Sean Flynn and Ben Cashdan
The World Intellectual Property Organization (WIPO) draft Design Law Treaty (DLT) is analyzed by three international design law professors in a video seminar on “What is at Stake in the Design Law Treaty” published by American University’s Program on Information Justice and Intellectual Property and Blackstripe Foundation.
The DLT is set to be finalized in a diplomatic conference this November. But it has received very little scholarly attention. The prevailing legal and policy discourse has largely dismissed the significance of DLT, characterizing it as merely a “procedural” agreement. The seminar challenges this perception, examining provisions that may blur the line between procedural and substantive law and analyzing its procedural elements potentially yielding distributive effects with far-reaching economic, social, and developmental implications.
Topics addressed in the seminar include:
Does the present draft address concerns raised by delegations, especially those in the Global South?
What about disclosure of Traditional Cultural Expressions? And the term of protection given to registered designs? What about dotted lines – ambiguous design features where originality may not be claimed by the designer, and where there may be grey areas in the law?
Most of all, who is most likely to benefit from the Design Law Treaty in its present form?
The panel of design law professors in the seminar include:
Margo Bagley, the Asa Griggs Candler Professor of Law at Emory University School of Law, and is also an advisor to the African Union on international IP negotiations.
Professor Christine Farley, who teaches design and trademark law, including in PIJIP’s annual summer session in Geneva
Thomas Margoni, Research Professor of Intellectual Property Law, Faculty of Law and Criminology, KU Leuven, who teaches EU design law.
The seminar is chaired by Professor Sean Flynn, Director of PIJIP, produced by Black Stripe Foundation, South Africa, and supported by a grant from the Arcadia Foundation.
Watch the full seminar here.
The transcript of the seminar analyzing the World Intellectual Property Organization’s draft Design Law Treaty has also been released by American University’s Program on Information Justice and Intellectual Property (PIJIP), and follows here:
Design Treaty Workshop Transcript
[Sean Flynn] (0:22 – 3:58)
Greetings, everyone. My name is Sean Flynn. I’m the Director of American University’s Program on Information Justice and Intellectual Property, and I’ll be serving as our moderator today.
We’re here because the World Intellectual Property Organization will soon, coming this November, will be convening its second Diplomatic Conference of the Year. This is the name for the convening that finalizes treaties. And I don’t know if any recent diplomatic conference has ever been called that hasn’t resulted in a treaty.
So it’s in all likelihood there will be a new treaty called the Design Law Treaty by the end of November. But this Design Law Treaty has actually received very limited scholarly and expert analysis. The prevailing legal and policy discourse has largely dismissed the significance of the treaty as being merely procedural, since it largely governs registration requirements for design law in the contracting states.
But we’ll hear today from three prominent international intellectual property and design law scholars that have been studying the text of the draft treaty, and that can help explain some of its purposes and potential impacts on the countries that might join it. We’re providing this event as part of PGIP’s Geneva Center Project, which is supported by the Arcadia Foundation, and which seeks to provide scholarly analysis on intellectual property, international intellectual property processes like this. Our panel today consists of three design law scholars, as I mentioned.
We have with us American University and PGIP’s own Professor Christine Farley, who teaches design law and trademark law, including in our annual summer session in Geneva, Switzerland.
We have with us Margot Bagley, who’s the Asa Griggs Candler Professor of Law at Emory University, and she’s also an advisor to the African Union on International Intellectual Property Negotiations, including this one. And Margot has written several articles and book chapters on the design law treaty, and I’m fairly confident in saying she’s the most published scholar on the design law treaty in the world.
Finally, we have Thomas Margoni, who is Research Professor of Intellectual Property Law at the Faculty of Law and Criminology at KU Leuven, and he teaches EU design law, and he has been spending the last few weeks preparing a section-by-section analysis of the design law treaty. And so, as I mentioned, we’re going to begin with kind of three broad questions for our panel. A different of our professors will kind of frame the issue, but then we’ll give each of them an opportunity to jump in.
And then after those three questions, we’ll have kind of a section-by-section. We’ll take a few of the more debated provisions and try to explain and unpack them a little bit. And especially in that moment, members of our audience might pitch in and ask specific questions, which we’re happy to try to answer.
So we’re going to start off today with a question for Thomas or a question for our whole panel, but with Professor Margoni leading off, which is, Thomas, can you provide us kind of a high-level description of the design law treaty in the context of existing design law? What is design law? Why does it matter?
[Thomas Margoni] (4:02 – 11:06)
Thank you, Sean. Well, first of all, obviously, it’s great to be here. Thank you for organizing this great event with such great colleagues.
I think, you know, your first question is already, you know, one of the core questions, because one of the aspects that I think is characteristic of the DLT, of the design law treaty, is that it attempts to harmonize procedurally something that on the substantive level is very much not harmonized. And this is a first aspect that we should take in due consideration, because if I look at it both at the international level, but as well as the design law history at the EU level, what we have experienced was perhaps the other way around. On the international dimension, I’m sure that Christine will offer a much more precise account, but, you know, for the EU level dimension, we have to keep in mind the fact that, you know, even only in 1991, which is the date in which the EU had issued the green paper on the protection of industrial design, we had within the European Union, which at the time included 12 member states.
So, you know, already the European Union is a cohesive socioeconomic area, but back then, even more so, well, we already had at least five different models or approaches to the protection of designs, of industrial designs within these only 12 countries. So this, I think, gives already a first indication of how diverse, if we compare it, for example, with copyright, with trademarks, with patents, or the other elements of the IP family, a first element, a first aspect of diversity, so to speak. Design law is much less, let’s use the word harmonized in a non-technical way than what we have in other areas of law.
And it is so not only globally, but until very recently, even, and perhaps even now, even within the European Union. So what we protect, the object of protection, is it industrial design or is it applied art? Is there a difference between these two concepts?
What is the scope of protection in terms of the rights that we afford is a form of protection that is closer to industrial property rights. So normally through registration, we have a form of protection that is opposable to any third party, or we have elements more typical of copyright law and non-registered rights where the form of protection is more against acts of direct copying. And this is something that, for example, this duality is present in EU design law.
Is it a form of protection that is well aligned or how does it overlap with other forms of protection? Because essentially, perhaps we haven’t said it yet, but designs, at least EU design law, is very much a form of protection that focuses on the appearance of a product. That’s the definition that EU law gives to it.
But of course, the appearance of products is maybe protected depending on the conditions by many other IP rights. So how does this interface or overlap work? Just to give you an example, and then I give you back the floor, in the EU right now, we have a form of community registered design protection.
So a unitary title registered that covers the entirety of the EU territory, so 27 member states. We have a form of community unregistered design protection. So again, a unitary title that however doesn’t require registration and it is available for a shorter amount of time.
Three years. We have a form of national registered right protection that is additional, that you as a designer could decide to file for both. So you have a community registered design and a national registered design.
And they overlap, I would say 90%, maybe after the latest developments, even 95. But in certain specific areas, procedural, for example, but also the protection of spare parts might still be different. In some member states, at least until when the UK was part of the EU, we had a form of national unregistered design protection.
And then we have, of course, the accumulation with copyright, which is mandatory in the EU after the reform of the regulation and the directive respectively, or better, the directive 1999 and the regulation 2001, but which leave the conditions of accumulation with copyright to member state to be decided. So the degree of originality may vary. Well, if even within such a, you would say cohesive socioeconomic union and it’s the European Union, we have so much diversity.
Globally, this degree of diversity is even wider. And the choice that we had in the European Union was to start with bringing substantive law closer before we looked at procedural law. So this is yet another element that to me is quite novel in the DLT approach.
So we look first at the harmonization of procedural or certain procedural aspects in an area where substantive law is not harmonized and perhaps even lacking in some country. So the theoretical, practical, and even policy implication of this choice to me remain, well, interesting, but certainly unsettled. And this is, I think, is something that we will need to unpack.
Thank you very much.
