Further to Natalie’s op-ed piece in the National Times, Herman Miller and Matt Blatt have settled their dispute in relation to Matt Blatt’s sales of replica Eames furniture on confidential terms. In a press release, Herman Miller Vice President Jeremy Hocking describes the apparent win as a “small but significant battle for the ethics of authentic design.”
On 2 November 2011, Justice Jacobsen of the Federal Court gave the applicants leave to file a Notice of Discontinuance, and made no order as to costs. The matter has now been closed.
The Court also noted in its orders the public undertaking (without admission) given by Matt Blatt to Herman Miller, namely that it will not use the term “Eames” in relation to its furniture unless the description incorporates or is immediately proximate to the word “replica” or similar, expressed in the same manner as the word “Eames” and of at least equal prominence. This undertaking is given on the proviso it will not be a breach of the undertaking for the word “Eames” to be used:
- as part of Matt Blatt’s current or any similar disclaimer;
- by Matt Blatt as part of any descriptive/informational reference to the persons Charles or Ray Eames; or
- by third parties not within Matt Blatt’s control in social media in which Matt Blatt participates, including blogs, Twitter and Facebook.
Interestingly, the terms of the undertaking appear to allow Matt Blatt to retain a page titled “Designers” with a blurb about Charles and Ray Eames, and let customers refine their search by “Designer”, with Charles and Ray Eames listed as an option.
Herman Miller’s press release suggests that in 2006 Matt Blatt gave a public undertaking to clearly identify its Eames copies as “replicas”, but that in some recent instances it had failed to do so. Hocking says Herman Miller is satisfied with the “radical changes” implemented by Matt Blatt to its website, immediately after the legal proceedings commenced, which appear to be that:
- each product name features the word replica (arguably this practice was already in place);
- in each product listing, stated in bold are the words "This is a Matt Blatt replica of the original design";
- every reference to Matt Blatt's replica Eames chair features the word replica; and
- the About Us page features the text "NOTE: Matt Blatt's replica products are not manufactured or approved by or affiliated with the original designers, manufacturers or distributors including Herman Miller, Charles or Ray Eames, Knoll, Fritz Hansen, Flos, Studio Italia, Giogali, Artemide Spa, Tolix or Xavier Pauchard."
For the IP geeks among us, it appears we will have to wait a little longer to see a Court determine whether the use of a trade mark in this way is an infringing use.