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We Wanted More Arne Jacobsen Chairs but All We Got Was Boxes – Experiences from the Protection of Designs in Scandinavia from 1970 till the Directive

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Abstract

The Nordic design laws, which were enacted in the 1970s, may be viewed as a forerunner for the EU system. This article sets the scene for the evolution of the Nordic Design Acts. Furthermore, it examines case law and registration practices to test how functional designs were de facto protected by the Design Act considering also the development in copyright law. It is concluded that the designers, thanks to whom there was “Danish Design”, made no or only marginal use of the registered designs system that had been put in place for them. The reasons for this failure are discussed and attributed to a combination of legal and cultural factors. Finally, the article reflects on the lessons learned and their implications for the on-going EU design law reform.

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Notes

  1. Consisting of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.

  2. As part of the process an “Economic Review of Industrial Design in Europe” was published in 2015, The Economic Review of Industrial Design in Europe – Final Report MARKT/2013/064//D2/ST/OP, January 2015 available at http://ec.europa.eu/growth/industry/intellectual-property/industrial-design/protection/index_en.htm.

  3. The 1970 design law reform was a Nordic reform. Thus similar acts were adopted in Denmark, Norway, Sweden, and Finland. In this article the focus is on the particular Danish experience. Moreover, a number of comparisons will be drawn to, especially, the Swedish and Norwegian situations as a common bulk of law relative to design protection has developed in the three Scandinavian countries.

  4. Ljungman (1976), p. 117. Ljungman had introduced the metaphor of the black horses in Ljungman (1973).

  5. The “untamed and wild nature” of the Nordic design legislations was according to Ljungman, ibid. mainly due to the decision to offer protection to the appearance of purely functional design which was according to Ljungman unique in the world at that time (even though the approach had been known in Norway since the 1910 Act). Significantly, as far as the object of design protection was concerned what in effect happened was that the Nordic model for design law eventually prevailed over the mainstream European models to provide a base line for the “EU Design Approach”. This development took place thanks to the group which laid the foundations for the EU design model with the MPI, see Levin et al. (1990), pp. 565–586. The group included Professors Marianne Levin, Annette Kur, Friedrich-Karl Beier and Kurt Haertel. Levin’s doctoral dissertation contained some of the nuclei of what were to become the “design approach” of the EU, see Levin (1994).

  6. See the Parliamentary Report leading to the Danish Design Act No. 417/1966, 34 [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”) (herinafter “the Report of the Nordic Design Law Committee”)]. The Report is available (in Danish) at http://www.statensnet.dk/betaenkninger/0401-0600/0417-1966/0417-1966_pdf/searchable_417-1966.pdf. This and the following citations of the Report are all translated by the authors. The Nordic countries set up a joint committee and on that basis national reports were drafted. See for an account for the discussions from a Swedish perspective (and in English), Ljungman, supra note 4 (1973).

  7. Denmark (Lov om mønstre No. 218/27.5.1970), Finland (Mönsterrättslag No. 221/1971 of 12 March 1971), Norway (Lov om mønster, No. 33/29.5.1970) and Sweden (Mönsterskyddslag 1970:485). The particular international legal context of the Nordic law reform was the inclusion of Art. 5quinquies in the Paris Convention in 1958 (Lisbon). According to this (still valid) 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. Nonetheless, the amendment necessitated changes in the Nordic legislations. The Swedish Design Act was from 1899; it was rudimentary and limited to ornaments within the metal industry. Finland had no specific legislation relating to design. Denmark and Norway had Design Acts in place that in principle would meet the requirements of the Paris Convention, yet in both countries governments decided to amend their legislations. Joint Nordic reforms of copyright law, trade mark law and patent law had already taken place in the 1950s and 1960s. Most importantly as seen from a design law perspective, common Patents Acts were enacted in the late 1960s (in Denmark Act 479 of 20 December 1967) based on a common parliamentary report from 1963, Nordiskt Utredning (NU) 1963:6 (available at http://www.statensnet.dk/betaenkninger/0401-0600/0417-1966/0417-1966_pdf/searchable_417-1966.pdf). The tradition for Nordic legislative cooperation is long-standing and includes common Acts on contracts and sales of goods in the beginning of the twentieth century and including a Nordic Draft [Civil] Code in 1962 which included all IPR Acts (including an Act on design), see Vinding Kruse Fr (1962).