[Sean Flynn] (11:08 – 11:27)
Thank you. And then let me just, before we move on to the next question, just kind of open this one up. Margot, do you want to add anything on kind of what, from a Europe, both the US or maybe a global perspective, what is design law?
Why does it matter?
[Margot Bagley] (11:29 – 12:13)
Sure. Thanks. And thank you also for inviting me to participate.
Glad to be here. Thomas has really pointed out a lot of key points about the challenges of the lack of harmonization and the design space. And part of the reason why that matters is because it has become more important and people are realizing the value and being able to get this relatively inexpensive type of protection that can yet be very strong.
But it is really one of the least harmonized areas, I would say that, and trade secrets, least harmonized areas. I, in my articles, and I went back to look, you know, TRIPS devotes two articles to interest your design.
[Sean Flynn] (12:13 – 12:17)
Just the first, we’ve used that acronym for the first time, Margot. Do you just want to say what TRIPS is?
[Margot Bagley] (12:17 – 12:52)
Sure, sure. The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property. And that is the primary substantive international IP treaty that we have in the world covering various kinds of intellectual property.
And two of its articles relate to industrial design, six to copyright, seven to trademark, eight to patent. So in terms of what we have agreement on or have had agreement on, design is really not one of those areas.
[Sean Flynn] (12:54 – 13:32)
And Christine, I want to bring you in, and maybe the question starts bleeding into the next question, which is, you know, we’ve mentioned that this is an area where we actually do not have a lot of substantive harmonization. There’s not a previous major substantive agreement requiring anyone to have design law. No one has to have design law under the international corpus, and yet we’re harmonizing procedures.
So what’s the impact of that? And I know you could bleed in the next question, which is kind of how have we dealt with these kinds of issues in other treaties? Are there precedents for harmonizing procedures before substance?
[Christine Farley] (13:33 – 16:20)
Okay, can I say what I wanted to say first before I answer your question? Thank you for giving me the opportunity to speak. Yeah, I’m really interested in the contribution that Thomas has made, because I’m really fascinated by the idea of protecting design.
And I think it’s not surprising that we don’t have further harmonization. And I think it’s not surprising that we don’t have further international development of the law. And that’s because the idea of protecting design is a conundrum, because design itself is hard to even, it’s hard to even put parameters around what it is we’re talking about.
So I think, and I love design. So I’m speaking to you as a person who is just obsessed with design. I think design is solving problems aesthetically.
So that means that it is necessarily intertwining aesthetics and function. And those are kind of two lanes that we try hard in intellectual property to keep separate. So once we’re looking at the intersection, it makes figuring out how the law should address this very complicated.
And that’s why two jurisdictions have come up with quite different approaches. And that’s why we don’t have a lot of international development, which is a problem for kind of charging ahead with procedure before substance. And I think also the main reason that we justify intellectual property protections is to incentivize activity that we think would not happen at quite the pace without such legal protections.
And I think it’s hard to make that case when it comes to industrial design. So if industrial design is making things look more attractive, I think firms have already a natural incentive to do that. They will do that with or without design protection.
They do that with or without design protection currently, if we look jurisdiction by jurisdiction. So I think we start with like a really interesting problem and then we dive into this. So Thomas has started.an
Now I’m going to segue if it’s okay, unless you want to jump in and say something else, Sean.
[Sean Flynn] (16:21 – 16:49)
I think that works. Although, I mean, it raises a little bit of a question. So in the patent and the copyright field, there are different theories for why we protect.
And one of them is incentive theory, but another is kind of a moral theory. Like we think that inventors and authors have a moral right to the protection of their inventions. Do we see something similar in design law or is this really a purely industrial right?
Is the only justification for design law really incentives?
[Christine Farley] (16:52 – 26:59)
There may be some moral rights seeping in and there certainly is some ideas of moral rights that we see seep into litigation strategies, to theories of the case, to kind of articulating motivations for finding protections on behalf of designers. But once we really take that on explicitly, it becomes really problematic. Because if you compare design rights to copyrights, they look very different.
Design rights are very short, shorter than patents. Copyrights are very long. What we’re doing and how we’re doing it look very different when we talk about a article of manufacture, which is the language that we use in US law, right?
It has to be directed to an article of manufacture versus a work of art. So again, I think if we’re really focused on the kind of details of how we solve this problem to make something that works also look good, the legal approach, the way that the form of that protection should look very different from the form of protection, which follows from the impetus to kind of protect the author’s freedom to express themselves and to get credit for their expressions. It should look very different from moral rights.
And so now jump in. Okay, so Thomas got to lead with some really big and interesting ideas. Margot gets to follow with what I think people who have paid attention to this treaty think is maybe the more interesting part of the treaty.
And I am in the middle with the task of covering these substantive procedural treaties. So I’m going to just say, I got the boring end of the stick in that draw. So I want to kind of, before we really get into the articles of this treaty, I want to just put it in the kind of historical and treaty ecosystem context.
WIPO, the World Intellectual Property Organization administers a number of treaties directed to registration of trademarks, patents and designs. Within that list of treaties, there’s a much smaller list of treaties that are specifically directed to the administrative scope within national offices with regard to what they can demand of an applicant. And those thus far have only been directed to patents and trademarks.
So we have three of these kind of application treaties and they are the Trademark Law Treaty of 1994, which was followed by the Singapore Treaty on the Law of Trademarks of 2006. And the Singapore Treaty kind of built on the Trademark Law Treaty and kind of adapted it to the modern digital application space. And then the corollary in patent law is the Patent Law Treaty.
So Trademark Law Treaty, Patent Law Treaty, now we’re talking about Design Law Treaty and the Patent Law Treaty was adopted in 2000 and came into force in 2005. So what this kind of subset of treaties do and this is where the Design Law Treaty would be, is that they are all trying to streamline and harmonize the application system. The objective of streamlining and harmonizing the application system is to make it easier to protect the intellectual property across multiple jurisdictions, right?
Because we have substantive minimum and otherwise countries have discretion. I mean, this is how the Paris Convention is directed. The countries have discretion as to how they do it.
So these treaties are minimizing that discretion in terms of how they do it in the application process. These treaties, the Trademark Law Treaty, Singapore Treaty and Patent Law Treaty have been greatly appreciated by patent holders and trademark holders because they make it cheaper to achieve protection in different jurisdictions. And because they increase the predictability of the outcomes of filed applications or they increase the predictability of achieving a registration.
How do they do this? The applications take less time on the part of the agents and attorneys that file them because those actors are in a space of harmonization, right? That the application looks similar in different jurisdictions.
I have to jump through exactly the same hoops and all these different jurisdictions. I don’t have to jump through different hoops depending on what jurisdiction I’m in. So it takes less time to put the application together.
It also is cheaper because if one jurisdiction requires certain kinds of certifications, something has to be notarized, you need an apostille, then those are additional expenses and these treaties do away with those kinds of additional certifications. There also would be further expenses if different jurisdictions require different kinds of depictions of the applied for mark or design or a way of depicting the invention. So having consistency there reduces expenses and it increases predictability because it diminishes the possibility of idiosyncratic refusals.
So by and large, these treaties are thought of as having done good things for patent and trademark holders. But I want to just pause and kind of, because we’re at the moment where we can maybe think, think with some openness about how they do it and who this helps, I want to ask those questions. All of these treaties tout benefits for small and medium-sized enterprises.
And the discussion around the Design Law Treaty also touts this benefit, that this will be a benefit for small and medium enterprises and for individual designers. And I want to push back on that idea a little bit. So this is the Matthew effect, right?
Which is why is it that when we have a neutral policy that offers a benefit that anyone can take advantage of, why does nevertheless that policy seem to make it easier for the rich to get richer and the poor to get poorer? So this is exactly right, that, right? Anybody can take advantage of these kinds of treaties because they reduce the costs and they make it easier for anybody to extend their protection globally.
It just so happens that some firms are already in a position to extend their portfolio globally. And some firms and individuals are just not in that position to do so. So it will be of benefit to anyone who wants to extend their protections globally.
