MASTERARBEIT - Consuelo Álvarez 31_07_2014

MASTERARBEIT
Weiterbildender Masterstudiengang Gewerblicher Rechtsschutz
Studienjahr 2013-2014
“In Which Cases Does Copyright Offer Less Protection than Design Right?”
Design protection in Europe
Betreuer Prof. Dr. Jan Busche
Vorgelegt von María Consuelo Álvarez Pastor

TABLE OF CONTENTS
I. Introduction
II. Designs as subject matter of intellectual property rights
A. Designs in a international context
1. International protection of industrial designs
2. Overlap with other forms of intellectual property rights
B. Protection of designs in the European Union
1. The Design Directive and the Community Design Regulation
2. Principle of cumulation of protection between design right
and copyright
3. Lack of harmonization of copyright laws
C. Situation in Germany
1. National protection of designs
2. Copyright protection of designs
III. Eligibility for protection
A. Threshold for copyright protection
B. Threshold for Community design protection
IV. Scope of protection
A. Copyright protection
1. Moral rights and exploitation rights
2. Abhängige Bearbeitung and Freie Benutzung
3. Earlier intellectual property rights
B. Community design protection
1. Rights conferred by the Community design
2. The overall impression
V. Conclusions
VI. Bibliography
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VORWORT
Für die Beantwortung der Frage, “In welchen Fällen bietet das Urheberrecht
weniger Schutz als das Designrecht?” müssen mehrere Aspekte in Betracht gezogen
werden. Erstens habe ich durch meine Analyse festgestellt, dass Designs als Arbeit der
angewandten Kunst manchmal als eine Arbeit zweiter Klasse betrachtet worden sind
und viele Länder sehr streng bei der Zulässigkeit des Urheberrechtsanspruchs handeln.
Es ist hauptsächlich ein kulturelles Problem, aber es ist bestimmt ein Aspekt, welches
zu berücksichtigen ist, wenn es um den Umfang des Schutzes geht, den ein Design in
den verschiedenen Mitgliedstaaten haben wird.
Zweitens bringen die Territorialität und der Mangel an der Harmonisierung von
Urheberrechtsgesetzen Unklarheit bezüglich des Anspruchs des Urheberschutzes in den
verschiedenen Mitgliedstaaten.
Der dritte Aspekt betrifft die Voraussetzungen des Anspruchs; die nicht
vorhandene Registrierung führt zu Mängeln von Beweisen des Eigentumsrechts,
während die Subjektivität des künstlerischen Werts Unklarheiten mit sich bringt.
Außerdem wird der Grad der Freiheit nicht in Betracht gezogen.
Viertens, bezüglich der Bandbreite von Rechten; es stellt die längste Dauer des
Schutzes im geistigen Eigentum zur Verfügung und die moralischen Rechte schützen
den Autor, besonders beim Urheberrecht, in seiner persönlichen und intellektuellen
Beziehung zur eigenen Arbeit, die eine untrennbare Verbindung zwischen dem Autor
und der Arbeit zur Verfügung stellt.
Fünftens, die Beschränkungen im Urheberrecht bezwecken den Ausgleich der
Rechte zum Schutze des Urhebers und der Rechte der Leute, die sich für den Gebrauch
der Arbeit interessieren.
Sechstens, ein früheres Urheberrecht kann die Nichtigkeit eines
Gemeinschaftsdesigns voraussetzen.

! "!
I. Introduction
Intellectual property can sometimes be protected by different
set of laws. These include laws relating to industrial and
intellectual property making it possible that the Copyright,
patents, trademarks and design rights overlap.1
In this regard,
the article 17 of the Directive2
establishes a general principle,
which is the Principle of cumulation of protection of design
right and copyright, leaving further determination to the national
legislation of the contracting States. In cases when copyright
and design rights overlap, it will be useful to know which way
of proceeding will provide our object a wider scope of
protection.3
!
1
The Berne Convention for the Protection of Literary and Artistic Works of
1886, 9th
of September of 1886, as revised at Berlin on November 13, 1908,
then at Rome on June 2, 1928, at Brussels on June 26, 1948, at Stockholm on
July 14, 1967, at Paris on July 24, 1971, and as amended on September28,
1979, S. Treaty Doc. No. 99-27 (1986): The Berne Convention already
settled the protection of “works of applied art” considering them “artistic
works”.
2
Directive 98/71/EC of the European Parliament and of the Council of 13
October 1998 on the legal protection of designs, OJ L 289/28 of 28.10.1998
(hereinafter Design Directive). Article 17 stipulates that “[a] design protected
by a design right registered in or in respect of a Member State in accordance
with this Directive shall also be eligible for protection under the law of
copyright of the State as from the date on which the design was created or
fixed in any form. The extent to which, and the conditions under which, such
a protection is conferred, including the level of originality required, shall be
determined by each Member State”. (The underlining is not of the original).
3
The means of protection of the industrial designs has been of concern
throughout the existence of design protection: T. Cook †, “The Cumulative
Protection of Designs in the European Union and the Role in such Protection
of Copyright”, Journal of Intellectual Property Rights, Vol. 18, January 2013,
pg. 83-87; H. Bodewing and H. E. Ruijsenaars, “Alternative Protection for
Product Designs A Comparative View of German, Benelux and US Law”,
(IIC 1992, 643); H. C. Jehoram “Cumulation of Protection in the EC Design
Proposals”; C.Krüger, “Designs Between Copyright and Industrial Property
Protection” IIC 1984, 168; A. Nordemann and F. N. Heise.
“Urheberrechtlicher Schutz für Designleistungen in Deutschland und auf
europäischer Ebene” (ZUM 2001, 128), 134-135, Berlin/Potsdam.

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The first problem that appears when considering the
copyright protection of designs is that Copyright within the
European Union has not been completely harmonized; we
cannot speak of European Copyright as we refer to a European
Patent, a Registered Trademark or Community design.4
Despite
the rules adopted in the European Union in order to correspond
some areas of copyright law among the member states, the
national laws mainly carry the regulation of this topic. As a
result, the legislation of each country follows its own criteria to
consider the protection of a work object of copyright protection.
On the other hand, copyright, harmonised in Europe through
the adoption of the Directive 2001/29/EC5
, automatically grants
the author of an original work, of literature, art, music, science
or didactics, with a series of exclusive rights. Such rights will
expire after 70 years post mortem auctoris. A decisive
requirement for a work to be protected by copyright is its
originality, which will be established by each Member State. In
Germany, the main requirements for a work to be protected are
to be creative and individual to the author, and therefore some
originality. With respect to designs, in some States the
originality required will be lower and easily accomplished. The
German Federal Court of Justice has traditionally considered
that the work has to reach an aesthetic level6
in order to be
!
4
M. van Eechoud, P. Bernt Hugenholtz, S. van Gompel, L. Guibault and N.
Helberger, “Harmonizing European Copyright Law – The Challenges of
Better Lawmaking”, Kluwer Law International, Information Law Series,
Volume 19, Chapter 9: “The Last Frontier: Territoriality”; A. Dietz, “The
Harmonization of Copyright in the European Community”, IIC 1985, 379
5
May 2001 on the harmonisation of certain aspects of copyright and related
rights in the information society. (Design Directive)
6
A. Nordemann and F. N. Heise. “Urheberrechtlicher Schutz für
Designleistungen in Deutschland und auf europäischer Ebene” (ZUM 2001,
128), 134-135, Berlin/Potsdam; U. Loewenheim, “Höhere Schutzuntergrenze
des Urheberrechts bei Werken der angewandten Kunst?”, GRUR Int 2004,
765.
!

! $!
considered art7
and therefore object of copyright protection.
Nevertheless, the recent decision8
-13th
of November 2013- of
the Bundesgerichtshof9
, will be a turning point in German
doctrine. Depending on these requirements a work may be
subject of a double protection: Copyright and design right.
With respect to design rights, in the member states of the
European Union there are at least two ways of obtaining
protection. First, by application for a registered Community
design10
with the Office of Harmonization of the Interior Market
(OHIM). Second, by the application for an International design
with de World Intellectual Property Organisation (WIPO).
Moreover, member states offer a national protection of designs.
For instance, in Germany the protection can be obtained by the
application for a registered German design with the Deutsches
Patent- und Markenamt11
. The EU Council reached for the
harmonisation of the existing national design laws by adopting
the Directive 98/71/EC. It went one step further on the
legislation of the Regulation 6/2002 creating the Community
design right, which includes registered and unregistered rights.
While an Unregistered Community Design derives
automatically after making the design public in the European
Union, registered community designs must follow a process of
application in the OHIM. This registration will indeed bring
some advantages to the owner of the design, among others the
protection could last up to 25 years whereas the unregistered
Community design would end after 3 years. The relevant design
will find the best-suited and beneficial protection if a good
!
7
BGH, Urteil vom 22.06.1995 – I ZR 119/93 Silberdistel, GRUR 1995, 581
8
BGH, Urteil vom 13.11.2013 – I ZR 143/12 Urheberrechtlicher Schutz
eines Geburtstagszuges, BeckRS 2013, 22507 (further explained on my thesis
on: III. Eligibility for Protection A. Threshold for copyright protection)!
9
German Federal Court
10
Council Regulation (EC) No 6/2002 of 12 December 2001 on Community
Designs (Community Design Regulation)
11
German Patent and Trademark Office

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application strategy is made taking into consideration all the
different possibilities. For example, due to the short market
life12
of some products, as fashion products or products of the
toy industry, it is sometimes convenient to be protected as an
unregistered Community design in order to save costs and time.
The requirements for obtaining protection of a registered
design in all Member States of the European Union are novelty
and individual character.13
In the case of unregistered designs,
the relevant design has to be made available to the public inside
the European Union. 14
Besides, the Community Design
Regulation states that the scope of protection will include any
design that does not produce on the informed user a different
overall impression.15
In this way, the scope of protection is
much wider than the scope of copyright protection.
Community Designs offer plenty of advantages over
copyright protection. To begin with, in the case of registered
Community designs, which start with registration, it is provided
with an exact date of creation.16
This would be extremely useful
to prove ones rights and the ownership of the holder against
others. These two consequences of registration will back up the
owner of the design when a dispute over the rights of a design
takes place. Of course, unregistered Community designs are
!
12
Recital 16 of the Community Design Regulation: “Some of those sectors
produce large numbers of designs for products frequently having a short
market life where protection without the burden of registration formalities is
an advantage and the duration of protection is of lesser significance. […]”
13
The requirement for protection are established on article 4 of the
Community Design Regulation.
14
Article 11 of the Community Design Regulation establishes the
“Commencement and term of protection of the unregistered Community
design”.
15
Article 10 of the Community Design Regulation provides: “The scope of
protection conferred by a Community design shall include any design, which
does not produce on the informed user a different overall impression.”
16
Recital 16 of the Community Design Regulation. “[…] there are sectors of
industry which value the advantages of registration for the greater legal
certainty it provides and which require the possibility of a longer term of
protection corresponding to the foreseeable market life of their products.”

