D07.6 Copyright overlap - s.19

Date Published

D07.6.1 Introduction

In response to an objection of lack of newness or lack of distinctiveness, an owner may seek the exclusion of the relevant citation on the basis of s.18. The entitlement to rely on s.18 is very much a question of evidence, much of which cannot (in a practical sense) be challenged by the Registrar in ex parte examination proceedings. In that regard, the role of examination is to ensure that there is a prima facie credible claim to s.18 entitlement, and that the basis for that claim is adequately documented on the file.

In order for s.18 to apply, the design owner must (in a practical sense) be either the copyright owner, or have derived title in the design from the copyright owner, of the relevant artistic work. Accordingly the design owner is inherently in a position to know all relevant facts. As the effect of a s.18 entitlement is to render an otherwise invalid design valid, it is incumbent upon the owner to fully disclose all facts relevant to their claim to s.18 entitlement. Where an owner appears to be evasive in providing relevant material (noting that redaction of documents to exclude commercially sensitive information such as pricing and customer information would be acceptable) the examiner is entitled to conclude that they are not satisfied of the owner’s entitlement to rely on s.18 – and maintain a relevant objection of newness or distinctiveness.

There are two aspects to s.18 entitlement. Firstly, there is the issue of whether the basic conditions of s.18 have been met. Secondly, there is the issue of whether s.18 is not available because the artistic work has been applied industrially. Some of the issues are legally difficult, and the nature of the legal issues depends upon the detail of the s.18 claim to entitlement. D07.6.2 sets out the general approach to dealing with s.18 claims. D07.6.3 provides more specific information on certain legal issues.


D07.6.2  General Approach in examination

D07.6.2.1  The basic conditions for s.18.

In the consideration of a s.18 entitlement claim, the examiner must be able to ascertain the existence of

  • the relevant artistic work,
  • the owner of the copyright in that artistic work, and
  • the devolution of title to apply for the design.

An artistic work is only relevant where the design is a ‘corresponding design’. That is, the design would constitute a reproduction of the artistic work. The fact of it being a reproduction should be self-evident. Where it is not (in particular, where the artistic work is apparently altered in some material manner in the design) the owner will need to provide convincing argument that the design is in fact a corresponding design. Importantly, the Act distinguishes between an artistic work and a corresponding design. Where the artistic work is a model or an actual object, the drawings or plans which (when applied to any article or substance) would result in a reproduction of that artistic work are a “corresponding design” in relation to that work. On the other hand, if the relevant artistic work is a drawing or plan, a design registration in respect of those plans is a registration for those plans, not a “corresponding design”. For further discussion, see D07.6.3.3 below

Furthermore, the exclusion exists only in respect of ‘any use previously made of the artistic work’ [s.18(2) chapeau]. In this regard:

  • The artistic work per se is not excluded – it is only uses of that artistic work that are excluded; and
  • ‘use’ has a similar meaning to ‘used’ of s.15(2)(a). That is, it involves the application of the artistic work to products such that there is a product bearing relevant visual features.

In effect, this means that s.18 is only available when an artistic work is, or has been applied to an actual thing.

For further discussion, see D07.6.3.5.1 below

The Act provides (in effect) for three categories of ‘artistic work’:

  • paintings, sculptures, drawings, engravings or photographs,
  • buildings or models of buildings; and
  • works of artistic craftsmanship.

Where the alleged artistic work is within the first two of these categories, there is no requirement for the artistic work to have any artistic quality whatsoever. However, and importantly, an artistic work arising as a ‘work of artistic craftsmanship’ must have been created with a primary intent of being artistic, and must involve craftsmanship. Accordingly, where the artistic work is not within one of the first two categories, the examiner must be satisfied that it was created with artistic intent and involved craftsmanship. This would usually require evidence from the creator of the artistic work. It must be noted that the presence of distinctive features of shape, form or finish is not sufficient to make a work artistic - there must have been intent to create an ‘artistic’ work as in the normal meaning of ‘artistic’. [See D07.6.3.2 below].