But this benefit, I think, will be a much smaller benefit for small and medium enterprises and for individual designers. So if the treaty really wanted to create benefits for SMEs and individual designers, it would think about maybe reducing the barrier to entries by recognizing that the playing field is not already level. And it would actually try to make it even cheaper and even easier for small and medium enterprises and for individual designers.
And it could do that through, for instance, a sliding scale of fees or other things. So this is something that could be mandated in such a treaty, that might be an uphill climb, but it could be at least permissive that national offices could have sliding scales. The USPTO has a sliding fee scale for patent applications.
And I think by making it at least permissive, it plants the idea in national offices that this could happen, this might be a policy to consider, and it at least would make it explicit that this would not run afoul of this treaty. Yeah, so I think that’s all I wanted to say about those existing treaties.
[Sean Flynn] (27:00 – 27:21)
So let me just open it to Margo or Thomas. Do you want to add anything, emphasize anything, respond to anything that Christine mentioned as far as contextualizing this within the current international context? Margo says, no.
[Margot Bagley] (27:21 – 27:23)
I do actually, but not as much.
[Sean Flynn] (27:23 – 27:24)
You do, sorry.
[Margot Bagley] (27:25 – 28:48)
I’m sorry, I’m a little distracted. I think Christine raised some really important and wonderful points about the fact that there’s a disparate benefit, if you will, in these kinds of contexts, because yes, we’re making it easier for anyone who wants to to get protection, but there’s an additional twist here that I want to point out, and that is that design rights in most countries are not examined formally before they are granted. I’m sorry, not examined substantively before they’re granted.
It’s a formalities examination, which means we’re allowing the creation of more rights and putting the burden on third parties to challenge those rights if they have been improperly granted, if they don’t comply with the laws that the countries have actually set up by having no substantive examination. So that creates some other kinds of concerns that’s a bit different. Patents, we generally have substantive examination trademarks.
We may or may not, but I think more likely than not. So that’s a real concern, I think, is the lack of substantive examination and that burden on third parties to challenge these increased numbers of rights that will be seen.
[Sean Flynn] (28:52 – 28:53)
Thomas, you want to add anything?
[Thomas Margoni] (28:56 – 31:07)
Perhaps just the observation and not very original that, many of these remarks that Christine and also Marco just made are somehow present in the last 20 years of works of the SCT. So obviously there have been discussions within the various delegates and members that have identified at least to a certain degree, some of the problems that we have discussed. And yet there has been this decision to advance nonetheless in this direction, which to me have to say, well, perhaps it’s not surprising, but certainly there has been an acceleration in this conscious and willing acceleration towards this direction without solving some of the problems connected with the overlaps between rights or who can actually benefit from this form of protections, or again, which specific provisions can be identified that may compensate or introduce the necessary flexibility at the country level. So these conversation are somehow present.
There have been questionnaires, there have been exchange of technical information, and yet there was a decision to proceed towards the DLT. So a treaty that prioritize the harmonization of procedural rule in absence often of a harmonized substantive rule. So to me, this is a very interesting development that I would like to understand better because I think that it is one of the keys helpful, if not necessary to decipher the various parts and elements of the treaty.
[Sean Flynn] (31:09 – 31:42)
And maybe Margot, if I can come back to you again for just a moment, since you are the most published person on the Design Law Treaty in the world. There are a couple precedents here, right? I mean, so can you mention, you mentioned the TRIPS Agreement already, and maybe you would say a word about what’s in the TRIPS Agreement.
And then there’s also something called the Hague Convention, which bears on design law process. Do you want to just set the stage a little bit before I move off this topic of what other international agreements exist in this space already?
[Margot Bagley] (31:42 – 33:05)
Sure, so the Hague Agreement is an international treaty relating to designs, but it basically makes it easier for you. You can file an application and you can get protection in a bunch of countries through that one application if those countries choose to grant that registration. In that sense, I’d say it’s a bit more like the WIPO Madrid Protocol.
But this treaty is different in that if you want to file directly in a particular national office to get design protection, that’s what the DLT is going to facilitate by, as Christine and Thomas noted, reducing those costs. Well, yeah, Christine focused on this, reducing the cost by having similar requirements. You don’t have to wonder, okay, well, what does France require and what does Brazil require?
Because they’re going to be limited in what they can require you as an applicant to provide. And that is one of the signal achievements or goals, as it were, of the DLT is to have this closed list of things that an office can require an applicant to provide. So that actually, I guess, segues into my next topic.
[Christine Farley] (33:05 – 34:55)
Actually, could I just take a few seconds just to emphasize the point that Margot made after I spoke, because it’s really an important one. So if this treaty makes it easier and cheaper for people to extend their protections to different jurisdictions that they wouldn’t have without this treaty, that should result in a net larger number of registered designs, especially in countries that hadn’t been prioritized by those firms. And so that very well may likely be developing countries.
So it might be that developing countries are the recipients of these additional registrations. And so that point that Margot made about, well, since they’re not substantively examined, they’re just kind of formally examined, they will sit there. They might not be valid registrations.
They might not meet the requirements of the law, but the burden would be on someone else to invalidate them. And so the question is, who cares most about invalidating a registration in my hypothetical in a developing country? And it may be that designers in that locale, local designers are the most impacted.
And those local designers, I think are going to be in the category of SMEs and individual designers. And so while this is touted as having impacts, especially for SMEs and individual designers, I think Margot’s point makes very clear that there could be additional detriments for exactly that group.
[Margot Bagley] (34:56 – 35:20)
Yeah, absolutely. Absolutely. And I love Christine’s point that if you’re trying to make a system better for small designers, then make it cheaper.
Reduce the filing fees and things like that. But the benefits apply to large and small entities who are seeking this protection. So yeah, that strikes me as a bit disingenuous.
[Sean Flynn] (35:22 – 37:07)
So we’ve painted a picture where through the harmonization of procedures prior to substance, that we may end up in a situation where especially developing countries are facing more applications for design protection if they have design protection. The treaty itself doesn’t require that they have design protection. That those applications, even though there’s a frame that maybe this helps SMEs, that probably the ones that will most take advantage of it are the large corporations predominantly existing in Europe or the United States.
So it’s these firms that will probably take the most advantage and have a real increase in the number of applications they sign around the world. So it appears that the distributional effects of this treaty may be advantaging largely multinational firms with a lot of design filings, perhaps to the detriment of some developing country designers who are now going to have more barriers to wind through. They’re going to have more protections to make sure they’re not invading.
So what is there in this treaty that might benefit or that might even have been drafted by developing countries? And so let me turn to Margot on that because one does find the mention in several articles of the concept of traditional cultural expressions and the interests of those who govern and possess and steward traditional cultural expressions. What’s in it for them?
So Margot, do you want to describe some of these positions for us and where they’re at?
[Margot Bagley] (37:08 – 48:31)
And actually those mentions did not actually begin or show up until 2014 when a group of countries, strongly the African group of countries started looking closely at the Design Law Treaty and noticing not only did it lack perhaps things that would be beneficial, but because they’re going to be more rights in more countries, probably more developing countries, if there are problems with what’s being registered, that’s going to be a greater burden on their designers to have to challenge those rights. And at the same time, negotiations are going on at WIPO and the IGC, the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore or Traditional Cultural Expressions, looking at providing a disclosure of origin requirement, mandatory disclosure of origin requirement for genetic resources and associated traditional knowledge, which as Sean mentioned, that was a treaty that was adopted earlier this year. But there are also two other texts that would provide new kinds of IP rights for traditional knowledge, for traditional cultural expressions. And in the traditional knowledge draft text, there is the possibility of a disclosure of origin requirement for any kind of IP, patents, trademarks, designs, et cetera.
And so looking at what was being done at the IGC and what’s being done in the Standing Committee on Trademarks with the Design Law Treaty, we had a concern about this article, Article 3, which is, as I said, the centerpiece limiting what a country can require an applicant to provide. So contracting party may require that an application contain some or all of the following indications or elements. And that’s it.
There are notes that go along with each of the articles, which is very helpful. I believe they’ve been separated out now, but you can find a separate document with the explanatory notes. Says it proposes a closed list of indications.