  8. English and French language versions are available at WIPO’s webpage; the English version is available at http://www.wipo.int/wipolex/en/details.jsp?id=1121.

  9. The function itself was not protected under the Design Act. The committees considered introducing a utility model protection system but decided not to. See the Report of the Nordic Design Law Committee supra note 6, p. 56 (with the slightly surprising observation that an extension of design protection to cover the appearance of functional design would render a protection of the function superfluous). See to the background Ljungman, supra note 4 (1976), p. 123 et seq.

  10. Section 5(1) thus provided that no one “may, without due authority, exploit the design commercially by manufacture, import, offer for sale, transfer or lease of goods which do not differ essentially from the design, or goods which incorporate any matter which does not differ essentially therefrom.” Subsection 2, contained a provision known from trade mark law that restricted protection to “to goods covered by the design registration or to goods of a similar kind”.

  11. This was much debated in the committees e.g. Levin, supra note 5 (1984), p. 326 et seq. The then previous Danish and Norwegian systems had been based on an examination of just the formal requirements (not novelty, etc.) whereas a full examinations system had been in place in Sweden. In reality the picture was less clear at least for Denmark, see notably Olson (1960), p. 227 (pointing out that in regard to the administration of the 1905 Act the Danish Office did in fact refuse design solely dictated by function even though this was not required by the formality examination).

  12. By the same token, it was understood that “As a rule, the modern designer does not merely add an ornament to an already existing article but engages himself primarily with the making of new articles”, the Report of the Nordic Design Law Committee, supra note 6, p. 40.

  13. Ibid.

  14. Ibid., p. 36.

  15. On this topic see Per Hansen (2014).

  16. MoMA, for example, has 17 of Arne Jacobsen’s designs in its collection. See http://www.moma.org/collection/works?locale=en&utf8=%E2%9C%93&q=jacobsen&classifications=&date_begin=Pre-1850&date_end=2015.

  17. E.g. Levin, supra note 5 (1984), p. 289; and Rosenmeier (2001b), p. 235 et seq. with references including to the decisions from Denmark and Sweden from the 1930 s that refused copyright protection of Mart Stam and Marcel Breuer’s Freischwinger chairs. Until 1970, works of applied art were only protected for ten years in Sweden. This changed with the adoption of the Design Act when protection was prolonged till 50 years post mortem auctoris but only for works of “real” aesthetic quality, see infra note 39.

  18. Lov om mønstre No. 107 of 1 April 1905, see Schovsbo et al. (2013), p. 30 et seq.

  19. See on the 1905 Act, Olsen, supra note 11, p. 227; and Schovsbo et al., supra note 18 (2013).

  20. Lund (1958), p. 49.

  21. Koktvedgaard (1965), p. 418 et seq.

  22. Report of the Nordic Design Law Committee, supra note 6, p. 41.

  23. Landsforeningen Dansk Kunsthaandværk og Kunstindustri, ed. Kunstnerret: Kunsthaandværk Og Kunstindustri, Copenhagen: G.E.C. Gads Forlag, 1943, p. 25.

  24. [Minutes from meeting in the Danish Association of Industry concerning design law reform. National Association of Danish Crafts and Industrial Art] “Notat fra Møde vedr. revision af mønsteretten i Industriforeningen mandag den 13. februar 1961 kl. 14”, Foreningen Dansk Kunsthåndværk og Industriel Design. Erhvervsarkivet. (The Danish National Archives).

  25. [Minutes from meeting concerning problems with artistic copyright and royalties in relation to applied art. National Association of Danish Crafts and Industrial Art] “Møller T, Referat angaaende Problemer vedrørende Kunstnerretsbeskyttelse og Kunstnerhonorarer indenfor Brugskunsten. Foreningen Dansk Kunsthåndværk og Industriel Design, 1946–1949”. (The Danish National Archives).

  26. Ibid., p. 12 et seq.

  27. Ibid., p. 11 et seq. A similar voice was raised in e.g. Sweden where the result was a limitation of copyright protection of “the small change” in the form of a “raising of the bar”, see infra note 39. According to Reichman (1992) the artistic nature of industrial design is regularly referred to by designers as a defense against the rigid and stringent requirements of a patent-style system.