Having identified the artistic work, the examiner must be satisfied that the design was applied for by either the copyright owner, or a person having the consent of the copyright owner. This means that the alleged owner of the copyright needs to be identified, and the basis of any devolution of title to the design owner.

Most situations will entail some form of ‘self-publication’ by the design owner – in which case the design owner is clearly in a position to set out all relevant facts. The situation might also arise where a publication by a third-party is asserted to be an infringement of the owner’s copyright in a prior relevant artistic work. In such circumstances, the owner will need to establish the prior existence of a relevant artistic work bearing copyright from which they have derived entitlement to the design – and again the design owner is in a position to know all relevant facts [assuming entitlement to the provisions of s.18 exists].

It must be remembered that the s.18 entitlement arises from the existence of an artistic work in which copyright subsists. This work needs to be clearly and unambiguously identified. In the absence of convincing evidence of both the fact and detail of an asserted prior existence of a relevant artistic work, assertions of s.18 entitlement by way of that prior relevant artistic work are to be rejected. In some situations considerable care needs to be exercised in properly identifying the artistic work. For example, if person A creates an object which is not a painting etc. or a building etc, and is not a ‘work of artistic craftsmanship’, it is not an artistic work and no copyright subsists in it as such. However if person B photographs that object, that photograph per se is copyright with the copyright belonging to B – so that (subject to any assignment issues) A is not able to invoke s.18 to exclude B’s photograph from being an anticipation.

D07.6.2.2  Exclusion from s.18:  ‘applied industrially’

If the examiner is satisfied that the conditions of s.18(1) exist, the examiner must also be satisfied that there has been no previous use made of the artistic work by (or with the consent of) the copyright owner in the form of:

  • sale;
  • letting for hire; or
  • exposing for sale or hire

of products to which the corresponding design had been applied industrially

Sale, and letting for hire, are simple questions of fact - typically not within the examiner’s knowledge.

Exposing for sale or hire includes placing the product on a shelf for sale in a shop, or advertising the product for sale (or hire) by any of the various available media for advertising. In particular, a manufacturer’s product catalogue published on the internet would fall within the scope of ‘exposing for sale or hire’.

The term ‘applied industrially’ has a natural meaning that is dependant upon the facts. For example, the manufacture under contract of a single large and expensive utilitarian item such as a silo [Locarno class 25-03] would prima facie entail being applied industrially, whereas making a dozen vases by hand might not. Given the uncertainty that may arise as to whether the production of ‘x’ objects constitutes ‘industrially applied’, the reference to the Copyright Act for the definition of ‘applied industrially’ has the effect of deeming the production of 50 or more items as being ‘applied industrially’ – irrespective of the circumstances in which those items were produced.

Indicators that a design has been industrially applied include:

  • Any publication or offer for sale (irrespective of number) by an entity involved in industrial activity (such as manufacture), where the relevant product is consistent with the type of products exploited by that entity; and
  • Goods bearing the artistic work, where the good is clearly subject to mass production - eg consumer goods generally, plastic-moulded goods
  • Goods in retail catalogues – which imply the availability of the product at multiple store locations

Situations where there is clearly no evidence of ‘applied industrially’ include:

  • The relevant publication is in a specialist catalogue (eg the catalogue of an art auctioneering house) with implications of uniqueness.
  • The publication is in advertising material that does not present the product as being available for sale (eg a brochure for an art display, depicting items in the display).

Where the relevant design has been industrially applied, s.18 is not available to the owner. Where an owner wishes to assert that the design was in fact not ‘applied industrially’, it is incumbent on the owner to provide all relevant material to establish a credible case for the design not having been applied industrially. Some issues – such as the absence of any sales or advertisements for sale, might be dealt with by way of declaration. In the absence of a credible case, the examiner should maintain the position that the design has been applied industrially – as well as the consequential objection of newness or distinctiveness.