It’s the maximum contents of an application that may be required by a contracting party. And there were concerns, particularly in the African group about lacking the ability even to require disclosure of origin of traditional knowledge, traditional cultural expressions or genetic resources that could be used in creating a protectable design. And while design is an area that is, Thomas and Christina both noted, not really harmonized, not seen as widely as important as some of the other areas, it is important and it’s becoming more important.
Just want to zoom through some pictures that are of designs that could be protected. Some of them actually are registered and that might have relevance to indigenous peoples, local communities, and might, if someone did register them, need to be challenged. Just examples to help illustrate why inserting permissive ability to require disclosure of origin was important to a number of delegations.
It was started by the African group, but supported by a number of delegations. So let’s just zoom on through these Australian designs. These, and it’s hard to search for designs that might include traditional knowledge, traditional cultural expressions, because you’re looking for pictures with words.
That’s really hard. We see a lot about cultural misappropriation these days. The Fashion Law blog has a lot.
Please just keep on going. Just to give a flavor of the use in fashion. And the thing with design protection, as in other areas of intellectual property, the subject matter has expanded.
And so even though we say, even in the U.S., so there’s a U.S. design patent for Adinkra symbols from the Adinkra, Ghanaian Adinkra alphabet. Somebody get a good design patent on the letters of the alphabet, really. But this is a Chokwe mask, and you see variations of that on a bag.
So fashion is one area. It’s not the only area, which is the Sotho blankets, that very important to the people in the Sotho, and yet we see Louis Vuitton creating a shirt. And there can be different kinds of harms that can come from this misappropriation.
And whether it’s registered or not, there can be harms. But when you register the right, then you’re even if a local designer was doing something with their own design, you possibly create the ability for them to be stopped or to have to come up with money to challenge and get that right and validated. This was a Romanian sheepskin vest that we see in Christian Dior’s 2017 catalog.
Keep going. Romania. So it’s not only developing countries where we see this kind of activity taking place, but that’s where there’s a particular concern, especially in relation to the fact that there are many wonderful designers in developing countries, but they may not be able to afford to access the design system to protect their own works.
So again, as Christine noted, not necessarily making it easier in a way that’s going to benefit everyone easily. Another Louis Vuitton example, First Nations example from the United States. I gave a talk on this in New Zealand and folks from the New Zealand Ministry of Business Innovation and Employment came up to me and said, we have some examples for you.
These shower curtains that depict these Maori scenes and profoundly hurtful, offensive to the Maori people. And a shower curtain is an article of manufacture if you think of industrial design. So these are the kinds of things that could be protected and yet it’s problematic.
The African group inserted into article three, the ability for a country to require disclosure of the origin of source of traditional culture expressions, traditional knowledge or biological or genetic resources utilized in creating or incorporated in the design. And so this is not mandatory. This is permissive, but allowing policy space.
And even though the negotiations with the Design Law Treaty had been going on for a while, the rest of the world was not stagnant and other things were taking place. We had in 2010, the Nagoya Protocol on Access and Benefit Sharing, creating really a framework for access and benefit sharing in relation to genetic resources and traditional cultural expressions. We had the Aripo Swakopmund Protocol right here, which puts duties on a number of African countries who have to prevent the acquisition or exercise of IP rights over expressions of folklore, traditional cultural expressions or adaptations and make sure that the relevant community is identified.
Well, if you can’t even ask about the origin or source of traditional cultural expressions used in a design, how are you going to be able to comply with this requirement? So these are other things that were going on that led to a need for this policy space. Policy space, as well as coherence with arguments that countries are making in other fora, like the WIPO IGC about potentially having disclosure of origin for traditional knowledge and other kinds of intellectual property rights, traditional cultural expressions, traditional knowledge.
There’s been a real question about genetic resources and why should there be possibly a disclosure of genetic resources since design only protects the way something looks, not the way it works. And I’d like to use this example from the book, Perfume, book, movie, about this man in the 1800s. He was born with no body odor, but had a very well-defined sense of smell.
And he set out to create a perfume that would make people love him because they felt uncomfortable around him because they couldn’t smell him. And he was successful, but he did it by killing on women, extracting their pheromones, their scent compounds and making this wonderful perfume. And fast forward to the 21st century, should he be able to get a utility patent on that?
Because it’s a novel, useful, non-obvious composition of matter. It meets all of the requirements, but you can imagine that some countries might not want to grant protection on an invention that was created by murdering people. And we do see examples of those kind, if you go ahead in the slides, of those kinds of restrictions in some countries in the utility patent context.
For example, in China, if you violate genetic resource acquisition laws, you’re not entitled to a patent. Or in the EU, if you look at the Court of Justice of the European Union’s BRUSLA, the Greenpeace decision, immoral activity in terms of destroying human embryonic stem cells, you can’t get a patent for that. And so if we transfer that to the design space, the fact that genetic resources are used in creating a design could be something that countries would want to know.
And if there’s a legal or a moral activity in that, they might want to not allow those designs. So I just got some examples, pictures here. Something that’s growing and important is biodesign.
And that is the use of genetic resources in particular ways to create designs. Black-tailed wasp and mushroom mycelium forming the fungal network. So the genetic resources themselves are creating a design.
3D printed seeds, please go on to the next one. And some of it is in the context of sustainability, environmental actions, lots of examples here. Genetically modified silkworms creating fluorescent silk that you could use to make a dress.
Scarf designs created from bacterial secretions. That’s another area where the genetic resource itself is creating the design, but you’re putting together whatever you want. So it matters for genetic resources as well.
This was a display of someone leather grown from DNA extracted from a hair sample from the deceased designer, Alexander McQueen and making these articles. And it matters for genetic resources as well. And because this is an area where countries have not necessarily been legislating, they need the policy space to figure out what they want to ask about or not.
And to close that off so soon when as Thomas noted, people haven’t been really harmonizing on substance seems problematic. So I’ll stop there.
[Sean Flynn] (48:33 – 49:35)
So I think that’s a brilliant moment to kind of bring it all together and the meshing of the procedure with the substance and a series of moral issues because defining, limiting, and I think several of the panelists have mentioned that word limit. Ultimately, international IP treaties limit the sovereignty of countries about what they can do. And here it’s on a procedure, it’s on a process, but by framing and limiting the number of procedural questions you can ask, you may not be able to get the kind of information to meet substantive concerns.
So for instance, can you require disclosure of traditional cultural expressions of genetic resources, et cetera? And if you can’t, then how do you meet possible substantive concerns you might have in regulating with this space? Christine, Thomas, I want to enter and respond to anything Margot said before we move on to section by section.
Christine, you want to go first?
[Christine Farley] (49:36 – 50:54)
Yeah, I guess such an interesting topic. There are some proposals, there’s pushback on this proposal of permissive disclosure. And there are suggestions that, well, maybe we could carve out a little space without naming exactly that, like just leaving kind of a generic opening and maybe that would be a permissive space in which a country could mandate such a disclosure.
And that would be better than not having the space be permitted, but I think it would be far preferable to name it the way the African group proposal reads because it therefore serves the purpose of at a minimum just raising awareness of this kind of cultural appropriation, which I think, Margot slides about fashion, it’s happening all the time in front of our faces, but the public may not fully appreciate that. So I just want to say that there is another proposal, which I think is less good.
[Margot Bagley] (50:55 – 52:18)
And if I can just respond to that really quickly, thanks so much for bringing that up, Christine, because my most recent paper on this, which is a very short book chapter, but it’s called Design Law’s Forbidden Words. You know, these words that can’t be spoken, traditional knowledge, traditional cultural expressions, genetic resources. No, you can ask for that stuff, but just don’t say it.
And I’m like, well, why not? And I agree, it is better to be clear, especially since during the negotiations we’ve had such a discussion about this. And also to the last point I made about, you know, it may not be a requirement for eligibility per se because the alternative B that was added in 2019, an indication of any prior application or registration or of other information of which the applicant is aware that is relevant to the eligibility for registration of the industrial design.
