (Cth), Revised Explanatory Memorandum, para. 16. TRIPS Agreement, Art. 26.

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The ALRC’s spare parts recommendations were also not adopted. The Act provides for a right of repair defence against infringement.127

26.10 Reform Part III (2004–2021) The Designs Act 2003 has been amended 16 times since its enactment and continues to be the subject of policy reviews,128 including the Advisory Council on Intellectual Property (ACIP) Review of the Designs System. The ACIP review came almost 20 years after the ALRC review. In the intervening years, design had moved beyond product creation and been transformed by the expansion of the internet and mobile technology. There was also the growth of the Hague System, negotiation of a Design Law Treaty and implementation of the European Union (EU) design protection system.

26.10.1 ACIP Review of the Designs System ACIP released its final report in March 2015, recommending increased harmonisation with international practices and treaties to benefit design system users and to help streamline administration. This included investigating the implications of joining the Hague Agreement, and if a decision was made to join, extending the maximum term of protection to 15 years; as well as working through the Designs Law Treaty process to promote harmonisation.129 In ACIP’s view, allowing unexamined registrations to remain on the Register for 10 years created uncertainty, and so it recommended that an examination should be required by the first renewal deadline (five years) and an opposition process following certification.130 ACIP also saw benefit in introducing a grace period of six months before the filing date to protect designers who inadvertently publish their design before seeking legal protection, to be accompanied by a prior use defence to cover defendants who derive knowledge of a design through publication covered by the grace period.131 ACIP also ‘accepted’ the deferral of publication of designs which allows applicants to obtain a priority date but keep their design confidential until they are ready to launch to market. However, it recommended automatic publication at six months after the filing date, with the possibility to request publication earlier; as well as 127 Designs Act 2003 (Cth), s. 72. The defence was recently considered in GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd [2019] FCA 97. 128 See, e.g., ACIP (2005); ACIP (2013). 129 ACIP (2015), pp. 15–18 and recs 1–3. See also IP Australia (2018a); IP Australia (2018b). 130 ACIP (2015), pp. 20–22 and recs 6–7. 131 ACIP (2015), pp. 27–28 and rec. 12.

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amendment of the innocent infringer defence in s. 75(2) of the Designs Act 2003 to allow a court to refuse to make a monetary award for conduct by a third party engaged in before a design is published.132 ACIP thought that protection should continue to relate to the visual appearance of a whole product. However, it suggested that IP Australia consider allowing partial product registrations (partial designs). It also noted that Australian copyright, patent, and trade mark laws allow exclusive licensees to bring proceedings in their own name for infringement of IP rights and recommended that the same should apply in Australian design law.133 ACIP reported that the copyright and design overlap provisions remained ‘contentious and unsatisfactory’ and that difficulties had arisen in case law.134 However, reform in this area was beyond its remit and so its recommendations were limited in this area.135 ACIP considered the impact of new technologies, concluding that any reform to address technologies such as 3D printing was premature. However, it did recommend IP Australia reconsider its practice of not registering virtual or non-physical designs, for example, by considering validity in terms of a product in its active state, not just its resting state.136 On 10 September 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) received royal assent. Amendments that implement the ACIP recommendations, and that are due to commence by 10 March 2022, include: • a 12 month grace period to file a design application (s. 17(1)); • an infringement exemption for prior use to protect third parties against infringement if they use a design after a disclosure (such as during the grace period) but before the priority date of the registration (s. 71(A)); • automatic registration six months after filing (ss 35(4)-(6) and 36). While not providing an explicit deferral system, this allows applicants to delay publication of their design for a prescribed period (six months) from the priority date; • an amended innocent infringer defence (s. 75(2)); • an exclusive licensee of a registered design may commence legal action against third parties for any alleged infringement of a registered design (s. 73).137

132

ACIP (2015), pp. 24–25 and rec. 9. ACIP (2015), pp. 29–30 and rec. 13, p. 39 and rec. 18. 134 See, e.g., Polo/Lauren Co. LP v. Ziliani Holdings Pty Ltd [2008] FCA 49; Seafolly Pty Ltd v. Fewstone Pty Ltd (2014) 313 ALR 41. 135 ACIP (2015), pp. 33–35 and rec. 15. 136 ACIP (2015), rec. 14. See discussion below. 137 See Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) and Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Cth), Explanatory Memorandum. 133

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26.11 Indigenous Design The foregoing is a Western-centric history of Australian design law, focused on industrial product design, the promotion of innovation, and ultimately, the success of a colonial nation. While this account suggests that design law became increasingly influenced by local concerns, this almost never included the concerns of Aboriginal and Torres Strait people. In Chapter 25, Professor D.J. Huppatz has described Indigenous concepts of ‘design’ and the significant contribution of Indigenous design not only to the Australian economy but also to notions of an Australian identity. Despite this, and evidence of the misappropriation and exploitation of Indigenous motifs and designs,138 policy reviews have rarely considered how design law may better recognise and protect the interests of Indigenous people, including as groups.139 Indigenous lawyers and organisations have played a key role in developing solutions.140 Aboriginal and Torres Strait Islander artists can use the Copyright Act 1968 (Cth) to stop unauthorised copying of artistic works if the works are original and in a material form.141 The courts have provided some recourse in this area.142 There have also been some reforms to address remuneration,143 and IP Australia has an ongoing Indigenous Knowledge project.144 A paper produced by Terri Janke and Company reports that, in 2003, a group of Indigenous artists based in Queensland registered their jewellery designs under the Designs Act 2003, and were later able to claim commercial ownership of their designs.145 The paper also notes that, while the Act allows Indigenous clan-owned designs or styles to be owned as a group and registered, the focus of the Act is industrial designs and the appearance of a product, not ‘Indigenous techniques or styles’; and after 10 years, the design will fall into the public domain. This is ‘insufficient for Indigenous people who seek to connect with clan-owned “designs” or “styles” in perpetuity’ so they ‘may be passed on to future generations’.146 The same paper highlights that some countries, such as South Africa, have included a ‘traditional cultural expression’ section in their designs register to act as a ‘defensive database’; 138

For example, in Chapter 25, Professor D.J. Huppatz provides the example of the design of an Australian bank note that included the art of Aboriginal artist David Malangi Daymirringu without his permission. 139 See, e.g., ALRC (1995), para. 1.17. 140 See, e.g., Dow (2021, 19 July). 141 See also Chapter 25, where Professor D.J. Huppatz outlines the issue that arose as a result of the copyright holder of the Aboriginal flag exercising his right to grant several exclusive licences for the reproduction of the flag. 142 Bulun Bulun v R & T Textiles Pty Ltd (1998) 86 FCR 244; Milpurrurru v Indofurn Pty Ltd (1994) 54 FCR 240. 143 Resale Royalty Right for Visual Artists Act 2009 (Cth). 144 See, e.g., IP Australia (2019). 145 Sentina et al. (2017), p. 19. 146 Sentina et al. (2017), pp. 18–19.

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and some African countries have called for disclosure provisions that would require applicants who incorporate traditional cultural expression in their designs to identify their source.147

26.12 Concluding Remarks While this overview of Australian design law history confirms a strong British influence, at times, Australia has resisted that influence, adopted unique approaches and looked to international instruments and other countries. However, there has been ‘no single, smooth trajectory from dependent colony to independent nation with a distinct IP law’—it has been ‘piecemeal and halting’.148 Despite early colonial variation and an increase in the consideration of local and international factors, for much of the twentieth century Australia looked to the mother country.149 The historical connection between the two countries looks set to continue in a postBrexit world with the recently finalised Australia-UK Free Trade Agreement (FTA) that includes commitments in support of both country’s creative sectors, including ‘high standard provisions’ on copyright and designs, but also a commitment for Australia to ‘make all reasonable efforts’ to join the Hague Agreement.150 The most recent amendments of the Designs Act 2003 are welcome, but Australian design law is yet to fully embrace the digital age. The law is still expressed in terms of a ‘product’, on which basis, screen displays and type fonts have been refused registration.151 As noted, this was the subject of an ACIP recommendation. However, to date, Australia has maintained a ‘hardware/software divide’.152 In the meantime, some other countries have amended their legislation to accommodate virtual and onscreen designs.153 Issues raised by 3D printing remain to be addressed,154 while new issues, such as those raised by AI and ‘digital twins’ have emerged and are yet to be fully explored.

147

Sentina et al. (2017), p. 19. Weatherall (2018), p. 313. 149 It has also been noted that, more recently, Australia’s IP policy has been ‘subordinated to broader trade interests’: Weatherall (2018), p. 313. 150 Australia-United Kingdom (2021); Australia-United Kingdom Free Trade Agreement (2021a), Ch. 15, Section G and Art. 15.55. 151 Apple Inc [2017] ADO 6; Re Application for Type Font in the Name of Microsoft (2007) 71 IPR 664, [33]. 152 Apple Inc [2017] ADO 6. 153 See, e.g., Chapter 2 by Professor Masanori Yabumoto, Chapter 4 by Junha Kim and Chapter 8 by Kodai Kimura. 154 See, e.g., Adams (2015); Rimmer (2017). See also Chapter 8 by Kodai Kimura in relation to 3D printing under Singapore law. 148

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At the same time, design practice continues to evolve and move beyond the creation of products. Globalisation, the digital economy and the dominance of multinational companies have resulted in an expansion of global design and design practice. This raises questions about the extent to which national design protection laws should be interoperable. While Australia’s design law is similar to those of many other countries, there are some exceptions, such as its treatment of partial designs. There are also questions about the role of the design protection system in Australia’s IP system as a whole.155 The history of Australia’s design law shows how dual design and copyright protection was allowed, prohibited and then partially allowed, and yet despite all this experimentation, there is still ongoing dissatisfaction with the provisions that govern it. And it remains to be seen whether the phasing out of the innovation patent system will lead to renewed calls for design law to be extended to directly cover function.156 Design capability is now recognised as a source of competitive advantage among countries. The Australian design protection system must continue to adapt to be fit for purpose in the digital age and to serve the interests of Australian creators, owners and the public.157

