Could Animal Crossing hurt planned design patents? The intuitive answer would be a no. The less obvious answer would be a no as well, but with quite a big but. Some of you may have seen Animal Crossing fashion instagram accounts like @nookstreetmarket or @animalcrossingfashionarchive (who created the examples above) popping up.

Why Animal Crossing?

Unlike most other video games, Animal Crossing allows users to design a garment from scratch, complete with hem lengths, patterns etc. Unsurprisingly, the fashion community quickly adopted the game. Dozens of Instagram accounts are sprouting up to showcase runway-inspired designs from Dior, Sports Banger, and Louis Vuitton, while brands like Valentino, Anna Sui, and Sandy Liang create custom garments for the game.

And why are you talking about this on a law blog?

Part of the this new phenomenon is, that the designers showcase classic or hot new designs on the game’s characters. Normally, the designs used on the little game characters are too much changed from the actual designs, to be able to hurt a planned design application. That needn’t be the case however, depending on the amount of the design’s details. Anyhow, this is a good occasion to talk about designs in the digital context and what designers will have to account for if they plan on applying for a design patent for designs shown first via Animal Crossing.

What does this disclosure mean?

According to EU design law, the outer appearance of a product can be protected as a design if it is new and has individual character. When assessing this question, it is paramount to know, which designs have been disclosed before. Of course, this comes to the fore during the application procedure. However, courts also examine the requirement in infringement proceedings. Thus, the enforceability of one’s own design rights or their defence may depend to a large extent on the evidence of a prior disclosure. This could even deal to a design’s deletion.

A design is disclosed if it has been published, exhibited, used in trade or otherwise made available to the public, unless it could not reasonably have been known in the normal course of business to the circles specialised in the sector concerned operating in the EU before the date of filing of the design application, Art. 6 EU Design Directive.

However, the directive does not contain any restriction as to the place of disclosure. Accordingly, any publication on the Internet – regularly irrespective of the language – could lead to the disclosure of the design. A disclosure can therefore occur through websites, apps, social media, product placement, file sharing or e-commerce.

How do I document a prior disclosure?

One might want to document a prior disclosure when attacking someone else’s industrial design patent or when defending against a design suit. How to actually prove such a disclosure on the internet, however, is much less clear. The ECJ recently ruled in Gamma-A, that no binding format for evidence is laid down. The EUIPO reacted by laying down some rules concerning evidence from the internet and the relevant time of disclosure.

Parties often submit internet evidence per screenshot or printout. Such evidence should include information on the source from which its content originates (e.g. the URL address) and the relevant date. They must be sufficiently precise and of sufficient quality, in particular the design in question must be clearly recognisable. One must avoid manual alterations. One must submit videos themselves at least in the relevant parts. Simply stating the URL is not sufficient.

How do I establish the relevant date?

Concerning the relevant time of disclosure, one should use the data search engines provide. However, these show the time at which the tool cached or captured the respective website, but not the time of disclosure itself. Nevertheless, these results can give an indication as to when the public disclosure was available online. Therefore, it is more accurate to use website archiving services instead of a search engine. An electronic timestamp is optimal.

Evidence from file sharing and e-commerce

In order to prove the disclosure of a design via file sharing, it is not sufficient to submit only a printout originating from the platform with a representation of the indexed file. The evidence should also include the date of provision for sharing. For e-commerce platforms, it is useful to record in a screenshot the date on which the product was first offered for sale. In addition, the specific product reference to the design can be useful. However, a copyright-relevant year, which pages usually display at the bottom of a website, does not suffice.

Restricted access is not a limitation of disclosure

In any case, a disclosure may be refused if access to the internet content was restricted. For example, if the disclosure was made on condition of confidentiality or if its source was not technically accessible. Password protection or a paywall are not sufficient. The new EU decision-making practice also takes into account the habits and behaviour of the professionals in the sector concerned. Furthermore, it calculate language and possible geoblocking in.

Any creative planning to show designs which they later plan on applying a registration for, should keep these provisions in mind. If someone moves against one of your own registrations and they showed their designs in the internet first, you might be able to prove a disclosure in accordance with these rules.

Sources:

https://www.vogue.com/article/animal-crossing-fashion-show-reference-berlin

http://curia.europa.eu/juris/document/document.jsf?text=&docid=224391&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=1891651

Image: Kara Chung, on Instagram/@animalcrossingfashionarchive