So that brings now us to arguments about, well, what does it mean to actually be relevant to the eligibility for registration of the industrial design? And you don’t need to get into all that, that you should be at the policy space to request a required disclosure of origin of traditional knowledge, traditional cultural expressions, genetic resources.
[Sean Flynn] (52:22 – 52:25)
Thomas, do you want to jump in with any comments on this topic?
[Thomas Margoni] (52:29 – 55:17)
It was an extremely interesting presentation to listen to. So thank you very much, Margo and Christine. You know, perhaps it becomes clearer in the next section of this workshop when we go through the articles with some examples, but one feeling that I have and might be more perhaps theoretical in how it is formulated, but I do think it has practical implications is the feasibility of a conceptual distinction between procedure and substantive law.
Obviously, in terms of positive law and how we write it down, we can as lawyers who have been trained to distinguish them, you know, the law school courses often, you know, distinguish procedure from substantive law. But once you, you know, you take your, I don’t know, advanced degrees or pass the bar, et cetera, you do realize how illusory is that distinction. It is a way of classifying certain rules for better understanding, but at the end of the day, one influences deeply the other.
So one of my, I don’t know, reflections is, you know, whether we are, by pretending to only harmonize procedural rule, what we are actually achieving are, well, in Margot’s words, I think removing that policy space, or in any case, you know, trying to have the first mover advantage. So we do understand what it could imply to already, you know, make that decision. And we are somehow preempting the possibility of certain countries to then develop their substantive law in a certain direction.
And I think that examples such as those that Margot gave, but also, you know, I don’t know, substantive examination, as Christine pointed out, terms of protection, the legal effect of having to indicate the class of products for which registration is sought, all these provisions mean very little if they’re not attached to their substantive law implications. So I think to a certain degree, you know, it is purely illusory to distinguish them. And I wonder what does it mean to proceed in this direction, pretending that we’re only doing it on a procedural level.
I think that that’s also one of the difficulties in, you know, in unpacking the implications of this treaty.
[Sean Flynn] (55:18 – 56:52)
As Thomas mentioned in the next section, we’re going to start going through some of the articles. And for each of the panelists, I’ll turn to you and you can pick out an article that you want to mention, or you can clump a couple together if you want. Ben will pull them up on the screen and we can kind of analyze those.
And so for those of you in the audience, I know some of you are delegates or experts who may have looked at the treaty. If you have anything that you want to ask about, you can put it into the chat or you can wait as we go, but we’re happy to turn to any section of the treaty you’re interested in. So if any of you are coming with specific questions or you want to load some up, please think about those.
So let’s move to our section by section comments. And rather than kind of going necessarily in order of the treaty, I’d like to just turn to each of you and feel free to pull out a section that you think is interesting. Maybe something we haven’t discussed already.
It could be a new theme. It could be something on an existing theme, but it’s an opportunity to kind of look at some specific texts, especially texts that might be either under debate or might need some amendment or from a public policy perspective, et cetera. Christine, let me turn to you first since you’re a PIDGIP professor and I get to preference you and say, what do you want to put on the table?
What haven’t we talked about? What are some of the provisions that you think are interesting?
[Christine Farley] (56:52 – 1:02:37)
Okay, I’m going to keep with my theme of picking on the seemingly boring topics. And it is strategic that I do this because the treaty that Margo is just talking about, the recently concluded treaty got a lot of attention. People were paying attention to that genetic resources treaty.
And this treaty, which has kind of been proceeding in parallel has gotten comparatively little attention, which is one of the reasons that we’re having this workshop. And it’s because some of these provisions just seem like boring procedure. And so I want to kind of pick out one such seeming technicality and kind of just explain why I think it’s worth thinking about.
So article, this is in article six. And this is the mandatory, not permissive, mandatory grace period. So what countries may do and what they must do is always something to pay attention to.
So there isn’t a decision yet. You can see in that first paragraph that although a grace period is mandated, it’s not clear whether it should be a six month or 12 month period. So what is a grace period?
A grace period is something that comes from patent law. And it is a concept that allows the in patent law context allows the inventor to do things which in a certain time period won’t destroy novelty. And so even though they disclose the invention before the application, they can still proceed with an application.
And because there is often, not always, but often a novelty requirement in design applications, the same thing could happen with a design application that the designer may disclose the design before the application. And that might under a certain jurisdictions law destroy novelty and make that design ineligible for protection. So this allows the designer and in certain circumstances, third parties to disclose the design within this period of 12 or six months.
And nevertheless, the designer can go forward and make the application. So why do we want such a thing? Because again, it opens up the amount of applications that can proceed, the amount of registrations that will issue.
And I think the reason why in the context of design is that it allows firms to kind of try things out, right? It allows firms to get funding, to test markets, to determine which markets are going to be worth an investment. Often in the field of design, a firm may have several kind of designs in the same space and they may be released without already a decision about which ones to really invest in.
And so it allows firms to operate in this way. You know, they can kind of crowdsource to see which are the designs that are really going to be valuable and then proceed and make the investment of these global applications with those firms. So then it allows them to do that.
They can launch the product and then protect the product. Let me just see if I have some notes. I want to make sure I’m not.
So again, this is a benefit for everyone, not just large firms. And it’s been especially touted for small firms with the idea that a sophisticated actor, Nike, right, the company Nike is going to make all kinds of shoe designs in one season. And maybe not all of them are going to go to market and maybe not all of them are going to be protected with a design right, a design registration.
But an unsophisticated actor, a small and medium enterprise, an individual designer might inadvertently destroy their novelty, right? Without the sophistication to know that some jurisdictions will require novelty, they might release it on their webpage. And so this helps that small designer just in the same way that not having copyright formalities helps individual artists.
I think that’s definitely true. But again, I think the way companies are really going to take advantage of it is in that first scenario I described, the Nike’s kind of launching, testing, expanding. I think that really helps them much more.
So there doesn’t seem to be, I think this article isn’t clear on what disclosures count. So I think there’s still some room to talk about that, but I just wanted to raise this article.
[Sean Flynn] (1:02:38 – 1:03:15)
And I see on this one, Christine, there’s three or four, three different versions. And I don’t know what the difference is. I see the first one longer.
Do you have any comments on kind of the differences between these? Would you kind of, not taking any particular side, but just from the perspective of a design law professor, do you see one of these as kind of preferable to another or would you strike the whole thing? Or what’s kind of a possible positive proposal or things that negotiators should be looking out for in this, in article six?
[Christine Farley] (1:03:16 – 1:03:45)
Well, I don’t, no, I don’t have a view about the different proposals that are included. I know there is, I think China is pushing back a little bit. And so I think there are, yeah, I think there are some differences of opinion by some of the interested countries in this negotiation.
And that’s the reason for these differences.
[Sean Flynn] (1:03:47 – 1:03:55)
Okay, great. And Thomas, Margot, anything to add on grace periods before I turn to you on a different article?
[Thomas Margoni] (1:03:56 – 1:05:52)
If not that EU design law has a similar provision and of course it is as Christine has, you know, very clearly and convincingly explained something that might help unsophisticated applicants. So there is some possible positive impact on individual designers, on SMEs, et cetera. But naturally it also introduces an element of uncertainty because there is a period of 12 months where what happens if someone else comes up independently with the same design without copying, so not through an abusive act or, you know, other situations, for example, where the clear third party effects are not stated in this treaty.
Obviously it is a procedural treaty, but here, once again, going back to my point of earlier, they clearly distinguishing between procedure and substantive is very unsatisfactory because we create a procedural envelope that, you know, is empty because the content should be the substantive law, but the container influences the content. So again, it is a situation that as Christine said, could have good positive outcomes, but also not. So, you know, it’s a way of legislating that leaves a bit of uncertainty to the way in which then it can be, the actual work can be implemented.
[Christine Farley] (1:05:55 – 1:07:40)
Can I just respond a little bit to that? I think it’s a great point Thomas made about the possible third party impacts. So in the patent law treaty, there was a proposal for a mandated grace period, and that was not included in the ultimate treaty.