References ACIP (Advisory Council on Intellectual Property) (2005) Review of Crown Use Provisions for Patents and Designs. Australian Government, Canberra ACIP (Advisory Council on Intellectual Property) (2015) Review of the Designs System, Final Report. Advisory Council on Intellectual Property ACIP (Advisory Council on Intellectual Property) (2013) Review of the Designs System, Issues Paper. Advisory Council on Intellectual Property ACIP (Advisory Council on Intellectual Property) (1995) Review of the Petty Patent System. Australian Industrial Property Organisation, Canberra Ailwood S, Sainsbury M (2014) The Imperial Effect: Literary Copyright Law in Colonial Australia. Law Cult Humanit 12(3):716–740 Alexander I (2018) The Copyright/Design Interface in Australia. In: Derclaye E (ed) The Copyright/Design Interface: Past, Present and Future, Kindle edn. Cambridge University Press, Cambridge Attorney-General’s Department (1987) Discussion Paper, Copyright Protection for Artistic Works Industrially Applied. Australian Government Publishing Service, Canberra Australia-United Kingdom (2021a) Free Trade Agreement (signed 17 Dec 2021) Australia-United Kingdom (2021b) Australia-UK FTA Negotiations: Agreement in Principle ALRC (Australian Law Reform Commission) (1995) Designs, Report No 74. Australian Law Reform Commission, Sydney Baron, P (1999) Where Art Meets Science; Beauty Meets Utility: The Strange World of Industrial Design Protection. U Tas L Rev 18(2): 194–224 155

ACIP (2015), rec. 23. See Productivity Commission (2016), Chs 8 and 11; Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, Sch 1, Pt 2. 157 It is noted that a number of the issues identified here—including the protection of partial and virtual designs—are the subject of ongoing consideration by IP Australia: IP Australia (2021). 156

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Bently L (2018) The Design/Copyright Conflict in the United Kingdom: A History. In: Derclaye E (ed) The Copyright/Design Interface: Past, Present and Future, Kindle edn. Cambridge University Press, Cambridge Bently L (2011) The ‘Extraordinary Multiplicity’ of Intellectual Property Laws in the British Colonies in the Nineteenth Century. Theor Inq Law 12(1):161–200 Bowrey K (1997) Art, Craft, Good Taste and Manufacturing: The Development of Intellectual Property Laws. Law Context: Socio-Legal J 15(1):78–104 Burrell R (2006) Copyright Reform in the Early Twentieth Century: The View from Australia. J Legal Hist 27(3):239–265 Commission of the European Communities (1991) Green Paper on the Legal Protection of Industrial Design. EC Commission Working Document, III/F/5131191-EN (Brussels, June 1991) Commission of the European Communities (1993) Proposal for a European Parliament and Council Regulation on the Community Design. COM(93) 342 final—COD 463, [1994] OJ C29/ 02 (Brussels, 3 Dec 1993) Copyright Law Review Committee (Spicer Committee) (1959) Report of the Committee Appointed by the Attorney-General of the Commonwealth to Consider What Alterations Are Desirable in the Copyright Law of the Commonwealth. Commonwealth of Australia, Canberra Davison MJ, Monotti AL, Wiseman L (2020) Australian Intellectual Property Law, 4th edn, Kindle edn. Cambridge University Press, Port Melbourne Designs Law Review Committee (Franki Committee) (1973) Report on the Law Relating to Designs. Parliament of the Commonwealth of Australia 1973, Parliamentary Paper No. 1 Dow S (2021, 19 July) Terri Janke: the Australian Lawyer Trying to Stop Indigenous Cultural Theft. The Guardian Finn J (2000) Particularism versus Uniformity: Factors Shaping the Development of Australasian Intellectual Property Law in the Nineteenth Century. Austl J Legal Hist 6:113–134 Huppatz DJ (2014) Introduction: Reframing Australian Design History. J Des Hist 27(2):205–223 IP Australia (2018a) The Hague Agreement Concerning the International Registration of Industrial Designs: A Cost-Benefit Analysis for Australia IP Australia (2018b) IP Australia’s Response: Public Consultation on the Hague Agreement: A Cost-Benefit Analysis for Australia IP Australia (2019) Protection of Indigenous Knowledge in the Intellectual Property System: Consultation Report IP Australia (2021) Design Initiatives: Findings. https://www.ipaustralia.gov.au/designs/design-ini tiatives/design-initiatives-findings. Accessed 25 Oct 2021 Kercher B (2020) Unruly Child: A History of Law in Australia, Kindle edn. Routledge, Oxford Lahore JC (1971) Art and Function in the Law of Copyright and Designs. Adel L Rev 4(1):182–209 Lahore JC (1991) Inquiry into Intellectual Property Protection for Industrial Designs. Presented to Senator the Hon. John Button, Minister for Industry, Technology and Commerce. Canberra, Sept 1991 Pearce DC (1974) Report of the Australian Designs Law Review Committee. Mod Law Rev 37(1):75–81 Productivity Commission (2016) Intellectual Property Arrangements. Productivity Commission Inquiry Report No. 78, 23 Sept 2016 Rimmer M (2017) The Maker Movement: Copyright Law, Remix Culture and 3D Printing. Univ West Aust Law Rev 41(2):51–84 Scardamaglia A (2011) The Colonial Trade Mark Regime: Parallel Rationales. Theor Frameworks KLJ 22(3):259–288 Sentina M, Mason E, Janke T (2017) Legal Protection of Indigenous Knowledge in Australia, Supplementary Paper 1 Seville C (2018) The Emergence and Development of Intellectual Property Law in Western Europe. In: Dreyfuss RC, Pila J (eds) The Oxford Handbook of Intellectual Property Law, Kindle edn. Oxford University Press, Oxford

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Sherman B, Bently L (1999) The Making of Modern Intellectual Property Law: The British Experience, 1760–1911, Kindle edn. Cambridge University Press, Cambridge Slater W, Wulff R (2017) Australia. In: Carani CV (ed) Design Rights: Functionality and Scope of Protection, AIPPI Law Series. Wolters Kluwer, Alphen aan den Rijn Weatherall K (2018) The Emergence and Development of Intellectual Property Laws in Australia and New Zealand. In: Dreyfuss RC, Pila J (eds) The Oxford Handbook of Intellectual Property Law, Kindle edn. Oxford University Press, Oxford

Jonathan Dobinson is an Australian lawyer and Adjunct Researcher at the Research Center for the Legal System of Intellectual Property, Waseda University, Tokyo. He obtained bachelor of arts and bachelor of law degrees from the University of Wollongong, Australia; a master’s degree in IP from Hongik University, South Korea; and is admitted as a solicitor of the Supreme Court of NSW. For over 20 years, he has provided legal policy, communications and international relations advice to organisations in Australia and Asia, including as a senior lawyer, director of research and director of communications for Australian government agencies, and as a consultant to Republic of Korea government agencies.

Part VI

Summary and Analysis

Chapter 27

History of Design and Design Law: Connections, Influences and Observations Jonathan Dobinson, Tsukasa Aso, and Christoph Rademacher

Abstract This chapter provides a summary and an analysis of the 26 preceding chapters. What emerges is that the design and design protection history of each country is extremely diverse and complex—the result of a myriad of interconnected and multi-directional factors. It also reveals the connected and often complementary relationship of the two histories, not only for each country, but between countries, often as a result of government policies, trade, colonialism, immigration and globalization. Despite this complexity, it is possible to identify some themes that highlight a connection between the history of design and design law: the changing nature of design and the subject matter of design protection; modernism, technology, mass production and substantive protection requirements; nation building, government policy and design protection systems; the designer and their role in design protection. The chapter briefly examines regional and international influences in design history, before focusing on influences in design protection, including international instruments, cross-jurisdictional influences and responses to imitation cultures. The chapter also makes some key observations on the history of design protection, including on the subject matter of protection, the nature of rights, functional design, examination, substantive protection requirements, deferred publication and overlapping copyright and design protection. The final section considers the future of design and design protection.

J. Dobinson Research Center for the Legal System of Intellectual Property, Waseda University, Tokyo, Japan T. Aso (B) Kyushu University, Fukuoka, Japan e-mail: [email protected] C. Rademacher School of Law, Waseda University, Tokyo, Japan e-mail: [email protected] © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 T. Aso et al. (eds.), History of Design and Design Law, https://doi.org/10.1007/978-981-16-8782-2_27

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27.1 Introduction This book covers 17 countries, selected for their distinct, innovative or influential approach to design or design protection.1 As scholarship in these areas has often been dominated by Western accounts, we wanted to feature a range of design and legal histories, including those from Asia and South America. Each country is the subject of two chapters—one covering the history of design, the other covering the history of design law. Our purpose was to trace the history of the design and design protection system of each country in order to examine the relationship between those histories and to consider how the design and design protection system of each country have influenced or been influenced by other national, regional and international approaches. We also wanted to explore how each country’s design protection system has responded to developments in design and particular approaches to design law, and to provide a survey of those responses to inform future developments in design protection. The authors of this book rose to the challenge and delivered a fascinating overview of the design and design protection story of each country. The chapters inform each other and reflect the connected and often complementary relationship of design and design protection history, not only for each country, but between countries, often as a result of government policies, trade, colonialism, immigration and globalization. This chapter provides a summary and an analysis of the 26 preceding chapters. Not surprisingly, what emerges is that the design and design protection history of each country is extremely diverse and complex—the result of a myriad of interconnected and multi-directional factors that reflect, and are as complex as, the history of each country (and, to some extent, the world). Despite this, we are able to draw out a number of key themes. The chapter first outlines the benefits of a historical and interdisciplinary approach and considers the variety of approaches the authors have taken to the history of design or design protection. It then sets out some broad and related themes that highlight connections between the two histories: • the changing nature of design and the subject matter of design protection; • modernism, technology, mass production and substantive protection requirements; • nation building, government policy and design protection systems; • the designer and their role in design protection. This is not to suggest that these are the only or the most useful connections between the two histories. They are a starting point—our hope is that this discussion will stimulate further thought, critique and discussion. The following section zooms out to consider regional and international influences. It briefly examines some regional and international influences in design history before 1

We sincerely thank Professor Minako Ikeda and Professor D.J. Huppatz for their feedback on an earlier draft of this chapter.

