Intellectual Property Winter Session 2013 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 Bauhaus / 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 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

 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

"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

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 recessed handle and lock for shutter doors Re Wolanski (1953) 88 CLR necktie support Therese Catanzariti

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

 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 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 – 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 Therese Catanzariti