The European Union did not favor it. And to a point that Margot made, which I think is a little, was made, I think needs to be emphasized, which is the space for developing the law on the ground before it gets to this level. There’s a cost benefit analysis, right?
Is the grace period going to net benefit whatever constituency a jurisdiction wants to benefit, maybe local designers, small and medium enterprises, or is it going to harm them through this third party impact of they don’t know when they go ahead and make an investment in the design, whether there’s some design already out there that has this grace period. And we can talk about deferred publication and submarine applications and all the rest. Well, in the case of the grace period and patent applications, I think the EU did a study that showed it really wasn’t going to be of great benefit.
And so in a cost benefit analysis, they didn’t favor it. And I think a lot of jurisdictions who haven’t really been able to do that but have been paying attention to this development in this treaty might want to do that cost benefit analysis.
[Sean Flynn] (1:07:43 – 1:08:07)
Great. Let’s move to a next article. Margo, let’s shift back over to you.
And you spoke a lot about article three, which has the permissive disclosure provision. Do you want to, what are some other articles that you have your eye on as the negotiations move forward?
[Margot Bagley] (1:08:08 – 1:08:13)
Sure. So this is one I’m curious, Christine, were you planning to talk about the dotted lines at all?
[Sean Flynn] (1:08:13 – 1:08:14)
Go for it.
[Margot Bagley] (1:08:14 – 1:11:13)
Okay. All right. So we have the draft treaty and there’s also draft regulations that go along with the treaty.
And of course, the treaty itself says if there’s any conflict between the two, the treaty governs, but the regulations are important. And I don’t know if people are paying enough attention to the regulations. So rule three in the regulations says details concerning representation of the industrial design.
And paragraph two basically says the representation of the industrial design may include, in other words, applicants may choose to do this even if countries previously previously have not been allowed to do this, may include matter that does not form part of the claim design. If it is identified as such in the description and or if it is shown by means of dotted or broken lines. This is something that the United States allows but there are a number of countries that don’t allow for the use of dotted lines to disclaim basically part of the design to say this actually isn’t included.
And it can make a difference, an important difference in the scope of protection that a design receives if you use these dotted lines. So this is an example from the Apple v. Samsung litigation over smartphones.
And that’s a picture I think by Don Studebaker. He shows and you see the back of the Apple phone there’s a dotted line on the side for the back as well as the front. There’s a dotted line around the circle and Samsung didn’t have the circle.
And you can see the back of the Samsung phone has this curve at the bottom. And because Apple used dotted lines as opposed to showing a solid line, if they had used a solid line then perhaps the Samsung phone would not have infringed because it doesn’t look the same. But by using a dotted line, we’re saying we don’t really care what the back of it looks like.
That’s not part of what is claimed. And that did allow a jury then and by using the dotted line on the front for that little button saying, we don’t really care what it looks like. There’s just something.
You get broader protection. And one could argue that that’s also substantive as opposed to procedural. And it might seem like a little thing but it makes a difference when you’re doing an infringement suit whether you have solid lines or whether you have dotted lines to allow something that looks different to still be included in the scope of what you have rights over.
So that’s when I wanted to point out that might just be flying under the radar but could actually make a difference.
[Sean Flynn] (1:11:14 – 1:11:37)
And Margot, you mentioned and you show that this provision exists in what’s referred to as regulations as opposed to the treaty. And what’s the distinction? Is the diplomatic conference negotiating the regulations as well?
And does this receive the same kind of procedure for enacting or amending, et cetera?
[Margot Bagley] (1:11:37 – 1:13:50)
What’s the difference between a treaty and- That’s a really good question. And the basic proposal is for the design law treaty and there’s a basic proposal for the regulations under the design law treaty. And I don’t know if that is common.
We certainly didn’t have it in the recent IGC treaty. And I don’t know Christine or Thomas, if you’ve looked at if that has been done in other WIPO treaties, but yes they are both part of the basic proposal that will be negotiated at this diplomatic convention. So the treaty does have precedence and it’s something that if I go back to article three in the disclosure provision, there has been a push to say, Oh, African group and India and Saudi Arabia and whoever else supports it.
It doesn’t need to be in the treaty. It can be in the regulations and that’s fine. The problem with that is, as I mentioned, the treaty says if there’s a conflict between the two, the treaty governs.
Moreover, if you look at article 23 of the treaty, the regulations can be changed relatively easily. I mean, we’ll have to see what ultimately gets negotiated but the regulations, any amendment of the regulation shall require three fourths of the votes cast but you only need half of the members to constitute a quorum so you could have less than half changing the regulations. And if it’s the half that shows up that doesn’t like that provision, it could be gone because it’s in the regulations.
Whereas article 26, I believe it is of the treaty. Yes, says this treaty may only be revised by a diplomatic conference. So if it’s in the treaty, it’s not changing easily.
So it’s very important for the language to be in the treaty not in the regulations, which can be changed. I mean, it still will take effort but they can be changed much more easily than the text of the treaty in the future.
[Christine Farley] (1:13:50 – 1:16:08)
There’s a similar pattern in the patent law treaty and the trademark law treaty. And we could easily go back and look at those diplomatic conferences and see if they discuss the regulations at the same time. And I think this is following that playbook to a large extent.
So I just wanted to, again, emphasize the same point. I’m going to be a broken record here. Anyone can take advantage of that rule that you can basically, and I’m going to use Sarah Burstein’s language and I know Sarah is in the audience, partial designs.
You can claim a partial design. You can claim just a rounded corner. You can claim just a bit of a design.
Small and medium enterprises can, individual designers can, Apple can. But the fact of the matter is that I think when you only have a budget to file one design application you’re going to probably file it on the whole design for reasons of limited resources, for reasons of sophistication, and back to Thomas’s point about this not being harmonized. This is an idea that is strongly rooted in certain jurisdictions and non-existent in others.
So I think you’ll see if this goes forward that companies like Apple will, for every design, for every designed article of manufacture, file cascading design applications with a million different bits. So Margot showed you basically the face shape as a design patent. Well, for the Apple phone, Apple filed lots of different design patents on little features.
And so that will be a strategy that’s available to everyone but will primarily be exercised by multinational corporations who have the sophistication and the budget to file lots of little pieces so they can get at lots of possible infringers.
[Sean Flynn] (1:16:08 – 1:16:09)
Yeah.
[Margot Bagley] (1:16:09 – 1:16:11)
Should we answer now questions?
[Sean Flynn] (1:16:12 – 1:16:42)
Yeah. So we’ve clearly showing Apple v. Samsung woke up the design law experts in the room.
And so Sarah just asked a technical question. I think it was, so does this rule three allow countries to let applicants use broken lines or require them to? And Katie McGee asks, what would be the benefit of not allowing for a dotted line claim or even more broadly impact of different ways to formulate that rule?
[Margot Bagley] (1:16:43 – 1:17:24)
Yeah. I read rule three as requiring countries to allow applicants to use dotted lines because it says the representation of the industrial design may include. So you have to allow them if they want to to include that.
That’s how I read it. In terms of what would be the benefit of not allowing for a dotted line disclaim? Well, you’re going to constrain the scope of protection for a design.
The dotted lines really do allow you to capture more things as infringing than if this is exactly it. You’ve got solid lines only. This is my exact design.
[Thomas Margoni] (1:17:25 – 1:20:52)
Perhaps, I think this is a very good example of a very technical provision somehow hidden because it is not in the treaty, but in the regulations, which for example is present in new design law. Again, I believe it is the manual, but it is interesting to note that over time, now I’m saying it off the top of my mind so I couldn’t offer specific cases, but I feel confident with that. We have seen in new corporate law sophistication in the which designs are submitted precisely because there has been litigation or opposition procedures where a design has been held invalid precisely because applicants were not fully aware of the importance of drawing back in the days, sorry, the design in the correct way.