! &!
very useful too, especially for protecting short-life17
products
where the registration process takes longer and turning to
copyright could end up in a discussion of whether it is supposed
to be protected by copyright or not. In the case of Copyright
protection, the author is also held down many limits. Article 5 of
the directive 29/2001 forms part of a large exception to the
rights of the author. National copyright laws likewise set
different limits, for instance the limit of freie Benutzung18
under
German copyright law.
With respect to the remedies for infringements and the
enforcement proceedings, the protection of designs offers some
advantages over the copyright protection. A significant one is
the right conferred by the Community Design Regulation to
claim for seizure of the infringing products and materials and
implements used to manufacture them is a useful tool that
applies only to infringement of a Community design and a clear
advantage over the remedies for copyright infringement.19
However, these are only some examples regarding the scope
of protection offered by both intellectual property approaches.
The election of which way of proceeding will provide the design
a wider scope of protection is definitively a struggle of the
Intellectual Property rights. The efforts employed during the last
years on the harmonization of the design law in the European
Union have definitively changed the situation. Still, national
copyright protection certainly has plenty of advantages. On my
!
17
Recital 16 of the Community Design Regulation: “Some of those sectors
produce large numbers of designs for products frequently having a short
market life where protection without the burden of registration formalities is
an advantage and the duration of protection is of lesser significance. […]”
18
Freie Benutzung refers to the free use of works under §24
Urheberrechtsgesetz.
19
Article 16 (1) Berne Convention for the Protection of Literary and Artistic
Works of 1886; Article 8 (2) Directive 2001/29/EC of the European
Parliament and of the Council of 22 May 2001 on the harmonisation of
certain aspects of copyright and related rights in the information society.

! '!
study I am researching in which cases copyright offers less
protection than design right focusing on German copyright laws
and comparing the scope of protection they offer compared to a
Community design. A good application strategy will benefit the
owner of an intellectual property right from the existing law
regimes. Regarding the protection of designs, the increasingly
growing popularity of the Community design has proven itself
to be a reliable choice while the recent decision of the 13th
of
November 2013 of the Bundesgerichtshof20
, Geburtstagszug
(birthday train toy),21
has enhanced the chance of copyright
protection of designs.
!
20
German Federal Supreme Court
21
BGH, Urteil vom 13.11.2013 – I ZR 143/12 “Urheberrechtlicher Schutz
eines Geburtstagszuges”, BeckRS 2013, 22507!

! ()!
II. Designs as subject matter of Intellectual Property Rights
A. Designs in an international context
1. International protection of industrial design
The regulation of design dates back to the Paris Convention
for the Protection of Industrial Property of 1883. The Article 1
of the Paris Convention guarantees industrial protection to
“patents, utility models, industrial designs, trade marks, service
marks, trade names, indications of source or appellations of
origin, and the repression of unfair competition.” Although the
Paris Convention does not give a definition of industrial designs,
its article 5quinquies provides that they must be protected in all
the countries of the Union. It does not go any further and leaves
the definition and means of protection to the domestic law.
The Berne Convention for the Protection of Literary and
Artistic Works of 1886 guaranteed protection to designs as
“works of applied art”, considering them “literary and artistic
works”. The Convention specified on its article 2(7) that the
countries of the Union should determine “the extent of the
application of their laws to works of applied art and industrial
design models, as well as the conditions under which such
works, designs and models shall be protected. […]; However, if
no such protection is granted in that country, such works shall
be protected as artistic works.” The Berne Convention provides
protection to industrial designs as applied artistic works and
establishes a minimum term of protection of 25 years.
“The Hague Agreement Concerning the International Deposit
of Industrial Designs” from 1925 continued adjusting the
protection of industrial designs. The London Act of 1934 went
one step further with the regulation of the international deposit

! ((!
made at the International Bureau of Industrial Property at Berne.
The London Act approached the protection of designs from a
copyright perspective.22
The Hague Act of 1960 specified on
this matter with a revision of its article 1: “(1) The contracting
States constitute a Special Union for the international deposit of
industrial designs.” And “(2) Only State members of the
International Union for the Protection of Industrial Property may
become party to this Agreement”. The Hague Agreement
established an international deposit of an industrial design where
no examination was needed and changed the protection of
designs from the “copyright approach” to the “patent
approach”.23
The patent approach to design protection includes three
characteristics. First, design rights shall be subject to standard
substantial examinations and are obtained by registration.
Second, there is no grace period and novelty is a requirement for
protection. Third, a third party may be responsible of
infringement regardless of whether there was awareness of the
existence of a violation.24
The copyright approach to design protection includes three
different characteristics. First, the design rights begin
automatically upon publication or creation, without need of
registration. Second, originality is required. Third, it is only
possible to take legal action against imitation when there is bad
faith. 25
!
22
R. Ushiki “Legal Protection of Industrial Designs”, USHIKI International
Patent Office, pg. 5
23
24
A. Kur: “The Green Paper’s ‘Design Approach – What’s Wrong with it?”,
374 Comments, 1993, 10 EIPR.; Mr. Richii Ushiki “Legal Protection of
Industrial Designs”, USHIKI International Patent Office, pg. 21
25

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Still no definition to “design” was provided. The Geneva Act,
made from the revision of the Hague Agreement on 1999 grants
“international registration” on the date of filing of the
application once the International Bureau confirms that the
application fulfils the formal requirements. Such application
has the same results as a national application filed under
national laws. The Geneva Act established a term of protection
of the international registration of a minimum of 15 years.
Once again, The Universal Copyright Convention of 1952
refers to works of applied art and establishes that its term of
protection should be of at least ten years.
The Locarno Agreement Establishing an International
Classification for Industrial Designs of 1968 established an
international classification composed of main classes and sub-
classes.
The TRIPS Agreement under the World Trade Organization
Agreement provided a high level of protection on different areas
of industrial property. In particular, the Section 4 of Part II
disposes some regulations concerning the protection of
industrial designs. The article 25 of the Agreement establishes
the requirements for the protection “(1) Members shall provide
for the protection of independently created industrial designs
that are new or original. Members may provide that designs are
not new or original if they do not significantly differ from
known designs or combinations of known design features.
Members may provide that such protection shall not extend to
designs dictated essentially by technical or functional
considerations.” And “(2) Each Member shall ensure that
requirements for securing protection for textile designs, in
particular in regard to any cost, examination or publication, do
not unreasonably impair the opportunity to seek and obtain such

! (+!
protection. Members shall be free to meet this obligation
through industrial design law or through copyright law.”
However, the TRIPS Agreement does not specify on the
definition of designs.
2. Overlap with other forms of Intellectual Property rights
Intellectual property can sometimes be protected by different
set of laws. These include laws relating to industrial and
intellectual property making it possible that the copyright,
patents, trademarks and design rights overlap. Some designs can
sometimes be protected against copying under national unfair
competition law.26
Moreover, designs, which are artistic and
functional in nature, can also be protected by copyright laws
considered as works of applied art.27
The protection of designs has been of international concern
due to the complexity of its own nature. While some countries
consider the concept of design protection on a patent-oriented
approach, some others consider that a copyright-oriented
approach is more accurate. Independently of the approach,
designs are certainly not without legal protection, even if they
do not have the required creativity to be protected by copyright.
The intricate problem of deciding whether to protect designs as
an object of industrial property, as a copyright work or by both
!
26
D. Stone, “European Union Design Law: A practitioner’s Guide”, Oxford
University Press, electronic book, 2012, p. 212 “Article 96 of the Regulation
provides for overlap of rights, expressly mandating overlap national
copyright laws and allowing overlap with other forms of intellectual property
protection. There are two types of cumulative effect with other Intellectual
Property Rights.” (1) The permissive Overlap with Non-Copyright
Intellectual Property provided by article 96. 1 of the Regulation; and (2) The
Mandated Overlap with Copyright provided by article 96. 2 of the Regulation
and article 17 of the Directive.
27
T. Cook †, “The Cumulative Protection of Designs in the European Union
and the Role in such Protection of Copyright”, Journal of Intellectual
Property Rights, Vol. 18, January 2013, pg. 83-87

! ("!
ways, comes from their nature, being considered as “legal
hybrids between the patent and copyright paradigms”.28
On the one hand, the creative character of the design should
be an undeniable form of human expression and, therefore,
protected as any other copyrightable work. Designs “come from
acts of imagination, not technical invention. One invention may
be repeated time and again, but designs, made by human
expression, shall be individual and unique”29
. On the other hand,
the designs are made bearing in mind the form and function of
the product. Therefore, when the product requires higher
functional and technical considerations, there is less space left
for creativity as a form of human expression. Edging designs
towards inventions.
To this respect countries have taken different positions.
While some countries, like the United States, hold that a line
should be drawn to differentiate designs and works of applied
art, and to establish which works can be protected under
copyright and which ones under design law. Others, including
the majority of the European countries, support the cumulative
protection of copyright and design laws.
B. Protection of designs in the European Union
1. The Design Directive and Community Design Regulation
The legislation on industrial designs has been enacted in the
European Union on two levels. Member States have been
obliged to harmonize national rules on industrial design
!
28
J.H. Reichman, “Legal Hybrids Between the Patent and Copyright
Paradigms”
29
H. C. Jehoram “Cumulation of Protection in the EC Design Proposals”!

