News
Programs & Events
Major DIA programs, events and affiliations for 2007, Autumn Edition.
I Me Mine
Invites all DIA members to send in pictures and a brief description about yourself and your latest, greatest design work.
News
Think your industrial designs are covered by copyright? Maybe not!
The Burge v Swarbrick case centred around the issue of copyright protection for the yacht designs of a Mr Swarbrick, a naval architect who has designed numerous yachts and whose company manufactures a high performance yacht marketed around the world as the ‘JS 9000’.
Mr Swarbrick alleged that Boldgold Investments Pty Ltd and others involved, including former employees of Swarbrick (collectively ‘Burge’) infringed his copyright in the mouldings of the hull and deck of the yacht.
Swarbrick also alleged infringement of copyright in a ‘Plug’ – a full scale model of the hull and deck, and visually identical to the hull and deck of a finished JS 9000.
The hull and deck mouldings were exact, although inverted, copies of the Plug.
The case concerns the construction and application of provisions of the Copyright Act 1968 (Cth) (the Act), particularly the phrase ‘a work of artistic craftsmanship’ which is protected as a form of ‘artistic work’.
Unlike other forms of ‘artistic work’, a ‘work of artistic craftsmanship’ does not lose effective copyright protection when it is ‘industrially applied’ (manufactured in large numbers).
The ultimate issue was whether the Plug and hull and deck mouldings of the JS 9000 yacht designed by Swarbrick were ‘works of artistic craftsmanship’ and so afforded copyright protection.
If so, Mr Swarbrick (who did not have design registration) could pursue his claim of copyright infringement.
In its defence, Burge contended that the Plug and hull and deck mouldings were not ‘works of artistic craftsmanship’ and therefore not afforded copyright protection.
If held to be another type of ‘artistic work’ Burge contended that as the works had been ‘industrially applied’ they had effectively lost their copyright protection.
History of litigation
Both the original trial judge, and the Full Federal Court on appeal, found that the copyright of Swarbrick had been infringed by Burge.
They found that the Plug and hull and deck mouldings were ‘works of artistic craftsmanship’.
However the High Court decision overturned this finding.
Copyright/Designs overlap
The case considered the interaction between copyright and design law, and in particular, whether ‘artistic works’ capable of protection as registered designs – but not in fact registered – could be protected by copyright.
The Copyright Regulations provide that a design is taken to have been ‘applied Industrially’ when more than fifty articles are produced with the design.
However this figure varies depending upon the ‘type’ of good manufactured; in the field of yachts, the construction of thirty-two ‘JS 9000’ yachts was conceded by Swarbrick to have been an ‘industrial application’ of a design.
If a design is applied industrially with the licence of the owner of the copyright, it can effectively lose its copyright protection.
An exception to this limitation to copyright protection is provided for ‘buildings’ and ‘works of artistic craftsmanship’.
The decision therefore turned upon whether the Plug and mouldings were in fact ‘works of artistic craftsmanship’.
What is a work of artistic craftsmanship?
The expression ‘work of artistic craftsmanship’ is not defined in the Act and the High Court’s analysis is therefore important as it clarifies what can be defined as a ‘work of artistic craftsmanship’.
When the case was first heard, ‘craftsmanship’ and ‘aesthetic appeal’ were considered as distinct and consecutive questions.
Both aspects then were considered together.
This process was considered by the High Court to be an ‘error’.
In determining whether a work is a work of artistic craftsmanship the High Court considered that the ‘beauty or aesthetic appeal of work’ is not to be considered.
Rather ‘the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations’ is of relevance.
The more substantial the requirements in a design brief to satisfy utilitarian considerations, the less the scope for real or substantial artistic effort.
The design brief for the JS 9000 included the manufacture of a yacht of good performance, capable of racing and typical day use, relatively simple to sail, with a minimum crew size, and visually attractive.
Yacht design was said to require engineering skills.
The problems overcome during the design of the JS 9000 yacht were predominantly matters to do with function.
For example, the yacht was designed to sail as fast as possible within the constraint of an overall length of about nine metres.
