HCA on the "Copyright/Designs Overlap"

Well well well, waddya know, the High Court of Australia has decided to come up with a sensible unanimous decision! In this very important decision, the HCA has cleared up significant confusion in the area of what is and is not copyrightable in the area of industrial designs.

The upshot of this case is that we now adopt the definition of "work of artistic craftsmanship" (WOAC) as formulated by Lord Simon of Glaisdale in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64; [1975] RPC 31 ('Hensher'). Unlike some of the more recent inexplicable High Court judgments, I think this to be a sensible decision.

The HCA has decided that the test to be used is a holistic one, and requires one to interpret the term 'artistic craftsmanship' as a single unit. Lord Simon basically says in Hensher that there is a continuum between works of craftsmanship that are merely functional in design (e.g., a blacksmith making a horseshoe), and something that is 'artistic' (e.g., the same blacksmith making incredible wrought iron gates for a palace). At the functional end where there is very little freedom for design choice in view of the design specs for a product, you cannot really say that there was sufficient artistic freedom for the work to be a WOAC. But on the other end, where there is considerable latitude and freedom in terms of design choice and an artist expresses himself (say, e.g., in a piece of Tiffany jewellery), then notwithstanding the fact that the work is mass produced, it is still a WOAC.

Why is this important and why is there so much confusion? Well, the confusion exists because the Copyright Act (CA) grants a copyright monopoly for an incredibly (and some might say unjustifiably) long period for qualifying subject matter, while the Designs Act only grants a monopoly to "designs" for a relatively short period of 10 years. The problem is trying to decide just where the "copyright" ends and "designs" begin.

The parliamentary response is typically confused, and the language is so horrible, only a mother would love it. What Parliament attempted to do in previous iterations of the act was to carve out certain areas of industrial endeavour where copyright law would not apply. The previous attempts utilized language that rendered copyright law inapplicable if some design that was otherwise copyrightable was applied to some sort of industrial use (read the old acts yourself if you would like to know more, I can't be bother to find the citations.

Say for example, you designed and made a lamp. If you only made one lamp and didn't mass produce it, you had copyright protection for, say, 50 years. If you mass produced it and registered it (by paying a fee and making the government some tidy sum of money) as a design under the old Designs Act, you got protection for only 16 years. But, if you didn't register it and mass produced it, you got NO PROTECTION at all, unless it qualifies as a "work of artistic craftsmanship", but not otherwise.

So, no registration and possibly 50 years if you went to court and things went your way (or nothing), or registration and only get 16 years. Class double (or triple) or nothing scenario if you were a betting man. And, registration costs money and fills the governmental coffers.

Confused yet? The CA and the Designs Act went through several different iterations, all unsatisfactory and filled with loopholes. In the next to last one, there was what was called a "plan to plan copying" loophole. It turns out that certain Federal Courts were willing to entertain the idea that while the article itself wasn't amenable to copyright protection, the underlying plan could be copyrighted.

So, for example, if I were a clothing designer, while the shirt I designed and mass produced could not be protected, and if unregistered could be freely duplicated, I could nevertheless sue any copycats for copyright infringement by arguing that the copycat must have reproduced my "plan" in order to reproduce the article, and therefore, he infringed my copyright. This was the approach taken by the Fed Court, and nyaaar, bye bye designs registrations, they just became redundant because suddenly, all industrials designs became potentially subject to copyright protection. (Every manufactured item has to come from a plan or blueprint, right?)

As you can imagine, this didn't go down well with Parliament. Where's it going to get revenue from, if not from design registration? (I think even this government wouldn't be greedy/stupid enough to require registration for every copyrightable creation -- can you imagine your starving garage band or painter having to pay to register copyright in their original work?) Its solution was to get rid of the loophole, and hence, the Copyright Act and New Designs Act in their current form.

As it now stands, s 10 CA defines 'artistic work' as:

"artistic work" means:

(a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;

(b) a building or a model of a building, whether the building or model is of artistic quality or not; or

(c) a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b);

Section 77(2) CA basically says it is not an infringement to reproduce industrial designs that have not been registered and ss 77(1) and (1A) basically carves out the parts of copyright law that will no longer apply once you mass produce and sell something. The really important thing to note is that s 77(1)(a) says that s 77 applies when 'copyright subsists in an artistic work (other than a building or model of a building, or a work of artistic craftsmanship) ...'. Section 77(1A) is the section that closes the plan to plan copyright loophole referred to above.

From the--admittedly confusing--statutory language, we can distill the following rules:

1. If copyright subsists in something; and
2. It is mass produced; and
3. It is not a building, model of building or WOAC; and
4. If it is not registered as a design under the New Designs Act

You don't have any copyright protection at all.

But you can still gamble. The gamble is now this. You can refuse to register your design and claim that what you have is a WOAC. Enter the High Court case that is the subject of this post: Burge v Swarbrick [2007] HCA 17.

Swarbrick was the designer of a fast racing yatch. He claimed that the 'plug' (a kind of prototype from which the moulds for the hull or deck of the yacht were taken) for the yacht he created was a WOAC, and that Burge had taken his plug and used it to create moulds from which a copycat yacht was produced.

Swarbrick didn't register the design for his plug, so he either had no case, or he had to resort to copyright law by claiming that the plug was a WOAC.

In this case, I commend that judgment to you. It is clear and well written, and we can see that the HCA has decided that Swarbrick was functionally constrained and although aesthetic considerations were involved, they were not involved sufficiently for the plug to constitute a WOAC.