! (#!
protection on the basis of the Design Directive 98/71/EC30
, and
in addition, a unitary regime for design protection was
established on the Community level by the Community Design
Regulation Nº 6/2002.
The background and meaning of important substantive
provisions -such as the definitions, requirements for protection,
scope of protection, etc.- are the same in the Directive as in the
Regulation.
The European Union defines designs31
in article 3 of the
Regulation as “The appearance of the whole or a part of a
product resulting from the features of, in particular, the lines,
contours, colours, shape, texture and/or materials of the product
itself and/or its ornamentation”. The definition is
extraordinarily broad32
and includes all aspects and features33
of
a product or part of it.
Due to the separate systems of design protection, in the
Member States of the European Union there are at least two
ways of obtaining protection. First, by application for a
registered community design with the Office of Harmonization
of the Internal Market (OHIM). Second, by the application for
an international design with the World Intellectual Property
Organisation (WIPO). Parallel to this, the Member States offer a
national protection of designs. After reaching for the
!
30
October 1998 on the legal protection of designs (Community Design
Directive)
31
‘Design’ in English and ‘Geschmacksmuster’ in German. However, ‘dessin
ou modèle’ in French; ‘disegno o modello’ in Italian and ; ‘dibujo o modelo’
in Spanish.
32
University Press, electronic book, 2012, p. 172; Green Paper, paragraph
5.4.7.1; Additional Opinion of the Economic and Social Committee on the
Proposal for a European Parliament and Council Regulation (EEC) on the
Community Design [1995] OJ C1 10/12.
33
Lines, contours, colours, texture and materials.

! ($!
harmonisation of the national design laws by the adoption of the
Directive, the Council of the European Union went one step
further on the legislation of the Regulation creating the
Community design right, which includes registered and
unregistered rights.
The Registered Community Design requires an application34
;
as well as in other industrial property areas, such as patents and
registered trademarks. This is the traditional patent approach of
protecting designs. The term of protection35
is an initial period
of five years from the date of filing of the application, renewable
for periods of five years each, for a total term of twenty-five
years from filing.
Like in the case of copyright, Unregistered Community
Designs provide protection without the need of fulfilling any
formalities; nevertheless the protection in this case will be for a
short term of three years from the date on which the design was
first made available to the public within the European
Community. 36
For this reason it has been called a “weak hybrid
between industrial property protection and copyright”, intended
“to remedy to a limited extent the lack of copyright protection in
those Member States which at this moment exclude that
protection”.37
The Unregistered Community Design is useful for
the protection of products with shorter life cycles, such products
from the fashion or toy industries, where a registration would
require too much time and costs.
2. Principle of Cumulation of Protection between Design Rights
and Copyright
!
34
Article 12 of the Community Design Regulation.
35
36
37
H. C. Jehoram, “Cumulation of Protection in the EC Design Proposals”

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As already mentioned, designs are protected by different,
overlapping, intellectual property rights. The Berne Convention
already settled the protection of “works of applied art”
considering them “artistic works” but left the determination of
“works of applied art” to domestic law.
The Regulation on Community Designs provides two types
of unitary protection for designs effective in all the Member
States of the European Union. These are the already mentioned
Registered and Unregistered Community Designs. Besides, the
Directive of Protection of Designs orders the Member States to
provide harmonised national protection by means of national
registration procedures. Some designs can be protected as
trademarks and sometimes designs can be protected against
copying under national unfair competition law. Designs, which
are artistic and functional in nature38
, can also be protected by
copyright laws considered as works of applied art.
In this regard, the article 17 of the Directive39
establishes a
general principle, which is the Principle of cumulation of
protection of design right and copyright, leaving further
determination to the national legislation of the contracting
States. This means that they are freely authorized to determine
the scope of protection of copyright and the conditions in which
such protection can be recognized in an industrial design. In
other words, the obligation to protect works applies only in so
!
38
Property Rights, Vol. 18, January 2013, pg. 83-87
39
Design Directive, Article 17 stipulates that “[a] design protected by a
design right registered in or in respect of a Member State in accordance with
this Directive shall also be eligible for protection under the law of copyright
of the State as from the date on which the design was created or fixed in any
form. The extent to which, and the conditions under which, such a protection
is conferred, including the level of originality required, shall be determined
by each Member State”. (The underlining is not of the original).

! (&!
far as such works are regarded under national law as artistic
works.
Prior to the Directive there were three different systems. The
system of total cumulation, based on the French “unité de’l art”
theory, which made no distinction between fine arts and applied
arts. The partially cumulative protection required of the designs
a higher level of originality and artistic merit and the non-
cumulative system, which excluded designs from copyright
protection.
While most common law countries have a “close list” of what
is to be considered as copyright works and have demanding
requirements, most civil law countries have an “open list” and a
relaxed view of requirements for protection. As an example of a
common country, the UK legislation has traditionally been
reluctant to protect designs as a copyright work and has had a
rejecting position towards the Principle of cumulation. Besides,
as the UK, after the imposition of the Principle, there are also
some civil law countries that have been traditionally strict when
considering the double protection availed by the last sentence of
article 17 “The extent to which, and the conditions under which,
such a protection is conferred, including the level of originality
required, shall be determined by each Member State”. Opposite
to this, most of the civil law countries have traditionally
accepted this double protection, originated from “unite l’art”
according to which the “entitlement of copyright protection for
applied art and other art works shall be determined under the
same criteria”.40
In France, the low requirements established by
!
40
Property Rights, Vol. 18, January 2013, pg. 83-87 “Cumulative protection
originates in the theory, first developed in France, of ‘unity of art’, under
which there should be no distinction or discrimination as between artistic
creations on the basis of aesthetic merit or mode of expression. Such an

! ('!
French copyright law together with the principle of absolute
cumulation of the systems of protection entitle copyright
protection to basically any new design.41
However, copyright
protection shall not extend to designs mandated exclusively by
technical or functional considerations, where there is no space
for personal expression.
The harmonization of the originality criterion has proven to
be an impossible and untouchable task since the different
countries in the European Union have different cultural
traditions towards this. In the European Community there are
two different perspectives: a relaxed view of requirements for
copyright protection and a severe view. The first view is
commonly the one of the common law countries and the latter is
traditionally the accepted by the civil law countries. However,
Germany42
shares the demanding tradition of the common law
countries.
France, as an example of a country having a relaxed view,
use ““originality” in the sense of creativity, of personal
expression of the author”43
as the general requirement for
copyright protection. Germany, as an example of a demanding
tradition, has traditionally required “more than just personal
expression in the sense of a human designers touch” 44
from
designs and other categories of works. For designs to be
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
approach in also suggested by the WIPO Model La won Industrial Deigns of
1970 (Publication No 808 (E), Section 1 (2)).”
41
F. K. Beier “Protection for Spare Parts in the Proposals for a European
Design Law” (IIC 1994, 840)
42
H. Bodewing and H. E. Ruijsenaars, “Alternative Protection for Product
Designs A Comparative View of German, Benelux and US Law”, (IIC 1992,
643); H.C. Jehoram, “Cumulation of Protection in the EC Design Proposals”;
C. Krüger, “Designs Between Copyright and Industrial Property Protection”
IIC 1984, 168
43
H. C. Jehoram,!“Cumulation of Protection in the EC Design Proposals” !
44
H. C. Jehoram,!“Cumulation of Protection in the EC Design Proposals”

! *)!
considered works of copyright have to constitute “art”45
and it is
the role of the judges of the Bundesgerichtshof and the lower
courts to assess the quality of the “piece of work” and determine
whether it can be considered art and therefore entitled to
copyright protection.46
3. Lack of Harmonization of Copyright Laws
Copyright protection is an important form of protection of
designs. It offers a quick, automatic and free of formalities
protection for a long term47
. However, the lack of harmonization
of copyright law has proven to be a heavy burden. The laws of
the Member States have been unified in specific areas, but still
major fields have been left intact or only harmonized in certain
degree. The absence of such uniform regulation has brought
national legislations, which diverge among different Member
States. Although the harmonization directives48
have softened
!
45
BGH, Urteil vom 22.06.1995 – I ZR 119/93 “Silberdistel”, GRUR 1995,
p.581, 582
46
H. C. Jehoram, “Cumulation of Protection in the EC Design Proposals”
47
Under the Urheberrechtsgesetz the term of protection is the life of the
autor and another 70 years after death (Urheberrechtsgesetz § 64); when there
are several co-authors the term of protection will be of 70 years after the
death of the longest surviving co-author (§ 65 (1)); when the work is
anonymous or under a pseudonym the term of protection will end 70 years
after the publication (§ 66).
48
Council Directive 92/100/EEC of 19 November 1992 on rental right and
lending right and on certain rights related to copyright in the field of
intellectual property; Council Directive 93/83/EEC of 27 September 1993 on
the coordination of certain rules concerning copyright and rights related to
copyright applicable to satellite broadcasting and cable retransmission;
Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of
protection of copyright and certain related rights; Directive 96191EC of the
European Parliament and of the Council of 11 March 1996 on the legal
protection of databases; Directive 98/71/EC of the European Parliament and
of the Council of 13! October 1998 on the legal protection of designs;
May 2001 on the harmonisation of certain aspects of copyright and related
rights in the information society; Directive 2001/84/EC of the European
Parliament and of the Council of 27 September 2001 on the resale right for
the benefit of the author of an original work of art; Directive 2004/48/EC of
the European Parliament and of the Council of 29 April 2004 on the
enforcement of intellectual property rights; Directive 2009/24/EC of the
European Parliament and of the Council of 23 April 2009 on the legal
protection of computer programs.

