Online sharing of Digital Design files as “use of a design”? A reassessment of the current regime of liability

Abstract

EU Design law often appears as lacking the same strong identity that characterises trademark and copyright rights. Divergent conceptions over the scope of protection of these rights have persisted, disguised behind the pretence of a fully harmonised legal framework. New developments in technology, social practices and business models now force us to question the extent to which design protection could apply to new forms of digital creation, distribution, and consumption of designs. As the European Commission carries out a reappraisal of whether Design law is sufficiently flexible to remain relevant in the digital economy and what protection it can offer to rightsholders against acts of illegal online sharing of files, this article will attempt to critically assess the jurisprudence, literature, and legislative history of design legislation to determine whether immaterial forms of “use of a design” may constitute infringing acts – with a particular focus on the online sharing of Digital Design files. This review demonstrates that the extension of protection to forms of immaterial exploitation of designs may have been an unintended result facilitated by the ambiguous wording of the legislation. The last section of the article assesses the potential liability for the sharing of a DD file in a platform environment, a question also recently considered by the Commission’s study. After recognising the crucial role of the “appearance” of a design as a condition of lia- bility, the article discusses how this may cause De- sign law to be inconsistent or ineffective in tackling the online sharing of designs. In the conclusion of this article, a few possible solutions are canvassed. It is submitted that the current Commission Proposal does not satisfactorily address the conceptual issues outlined in the article, risking rather being a short- sighted and unprincipled response to a much broader necessity: a general reconceptualisation of what design should protect in the digital ecosystem.