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focusing on design protection systems and how international instruments, crossjurisdictional influences and responses to imitation cultures have shaped national design laws. The next section includes some key observations on the history of design protection, including the subject matter of protection, the nature of rights, functional design, examination, substantive protection requirements, deferred publication or secret design systems, and overlapping copyright and design protection. The final section considers the future of design and design protection.

27.2 A Historical and Interdisciplinary Approach The value of a historical approach to design is well documented and is the subject of a considerable body of scholarship; so too, the importance of legal history approaches, including in the area of intellectual property (IP) law and design protection—evident from the extensive body of impressive scholarship referenced in each of the chapters.2 We now have a unique vantage point from which to look back and learn from both histories. We have seen design and design law evolve and mature in response to decades of progress in digital technologies, as well as centuries of developments in traditional industrial design. Many countries have adopted new or improved design protection systems, there has been an exponential growth in design applications around the world, and regional and national case law on design protection has increased. However, some authors have identified that design registrations systems in a number of countries are underutilized and that design protection systems are ‘at a crossroads’. It is therefore helpful to revisit our assumptions about why and how design protections systems have developed. This is not to say we should automatically reject any ‘perceived history’ of a nation’s design or design protection system. As Brad Sherman and Lionel Bently suggest: ‘the image that the law has of its past plays an important role in shaping its present and its future’.3 Until now there has been no consideration of the relationship between the history of design and design protection systems, from both a legal and a design perspective. National design laws have often changed in response to the characteristics of a country’s design and now also need to address the emergence of global designs. Simply tracing either the history of a country’s design or design protection system will only provide part of the story. It is when both histories are considered together that it is possible to more fully understand a design protection system, why it changed and whether that change was effective.

2

See the list of references, and in some cases additional bibliographies, at the end of each chapter. For a recent discussion of IP history, see Alexander (2020). 3 Sherman and Bently (2002 [1999]), p. 206.

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Design protection laws and judicial decisions—primary sources of design protection history—can provide a counterpoint history of design. For example, the court cases cited in this book are a record of the history of design and sometimes involve iconic designs and designers—a door knob by Walter Gropius, the ‘Arco’ lamp by Pier Giacomo and Achille Castiglioni, the ‘LC1’ and ‘LC2’ arm chairs by Le Corbusier, the ‘Vespa’ scooter by Corradino D’Ascanio, the ‘Tripp Trapp’ highchair by Peter Opsvik and smart phones by Apple and Samsung.4 Judicial decisions concerning these objects not only highlight how the changing nature of design has contributed to the development of the law, but also how legal texts can be a valuable source for design historians.5 Similarly, design history can be a highly relevant source when interpreting the law. It can provide important information about the designs that are the subject matter of a design protection law or of an individual case. Perhaps more importantly, as demonstrated throughout this book, design history provides invaluable historical, as well as social, political and economic context that can help explain why the law is the way it is. While this book is not intended to be an exhaustive history of design or design law, it does provide a new piece in the puzzle that highlights the interrelated and multi-directional influences that have shaped both histories and that takes account of a range of design and legal cultures. It also presents a challenge to both design and legal historians to consider an interdisciplinary approach to the history of design and design protection.

27.3 Approaches to the History of Design and Design Law As is to be expected, the book includes different approaches to the history of design and design law. Authors of the design history chapters were requested to provide an overview that included, for example, major design movements; relevant political, social and economic factors; key designers and iconic designs. This clearly influenced and perhaps limited their approach to a chronological or hierarchical account, as well as particular notions of national identity and design. That said, the authors chose different points of focus. Some focused on product design;6 others included different forms of design, including digital and service design.7 Most accounts are told via key design movements, designers and objects.8 Some also focused on the history of government policy, design education or particular design issues, such as inclusive 4 See Chapter 12 (Germany); Chapter 16 (Italy); Chapter 17 (Scandinavia); Chapter 22 (United States of America (US)). 5 See, e.g., Schovsbo and Teilmann-Lock (2016). 6 See, e.g., Chapter 1 (Japan); Chapter 9 (United Kingdom (UK)); Chapter 11 (Germany). 7 See, e.g., Chapter 21 (US). 8 See, e.g., Chapter 9 (UK); Chapter 15 (Italy); Chapter 17 (Scandinavia).

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design, environmental design or the protection of designs created by Indigenous peoples.9 The chapters on the history of design protection also adopt different approaches, with some authors outlining an ‘internal’ history of design law (focussed on the history of legal doctrines, language, theories and jurisdiction); while others provide an ‘external’ history of design law (concerned with the interaction between the law, its institutions and society).10 A threshold issue is when a nation’s design and design protection history starts. There is some variation across the chapters. Some chapters start in the eighteenth century—with the Industrial Revolution and the expansion of international trade— or place their modern design and design protection history within the context of much older traditions.11 Others start later and offer a more ‘compressed history’, highlighting the extraordinary speed at which some nations have developed: from independence as a modern nation,12 the creation of new nation states,13 or the implementation of transformational government policies.14

27.4 Key Themes Connecting the History of Design and Design Law Design history is often told through key design movements, iconic designs and famous design schools and designers. Key themes include the relationship between design, art, commerce and the moral value of design;15 the tension between modernism and traditionalism;16 national design and the design influence of other countries;17 and national design and the universal or international style.18 The history of design law will often focus on the development of legal doctrines and specific legal instruments, often starting with the Lyon Ordonnance of 1711 and the early UK design laws, and their influence on design protection systems around

9

See, e.g., Chapter 3 (South Korea); Chapter 7 (Singapore); Chapter 19 (Russia); Chapter 25 (Australia). 10 Alexander (2020), Chap. 13 (Kindle location 5804). 11 See, e.g., Chapter 23 (Brazil) and Chapter 25 (Australia). 12 See Chapters 3 and 4 (South Korea); Chapters 23 and 24 (Brazil). 13 See Chapters 19 and 20 (Russia). 14 See Chapters 5 and 6 (China). 15 Chapter 9 (UK). See, e.g., the discussion of ‘Japanese Modern’ in Chapter 1 (Japan); and ‘industrial aesthetics’ in Chapter 13 (France). On the social aims of design see, e.g., Chapter 5 (China); Chapter 9 (UK); Chapter 11 (Germany); Chapter 19 (Russia); Chapter 23 (Brazil). 16 See, e.g., Chapter 1 (Japan); Chapter 9 (UK); Chapter 13 (France). 17 See, e.g., Chapter 3 (South Korea); Chapter 5 (China). 18 See, e.g., Chapter 11 (Germany); Chapter 15 (Italy). See also Chapter 3 (South Korea); Chapter 5 (China).

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the world, against a backdrop of international trade and competition, immigration and colonialism. All these features and themes are to be found in this book. However, this section sets out some of the key historical themes that emerge from both the design history and design protection history chapters that highlight the connection between the two histories.

27.4.1 The Changing Nature of Design and the Subject Matter of Design Protection ‘What is design?’ is a key and perennial question in both the design history and design protection fields. One author observes that we are, once again, seeing a fundamental shift in what constitutes ‘design’ and how designers work.19 Another notes ‘varied perceptions of what design is’, but that ‘[a]t its very core, design is creating solutions for a desired goal’.20 Many of the design history chapters in this book highlight the multi-faceted nature of design—its relationship to commerce, art and the improvement of society, as both a process and final product—and chart how the concept of design has at various points been understood to be art, a utilitarian product of industry or something in between. The Lyon textile manufacturers and the Bauhaus probably set out with particular notions of design. These days, ‘design’ can include not only product design, but also design thinking and process, a tool with which to make social, environmental and political interventions;21 and a range of other categories of design including service, digital, interface and transport design—categories that are no longer distinct in the digital age and an era of disruption. A cross-cultural perspective opens up more possibilities. For example, in contrast to many Western countries, aesthetic household objects in Japan have often been recognized as art, and so there was little ideological conflict in the transition from craft to industrial craft and design in the nineteenth century.22 For many Indigenous Australians, any equivalent to the word ‘design’ is ‘situated within an alternative cosmology’ that challenges European frameworks: ‘[d]esign is how all living beings co-operate to co-create’.23 What is clear is that ‘design’ has never been a stagnant concept, and that it is becoming more diverse and amorphous. However, when the design history and design protection history chapters are read together, there is often a disconnect between this dynamic concept of design and the narrow definitions of design in IP laws. Many of 19

Chapter 11 (Germany). See Chapter 21 (US). 21 See Chapter 9 (UK). 22 See Chapter 1 (Japan). See also Chapter 13 (France) on the l’art de vivre (the art of living). 23 Pascoe (2014); Moran et al. (2018). See Chapter 25 (Australia). 20

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the design laws described in this book are products of the industrial age, often still requiring a design to be applied to an ‘article’ and therefore restricting protection to products, excluding entire fields of design such as service design and digital design.24 This is changing—the protected subject matter in some countries has been extended to include, for example, on-screen designs and ‘non-physical products’.25 In some cases, some designs may also be protected under IP laws such as copyright law or other legal areas, such as unfair competition or civil law,26 and some of the ‘designs’ described in the design history chapters are more likely to be protected as ‘inventions’ under patent laws. Design protection systems have often demonstrated their ability to adapt to changes in design. Very early, laws directed to specific issues in certain industries evolved into IP laws that were applicable to a range of industrial designs.27 As is discussed below, the changing nature of design is also reflected in the extent to which design laws have allowed overlapping design and copyright protection.28 For example, in some countries, early laws sought to distinguish industrial design rights from the protection of artistic works under copyright law, reflecting a view that art and industry were institutionally and technologically separated.29 This view changed over time, and some countries have experimented with the extent to which industrial designs are protected under both copyright and design laws. In other countries, such as France and Brazil, that have embraced the théorie de l’unité de l’art [theory of the Unity of Art], protection of industrial designs under both design and copyright laws has been less of an issue.