  28. Supra note 26, p. 8.

  29. I.e. the decision from the Maritime and Commercial Court of 2 May 1987 reported in Nordiskt Immateriellt Rättskydd 1990, p. 269 et seq.; and the decision from the Western Court of Appeal of 20 May 1994 reported in Nordiskt Immateriellt Rättskydd 1996, p. 335 et seq. See Schovsbo and Svendsen, supra note 19, p. 38. For the other Nordic countries the experiences were equally limited.

  30. 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) going up to annual numbers of approximately 2000–3000 applications and 1000–2000 registrations. In Norway the numbers of applications and registrations climbed from, respectively, 317 and 280 in 1911 to approximately 1000–2000 in the 1930s and the following decades until activity decreased in the 1960s and figures fell below 1000 per year. In the first year of the Danish 1905 Act there were 501 applications and 422 registrations. By 1933 the numbers of applications had gone up to 3534 and registrations to 3482. During WW II, numbers decreased only to peak in 1946 with 4084 applications and 3901 registrations. After 1946 the annual numbers of applications and registrations dropped and remained under 1000 per annum until 1974. Under the 1970 Design Act applications stabilized at 1000 to 1500 per year; of these typically about 80% were granted registration. By comparison, in the period from 1883 to 1982, the highest level of applications and registrations in the countries that were signatories of the Paris Convention for the Protection of Industrial Property was to be found in France, Germany, Britain and Switzerland. Activity in these countries peaked in the late 19th century and the early twentieth century. Thus, 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 number 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, 4000 to 13,000 and 12,000 to 16,000; in (Western) Germany between, respectively, 1000 to 6000 and 34,000 to 76,000; in Britain between, respectively, 4000 to 9000 and 3000 to 6000; and in Switzerland the number of applications and registrations both ranged between 500 to 900. Source: WIPO historical data, available at http://www.wipo.int/ipstats/en/statistics/designs/.

  31. Report of the Nordic Design Law Committee, supra note 6, p. 36.

  32. Records from the Danish Patent and Trademark Office. For the period 2004–2008 the top Locarno Class in Denmark was furnishing, see The Economic Review of Industrial Design in Europe, supra note 2, p. 83 et seq. (relying on WIPO statistics).

  33. Verner Panton: sculpture/furniture (1998); Børge Mogensen: barbecue (1986); Nanna Ditzel: chair (1993), two benches, (1996); Erik Magnussen: kettle, lamp and bracket lamp (1988); Jørgen Bækmark: table (1992); Royal Copenhagen: bottle openers (1980 and 1981), cord rewinder (1986); Fritz Hansen: a partition wall (1996); Le Klint: lamp (1979), lamp shade (1979); Holmegaards: capsule (1985); Georg Jensen: bottle opener (1980), cup holders (1982 and 1983); holders for milk cartons (1983); Louis Poulsen: lantern and lantern head (1996), lamp (1999), lamp (2000); Stelton: kettle (1988); and Søborg Møbler: child seat and table (1993).

  34. After the implementation of the EU Design Directive in 2001, Louis Poulsen registered 11 designs of lamp and lamp fittings in the years 2000–2007.

  35. Many of the designs by David Lewis and Jacob Jensen. Figures derived from the register of the Danish Patent and Trademark Office.

  36. Coffee maker (1974) and tea maker (1979).

  37. See The Report of the Nordic Design Law Committee, supra note 6, p. 92. The issues were not regulated specifically in the Design Act. A special provision was instead found in the Copyright Act (Sec. 10(1)).

  38. This too was a joint Nordic effort. See for Denmark the Parliamentary Report Lov om Ophavsretten til Litterære og Kunstneriske Værker, 1951, available at http://www.statensnet.dk/betaenkninger/0601-0800/0621-1951/0621-1951_pdf/printversion_0621-1951-u.pdf 95 (limiting protection to products with “substantial artistic characteristics”).