The expert witness, Mr Hood, stated that the design of sports boats was not mainly governed by considerations of appearance.
His evidence was given little weight by the trial judge, but the High Court placed much greater reliance on it.
The evidence taken as a whole and considered objectively showed that matters of visual and aesthetic appeal were subordinate to the achievement of purely functional aspects required for the commercial sports boat.
The High Court accordingly disagreed with the Federal and Full Federal Court, and held that the ‘Plug’ and ‘mouldings’ of the JS 9000 yacht were not ‘works of artistic craftsmanship’.
The work of Mr Swarbrick in designing them was not that of an ‘artistic-craftsman’.
If the design brief had allowed more scope for artistic effort, the decision might have been different.
What to do?
Amendments made to the Copyright Act in 2003 closed a number of loopholes in the copyright / design overlap provisions that had been used to gain copyright protection for an industrially applied work that did not have design protection.
Burge v Swarbrick further limits the scope of these provisions to be used where design registration is lacking.
It may not be the end of copyright protection for industrial designs, but the case substantially limits the scope of copyright protection to designs that are influenced more by function rather than aesthetic considerations.
The case emphasises the need to obtain appropriate registration for Intellectual Property, and not to rely on copyright protection for industrially applied designs that are significantly constrained by functional considerations.
Design registration (or patent protection if appropriate) is the more appropriate form of intellectual property protection for such works.
It is important that industrial designers decide before their design is publicly used in Australia, whether the work should be registered under the Designs Act, or whether the work could satisfy the definition of ‘work of artistic craftsmanship’ as clarified by the High Court, thereby obtaining automatic copyright protection for the life of the designer plus 70 years.
Once a work is published it may lose its ability to obtain design or patent protection.
Eliza Saunders and Margaret Ryan are lawyers in the Melbourne office of Phillips Ormonde & Fitzpatrick, Intellectual Property Attorneys, Lawyers & Researchers.
This article is a slightly edited version of an article originally reproduced in the newsletter 'Inventive Steps'.
The permission of Phillips Ormonde & Fitzpatrick is gratefully acknowledged.
Return to the news list
Eliza Saunders and Margaret Ryan_23-Aug-07
The 26th April 2007 High Court of Australia decision of Burge v Swarbrick [2007] HCA 17, overturned previous court rulings on the issue of copyright for designs, and has delivered a cautionary warning for industrial designers.The Burge v Swarbrick case centred around the issue of copyright protection for the yacht designs of a Mr Swarbrick, a naval architect who has designed numerous yachts and whose company manufactures a high performance yacht marketed around the world as the ‘JS 9000’.
Mr Swarbrick alleged that Boldgold Investments Pty Ltd and others involved, including former employees of Swarbrick (collectively ‘Burge’) infringed his copyright in the mouldings of the hull and deck of the yacht.
Swarbrick also alleged infringement of copyright in a ‘Plug’ – a full scale model of the hull and deck, and visually identical to the hull and deck of a finished JS 9000.
The hull and deck mouldings were exact, although inverted, copies of the Plug.
The case concerns the construction and application of provisions of the Copyright Act 1968 (Cth) (the Act), particularly the phrase ‘a work of artistic craftsmanship’ which is protected as a form of ‘artistic work’.
Unlike other forms of ‘artistic work’, a ‘work of artistic craftsmanship’ does not lose effective copyright protection when it is ‘industrially applied’ (manufactured in large numbers).
The ultimate issue was whether the Plug and hull and deck mouldings of the JS 9000 yacht designed by Swarbrick were ‘works of artistic craftsmanship’ and so afforded copyright protection.
If so, Mr Swarbrick (who did not have design registration) could pursue his claim of copyright infringement.
In its defence, Burge contended that the Plug and hull and deck mouldings were not ‘works of artistic craftsmanship’ and therefore not afforded copyright protection.
If held to be another type of ‘artistic work’ Burge contended that as the works had been ‘industrially applied’ they had effectively lost their copyright protection.
History of litigation
Both the original trial judge, and the Full Federal Court on appeal, found that the copyright of Swarbrick had been infringed by Burge.
They found that the Plug and hull and deck mouldings were ‘works of artistic craftsmanship’.
