Design/ Copyright Overlap:

Limitations under the current Design Act 2003 (Cth)

The emergence of the copyright/design overlap highlights a key area of Australian legislation that exposes design rights. The gap leaves innovators without infringement protection or recourse.

Due to the narrow scope of IP legislation, once a two-dimensional design is manufactured or produced it has no automatic protection. Protection is only afforded once the designer has applied, paid and registered the overall visual feature, shape, configuration, pattern and ornamentation under the Design Act 2003.[1]

Current design rights provide an exclusive right to prevent other parties imitating the designer’s work and is a safeguard for the owner to recover the economic investment funnelled into their creation.[2] Nonetheless, registration costs can be substantial to emerging designers and innovators.

The Australian Law Reform Commission (‘ALRC’) first commenced a review of Australian design laws 1995,[3] and found that the costs of registration were the main prohibitive factor for smaller creative businesses and designers.[4] Therefore, effective future design law must strike a balance between preventing undue imitation and protecting innovation from small business and emerging designers.

There are multiple factors to consider when assessing the low percentage of Australian designs registered.[5] Notwithstanding extensive efforts by IP Australia and individual industries to promote the need for registered design protection,[6] many designs are left unprotected and powerless under Australian law.[7]

Due to the lack of education, costs associated and copyright/design overlap, the Productivity Commission’s reports[8] indicate many innovators only begin to register their designs after experiencing third party copying and counterfeits.[9] The current Australian system is expensive and costs designers upward of $670 per design registration.[10]

As a result, designers in cyclical industries such as fashion, where products have a short commercial life, tend to neglect registration of each individual garment.[11] Subsequently, the delay in obtaining registration can take up to six months,[12] which significantly impacts protection for products with a short market life.[13]

As such, many Australian fashion designers find the cost and delayed process of registration to be inadequate forms of protection as their designs are classed as ‘last season’ once certified by the Designs Office.[14]

The 2003 design legislative reform broaden the scope of protection by preventing others from obtaining certification of a substantially similar design whilst the formal publication process is underway. However, until registered no infringement action can be taken.[15]

Unlike other jurisdictions,[16] there is no sui generis protection for unregistered designs. Even so, when a designer has taken the proactive step to register some pieces in their collection, their remaining designs are vulnerable to copying and formal registration can endanger the designs pre-existing copyright protection.[17]

Next week, we deep dive into potential design law reform and the current recourse available for emerging designers, whose creative works fall into the design/copyright overlap.

Written by Tasha Aloni.

Watch this space for – How to Protect Your Creativity.

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[1] Designs Act 2003 (Cth)s 7, 15; Copyright Act 1968 (Cth) ss 10, 32.

[2] Australian Government, ‘Review of the Designs System Final Report’ (Advisory Council on Intellectual Property (ACIP), Australian Government, March 2015) [2.1].

[3]Australian Government, ‘Review of the Design Systems Issue Paper’, (Advisory Council on Intellectual Property (ACIP), Australian Government, September 2013) [2.4].

[4] Ibid; Australian Government ‘ALRC Report 74’ (Australian Law Reform Commission (ALRC), Australian Government, 31 August 1995).

[5] Australian Government, ‘Review of the Design System Options Paper,’ (Australian Government, Advisory Council on Intellectual Property, December 2014) [1.1].

[6] Tim Golder, Marian Lloyd Jones, ‘Unravelling the threads: protection for fashion designers under Australia’s IP laws’ (2009) 2 (2), Journal of Intellectual Property Law & Practice, [100].

[7] Lisa Lennon, ‘Submission to the Productivity Commission in response to the inquiry into Intellectual Property Arrangements’ (Gilbert and Tobin Lawyers, 14 December 2015) [2.1]; Australian Government, ‘Intellectual Property Arrangements Productivity Commission Issues Paper’ (Australian Government Productivity Commission, October 2015) [10].

[8] Australian Government, ‘Intellectual Property Arrangements Productivity Commission Issues Paper’ (Australian Government Productivity Commission, October 2015) [10].

[9]( n 11) [2.2].

[10] Design Regulations 2004 (Cth) Schedule 4.

[11] Australian Government ‘ Review of the Designs System Final Report’ (Advisory Council on Intellectual Property (ACIP), Australian Government, March 2015) [2.8.5].

[12] Australian Government ‘ALRC Report 74’ (Australian Law Reform Commission (ALRC), Australian Government, 31 August 1995) [8.8]; Department of Industry Technology and Commerce, ‘Annual Report’ (Australian Government, Department of Industry Technology and Commerce, 1990) [108].

[13] Ibid; To operate in conjunction with registered protection; Australian Government, ‘Discussion Paper 58 Proposal’ (Australian Law Reform Commission (ALRC), Australian Government) [12.1, 12.16, 12.22]; see further Textile Distributor’s Association Submission 39 and 120; Queensland Guild of Furniture Manufacturers Limited Submission 47.

[14] (n 10).

[15] Ibid – find their source for design office

[16] Violet Atkinson, Viviane Azard, Marie Malaurie-Vignal and William van Caenegem, ‘Comparative study of fashion and IP: Copyright and designs in France, Europe and Australia,’ (2016) 11(7), Journal of Intellectual Property Law & Practice [517].

[17] (n 10).