18.5. Prior publication or use exceptions: Copyright

Date Published 17 Jul 2024

Copyright protection is usually lost when a design is registered. If the design is examined, the publication of artistic work previously covered by copyright may be a relevant citation, resulting in the registered design not being considered new and distinctive.

However, there is one exception to this general rule. It is possible to retain copyright protection for a 2-dimensional artistic work while obtaining design protection for this artistic work applied to the surface of a product – for example, a painting printed on a t-shirt. The t-shirt design may be considered new and distinctive when compared with the publication of the painting itself. Note that this is limited to the reproduction of a 2-dimensional artistic work in a 3-dimensional form.

Reliance on s 18

Where a design has been examined and the examiner has raised a ground for revocation based on a lack of newness or distinctiveness, the owner may seek to use s 18 to have the relevant citation excluded from the prior art base.

Section 18 provides for the publication or use of an artistic work to not be taken into account when determining whether a registered design is new and distinctive when compared to the prior art base. In other words, the publication or use of an artistic work does not invalidate a subsequent design registration.

The overall effect of s 18 is to render an otherwise invalid registered design valid. Therefore, the owner must disclose all relevant facts and submit evidence to support their claim. Where an owner appears to be evasive in providing relevant material (noting that redaction of documents to exclude commercially sensitive information would be acceptable), the examiner is entitled to conclude that they are not satisfied of the owner’s s 18 claim and maintain the newness or distinctiveness ground for revocation.

There are 2 aspects to s 18. First, there is the issue of whether the basic conditions have been met. Secondly, there is the issue of whether s 18 is not available because the artistic work has been ‘applied industrially’.

For an owner to rely on s 18, all these criteria must apply:

There must be a relevant artistic work in which copyright subsists.
A single corresponding design application must be made. Section 18 is not considered to be applicable such that the Registrar will disregard an earlier Australian registered design when examining a registered design with a later priority date.
The design application must be made by, or with the consent of, the owner of the copyright. This includes the design owner having derived title in the design from the copyright owner of the relevant artistic work.
The citation, being the publication of the design as an artistic work, must not show that the design has been applied industrially.

1. Artistic work

Under the legislation there are the following categories of ‘artistic work’:

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

‘Artistic work’ does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.

Where the alleged artistic work falls within the first 2 of the categories above, it does not need to have any artistic quality whatsoever. Any painting, sculpture, drawing, engraving or photograph is an artistic work by definition. For example, an ordinary photograph of an object without any creativity or artistry is itself considered an artistic work. Images on the internet would fall within this category – noting that the copyright will usually lie in the original image rather than the image displayed on the internet.

Buildings or models of buildings are also artistic works by definition and do not need to have artistic quality. Note that the Copyright Act defines a building as being ‘a structure of any kind’. 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 sheds, pre-constructed swimming pools and demountable buildings (see Copyright Act, s 77(5), which excludes these structures from the definition of ‘buildings’ for the purpose of s 77 of the Copyright Act, ‘Application of artistic works as industrial designs without registration of the designs’.

Whilst the first two categories do not require artistic quality, publications in the prior art base first need to meet one or more of the categories. In Artisent, LLC [2017] ADO 3 it was determined that a physical prototype of the product bearing the design was not a sculpture and therefore did not meet the meaning of an ‘artistic work’. When considering the definition of an ‘artistic work’, the officer stated at 54:

So, whilst artistic merit is not a consideration, artistic intention is.

And at 62:

I find that the prototypes in this case were casts or models made for purposes of sculpture. Both legislative and artistic intention would point against them being sculptures. The evidence shows that the prototypes were produced either for the purposes of putting pictures of them in the Catalogue, or as a step in the production process.

The officer also found that whilst the physical prototype was photographed, the photograph was not acceptable as an ‘artistic work’ as the prototype itself was not.

To qualify as a ‘work of artistic craftsmanship’ the prototype must have been created with a primary intent of being artistic, and it must involve craftsmanship. The presence of distinctive visual features is not sufficient to deem a piece of work ‘a work of artistic craftsmanship’. There must be persuasive evidence of intent to create an artistic work in line with the normal meaning of ‘artistic’.

The decision in State of Escape Accessories Pty Limited v Schwartz [2020] FCA 160 [77] (State of Escape), in determining whether a bag was a work of artistic craftsmanship, applied principles previously settled by the High Court in Burge v Swarbrick [2007] HCA 17:

In order to qualify as a work of artistic craftsmanship under the Copyright Act, the work must have a ‘real or substantial artistic element’ (Burge at 52).

In considering whether a work is one of ‘artistic craftsmanship’, the beauty or aesthetic appeal of the work is not determinative. The Court must also weigh in the balance the extent to which functional considerations have dictated the artistic expression in the form of the work (Burge at 83–84).

2. Corresponding design

The concept of the citation being an ‘artistic work’ is only relevant where the design registration is a ‘corresponding design’. A corresponding design is the physical application of what is shown in an artistic work. It cannot be the artistic work itself.

The Copyright Act at s 74 defines ‘corresponding design’ as follows:

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.

A design registration is not a corresponding design when it is the same thing as the artistic work. For example, if the relevant artistic work is a drawing of a handbag, the design registration needs to be for that design applied to an actual handbag.

