-- JonathanMo - 14 Sep 2015

The question of dual protection arises particularly in relation to 'artistic works' under the Copyright Act 1968 (Cth) (CA), especially drawings, engravings, sculptures, and works of artistic craftsmanship. Such works may also be registrable as designs. The designs/copyright overlap provisions are intended to ensure that, as far as possible, all such works receive the category of intellectual property protection considered appropriate to their nature. In particular, copyright protection should not be extended to commercial and industrial products which originate as drawings.

The position prior to the DA

Prior to the clarification provided by the DA and amendments to the CA (by the Designs (Consequential Amendments) Act 2003 (Cth)), the designs/copyright overlap provisions were as follows:
  • Two-dimensional designs receive protection as artistic works under the CA in so far as design features applied as surface designs constitute reproductions of artistic works. Cumulative protection is also available under the DA if the design is registered;
  • Three-dimensional articles retain copyright protection if they are works of artistic craftsmanship or buildings or models of buildings. Design registration results in effective loss of copyright for these works
  • In other cases, copyright protection for artistic works applied as three-dimensional designs is effectively forfeited if the corresponding design is applied industrially.
The CA defines a 'corresponding design' as any design which, when applied to an article, results in a reproduction of the artistic work, except where the design consists solely of features of two-dimensional pattern or ornamentation applicable to the surface of an article [CA s.74]. Where the design is registered, any copyright in the work is not infringed by its reproduction on an article: hence, the owner will have to rely on design registration for protection [CA s.75]. But copyright protection will be retained where the work falls outside the design monopoly, particularly if it is a two-dimensional use of the work and unregistrable under the DA.

Where a corresponding design has not been registered, section 77 of the CA provides that copyright protection will still be lost if the design is applied industrially by or with the licence of the copyright owner. See Hutchence v South Seas Bubble Co Pty Ltd (1986) 64 ALR 330; 6 IPR 473, in which the scope of the loss of copyright protection under section 77 of the CA was construed narrowly:
a copyright owner only loses his or her rights under that section in respect of infringements made by another person in regard to articles of the same type as those previously sold, hired or offered for sale or hire by, or with the licence of, the copyright owner.

See also Interlego AG v Croner Trading Pty Ltd [1992] FCA 624; (1992) 39 FCR 348; 25 IPR 65.

A design is deemed to be 'applied industrially' if it is applied to more than 50 articles. Where it is applied to less than 50 articles, it is left to the courts to decide whether it is 'applied industrially': see Press-Form Pty Ltd v Henderson's Ltd (1993) 40 FCR 274; 26 IPR 113.

Under the current DA and CA

The DA and the CA work to limit copyright protection for utilitarian three-dimensional products, whether or not they are in fact registrable as designs. Consequently, the new definition of 'corresponding design' in section 74(1) of the CA states that:
'corresponding design', in relation to an artistic work, means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003.

The DA and CA together attempt to define the difference between two-dimensional designs (which continue to receive copyright protection) and three-dimensional designs (which do not). Under section 74(2) of the CA a design is 'embodied in a product' when it is 'woven into, impressed on or worked into the product'. Thus, flat wallpaper, book covers, calendars, greeting cards, CD covers and the like may retain copyright protection. Products such as tapestry, knitted items or carpets would be regarded as 'corresponding designs'.

A new section 77(1A) of the CA is intended to extend the notion of 'applied industrially' for the purpose of section 77 of the CA. It provides that products illustrated in published patent specifications, or drawings submitted in a design application, will be regarded as having been 'industrially applied' and therefore lose copyright protection under section 77 of the CA.

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