Therese Catanzariti

DesignsIntellectual PropertyWinter Session 2013

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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, calicoTHEN any ornamentation on productsTHEN any visual features of products 1906 Designs Act 2003 Designs Act

history

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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

principles of design

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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 crimeBauhaus / Modernism

I don't design clothes, I design dreams -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

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Sir James Dyson

Painting - Byam Art School (now Central St Martins)

Furniture and interior design – Royal College of Art

“I just want things to work properly.”

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Sir Jonathon Iwe “Its very easy to be differentIts very difficult to be better.”

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culture-specific

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Appearance of product / visual featuresNOT function / performance (patent law)NOT method of constructionNOT product itself – separate and distinct from product

In relation to product Microsoft Type Font – type font design not specify tangible thingRe 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

key issues

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"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

design

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“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

Visual feature – s 7

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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”

court determine

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pattern,ornamentation – 2D

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pattern,ornamentation – 3D

hot water bottle ribbingCow & Co v Cannon Rubber

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shape, configuration – 3D

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Indefinite dimension

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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

particular appearance

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Particular appearance

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registrable design if new and distinctive compared with prior art base for the design as it existed before the priority date – s15

Prior art base – s15(2)◦ 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)

new and distinctive

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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)

new and distinctive

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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

is design substantially similar in impression

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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

Keller v LED Technologies

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Designer – person who created design Employer if created in course of

employment Person who commissioned under contract Assignee Legal personal representative

Owner – s13

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◦ 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

Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 – modular rainwater tanks

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owner entitled to register – s13 May file

◦ Common design for number of products – s22◦ Multiple designs for one product – s22

File◦ 5 copies of each representation of each design – s21design 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

registration

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Applicant may elect publication or registration – s35

Publication not stop infringementBUT 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

registration v publication

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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

rights – s10

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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

Infringement – s71

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Owner can commence proceedings – s73NOT 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

Infringement

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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

spare parts – s72

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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 registeredAND taken reasonable steps to ascertain if registered

Prima facie registered defendant aware if product or packaging say registered design – s75(4)

Remedies – s75

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Copyright term life+70 yearscopyright 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

copyright/design overlap

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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

differences

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Part III, Division 8, Copyright Act

limit copyright protection for essentially industrial products

if products infringing design◦ If registered design, can only claim infringe design, not infringe

copyright◦ If no registered design but design industrially applied, cannot claim

infringement

exception◦ Works of artistic craftsmanship◦ Other copyright infringement (eg publish design in book)unless incidental to making product (plan to plan copying)– s77A

resolving the conflict

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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

no copyright infringement

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“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

“corresponding design”

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“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

“corresponding design”

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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 unitsPress Form v Henderson –may be less than 50 if complex

articlesAND products sold, let for hire or offered or exposed for sale or

hire – s77

Exception for works of artistic craftsmanshipSheldon v Metrokane – bottle openerBurge v Swarbrick – boat plug and mouldings

no infringement

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arts and crafts movement / anti-industrial John Ruskin, William Morris, Tiffany – V&A

works of artistic craftsmanship

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George Hensher v Restawhile [1976] AC 64 – chicken wire prototype of sofa chair

Coogi v Hysport- commercial fabric

Merlet v Mothercare (1986) RPC 115 – baby cape

Sheldon v Metrokane (2004) 61 IPR 1– rabbit corkscrew

Burge v Swarbrick (2007) 232 CLR 336 – boat plug and mouldings

works of artistic craftmanship

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Sheldon v Metrokane - rabbit corkscrew