D07.6.2.3  Prior publication in a patent specification or design

A particular situation arises when the design application is filed after the publication of a corresponding patent application or design, and the owner asserts that they are the copyright owner of the artistic works published in the patent or design, and that the artistic work has not been industrially applied.

Where the artistic work is the drawings as embodied in the earlier patent or design, and the present design is substantially in respect of the same drawings, it cannot be said that the present design is in respect of a ‘corresponding design’. See Water Recreations v Fairmile 42 ALR 273, and D07.6.3.3.

Where the applicant asserts that the drawings in the earlier patent or design are merely representations of an artistic work, the applicant will need to provide full details about the relevant artistic work – sufficient to show:

  • The existence of the artistic work;
  • That the artistic work predated the drawings – such that the drawings have always been representations of the relevant artistic work;
  • The full characterisation of that artistic work;
  • The artistic work has not been applied industrially

It may be observed that:

  • where the present design corresponds to the drawings in the earlier patent or design, but differs from the original artistic work, the drawings of the earlier patent or design would not be excluded from consideration by s.18.
  • where an artistic work has been created as a thing, and subsequently a patent or design has been applied for, there is a rebuttable presumption that the artistic work has been applied industrially (given the nature of patent and design rights).

Given the legal complexities of this issue, all instances where the copyright exception is claimed in respect of a prior patent or design publication are to be referred to the Deputy Registrar of Designs.


D07.6.3  S.18 issues – more detailed discussion

D07.6.3.1  Conditions for s.18 to apply

In essence, s.18 provides that if a person owns the copyright in an artistic work, publication or use of that work does not invalidate a subsequent design application – subject to whether the artistic work has been applied industrially by the owner of the copyright (see D07.6.2.3).  In effect, the copyright owner has the right throughout the copyright term to (i) stop others from copying the work – whether industrially or otherwise – and (ii) to industrially apply the artistic work and obtain Design protection.

There are three key requirements for s.18 to apply – there must be a relevant artistic work in which copyright subsists, a corresponding design application must be made, and that design application must be made “by, or with the consent of, the owner” of the copyright.

D07.6.3.2  Artistic work

S.18 only applies when copyright subsists in an artistic work and the owner applies for registration of a corresponding design. The Copyright Act defines an artistic work as:

artistic work means:

a. a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;

b. a building or a model of a building, whether the building or model is of artistic quality or not; or

c. a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b);

but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.

Paragraphs (a) and (b) are fairly straight-forward. In particular:

  • Under (a), any painting, sculpture, drawing, engraving or photograph is an artistic work by definition. There is no requirement for artistic quality. Images on the Internet would fall within this ambit – except that the copyright will lie in the original image rather than that displayed on the Internet; and
  • Under (b), buildings or models of buildings are similarly artistic works by definition, irrespective of artistic quality. Note that the Copyright Act defines a building as being ‘a structure of any kind’, and as a result a half-sized tennis court has been held to be a building [Half-Court Tennis v Seymour (1980) 53 LFR 240]. Buildings also include portable buildings such as a shed, a pre-constructed swimming pool, a demountable building or similar portable building. [See s.77(5) of the Copyright Act, which excludes such structures from buildings for the purpose of s.77.]

Paragraph (c), relating to ‘works of artistic craftsmanship’ was discussed by the High Court in Burge v Swarbrick [2007] HCA 17, where it was stated:

83. It may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to "a work of artistic craftsmanship" within the meaning of the Copyright Act as it stood after the 1989 Act. However, determining whether a work is "a work of artistic craftsmanship" does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations. To decide the appeal it is sufficient to indicate the following.

84. The more substantial the requirements in a design brief to satisfy utilitarian considerations of the kind indicated with the design of the JS 9000, the less the scope for that encouragement of real or substantial artistic effort. It is that encouragement which underpins the favourable treatment by the 1989 Act of certain artistic works which are applied as industrial designs but without design registration. Questions of fact and degree inevitably arise.

