Works of Artistic Craftsmanship
Designs in 3D products generally do not enjoy copyright protection
In the intellectual property world, generally, if you industrially design a 3-dimensional product then unless you apply for a design registration for that product then you lose any copyright protection for that product once you industrially apply it (create more than 50 copies of it). You must also apply for registration before you go public with it (i.e. make the application while it is still under wraps, and make sure it stays under wraps until you do so).
Copyright and design registration both provide monopoly rights to the underlying work. However, copyright lasts significantly longer than a design registration: life of the author + 50 years for copyright; a straight 10 years for design registration. Copyright arises automatically upon creation without the need for applying to the government for registration (in Australia, each design application costs $250 in government fees)
The policy of the government is clear. Designs tend to be products that do things that have functional utility and a shorter period of monopoly rights is intended to allow the underlying product to be freely used by all sooner (hopefully to the benefit of society as a whole).
Exception: Works of Artistic Craftsmanship
One exception to the above is for works of artistic craftsmanship (WAC). A WAC is typically a three-dimensional product, but it enjoys the benefit of longer copyright protection and no registration is required. WACs are specifically referenced in the Copyright Act as a special category of works that enjoy copyright protection (paragraph (c) of the definition of “artistic work” in section 10 of the Copyright Act 1968).
That WACs are considered a special category of works enjoying special status of copyright protection traces its history to the arts and crafts movement of the 18th century and legislative reforms first in the UK which were then followed in Australia. This history was traced by the High Court of Australia in a case involving a yacht (Burge v Swarbrick [2007] HCA 17).
The High Court held that the key elements to decide if a design having utilitarian purposes is nonetheless a work of artistic craftsmanship, and thereby protected by copyright, are as follows:
- This law was principally designed to protect craftsmen such as silversmiths, potters, woodworkers, hand-embroiders and many others;
- The law is designed to protect real artistic effort in the field of industrial design;
- There needs to be a real or substantial artistic element;
- There is no antithesis between utility and beauty, between function and art;
- Craftsmanship…implies a manifestation of pride in sound workmanship – rejection of the shoddy, the meretricious, the facile;
- Artistic form should…be an emanation of regard for materials on the one hand and function on the other;
- Whether a product can be regarded as a work of artistic craftsmanship will depend on if “there is considerable freedom of design choice relatively unconstrained by the function or utility of the article so produced”; and
- “Determining whether a work is a “work of artistic craftsmanship” does not turn on assessing the beauty or aesthetic appeal of the work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations.”
The last sentence is the key test.
In the Burge case, the High Court held that the yacht was not a work of artistic craftsmanship.
State of Escapes’ Tote Bag
The opposite result was reached by Justice Davies in the Federal Court in September 2019 in State of Escape v De Rozario. In that case, Justice Davies granted an injunction against a copier knocking off State of Escapes’ perforated neoprene Escape Bag (pictured below). Now, there is nothing new about tote bags, and State of Escape does not enjoy monopoly rights to tote bags. But theirs is unique, being made of perforated neoprene and also having sailing rope as part of its construction. Justice Davies has not issued reasons for his decision, but given the injunction was granted she must have been satisfied that the Escape Bag was a work of artistic craftsmanship.
This is a great outcome for an Australian company coming out with an original design which proves popular with consumers and then faces parasitic competition from the supplier of a knock-off who invests no money in R&D or a creative process. The original designer usually has the concern to ensure its product is high quality and sometimes that all or some of the product is made sustainably (the knock off supplier typically has no such concern, it is only interested in a product that looks similar and typically sold at a lower price point).