! *(!
some differences49
between the laws of the Member States, the
rule of territoriality has remained intact: this means, the
geographic scope of the laws of the Member States coincides
with the national borders. In fact, more than the lack of
harmonization of copyright law, the main struggle is
territoriality. Even if perfect harmonization were achieved, the
exclusivity that a copyright or related right confers on its owner
is strictly limited to the territorial boundaries of the Member
State where the right is granted. Owners of a copyright work
have to obtain the right to make content available in each
Member State.50
The problem of territoriality has several disadvantages. First,
it puts content providers at a competitive disadvantage
compared to the main competitors outside the EU, where
copyright and related rights are harmonized. The territorial
nature of copyright in the European Union causes high
transaction costs for right holders and users.51
Second, the
territorial nature of copyright, makes it complicated and unclear,
brings uncertainty and, definitely, as a consequence, demotes
internal market.52
!
49
Two of the abolitions under the Design Directive and the Community
Design Regulation are: First, the rule under Ireland’s and UK’s law which
established that there was a link between the entitlement of copyright
protection and the number of products to which the design is intended to be
applied to. If the number were to be above 50 there would be no copyright
protection. Second, the Italian requirement “scindibilità” where copyright
protection could only be possible when the work of applied art could be
conceptually separated from the product in which the work is embodied.
50
M. van Eechoud, P. B. Hugenholtz, S. van Gompel, L. Guibault and N.
Volume 19, Chapter 9: “The Last Frontier: Territoriality”
51
N. Pfeifer, “Das Territorialitätsprinzip im Europäischen
Gemeinschaftsrecht vor dem Hintergrundder technischen Entwicklungen”.
Zeitschrift für Urheber- und Medienrecht, Jg. 50 (2006), Nr. 1, 1-8!!
52
Volume 19, Chapter 9: “The Last Frontier: Territoriality”

! **!
Nevertheless, the lack of harmonization and territoriality of
copyright has its reasons. The critical views point out to price
discrimination and territorial licensing but the fact is that the
raison d’être is cultural, or at least not only economic.
Territoriality preserves local autonomy and protects and
promotes local authors and performers. 53
In the case of infringing proceedings the lack of
harmonization has also presented disadvantages for copyright
owners. Since, contrary with what happens with patents,
trademarks or designs, there is no “European copyright” or
“Community copyright”54
and infringement cases are usually
limited to the territory of the country where the infringement
occurred, the judgement of the court is strictly limited to the
territorial boundaries of the Member State where the judgement
is made. Besides, the exclusivity that a copyright or related right
confers on its owner is strictly limited to the territorial
boundaries of the Member State where the right is granted.
Indeed, infringing copies of a work shall be liable to seizure in
any Member State where the work is entitled of copyright
protection. 55
Still, in order to consider the seizure of the
products, the design must be entitled of copyright protection in
the country where the seizure is being claimed. Due to the lack
of harmonization the owner of the design will once again be in
!
53
Volume 19, Chapter 9: “The Last Frontier: Territoriality”, pg. 310
54
Volume 19: The author(s) of Chapter 9 have suggested that the only solution
to territoriality is to create a European Copyright such as the Community
design or the European Patent. The autor(s) of Chapter 9 believe that
harmonizing copyright law in the European Union would not finish with the
problems with territoriality.
55
Article 16 (1) Berne Convention for the Protection of Literary and Artistic
Works of 1886; Article 8 (2) Directive 2001/29/EC of the European
Parliament and of the Council of 22 May 2001 on the harmonisation of
certain aspects of copyright and related rights in the information society.

! *+!
disadvantage since it will probably end up in a discussion on
whether it is supposed to be protected by copyright or not.
The Registered Community Design confers on its holder the
exclusive right to use the design and to prevent others the
unauthorized use of it. The enforcement remedies available to
the design holder against an infringer are: (1) an order
prohibiting the defendant from proceeding with the infringing
acts; (2) an order to seize the infringing products; (3) the
issuance of an order to seize the materials and implements
predominantly used in order to manufacture the infringing
products provided the owner knew effect for which such use
was intended or if such effect would have been obvious in the
circumstances. The national courts are mandated to take such
measures under its national law, which would ensure that the
afore-mentioned orders are complied with. The claim for
seizures of infringing products and materials and implements
used to manufacture them is a right under article 89 (1) (b) and
(c) of the Community Design Regulation. It shall be applied
only to infringements of a Community design in all Member
States of the European Union.56
In comparison to the situation of Copyright Law in Europe,
the existing harmonization of Design Right Law in the European
Union is an obvious advantage in terms of transparency,
consistency and legal certainty. However regardless of how
attractive it may seem to many, replacing the numerous
Directives and the 28 national laws on Copyright and related
rights by a single regulatory system and creating a truly
European Copyright has its incongruities. Among others, giving
!
56
The Geschmackmustergesetz does not provide this particular remedy.
However, under § 43 (2), the holder of the design does have the right to claim
destruction, this is the right to demand that the infringer recall the infringing
goods and make sure that they are finally withdrawn of distribution.

! *"!
the copyright protection a market approach. Perhaps even
protecting producers instead of creators of works.
For the time being, as set out in Recital 8 of the Design
Directive, in the absence of Copyright Law, it is important to
establish the principle of cumulation. “The Design Directive is
at the vanguard of the harmonization of copyright law in the
European Union.”57
Still, regardless of being an essential source
of copyright protection for designs, the problem of the
harmonization of “originality” remains.
C. Situation in Germany
1. National protection of designs
Due to the separate systems of sources for design protection
there are several ways of obtaining protection in Germany. By
applying for a registered German design at the Deutsches
Patent- und Markenamt (DPMA)58
, by applying for a Registered
Community Design at the Office of Harmonization of the
Internal Market (OHIM), by applying for an international design
at the World Intellectual Property Organization (WIPO), as an
Unregistered Community Design under the Community Design
Regulation or by copyright protection as a work of applied art.59
The relevant German statutes in the design protection are the
Designgesetz (German Design Act), last amended the 24th
of
February 201460
, the German Design Regulation, last amended
!
57
A. Tischner. “Focus on the Polish Regulation of Copyright and Design
Overlap After the Judgement of the Court of Justice in Case 168/09 (Flos v.
Semeraro)” IIC 2012, 202
58
German Patent and Trademark Office
59
Urheberrechtsgesetz § 2 (1) 4
60
Designgesetz in der Fassung der Bekanntmachung vom 24. Februar 2014
(BGBI. I S. 122)

! *#!
the 2nd
of January 201461
and the Urheberrechtsgesetz (German
Copyright Act), last amended the 1st
of October 201362
.
2. Copyright protection of designs
German copyright law protects 63
literary, scientific and
artistic works if they constitute personal intellectual creations64
.
The requirements of a work to constitute such personal
intellectual creations are that it is creative, individual to the
author and original. “Originality” not in the sense of novelty but
in the sense of “coming from someone as the author” in so far as
it reflects the author’s personality. 65
Other than these there are
no other requirements. There are no formal or registration
requirements.
Originally copyright protection in Germany was entitled to
works of “pure” art. Germany drew a line separating the
copyright and the industrial property protection and, of course,
did not approve the cumulation of protection. Still, after the
acceptance of the principle of cumulation of protection,
Germany required an impossible requirement of “heightened
!
61
Designverordnung vom 2. Januar 2014 (BGBI. I S.18)
62
Urheberrechtgesetz vom 9. September 1965 (BGBI. I S. 1273), das zuletzt
durch Artikel 1 des Gesetzes vom 1. Oktober 2013 (BGBI. I S. 3728)
geändert worden ist.
63
German copyright law protects the right holders, under civil and criminal
law, from direct and indirect infringement. The third party that infringes an
exclusive right, a moral right or a neighboring right protected by the
Urheberrechtsgesetz, will be directly liable to the right holder. German
copyright law has proven to act very strictly concerning indirect infringement
too, this would include; for example, when a person orders pirated goods
with a protected design. In Germany, there is not one single court, which
hears the majority of copyright infringement cases, as it happens for example
with patent infringement proceedings. The local courts, and in some cases the
district courts, of the respective states act as specialised copyright courts for
the first instance (Urheberrechtsgesetz § 105).
64
Urheberrechtsgesetz §§1, 2(2)!!
65
V. Ilzhöfer and R. Engels, Patent-, Marken- und Urheberrecht, Verlag
Franz Vahlen München 2010, 8. Auflage, p.1159: “Insoweit wird auch
gesprochen von schöpferischer Eigentümlichkeit, Werkhöhe,
Schöpfungshöhe, Originalität oder Individualität die Rede.”

! *$!
level of originality of the design”66
. In order to protect a design
with copyright, the design had to be considered “art”.67
The
German Doctrine speaks of Gestaltungshöhe 68 69
(level of
creativeness). It is used to distinguish works that are sufficiently
original to warrant copyright protection from those that are not.
It also talks about a minimum level of originality, which will be
higher or lower depending on the category of the works.
The attitude in Germany towards copyright protection of
designs as works of applied art and the cumulation of protection
has been quite reluctant. It has not only required from them
creativity, individual character or originality, it has required
“art”. Nevertheless, the recent decision -13th
of November 2013-
of the Bundesgerichtshof70
, will be a turning point in German
doctrine.71
!
66
H. C. Jehoram “Cumulation of Protection in the EC Design Proposals”
67
BGH, Urteil vom 22.06.1995 – I ZR 119/93 “Silberdistel”, GRUR 1995,
p.581, 582
68
V. Ilzhöfer und R. Engels, “Patent-, Marken- und Urheberrecht”, Verlag
Franz Vahlen München 2010, 8. Auflage, p.1159: “Insoweit wird auch
gesprochen von schöpferischer Eigentümlichkeit, Werkhöhe,
Schöpfungshöhe, Originalität oder Individualität die Rede.”
69
BGH, Urteil vom 23.01.1981 – I ZR 48/79, “Rollhocker”, GRUR 1981,517
70
German Federal Court
71
eines Geburtstagszuges”, BeckRS 2013, 22507. (III. Eligibility for Protection
A. Threshold for copyright protection)!

