Research Handbook on Design Law

‘Hennig Hartwig’s edited collection is a timely, highly informative and fundamental contribution to the academic debate on design rights in general, and the surrounding policies and divergent approaches taken to them in various jurisdictions, in particular. The breadth of topics and jurisdictions discussed, and the book’s depth of analysis, makes the Research Handbook on Design Law an invaluable addition to Elgar’s series and IP scholarship at large. It is an indispensable read for all those interested in gaining a wider and deeper understanding of all pertinent issues concerning design law, and it provides a springboard for further research and policy discussions in this exciting field of IP law.’
– Marc D. Mimler, Queen Mary Journal of Intellectual Property

‘The slant is more to the academic than to the practitioner but it has enough for both. If you want to know “what is the state of the law on design topic X”, this is the book for you. You will probably also find, as I did, that once you delve into one chapter you will find a wealth of information around the topic as well as on the question you originally asked. And you will no doubt wonder at some point, as you look at one of the many illustrations of some mundane design: “how on earth did that ever get registered”? The answers are all within.’
– Douglas Campbell QC, Journal of Intellectual Property Law & Practice

‘This is an excellent book for those who are seriously interested in design law. The contributions have been written by leading academics and practitioners in design law and together represent a treasure trove of cases, examples, good pieces of advice and detailed and high quality analyses of different aspects of design law. It is particularly refreshing that many of the contributors manage to include comparative perspectives. This book delivers on all the parameters and more so and it does so with flying colors.’
– Jens Schovsbo, Nordiskt Immateriellt Rättsskydd

‘The Research Handbook on Design Law addresses the need by collecting comparative studies of product designs authored by the world''s leading practitioners and scholars. Topics are carefully selected by Dr. Henning Hartwig, a leading design law practitioner involved in the landmark decisions of the Court of Justice for European Union (CJEU), based on his extensive experience in litigating community and German design rights and other related rights for both German and US clients. Overall, it bridges academic theories and a practice strategy for procuring and enforcing multiple IP rights on product designs in the global market.’
– Toshiko Takenaka, Journal of the Patent & Trademark Office Society

‘In short, this book is an exceptional foray into the multifaceted world of designs and provides an invaluable source of scholarship for both practitioners, academics and policy-makers specialising in this fast-moving area of IP. It contributes to the current state of knowledge in this field and gives much material for further reflection.’
– Gordon Humphreys, European Intellectual Property Review

‘The book is at home on both an academic and a practitioner bookshelf and I’m sure will be an important and valuable work for many years to come.’
– Rosie Burbridge, IPkat.com

‘This work is based on the knowledge of how important every chapter is for deepening, but also for harmonizing international design law. In this respect, this book makes an essential contribution. These in-depth analyses are not only a very welcome help for daily practice but – particularly nowadays when preparing for a reform of the design law of the European Union – also of great value for the further development of this area of intellectual property law.’
– Guido Kucsko, Österreichische Blätter für Gewerblichen Rechtsschutz und Urheberrecht (originally published in German: translated by Henning Hartwig)

‘This collection offers a highly readable collection of scholarship which is to be commended for getting to grips with the nitty gritty of difficult points of design law, and for its rich coverage of different jurisdictional perspectives. The Handbook offers an invaluable resource to readers looking to develop comparative perspectives. It also shines a light on a number of design law issues which have perhaps not received the attention in the literature that they deserve, as well as exploring still-evolving points of practice and the potential for novel interdisciplinary inputs. The collection is also rightly imbued throughout with a sustained interest and focus on the particularities and challenges of design law as a legal field which is very much centred upon the visual, and the inherent difficulties which arise as a result in design filing and in analysing, arguing and deciding design cases. Contributions are both practically useful and intellectually stimulating, and the collection is populated throughout with helpful illustrations – a must in any text dealing with design law.’
– Jane Cornwell, Intellectual Property Quarterly

‘This book is both a practice-oriented and intellectually inspiring analysis of European, U.S. and international design law. Its chapters, written by practitioners and academics who are leading in this field, cover fundamental issues of practical importance, of doctrine and of policy.’
– Ansgar Ohly, Ludwig Maximilian University of Munich, Germany

‘Design law is perhaps the most conceptually challenging of all IP rights, sometimes and sometimes not co-existing with other IP rights. Trade marks, copyright and some patent law conceptions are all in the mix. This collection of chapters is remarkable. It illuminates the issues and how different laws and judicial decisions around the world have, in their various ways, struggled with the often inchoate or cloudy concepts behind legislation. And the book is also a pleasure to read. A must.’
– The Rt. Hon. Sir Robin Jacob, UCL Faculty of Laws, UK

Contributors: E. Derclaye, J. Du Mont, T.-G.G. Durkin, Á. György, H. Hartwig, M.D. Janis, A. Kur, C.L. Mauro, C.D. Morley, D. Musker, M. Polson, R.M. Stutz, U. Suthersanen, A. Tischner, B. Volken, A. Von Mühlendahl

Contents:

Introduction to the Research Handbook on Design Law xxiv
Henning Hartwig

PART I FOUNDATIONS
1. Requirements for Design Protection: Global Commonalities 2
Bernard Volken
2. Trends in Functionality Jurisprudence: U.S. and E.U. Design Law 30
Jason Du Mont/Mark D. Janis
3. Easier to See than to Say: Catching the Elusive Spirit of Design in a Net of
Words 77
David Musker

PART II METHODOLOGICAL PERSPECTIVES
4. Reciprocity in European Design Law 119
Henning Hartwig
5. Design Rights and Designer’s Rights in the EU 169
Anna Tischner
6. Enablement and Indefiniteness in U.S. Design Patents after In re Maatita
and Ex parte Kaufman 207
Margaret Polson

PART III: ESTABLISHING AND ENFORCING PROTECTION
7. Protection of Designs on the Basis of Use 232
Estelle Derclaye
8. Claiming Priority under the Community Design Scheme 250
Henning Hartwig
9. Enforcing Design Rights throughout Europe 283
Annette Kur

PART IV: CRITICAL ISSUES
10. Protection of Spare Parts in Design Law: A Comparative Law
Analysis 304
Annette Kur and Ádám György
11. Design Protection for Graphical User Interfaces 345
Tracy-Gene G. Durkin
12. ‘Mast-Jägermeister’ before the Court of Justice of the EU: What the
Outcome Really Means 378
Henning Hartwig

PART V TRANSNATIONAL AND COMPARATIVE DIMENSIONS
13. International Design Law Policies: Present and Future 405
Robert Mirko Stutz
14. Three-Dimensional Trade Marks and Designs: Comparison and Conflict 441
Alexander von Mühlendahl
15. Cross-border Copyright Protection in Europe 482
Uma Suthersanen
16. How Different is Different? Modern Neuroscience and its Impact on Design
Law 507
Charles Lee Mauro and Christopher Daniel Morley

Index 550