Scratching the surface – surface design protection in the US, EU and UK
Fashion and retail designers producing useful and functional (i.e., not purely aesthetic) articles can feel between a rock and a hard place sometimes when trying to get adequate protection for their creative works. In theory, designs can be protected by a diverse range of legal regimes. However in a market that calls for specific and swift protection of designs (particularly in fashion and retail industries) the reality can be high legal thresholds and/or hefty granting proceedings to get the protection they require, and sometimes such protection has proven to be unavailable all together. This article compares the availability of surface design protection in the US, EU and UK.
In the US, “useful articles” are afforded copyright protection only if the design aspects “can be identified separately from and are capable existing independently of the article’s utilitarian aspects“. This has led to cases such as copyright protection being denied from the design of prom dresses on the basis that the design would be inseparable from their dress’s function of “covering the body in an attractive way”. Recently, the US Supreme Court seems to have stepped away from such case law by deciding that cheerleading uniform decorations pass the separability test and are therefore eligible for copyright protection because they are “perceived as a two- or three-dimensional work of art separate from the useful article” and still qualify as protectable expression when “imagined separately from the useful article into which they are incorporated.” 
[One of the protected Varsity designs]
While this new judgment has the benefit of putting forward a standard test that appears to be broader in scope than previous US courts’ practice, commentators do not expect this will to lead to legal certainty, with some commentators calling the decision a “lost opportunity“. This lack of certainty about the availability of copyright protection in itself is, of course, problematic for surface designers in the US, if in practice they have no alternative recourse.
In Europe, on the other hand, those wishing to protect their designs will face a legal landscape that is, generally speaking, much more favorable. As far as copyright protection is concerned, and despite certain efforts to harmonise the legal framework, including for instance the basic requirement of “originality”, the law and practice across the different nations can be quite different. While certain countries entirely or partially exclude copyright protection for designs of functional products, like Italy for instance where the separability test (criterio della scindibilità) appears well vested in legal tradition, others countries (like Belgium and France) are much more lenient and award full copyright protection to any original design, irrespective of whether it performs a function or purely has aesthetic value.
Despite such uncertainty regarding the availability of copyright protection for functional design, the protection of surface design in Europe is much more straight forward than in the US because designers benefit from a uniform, relatively low-standard and wide-scoped protection in the form of the Community Designs right.
- First of all, EU design legislation provides for a wide definition of protectable “design”, as “the appearance of a product of the whole or part of a product resulting from the features of the lines, contours, colors, shape, texture or its ornamentation”. This therefore covers both 2D and 3D elements, specifically including surface design.
- In addition, it is fair to say that the requirements of novelty and individual character are interpreted favourably, amongst others, to surface designers. In Karen Millen v Dunnes, for instance, the Court of Justice’s ruled that the individual character of a Community Design must be assessed by reference to specific earlier designs taken individually, rather than the entire corpus of existing designs.
[the Karen Millen design compared to the Dunnes product]
Considering that the merit of a surface design will most often have to emerge from the specific combination of prints, patterns, colors and/or shapes that, taken individually, had existed before, this judgment was applauded for setting a commercially sensible standard. In practice, it facilitates the protection of fashion creation, surface design in particular.
- A third, and probably major, advantage for surface designers in Europe, is that they do not have to go through a lengthy registration and examination process, but benefit from protection against copycats throughout the whole of the EU, upon first disclosure within the EU, thanks to the Unregistered Community Design Right (UCDR). Designers of short-lived products have welcomed the short (3-year), yet immediate and formality-free protection a UCD offers. Disclosing the design within the EU first should probably not pose particular difficulty for surface designers in the fashion and retail industries, especially not with world renowned and emerging fashion capitals in Paris, Milan, Antwerp, Berlin or London.
Unlike in the EU, where the scope of Unregistered Community Design Rights (UCDR) includes surface design, in the UK surface design is expressly excluded from protection by UK unregistered design rights (UKUDR). Surface design can be covered by copyright if the design can have an independent existence from the article to which it applied. Often this is not the case, as highlighted in Lambretta v Teddy Smith.
In its 2004 judgement, the Court of Appeal held the artistic colourway of the Lambretta garment (white stripes on a “retro-vintage” top) could not be separated from the shape of the garment itself and therefore the surface design could not be protected by copyright. And since surface design is not covered by UKUDR either, unfortunately for Lambretta it ‘fell in the gap’ between these two rights.
Were these events to occur today, the protection available to Lambretta would be different, as it would not have to solely rely on UK rights but could benefit from the safety net of the UCDR regime. European legislation – as set out above – does not pose any separability requirement to surface decoration and even specifically protects design features such as lines and colours.
But as soon as the UK leaves the EU, there is a big risk that this safety net will disappear. UCDR would no longer be available in the UK. And, while UCDR protection will still prevail in the EU, it will only if the first disclosure of the design was within the EU (i.e., not in the UK). Early disclosures in the UK risk invalidating any later UCDR the designer would otherwise have had in the EU, or any registered CDR that is not filed within 12 months.
If the UK government does not broaden the scope of its UKUDR to that of UCDR, the Lambretta gap will exist once again, leaving surface designers in the UK with no other choice than to apply for UK design registration if they wish to showcase their collection in the UK first (for instance during London fashion week). As mentioned earlier, the pace of certain industries does not anticipate the time, effort and financial burden that recurrent registration can require. Therefore, since an EU right is likely to be geographically more valuable to designers than a local UKUDR, it might just be that designers will prefer broadcasting their surface designs first at a trade show within the EU.
 US: utility patents, copyright, and, to some extent, trademark, passing off law – Europe: registered and unregistered design, copyright, unfair competition, and, to some extent, trademark law and utility models.
 In Star Athletica v. Varsity Brands, 22 March 2017
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