! *%!
III. Eligibility for Protection
A. Threshold for copyright protection
The absence of uniform copyright regulation brought up
national legislations, which diverge among different Member
States. The article 17 of the Design Directive established the
relationship between copyright and design right, providing that
designs protected by a national design registration can also be
eligible for national copyright protection. However, leaving
further determination regarding the criteria of considering a
design entitled of copyright protection to the contracting states.
As already mentioned, the possibility of cumulation of
protection from design right and copyright depends on the
standards of originality required by each Member State. While
in some Member States the originality requirement is quite low
and easily accomplished, like for example in France, where it
has been defined as the “expression of the author’s personality”.
In other Member States the level of originality required is much
higher, so high, that designs are almost excluded from copyright
protection.
In the case of German copyright law the requirement of
protection is that the work constitutes a personal intellectual
creation.72
The work has to be creative, individual to author and
original. However, until a recent decision73
, the German courts
have differentiated between two groups of works and has
applied them different standards.
On the one hand, non-utilitarian graphic or pure art that only
required a low degree of creativity and originality. On the other
!
72
Urheberrechtsgesetz § 2 (2)
73

! *&!
hand, applied art in relation to industrially manufactured and
utilitarian works required “a certain degree of creative content
that lifts it above that which is simply average or simply the
routine work of a craftsman.”74
Although § 2 Abs. 1 of the
Geschmacksmustergesetz75
sets lower conditions for copyright
protection of designs (kleine Münze) than the ones set for works
of applied art on the Urheberrechtsgesetz, the case-law of the
Bundesgerichtshof has established a degree of creativity above
the average. Instead of an average degree of creative content, the
work has to outshine. 76
The work has to comprehend an
individual and intellectual content and will be represented in the
form of the work as a personal intellectual activity.
The decision of the 13th
of November 2013 of the
Bundesgerichtshof77
, Geburtstagszug (birthday train toy),78
is a
turning point in the eligibility for copyright protection of
designs in Germany. According to the decision, a work of
applied art will be automatically protected by copyright if it
fulfils the same requirements as any other creative work.
Consequently, there is no need anymore for designs to have a
higher aesthetic level. In the sense of §2 I Nr. 4, II of the
Urheberrechtsgesetz, the copyright protection of works of
!
74
U. Suthersanen. “Design Law in Europe; an analysis of artistic, industrial
and functional designs under copyright, design, unfair competition and utility
model laws in Europe”. Sweet & Maxwell, London, 200, 178
75
§ 2 Abs. 1 of the Geschmacksmustergesetz requires registered designs
novelty and individual character for design protection: “Als eingetragenes
Design wird ein Design geschützt, das neu ist und Eigenart hat.”
76
A. Nordemann and F. N. Heise. “Urheberrechtlicher Schutz für
Designleistungen in Deutschland und auf europäischer Ebene” (ZUM 2001,
128), 134-135, Berlin/Potsdam: “Obwohl das GeschmMG in § 1 Abs. 2 als
»kleine Münze« des Urheberrechts also geringere Anforderungen an die
Schutzfähigkeit stellt als das UrhG in § 2 Abs. 2 an Werke der angewandten
Kunst, genügt nach der ständigen Rechtsprechung des BGH eine
durchschnittliche gestalterische Tätigkeit nicht, um einem
Geschmacksmuster zur Schutzfähigkeit zu verhelfen; vielmehr muss auch ein
Geschmacksmuster eine überdurchschnittliche Gestaltungsleistung
beinhalten, um schutzfähig zu sein”.
77
German Federal Supreme Court
78

! *'!
applied art requires the same conditions as to provide copyright
protection to works of fine arts.79
It is therefore enough to
achieve such a threshold of originality80
that experts on art
recognize an artistic performance. However, “a certain degree of
creative content that lifts it above that which is simply
average”81
is no longer required.82
There are no formal requirements for copyright protection
under the German copyright law,83
both for copyright protection
as to facilitate copyright enforcement. This assures the author of
the design an automatic, free of charge and fast protection, upon
creation. Since there is no registration for protection, the
“assessment” of whether the work is indeed entitled of copyright
protection takes place at court and the dispute could end up on
whether the design is supposed to be protected by copyright or
not. Taking into consideration the subjectivity of artistic –or
aesthetic- value as a requirement for copyright protection, there
is no complete certainty that the judge will consider that the
!
79
eines Geburtstagszuges”, BeckRS 2013, 22507: “Es erscheint aber im Blick
darauf, dass es sich beim Geschmacksmusterrecht nicht mehr um ein
wesensgleiches Minus zum Urheberrecht handelt, nicht gerechtfertigt, an den
Urheberrechtsschutz von Werken der angewandten Kunst höhere
Anforderungen zu stellen als an den Urheberrechtsschutz von Werken der
zweckfreien Kunst.”
80
Gestaltungshöhe
81
U. Suthersanen. “Design Law in Europe; an analysis of artistic, industrial
and functional designs under copyright, design, unfair competition and utility
model laws in Europe”. Sweet & Maxwell, London, 200, 178
82
eines Geburtstagszuges”, BeckRS 2013, 22507, Leitsatz 1: “An den
Urheberrechtsschutz von Werken der angewandten Kunst iSv § 2 I Nr. 4, II
Urheberrechtsgesetz sind grundsätzlich keine anderen Anforderungen zu
stellen als an den Urheberrechtsschutz von Werken der zweckfreien
bildenden Kunst oder des literarischen und musikalischen Schaffens. Es
genügt daher, dass sie eine Gestaltungshöhe erreichen, die es nach
Auffassung der für Kunst empfänglichen und mit Kunstanschauungen
einigermaßen vertrauten Kreise rechtfertigt, von einer “künstlerischen”
Leistung zu sprechen. Es ist dagegen nicht erforderlich, dass sie die
Durchschnittsgestaltung deutlich überragen (Aufgabe von BGH GRUR 1995,
581 _ WRP 1995, 908 – Silberdistel). (amtlicher Leitsatz)”
83
The only register provided by the Urheberrechtsgesetz § 66 is a register of
anonymous and pseudonymous works at the German Patent and Trademark
Office, which enables the author to benefit from the full term of protection
whilst remaining anonymous or under a pseudonym.!!

! +)!
design fulfils such requirement. There are no guidelines to
follow when considering the originality of the work. It is the
role of the judges to assess the quality of the work and
determine whether it can be considered art and therefore entitled
to copyright protection. To this respect, under the presumption
that there is a diversity of sensibilities and opinions, the
entitlement of copyright protection can vary on the judge. When
seeking for copyright protection in different Member States,
where judges have different nationalities and traditions, the
uncertainty is even higher.
B. Threshold for Community design protection
The Regulation on Community Designs provides two types
of unitary protection for designs effective in all the Member
States of the European Union. These are the Registered and
Unregistered Community Designs.
A design shall be protected by an unregistered Community
design for a period of three years upon the date when the design
was first made available to the public within the Community
under Article 1(2) (a) 84
“if made available to the public in the
manner provided for in this Regulation”. Article 11 (2) specifies
that a design will be considered to have been made available to
the public within the Community if the disclosing events, in the
normal course business, “could reasonably have become known
to the circles specialised in the sector concerned, operating
within the Community”.
The unregistered Community design protection is useful to
protect designs with a short life, where registration would be too
expensive and time consuming, such as products from the toy
!
84
Article 1(2) (a) of the Community Design Regulation

! +(!
industry or fashion industry. However, the protection under
article 1 (2) (a) of the Community Design Regulation does not
have to be necessarily limited to those cases.
A design shall be protected by a registered Community
design under article 1(2) (b) “if registered in the manner
provided for in this Regulation”. The term of protection starts
for a period of five years from the date of the filing of the
application. “The right holder may have the term of protection
renewed for one or more periods of five years each, up to a total
term of 25 years from the date of filing.”85
Article 4 (1) of the Regulation establishes that the
requirements for protection of a Community design are that it is
new and has individual character over a prior design. The
Regulation also took care of defining what is to be understood
by “new” and individual character” to leave limited space to
interpretations or how to apply it. Article 5 of the Regulation
provides that “(1) A design shall be considered to be new if no
identical design has been made available to the public: (a) in the
case of an unregistered Community design, before the date on
which the design for which protection is claimed has first been
made available to the public; (b) in the case of a registered
Community design, before the date of filing of the application
for registration of the design for which protection is claimed or,
if priority is claimed, the date of priority. (2) Designs shall be
deemed to be identical if their features differ only in immaterial
details.” 86
!
85
Article 12 of the Community Design Regulation!
86
A design will be considered new if “no identical design has been made
available to the public” before its date of first disclosure –in the case of
unregistered Community designs –or its filing date or from the date of
priority –in the case of registered Community designs. Nevertheless, article
7(2) of the Community Design Regulation affords a grace period of twelve
months. Therefore, the disclosure of the design does not exclude design
protection as long as the application is filed within the next twelve months
following the date of the disclosure.

