In Taiwan, there is a mild but long-established presumption against treating industrial design as copyrightable. To qualify as a copyrightable subject matter, an industrial design must pass an aesthetic test (also known as an artistic work test); namely, it must be proved to “contain artistic skills with which a thought or feeling is conveyed.”
At first sight, this test does not seem to disfavor luxury handbags, as they are widely acknowledged by users as embodying the designers’ aesthetic sense and reflections through superior artistry and craftsmanship. But judges are not as apt to accept such views as bag connoisseurs.
In a recent decision rendered in an infringement lawsuit, a second-instance panel (consisting of three judges) of the IP Court held that three (if not three series of) Céline and/or Givenchy handbag designs are not copyrightable. Under an implied dichotomy of functionality and aesthetics, the panel found the bag designs to be primarily functional and hence in lack of the required artistic skills. Céline Société Anonyme v. 2 R Int’l Co., Ltd., 107 Min-Zhu-Shang 15, Taiwan’s IP Court (October 2019). There is no public information available yet as to whether this decision has been appealed to the Supreme Court.
Céline Luggage (left); Givenchy Pandora (middle); and Givenchy Antigona (right).
Photo source: the reported IP Court decision; same below.
In the decision, the panel indicated:
[The functionality bar applies if] the design for the commodity is created for the purpose of enabling the commodity to achieve its intended function effectively or maintaining its [inherent] function, rather than being created for the primary purpose of conveying a thought or feeling through artistic skills… From the perspective of protecting fair competition, if commodities with practical functions are allowed to be copyrighted, which means to achieve a long-term monopoly, competitors’ rights and interests will be seriously compromised and unfairness will occur.
If a commodity’s shape has in itself a specific function which facilitates the commodity to serve its purpose or realize its economic value and hence obtain advantages in competition, then the primary purpose of such a shape design shall be deemed not to satisfy one’s aesthetic needs, and [such a shape design shall hence be deemed] not to feature an aesthetic sense through which a thought or feeling is conveyed. Based on the consideration of public policy and fair competition, such a shape design cannot … be protected by the Copyright Law even if it has been used for a long time. (Italics added)
As to the Céline and Givenchy handbag designs, the panel found:
Apart from enhancing the perceived quality and texture of the product, so as to attract the eyes of relevant consumers and stimulate their desire to buy, the overall shape and design [of the bags] are for the primary purpose of facilitating effectively the portability and [other inherent] functions of bag-shaped appliances, rather than to convey a thought or feeling with artistic skills. (Italics added)
Interestingly, in the first-instance decision (rendered by Judge Wei-hua WU) a different methodology was adopted to address this issue. Instead of exploring whether an industrial design is devoted more to fulfilling functional purposes than to satisfying aesthetic needs, the first-instance judge simply enquired whether a disputed design contains perceivable aesthetic feature. If the answer is found to be “yes” then the design is held copyrightable (unless it is the only possible way to express the intended aesthetic idea). Take the Céline Luggage design for example, which the judge found to be:
representing a cartoon figure … able to make one perceive the sense of the light-hearted humor and aesthetics the designer intends to convey through the bag design, as well as the carefree and casual events the users may incline to attend with the bags… Since the disputed bags each contain artistic skills, they are all eligible artistic works protectable under the Copyright Law.
Although Céline and Givenchy (both owned by the LVMH Group) lost ground on their copyright claims, they did not lose the suit. Their backup Fair Competition Law claim based on the theory of dead copy was accepted all the same by the second-instance panel and won them damages of NT$6 million in total, along with injunctive orders against the local Taiwanese defendant.
The defendant’s bag products The defendant’s bag products.
A sophisticated reader might wonder how the IP Court panel would have ruled if the defendant had copied but not dead-copied Céline’s and Givenchy’s handbags and whether there could have been other legal claims for the two brands’ use. The answer to the first question will obviously become conjectural, but the answer to the second question is simple: patents. Being substantively examined and defined by drawings or photos, design patents have clearer scope, are more solid, and are hence basically easier to monetize and enforce. In fact, not a few luxury brands have patented their designs on handbags or bag components like handles and buckles in Taiwan, and Céline and Givenchy are no exception, although the three designs litigated in the reported case happen to be not included in their Taiwan patent portfolios—and that explains why in this lawsuit no patent claim has been raised.