Consequently, where the visual features of the design are largely dictated or constrained by the functional purpose of the product it is appropriate to proceed on the basis that the work is not one of artistic craftsmanship. For the work to qualify as a work of artistic craftsmanship, it will be necessary to show that the artistic expression in the work was largely unconstrained by functional considerations.

D07.6.3.3  Corresponding Design

The protection afforded by S.18 only extends to a ‘corresponding design’, which is defined in s.74 of the Copyright Act as:

  1. In this Division:
    corresponding design, in relation to an artistic work, means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003.

  2. For the purposes of subsection (1):
    embodied in, in relation to a product, includes woven into, impressed on or worked into the product.

That is, the protection is only afforded if the Design is a reproduction of the artistic work in the copyright sense. (See, for example, Norm Engineering v Digga Australia [2007] FCA 761.) Note that since the tests for reproduction under the Copyright Act, and Distinctiveness under the Designs Act, are different, in principle it is possible for a work not to be a reproduction of the artistic work (such that s.18 does not apply) yet fail for lack of distinctiveness over that artistic work.

The nature of “corresponding design” was considered in Water Recreations v Fairmile (1982) 42 ALR 273:


Section 17 A (1) operates where:

(a) copyright subsists in an artistic work, and

(b) an application is made (with certain consent) for the registration of a corresponding design.

The section clearly distinguishes between an artistic work on the one hand and a design on the other. The two are not synonymous. As has been demonstrated above the term “artistic work” is defined to include a drawing which includes a diagram, map, chart or plan. In dealing with the question of copyright under Australian law in an artistic work composed by an American in America, Mr Seaman QC for the plaintiff said: “Coming back to reg 4(1) (of the International Protection Regulations), the Act applies to an artistic work made in the USA. Then I take your Honour, to reg 4 sub-reg (3), which applies to a US citizen resident as to an Australian citizen. Then one can go back to apply the Copyright Act to the work of Mr Larry Timms [sic]. I leave the regulations and go to familiar ground, I think now, the Copyright Act s 10, which carries the chain of events with which I think your Honour is well familiar, of artistic work equals drawing equals plan” (transcript, p 102).

There is no question in my mind that the artistic work (or more correctly artistic works) of which Mr Larry Timbes is said to be the author and in respect of which it is claimed he is the owner of the copyright under the Copyright Act 1968, is a series of drawings of waterslide flume components and it is those drawings which the plaintiff, with Mr Timbes’ consent, applied on 7 January 1981 to register under the Designs Act 1906–1973. Those several applications were not applications for the registration of a corresponding design of an artistic work, but were applications for registration of the artistic work itself.

Had the artistic work been a model of a flume component sculptured or otherwise crafted by Mr Timbes then drawings or plans which when applied to any article or substance which may result in a reproduction of the artistic work would be a “corresponding design” in relation to the artistic work (Copyright Act s 17 A (1)). I fail to see how s 17 A (1) can have any application in a case where the design for which registration is sought is in fact the artistic work. In this case Mr Timbes was the author of a design which had its manifestation in a drawing and the plaintiff sought registration for the “conception or suggestion as to shape, configuration, pattern or ornament” conveyed by that drawing. The plaintiff did not apply to register a corresponding design of an artistic work. In my opinion the plaintiff is unable to rely on s 17 A in answer to the defendants’ assertion that the designs were published in Australia before the applications for registration were lodged.

[emphasis added]

Importantly, a corresponding design cannot be the artistic work per se.

D07.6.3.4  Applied for - by, or with the consent of, the copyright owner

Where the copyright owner and the design applicant are different, the design applicant will need to show that the design application was made with the consent of the copyright owner. The consent must have been given (or implied) before the making of the design application.