Example

The decision in Water Recreations v Fairmile [1982] 42 ALR 273 stated:

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 … I fail to see how [there can be a ‘corresponding design’] 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. [Emphasis added]

3. Consent of the copyright owner

Where the copyright owner and the design owner are different, the design owner will need to show that they made the design application with the ‘consent’ of the copyright owner.

Consent must have been given (or implied) before the design application is made. This will usually require a declaration of some sort from the owner of the design registration, with a timeline of events and an explanation of all the relevant facts. A document evidencing that consent – such as an assignment, deed or other evidence of transfer – may also be useful.

If someone creates a design in the course of their employment or contract, the employer is generally entitled to own the design. In that scenario the author of the design does not assign this right to the owner, as it stems directly from s 13(1)(b). There are cases where the author owns the copyright but the employer is entitled to own the design. In such cases the author (as the copyright owner) must give consent to the design application.

4. Applied industrially

If the conditions of s 18(1) are met, attention then turns to whether there has been a requisite "previous use" by (or with the consent of) the copyright owner of the artistic work ‘applied industrially’. This means selling, leasing or offering for sale or lease products to which the corresponding design had been applied industrially. Acts outside these categories cannot be used to refuse a s 18 claim.

Section 18 defines ‘applied industrially’ by reference to reg 12 of the Copyright Regulations 2017:

12 Circumstances in which design is taken to be applied industrially—section 77 of the Act

(1) For the purposes of section 77 of the Act, a design is taken to be applied industrially if it is applied:

(a) to more than 50 articles; or

(b) to one or more articles (other than hand‑made articles) manufactured in lengths or pieces.

(2) For the purposes of paragraph (1)(a), any 2 or more articles are taken to constitute a single article if:

(a) they are of the same general character; and

(b) they are intended for use together; and

(3) For the purposes of this section, a design is taken to be applied to an article if:

(a) the design is applied to the article by a process (whether a process of printing or embossing or another process); or

(b) the design is reproduced on or in the article in the course of the production of the article.

The underlying principle is that when a design of a physical thing (as an artistic work) is applied industrially, transitioning from concept to being manufactured or hand-made (as a product), design protection is appropriate.

Indicators that a design has been industrially applied include:

Publication or offer for sale by an entity involved in industrial exploitation, where the relevant product is consistent with the type of products sold by that entity – that is, publication or offer for sale by an entity which generally sells similar types of goods.
Goods bearing the artistic work that have clearly been mass produced.

Regulation 12 of the Copyright Regulations deems certain activities as constituting ‘applied industrially’ but, importantly, does not provide an exhaustive definition of ‘applied industrially’. For example, it says that any design that has been applied to more than 50 articles is taken to have been industrially applied. However, it is possible that a design might be considered to have been industrially applied where it has been applied to fewer articles (including only one) depending upon the facts of the case, including the product bearing the design. This was confirmed in Safe Sport v Puma (1985) 4 IPR 120.

Limits on the application of s 18

A design owner cannot seek to have a citation excluded under s 18 if the artistic work has been used in certain ways by or with the consent of the copyright owner before the priority date.

Use previously made of the artistic work

Under the Act, ‘any use previously made of the artistic work’ is excluded from the assessment of newness and distinctiveness (s 18).

The only thing that is excluded from consideration under this part of s 18 is the product to which the artistic work has been applied. The artistic work itself or simple reproductions of that artistic work are not excluded.

The only thing that is excluded is ‘use’ of the artistic work. The word ‘use’ has a similar meaning to ‘used’ in s 15(2)(a): it involves the application of the artistic work to products so that there is a product bearing relevant visual features. (Note that this also provides the environment for consideration of ‘applied industrially’ in s 18(2)(a).)

Previous use with consent – acquiescence

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

It should be noted that the owner might be prevented from bringing any action for infringement where all the following conditions apply:

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

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 later obtain a valid design. However, they will probably have difficulty in enforcing it against that person.

See, for example, Grundt v Great Boulder Pty Gold Mines Ltd [1937] 59 CLR 641 at 674.

Prior publication in a patent specification or design

A particular situation may arise where:

a design application is filed after a corresponding patent application or design is published
the owner asserts that they are the copyright owner of the artistic work published in the patent or design
the artistic work has not been industrially applied.

Where the artistic work comprises the drawings in an earlier patent or design, and the design in the new design application (the ‘subject design’) comprises substantially the same drawings, the subject design cannot be said to be a corresponding design (see Water Recreations v Fairmile (1982) 42 ALR 273). However, if the subject design can be considered to be a corresponding design, the earlier publication in a patent or design application does not necessarily fall within the industrially applied ‘acts’. This may result in the owner of the subject design meeting the s 18 requirements and the prior art being excluded from the prior art base. This may occur even if the subject design is filed years after the earlier publication.

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

that the artistic work exists
that the artistic work pre-dated the drawings and the drawings have always been representations of the artistic work
the full characterisation (depiction or description) of the artistic work
that the artistic work has not been applied industrially.

Where the subject 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 necessarily be excluded from a s 18 entitlement claim. In other words, the applicant can still rely on s 18 to exclude the drawings as prior art if there are some differences – for example, showing the same thing from different angles.

Where an artistic work has been created as a physical thing, and subsequently a patent or design has been applied for, it will be presumed (unless proven otherwise) that the artistic work has been applied industrially.

Amended Reasons

Amended Reason	Date Amended
Manual update 2024	17 Jul 2024
	07 Apr 2022
	07 Apr 2022