The shape of things to come: Product design protection and the need for artistic inspiration

By John Fairbairn.

Key Points:
The decision provides a timely reminder for manufacturers to think about these issues and whether there is a need to register their product's design.

One of a company's most important assets is the intellectual property that it has related to its products - their trademarks, copyright and design.

The recent High Court judgment in Burge v Swarbrick (2007) 234 ALR 204 highlights the importance of registered designs in protecting industrial products from being copied by competitors.

The need for a real or substantial artistic element to achieve protection under copyright law means that it may not be available to manufacturers. The decision provides a timely reminder for manufacturers to think about these issues and whether there is a need to register their product's design.

Protecting product and packaging designs

The shape of a product or its packaging can be just as important commercially as what it is made of, how it works or how it is made - think of the Coca-Cola bottle or an iMac. A manufacturer’s ability to prevent competitors from copying the appearance of products can be an important way of protecting market share.

There are three ways manufacturers can thwart copies coming onto the market, each with its own requirements, advantages and drawbacks.

• The most fitting way is by registering the appearance of the product as a design under the Designs Act 2003. Protection is dependent upon registration of the design with IP Australia and the owner gains protection for up to 10 years. By way of example, manufacturers of electric jugs, chairs, tyres and tap sealings have made use of the registered design system.
• An alternative and more limited form of protection can be acquired under the Trade Marks Act 1995, which allows for the registration of shape marks. A recent example is the registration of a bug shaped confectionary (Kenman Kandy Australia Pty Ltd v Registrar Of Trade Marks (2002) 56 IPR 30). There are also reports that Guylian is apparently seeking the registration of the shape of its chocolates.

Like registered designs, protection is dependent on registration with IP Australia. The protection however is more limited and generally not suited to industrial products as the monopoly rights only apply where the shape is inherently distinctive and a competitor uses that shape as a trade mark (ie. to indicate origin). This can be difficult to establish particularly where the product is functional.

• Lastly, manufacturers can seek to rely on copyright, which protects artistic works in both two and three dimensions. The benefits associated with relying on copyright, include the right to prevent others from reproducing the work, the automatic nature of copyright protection and the greater period of protection (70 years from the death of the author) compared to registered designs.

Loss of copyright protection

The policy that underlies the Copyright Act 1968 is that where an artistic work is industrially applied, copyright protection should be lost. It is thought that those seeking to protect such industrial products should do so under the Designs Act. Importantly, copyright protection will be lost even if the corresponding design is not registered (sections 74-77 of the Copyright Act).

There is however a significant carve out with respect to a species of artistic work known as a "work of artistic craftsmanship". The construction and application of this carve out to manufacturers is what was considered by the High Court in the Burge case.

Ship hull moulds

Mr J H Swarbrick was a naval architect and builder of yachts and, through his company Swarbrick Yachts, manufactured a yacht marketed as the "JS 9000". Mr Swarbrick created a hand-built full-scale prototype which was the precursor for the creation of moulds for the hull and deck. These moulds were capable of reproducing the design.

The design was not registered under the Designs Act and it was conceded that the copyright work had been industrially applied.

Two employees of Swarbrick Yachts involved in the manufacture of the hulls later sold the moulds to one of the appellants (Boldgold). Mr Swarbrick commenced copyright infringement proceedings against the appellants for attempting to construct a boat from the moulds. Burge was engaged by Boldgold as operations manager of its factory premises.

Mr Swarbrick claimed the hull moulds were works of artistic craftsmanship and therefore protected under the Copyright Act. The appellants claimed that no infringement had occurred as it was not a work of artistic craftsmanship but in fact a corresponding design within the meaning of copyright-design overlap provisions of the Copyright Act. Consequently, the central issue on appeal was whether the prototype and the moulds amounted to a work of artistic craftsmanship.

Mr Swarbrick was successful in obtaining interim orders restraining the use of the moulds in the Federal Court and on appeal to the Full Court of the Federal Court each of which found that the moulds were works of artistic craftsmanship. The appellants subsequently appealed to the High Court of Australia.

No work of "artistic craftsmanship"

The High Court confirmed that works of artistic craftsmanship are not limited to handicraft and can be mass produced, however, it stated that "work of artistic craftsmanship" was a composite phrase that was to be construed as a whole rather than in two separate parts of "craftsmanship" and "aesthetic appeal". The Court emphasised the need for a real or substantial artistic element, for example a manifestation of pride in sound workmanship or considerations of visual and aesthetic appeal, as opposed to the purely functional.

The High Court, in a unanimous judgment, reversed the findings of the Federal Court and found that the moulds were not works of artistic craftsmanship. This was because:

• What is a work of artistic craftsmanship is to be determined by the court objectively, however the subjective evidence of the designer/craftsman is admissible.
• Determining whether a work is a work of artistic craftsmanship requires considering the extent to which functional considerations override the work's artistic expression.
• In this case, the contemporaneous evidence (principally marketing material highlighting the functional attributes of the yacht) demonstrated that matters of visual and aesthetic appeal were subordinated to functional and commercial objectives.

In this instance, the High Court considered that the main and essential elements of yacht design were the application of mathematical and engineering principles together with the relevant principles of physics as opposed to artistic expression. The more substantial the requirements to satisfy utilitarian considerations, the more difficult it will be to determine real or substantial artistic effort.

Conclusion

Generally, the courts will proceed on the basis that long copyright protection has a potentially stifling effect on manufacturing development. It is the real or substantial artistic effort which underpins the recognition of copyright protection of certain artistic works which are applied as industrial designs, but are not registered under the Designs Act. There needs to be a real or substantial artistic element over and above any functional or commercial influences on the design.

Those designs, whether they be of chairs, yachts or tables, in the absence of registration will need to highlight the artistic expression of the work, and that it is not subordinated to functional considerations.

This potentially confines the protection previously enjoyed by works of artistic craftsmanship and manufacturers should consequently take heed.

Following the High Court's decision in Burge v Swarbrick, the most prudent course for manufacturers is to seek to register product or packaging designs under the Designs Act to obtain intellectual property protection.