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27 May 2019
For the first time, the Patent and Market Court of Appeal has found a watch protected by copyright as a work of applied art and called time on an infringing watch. The court reached its decision by applying European Court of Justice (ECJ) case law on the harmonised copyright concepts of work and originality, concluding that that the time had come for the Swedish courts to assess such concepts based on applicable EU case law, rather than outdated Swedish case law (PMT 5885-18).
In November 2016 a retailer imported and launched a minimalistic watch with a nato strap available in several colours on the Swedish market. In all material respects, the watch case and the strap pattern and colour options of the nato strap were identical to an international bestselling model from leading Swedish watch manufacturer Daniel Wellington.
Daniel Wellington sued for copyright infringement. The retailer contested the claim and invoked a substantial amount of prior art, arguing that the watch did not constitute a work of applied art protected by copyright as it merely constituted a simple combination of previously known design elements of watches.
Relying heavily on the prior art invoked and by reasoning that the watch design was based on simple variations of previously known design elements and thus lacked originality, the court of first instance denied the watch copyright protection as a work of applied art.
The case was appealed to the Patent and Market Court of Appeal.
The appellate court structured its assessment of whether the watch constituted a work of applied art based on the ECJ's decision in Levola Hengelo (C-310/17), which reiterated that the concept of a work in copyright law should be interpreted uniformly within the European Union. Accordingly, and as set out in Infopaq (C-05/08) and Painer (C-145/10), in order to be protected by copyright as a work of applied art, the court found that a watch must:
As regards the watch at issue, the court paid particular attention to the evidence invoked which concerned the author's artistic considerations and creative process in creating it, as well as the expert witness who had testified to the vast design corpus in the field which still allows for watch designers to imbue their timepieces with unique individual character in an original way.
Therefore, taking into account the many large and small design choices that the author had made to create the impression of a slim and minimalistic watch design, the court found that the watch:
Moreover, the court addressed the defendant's mosaic of prior art components by stating that the fact that a product consists of previously known elements does not rule out copyright protection if it displays originality when considered in its entirety. Thus, the watch was found to constitute a work of applied art.
Based on the strong originality of the watch and notable similarities with that of the defendant, the court found that even in a crowded design field such as the watch industry, the defendant's watch had infringed Daniel Wellington's copyright. As it was not granted leave to appeal to the Supreme court, the defendant's time had thus run out.
This case is of great interest to the watch industry as it is the first time that a Swedish court has confirmed that a watch can be protected by copyright as a work of applied art, even in a crowded design field. The decision enables rights holders to not only pursue counterfeits on the basis of trademark infringement, but also to prosecute copycat watch models on the basis of copyright protection in physical and digital environments. It will be interesting to see how the industry applies these new prosecution tools and strengthens brands' IP protection.
From a copyright law perspective, the case confirms how the harmonised concepts of work and originality should be applied by national courts, which will likely lead in practice to an expansion of copyright protection in other jurisdictions. This decision is also well in line with the attorney general's opinion in Cofomel (C-683/17), which confirmed that the originality requirement should also apply to applied art.
Although it might be too early to declare copyright cases on applied art the new copyright frontier for rights holders, the trend certainly points in that direction. Moreover, the decision shows how the common strategy among Swedish defendants in IP litigation to mount a voluminous prior art defence is not always relevant in copyright cases where novelty is not the issue.
The case also marks a first for the court in its ordering a defendant to publicise the judgment on social media platforms such as Facebook and Instagram. In Swedish case law, such orders for publication have previously specified only newspapers or similar traditional news platforms.
For further information on this topic please contact Hans Eriksson or Petter Larsson at Westerberg & Partners Advokatbyrå Ab by telephone (+46 8 5784 03 00) or email (firstname.lastname@example.org or email@example.com). The Westerberg & Partners Advokatbyrå Ab website can be accessed at www.westerberg.com.
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