27.4.2 Modernism, Technology, Mass Production and Substantive Protection Requirements Modernist design movements—that emphasized experimentation and technology, materials and processes, internationalism, progress and the improvement of society— are central to many of the design history chapters in this book.30 Innovation and utilitarianism are also fundamental concerns of IP law, including design protection schemes, which have the objective of encouraging innovation and industry for the benefit of the public.31 24

See, e.g., the discussion in Chapter 26 (Australia). See, e.g., Chapter 2 (Japan) and Chapter 8 (Singapore). However, see Chapter 26 (Australia). 26 See, e.g., the section on ‘unfair and economic parasitical competition’ in Chapter 14 (France). 27 See, e.g., Chapter 10 (UK) and Chapter 14 (France). 28 See discussion under ‘Overlapping Copyright and Design Protection’ below. 29 See, e.g., Chapter 10 (UK) and Chapter 20 (Russia). 30 See, e.g., Chapter 16 (Italy). 31 See, e.g., Ish¯ oh¯o [Design Act], Act No. 125 of 13 Apr 1959, Art. 1; Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, (1998) OJ L 289/28 (EU Design Directive), Recital 14; Chapter 26 (Australia). 25

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Some authors highlight the tension between modernism and traditionalism evident in, for example, the history of British design; the ‘French spirit’ in art and design that was considered ‘pretty’ in the eighteenth century but which emerged as political, social and critical in the twentieth century; the celebration and adaptation of the modernist universal style, but also its rejection, at times, in favor of traditional design that reinforced a ‘national identity’; as well as the new historicism of postmodern design movements. It can also be seen in the design history of countries such as Japan, which has a strong culture of craft and tradition, and China and South Korea as they have explored new design traditions. This tension also exists in design protection law, in particular, in case law involving copyright protection of applied art, which has involved an assessment of the artistic merit of iconic modernist designs, at times through a traditional or ideological lens.32 For example, in a 1933 decision regarding copyright protection of a door knob developed by Walter Gropius, the Reich Court found that its simplified form, characteristic of Bauhaus design, would not qualify for copyright protection because, although ‘an expression of modern artistic feeling’, it lacked the originality necessary for copyright protection.33 As late as the 1990s, the separability requirement under Italian copyright law could operate to exclude works such as those by Le Corbusier for Cassina from copyright protection because it was not possible to ‘distinguish the artistic value from the industrial product’.34 However, there are many other cases where the courts have found such designs to be eligible for protection.35 Together, the design history chapters provide a history of the development of technology at a national and global level. Revolutionary developments—such as bakelite, plastics and molding techniques in the US; electroplating in France; automobile design in the US, Germany, Japan and South Korea; electronics and home appliances in Germany and South Korea; IoT and semi-conductor technology in Japan; AI, genetic engineering, bio-design—have thrust national and global design forward. Some have also influenced the development of design protection laws. For example, a link may be drawn between the invention of the programmable Jacquard loom in the early nineteenth century, increased competition from French textile imports and the emergence of UK design protection by way of registration.36 Technological developments have raised a range of issues for design protection systems, not only in terms of whether new technologies, including digital technologies, may be registered as designs or protected under copyright law;37 but also, in the case of 3D printing, the reproduction and infringement of designs and how this should be addressed by the law. 32

See, e.g., Chapter 12 (Germany); Chapter 16 (Italy); Chapter 18 (Nordic countries). Reichsgericht [Reich Court of Justice], decision of 14 Jan 1933, Case No. I 149/32, published in GRUR (1933), 323 in Chapter 12 (Germany). 34 Supreme Court of Italy, 7 July 1994, no. 10516, in Chapter 16 (Italy). 35 For example, see Chapter 16 (Italy). 36 See Chapter 10 (UK). 37 See, e.g., Apple Inc [2017] ADO 6 in Chapter 26 (Australia); but also Chapter 2 (Japan); Chapter 4 (South Korea); Chapter 8 (Singapore) and Chapter 24 (Brazil). 33

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Design histories will often draw a strong connection between technological development, mass production, standardization and more recently, convergence. Examples include mass production and standardization during the Industrial Revolution; the contribution of technology developed during World War II to the design of products for mass consumption in post-war America;38 and the convergence of mobile technology which has, in part, resulted in smart phones that increasingly look the same. In each case, designers have responded to technology and mass production to address issues of quality or to distinguish products in crowded markets—the emphasis placed on ‘truth to materials’ and function by the Arts and Crafts Movement in the UK; the new styling in post-war US; or product differentiation by tablet and smart phone designers for Apple and Samsung.39 Design protection systems have also addressed issues related to mass production. In some cases, the development of design protection laws, such as those of the UK and Germany; and more recently, Japan, South Korea, China and Singapore; can be traced back to concerns about the originality and quality of local mass-produced products. Design protection systems are also concerned with innovation, competition and design as a marketing tool.40 Designs have generally been required to be ‘original’ to receive protection under copyright law. Other forms of design protection laws— such as sui generis design laws—include a greater range of substantive protection requirements, including that, to be registered a design should be ‘new’;41 ‘new and original’ or ‘new or original’;42 ‘new, useful and original’;43 ‘new and distinctive’;44 ‘new’ and possess a level of creative difficulty;45 or ‘new’ and have ‘individual character’.46 These requirements are usually determined by assessing similarity with other designs, ensuring a focus on the degree to which a design is an advance on prior designs; as well as an assessment of ‘creative difficulty’ or the ‘degree of freedom of the designer’. Such requirements help ensure the protection of innovative and distinctive designs and provide an incentive to innovate. However, standardization

38

See Chapter 21 (US). See also Chapter 19 (Russia). See Chapter 9 (UK); Chapter 21 (US). See also Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 5 (China) and Chapter 7 (Singapore). 40 See, e.g., Chapter 12 (Germany). See also Commission of the European Communities (1991), para. 5.4.1. 41 See, e.g., Chapter 2 (Japan); Chapter 4 (South Korea); Chapter 6 (China); Chapter 8 (Singapore); Chapter 14 (France). 42 See, e.g., Chapter 10 (UK); Chapter 24 (Brazil) and Chapter 26 (Australia). 43 See, e.g., Chapter 22 (US). 44 See, e.g., Chapter 26 (Australia). 45 See, e.g., Chapter 2 (Japan). 46 See, e.g., EU Design Directive, Arts 3, 4 and 5; Chapter 12 (Germany); Chapter 14 (France); Chapter 16 (Italy) and Chapter 18 (Nordic countries). 39

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and convergence have at times made the task of adjudicating such matters complex and difficult.47

27.4.3 Nation Building, Government Policy and Design Protection Systems Design has often been central to the imagining of national identity—sometimes expressed through craft or a style—for the purpose of nation building and export. Examples include ‘Japonisme’ made popular in late nineteenth century Europe; French ‘image policy’; the ‘identified design’ of Scandinavia; ‘Socialist Realism’ in Russia and ‘Australian-ness’.48 In this regard, it is interesting to read how international events such as the Olympics have often been critical to the development of a country’s image of itself and its design history,49 and how a ‘national’ car design has sometimes been seen as a symbol of the success of a country and its design and manufacturing industries.50 Given its role in nation building, it is not surprising that design has sometimes been affected by the rise of nationalism, resulting in the curtailing of some forms of design, and the use of traditional forms to promote a particular ideology, as was the case in Nazi Germany and in Italy under Benito Mussolini’s dictatorship.51 However, there are also surprising examples of cooperation between nations, including those with opposing ideologies, such as between the US Ford Motor Company and the former Union of Soviet Socialist Republics (USSR).52 Some authors highlight how decolonial and postcolonial perspectives can challenge and expose nationalist myths and present opportunities for alternative concepts of design and design history.53 Others identify how, in some countries, a ‘wholesale acceptance of Western industrial logic’ has more recently led to a re-examination of national identity in design, including in Japan, or led to the pursuit of new national designs, such as ‘Brazilian design’, ‘Chinese design’, ‘Korean-Style’ design and ‘Korean Design’.54

47

See, e.g., the discussion of D. Sebel & Co. Ltd v. National Art Metal Co. Pty Ltd (1965) 10 FLR 224 in Chapter 26 (Australia) and more recently Samsung Electronics (UK) Limited v Apple Inc. [2012] EWHC 1882 (Pat). 48 See Chapter 1 (Japan); Chapter 13 (France); Chapter 17 (Scandinavia); Chapter 19 (Russia); Chapter 26 (Australia), respectively. 49 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 9 (UK); Chapter 25 (Australia). 50 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 9 (UK); Chapter 11 (Germany); Chapter 15 (Italy); Chapter 25 (Australia). 51 See, e.g., Chapter 11 (Germany); Chapter 15 (Italy). 52 See Chapter 19 (Russia) which includes other examples of US and USSR exchange. 53 See, e.g., Chapter 23 (Brazil) and Chapter 25 (Australia). 54 See, e.g., Chapter 1 (Japan); Chapter 23 (Brazil); Chapter 3 (South Korea) and Chapter 5 (China).

