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Focus: Copyright – May 2007

Copyright vs design rights

In brief: Following the decision of Australia's High Court in Burge v Swarbrick last week, businesses may now be better placed to assess how to manage design rights and copyright in products that may be mass-produced. Lawyer Marina Lloyd Jones looks at the impact of the decision.

How does it affect you?

  • Businesses should take steps to make an informed decision as to whether copyright or design protection is best for a new product.
  • Businesses should be aware that registering a design may prevent them from enforcing their copyright (which may be a preferable form of protection).
  • If functional concerns have significantly constrained artistic concerns in the design brief, designers should consider seeking registration if they intend to mass produce the goods.

The copyright/design overlap

Certain objects may be eligible for 'dual protection' if they qualify both as 'artistic works' under the Copyright Act 1968 (Cth) and are registrable as designs under the Designs Act 2003 (Cth). For instance, the visual appearance of a chair may be registered as a design, while the drawing of the plan for the chair is also an 'artistic work' protected by copyright. Copyright and design protection each offer their own benefits. With design protection, an infringer will be liable for design infringement even if it has independently arrived at the same design and there is the certainty of registration, while, on the other hand, copyright protection does not require registration, and offers a longer period of protection (in Australia, the life of the author plus 70 years for artistic works).

Various legislative amendments have sought to find an appropriate balance between these two forms of protection, that is, the boundaries between each. Following amendments made to the Copyright Act by the Designs (Consequential Amendments) Act 2003 (Cth) (which came into force on 17 June 2004, after the events considered in Burge v Swarbrick1), the law as it currently stands is:

  • a copyright owner who registers a design corresponding to the relevant artistic work (where that design relates to the three-dimensional shape of a product) will be prevented from enforcing his or her copyright against infringers and must rely on design law;
  • a copyright owner who registers a design corresponding to the relevant artistic work (where that design relates to the two-dimensional pattern on a product, such as a wallpaper design) will retain his or her copyright protection in the artistic work and potentially achieve dual protection; and
  • a copyright owner who treats the relevant artistic work as industrial property and mass produces objects using the corresponding design will be unable to enforce his or her copyright (unless the work is one of artistic craftsmanship, in which case copyright will still be enforceable).

It is the exception to the third part, above, for 'works of artistic workmanship', which is important for many businesses. The meaning of this term (which is not defined in the Copyright Act) was at the heart of the Burge v Swarbrick case, and the High Court's analysis of it remains relevant, despite aspects of the relevant legislation having since been amended.

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'Works of artistic craftsmanship'

Mr. Swarbrick was a well-known naval architect who designed and was involved in the manufacture of a commercially successful racing boat, known as the 'JS 9000'. One of the appellants, Boldgold Investments Pty Ltd, manufactured boats using the hull and deck mouldings of the JS 9000. These mouldings had been given to two of its employees by Mr. Swarbrick, their former employer. They had been made by taking a 'plug', essentially a full-scale model of the hull and decks, and forming the mouldings around it to create an inverted reproduction, which was then used to manufacture the boats. Mr. Swarbrick had not registered the design of the plug or mouldings under the Designs Act 1906 (Cth) (since replaced by the Designs Act 2003) and therefore had to rely on any copyright protection that may be available to prevent the respondents from copying his design plans as an artistic work.

Mr. Swarbrick admitted that the design for the plug and the mouldings had been industrially applied. He submitted that the relevant works were 'works of artistic craftsmanship' in order to retain his ability to enforce his copyright. In making its decision, the High Court:

  • rejected the idea that utility and beauty, or function and art, are mutually exclusive. A work could be one of artistic craftsmanship, despite its form being partially dictated by functional considerations;
  • held that determining whether a work is one of artistic craftsmanship 'turns on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations'.2 The greater the requirements in a design brief to satisfy utilitarian considerations, the less scope to encourage substantial artistic effort; and
  • disagreed with the trial judge and Full Federal Court's view that the moulds and plugs were works of artistic craftsmanship. In designing the plug for the boat, Mr. Swarbrick's key aim was creating speed on the water, and, in seeking to achieve it, he was acting in the role of an engineer rather than an artist-craftsman. In other circumstances, he may have fulfilled the latter role but that was not the case with this design brief.

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To register or not to register

The artistic craftsmanship exemption is significant for designers: if they can bring their work within its scope, they will be able to mass produce objects corresponding to the design while still being entitled to enforce their copyright against infringers. It is important to remember that once a copyright owner has registered an artistic work as a design under the Designs Act, the artistic craftsmanship exemption will not apply. The exemption only applies to mass-produced but unregistered designs.

Before commencing the manufacture and sale of goods, and losing the novelty (and therefore registrability) of any underlying designs, designers should consciously elect whether to register a design in relation to an artistic work (and have the certainty of the design registration) or to rely on copyright protection (and have the significantly longer protection that goes with it). This can involve assessing the likelihood that the work would be one of artistic craftsmanship. The decision in Burge v Swarbrick appears at least to have made such an assessment more clear.

References
  1. [2007] HCA 17 (26 April 2007).
  2. At 83 to 84.

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