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Freedom of Design: Should 'simplicity' be protected?

About The Author

Chris Bridges (Executive Editor)

Chris is an IT and Data Protection solicitor at a top 20 full service firm and the founder of Keep Calm Talk Law. He also contributes to Computers and Law and other sector specific publications.

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Last week some finality was finally brought to the Apple v Samsung saga concerning alleged infringements of some of Samsung’s older devices when Judge H. Koh finalised the amount of damages due for Samsung’s infringements of a number of utility and design patents in the USA.

However this was just the conclusion of the first of many lawsuits in the USA, Apple are likely to bring many more and indeed another concerning some of Samsung’s newer devices is scheduled to start on 31st March 2014. Furthermore, there have been similar lawsuits in jurisdictions around the world, including the UK, with mixed success for both parties.

Many of the lawsuits between Apple and Samsung have concerned ‘design patents’, known in the UK simply as ‘designs’ (for simplicity I now refer to both as ‘designs’). While this may sound straight forward, in reality it is far from it. How similar does a design have to be before it infringes such protection? Moreover, how vague / all-encompassing can a design be? With many lawsuits ahead of us as the technology sector becomes more and more competitive and aggressive, it is essential to answer these questions, and answer them in the correct way to prevent unfair monopolistic behaviour, or conversely to protect true innovative thinking.

Needless to say, there is divergence in opinion between jurisdictions. Perhaps unsurprisingly considering the flexibility of a US patent, US courts seem to be more ready to accept ‘wide’ design patents. The UK courts are less ready to do so and rejected all of Apple’s claims when a similar case to the US lawsuit was brought before the High Court in June 2012 (the judgement of which the Court of Appeal supported in October 2012).

So which jurisdiction ‘has it right’? Should a manufacturer be able to protect “rounded corners and a home button” (see US Patent D593087) that was found to be breached?

This may beg the question, has design intellectual property got a bit out of hand? Or should the ‘simplicity’ of an apple device really have protection? Does this not rattle the foundations of intellectual property law – the protection of original thought?

The US Case

The first hearing of the US court case returned a verdict on 25th August 2012, finding Samsung guilty of breaching three patents and two designs, awarding Apple Inc. a total of USD 1.049 billion. The design patents concerned were US Patent D593087 (the ornamental design of the Apple iPhone including the rounded corners, tapered edges, and bezel) and US Patent D604305, (concerning the layout of home screen icons). The jury found Samsung not guilty of breaching US Patent D504889 (concerning the ornamental design of the iPad).

Samsung counter-claimed that Apple had breached a number of their patents; however, all of these counter-claims were disregarded by the court.

A retrial on a portion of the damages awarded happened earlier this month (November 2013). This retrial did not reconsider whether there were infringements, but only the amount of damages owed for a certain part of the original case. The $450 million at issue was reduced to $290 million, making a total of $888 million.

The UK Case

Samsung sought a declaration that three of its tablet products did not infringe Community Registered Design No. 000181607-0001. Apple counter-claimed that the products did infringe the design. (A Community registered design is a design that is valid in all European Union Member states, similar to a design patent in the US).

Apple’s claim relied on several features of the Apple iPad, alleging Samsung had breached each of these:

  1.  A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners
  2.  A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim
  3.  A very thin rim of constant width, surrounding and flush with the front transparent surface
  4.  A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface
  5.  A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge
  6.  A thin profile, the impression of which is emphasised by (v) above
  7.  Overall, a design of extreme simplicity without features which specify orientation

Whilst this design is not the same as any of those in the US case, certain features of the design do bear similarities to features of the design patents considered in the US case.

The Approaches Taken

The UK Case

Here we consider the UK High Court case, being the more detailed. The Court of Appeal case essentially agrees with Judge Birss QC’s reasoning.

Judge Birss QC set out the approach that must be taken. First, the design should be assessed from the point of view of the informed user. This was defined as someone without technical knowledge, who is more observant than the typical consumer, has knowledge of the existing design corpus, who has particular interest in the products concerned, and who conducts a direct comparison except where it is impossible to do so. (See para 34 of the High Court judgement).

The design must then be broken down into particular features (as above), but decided based on the overall impression. If a feature is dictated solely by function, it must be disregarded (e.g. a mug would not be practical if it did not have a handle, or in this context, a tablet would be of no use if it did not have a screen).

If a feature survives until here, it must then be judged against the existing design corpus. The design corpus is past designs throughout the industry (the design corpus is defined in great detail with reference to past products in paragraphs 67 – 90). Design freedom must also be allowed. This is explained best by reference to one of the features concerned. The judge decided, considering feature i (A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners), that ‘rounded corners’ were almost essential for safety and ease of manufacturing among other reasons. Therefore, a designer could not reasonably be expected to design a device without rounded corners. The extent to which they were rounded was however, a choice a designer could make as it involved a trade-off (e.g. more rounded corners meant less space for components, meaning the device might have to be thicker).

Considering the above factors, the final test was “whether the alleged infringement produces a different overall impression on the informed user from that produced by the registered design” (para 56).

