From CAD to courtroom: how using the wrong drawing can cost you

Key lessons for managing IP in collaborative projects 6 min read

A recent Federal Court decision has pulled the intersection between copyright and design law into the spotlight, with important implications for businesses relying on drawings in product development.

Watson Webb Pty Ltd v Comino [2025] FCA 871 concerned a breakdown in the commercial relationship between parties in relation to the design, manufacture and distribution of plumbing components. Relevantly, Justice Halley found that the Respondents (Comino and Strongcast) had infringed copyright in a two-dimensional engineering drawing by using it as the basis to register two designs for valves.

In this Insight, we discuss a timely reminder that copyright subsists in technical drawings and that using such drawings—even in a modified form—can trigger copyright infringement.

Who in your organisation needs to know about this?

• Inhouse legal counsel
• Managers
• Engineers
• Draftspersons  

Key takeaways 

• Be cautious with third-party drawings: copyright subsists in technical drawings, and infringement can still occur even when drawings are modified. This can be important when drawings provided by third parties are retained but updated with new features, or drawings are shared with third parties during the production of old or new products.
• Don't assume defences to infringement will apply: the copyright/design overlap defences to copyright infringement are narrow and will not protect against two-dimensional copying.
• Document ownership clearly: determining ownership when two-dimensional drawings are developed between parties can be crucial in avoiding subsequent disputes.

Background

The Applicants, All Valve Industries Pty Ltd (AVI) and Italian valve manufacturer Cav.Uff. Giacomo Cimberio S.p.A. (Cimberio), brought proceedings against the Respondents, Mr John Comino and his company Strongcast Pty Ltd (Strongcast). Mr Comino had entered into a distribution agreement with AVI to supply specific plumbing components to Strongcast. This led to the development of a new valve (the C9746 Valve).

On 24 January 2018, AVI emailed technical drawings of the C9746 Valve to Mr Comino. Without informing AVI or Cimberio, Mr Comino separately engaged a design firm to remove identifying marks from the drawings (including a copyright notice) and subsequently instructed his patent attorney to file two Australian design applications (the Designs), listing himself as the sole designer and owner.

The dispute involved various claims by the parties, summarised below:

• An appeal was brought by AVI and Cimberio against a decision of the Australian Design Office regarding the ownership of the Designs.
• Claims were brought by AVI and Cimberio against Mr Comino and Strongcast for copyright infringement and invalidity of the Designs, alongside several claims relating to the breakdown in the commercial relationship, including breach of confidence, breach of contract and claims under the Australian Consumer Law.
• Cross-claims were brought by Mr Comino and Strongcast against AVI for importing and selling valves in Australia that infringed the Designs and an associated Australian innovation patent in Mr Comino's name. AVI cross-claimed that the relevant claims of the patent were invalid.

The focus of this Insight is copyright infringement and the important overlap between copyright and design rights.

Copyright in 2D drawings: simple but easily overlooked

The technical drawings of the C9746 Valve were found to be an original work owned by Cimberio. By providing these drawings to the third-party design firm, and then subsequently providing the modified drawings from which the original identifying marks had been removed to their patent attorney for the purpose of filing and registering the Designs, Mr Comino and Strongcast directly infringed Cimberio’s copyright in the original drawings. The court held that Cimberio was entitled to an account of profits along with additional damages given the flagrancy of the copyright infringement. This point may be subject to the recent appeal filed by Mr Comino and Strongcast. The court also found there was nothing in the Respondents' dealings with the Applicants that suggested the Respondents had an implied licence to the copyright works or ownership.

It is not uncommon in fast-paced commercial environments that important aspects of IP ownership and licensing remain undocumented or overlooked and subsequent misapprehensions between parties can result in complex and costly IP disputes. Agreements should be used to document these important IP aspects from inception, through all development stages and when entering into arrangements with third parties.

Design registration doesn’t excuse copyright infringement

Mr Comino and Strongcast argued the overlap provisions in ss 75 to 77 of the Copyright Act 1968 (Cth) shielded them from liability. Relevantly, these provisions limit copyright protection where a corresponding design has been registered or applied industrially. The Full Court in State of Escape Accessories Pty Limited v Schwartz ¹ stated that:

The policy behind the overlap provisions is to ensure that works which are functional and intended for mass production in three dimensional form should not be afforded protection under the Copyright Act…The legislative policy is to encourage the use of the registered design system, rather than copyright, for the purpose of protecting artistic works which are applied to industrial products: see Burge v Swarbrick (2007) 232 CLR 336 (Burge) at [10].

In this case, Justice Halley provided the following reasons as to why the copyright/design overlap was not available to Mr Comino and Strongcast as a defence to copyright infringement:

• Cimberio did not hold simultaneous rights under both the Designs Act 2003 (Cth) and Copyright Act as Cimberio had not filed a corresponding design to the technical drawings.² Thus, Cimberio had not taken steps to rely on design protection while also attempting to enforce copyright protection.³ Instead, the Designs had been filed by Mr Comino.
• There was no corresponding registered design when the technical drawings were copied.⁴
• The defence is directed to the embodying of a design in a product, understood to be related to the creation of a three-dimensional product, and is not concerned with the alleged two-dimensional copying of the technical drawings.⁵

Justice Halley's reasoning that these defences only apply to three-dimensional embodiments of designs—and not to two-dimensional copying of drawings—is an important consideration when assessing IP risks for reproducing competitor products. If registered rights are not a concern, avoiding two-dimensional copying of drawings becomes a subtle but important point.

Actions you can take now

• Review use of third-party drawings: audit what IP subsists in your organisation to determine who owns that IP and how it can be used. This is prudent when product development or improvements are being discussed with third parties, particularly where third-party drawings have been created to capture ideas or new iterations of potential prototypes.
• Strengthen internal IP protocols: implement internal checks within your organisation to identify IP that can be protected, who was responsible for its inception and development, and the owner(s) of that IP. Building an understanding of IP within your organisation will help avoid valuable IP being lost to third parties or mistakenly filed in the wrong name, potentially leading to a loss of rights or subsequent disputes.
• Clarify IP ownership in agreements: ensure distribution, supply or collaboration agreements clearly state i) who owns the IP in drawings and designs; and ii) whether any licence exists. It is important to consider all parties who are likely to be considered to have contributed to creation of the IP, including those who may contribute ideas and feedback while it is being developed, as well as identifying who is intended to ultimately own that IP.