Intellectual Property
Winter Session 2013
Therese Catanzariti
Therese Catanzariti
artist craftsman => industrial designer
1754 Royal Society of Arts
1787 Designing and Printing of Linens Act 1787 (Eng) 27
Geo III c 28
Fabric design – linen, muslin, cotton, calico
Sole right of printing design for 2 months
Manchester mills – linen, muslin, cotton, calico
THEN any ornamentation on products
THEN any visual features of products
1906 Designs Act
2003 Designs Act
Therese Catanzariti
easy to manufacture
easy to use – “out of box readiness”
ergonomically sound
Good design is obvious. Great design is transparent
Everything is designed. Few things are designed well.
The design process, at its best, integrates the
aspirations of art, science, and culture.
I don't design clothes, I design dreams -
Ralph Lauren
Therese Catanzariti
Good design is obvious.
Great design is transparent
Everything is designed.
Few things are designed well.
The design process, at its best, integrates the aspirations of art, science,
and culture.
Form follows function, ornament is a crime
I don't design clothes, I design dreams -
Bauhaus / Modernism
Ralph Lauren
“…good design pays. It is ..a crucial element in corporate strategy, and as
integral to the customer focus required for business success. It is a key
part of innovation in industry. In terms of specific market attributes,
modern design is seen as essential to product differentiation and brand
loyalty.”
ALRC Report 94 “Designs”1995
Therese Catanzariti
“I just want things to work properly.”
Therese Catanzariti
“Its very easy to be different
Its very difficult to be better.”
Therese Catanzariti
Therese Catanzariti
Therese Catanzariti
Appearance of product / visual features
NOT function / performance (patent law)
NOT method of construction
NOT product itself – separate and distinct from product
In relation to product
Microsoft Type Font – type font design not specify tangible
thing
Re Comshare Inc –computer screen display not product as
ephemeral separate from computer screen
Monopoly – does not require copying
Term – maximum 10 years from filing date
(5+ optional 5) – s46
Therese Catanzariti
Therese Catanzariti
Therese Catanzariti
"design" , in relation to a product, means the
overall appearance of the product resulting
from one or more visual features of the
product – s5
Re Wolanski (necktie support) –monopoly for
on particular individual and specific
appearance
product – thing that is handmade or
manufactured – s6
Therese Catanzariti
“Visual feature” in relation to a product, includes
the shape, configuration, pattern and
ornamentation of the product
Visual feature may but need not serve a functional
purpose
NOT
The feel of the product
The materials used in the product
If the product has one or more indefinite
dimensions
◦ The indefinite dimension
◦ If the product also has a pattern that repeats itself –
more than one repeat of the pattern
Therese Catanzariti
Court determine what is a visual feature
tho expert evidence may provide technical
assistance
Dart Industries v Décor (1989) 15 IPR 403
“the design is the mental conception conveys to
the mind by the eye…
Court determine meaning of design …
while some designs are so simple… the court
needs no expert evidence to interpret them,
other designs are complex and judges require
technical assistance in order to understand them”
Therese Catanzariti
Therese Catanzariti
Therese Catanzariti
Therese Catanzariti
Therese Catanzariti
monopoly for one particular, individual and specific
appearance
NOT if suggest general shape appropriate to function
that are consistent with a variety of particular shapes
Firmagroup Australia v Byrne & Davidson Doors –
(1987) 9 IPR 353
- recessed handle and lock for shutter doors
Re Wolanski (1953) 88 CLR 278 - necktie support
Therese Catanzariti
Therese Catanzariti
registrable design if new and distinctive
Prior art base – s15(2)
compared with prior art base for the design
as it existed before the priority date – s15
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Designs registered
Designs publicly used within Australia
Published anywhere
NOT published without owner’s consent – s17(2)
NOT artistic work not industrially applied – s18
NOT prescribed by regulations – s17(1)
Therese Catanzariti
new - new unless it is identical to a design
that forms part of the prior art base for the
design – s16(1)
distinctive unless it is substantially similar in
overall impression to a design that forms part
of the prior art base – s16(2)
Therese Catanzariti
more weight to similarities than differences – s19(1)
“informed user” – standard of person familiar with
product - s19(4)
Review 2 v Redberry – familiarity with fashion trends,
not necessarily fashion designer
factors – s19(2)
◦ State of development of prior art base
◦ Whether statement of newness and distinctiveness
identifying visual features as new and distinctive
◦ If only part, amount, quality and importance of that part in
the context of the design as a whole; and
◦ regard to freedom of creator to innovate
Therese Catanzariti
combination dual lens rear lights for motor
vehicles
absence of visible screws
different visual features of the rear or base
views
cut out or recess at end of lamp
the sloping, rounded mounting brackets
surrounding the lenses
Therese Catanzariti
Designer – person who created design
Employer if created in course of employment
Person who commissioned under contract
Assignee
Legal personal representative
Therese Catanzariti
◦ designed on his own
property during his own
time
◦ nothing associated with
his conditions of
employment that created a
general expectation that
he create new designs for
tanks;
◦ no specific direction given
by the employer that led
to the development of this
tank
Therese Catanzariti
owner entitled to register – s13
May file
File
◦ Common design for number of products – s22
◦ Multiple designs for one product – s22
◦ 5 copies of each representation of each design – s21