However the High Court decision overturned this finding.
Copyright/Designs overlap
The case considered the interaction between copyright and design law, and in particular, whether ‘artistic works’ capable of protection as registered designs – but not in fact registered – could be protected by copyright.
The Copyright Regulations provide that a design is taken to have been ‘applied Industrially’ when more than fifty articles are produced with the design.
However this figure varies depending upon the ‘type’ of good manufactured; in the field of yachts, the construction of thirty-two ‘JS 9000’ yachts was conceded by Swarbrick to have been an ‘industrial application’ of a design.
If a design is applied industrially with the licence of the owner of the copyright, it can effectively lose its copyright protection.
An exception to this limitation to copyright protection is provided for ‘buildings’ and ‘works of artistic craftsmanship’.
The decision therefore turned upon whether the Plug and mouldings were in fact ‘works of artistic craftsmanship’.
What is a work of artistic craftsmanship?
The expression ‘work of artistic craftsmanship’ is not defined in the Act and the High Court’s analysis is therefore important as it clarifies what can be defined as a ‘work of artistic craftsmanship’.
When the case was first heard, ‘craftsmanship’ and ‘aesthetic appeal’ were considered as distinct and consecutive questions.
Both aspects then were considered together.
This process was considered by the High Court to be an ‘error’.
In determining whether a work is a work of artistic craftsmanship the High Court considered that the ‘beauty or aesthetic appeal of work’ is not to be considered.
Rather ‘the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations’ is of relevance.
The more substantial the requirements in a design brief to satisfy utilitarian considerations, the less the scope for real or substantial artistic effort.
The design brief for the JS 9000 included the manufacture of a yacht of good performance, capable of racing and typical day use, relatively simple to sail, with a minimum crew size, and visually attractive.
Yacht design was said to require engineering skills.
The problems overcome during the design of the JS 9000 yacht were predominantly matters to do with function.
For example, the yacht was designed to sail as fast as possible within the constraint of an overall length of about nine metres.
The expert witness, Mr Hood, stated that the design of sports boats was not mainly governed by considerations of appearance.
His evidence was given little weight by the trial judge, but the High Court placed much greater reliance on it.
The evidence taken as a whole and considered objectively showed that matters of visual and aesthetic appeal were subordinate to the achievement of purely functional aspects required for the commercial sports boat.
The High Court accordingly disagreed with the Federal and Full Federal Court, and held that the ‘Plug’ and ‘mouldings’ of the JS 9000 yacht were not ‘works of artistic craftsmanship’.
The work of Mr Swarbrick in designing them was not that of an ‘artistic-craftsman’.
If the design brief had allowed more scope for artistic effort, the decision might have been different.
What to do?
Amendments made to the Copyright Act in 2003 closed a number of loopholes in the copyright / design overlap provisions that had been used to gain copyright protection for an industrially applied work that did not have design protection.
Burge v Swarbrick further limits the scope of these provisions to be used where design registration is lacking.
It may not be the end of copyright protection for industrial designs, but the case substantially limits the scope of copyright protection to designs that are influenced more by function rather than aesthetic considerations.
The case emphasises the need to obtain appropriate registration for Intellectual Property, and not to rely on copyright protection for industrially applied designs that are significantly constrained by functional considerations.
Design registration (or patent protection if appropriate) is the more appropriate form of intellectual property protection for such works.
It is important that industrial designers decide before their design is publicly used in Australia, whether the work should be registered under the Designs Act, or whether the work could satisfy the definition of ‘work of artistic craftsmanship’ as clarified by the High Court, thereby obtaining automatic copyright protection for the life of the designer plus 70 years.
Once a work is published it may lose its ability to obtain design or patent protection.
Eliza Saunders and Margaret Ryan are lawyers in the Melbourne office of Phillips Ormonde & Fitzpatrick, Intellectual Property Attorneys, Lawyers & Researchers.
This article is a slightly edited version of an article originally reproduced in the newsletter 'Inventive Steps'.
The permission of Phillips Ormonde & Fitzpatrick is gratefully acknowledged.
Return to the news list
