Sections 74 to 77A of the Copyright Act 1968 set out convoluted laws governing the enforceability of copyright when an artistic work is produced in commercial numbers. Under certain circumstances defined in those sections, copyright in a design can become unenforceable.

The provisions of the Copyright Act are ostensibly there to make creators or owners of copyright decide whether the works they create or own are for artistic purposes (and therefore should rely on copyright) or for more commercial purposes to reproduce the works in numbers (and therefore should rely on design protection). In truth, the copyright-design overlap provisions are more complicated than this general principle, and even treat two-dimensional and three-dimensional artistic works differently when it comes to copyright enforceability.

However, when the definitions of "design" in the Copyright Act and the Designs Act 2003 are compared, it is apparent that there are significant discrepancies between the two, making it unclear whether Sections 74 to 77A can actually work.

Section 6 of the Designs Act defines a "design" as: "design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product."

Visual features are subsequently defined in Section 7 as: "visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product."

Finally, Section 8 clarifies that the use of the term "design" in the Designs Act means a design in relation to a product: “in this Act, a reference to a design is a reference to a design in relation to a product.”

Thus, the Designs Act makes it clear that the design and product are indivisible. The design for which registration is granted has the visual features as part of the product. This is consistent with Australian case law in respect of industrial design rights, whereby the underlying product bearing the visual features must be considered as part of the IP right in a registered design.

However, the Copyright Act takes an entirely different approach – one which is inconsistent with the Designs Act.

Section 74 of the Copyright Act 1968 defines a 'corresponding design' as:

"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." (Emphasis added.)

Clearly the Copyright Act treats the "design" as visual features that must be applied to a product. That is, the design and the product are divisible, whereas the Designs Act incorporates the underlying product as part of the overall design. The "corresponding design" applied to the product under the Copyright Act is more akin to the "visual features" of the product as defined under the Designs Act, in the absence of the underlying product.

This interpretation of the scope of the "design" (the corresponding design) under the copyright-design overlap provisions of Sections 74 to 77A is reinforced by Section 75 of the Copyright Act in relation to protection where a corresponding design is registered:

Subject to section 76, where copyright subsists in an artistic work (whether made before the commencement of this section or otherwise) and a corresponding design is or has been registered under the Designs Act 1906 or the Designs Act 2003 on or after that commencement, it is not an infringement of that copyright to reproduce the work by embodying that, or any other, corresponding design in a product.” (Emphasis added.)

The Designs Act 2003 replaced the Designs Act 1906. Section 4 of the Designs Act 1906 defined a "design" as the features of appearance, more in concert with the Copyright Act. That is:

design means features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction.” (Emphasis added.)

The present wording of the Copyright Act may well have been consistent with the Designs Act 1906, but it is inconsistent with the Designs Act 2003.

Clearly, visual features of appearance alone can never “constitute a design that is capable of being registered under the Designs Act 2003” because there is no underlying product incorporated as part of the design to produce a "design" defined under the Designs Act.

In addition, it is unclear whether registering a design under the Designs Act also, by default, registers the corresponding design defined under the Copyright Act, which is the operative requirement for the copyright unenforceability section. 

The overlap between registered design rights and copyright is a convoluted area of law. It cannot be presumed that copyright relating to a product that has been commercialised in numbers can be enforced when subsequently copied by a third party. Professional legal advice should be sought. Although the Copyright Act prevents enforcement of copyright under certain circumstances where a corresponding design has been commercialised, there are exceptions to the rule, particularly in relation to two-dimensional corresponding designs and works of artistic craftsmanship.

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.