So here we are in a situation that if we want to make a parallel with patent law, the claim is not in a verbal element, but it is in how you design, how you draw the design so this technicality is the dotted line, the shading, the broken lines, the two parallel slightly inclined broken lines to suggest that you’re not claiming the actual size from a purely technical point of view are useful to add more nuance to what you are claiming. So I could see them favorably, but within an environment that is characterized by a homogeneity, a degree of homogeneity in who are the various applicants because otherwise Christine and Margot had made the same argument for other examples, we are simply favoring the more financially sound applicants who have the knowledge, the legal knowledge and the technical capacity of taking advantage of these technical subtleties.
So again, I think that is one of those provisions that in itself could lead to two opposite results depending specifically on the way in which they are implemented in the specific countries. And once again, gives me this sense of unsatisfaction with the text of the treaty, because it creates this space. It could be argued that the space could be filled in then by the member state, but we have to be realistic.
There will be member states or contracting parties, sorry, able to take advantage of this possibility and others that because of the lack of capacity, the lack of knowledge, technical, legal, administrative will not. So I think that this is an important aspect to put these provisions under the right light to understand how they will impact the life of the designer in that country.
[Margot Bagley] (1:21:00 – 1:21:38)
I’m sorry, Sarah had an additional, I wasn’t saying anything about verbal disclaimers. The language doesn’t talk about verbal disclaimers, just the dotted lines. And I’m happy to- Yes, Sarah is an expert.
No, what it says is matter that does not form part of the claim design, I’m sorry. The representation of the industrial design may include matter that does not form part of the claim design if it is, oh, you’re right. Yeah, if it is identified as such in the description and or, yeah, that would be a change shown by means of dotted or broken lines, yeah.
[Sean Flynn] (1:21:39 – 1:22:09)
Interesting. Yes. And Sarah Bernstein, as I think people have mentioned is also a design law professor.
Yes, she is. And we’re very happy to have you today, Sarah, also a friend of the program. And I think our producers might be able to let you jump in if you want to comment further, ask any further questions, et cetera.
I know this is all an area that you have a lot of expertise in. So Ben, can you let Sarah speak?
[Sarah Bernstein] (1:22:09 – 1:22:23)
But I don’t have comments, but that’s, I mean, that’s a really big deal. And I would say a really big problem for clarity of claiming in the US if you allow verbal disclaimers in addition to visual disclaimers, that’s a really big problem.
[Margot Bagley] (1:22:24 – 1:22:25)
Thanks, Sarah. Thanks for pointing that out.
[Sean Flynn] (1:22:26 – 1:22:45)
Okay, great. And can continue to intervene. Margot, let’s, or let’s see, we just did Margot on the dotted lines.
Thomas, let’s pass over to you, pick an article to talk about what’s on your mind, what other provisions interests you that maybe we haven’t talked about as deeply yet?
[Thomas Margoni] (1:22:46 – 1:27:08)
I have, well, I have two. I’ll let you choose. One is on the term of protection and the other one is on the, sorry, I want to mention it, right?
But on the publicly available database, which is, I think, a group of articles or a better, I think that the full meaning of that provision should be read in connection to two different articles. On the term of protection, maybe very briefly to me is a bit surprising to see that in, again, in a treaty that claims to be procedural. That’s article six-fifth, I think, right?
Yes, I believe something similar, but Christine is the expert, might be present in the proceedings. Perhaps the provision to have a term of protection of 15 years is a bit surprising to me in the sense that it’s not what we have in many countries and it’s not what we have an international level where we don’t have much, but the two mentions that we have, which are correctly identified in the alternative proposal are either a minimum of 10 years. I think, I don’t have it with me, but it should be article 26 of TRIPS or the reference to the Hague Convention, which indicates in a bit more convoluted way, article 17, thank you, the possibility to have renewable terms of five years, which is often the case.
So I think that this is an aspect that perhaps is, you know, has not the level of, you know, implications of some of the topics that we have discussed so far, maybe it’s more upfront, okay, as a term of protection. But I think that the first proposal, it’s a bit an outlier, so to speak, it’s strange to see that there is a proposal that is not aligned with existing international with the text and the wording of the two international treaties that already partially addressed that issue. So that’s something that I certainly noticed.
I also believe that if we look at the note accompanying article nine, not to be, so the first proposal, if you, yeah, footnote eight, I think that, yeah, sorry, okay, I have to go down on my own screen, otherwise I cannot read it properly. But I think it says that, you know, this provision could be implemented flexibly, for example, with a mandatory renewal of periods of five years. What is a mandatory renewal mechanism?
I mean, either, I mean, you know, if renew, if you have the possibility to renew, then it cannot be mandatory. If it is mandatory, it is not a real renewal mechanism. And if you are compelled, like there is an obligation on the applicant to renew, what does happen if the applicant does not renew?
What does it happen to the applicant is subjected to, I don’t know, a fine. And what does happen to the legal title is, you know, does it lose validity, remains valid? So I think that even, you know, that this provision is criticisable in point of the clarity and of the law.
So it is a provision that written as it is written right now may introduce a degree of legal uncertainty that is undesirable, of course, in international lawmaking. So maybe I stop here and I don’t know if there is desire or appetite to discuss the public databases maybe later. I have more questions than answers on that, I must say.
Go ahead, Christine.
[Christine Farley] (1:27:09 – 1:28:47)
A couple of things on that duration, term of protection topic. One is I can see the real value in having successive permissive periods of five years up to a limit of 15. And that is, as we see in all intellectual property, there is a harm to creativity and innovation to lock down intellectual property that’s not being commercialized or exploited.
So this, and especially in the field of design, where designs like fashion, you know, are trendy. What people wanted, they wanted for no more than five years. It doesn’t make sense to lock that down for an additional 10 years.
And so let the firm themselves make the choice of whether it’s worth protecting or not. But if there will be renewals, permissive or mandatory, whatever that is, then that is the topic that needs to be addressed further in a treaty like this. Because the topic of renewals is addressed in the trademark law treaty.
That was one of the things that was under consideration, which is how to make the system predictable and efficient by streamlining and having consistency harmonization around what the process of renewing a trademark is. Of course, that doesn’t apply in patents. So it’s something specific to trademarks.
And because that kind of is contemplated and kind of isn’t contemplated here, it’s not fully developed, what a design renewal process would be.
[Sean Flynn] (1:28:53 – 1:29:12)
Good. Margo, anything to add on that? I mean, you mentioned before the Hague Convention or agreement is a different agreement in this area.
And it has, is it five-year terms? It’s a different term language in the Hague agreement, I believe.
[Margot Bagley] (1:29:14 – 1:29:48)
It is. I mean, I just, I agree with Christine’s point. It’s something that we certainly have a problem within the copyright space in terms of term going too long.
And having folks to affirmatively renew, it puts more into the public domain, which arguably is beneficial to others who want to base their works on it. So I think that there’s definitely a need for more discussion on that. And that moving to an approach that’s five years renewable would be preferable.
[Sean Flynn] (1:29:50 – 1:30:55)
Great. So maybe we can pull up for a kind of common discussion the other provision that Thomas talked about. I think that’s nine quinquis, quinquis.
And that’s on the exceptions for publicly accessible design databases. So this is kind of an interesting provision that not all of us are super clear on how to interpret, but I think the intent follows from some of the concerns, Margot, that you raised. So maybe I can turn to you first.
I mean, my quick summary would be that this provides an exception to public databases for traditional cultural expressions, that traditional cultural expressions could pull themselves out of the database. But maybe you can explain it in a little more detail and also what the purpose is. And then Thomas, maybe you can ask some further questions that you have in interpreting this provision, if that makes sense.
[Margot Bagley] (1:30:56 – 1:33:17)
I don’t know that I can fully explain, but I would say that, yes, I think that what you’re suggesting is the goal that IPLC, Indigenous Peoples and Local Communities, so it says IPLC, but that’s what it refers to, should be able to control whether their works or works that are based on their works are included in publicly accessible databases. Because, and there is an idea about almost repatriation of things from the public domain or the idea that, okay, it wasn’t supposed to be public, but it’s public and now there’s nothing we can do about it. And it’s like, no, maybe there are things we can do about it.