  39. For Norway and Sweden the situation was different. Unlike in Denmark, it was thus explicitly stated in those national Reports that since it was the function of the design protection system to protect the “small change” such works should be kept out of copyright by relying on a strict application of the originality criterion for works of applied art. The courts followed suit and copyright protection of works of applied art in Norway and Sweden became limited (i.e. based on a high level of creativity) when compared to notably Denmark where no limitations were envisaged. See for Norway Rognstad (2009), p. 94 et seq., the (Swedish) Parliamentary Report SOU 1965:61, Mönsterskydd betänkende med förslag till lag om mönster mm available at http://weburn.kb.se/metadata/342/SOU_626342.htm, p. 205 et seq.; Ljungman, supra note 4 (1973 and 1976); Levin, supra note 5 (1984); Rosenmeier, supra note 17; and Schovsbo et al. (2015), p. 100 et seq. In practice the differences are maybe becoming more blurred see Rosenmeier (2009) in a comment to the decision from the Swedish Supreme Court reported in Nytt Juridiskt Arkiv 2009, p. 159 to grant copyright protection to the “Maglite” torch. The Danish Maritime and Commercial Court had arrived at the same conclusion already in its judgment of 29 October 1999 reported in Ugeskrift for Retsvæsen 2000, p. 212. For Norway, however, the traditional, stringent criteria would seem to be upheld, see Lund (2014), pp. 178–203 (pointing out that the decision by the Norwegian Supreme Court in its judgment of 27 June 2012, HR-2012-1325-A, reported in Nordiskt Immateriellt Rättskydd 2014 161-177 to accept copyright protection for the Tripp Trapp chair was based on the traditional stringent criteria). The Tripp Trapp chair has also been accepted under copyright by the Danish Supreme Court, infra and by the Swedish Hovrätten for Western Sweden in a judgment of 7 December 1998, T 548-97, see Levin (2011).

  40. Cited from the Parliamentary Report, Folketingstidende 1960–1961, Till. B 628–629.

  41. At the time of the Parliamentary Report most notably the decision from the Danish Supreme Court reported in Ugeskrift for Retsvæsen 1956, p. 237 where copyright protection of a bread cutter was denied because of the predominantly practical consideration underlying the form of the product.

  42. See for a detailed discussion Rosenmeier, supra note 17, p. 244 et seq.; and Schovsbo et al., supra note 39 (2015), pp. 78 and 102 et seq.

  43. Judgment from the Supreme Court of 26 October 1961 reported in Ugeskrift for Retsvæsen 1961, p. 1027.

  44. See respectively: Judgment from the Supreme Court of 24 April 1967 reported in Ugeskrift for Retsvæsen 1967, p. 482; Judgment from the Supreme Court of 16 October 1969 reported in Ugeskrift for Retsvæsen 1969, p. 851; Judgment from the Maritime and Commercial Court of 10 December 1997 reported in Ugeskrift for Retsvæsen 1998, p. 941; and Judgment from the Maritime and Commercial Court of 29 October 1999 reported in Ugeskrift for Retsvæsen 2000, p. 212. According to Rosenmeier, supra note 17, p. 252, works of applied art are usually granted copyright protection as long as an expert opinion statement declares that the product in question is “original” or “new”. The case law is comprehensive; for an overview see Schovsbo et al., supra note 39 (2015), p. 100 et seq.

  45. Judgment from the Supreme Court of 5 January 2001 reported in Ugeskrift for Retsvæsen 2001, p. 747.

  46. Judgment from the Supreme Court of 8 May 2002 reported in Ugeskrift for Retsvæsen 2002, p. 1715/2.

  47. The standard test for determining infringement in Danish law is based on a comparison of the works in question. If they leave the beholder with a “sense of identity” (“identitetsoplevelse”) the later work constitutes an infringement provided that it is made with knowledge of the earlier work and that the sense of similarity is not related to unprotected aspects of the earlier work (e.g. that the both perform the same technical function or express the same idea), see Schovsbo et al., supra note 39 (2015), p. 208 et seq. The test of identity was developed by Koktvedgaard, supra note 21, p. 118 et seq.

  48. In practice copyright protection was (and is) often been relied upon in a combination with unfair marketing law. Despite of the restrictive position at the time when the design law reform was initiated, supra note 20, Danish court have expanded the protection offered by unfair marketing law against imitation in parallel with the copyright protection, see generally Borcher (2003); and Schovsbo (2011) (pointing out how protection is presently sometimes provided even without any clear identification of concrete unfair practices going beyond the mere imitation).