design must be reasonably clear and succinct - appear with
reasonable clarity and without requiring unreasonably
prolonged or complicated series of deductions from
registration – Keller v LED
◦ (optional) statement of newness – s69
May be taken into account for infringement – s19
No pre-registration examination
◦ IP Australia only checks formalities – s39, 40
◦ IP Australia only examine post grant, on request – s63
◦ need examine before bring proceedings – s73
Therese Catanzariti
Applicant may elect publication or
registration – s35
Publication not stop infringement
BUT stop other registration - part of prior art
base
Useful if large number of designs
similar to honest concurrent user
May withdraw registration and request
publish only – s38
Therese Catanzariti
to make or offer to make a product which embodies the design;
to import such a product into Australia for sale, or for use for
the purposes of any trade or business;
to sell, hire or otherwise dispose of, or offer to sell, hire or
otherwise dispose of, such a product;
to use such a product in any way for the purposes of any trade or
business;
to keep such a product for the purpose of such sale, hire or use
to authorise another person to do such things
Therese Catanzariti
makes or offers to make a product, in relation to which the
design is registered, which embodies a design that is
identical to, or substantially similar in overall impression
to, the registered design;
imports such a product into Australia for sale, or for use
for the purposes of any trade or business;
sells, hires or otherwise disposes of, or offers to sell, hire
or otherwise dispose of, such a product;
uses such a product in any way for the purposes of any
trade or business;
keeps such a product for the purpose of sale, hire,
disposal or use
Therese Catanzariti
Owner can commence proceedings – s73
NOT exclusive licensee
1906 “fraudulent or obvious imitation”
2003 – identical or substantially similar in overall
impression
more weight to similarities than differences
Foggin v Lacey (Orgasmatron) – compare to design
not to product
Therese Catanzariti
Person use or authorise use of product with
registered design
Product is component part of complex
product
Use for purpose of repair of complex product
to restore its overall appearance in whole or
part
Therese Catanzariti
Injunction
Damages
Account of profits
Additional damages – s75(3)
Court may not award damages or account of
profits or reduce damages if – s75(2)
◦ not aware design registered
AND taken reasonable steps to ascertain if registered
Prima facie registered defendant aware if product
or packaging say registered design – s75(4)
Therese Catanzariti
Copyright term life+70 years
copyright in artistic work include right to
reproduce
=> Copyright rights include creating products
limit copyright protection for essentially
industrial products
Part III, Division 8, Copyright Act
Therese Catanzariti
Nature of rights
◦ Copyright – prevent copying, allow independent creation
◦ Design - monopoly
Ownership
◦ Copyright – author, employer, assignment in writing
◦ Design – author, employer, commissioner
Registration
◦ Copyright – subsist on creation, no registration
◦ Design – registered on Design Register
Term
◦ Copyright – author life+70 years
◦ Design – 5+5 yrs
Therese Catanzariti
Therese Catanzariti
Therese Catanzariti
Part III, Division 8, Copyright Act
limit copyright protection for essentially industrial
products
if products infringing design
exception
◦ If registered design, can only claim infringe design, not infringe
copyright
◦ If no registered design but design industrially applied, cannot
claim infringement
◦ Works of artistic craftsmanship
◦ Other copyright infringement (eg publish design in book)
unless incidental to making product (plan to plan copying)– s77A
Therese Catanzariti
If corresponding design registered – s75
=>not infringe copyright in artistic work to
reproduce work by embodying work or
corresponding design in product
If corresponding design not registered – s76
corresponding design industrially applied
with copyright owner’s licence
not work of artistic craftsmanship
=>not infringe copyright to reproduce work by
embodying corresponding design in product
Therese Catanzariti
“corresponding design” - visual features of
shape or configuration which, when
embodied in a product, result in a
reproduction of that work – s74
Shape or configuration – does not include
designs for 2D such as wallpaper, textiles
embodied - woven into, impressed on or
worked into the product
Therese Catanzariti
“corresponding design” - visual features of
shape or configuration which, when
embodied in a product, result in a
reproduction of that work – s74
embodied - woven into, impressed on or
worked into the product
Polo v Ziliano Holdings – Ralph Lauren polo
logo not embody design, as embody needed
to give a material or discernible form to
abstract principle
Therese Catanzariti
Not infringe copyright in artistic work to
reproduce work by embodying work or
corresponding design in product
◦ If corresponding design registered– s75
◦ If corresponding design unregistered but
◦ applied industrially to products
Regulations – more than 50 units
Press Form v Henderson –may be less than 50 if
complex articles
AND products sold, let for hire or offered or exposed for
sale or hire – s77
Exception for works of artistic craftsmanship
Sheldon v Metrokane – bottle opener
Burge v Swarbrick – boat plug and mouldings
Therese Catanzariti
arts and crafts movement / anti-industrial
John Ruskin, William Morris, Tiffany – V&A
Therese Catanzariti
George Hensher v Restawhile [1976] AC 64 –
Coogi v Hysport- commercial fabric
Merlet v Mothercare (1986) RPC 115 – baby cape
Sheldon v Metrokane (2004) 61 IPR 1– rabbit
Burge v Swarbrick (2007) 232 CLR 336 – boat
chicken wire prototype of sofa chair
corkscrew
plug and mouldings
Therese Catanzariti
Therese Catanzariti
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