For designers and manufacturers launching new products, registered designs are the most appropriate means of protecting the design or construction of those products. A recent Court of Appeal decision confirms that in the absence of a registered design, attempts to establish copyright in these products as “works of artistic craftsmanship” will face significant obstacles, especially when the design of these products is influenced by functional considerations.
In State of Escape Accessories Pty Limited v Schwartz1 the applicant (state of escape), a Sydney-based company that designs and sells tote bags, has alleged that copyright subsists on its perforated neoprene escape bag as a “work of art” and that tote bags -any similar imported and sold by the second defendant (Chuchka) had infringed this copyright. State of Escape also alleged that Chuchka engaged in misleading and deceptive conduct in breach of Australian consumer law and committed the tort of deception.
The lead judge concluded that the escape bag was not a work of art so copyright did not exist on it. State of Escape also failed to substantiate its allegations of deceptive marketing and misleading and deceptive conduct based on the alleged similarities of the Chuchka bags, although it was partially successful in its allegation of deceptive and deceptive conduct with respect to statements made by Chuchka when marketing its bags. State of Escape appealed the copyright findings to the Full Court of the Federal Court of Australia.
Last week, the Full Court dismissed State of Escape’s appeal against the leading judge’s finding that copyright did not exist in the escape bag. The three appellate judges agreed with the senior judge that the bag was not a “work of art” and therefore did not constitute a work of art warranting protection under Part III of the Copyright Act 1968 (Cth) (copyright law). Therefore, in the absence of a registered design for the general appearance of the Escape Bag, no intellectual property rights were available to State of Escape.
“works of fine craftsmanship”
Artistic works are protected under Part III of the copyright law and include, as relevant, “work[s] of Artistic Crafts” as defined in Section 10. The origins of copyright protection afforded to such works are attributed to the arts and crafts movement in England in the 19and century, which favored the value of well-crafted objects over those produced industrially.2
Unlike other categories of artistic works, such as drawings, works of art require some form of artistic quality for the purposes of copyright subsistence. This artistic quality is not relevant to the work itself, but in the craftsmanship employed to create the work.3
Works of artistic craftsmanship naturally overlap with those enjoying protection under the Designs Act 2003 (Cth) (Designs Act). Designs law generally offers lesser protections and the High Court has previously justified the greater protection afforded to works of art under the copyright law as encouraging “genuine artistic endeavor”.4 On this basis, qualifying a work as fine craftsmanship requires assessing “the extent to which the artistic expression of the particular work, in its form, is not constrained by considerations functional”, to be determined objectively.5
The High Court decision in the landmark case of Burge vs. Swarbricka case relating to the design of caps and moldings for a yacht, sets out a guiding principle that, while works of art will often have a functional purpose, only works whose production process facilitates freedom or artistic contribution will benefit from protection under the copyright law once applied industrially (at which time the works would normally depend on protection under the Designs Act). It is therefore the design process which distinguishes industrial designs protected under the Designs Act works of art which benefit from protection under the Copyright Law.
In seeking to have the Escape Bags characterized as a “work of handcrafted art”, State of Escape raised several grounds of appeal, summarized as follows:
- Having concluded that the Escape Bag was “undoubtedly a work of art”, the trial judge erred in concluding that the Escape Bag was not a work of art. artistic craftsmanship and that copyright did not exist in the escape bag;
- That, in assessing whether the Escape Bag was a work of art, proper weight was not given to the beauty or aesthetic appeal of the Escape Bag, to the artistic effort in designing the bag or the artistic quality of the bag;
- This inappropriate weight was given to evidence of functional considerations limiting the design of the escape bag;
- That the trial judge erred in his findings of fact regarding the state of the art in bag design and in evaluating the Escape Bag as a combination of features; and
- That the approach to designing and manufacturing the Escape Bag should have involved an act of artistic craftsmanship.
In response, respondents echoed the lead judge’s reasoning that the design of the Escape Bag was largely limited by functional considerations and that every feature of the Escape Bag design on which State of Escape relied had functional quality. They further argued that the lead judge correctly weighted the evidence regarding the design process and that, as expert witnesses agreed, there was no significant skill, knowledge or training required to design or build the bag. of escape, so there was no artistic craftsmanship element in the creation of the bag.
Decision of the Full Court
The Full Court dismissed the appeal, ruling against State of Escape. In doing so, the Court concluded that:
- the term “work of artistic craftsmanship” is a composite term, requiring an artistic quality of the craftsmanship employed to create the work.6
- while the intentions of the author may be taken into account, the criterion of whether a work is artistically crafted is ultimately an objective criterion.7
- the fact that a designer does not have special training, skills and knowledge in the relevant field (in this case, the design of bags), although not decisive, is a factor which may show that the work does not is not a work of art. The lead judge’s findings that the selection of readily available materials for the escape bag, such as perforated neoprene and sail rope, did not involve any act of artistic craftsmanship were not in error.
- the lead judge’s emphasis on particular design elements was a necessary part of the factual analysis to determine whether the Escape Bag was a work of art and did not mean that the product as a whole was not not taken into account.
- appropriate weight was given to evidence of the beauty or aesthetic appeal of the Escape bag, the artistic effort in the design of the bag, and the artistry of the bag. It was recognized, for example, that the choice of perforated neoprene as the fabric was governed by appearance and aesthetic considerations.
- the lead judge was correct in concluding that the design of the escape bag was significantly limited by functional considerations which outweighed other visual appeal considerations in determining the shape and finish of the escape bag. escape. This included several design features, such as the shape of the handles and the inclusion of pockets, which solved functional issues in the design of the bag.
The ruling means State of Escape failed in its copyright infringement claim against the respondents, having been unable to establish that the copyright survived in the escape bag as a “work of artistic craftsmanship”.
Take away food
There have been relatively few cases involving “works of artistic craftsmanship”. However, this case, and those that preceded it, serve as a warning to designers and manufacturers that registered designs are the most appropriate means of protecting the overall appearance of commercial products. Those who do not register their design and instead attempt to rely on the limited protections offered by the copyright law face significant challenges.