When Apple Computer, Inc appealed the rejection of their application to register their standard screen icons as registered designs, the outcome surprised a few.
Who: Mr. Justice Jacob, Apple Computer Inc and the Designs Registry
Where: Chancery Division of the High Court, London
When: October 2001
Apple Computer Inc tried to register as registered designs various icons as they appear on screen when their computers are switched on. Design registration is currently available for “features of shape, configuration, pattern or ornament” which “appeal to and are judged by the eye” and are “applied to an article by an industrial process.” Registration gives its owner a monopoly right to stop allcomers (regardless of whether they know about the existing icon or its registration) from using the same or a very similar design unless they have the registered owner’s consent. This protection is much greater than copyright, which might have been thought to be the main source of protection for icons, which are essentially two dimensional artistic works. For instance, knowledge of the copied item must be shown to establish copyright infringement, and whereas copyright lasts only for the life of the creator plus 70 years, a design registration can last for ever provided it is renewed as required.
In his judgement, Jacob J commented that whatever the understanding under existing English law, it was reasonably clear from the recent EU Designs Directive that icons like this should be capable of registration. Since the Directive should have been implemented in the UK 28 October 2001, he felt obliged to take it into account.
The Designs Registry opposed on the basis that the designs had to be visible at the point of purchase for the “eye appeal” requirement to be satisfied. Jacob J, however, was clearly persuaded that visible on the shop shelf or not, the icons were an essential part of the appearance of the article which people buy. The Judge had personally noted for example, that advertising for a new operating system recently launched (unnamed of course but presumably Windows XP) proclaimed that its icons were attractive, and he saw no policy reason why the icons had to be visible at purchase point for the relevant design to be appealing to the eye.
The Judge also felt that a point taken by the opposition on icons not classifying as “articles” should be possible to deal with by amending the registration application to describe the item to be registered as something like “a computer with an operating system which displays the icons concerned.” Furthermore, the icons were built into the software whose inclusion in the machine was “part of an industrial process,”so all the requirements for registration seemed to be satisfied.
Finally Jacob J sought to pre-empt any “floodgate” concerns by emphasising that the icons in question were part of the computer as built, and not included later, and the case was sent back to the Registry to sort out the question of exactly how the “article” to be registered should be described.
Why this matters:
On the face of it this seems like a dangerous decision, opening up to registration and monopoly rights a whole range of 2 dimensional designs which have not previously been regarded as protectable by anything other than copyright, trade mark registration or possibly the law of passing off. What about the cover of a book or magazine, for example? This is surely likely to feature aspects of pattern or ornament applied to the item by an industrial process and designed to appeal to the eye. The decision may go to appeal of course, so this may not be the last word, but in any event, Jacob J was correct to take account of imminent changes to UK design law which, whatever the outcome of this case, will make this form of protection for creative material much more popular than it has been to date.