When is design protected? And when do products look too much alike? These are the questions that have come up in the De Poortere/By-Boo case. De Poortere and By-Boo both sell carpets. De Poortere argues that By-Boo infringes its intellectual property rights with regard to two carpets, and demands this is stopped. Among other things, it invokes copyrights, unregistered Community design rights and slavish imitation.
The Vintage Multi carpets by De Poortere are made in such a way that they give the impression of having been composed of various pieces of fabric that have been sewn together (patchwork). In reality, it is a single piece of fabric. Poortere argues that By-Boo infringes its rights with regard to the Vintage Multi carpets.
Protection as unregistered Community design?
Protection as unregistered Community design is limited to three years, provided such a design is new and has an individual character. The parties do not dispute the fact that the Vintage Multi carpets were made available to the public at a trade fair for the first time on 9 September 2011.
By-Boo argues that the Vintage Multi carpets were not new at that date and lacked individual character, given the then existing design corpus. To that end, it has included various images of carpets in its statement of defence, originating from Internet pages generated via Google, with a search period of 1 January 2009 until 31 December 2011. The district court regards this as insufficient evidence:
De Poortere has however given a substantiated argument that the search period entered and the dates given with the search results relate only to the date on which the web pages in question were put online and that they say nothing about the content thereof, which may have changed by now. By-Boo et al. have failed to sufficiently dispute this. It can therefore not be assumed that the carpets in the images of the Internet pages in question had been made available to the public before 9 September 2011 and that they can be regarded as design corpus in relation to the Vintage Multi carpets. The district court therefore ignores these images.
An Oceano carpet from June 2011 does not detract from the novelty and individual character either, says the district court, as it differs too much from the Vintage Multi. The same applies to a carpet Reloaded, which appeared in the June 2010 issue of Linda Wonen.
Protection of copyright?
In addition, De Poortere invokes copyright protection. The district court agrees with this:
Although the choice of one main colour for the Vintage Multi designs (red, blue, etc.) can be regarded as trivial and although the fact that existing patterns were used for the designs is not disputed, it does not alter the fact that the maker made personal choices with regard to the selection of those patterns, the combination thereof within the designs and (the combination of) range of colouring. This also applies to the lineation (composition) and the way in which the stitching is applied. A lot of other choices could have been made in that respect. The fact that a patchwork look requires the sections to be (visibly) connected by stitching or to do it in the way it has been done in this case (see 3.2.1) cannot be appreciated without further substantiation from By-Boo et al, which is lacking. Also, it has neither been argued, nor has it become evident that the combination of the characteristics mentioned by De Poortere already appeared in the design corpus (in its entirety) and has been derived from that. The district court is of the opinion that the combination of these elements, not protected in themselves – De Poortere has not invoked individual protection of one of the characteristics it has mentioned – demonstrates free creative choices by the maker, resulting in an original product. The Vintage Multi designs and carpets in which these are embodied are therefore protected under copyright, also within the already existing patchwork style.
The district court also accepts infringement of a carpet by De Poortere (Patchwork design 1), as it has not been contested that the carpets in question are identical. However, no infringement is accepted for Patchwork design 2. The decision in that respect is as follows:
The carpet with Patchwork design 2 has similar – albeit paler – ranges of colouring as the Vintage Multi carpet. Also, like the Vintage Multi carpet, it has flowery patterns and a slightly more oriental pattern, as well as a section with a carpet edge. However, the characteristic large circle pattern in the Vintage Multi carpet does not appear in the Patchwork design 2, and neither does the latter have a quadrant in the corner of the carpet (or elsewhere). There are also differences in lineation. The sections of the Vintage Multi carpet have virtually the same shape and size and we can see a straight division of the sections, as De Poortere itself has also said. As a result, the carpet – despite the light staggering of the sections in relation to each other – has near enough continuous lines. This is not the case with the carpet with the Patchwork design 2, as that carpet consists of sections of various sizes, as a result of which the straight lines are interrupted. The lines in the carpet with the Patchwork design 2 are, other than the Vintage Multi carpet, emphatically highlighted. (…) The stitching of the Vintage Multi carpet consists of light-coloured, narrow stitches that are placed slightly apart, as a result of which they do not become visible until you get close to the carpet. In the carpet with the Patchwork design 2, the framing of the sections across the carpet’s width consists of clearly visible edging with wide, closely positioned stitches. The longitudinal lines are formed by edging that is even more visible, which seems to consist of two or more strings secured by stitches. In various places, this edging is of a (bright red) colour that is in contrast with the colour of the adjacent sections. Other than the stitches in the Vintage Multi carpet, this edging does not give the optical illusion of the sections being stitched together, but it forms striking lines along the various sections. As a result of this and the various sections sizes, the carpet with the Patchwork design 2 looks more cluttered and less harmonious compared to the Vintage Multi carpet, as argued by By-Boo et al. As a result, in the opinion of the district court, said differences make that the carpet with the Patchwork design 2 gives a different general impression on informed users, as they are highly attentive, than the Vintage Multi carpet of De Poortere. This is therefore not a case of imitation. As a result, this does not concern infringement of the unregistered Community design rights of De Poortere either 4.29. From the above it arises that the carpet with Patchwork design 2 cannot be regarded as unlawful reproduction within the meaning of the [Copyright Act].
De Poortere invoking slavish imitation is also denied.
With regard to the Patchwork design 1 carpets, the district court orders By-Boo to immediately stop and continue to stop every infringement of the copyrights of De Poortere. They must also make a statement of data, it is ordered to pay compensation and surrender profits and it must carry out a recall in respect of the infringing carpets.
From this ruling it follows that all forms of original designs do in principle qualify for design protection, i.e. including the design of decorative fabrics, including rugs, ottomans, cushions and carpets. When designs are identical, they easily constitute infringement. However, if the patterns show deviations, they may not constitute infringement. Read the ruling here (Dutch).
By Joost Becker.