! +*!
By identical design the Regulation does not mean identical in
its true meaning, but identical in a broader meaning, which
includes designs whose “features differ only in immaterial
details”.87
Opposite to the concept of Gestaltungshöhe88
in the
German copyright protection, there are no degrees of identity,
two designs are either identical or not. In order to assess if a
design is new and has individual character, the design will be
subject of an examination, which compares it to the prior art. A
design will be considered new if no identical design has been
made available to the public before the filing date of the
application for registration or, if priority is claimed, the date of
priority. Designs will be considered identical if their features
only differ in immaterial details. If an identical design exists
there will be no novelty and therefore the registered design will
be invalid. In the novelty examination there will be no novelty
and therefore the registered design will be invalid. A court will
be in charge of determining the identity of two designs.
Contrary to the subjectivity of originality as a requirement for
copyright protection over designs, novelty is an objective test to
be made assessing “the differences on the basis of the overall
appearance of the designs in question.”89
Consequently, under
the Regulation, a design identical to a prior design disclosed to
the public, or that only differ on immaterial details, shall be
!
87
University Press, electronic book, 2012, p. 338: “It has been suggested that
the definition of identical in the Regulation and Directive is not the
mathemathical or scientific definition of identical (meaning exactly the
same), but rather something akin to the definition of idential twins –close but
not exact –differing only in inmaterial details.
88
The Gestaltungshohe refers to the level of creativity required under
German copyright law, mentioned in III. Eligibility for protection A.
Threshold for copyright protection
89
OHIM Board of Appeal decision from 11.08.2009, R- 887/2008-3, Norman
Copenhagen ApS v Paton Calvert Housewares

! ++!
declared invalid. 90
Nevertheless, the Regulation did not specify
what is to be understood by “immaterial” detail. The Board of
Appeal has concluded that the “immaterial differences” are
“those differences which do not matter”.91
Apart from novelty the Community design must also have
“distinctive character”. The Regulation also provides what is to
be understood by “individual character” on its article 6, “(1) A
design shall be considered to have individual character if the
overall impression92
it produces on the informed user differs
from the overall impression produced on such a user by any
design which has been made available to the public”.93
Article 6
(2) also specifies that in the assessment of the individual
character, “the degree of freedom of the designer in developing
the design shall be taken into consideration”.
The term “informed user” appears repeatedly throughout the
Regulation –it first appears in Recital 14 and again on articles 6
and 10 –however, it does not define the concept. The Court of
Justice of the European Union defined it in the PepsiCo v Grupo
Promer Mon Graphic and OHIM clarifying it referred “not to a
user of average attention, but to a particularly observant one,
!
90
OHIM Board of Appeal decision from 02.11.2010, R- 1451/2009-3, Antrax
It srl v The Heating Company BVBA
91
University Press, electronic book, 2012, p. 340: “The Board of Appeal
proposed a definition of ‘immaterial’ in Imperial International Ltd v Handl
Cookware Limited: [t]he literal meaning of the term suggests that
‘immaterial differences’, as a contrary to ‘material’, are those differences
which do not matter.”
92
‘Overall impression’ in English; ‘L’impression globale in French;
‘Gesamteindruck’ in German; ‘la impression general’ in Spanish and;
‘l’impressione generale’ in Italian.
93
Article 6 (1) of the Community Design Regulation also establishes the date
of assessment of the individual character of the Community Design: “(a) in
the case of an unregistered Community design, before the date on which the
design for which protection is claimed has first been made available to the
public; (b) in the case of a registered Community design, before the date of
filing the application for registration or, if a priority is claimed, the date of
priority.”

! +"!
either because of his personal experience or his extensive
knowledge of the sector in question".94
The interpretation of the method of carrying out the
assessment of the individual character has also been
controversial due to the translation of the article 6(1) into the
different languages of the European Union. The doubt
concerning the assessment is whether “the comparison is made
with one earlier design or with a plurality of earlier designs, the
features of which can be combined […]”95
. The Recital 14 of the
Regulation has also mislead by saying “The assessment as to
whether a design has individual character should be based on
whether the overall impression produced on an informed
viewing the design clearly differs from that produced on him by
the existing design corpus […]” Clearly, it says that the
assessment of the individual character should be made
comparing the design with the ‘existing design corpus’. In
addition Recital 19 uses the plural form when saying that the
design should possess individual character in comparison with
!
94
CJEU, Judgment from 20.10.2011, C-281/10, PepsiCo v Grupo Promer
Mon Graphic SA and OHIM, paragraph 53. This definition can also be found
in: CJEU, Judgment from 18.10.2012, C-101/11 P and C-102/11 P, José
Manuel Baena Grupo SA v OHIM (Personnage assis). Both also clarify:
“That concept must be understood as lying somewhere between that of the
average consumer, applicable in trademark matters, who need not have any
specific knowledge and who, as a rule, makes no direct comparison between
the trade marks at issue, and the sectorial expertise.”
95
A. Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge
Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol.
8, No. 12, pg. 928: “ ‘the over impression produced on such a user by any
design which has been made available to the public’; ‘l’impression globale
qu’il produit sur l’utilisateur averti diffère de celle que produit sur un tel
utilisateur tout dessin ou modèle qui a été divulgué au public’; ‘la impresión
general producida por cualquier otro dibujo o modelo que haya sido hecho
público’; ‘impressione generale suscitata in tale utilizzatore da qualsiasi
disegno o modelo che sia stato divulgato al publicco’ etc. In contrast, the
Dutch versión of Article 5 of Directive 98/71 and Article 6(1) CDR makes
use of the plural form when referring to the prior art […]”

! +#!
other designs. As a result the real intention of the legislator has
brought some misleading interpretations.96
Without regard to the wording or the interpretation of the
provisions, if the individual character of a design could be
frustrated by combining the features of prior designs, it would
be a design which does not even exist the one that would impede
a new design from seeking protection. Even though such design
is not even similar to any of the prior art. Under these
circumstances, innovation and the development of new products
would be discouraged. This is exactly what the Community
Design Regulation does not want.97
However, the Court of Justice of the European Union has
recently taken a position in the issue in the decision of the 19th
of June 2014, Karen Miller Fashions Ltd v Dunnes Stores Ltd.98
According to the decision, article 6 of the Community Design
Regulation must be interpreted as meaning that, “in order for a
design to be considered to have individual character, the overall
impression which that design produces on the informed user
must be different from that produced on such a user not by a
combination of features taken in isolation and drawn from a
number of earlier designs, but by one or more earlier designs,
taken individually”.99
Regarding Recitals 14 and 19 of the
Community Design Regulation the Court held that the preamble
had “[…] no binding legal force and cannot be relied on either
!
96
A. Folliard-Monguiral and Mikas Miniotas, “Apple v Samsung: The Hoge
Raad Legacy”, Journal of Intellectual Property Law and Practice, 2013, Vol.
8, No. 12, pg. 927
97
Recital 7 of the Community Design Regulation: “Enhanced protection for
industrial design not only promotes the contribution of individual designers
to the sum of Community excellence in the field, but also encourages
innovation and development of new products and investment in their
production”.
98
CJEU Judgment from 19.06.2014, C-345/13, “Karen Millen Fashions Ltd v
Dunnes Stores Ltd et al”
''!CJEU Judgment from 19.06.2014, C-345/13, “Karen Millen Fashions Ltd
v Dunnes Stores Ltd et al”, paragraph 35!

! +$!
as a ground for derogating from the actual provisions of the act
in question or for interpreting those provisions in a manner
clearly contrary to their wording.” 100
In other words, a design will have individual character if the
overall impression it produces on the informed user differs from
the overall impression produced on such a user by any design,
which was made available to the public before the filing date of
the application for registration or the priority date claimed.
When assessing the individual character the overall
impression plays the most important role when comparing it to
the prior art. Still, the degree of freedom of the designer will be
taken into consideration. The higher the degree of freedom of
the designer in creating the design in question, the lower
probability that minor differences between the designs in
question will be enough to produce a different overall
impression on an informed user. If the designer’s freedom on
the design is limited, then minor differences between the designs
in question will be enough to produce a different overall
impression on an informed user.101
“Therefore, if the designer
enjoys a high degree of freedom in developing a design, that
reinforces the conclusion that the designs which do not have
significant differences produce the same overall impression on
an informed user”.102
The degree of freedom of the designer can
be limited, for example, by the features imposed by the technical
function of the product or by statutory requirements applicable
!
100
CJEU Judgment from 19.06.2014, C-345/13, “Karen Millen Fashions Ltd
v Dunnes Stores Ltd et al”, paragraph 31
101
The degree of freedom is translated to German as
“Gestaltungsspielräume” and the provision was established in German design
law under § 2 III 2 Designgesetz. Some examples of german case-law are:
BGH, Urteil vom 28.09.2011 – I ZR 23/10, “Kinderwagen”, GRUR 2012,
575; BGH, Urteil vom 24.03.2011 – I ZR 211/08 “Schreibgeräte”, BeckRS
2011, 24658; OLG Hamburg, Urteil vom 29.08.2012 – 5 U 152/11,
“Totenkopfflasche” GRUR-RR 2013, 138
102
GC, Judgement from 09.09.2011, T-10/08, “Kwang Yang Motor Co Ltd v
OHIM (internal combustion engine)”, paragraph 33.

! +%!
to the product. 103
These limits result in a standardisation of
certain features, which will be considered to be common to the
designs applied to the product concerned. 104
The requirement of individual character has certainly
brought plenty more complications in terms of interpretation
than the requirement of novelty. Since there are many terms
which required further determination in order to assure a
harmonized application of the Regulation and the Directive
among all of the Member States of the European Union. Still, in
comparison with the protection of designs established through
the national level under copyright protection, in the case of the
Community design, the case law of the Court of Justice of the
European Union has formulated numerous guidelines for the
understanding of the requirements of protection of Community
designs and has further defined the concepts of the Regulation,
for a better application of it.
The decision of the Kammergericht, of the 19th
November
2004, of the Sea Salt Packaging Sal de Ibiza105
, is another clear
example of the profit of relying on the unregistered Community
design protection. In this case, the claimant was the author of
the design, which was made for a proviso the 25th
of September
of 2003. The proviso said that in the case the design was used,
they would agree to an additional working fee. Nevertheless, the
product was commercialised with the design without notifying
the author. The Landgericht 106
of Berlin dismissed the
infringement of contract law, design law and copyright law. The
Kammergericht considered that the design did not reach the
required level of creativeness to be protected by German
!
103
GC, Judgement from 09.09.2011, T-10/08, “Kwang Yang Motor Co Ltd v
OHIM (internal combustion engine)”, paragraph 32.
104
GC, Judgement from 18.03.2010, T-9/07, “Metal rappers”, paragraph 67.
105
KG Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur
2012, 1919!!
106
The District Court