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Various authors highlight the role that design has played in building nations, often linking important developments in national design to political movements and important moments in political history;55 key economic reforms;56 recovery from recessions, depressions and wars;57 drastic changes in population;58 industrialization and other measures to address a lack of natural resources;59 invasion and colonization;60 immigration policy;61 and international trade and competition.62 A key theme running through the book is that nation building has often involved government intervention and investment in the development of national design, innovation and design protection policies and strategies—from the Werkbund in Germany and the five-year plans in the USSR, through to the industrialization and design strategies in Singapore, ‘Made in China’ and the ‘trillions of won’ investment in South Korea. National design strategies have often sat within broader innovation and trade policies,63 and have usually been developed in collaboration with, and alongside the initiative and efforts of, the local design industry and educational institutions. These strategies have included engagement of overseas experts;64 government bodies with oversight of design;65 public and private sector collaborations;66 support for

55 See, e.g., Chapter 11 (Germany); Chapter 13 (France); Chapter 15 (Italy); Chapter 17 (Scandinavia). Some chapters note how design has been present at some important political moments in history, including the Hans Wegner’s ‘Round Chair’ at the John F. Kennedy and Richard Nixon televised US election debate in 1960 (see Chapter 17 (Scandinavia)); or the historic ‘Kitchen Debate’ between the then US Vice President Richard Nixon and the Soviet First Secretary Nikita Khrushchev (see Chapter 19 (Russia)). 56 See, e.g., Chapters 5 and 6 (China) and Chapter 20 (Russia). 57 See, e.g., Chapter 1 (Japan); Chapter 4 (South Korea); Chapter 9 (UK); Chapter 13 (France); Chapter 19 (Russia); Chapter 21 (US). 58 Such as the separation of Singapore from Malaysia in August 1965, and the mass withdrawal of British troops from Singapore in the late 1960s and early 1970s, see Chapter 7 (Singapore). 59 For industrialization, see generally, but for industrialization due to a lack of natural resources, see in particular, Chapter 3 (South Korea) and Chapter 7 (Singapore). 60 See, e.g., Chapter 3 (South Korea); Chapter 23 (Brazil); Chapters 25 and 26 (Australia). 61 See, e.g., Chapter 21 (US) and Chapter 25 (Australia). 62 See, e.g., Chapter 1 (Japan) and in relation to competition, see, in particular, accounts of international trade competition and, at times, conflict between UK and France (Chapters 9 and 10 (UK) and Chapter 14 (France)) and between China and the US (Chapter 6 (China)). 63 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapters 5 and 6 (China); Chapters 7 and 8 (Singapore); Chapter 9 (UK); Chapters 19 and 20 (Russia). 64 For example, the dispatch of US industrial design company Smith, Scherr & McDermott International (SSM) to help activate industrialization in South Korea (Chapter 3 (South Korea)); or a United Nations taskforce in Singapore (Chapter 7 (Singapore)). 65 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 19 (Russia). 66 See, e.g., Chapter 5 (China); Chapter 19 (Russia).

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professional bodies and design councils;67 exhibitions and showrooms;68 awards and ‘good design’ marks;69 professional and public education;70 publications and the media;71 as well as design protection systems. Design protection systems have played a key role in supporting national design and innovation strategies. In addition to rewarding, protecting and driving innovation, their objectives have also included: the prevention of copying of overseas designs by the local industry;72 the prevention of copying of local design by the industries of other nations;73 and elevating the quality of local design so they are competitive at an international level.74 However, some nations’ industrialization policies have at times involved the abolition of design protection systems, as in the early days of communist China and the USSR.

27.4.4 The Designer and Their Role in Design Protection It is difficult to recount design history without mentioning celebrity designers. Names such as Rams, Jacobsen, Breuer, Ponti and Starck pepper the design history chapters.75 Mostly European and usually male, it is only in recent years that we have begun to learn of the often obscured but equally significant contribution of women designers and those from other countries and cultural backgrounds.76 Design histories often note that the ‘designer’ is a product of the Industrial Revolution and the division of labor which, in some countries, saw a transition from

67 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 7 (Singapore); Chapter 9 (UK); Chapter 19 (Russia). 68 See, e.g., Chapter 1 (Japan); Chapter 7 (Singapore); Chapter 9 (UK); Chapter 11 (Germany); Chapter 13 (France); Chapter 17 (Scandinavia); Chapter 19 (Russia); Chapter 25 (Australia). 69 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 25 (Australia). 70 See, e.g., Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 7 (Singapore); Chapters 9 and 10 (UK); Chapter 13 (France); Chapter 23 (Brazil). 71 Chapter 9 (UK); Chapter 19 (Russia); Chapter 25 (Australia). 72 See, e.g., Chapter 2 (Japan); Chapters 3 and 4 (South Korea); Chapter 6 (China); Chapter 22 (US). 73 See, e.g., Chapter 1 (Japan); Chapter 17 (Scandinavia). 74 See, e.g., Chapter 1 (Japan); Chapter 7 (Singapore); Chapters 9 and 10 (UK); Chapter 11 (Germany); Chapters 19 and 20 (Russia). 75 See, e.g., Chapter 11 (Germany); Chapter 15 (Italy); Chapter 17 (Scandinavia) and Chapter 13 (France). 76 See, e.g., Hall (2021) and the role of women designers in Chapter 17 (Scandinavia); Chapter 21 (US); and Chapter 15 (Italy). See the mention of designers in Chapter 1 (Japan); Chapter 3 (South Korea); Chapter 5 (China); Chapter 7 (Singapore); Chapters 23 and 24 (Brazil); designers from diverse cultural backgrounds in Chapter 21 (US) and Chapter 25 (Australia) and Aboriginal and Torres Strait Islander designers in Chapter 25 (Australia).

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the craftsperson to the designer and mass production.77 The role of the designer continued to develop throughout the twentieth century producing a cavalcade of star designers and design agencies,78 as well as a period of ‘design entrepreneurship’, starting in the 1970s.79 However, some argue the importance of the individual designer is fading,80 and a number of the design history chapters remind us that, throughout history, many of the most significant innovations have been delivered by anonymous teams in corporate design departments.81 In some cases, such as in Japan, the anonymity of the creator has been exalted.82 One author notes that, these days, design is more likely to be undertaken by teams working in complex ways, providing holistic design approaches across a range of design areas.83 A number of design history chapters highlight the role of design education, not only as an element of government innovation strategies to build the local profession and lift the quality of national design, but also to educate the public, and the means by which design movements and ideas have spread throughout the world—from the Bauhaus and Ulm School of Design in Germany, the Vkhutein in the former USSR, the Kaare Klint school in Denmark to the range of design schools in modern day China, South Korea and Singapore. The designer also features in design protection history. Designers and manufacturers have played a key role in the development of a nation’s innovation strategy,84 as well as the formation and reform of design protection laws.85 For example, the lobbying of French textile manufacturers in response to the growth of the silk fabric industry led to the Lyon Ordonnance of 1711, and the Arts and Crafts movement influenced copyright protection for ‘works of artistic craftsmanship’ under the UK Imperial Copyright Act 1911.86 Jewellers played a role in the enactment of the Design Copyright Act 1968 (UK) which shaped provisions that governed the overlap of design and copyright protection. Industry in China highlighted the need for partial design protection in response to the evolution of 77

This varied across countries. For example, in the early nineteenth century, design and production was often undertaken by different people in England, whereas a French designer combined both roles: Chapter 10 (UK). 78 Chapter 9 (UK); Chapter 11 (Germany); Chapter 13 (France); Chapter 15 (Italy); Chapter 17 (Scandinavia). 79 Chapter 21 (US). 80 See Chapter 11 (Germany). 81 See Chapter 1 (Japan); Chapter 11 (Germany). 82 See the discussion of the ‘Mingei’ philosophy of S¯ oetsu Yanagi in Chapter 1 (Japan). Professor Almir Mirabeau da Fonseca Neto notes that design history often gives ‘more importance to a chair designed by a renowned architect than to packaging designed by an anonymous printer’ and questions how the importance of design is to measured: ‘can’t a poster designed by an anonymous person impact society as much as a project by a renowned architect?’: Chapter 23 (Brazil). 83 Chapter 11 (Germany). 84 See, e.g., Chapter 1 (Japan); Chapter 5 (China); Chapter 7 (Singapore) and Chapter 19 (Russia). 85 See, e.g., Chapter 17 (Scandinavia) and Chapter 26 (Australia). 86 See Chapters 9 and 10 (UK).

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product design which tended to focus on the part rather the whole product.87 The fashion industry, with its seasonal nature and short fashion cycles, has influenced industry-specific laws in countries such as France and South Korea.88 The designer has also featured in design protection law. For example, the designer makes an appearance in jurisprudence on the validity and infringement of registered designs. At one time under UK law, the intention of the designer was relevant when determining whether a design could not be registered because it was ‘dictated solely by function’.89 More recently, the ‘degree of freedom of the designer’ in developing a design will be taken into consideration when assessing ‘individual character’.90 In Japan, the subject of ‘creative difficulty’, which is a requirement for registration, is the designer.91

27.5 International and Regional Influences This section considers international and regional factors in design and design protection history. However, its focus is on design protection systems, including how international instruments, cross-jurisdictional influences and responses to imitation cultures have shaped national design protection systems.

27.5.1 International and Regional Influences in Design History The influence of certain design schools and design movements has been noted and is the subject of extensive scholarship, and so it is not the subject of detailed discussion here. This section briefly highlights some factors that have led to the international and regional influence of certain design philosophies, approaches and styles. The design history chapters in this book highlight, for example, the influence and local adaptation of Japanese design aesthetics,92 the philosophy and style of the Bauhaus School and the Werkbund,93 the Scandinavian design idiom,94 Italian

87

See Chapter 14 (France); Chapter 10 (UK); Chapter 6 (China). See, also, the role of manufacturer in the development of US design laws in Chapter 22 (US). 88 See, e.g., Chapter 14 (France) and Chapter 4 (South Korea). 89 See, e.g., the discussion of Amp Inc v Utilux Pty Ltd [1971] FSR 572, [1972] RPC 103 (HL) in Chapter 10 (UK). 90 See, e.g., EU Design Directive, Art. 5. 91 See Chapter 2 (Japan). 92 See Chapter 1 (Japan) and, e.g., Chapter 17 (Scandinavia) and Chapter 25 (Australia). 93 See Chapter 11 (Germany) and, e.g., Chapter 1 (Japan) and Chapter 9 (UK). 94 See Chapter 17 (Scandinavia) and, e.g., Chapter 21 (US).