  49. Levin, supra note 5 (1984), p. 482.

  50. Koktvedgaard (1999a), Schønning (1978), et seq.

  51. Copyright protection was “stronger” since unlike in copyright the Design Act did not protection the design in “the abstract” but only against the use of designs as applied to products. For this reason the use of design for a model (“3D”) in a photograph (“2D”) would arguably not have violated the design right according to the Nordic Acts. According to the EU design rules the situation is different (and like in copyright law), see most notably the decision from the German Supreme Court, Case I ZR 56/09, ICE, 2001 GRUR p. 1117 (finding the two-dimensional rendering of a three dimensional design to constitute “use” of the design).

  52. Koktvedgaard (1999b), p. 344 (the original version, which does not translate easily, reads as follows: “… en beskyttelse af diverse ydelser, der kan tjenes penge på, ganske uden hensyntagen til disse ydelsers kvalitet eller samfundsmæssige existensberettigelse” (warning against the over all effects of this development and calling for an EU driven effort to limit protection by increasing the minimum threshold).

  53. Reichman, supra note 28, p. 287.

  54. Ibid. at 291.

  55. A study by the Office for Harmonization in the Internal Market/European Patent Office estimated that design intensive industries generated 12.2% of EU employment and 12.8% of EU GDP in 2013, see Intellectual property rights intensive industries: contribution to economic performance and employment in the European Union Industry-Level Analysis Report, September 2013, p. 7 et seq., available at http://ec.europa.eu/internal_market/intellectual-property/docs/joint-report-epo-ohim-final-version_en.pdf. The Economic Review of Industrial Design in Europe, supra note 2, p. 164 et seq. points to a need for improving the granting process and enforcement system and reports suggestions from the stakeholders to improve the existing system e.g. to increase awareness amongst small businesses and start-ups.

  56. High-profile designers were routinely used as court-appointed experts in copyright infringement cases. In this capacity they have probably had a considerable influence on the development of copyright case law. See e.g. Rosenmeier (2001a).

  57. Decision of the Maritime and Commercial Court from 24 November 1989, reported in Ugeskrift for Retsvæsen 1990, p. 334. The court upheld the registration of the design for a T-shape diaper. Even though the court acknowledged that the shape was largely limited by technical and economic considerations resulting from the production the design was found to be sufficiently different. In Norway the design was rejected, Hæreid (1995), pp. 550–594, 587.

  58. Supra note 39.

  59. Supra point 3.2. A similar principle is applied in Norway, see Lund, supra note 39.

  60. Judgment of the CJEU of 12 December 2011 in Case C-145/10, Painer v. Standard, ECLI:EU:C:2011:798. It thus follows from para. 96 of that decision that protection must be given “a broad interpretation”. Also points 98 and 99 would seem to rule out national models which singles out specific work categories and provides for inferior (or stronger for that sake) protection. See Rosenmeier and Schovsbo (2015).

  61. Ohly (2016), p. 590 with references to the Judgment of the CJEU of 16 July 2009 in Case C-5/08, Infopaq v. DDF, ECLI:EU:C:2009:465, para. 33 et seq. and Painer v. Standard, supra note 60, para. 87 et seq.

  62. Similarly for Community Designs, see the Design Regulation Art. 96(2).

  63. Judgment of the CJEU of 27 January 2012 in Case 168/09, Flos v. Semeraro Casa, ECLI:EU:C:2011:29, para 34. This reading is contested, see notably Bentley (2012).

  64. Supra note 39 and critically towards that position Lund ibid.

  65. German Federal Supreme Court decision of 13 November 2013, I ZR 143/12 “Birthday Train (Geburtstagzug)”, 45 IIC p. 831 (2014) doi:10.1007/s40319-014-0268-x (2014 GRUR 175). See for a comment Ohly, supra note 61.

  66. Or through a generous protection through unfair marketing law against imitation.

  67. Ohly, supra note 61.

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  1. University of Copenhagen Centre for Information and Innovation Law (CIIR), Copenhagen, Denmark

    Jens Schovsbo (Dr. jur., PhD; Professor)

  2. Department of Design and Communication, University of Southern Denmark, Kolding, Denmark

    Stina Teilmann-Lock (PhD; Associate Professor)

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Schovsbo, J., Teilmann-Lock, S. We Wanted More Arne Jacobsen Chairs but All We Got Was Boxes – Experiences from the Protection of Designs in Scandinavia from 1970 till the Directive. IIC 47, 418–437 (2016). https://doi.org/10.1007/s40319-016-0477-6

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