! +&!
copyright law but recognized that the design did fulfil the
requirements for design protection of articles 5 and 6 (1), since
it was new, it had distinctive character and it had been made
available to the public within the European Union when it was
commercialised by the defendant. Firstly, the Kammergericht
said that the design was to be considered new because there
were no identical designs on the moment it was first made
available to the public in the European Community.107
Secondly,
the court said that in order to assess the individual character of
the design, the overall impression given by the design to an
informed user should be different than the overall impression
given by any other design available to the public.108
Of course,
the court also took into account the degree of freedom of the
designer.109
Consequently, the Kammergericht considered that
the design was protected as an unregistered Community design
and, therefore, there was infringement. Besides, the court set
that the design was made available to the public in accordance
with article 7 (1) of the Community Design Regulation when the
defendant started to commercialise the product with the design
of the plaintiff. The fact that this requirement can be fulfilled
although it is not the designer itself who has made it public
warrants the designer certainty of protection.
!
107
KG, Beschluss vom 19.11.2004 – Az 5 W 170/04, “Sal de Ibiza”, openJur
2012, 1919, paragraph 14:!“Ein Geschmacksmuster gilt gemäß Art. 5 GGVO
als neu, wenn der Öffentlichkeit kein identisches Geschmacksmuster
voerbekannt ist, wovon auszugehen ist, wenn sich ihre Merkmale nur in
unwesentlichen Einzelheitenunterscheiden.”
108
2012, 1919, paragraph 14:! “Darüber hinaus erfordert die ‘Eigenart’ gemäß
Art. 6 Abs. 1 GGVO, dass sich der Gesamteindruck, den das
Geschmacksmuster beim informierten Benutzer hervorruft, von dem
Gesamteindruck unterscheidet, den ein anderes vorbekanntes
Geschmacksmuster bei diesem Benutzer hervorruft.”
109
2012, 1919, paragraph 14: “Je höher die Musterdichte in einer
Erzeugerklasse ist, desto geringere Anforderungen dürfen an die
Unterschiedbarkeit gestellt werden und umgekehrt (Koschtial, a.a.O., Seite
977).”

! +'!
Unregistered Community design protection has proven to be
a useful tool to protect designs, which do not reach the required
level of creativeness and have not been registered as
Community designs. As in copyright, designs may enjoy of a
free of formalities and free of charge protection, as unregistered
Community designs. However, despite the benefits of the
automatic protection of unregistered rights, the registration for a
Community design has important advantages, especially in
terms of evidence of ownership. The design registration is
considered as evidence of ownership over the design. Designs
are treated as objects of property110
and, in the case that it is
transferred, the transferee may invoke all “the rights arising
from the registration of the Community design”111
once entered
in the register. The registration in the name of the transferee is
binding and has effect vis-à-vis third parties in all Member
States112
. In the case of unregistered or copyright protection, the
lack of registration may result in the absence of proof as to
ownership and authorship. However, under German copyright
law, the Urheberrechtsgesetz § 10 establishes the presumption
of authorship and ownership, according to which the person
designated as the author on the copies of a released work or on
the original work will be regarded as the author if there is no
proof to the contrary. When the author has not been named the
editor on the copies –or the publisher in case there is no editor-
shall be entitled to assert the rights of the author.113
For this
!
110
Title III of the Community Design Regulation: Community Designs as
Objects of Property
111
Article 28 of the Community Design Regulation
112
Article 33 Community Design Regulation
113
Urheberrechtsgesetz § 10 “(1) Wer auf den Vervielfältigungsstücken eines
erschienenen Werkes oder auf dem Original eines Werkes der bildenden
Künste in der üblichen Weise als Urheber bezeichnet ist, wird bis zum
Beweis des Gegenteils als Urheber des Werkes angesehen; dies gilt auch für
eine Bezeichnung, die als Deckname oder Künstlerzeichen des Urhebers
bekannt ist. (2) Ist der Urheber nicht nach Absatz 1 bezeichnet, so wird
vermutet, daß derjenige ermächtigt ist, die Rechte des Urhebers geltend zu
machen, der auf den Vervielfältigungsstücken des Werkes als Herausgeber
bezeichnet ist. Ist kein Herausgeber angegeben, so wird vermutet, daß der
Verleger ermächtigt ist.”!

! ")!
reason, in order to avoid the entitlement to a third who is not the
author, the author should take care of having proof of the
ownership. This could be some drafts of the work, proof of the
work in progress or sketches.
IV. Scope of protection
A. Copyright protection
1. Moral rights and exploitation rights
The scope of copyright under the Urheberrechtsgesetz
protects “the author in his intellectual and personal relationships
to the work and in respect of the use of the work.”114
Designs
entitled of copyright protection under the German Copyright Act
enjoy a wide range of rights. These rights can be classified into
two types; the moral rights of the author, which protect the
immaterial interests of the author, and the exploitation rights,
which provide material protection. Besides, the
Urheberrechtsgesetz provides “other rights of authors”.
The moral rights of the author include the Right of
publication115
, right to be identified as the author116
and the right
to prohibit distortion of the work117
. The moral rights protect the
author in his personal and intellectual relation to the own work
providing an inseparable connection between the author and the
work. The author of the work has the right of publication,
including the determination of how and whether to do it at all.
Besides, the author has the right to require his authorship to be
!
114
Translation of the first sentence of the Urheberrechtsgesetz § 11. Provided
by the Federal Ministry of Justice in cooperation with juris GmbH.
115
Urheberrechtsgesetz § 12
116
Urheberrechtsgesetz §13
117

! "(!
recognised. Finally, the author has the right to prohibit the
“distortion or any other derogatory treatment” of the work,
including after the work was sold.
The German copyright Act provides a long list of exclusive
rights, such as the right of reproduction 118
, right of
distribution119
, the right of exhibition120
, the right of making the
work available to the public121
, the right of broadcasting122
and
the right of resale123
. However, some of these rights shall not
apply to works of applied art. The right of resale is a clear
example of an exemption. Another example is in § 17, which
confers the author, the right of distribution of the work. § 17 (2)
specifies that when the original has been brought to the market
by sale with consent of the person entitled to distribute them,
their dissemination will be permitted, except by means of rental.
The exception comes in § 17 (3), where it says that the provision
of “rental” under § 17 (2) will not be applicable to the transfer
of originals or copies of works of applied art.
Perhaps one of the most valuable advantages of protecting
works under copyright is the priceless bond that always remains
between the work and the author. The moral rights of the author
remain in spite of the sale of the work. For example, the author
will still have the right to prohibit the distortion or a derogatory
treatment of the work even when not having the ownership of
the work. In this matter the Urheberrechtsgesetz goes one step
further with § 39 (1) under which the holder of an exploitation
right is not permitted to alter the work, the title or designation of
authorship unless otherwise agreed. Even if the author is
granting the exploitation rights of the copyright work to a third,
!
118
119
Urheberrechtsgesetz §17!
120
121
Urheberrechtsgesetz §19 a
122
123
Urheberrechtsgesetz § 26!

! "*!
the author will still have some sort of power over the work. In
other words, the copyright will always belong to the author. In
fact, as stated in § 29, copyright is not transferrable. The
copyright shall be inheritable, under § 28, and unless it is
“transferred in execution of a testamentary disposition or to co-
heirs as part of the partition of an estate”124
the copyright will
not be transferrable. Sure, the author has the possibility to grant
the exploitation rights, contractual authorizations and
agreements based on exploitation rights. Furthermore, the
contracts on moral rights of the authors shall also be permissible
under Urheberrechtsgesetz § 39 “(1) The holder of an
exploitation shall not be permitted to alter the work, its title or
designation of authorship unless otherwise agreed. (2)
Alterations to the work and its title to which the author cannot
refuse his consent based on the principles of good faith shall be
permissible”.125
Despite of these provisions, the protection given
by copyright to the bond between the work and the author is
very high and particular from copyright law.
2. Abhängige Bearbeitung126
and Freie Benutzung127
Besides, the fact that in the copyright regime there are several
interests at stake defines the scope of protection of copyright
works. On the one hand, the interests of the author, requires
more exclusive rights. On the other hand, the public interest or
individuals that want to use works protected by copyright,
require limiting these exclusive rights. Therefore, in the
copyright law of most countries the lists of rights and the limits
!
124
Urheberrechtsgesetz § 29. Translation provided by the Federal Ministry of
Justice in cooperation with juris GmbH.
125
Translation provided by the Federal Ministry of Justice in cooperation
with juris GmbH.
126
Abhängige Bearbeitung, under Urheberrechtsgesetz § 23, refers to the
adaptations and transformations made on the work.
(*%!Freie Benutzung, under Urheberrechtsgesetz § 24, refers to the free use
of the work.!

! "+!
to the exclusive rights come side by side. The
Urheberrechtsgesetz contains several provisions limiting the
scope of rights of the author. The limits to copyright protection
under German copyright law are set on the Urheberrechtsgesetz
§§ 44 (a) ff.128
and aim to bring into balance the rights of
protection of the creator of the work (the author of the work)
and the rights of the people who are interested in the use of the
work. The established limits to copyright protection are to be
understood as a close list and the space left to analogy is
extremely limited.129
The aim of the limits is to achieve the
balance of interests.
It must be taken into account that the limitations on copyright
set on the Urheberrechtsgesetz are based on article 5 of the
Directive 2001/29/EC of the European Parliament and of the
Council of 22 May 2001 on the harmonisation of certain aspects
of copyright and related rights in the information society. When
interpreting the mentioned limits article 5 (5) of the Directive
establishes a Three-Step Test 130
, according to which the
limitations will only be applied (1) in certain special cases,
provided that (2) it does not conflict with a normal exploitation
of the work or other subject-matter and (3) it does not
unreasonably prejudice the legitimate interests of the right
!
128
The limits under §§ 44 (a) ff. concern temporary acts of reproduction;
administration of justice and public security; persons with disabilities;
collections for religious, school or instructional use; public speeches;
newspaper articles and broadcast commentaries; reporting on current events;
quotations; communication to the public; making works available to the
public for instruction and research; communication of works at terminals in
public libraries, museums and archives; reproduction for private and other
personal uses; order for dispatch of copies; reproduction by broadcasting
organisations; use of a database work; reproduction and communication to
the public in commercial enterprises; incidental works; works in exhibitions,
on public sale and in institutions accessible to the public; works in public
places; portraits and; orphan works.
129
BGH, Urteil vom 11.07.2002 – I ZR 255/00, “Elektronischer
Pressespiegel”, GRUR 2002, 963, 965 FF.
130
Declaration “A Balanced Interpertration of the Three-Step-Test” in
Copyright Law

