Avoiding the Gaps in the Copyright/Design Overlap

Sharon Givoni Consulting Arts and design, Copyright, Intellectual Property

Takeaway tips

• The copyright/design overlap aims to deal with and eliminate dual protection under copyright and design law.
• Don’t assume your designs are protected by copyright.
• Consider design registration before you publicly disclose your design.

Recently, our firm assisted a client who sold unique handmade jewellery through an online store. He shockingly discovered that another retailer was selling exact replicas of his designs. However, we know that this is not a unique phenomenon.

Over the past few years, online stores that sell products made by creative people, such as Etsy, Madeit, Big Cartel and Of a Kind, have become increasingly popular. It is also no surprise that it has become common practice, if not essential, for designers to showcase their products on social media sites such as Facebook, Instagram and Pinterest.

While such exposure is a great way to promote up-and-coming designers and businesses, it also means that people’s work are more accessible than ever before. This had made it much easier for those who want to profit by making inferior, mass produced replicas of creative designs to do exactly that.

When designs have been copied, it is often difficult to determine whether a designer has any recourse. This is because of something known as the copyright/design overlap in intellectual property law.

Copyright protects original artistic works such as paintings, sculptures, drawings, engravings, photographs and ‘works of artistic craftsmanship’.^[1] In contrast, design registration protects the overall visual features including the shape, configuration, pattern and ornamentation of ‘new and distinctive’ designs.^[2]

However, sometimes a design may fall under both copyright and design law. For instance, a drawing of a lamp may be protected as an ‘artistic work’ under copyright and the overall visual appearance of a lamp may be protected as a registered design. As a result of this overlap, the copyright/design overlap provisions aim to deal with and eliminate dual protection under copyright and design law. This means that once the design of the lamp is registered or industrially applied (generally by making 50 or more copies of the lamps, but it can be less), copyright protection may be lost. ^[3]

In reality, sole traders and businesses have often not sought design registration for their products due to the expense or neglecting to legal advice prior to selling their designs. This puts them in a tricky situation if their designs get copied, even when the copying is obvious. This is because in order for their products to be protected under copyright law, their products must fall under one of the exceptions to the copyright/design overlap.

You may retain your copyright protection if your product:

• Is a work of artistic craftsmanship;[4] or
• Has not been industrially applied and the copies have not been sold or exposed for sale;[5] or
• Is a two dimensional design that has been applied to the surface of an article.[6]

The most contentious exception is whether a design can be considered as work of artistic craftsmanship. The question as to whether a design is a work of artistic craftsmanship ‘turns on assessing the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations’.^[7] Therefore, in determining whether a design is a work of artistic craftsmanship, one need to turn on to the facts of each case and the creative steps which have been taken in producing a particular design. This means that if a design is not considered a work of artistic craftsmanship, has been industrially applied and offered for sale, the designer is often left without a remedy, particularly in circumstances where they do not have a substantial reputation.

This is one area of law where it pays to be proactive rather than reactive. If you are a designer, it is important that you seek legal advice before disclosing your designs to the public and losing the novelty of your designs.

^[1] Copyright Act 1968 (Cth) ss 10, 32.

^[2] Designs Act 2003 (Cth)s 7, 15.

^[3] Ibid s 77.

^[4] Copyright Act 1968 (Cth) s 77.

^[5] Ibid s 77.

^[6] Ibid s 74.

^[7] Burge v Swarbrick [2007] HCA 17, 83-84.