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design movements,95 the UK Arts and Crafts movement,96 French Art Nouveau and Art Deco styles,97 the Viennese Secession, the Russian Avant-Garde and the English Garden City movement.98 Of course, while these are often presented as national design movements, they were often influenced by each other as well as by the aesthetics, style and designs of other countries.99 It can probably be assumed that the regional development and influence of certain design philosophies and styles were determined, to a degree, by geographic proximity, such as the development of Scandinavian functionalism and style. In other cases, the adoption and adaptation of a range of styles may have been influenced by geographic isolation, a desire to be seen as part of the world as a mature and successful nation, or simply the stage of development of a particular nation.100 A number of authors remind us that before global communications and travel became more accessible, intercolonial and international exhibitions played a key role in the spread of ideas and the development of technology.101 Of course, the media—including film, television, newspapers, journals and magazines—as well as museums and galleries have also had an ongoing role in the dissemination of new styles, technologies and design concepts as well as public education on design.102 Immigration has been crucial, not only to the establishment of national design industries, but also as a driver of regional and international approaches to design including, for example, the short-lived New Bauhaus in Chicago and many other (including contemporary) examples in the US; and the role of migrants in Australian design history, including in the development of production skills and art and design education.103 Colonialism, war and the provision of international aid have also played a significant role in design history. For example, the one-way flow of designed products from Britain and its colonial trade network led to colonial Australia being a dependent, import-oriented culture until the early nineteenth century.104 Brazil’s early design history is marked by its consumption of imported technologies and an imposed ‘historical update’.105 The role of the US in Japan following World War II and South Korea following the Korean War not only directly influenced the consumption and

95

See Chapter 15 (Italy) and, e.g., Chapter 9 (UK). See Chapter 9 (UK) and, e.g., Chapter 21 (US) and Chapter 25 (Australia). 97 See Chapter 13 (France) and, e.g., Chapter 21 (US) and Chapter 25 (Australia). 98 See Chapter 1 (Japan). 99 For example, the influence of Japanese aesthetics on Scandinavian design, see Chapter 17 (Scandinavia). 100 See, e.g., Chapters 5 and 6 (China); Chapter 3 (South Korea) and Chapter 25 (Australia). 101 See, e.g., Chapter 9 (UK); Chapter 13 (France); Chapter 17 (Scandinavia); Chapter 25 (Australia). 102 See, e.g., Chapter 1 (Japan); Chapter 13 (France); Chapter 25 (Australia). 103 See Chapter 21 (US) and Chapter 25 (Australia). 104 Chapter 25 (Australia). 105 Chapter 23 (Brazil). 96

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adaptation of US design styles in those countries, but also the education and development of their design industries.106 The support provided by foreign powers and international organizations to aid the economic development of countries, such as Singapore and South Korea, also had a strong influence on design culture.107 Design education has been central to the regional and international influence of certain design approaches.108 The impact of the Bauhaus, the Ulm School, the Vkhutein, the Kaare Klint School and modern design schools has been noted. An interesting and early case study is the attendance of Iwao and Michiko Yamawaki and Takehiko Mizutani at the Bauhaus and their return to Japan which helped ensure the ideas and practices of international modern design took root in Japanese design.109 The design industry has also ensured the spread and influence of regional and international design approaches and styles. This includes the involvement of individual designers in famous design movements, such as Shira Kuramata, a founding member of the Italian design collaborative Memphis group. There are examples of international design collaborations, such as the role of Italian designers in the development of Korea’s first original automobile, the Hyundai ‘Pony’;110 as well as designers who work internationally.111 The emergence of multinational companies and global brands has perhaps been one of the most important factors driving international influences on design.112 International design organizations—including the World Design Organization (formerly the International Council of Societies of Industrial Designers); International Council of Design (formerly the International Council of Graphic Design Associations) and the International Federation of Interior Architects/Designers— have played a role, not only in establishing international professional standards, but also the exchange of ideas and confirming ‘the idea that design was international and potentially poised to solve global problems’.113 Finally, shadowing many of these factors is the development of technology, globalization and the emergence of multinational companies. Developments in both

106

See Chapter 1 (Japan) and Chapter 3 (South Korea). See Chapter 3 (South Korea) and Chapter 8 (Singapore). See also Chapter 19 (Russia). 108 Design education is a particular focus in Chapter 5 (China); Chapter 8 (Singapore) and Chapter 23 (Brazil). 109 See Chapter 1 (Japan). 110 Chapter 3 (South Korea). 111 See, e.g., the work of Tang Chongxi (Chapter 5 (China)); the German designers Richard Sapper, Hartmut Esslinger, Erik Spiekermann and Günter Horntrich (Chapter 11 (Germany)); various Italian designers (Chapter 15 (Italy)) and Marc Newson (Chapter 25 (Australia)). 112 See, e.g., Chapter 3 (South Korea); Chapter 15 (Italy) and Chapter 17 (Scandinavia). 113 Huppatz (2015), p. 195. The history of some of these organisations also highlights the limits of Western modernist approaches to design and ‘diffusionist’ models of cross-cultural exchange— ‘which assumes that the west continuously modernizes and innovates, in opposition with a ‘periphery’ perpetually condemned to catch up due to some primordial environmental, cultural or technological differences’—particularly in relation to industrial design and development. See, e.g., Messell (2019), p. 89. See also Chapter 23 (Brazil). 107

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communications and transport have increasingly facilitated regional and international influences throughout design history, the internet and the digital revolution being perhaps the most significant factors in recent years. Some authors also note the role and dominance of multinational companies, not only in the promotion of idiosyncratic national design but also in its decline, usually in favor of a standardized global look.

27.5.2 International and Regional Influences in Design Protection The history of national design protection systems has also been shaped by regional and international influences.

27.5.2.1

International Instruments

Various international instruments have influenced the development of national design protection systems. However, the only treaties that substantially mandate design protection are the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).114 These multilateral agreements provide, however, only a minimum level of protection; the TRIPS Agreements, for example, require member states to enable design protection for at least 10 years.115 More specific contours of protection are left to the national law of each country. As for the simplification of procedures, we should mention the Hague Agreement Concerning the International Registration of Industrial Designs as a tool for the facilitation of international filing. The Agreement also provides for a maximum protection term of 15 years.116 Finally, the protection of designs under copyright law is influenced by the Berne Convention for the Protection of Literary and Artistic Works.117

114

Paris Convention for the Protection of Industrial Property, 20 Mar 1883 (revised 14 July 1967), 828 U.N.T.S. 305 (Paris Convention); Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 Apr 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (TRIPS Agreement). 115 TRIPS Agreement, Art. 26(2). 116 The Hague Agreement concerning the International Deposit of Industrial Designs, 6 Nov 1925 (revised 2 July 1999), 2279 U.N.T.S. 3 (Hague Agreement). 117 Berne Convention for the Protection of Literary and Artistic Works, 9 Sept 1886 (revised 24 July 1971), 828 U.N.T.S. 221 (Berne Convention).

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Cross-Jurisdictional Influences

In addition to a certain minimum level of global design law harmonization, we see many examples of cross-jurisdictional influence that have contributed to further harmonization. In Asia, Japan is the only country among the four countries surveyed in this book that has had its own design law for more than a hundred years.118 Japanese law was heavily influenced by the laws of Western countries at the time of its creation,119 and was ‘exported’ to South Korea, which implemented concepts from Japanese design law, and later US law.120 Both Singapore law and Australian law have been heavily influenced by British law.121 Design law in the US was also originally influenced by British law,122 and Brazilian law was influenced by French law.123 The common factor linking each of these examples is historical colonialism. Regional proximity and industrial conditions have also had an impact. A typical example is the influence of France on England. The first influence that can be identified among these countries is economic influence.124 Based on the premise of French influence on the British design industry, the British Act of 1842 referred to the French Act of 1806 to protect design businesses in England.125 The Italian law of 1868 was also influenced by the French law of 1806.126 Russia and Germany’s policymakers also pointed to French and British laws in the process of their respective design law evolutions.127 In addition, every European Union (EU) member state and other European countries have been affected by the institutional aspects of the EU and EU design protection.128 Some chapters note the significant impact of the EU Design Directive and EU Design Regulation,129 including how transposition required adjustment of particular aspects of nationals laws and, in some cases, has led to the abandonment of national systems.130 The influence of the EU ‘Design Approach’ in countries well beyond Europe’s borders is also noted.131

118

See Chapter 2 (Japan). In particular, Japan referred to English law. See Chapter 2 (Japan). 120 See Chapter 4 (South Korea). 121 See Chapter 8 (Singapore) and Chapter 26 (Australia). 122 See Chapter 22 (US). 123 See Chapter 24 (Brazil). 124 See Chapters 9 and 10 (UK). 125 However, the English and French laws at that time did not have a very similar system. 126 See Derclaye (2018). 127 See Chapter 12 (Germany); Chapter 20 (Russia). 128 See e.g., Chapter 10 (UK); Chapter 12 (Germany); Chapter 14 (France); Chapter 16 (Italy); Chapter 18 (Nordic countries). 129 EU Design Directive; COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3, 1-24 (EU Design Regulation). 130 See Chapter 12 (Germany); Chapter 16 (Italy); Chapter 18 (Nordic countries). 131 See, e.g., Chapter 26 (Australia). 119

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Historically, France appears to have been the first country that had significant influence on the formation of design law in other countries.132 However, this was only a starting point. Based on the various influences among countries since then, including as a result of regional networks and trade agreements, the legal system of each country has undergone major transformations from their original primitive systems, including France. The influence of each country is complex and differs from country to country. There are historical influences, including colonialism and industrial, economic and geographic influences. These influences have not always been unilateral but also mutual. There are also examples of individual countries—including those that may have been geographically or politically isolated—aligning their laws with international standards or approaches to, for example, facilitate international relations or trade.133 Furthermore, the protection of traditional designs has become an issue in countries that were originally inhabited by Indigenous peoples and later colonized.134 It is often difficult to protect traditional design from the perspective of conventional IP law, and so additional protection may be required.

