One can long survive the other, or be extinguished by it. The art is in finding the gaps and exploiting them as best you can.

This article addresses the overlap (and gaps) between artistic copyright and design through some theoretical scenarios. Dali typifies many designers in that his work spans a range of industries – furniture, telephones, apparel, textiles, jewellery and the famous Chupa Chup logo. We take artistic licence in relation to actual events (we made them up), timing (now) and location (Australia).

Scenario 1: copycat design – no design registration

Dali creates a new design for a sofa in 2007: the Mae West Lips Sofa. He has created some design drawings and a handmade wood and satin prototype. He has not registered the design.

Vogue Manufacturer (Vogue), a manufacturer with a reputation in design, sees Dali’s sofa at a fair and secures a licence to make and sell the sofa. The Mae West Lips Sofa is a runaway success, with the first run of fifty sold out at the product launch in 2008.

Rogue Manufacturing (Rogue) buys one of the Mae West Sofas, and makes drawings and measurements to copy it and make its own line of sofas. He has no design registration. Can Dali stop Rogue on the basis of copyright infringement?

In assessing copyright infringement, the first question is: what are the copyright works and which works have been infringed?

As Dali’s design drawings are ‘original’ works created by him, he will have copyright in them as ‘artistic works’ under the Copyright Act 1968 (s10). Dali may have created more than one drawing and each drawing is potentially a separate and independent copyright work. 

Dali has also created a handmade prototype of his design. The prototype is an original artistic work in its own right and has copyright independent of Dali’s drawings. Therefore, Rogue’s actions may have infringed copyright in one or more drawings as well as the prototype.

A single product design will typically encompass a body of works, each separately protected by copyright. The copyright works and the ‘thing’ protected are not identical. The sofa is an aggregation of works, each capable of being independently infringed.

Rogue’s drawings and sofas are 2D and 3D reproductions, respectively, of Dali’s design drawings (or at least a drawing) and his prototype. Under the Copyright Act (s21), a 3D artistic work is reproduced if a version of the work is produced in 2D form, and vice versa. However, are they infringing copies?

The Copyright Act provides a defence to infringement to reproduce an artistic work (other than a work of artistic craftsmanship) by embodying that work in a product if a ‘corresponding design’ of the artistic work has already been ‘industrially applied’ by or with the licence of the copyright owner (s77).

A corresponding design (Vogue’s sofas) of Dali’s artistic works has been ‘industrially applied’ (fifty copies made and sold), so copyright protection in Dali’s artistic works is excluded – unless any of his works can be categorised as a ‘work of artistic craftsmanship’.

Only artistic works that are made by an ‘artist-craftsman’ can fall into this category: see Burge v Swarbrick. Dali’s sofa prototype is likely to do so since it has the necessary aesthetic qualities and, in making his sofa prototype, Dali’s design choice was relatively unconstrained by the function or utility of the article. If this is so, then copyright protection has not been lost in the prototype, despite ‘industrial application’.

Conclusion: Rogue’s drawings and sofas infringe copy-right in Dali’s prototype but not his drawings. This is enough to stop Rogue from making and selling the sofas.

Scenario 2: copycat design – design registration

What if Dali had registered the design in relation to articles of furniture? All copyright in artistic works (whether a work of artistic craftsmanship or other artistic work) lose copyright protection upon registration of a corresponding design: s75 Copyright Act.

Therefore, Dali would lose copyright protection in both the drawing and the prototype and he would need to rely on the design registration to stop Rogue.

In Australia, design protection is limited to ten years. As a result, Dali would have no recourse under copyright or design laws to stop Rogue from making and selling copycat sofas after his design registration has expired.

Conversely, if Dali had not registered the design, he would retain copyright in the sofa prototype for life plus seventy years. However, the risk is that if a court held that the sofa prototype is not a work of artistic craftsmanship, Dali would have no protection (copyright or design) from the day Vogue first offered its sofas for sale.

Scenario 3: copy is not identical

What if Rogue instead makes a mould from the sofa and has it manufactured as a plastic injected bench seat? Can Rogue be stopped now?

Copyright

Under copyright law, an artistic work can be infringed by reproduction of the work or a substantial part of the work. The term ‘substantial’ refers to quality rather than quantity. Whether a part is ‘substantial’ depends on whether it is an essential part of the work – a vital or material part, even if only minor in quantity.

The injection moulded product would infringe a substantial part of Dali’s artistic work, since a mould of Dali’s version was used to make it. As copyright protection in the drawings has been lost (as described in scenario 1), in order to establish infringement Dali’s sofa prototype would need to be a work of artistic craftsmanship.

Copyright does not prevent independent creation of the same expression of an idea. If Rogue had independently conceived its sofa design (and can prove it) then Dali would have no claim to copyright infringement. In contrast, independent creation is not a defence to infringement of a design registration.

Design law

Would a design registration for Dali’s design in relation to articles of furniture be infringed?

Rogue’s injection moulded bench seat is not identical to Dali’s design, so the test is whether Rogue’s sofa is ‘substantially similar in overall impression’ to Dali’s design. Under the Designs Act (s5) ‘design’ in the means the overall appearance of a product resulting from one or more its visual features.

The comparison is made between the visual features of the infringing product and those of the design registration, not Vogue’s sofa: see LED Technologies v Elecspress.

Visual features include ‘shape, configuration, pattern and ornamentation of the product’ but not the feel or the materials used (s7 Designs Act). More weight is given to similarities than differences, and the quality and importance of similarities is considered in the context of the design as a whole.

Therefore, similarities in shape and configuration between Rogue’s sofa and Dali’s design would be important (lip shape), not differences in materials (wood and silk versus plastic). On this basis it is likely that Dali’s design registration would be infringed. 


 

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