And if you take it out of the database, then arguably it is going to be less accessible to others who might further use it without permission or in the context in which it is supposed to be used. So it is giving agency to IPLCs regarding their traditional cultural expressions, their traditional knowledge. And I wouldn’t be surprised to see quite a bit of discussion about this.
This is the idea of traditional knowledge, traditional cultural expressions being in databases is a very sensitive topic in the IGC. It has gotten a lot of discussion because there’ve been countries who are like, oh, we don’t need disclosure. All we need to do is you put your protected work in a database and examiners can look at it and then they won’t grant the patent.
And there are many flaws with that particular argument, but one of the flaws is that many IPLCs don’t want their designs in public databases period because of the possibility of things that can be done with them that they don’t know anything about that again, they would have to try to challenge, it’s expensive. So there’s the question of registrability. And then this seems to be addressing a separate question of even if it’s registered and we aren’t able to get it unregistered, can we get it out of the database?
And I think that’s an interesting point for further discussion, further investigation.
[Sean Flynn] (1:33:19 – 1:33:29)
Thomas, you want to follow up? You’ve been reading this and trying to interpret this provision as well. Questions, comments, thoughts from you on this?
[Thomas Margoni] (1:33:29 – 1:37:53)
Yeah, no, I think of course Margot is the expert here, but naturally, I think that one of the questions for me is to what extent 9th quarter and Quinquis are part of the same conversation or not. So 9th and quarter, yes, because they are two alternative proposals and essentially, 9th mandates contracting parties to create a system of electronic applications and a publicly available electronic information system, which must include an online database of registered designs. 9th quarter is the alternative proposal where the shell is substituted by a main.
And until here, I understand, I mean, of course, I see the benefits, for example, operating in the EU of the fact that there is an online database and I can consult that. And naturally, I think this has, may have very positive impact on transparency, on accountability, et cetera. But obviously, this comes with a cost and the question naturally becomes who has to bear this cost and is it a cost, is it a system that benefits whom, right?
So until here, I think to me, the situation is clear. With Quinquis, I have to acknowledge, I gave for granted that we were talking of the same publicly accessible database, but the definition in subsection one stops a couple of word earlier. So it may not be the same publicly accessible database, in which case then I entirely agree with Margot.
I think she has a very good point and also a very nice paper on the problems connected with this publicly available databases of TK. Now, my doubt is whether the publicly available database of article nine, Quinquis, is not the TK database, but is the register design database, which must include a TK if the TK is part of the registration and Quinquis creates an exemption for that TK to be included. Well, the register designs implementing the TK already exist.
So you may have a contracting party, the possibility to exclude that TK, TCE from the online database, but you will still have that TK, TCE embedded in products that can be sold at malls and markets, et cetera. So I’m not sure if there is simply a short circuit there, because we’re talking about so many exemption to the exemption to the mandatory disclosure of a special rule, or we’re talking about two different databases. Because if that’s the case, I think Margot already explained it, and there is no need for further discussion.
But if, and that was my original reading, the publicly available database is a register design database and not a database of TK, then perhaps removing that online availability, even though I do understand the problem of having a secret and sacred TK available online, only fixes a small part of the problem because the product can still be sold or anyways regulated in a different article. But we are preventing people who might want to consult that database from being aware of the existence of that register design implementing the TK, TCE, but not biological information because the language is slightly different. I don’t know if it is intentional.
So I don’t know. Again, the expert is Margot and Christine. So please correct me.
[Margot Bagley] (1:37:55 – 1:39:29)
No, and let me say one thing, and I’m not an expert on everything in relation to this, not at all, not at all. But this is a provision that was added in the special session last year. So it’s not had a chance to have a lot of discussion like some of the, I mean, you can see there are a number of provisions that are relatively new that were added in the prep comm, were added during a general assembly or were added in the special session.
And I wouldn’t be surprised to see further modification of the wording. It’s not always, when you’re making these interventions, you don’t necessarily capture everything that might be included. So I agree, there is some ambiguity, I think even between paragraphs one and two of article 15 as to whether they are intended to be dealing with the same one.
But the second one certainly talks about a publicly accessible database of registered industrial designs. And so that’s the part I was saying that there’s a desire to be able to remove it. And you’re right, the products would still be out there, but nevertheless, there can still be a desire to take it out of the database.
And that’s a valid and justifiable desire on the part of IPLCs to not want to have it in there, even if they can’t control everything in relation to it.
[Christine Farley] (1:39:30 – 1:39:33)
So- Can I jump in on this conversation, Sean?
[Sean Flynn] (1:39:34 – 1:39:35)
Yeah, please. Yep, Christine, go.
[Christine Farley] (1:39:37 – 1:42:25)
So I think that, and this might just be a function of these provisions not being fully processed, but being rather new to the text. One thing I noticed is this nine king keys kind of anticipates that it’s in or out of a database, which may be asking for more than is necessary to respond to the harm that would be caused. We’re talking about designs.
We’re not talking about patents or trademarks. So designs must be visible. We’re not talking about smells or processes or things that you describe with words.
And so maybe it’s only the fact of the registration could be included in the database. An explanation in words could be included in the database. It’s just the visual representation which might be extracted from the database in these circumstances.
And I think that one of the reasons for it, even though goods may be circulating with exactly that design in the marketplace, with or without the registration, is exactly, it kind of ties back to the debate we had in the United States about whether trademarks should be registered that include disparaging material or material which is contrary to morality. And that is that there seems to be kind of like a next level harm when a government office is kind of giving the kind of force of state, by including it in the database. And so I think there is, even though, I think there could logically be a separate response from an IP office than the response of consumers in the marketplace.
I don’t think those need to be completely in tandem. The other thing I wanted to say, and again, I think it’s for lack of processing, I was kind of struck by the word owners. So these things under the nine king keys, one, only with the permission of the owners.
And we think of, we actually have lots of debates about ownership and property around intellectual property, but that might be a bind. And that word might need to be opened up to custodians or some caretakers of other sorts.
[Sean Flynn] (1:42:26 – 1:45:24)
So we have actually come to the end of our allotted time. We’ve spent two hours talking about the Design Law Treaty. And I introduced this topic by noting that the Design Law Treaty is seen as fairly uncontroversial to most people who hear about it, to many of the people even who are negotiating it.
But I at least personally am left after this session feeling like this is an incredibly controversial topic. And there’s a lot of remaining text that hasn’t been fully developed and it hasn’t been fully negotiated. And there’s a lot of space for a lot more work.
Now, this treaty is coming up to a diplomatic conference in November and it’s already September. So there’s a lot of work to be done between now and then. We are, I’m sorry, we can’t take another question, producers.
No, we’re done with the time. If you can just come back to the panel, thanks. And so there’s a lot of work to be done between now and then.
This is a new project for PIDGIP, as I mentioned. We have the ambition to kind of connect scholarship with public policy being negotiated in Geneva. And so I really want to thank Margot and Thomas and Christine for applying their minds and their expertise to a topic that at least for two of the three is very new to us.
And Margot, we’re really thankful for you to have you with us and your deeper expertise in this area. For members of the South Center and developing countries, we’ll be hosting a special closed workshop on September 27th in Geneva. So you can expect invitations for that.
And for the rest of the public, you can watch infojustice.org where we will publish blogs on this topic and to PIDGIP papers where we’ll be publishing at least one section by section analysis and maybe more work from the others. And from all our scholars, both on the panel and in the audience, I’m reaching out to you, Sarah. If you’d like to publish anything on this topic, we will circulate it to delegates, et cetera.
We have a working paper series for short papers. And then we have our InfoJustice blog for even shorter works. So if you see even a small thing that you want to get out into the public and feed the negotiation, we are most happy to publish any side, any kind of analysis from any person taking any point of view just to feed the public domain on these sources.
So panelists, thank you very much. Audience, thank you very much. And we will endeavor to publish a version of this video hopefully early next week to serve as a resource for those who couldn’t make it.