Where a design comes into existence as a result of employment or contract, s.13(1)(b) gives the employer the statutory right to the design – without any assignment from the author of the design. In such circumstances, it is quite possible that the ownership of any copyright has remained with the author. Yet the employer has the right to apply for the Design. Accordingly it is possible that the person required to have given consent to the Design application will not have assigned any rights to the design.

D07.6.3.5  Limits on S.18 application

The benefit of s.18 is not available where there has been certain use of the artistic work, by or with the consent of the copyright owner.

D07.6.3.5.1 use previously made of the artistic work

S.18 only excludes from the assessment of newness and distinctiveness:

“… any use previously made of the artistic work”

Importantly, s.18 does not exclude the artistic work per se from assessment of newness and distinctiveness. Consequently where the artistic work is a thing (eg a vase) as distinct from a pattern, s.18 does not apply to exclude the ‘thing’ from assessment of newness and distinctiveness of a subsequent design for that thing.

Furthermore, the exclusion is limited to ‘use’ of the artistic work. The word ‘use’ has a similar meaning to ‘used’ of s.15(2)(a); it involves the application of the artistic work to products such that there is a product bearing relevant visual features. [Note that this also provides the environment for the consideration of ‘applied industrially’ in s.18(2)(a).]

Consequently s.18 only excludes from consideration products upon which the artistic work has been applied. It does not exclude the artistic work per se, nor simple reproductions of that artistic work.

D07.6.3.5.2  Acts which negate s.18

The acts which potentially exclude the operation of s.18 are:

  • Sale;
  • Letting for hire;
  • Exposing for sale or hire

of products to which the design has been applied industrially.

Acts which do not fall within these categories cannot be used to exclude the operation of s.18. For example, mere publication of the relevant drawings in a corresponding patent specification filed by the copyright owner does not fall within the above acts – and therefore cannot be cited against the corresponding design, even if the design application is filed years after publication of the patent specification.

D07.6.3.5.3  Applied Industrially

A key issue is whether the design has been ‘applied industrially’. Section 18 defines applied industrially by reference to the regulations under the Copyright Act 1968 – with regulation 17 being the relevant regulation. Regulation 17 is expressed as:

… a design is taken to be  applied industrially if….

That is, regulation 17 is a provision that deems certain activities as constituting ‘applied industrially’ irrespective of any other assessment of whether the activity involved industrial application. Importantly, regulation 17 does not purport to provide an exhaustive definition of applied industrially. Consequently, while it may be taken that any design that has been applied to more than 50 articles is (by deeming) industrially applied, application of the design to fewer articles (including only one) may constitute industrial application – depending upon the surrounding facts. For example, designs for a service station or a silo (see Class 25-03) would likely be industrially applied if merely one such service station or silo was built for a customer.

See Ricketson para 67,265. Note also Safe Sport v Puma 4 IPR 120.

Indicators that a design has been industrially applied include:

  • Any publication or offer for sale by an entity involved in industrial exploitation, where the relevant product is consistent with the type of products exploited by that entity; and
  • goods bearing the artistic work, where the good is clearly subject to mass production - eg consumer goods generally, plastic-moulded goods

D07.6.3.5.4  Previous use with consent – acquiescence

Generally speaking, use of an artistic work by a third party without the consent of the copyright owner cannot be used to invalidate a subsequently filed corresponding design.

It should be noted that where:

  • a third party has made previous relevant use of the artistic work; and
  • the copyright owner knew, or ought reasonably to have known, that such use was occurring; and
  • the copyright owner took no action to stop that use, or to stop that use continuing

there may be an estopped in pais that prevents the owner from bringing any action for infringement. [See, for example, Grundt v Great Boulder Pty Gold Mines Ltd [1937] 59 CLR 641 at 674]. That is, if a copyright owner allows a competitor to develop a market for a product before applying for Design protection, they may nevertheless be able to subsequently obtain a valid Design. But they will likely have difficulty in enforcing it.