The US Approach

First, it must be highlighted that the US case was tried by jury, meaning we must consider the Judge Koh’s advice to the jury as what is important, and treat the verdict of the jury as the decision of a user (whether they are ‘informed’ or not is a separate discussion).

Judge Koh instructed the jury that a design is invalid if it is not new. This would be ‘an anticipation’, which is to be decided on the following criteria:

the single prior art reference and the claimed design patent are substantially the same if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the resemblance between the two designs is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.

Judge Koh instructed the jury that a ‘Prior Art’ is where the design was already publically known in the US, already patented in the US, already the subject of an application for patent in the US, or the invention had already been made by someone else in the US, prior to the alleged infringement. This bears similarities to the ‘existing design corpus’ test but appears much more ‘black and white’.

The judge also instructed the jury on another doctrine: obviousness. She defined this as such:

Even if a design is not anticipated by a single reference, it may still be invalid if the claimed design would have been obvious to a designer of ordinary skill in the field at the time the design was made.

A more complex test was then set out, which we do not need to go into here. This doctrine essentially equates to the ‘design freedom’ test in the UK case.

Finally, the judge advised that a design must be ornamental, or in other words not purely functional in nature, again bearing similarity to the UK case.

A Comparison

When compared side by side, the approaches taken seem largely the same, albeit it using different terminology, so why the divergence in opinion?

Whilst the patent that was most comparable to the European Design also failed in the US court, certain features of the European design that failed here in the UK succeeded as parts of other patents in the US case. I give the rounded corners feature cited above as an example that also featured in US Patent D593087, which the US court decided Samsung had infringed.

For a true comparison we would need similar designs to come before Judge Birss QC, however my gut tells me the successful US patents would not have had success here in the UK.

However, it is hard to conclusively put your finger on why. Is it simply because the US case was decided by a less informed jury? (I do not blame them, the case was certainly no simple one, hailed as one of the biggest tech lawsuits of the century, and the jury return form alone suggests this was no simple task.) I cannot imagine the jury were able to examine evidence and provide a judgement as clear and detailed as Judge Birss QC’s. If you are interested in intellectual property or technology law, his judgement really is a must read, one of the clearest and best thought out judgements I have read.

Judge Birss QC, I suspect would have been more impartial in his judgement, and having practiced IP law for many years is likely better placed to decide. It would also be interesting to see what decision Judge Koh would have come to herself, had she been the one handing down judgement in the US case.

Without the same designs coming before the UK courts, or Judge Koh giving her own opinion, it is very hard to tell why the outcomes differed, and unfortunately, it is something we will likely never know.

Who has it right?

Being unable to differentiate the approaches at any great length makes it difficult to answer this question. It seems misplaced to criticise the US judgement purely based on the belief that the jury may not have been as able as Judge Birss QC. Furthermore, my own opinion that complex cases such as this should not be tried before a jury is just this, an opinion.

I can however assert that I believe the UK courts have come to a preferential decision. I do not believe that Apple should be able to assert designs of simplicity. This is not to say Apple’s products are not well designed. They are without a doubt sleek, fashionable, and well manufactured. They are “cool” unlike Samsung products (Judge Birss QC’s words, not mine!).

These are some of the reasons Apple has been as successful as it has been. Apple already arguably dominates the smartphone and tablet industry, so why does it need to bully other manufacturers out of the market? I would think Apple would have enough self-confidence to not resort to such tactics.

In my personal opinion, it is not plausible to patent simplicity as I find it a complete contradiction to intellectual property law, which is designed to protect original thought. Why then, Samsung owe Apple $888 million in damages, baffles me. I find it troubling that the courts of one of the biggest markets in the world is able to come to such a decision. This is a barrier to competition and should not be present.

It can certainly be said that the UK courts are currently providing consistent judgements that simplicity cannot be protected via intellectual property law. It was recently decided that Cadbury’s could not trademark the use of "The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods."

Whilst we will all likely agree, that infamous Cadbury’s purple colour screams Cadbury; however, it would seem wrong for a company to ‘own’ the colour.

Another recent example of an attempt to protect simplicity is the recent scrabble litigation. Mattel, the owners of the board game attempted to assert a trademark for the iconic scrabble tile against Zynga, a company that had used a similar tile in a digital version of a game that was essentially scrabble.

Again, whilst we would all recognise a scrabble tile and associate it with the game, it would seem wrong to provide any protection for a ‘3D ivory square with a letter printed on it’. Zynga provides some images (shown in the judgement) demonstrating the absurdity of such a claim due to the wide use it would prevent.

Apple shares something in common with Cadbury and Scrabble – an incredibly strong brand that creates instant association in our minds. It perhaps feels unfair that they should not be able to protect that.

However, ultimately, a line must be drawn, or everything we possess could potentially be the subject of an intellectual property dispute, and innovation would cease due to the resultant monopoly created. Imagine a world where only one company could produce a product. There would be no consumer choice.

Further Reading

Samsung v Apple, UK High Court, Samsung Electronics (UK) Limited v Apple Inc. [2012] EWHC 1882.

Samsung v Apple, UK Court of Appeal, Samsung Electronics (UK) Limited vs Apple Inc. [2012] EWCA Civ 1339.

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Tagged: Commercial Law, Intellectual Property, Technology

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