The sixty-four dollar question that any designer/author/inventor wants answered is "Can I protect my idea?" Unfortunately, the answer is not always as straightforward as you might expect. Often there is only one form of protection available, if at all, to the owner of that intellectual property (IP). If the correct choice is not made at the outset, as to which form of protection to obtain, then any rights which the owner of the IP had may be lost.
A recent decision of the High Court (Burge v Swarbrick [2007] HCA 17) has restricted the protection which was formerly available to designers who may also have relied on copyright protection.
One area of difficulty in choosing the correct form of protection has been the "overlap" which exists in relation to designs that are capable of obtaining design registration and for which copyright protection may also subsist. Ordinarily, designers are required to obtain design registration for their product, before it is published to the world, otherwise they lose the monopoly rights to which they would otherwise have been entitled.
In the event that a designer elects not to obtain design registration, then they may still be able to protect their product by relying on copyright. However, any protection which is afforded to the designer, pursuant to the Copyright Act, may be lost to them if the product is industrially applied (that is more than 50 copies of the item are made), and the design is not registered or is not capable of registration under the Designs Act (section 77 Copyright Act). The Act provides an exception to the rule where the product is an artistic work, as that term is defined in the Act. (section 77(1) Act) Most commonly, products which are artistic works (of which there are a limited number of categories) must be considered to be works of artistic craftsmanship in order to fall within the definition.
For some time the Courts have grappled with the question as to whether a product is a work of artistic craftsmanship and therefore entitled to copyright protection as an artistic work. The High Court, in Burge sought to clarify the position in Australia, where such matters arise.
The case involved a determination of whether the "plug" or scale model of a sports boat which Mr Swarbrick had designed, (with the intention of creating a sports craft, capable of being operated by only 2 or 3 people), was a work of artistic craftsmanship and therefore entitled to protection under the Copyright Act, where the design had not been registered under the Designs Act. Mr Swarbrick gave evidence that the elements of the design brief were that the craft be both fast and easily balanced whilst it was also his intention to create a craft which was visually attractive or having a "high level of aesthetic appeal" ((2004) 138 FCR 353 at 366). Mr Swarbrick is a well known yacht designer, having contributed to the design of the America's Cup yachts, Australia 1 and Australia 2, as well as other ocean racing yachts. Some of Mr Swarbrick's former employees established a company with the intention of reproducing sports boats of the same or similar design in competition with him. Mr Swarbrick was successful in obtaining injunctive relief to restrain the use of the design, both in the Federal Court and on appeal to the Full Court. However, the decision was overturned by the High Court on appeal.
Central to the High Court's decision was a consideration of the extent to which the design was of "real artistic effort", unconstrained by functional considerations (para 51). That is, the work must contain "a real or substantial artistic element" (para 52). The Court found (with the assistance of expert evidence) that speed was the overriding consideration in the design of sports boats or yachts in the class of those produced by Mr Swarbrick and that all other factors, including considerations of appearance or aesthetics, were of secondary importance. That amounts to a departure from earlier decisions. In the first case on point in Australia, Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154, the Court referred to Lord Simon's judgement in Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 at 93B-C, where he said "The presence of non-functional features cannot be the test since .…. the anthesis between function and beauty is a false one."
In a further departure, the Court considered that the question of whether the work amounted to a work of artistic craftsmanship could not be determined by an assessment of the intention of the designer. In Coogi, the Court adopted the view in Hensher (cit) that "the presence of such an intention in the creator is determinative of whether the work will have the necessary artistic quality." In Sheldon & Hammond v Metrokane Inc. (2004) 135 FCR 34, the Court found that subsequently to Hensher, Walton J in Merlet v Mothercare (1984) 2 IPR 456 at 465, purported to reflect the predominant approach in Hensher as that reflected in the speech of Lord Simon, observing as follows:
‘... it is not for the [c]ourt to make a value judgment: the question is primarily the intention of the artist-craftsman. If his intention was to create a work of art and he has manifestly failed in that intent, that is all that is required …… and his own ipse dixit cannot therefore be the sole, although it is the initial and predominant, test.’
A vast majority of designs which are industrially applied have some element of functionality. The determination of whether copyright protection is afforded to designs then becomes one of degree. The work of a glazier may not be artistic. However, the maker of a stained glass window is undoubtedly an artist (para 81 – see also Hensher). For many products the distinction may not be so clear. Determining on which side of the line they fall could well be left to matters of judgment and impression.
The short answer may now be that any item which is industrially applied will lose protection in the event that the design specifications are largely driven by a functional purpose and design registration is not obtained. The Court certainly appears to have taken the view that if protection (via design registration) is available, then it should be obtained and that section 77 of the Copyright Act will not come to the rescue of those designers who either neglect to register their design or elect not to do so. It would be a bold move to ignore the warning of the Court and not to obtain registration if the design is worth protecting.
