News & Insights

It seems a regular occurrence that a news source will report on a big business “ripping off” an innovative product developed by a small business.

A story hit the news in late January of department store Target selling a koala-shaped plate that is very similar to the Karri Koala plate designed by small Queensland business Emondo Kids. That was followed a week later by a broader expose on multiple similar instances of replica products sold by Target and Kmart.

These types of stories are not new. Over recent years they have dealt with the sale of replica goods as diverse as furniture, lighting and fashion.

The difficulty for businesses like Emondo Kids is that the protection available to them in Australia is limited and not automatic.

copyright protection

Under the Copyright Act 1968 (Cth), protection is automatically afforded to literary, artistic, dramatic and musical works that are created or first published in Australia, or in most other countries. Artistic works include items such as:

• paintings, sculptures, drawings, engravings or photographs;
• buildings or models of buildings; and
• works of artistic craftsmanship not covered by any of the other categories.

Many of the consumer products dealt with in the media would initially be entitled to copyright protection, either at the design drawing stage (as a drawing) or at the prototype stage (as a sculpture).

While “sculpture” is not exhaustively defined under the Copyright Act, it has been given a fairly broad interpretation by the courts. The consensus appears to be that a sculpture is a form of visual art in a three-dimensional form.

The Frisbee case

In this context, “visual art” should be viewed liberally. In 1984, the Court of Appeal of New Zealand looked at Wham-O’s Frisbee flying discs. The discs were manufactured by first making a wooden model, from which a mould was made. Plastic discs were subsequently cast from those moulds. The Court of Appeal held that the original wooden model was a sculpture, though the moulds and subsequent discs were not.

The yacht case

In 2004 the Federal Court of Australia looked at a similar manufacturing process for yachts. A plug was first made, from which moulds were then cast. The moulds were in turn used to create fibreglass mouldings forming the deck and hull of a yacht.

The Federal Court accepted that each of the plug, the mould and the deck and hull piece mouldings were sculptures. Equally the first yacht assembled from the first mouldings was also a sculpture. This position remained unchanged on appeal to the High Court.

loss of copyright protection

Unfortunately for design-driven businesses like Emondo Kids, copyright protection as a sculpture is generally not available. This is because of how the Copyright Act interacts with the Designs Act and the philosophy that artistic works that are commercially exploited as corresponding three-dimensional designs should not be granted copyright protection.

If a design has been registered in respect of the artistic work, then it is not an infringement of copyright to reproduce that work by embodying it in a product. If:

• a design has not been registered in respect of an artistic work;
• the artistic work has been applied industrially (more than 50 products have been made); and
• those products are sold, let for hire or offered for sale or hire,

then again copyright in that artistic work is not infringed by reproducing that work by embodying it in a product. There are two exceptions to this: buildings and works of artistic craftsmanship.

This means for designers like Emondo Kids that when they mass-produce their designs, their only protection is design registration. However, the difficulty with protection under the Designs Act 2003 (Cth) is that:

• protection is by registration, rather than the automatic protection granted by copyright;
• registration must be sought before the design is disclosed, so it is now too late for Emondo Kids to seek registration; and
• registration only lasts for 10 years, rather than the life of the author plus 70 years as granted to copyright.

lesson for designers

The lesson for designers like Emondo Kids is to register their designs early, before first publicising them.

We know that companies search the register to identify products that aren’t protected and they can copy. Having a registration in place is very effective in warning off any potential replicators and enforcing those rights.

Fortunately, design registration is not expensive and relatively quick. The IP team at Macpherson Kelley is experienced in advising on designs matters, including undertaking registrations and availability searches.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.