Things and Words About Them: On the Legal Protection of Design

Traditional registration of design relied on the deposit of an example of the thing itself; the Registrar who held things thus deposited was responsible for ensuring that they would be protected from unauthorized imitation. The material thing itself is to be the standard against which copies can be judged. In 1839 the Designs Registration Act in the UK introduced a fundamental modernization of registration for designs. Paradigmatic of the modern way of registration is the use of 'representative registration'. According to the 1839 Act, applicants for a design registration were required either to deposit three samples of the design, or to submit a pictorial or written representation thereof. The latter system of 'representative registration' has since become virtually universal in intellectual property law relating to designs around the world.

Today, the discursive representation of design is more important than ever for legal protection. It is crucial when applying for design registration: an applicant must be able to describe his design in a way that conforms to the requirements of objects that may claim protection. For example, design protection applies to the appearance of a design; it does not apply to any aspect which is dictated by its function. Accordingly, if a design is to qualify for legal protection, its description (or illustration) must make a clear distinction between form and function.

According to the intellectual property laws of many nations today, designs may also be protected by copyright. In copyright infringement cases the outcome is wholly dependent on the way the 'original' design and the (allegedly) 'copied' design are represented pictorially or in writing. For infringement to have occurred, it must be established that there is substantial similarity between the designs in question. However, what is at stake is in effect the similarity in the representations of a design. This introduces the notion of 'second-order' design, where it is no longer the object itself that matters: it is in the representaton of the designed object that originality must be demonstrable in court. Designs may thus be modified in order to match what can be represented discursively as original: the words about the thing become more important than the thing itself.