! ""!
holder. The Three-Step Test has been established to prevent the
excessive application of limitations and exceptions.
Besides the limits established in §§ 44 a. ff., the
Urheberrechtsgesetz also establishes some limits of time. Some
rights exhaust after using them, for instance the right of
distribution in § 17, if there is free use under § 24 or to let
access to official works, under § 5.
The right of reproduction of the Urheberrechtsgesetz grants
the author the exclusive right to produce copies of the work.131
Additionally, German copyright law protects the author of a
work from adaptations and transformations of done to the work.
The “abhängige Bearbeitung” refers to adaptations or
transformations of the work, which according to the
Urheberrechtsgesetz shall only be published or exploited with
consent of the author of the adapted or transformed work.
Certainly, the Urheberrechtsgesetz provides the author with a
wide range of rights and protects the author in his intellectual
and personal relationship to the work and the work itself.
Nevertheless, §11 is to be understood in a strict way. It provides
a right of monopoly over one work, but not over any similar
work or work which was inspired on it. In this sense, §24
establishes the freie Benutzung, or free use, which provides that
an independent work created in the free use of the work of
another person may be published and exploited without need of
the consent of the author of the work used. Regardless of
whether the essence of the work “used as inspiration” is still
recognisable in the latter work. The defining characteristics of
the original work will have fade from the new work but may still
be recognisable. The dividing line between “freie Benutzung”
!
131

! "#!
and “abhängige Bearbeitung” can sometimes be extremely
thin.
Regarding the differentiation the BGH has established a
method of assessment “Verblassenstheorie”132
, according to
which, the free use only takes place when, taking into
consideration the individuality of the new work, the borrowed
personal characteristic of the older work has faded away.
For example in the decision from the 17th
of July 2013133
the
BGH accepted the literary figure of Pippi Longstocking as a
literary work since Pippi Longstocking has a distinct personality
due to her unusual external features. A third party used the
image of the literary figure in advertisements without consent of
the copyright owner. Nevertheless, the court considered that
there was no copyright infringement and that the plaintiff had no
right to damages since, although the literary figure was clearly
recognisable on the advertisements, the images only adopted
some of the relevant characteristics of its copyright protection.
Pippi Longstocking has unique personal characteristics with
distinct external features (carrot-coloured hair in braids, a
freckled nose with form of a little potato, a smiley face, yellow
dress etc.) and in the cases where the literary figure remains
recognisable, it is not enough for copyright infringement if the
older work only copies a few selected external features which by
themselves would not have been enough to create copyright
protection for that figure.134
!
132
BGH, Urteil vom 20.03.2003 – I ZR 117/00 “Gies-Adler”, GRUR 2003,
956
133
BGH, Urteil vom 17.07.2013 – I ZR 52/12 “Übernahme äußerer
Merkmale einer literarischen Figur – Pippi Langstrumpf-Kostüm”, NJW
2014,771
134
BGH, Urteil vom 17.07.2013 – I ZR 52/12 “Übernahme äußerer
Merkmale einer literarischen Figur – Pippi Langstrumpf-Kostüm”, NJW
2014,771, Leitsatz 2: “Für die Abgrenzung der verbotenen Übernahme
gem. § 23 UrhG von der freien Benutzung im Sinne von § 24 I UrhG kommt
es auf die Übereinstimmung im Bereich der objektiven Merkmale an, durch
die die schöpferische Eigentümlichkeit des Originals bestimmt wird. Für eine

! "$!
3. Earlier intellectual property rights
As earlier mentioned, the “Design Directive is at the
vanguard of the harmonization of copyright law in the European
Union.”135
Both article 11 (2) (b) of the Design Directive and
article 25 (1) (f) of the Community Design Regulation set that
an already registered Community design may be declared
invalid on application to the OHIM “or by a Community design
court on the basis of a counterclaim in infringement
proceedings”136
“if the design constitutes an unauthorised use of
a work protected under the copyright law of a Member State.” In
the case of unregistered Community designs, a Community
design court will declare the invalidity on application to such a
court or on the basis of a counterclaim in infringement
proceedings.137
The Design Directive pays attention to the
overlapping intellectual property rights once again. Under this
provision, a registered Community design that makes
unauthorised use of a work protected by copyright law in any
country of the European Union shall be held invalid.
In the cases of applying for invalidity under article 25 (1) (f),
due to the lack of harmonization of copyright law in the
European Union, the copyright law applied to consider whether
the earlier work is indeed entitled of copyright protection will be
the one of its own country. Considering that works protected by
copyright law in one Member State of the European Union may
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
nach § 23 UrhG verbotene Übernahme eines Charakters ist es mithin nicht
ausreichend, dass eine Abbildung [...] lediglich einzelne äußere Merkmale
der literarischen Figur übernimmt. Diese Elemente mögen zwar die äußere
Gestalt der Romanfigur prägen. Sie genügen aber für sich genommen nicht,
um den Urheberrechtsschutz an der Figur zu begründen und nehmen daher
auch nicht isoliert am Schutz der literarischen Figur teil.”
135
A. Tischner. “Focus on the Polish Regulation of Copyright and Design
Overlap After the Judgement of the Court of Justice in Case 168/09 (Flos v.
Semeraro)” IIC 2012, 202!
136
Article 24 (1) of the Community Design Regulation
137
Article 24 (3) of the Community Design Regulation!

! "%!
be different to those from another Member State, the owner of
the copyright work stands in a clear advantage over the owner of
the Community design, if it is from another Member State.
In the recent decision T-556/11 and T-567/11 of Viejo Valle v
OHIM, the General Court of the European Union has made use
of this provision of earlier intellectual property right, holding
invalid two registered Community designs for making
unauthorised use of a work protected by copyright law.138
The
work protected by French copyright law constituted a grooved
decoration on items of crockery. The General Court upheld the
decision of the Board of Appeal at the OHIM considering that
the earlier work had distinctive character and sufficient original
character to be entitled of copyright protection under French
law. Moreover, it held that the work “fell, ‘despite (or because
of) its simplicity’, within the category of intellectual works
capable of reflecting the personality of their author and was
accordingly protected under French copyright law.” 139
The
Board of Appeal found that the protected work was present in
the disputed designs and that it had been “copied – or used –
without permission”. Besides, the Board of Appeal pointed out
that “in order to assess the ground for invalidity, it was not
appropriate to compare the designs at issue as a whole, but only
to determine whether the work protected by copyright was used
in the later designs, that is to determine whether the presence of
that work could be noted in those designs […]”140
. The Court
decided that the work was recognisable in the design and
therefore invalidated the design.
!
138
GC, Decision from 23.10.2013 – T-566/11 and T-567/11 “Viejo Valle,
S.A. v OHIM”
139
S.A. v OHIM”, paragraph 88
140
S.A. v OHIM”, paragraph.100!

! "&!
However, when reading the decision one is lead to believe
that the plaintiff did not have advice from a French attorney. For
example, when the plaintiff stated the “lack of artistic character”
of the work or when the plaintiff incorrectly argued that the
work could not be protected under French copyright law given
that crockery is an industrial product. For this reason, the owner
of the copyright work will stand in a clear advantage over the
owner of the Community design, if the second one is not
familiar enough with the copyright law of the first one. The
court might have reached the same decision but it would have
been harder for the copyright work to invalidate the registered
Community design.
B. Community design protection
1. Rights conferred by the Community design
Designs entitled of Community design protection enjoy of a
wide range of rights. However, we will not find the previously
mentioned rights given by copyright, which protect the author in
his personal and intellectual relation to the own work and
provide an inseparable connection between the author and the
work. Perhaps, this is mainly due to the market-based approach
given to the Community designs. In fact, whilst many rights
over a copyright work still remain after granting exploitation
rights and losing the ownership of the work, the majority of the
rights conferred by the Community design are entitled to the
owner of the design, not to the author of the design. However,
the right of the author of the design under the Community
Design Regulation, which could be compared to the copyright
moral right “recognition of authorship” under § 13
Urheberrechtsgesetz, is the “right of the designer to be cited”
recognized in article 18 of the Regulation.

! "'!
The right to the Community design belongs to the “designer
or his successor in title”.141
Yet Paragraph 3 of the article 14 of
the Regulation specifies, “where a design is developed by an
employee in the execution of his duties or following the
instructions given by his employer, the right to the Community
design shall vest in the employer, unless otherwise agreed or
specified under national law.”142 143
Again, the Regulation
specifies the protection given to the owner of the design.
Both, the registered and the unregistered Community design
enjoy unitary protection in all Member States of the European
Union. The Regulation sets the rights conferred by the
Community design. In this regard the Regulation differentiates
between the rights conferred by a registered Community design
and by an unregistered Community design. On the one hand, the
registered Community design confers its holder the exclusive
right to use the design and prevent any third party of an
unauthorised use of it. On the other hand, the unregistered
Community design confers its holder a more restricted right
since, unlike the registered Community design, the unregistered
Community design only confers its holder the right to prevent
any third party of an unauthorised use of it that results from
copying the protected design. In other words, the scope of
protection of an unregistered Community design includes any
design which does not produce on the informed user a different
overall impression –the same as for registered Community
designs –however, an unregistered Community design only
!
141
Article 14 (1) of the Community Design Regulation.
142
Translation provided by the Federal Ministry of Justice in cooperation
with juris GmbH.
143
To this regard, the German design law establishes under § 7 (2)
Designgesetz that, under the mentioned circumstance, the design will belong
to the employer unless otherwise agreed on the contract: “Wird ein Design
von einem Arbeitnehmer in Ausübung seiner Aufgaben oder nach den
Weisungen seines Arbeitsgebers entworfen, so steht das Recht an dem
eingetragenen Design dem Arbeitgeber zu, sofern vertraglich nichts anderes
vereinbart wurde.”

MASTERARBEIT - Consuelo Álvarez 31_07_2014

MASTERARBEIT - Consuelo Álvarez 31_07_2014

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