The Australian Designs Act 2003 does not explicitly exclude computer icons and animations from being protected as Registered Designs. However, there are serious obstacles in the Act and the law which impede any robust rights from being granted for this increasingly common distinguishing feature of PDAs, hand-helds, tablets and other mobile devices.
An Australian design application must be identified in connection with a ‘product’. This would appear to encompass computer icons and animations that are nominally applied to electronic devices such as a mobile phone or a computer screen.
However, the Australian Law Reform Commission’s Report, which made recommendations on which the present Designs Act is based, and the Australian Designs Manual of Practice and Procedure, state that a ‘product’ must be a product at rest i.e. one which is not relying on a power supply. In the Altoweb case an application for a design displayed on a computer screen was rejected because the software creating the design was considered to be independent of the screen as manufactured or sold. The current Australian designs regime is therefore ‘set’ against protection for computer icons and animations.
Nevertheless, a design application does not require an applicant to identify whether a product is at rest or relying on a power source when filing a design application, and so it is possible to achieve a presence on the Australian Designs Register without complying with the intent or the specific requirements of the Designs Act. This is because an Australian design application does not undergo substantive examination before becoming registered. The Designs Register reflects the anomaly by its inclusion of a number of unexamined Australian registered designs for computer icons. Many of these are titled ‘Electronic Device’. The validity of these design registrations for computer icons is questionable. A registered design must pass a substantive examination process and be ‘certified’ for the registration to be enforceable.
Assuming a design registration for a computer icon is certified, a further complication potentially arises were it to be the basis of an infringement action. Specifically, it is not defined in the Designs Act whether an infringing product need be at rest. Consequently, the enforceability of a registered design for computer icons must also be doubtful. Although it is possible to obtain a design registration for a computer icon applied to an electronic device, the validity and enforceability of such design registration remains uncertain. The only real value of such a design registration is that it could act as a potential deterrent to persons who review the Australian Designs Register before copying a computer icon which is the subject of a registered design.
In protecting animations under the Australian designs regime an additional problem is encountered.
Since a design is the overall appearance of a product resulting from the product’s visual features, each ‘frame’ of an animation is likely to be considered as a separate design. If an application includes more than one design, the applicant is required to pay a separate fee in relation to each design. This adds a significant cost burden to ‘proper’ protection of an animation.
Several design registrations, each covering a single frame of an animation would not properly substitute for the completeness of the animation. In other words, the animation is unlikely to be considered a sequence of static frames together creating an illusion of movement.
Although attempts have clearly been made to date, for all practical purposes it seems highly unlikely that either computer icons or animations are easily protected or enforced under the Australian designs regime.
Other avenues such as trade marks or copyrights may be more suitable for protecting computer icons and animations in Australia.