The great escape: tote bags found not to be works of artistic craftsmanship

By Sarah Muller, Tommy Chen
Intellectual Property Patents & Trade Marks

In brief 2 min read

In an appeal decision, the Full Court of the Federal Court of Australia affirmed a decision that a perforated neoprene tote bag was not a work of artistic craftsmanship because functional considerations outweighed visual or aesthetic ones in the design. As a result, once 50 or more of the bags had been made, it lost copyright protection under the Copyright Act 1968 (Cth). Because it had not been registered under the Designs Act 2003 (Cth), it was also not protected as a registered design.

Key takeaways

  • Functional constraints are key to determining whether something is a work of artistic craftsmanship.
  • Businesses that produce functional designs of mass-produced products, such as fashion and furniture, should be aware of the risk of losing both copyright and design protection, due to the copyright-design overlap.
  • If possible, functional designs should be registered to obtain registered design protection.

Copyright-design overlap

State of Escape Accessories Pty Ltd sells a range of oversized tote bags designed by its director. These bags are made of perforated neoprene, with handles made from sailing rope. State of Escape alleged that Chucka Bags Pty Ltd and its director Stefanie Schwartz had infringed the copyright in the drawings of the tote bags by importing and selling a similar perforated neoprene tote bag.

In Australia, designs potentially enjoy protection both as copyright works under the Copyright Act and registered designs under the Designs Act. The so called 'copyright-design overlap' provisions of the Copyright Act operate to remove protection against copyright infringement of an artistic work, if a 'corresponding design' has been 'embodied in a product' and applied 'industrially'. In this context, a design is applied industrially if it's applied to more than 50 articles. An exception is made for 'works of artistic craftsmanship': these works will not lose copyright protection simply by being mass-produced. 


What's in a bag? 

At first instance, the judge had found the bag was not a work of artistic craftsmanship, on account of the functional constraints involved in the design (see our summary of the primary decision here).

The appeal (State of Escape Accessories Pty Limited v Schwartz [2022] FCAFC 63) largely focused on the weight attributable to the 'beauty or aesthetic appeal', the 'artistic effort in designing' and the 'artistic quality', in the assessment of whether the bag was a work of artistic craftsmanship. The Full Court cited the 2007 High Court of Australia decision in Burge v Swarbrick and held that the question does not turn on an assessment of the beauty or aesthetic appeal of the work. Rather, the question is whether the functional considerations of the bag (that is, to carry items) outweighs the artistic expression in the work. The court held, in this case, that they did.  

The court observed that the choice of neoprene and sailing rope reflected 'an evolution in styling rather than an act of artistic craftsmanship'. The choice of perforated neoprene was also constrained by function (contrary to the primary judge). Though other fabrics could have been chosen, the choice was still limited functionally to fabrics capable of holding weight, and neoprene possessed the strength and durability necessary for use in a practical carry bag. The court considered evidence about the state of common design features and methods each of which was known and used at the time, but ultimately concluded it was not a matter of particular significance.

The bag designer gave evidence that the design was chosen in pursuit of 'simplicity, beauty and originality', with a 'distinctive silhouette'. This evidence was admissible, but the court placed little weight on it: a designer's views as to the artistic qualities of the work may not be shared by others with different tastes and preferences. The court found it relevant, although not determinative, that the designer did not possess special training, skill or knowledge in the field of bag design.


Finding that the bag is not a work of artistic craftsmanship means it falls within the dreaded copyright-designs overlap provisions. Because the design has been industrially applied, the work has lost copyright protection. Because it has not been registered as a design, it has no protection under the Designs Act.  

Actions you can take now

  • If you operate in the design sector, consider your strategies for using and protecting product designs.
  • Consider, in particular, whether it is feasible to seek registered protection for new designs.
  • If you would like further assistance with copyright or registered designs, contact the Allens IP/PTA team.