27.5.2.3

Responses to Imitation Cultures

A number of the chapters on both design and design history show that imitation and copying of another nation’s intellectual property is a common element of the history of many countries and is usually an indication of that country’s level of economic development. Examples include how, at various times, the US copied UK designs; the UK copied French designs; Sweden copied the designs of Denmark; as well as how the design and manufacturing industries of China, Japan, South Korea and Singapore have copied the designs of other countries. In a number of cases, actions taken by these countries to address their culture of copying have not only led to the enactment or amendment of intellectual property laws, including design protection laws, so they reflect international standards; but also helped drive innovation in that country.135 In other cases, countries that have been the subject of copying by other nations have shaped their own design protection systems to address the issue.136

132

See Chapter 14 (France). See, e.g., Chapter 6 (China) and Chapter 26 (Australia). 134 See, e.g., Chapters 25 and 26 (Australia). This has also been an issue in Japan. 135 For example, the legal amendments to prevent the export of imitated designs in response to overseas criticism, see discussion of the Japanese Export Product Design Act of 1959 in Chapter 2 (Japan). See also Chapter 1 (Japan); Chapter 3 (South Korea); Chapters 5 and 6 (China); Chapter 8 (Singapore); Chapter 17 (Scandinavia). 136 See, e.g., Chapter 2 (Japan). 133

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27.6 Key Observations on the Protection of Design There are a wide range of laws that protect designs. Design law is the most common, but copyright law, trademark law, civil law, and in some countries, unfair competition prevention law and common law actions such as ‘passing off’ and the equitable doctrine of breach of confidence may also protect designs. In some cases, design law is incorporated into patent law.137 In those cases, patent law registration requirements will often be applied to the design protection law. Historically, while variations of design law and copyright law have been at the forefront of design protection, other laws have provided for supplementary and additional protection. For example, France’s Act for Fashion and Seasonal Creations of 1952 was designed to address certain industry-specific gaps.138 Another example is Art. 2(1)(iii) of Japan’s Unfair Competition Prevention Act, which was added in 1993 to provide protection of product forms until a corresponding design right registration was completed.139 Yet another example is the UK Unregistered Designs Act that was enacted in 1988 to protect functional designs that were not protected under the Designs Act 1949. Before 1988, these designs could be protected under the Copyright Act. However, the legislature wanted to achieve greater clarity by separating out functional design protection from the Copyright Act and moving it into a specific piece of legislation.140

27.6.1 Design Law Subject Matter The scope of protection under design law has gradually expanded over time. For example, in countries with a long history of design protection, such as France and the UK, we can see how design protection expanded from two-dimensional designs to three-dimensional designs in the late eighteenth and early nineteenth centuries.141 The expansion of the scope of protection under design law has not necessarily been the same in each country. For example, while the EU Design Regulation and the design protection system in South Korea specify fonts as being the subject of protection,142 Japan excludes font design protection.143 The extent of the expansion of the scope of protection has often reflected the development of the design industry in a particular country. However, there are some 137

See, e.g., Chapter 22 (US) and Chapter 6 (China). See, also, formerly in Brazil (Chapter 24 (Brazil)). 138 See Chapter 14 (France). 139 See Chapter 2 (Japan). 140 See Chapter 10 (UK). However, it has not been adopted in Singapore (Chapter 8 (Singapore)). 141 See Chapter 10 (UK); Chapter 14 (France). 142 See Chapter 4 (South Korea). 143 See Chapter 2 (Japan). See also Chapter 26 (Australia).

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exceptions. For example, in Japan, although there has been a demand for the protection of graphic image designs (digital screen designs) for a long time, they have not been protected independently of a physical product until recently because Japan maintained the theoretical framework of limiting design protection to physical products.144 Therefore, in some cases, theoretical consistency in design law has been prioritized, and lobbying by the design industry for an extension of subject matter has not been successful.

27.6.2 Nature of the Right In the past, some countries have designated a design right as a relatively exclusive right, that is, as a right that would only protect against imitation and not against products independently-created by another party.145 In addition, when design protection law is intended to prevent unfair competition, it has sometimes covered only the acts of competitors.146 In the past, some socialist countries have not characterized design rights as exclusive rights, but rather as a creator’s right to remuneration.147 Current design protection systems regard design rights as absolute exclusive rights that, in principle, award protection against any design that falls within the scope of the registered design right, irrespective of whether the infringing subject matter has been independently created by another party or not.148 Some countries have always defined design rights as absolute exclusive rights.149 The nature of unregistered design rights is, however, a bit different. Unregistered design rights require knowledge in order to give rise to liability. While such knowledge is usually presumed following the market entry of a product that embodies the unregistered design, a later user can escape liability if they can demonstrate that they could not reasonably have been aware of the original product and its design. Therefore, unregistered design rights are to some degree a relative monopoly.150

144

See Chapter 2 (Japan). This continues to be the case in Australia (see Chapter 26 (Australia)). See, e.g., 1787 Calico Printer’s Act in UK (Chapter 10 (UK)). See also Chapter 12 (Germany). 146 See, e.g., Chapter 14 (France). The Ordonnance of 1711 concerned the abus de confiance (breach of trust) of a competitor, which meant that it was, in fact, a relatively exclusive right, and the enforcement of the right was limited to competitors who imitated fabrics, etc. 147 See Chapter 20 (Russia). 148 Many jurisdictions provide for prior-user rights to balance the effect of such absolute protection. See e.g. Chapter 12 (Germany). 149 See Chapter 2 (Japan); Chapter 22 (US). 150 See Chapter 2 (Japan); Chapter 10 (UK); and the EU Design Regulation, Art. 11, Recital 21. 145

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27.6.3 Functional Designs Relatively early, design laws tended to exclude mechanical devices from design protection and referred such devices to patent law protection.151 Over the course of the twentieth century, some design protection laws were amended to more broadly exclude those features of designs that are dictated solely by function and to require ‘eye appeal’ or aesthetic qualities.152 The explicit exclusion of functional design reflected concerns about a possible over-protection of purely functional designs and/or were introduced to raise design quality.153 The exclusion has at the same time often posed challenges for courts and decision-making bodies—particularly when considering modern functional design— and has sometimes resulted in the exclusion of entire design types. However, while the design laws of most countries continue to exclude functional designs and require some consideration of a product’s visual aspect, we understand that the concept of ‘aesthetic merit’ or ‘eye appeal’ has gradually become less pronounced in modern design law and jurisprudence, also reflecting concerns about the difficulty of an appropriate determination.154

27.6.4 Examination Historically, there have been two examination approaches: jurisdictions that require the examination of the novelty of a design and other substantive requirements as well as formality requirements;155 and those that examine only formality requirements.156 There are two types of substantive examination: substantive examination that is conducted for all types of designs,157 and substantive examination that is conducted for only some specific types of design.158 The second type is intended to protect fashionable designs or those with a limited shelf life. Historically, these designs 151

Some countries such as Germany introduced Utility Model protection to bridge the gap between design subject matter and patentable subject matter. 152 See, e.g., Chapter 10 (UK). Japan did not introduce such a functionality exclusion until 1998: see Chapter 2 (Japan). See also Chapter 20 (Russia). 153 See, e.g., Chapter 20 (Russia). 154 See, e.g., Chapter 10 (UK) and Chapter 26 (Australia). Before 1998, in Japan, ‘aesthetic impression’ was used to exclude the registration of functional designs: Ish¯oh¯o [Design Act], Act No. 125 of 13 Apr 1959, Art. 2(1). The introduction of a new Art. 5(3) in 1998 that expressly excludes the registration of functional designs has meant that is no longer necessary to interpret ’aesthetic impression’ in Art. 2(1) as excluding designs based solely on function. 155 See, e.g., Chapter 2 (Japan); Chapter 4 (South Korea) (excluding some designs). 156 See, e.g., Chapter 6 (China); Chapter 8 (Singapore); Chapter 24 (Brazil) and the EU. There was a time when Germany and Russia did not conduct any examination (Chapter 12 (Germany); Chapter 20 (Russia)). 157 See Chapter 2 (Japan); Chapter 22 (US). 158 See, e.g., Chapter 4 (South Korea).

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have been protected by special laws or copyright laws,159 and a time-consuming examination system has been considered inappropriate, given the nature of those designs.160 In some cases, such as Australia, a design may be registered following only a formality check. However, while substantive examination is an optional postregistration procedure, a registered design will not be enforceable until it is examined and a certificate of examination is issued.161 Countries that have adopted a model similar to that of patent law usually incorporate a substantive examination system.162 However, we do not see any reason for the decision to require substantive examination as a pre-condition for design registration other than the fact that patents have the same requirement.

27.6.5 Substantive Protection Requirements Over time, countries have adopted different substantive requirements for the protection of design.163 Historically, when a design protection system was directed to the prevention of unfair competition among competitors, novelty was not required for design protection.164 In some cases, the novelty was determined domestically.165 Currently, most countries apply a global novelty standard.166 In some cases, the relevant novelty region is still limited.167 However, the existence of the novelty requirement does not mean that the design system is similar to the patent system.168 Historically, courts and commentators have often confused novelty under design law and originality under copyright law.169 Even in Europe and other countries that have recently adopted a ‘Design Approach’ that understands design law is different from both patent law and copyright law, novelty is still required.

