With the America’s Cup action now resolved in New Zealand’s favour on the Great Sound in Bermuda, we now await news of what is in store for the next edition. In the last few weeks we have been treated to an amazing spectacle of high technological designs and development. On display in this 35th instalment was an incredible interplay between high performance sailing (and cycling) athletes and technology enriched speed machines created by innovation-extreme technologists – all with a need for speed!
With innovation, technology, and carbon-fibre everything, on ready display during this event, Wrays’ Senior Associate, and keen kiwi sailor, Dan Wadsworth, briefly canvasses what intellectual property rights are available for marine designers for protecting their creative efforts.
Often it is the shape of the hull/deck of a marine craft that is of commercial value, and so protection by design registration is usually an appropriate option. However, if there is a functional component that drives the visual appearance of the hull/deck shape, then patent protection could also be an option (in addition to design protection).
Putting any patentable elements of a hull/deck shape to the side, we look briefly at what is on offer when it comes to protection of hull/deck shapes across key jurisdictions in the marine industry.
In Australia, past litigation specifically relating to a local yacht design confirmed that copyright law for such subject matter was not an appropriate regime for seeking protection to avoid, for example, “hull splashing” (the process by which vessel hulls are easily copied). Depending on the circumstances at hand, registered design (10 year term of protection) and/or patent legislation (like most countries, 20 year period of protection) remain as the most effective options for establishing registered rights to the unique shape/function of any hull/deck design to be the subject of industrial replication.
Registered and unregistered design rights are available for protecting the visual appearance of new designs in Europe.
In Europe (by way of a registered Community design), registered design protection is available for new designs for up to 25 years (on regular renewal in 5 year blocks). Registered protection needs to be affirmatively sought prior to the design being commercialised or being made public.
Unregistered design rights also exist in Europe for new designs to protect against unauthorised copying (and dealing) of the design. In Europe the term of protection is 3 years from the date the design first becomes available in the relevant European Union territory.
Importantly, a difference between registered and unregistered rights is often the ease (and cost) by which each type can be enforced. Thus, when considering which type of right to rely on, it is worth while taking the time to discuss your situation with an IP expert who will run through the various pros and cons.
Copyright law in New Zealand is very unique in that it protects the appearance of 3D products that have been industrially applied. Industrial application occurs if more than 50 copies have been made (although this does depend to some extent on the nature of the article to which the design is applied). The term of copyright provided is generally limited to 16 years.
In the US, however, a protection regime for vessel hulls, decks, and/or their combination is available by way of specific legislation – the Vessel Hull Design Protection Act (or VHDPA). The aim of the VHDPA is to protect the shape of original marine craft hull and/or deck designs being attractive or distinctive in appearance, and that have been properly registered through the US Copyright Office. Importantly, the scope of the protection is limited to the shape of the vessel’s hull and/or deck.
The VHDPA grants a 10 year term of protection commencing from the earliest of the publication of the Copyright notice, or the date the design was first made public. One must file their VHDPA application within 2 years of the design having been embodied.
While the protection via the VHDPA is not as broad as what patent and/or design patent protection may inherently offer, as it is usually the case that pursuing patent protection for any novel and inventive aspect(s) of a hull/deck design can be lengthy and time consuming, securing protection by way of the VHDPA can be a good strategic way of establishing provisional protection while any patent/design protection is on foot.
Protecting the shape of hull/deck designs is possible, but the options available (and their pros and cons) do vary among jurisdictions.
For any company engaged in designing/making/selling marine craft it is recommended that, as a starting point, consideration be given to the commercial merits of what protection strategies might be available, and how those strategies may complement the overarching business strategy.