159

See Chapter 14 (France). There is sometimes a measure to provide for compensation until the design is registered (see, e.g., Chapter 4 (South Korea); Chapter 20 (Russia)). 161 See, e.g., Chapter 26 (Australia). 162 See Chapter 2 (Japan); Chapter 22 (US). 163 See ‘Modernism, Technology, Mass Production and Substantive Protection Requirements’ above. 164 See Chapter 14 (France). 165 See Chapter 2 (Japan); Chapter 10 (UK). 166 See, e.g., Chapter 2 (Japan); Chapter 4 (South Korea); Chapter 6 (China); Chapter 8 (Singapore); Chapter 20 (Russia); Chapter 22 (US); Chapter 24 (Brazil); Chapter 26 (Australia). 167 EU Design Regulation. This is based on a ‘Design Approach’. See Kur et al (2018). 168 Even in Germany, where design law was understood to be similar to copyright law, the 1876 Design Act required novelty and originality (see Chapter 12 (Germany)). 169 See Chapter 14 (France). 160

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27.6.6 Deferred Publication or Secret Design Systems A number of countries have a deferred publication system that allows for designs to be kept secret for a period of time. These systems allow applicants to keep their design confidential until they are ready to launch the product to the market. One can justify the existence of a deferred publication system by arguing that there may be less need for public disclosure of designs than for patented technology.170 Historically, these systems were also designed to protect domestic manufacturers against imitation by competitors.171 Most design protection systems still allow design applicants to request secrecy or deferral of publication for a number of years.172 Some countries, on the other hand, do not allow for publication deferral or other forms of secrecy. These are usually countries that incorporate design law into their patent law and therefore apply similar principles when it comes to publication requirements and timing.173

27.6.7 Overlapping Copyright and Design Protection Overlapping protection of designs by design law and copyright law is the subject of an earlier expansive and detailed study.174 Therefore, this section provides only a few comments from a historical perspective. Here, we note that the discussion on the protection of applied arts under copyright law usually started with lobbying of the legislature for its protection or by the commencement of litigation concerning such designs. For example, in France, designers called for the protection of applied art under the Copyright Act as the protection of three-dimensional designs under the Design Act

170

See Chapter 2 (Japan). See Chapter 2 (Japan); Chapter 14 (France). 172 See, e.g., Chapter 2 (Japan); Chapter 4 (South Korea); Chapter 12 (Germany); Chapter 14 (France); Chapter 24 (Brazil); Chapter 26 (Australia); EU Design Regulation. Under Art. 11 of the Hague Agreement, international publication may be delayed for 30 months from the filing date. The UK did have a secret design system (see Chapter 10 (UK)), but now registration (and therefore publication) can be deferred by up to 12 months from the filing date of the application. Therefore, it is a system that extends the period of secrecy by delaying registration. Australia is in the process of implementing a similar system. However, the period is only 6 months (see Chapter 26 (Australia)). 173 See, e.g., Chapter 6 (China); Chapter 20 (Russia); Chapter 22 (US). However, it appears that in China it is possible to delay publication for up to three years from the filing date by requesting a delay in the examination. In Russia, it is possible to delay publication by deliberately triggering some action by the patent office, such as deliberately not fulfilling a formality requirement (a system of secrecy used to exist); and in the US, it is possible to delay publication of a gazette by suspending examination procedures. 174 Derclaye (2018). 171

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was perceived to be ambiguous.175 Copyright protection for applied art developed noticeably differently in other European countries. The art and design ideology of the Nazi regime was one reason for the lackluster motivation of German courts to recognize applied art copyright protection in Germany until the implementation of the Design Directive in 2004. Also, Scandinavian countries were rather skeptical about the protection of applied arts under design laws, and designers actively lobbied to protect them under the Copyright Law.176 On the other hand, it was not until the 1970s that protection of applied arts became an issue in Japan.177 The copyright law had a longer protection period than the design law, and so lawsuits were filed regarding copyright protection of expired design rights, prompting discussion on the overlap of protection under the design law and copyright law.178 The desire of designers and of parts of industry for protection under copyright law—with its longer protection period and lack of procedural requirements and cost—is a common theme in many countries.179 Various chapters in this book discuss the criteria for the protection of designs—including designs that may be artistic works or applied art—under copyright law, design law or both laws and set out the history of a country’s policy in this area including, for example, demarcation (no dual protection), partial cumulation (dual protection for some types of works) or total cumulation (dual protection for all types of works).

27.7 The Future If there is anything that history has taught us, it is that the future can be unpredictable. Perhaps even more so now as we face the enormous challenges posed by a global pandemic and significant global environmental damage. While increased globalization, together with the technological and economic developments that have supported it, has helped create and deepen these problems, it has also allowed designers to work together at a global level to address them. Designers have been at the forefront and in the background applying design thinking to find solutions to these challenges. One author notes, for example, that the most iconic object of recent times has been the face mask which, within months of COVID-19 hitting, was reconsidered and redesigned in a variety of ways. The pandemic has also seen the use of 3D printing to provide ventilators; the repurposing 175

See Chapter 14 (France) discussing the lobbying efforts for a revision of the Act of 1902. Unlike in other cases, requesting copyright protection was not motivated by a desire to obtain longer protection, as the 1806 Act allowed for permanent protection of designs. 176 See Chapter 17 (Scandinavia) and Chapter 18 (Nordic countries). 177 This was due to the enactment of Law No. 48 of 1970 on the protection of ‘a work of artistic craftsmanship’. 178 See Chapter 2 (Japan). 179 See also Bently (2018), pp. 188–189.

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of public spaces to create hospitals; information design to communicate life-saving information; the re-imagining of the home and work space; and the enhancement of video-chat services and collaborative work software to keep us connected and working.180 Design has proved to be very nimble in this new reality. This should come as no surprise as design history shows us how designers have always responded to the social, economic, political and technological challenges of their age. While there are examples of ‘good design’ becoming luxury items reserved for the privileged few, design has usually had the interests of the broader public at heart. In this regard, developments, such as in the areas of inclusive, service and environmental design, are encouraging.181 Perhaps the safest prediction that can be made is that new forms of design will continue to emerge and designers will continue to be agile and respond to the demands of their time and technological developments, which could also involve a reassessment of their role and purpose.182 Multinational companies and continuing developments in digital and communications technology are likely to speed the effects of globalization. Less certain is whether this will continue to drive convergence and standardization.183 We are already witnessing a return to regionalism in some areas, including in design— for example, the pursuit of a truly ‘Korean design’ or design with Chinese characteristics.184 At the same time, while we may be living in a time of more design than ever before, will the creation of new and distinctive designs become less relevant as our marketplaces become more digital? In addition, consumer behavior is increasingly influenced by factors other than appearance, including a range of ethical considerations, sustainability and the ‘right to repair’ in response to concerns about ‘planned obsolescence’ (the design of products with a limited useful life). While it is clear that such trends have already influenced the direction of design, it is difficult to predict whether they will have consequences for design protection laws that focus on the appearance of products and the marketing aspect of design. To date, technological developments that have resulted in standardization and convergence of design have not resulted in a significant re-examination of design protection systems. While it has raised some challenges for courts and other decision makers, the response has been handled within the framework of the existing design law. On the other hand, design protection history also shows that the development of new types of designs has often led to an expansion in the scope of protection of

180

See Chapter 21 (US). See, e.g., discussion in Chapter 5 (China) on inclusive design and environmental design. 182 See, e.g., Chapter 11 (Germany) and Chapter 21 (US). 183 See, e.g., discussion in Chapter 5 (China) and Chapter 21 (US). 184 See, e.g., discussion in Chapter 3 (South Korea) on the search for a truly ‘Korean design’ and Chapter 5 (China) on the need for design with Chinese characteristics. 181

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designs. Therefore, it would seem that as long as technological innovation continues, the range of designs covered by design protection systems will expand. Design protection history indicates that these changes are likely to be incremental rather than involve a radical overhaul of the design protection system or the entire intellectual property system from the perspective of design law. Similarly, while the concept of design has expanded to include new areas of design, such as service or information design, the legal concept of design in design law is likely to remain a narrower concept. History has also shown us that the law has tended to lag behind design, sometimes by decades—a number of the design protection chapters detail the length and complexity of the design law reform process.185 This may not change anytime soon and so it is likely that design protection laws will continue to not protect all aspects of contemporary design practice. Perhaps it is time to reconsider how designers and the public are educated about design laws to ensure a better understanding of their purpose and scope. Global unification of design protection systems is unlikely in the near future. For example, the need for a national design law has usually been assumed. However, specific protection measures—for example, for fashion designs—have often been questioned. While some countries have incorporated such protection in their design laws, others have relied on copyright or unfair competition prevention laws. For the time being, there appears to be no impetus or momentum for international consistency in design protection. Most countries continue to develop their own approach, including in relation to applied arts. Historically, Europe has sought to protect designs at the regional level. However, the regional protection and unification of national laws in Europe is not only an attempt to unify the IP legal system, but is also part of a larger institutional system that incorporates various elements of its member states’ national systems. On the other hand, regional protection in Europe sometimes appears to make national laws almost redundant, as in the Nordic countries. However, this may depend on the design market, population and economic power of each country, and whether a country’s designs are particularly popular or influential and so better suited to regional protection. This phenomenon may be confined to some European countries. Attempts at uniformity in other regions may prove difficult. There has been some success in regions where there are only a small number of countries and there is geographical and cultural proximity, such as the Nordic countries; and those that share a similar history, such as Russia and its bordering nations. In other parts of the world, there is no momentum to establish uniform and harmonized protection at a regional level; although there are attempts to align some specific aspects of laws through, for example, trade agreement processes, and there is cooperation among the patent offices of various countries. It is clear that the development of design in each country has influenced other countries and led to the development of design protection legislation, often as a result of lobbying by local industry. However, given that this protection often reflects the 185

See, e.g., Chapter 6 (China); Chapter 22 (US) and Chapter 26 (Australia).

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circumstances of the design industry in each country, there are differences in national design protection systems. Of course, as design becomes more global, it is also likely that the impact of global designs on the design protection system of each country will be similar. As a result, the differences between each country’s design protection legislation may become very small in the future, which could result in regional or international uniformity becoming more achievable. What is certain is that design history and design protection history will continue to be connected, and that design protection laws should continue to be considered in the context of the history of both design and the law.

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