COPYRIGHT IN DESIGNS - A SPECIAL CASE IN INTERNATIONAL LEGISLATION.

Exceptional treatment for design protection

The Berne Convention (and other international law) applies universal, simple rules across all
categories of works, resulting in a good degree of international alignment. However, industrial
designs and works of applied art have historically been treated as exception cases, and as a result
the protection available to designs varies in nature across the world.

“Open list” and “closed list” copyright systems

The Berne Convention refers to literary and artistic works, but gives a broad and inclusive definition
of the latter. National laws treat these categories differently. In France, copyright protects all
“works of the mind”, without referring to categories. In the common law world, copyright law was
created piecemeal for different types of works, and these are separately listed; in the UK, a work
which does not fall within one of the closed list of categories is not protectable.

The UK closed list

The UK law of copyright has never extended to all artistic works. Instead, separate laws were
enacted to protect:

 Engravings (1735)
 Sculptures (1798), and
 Paintings, drawings and photographs (1862)

These categories, together with that of “Works of Artistic Craftsmanship” (created in 1911), continue
to this day in the UK and much of the common law world. A work which does not fit into one of the
categories, no matter how “artistic”, is not protected. E.g. the “jump cut” dance of Norowzian v
Arks1and the compilation of objects in Creation Records v News Group.2

There is no more general formulation, such as “works of applied art”, the introduction of which into
the Berne Convention in 1908 was opposed by the UK.3 Most mass-produced three dimensional
works of applied art are not “sculpture”,4 and probably not a works of “artistic craftsmanship”5.

1
[2000] ECDR 205, [2000] FSR 363
2
[1997] EMLR 444, [1997] EWHC Ch 370
3
See Industrial Designs Protection, W B Cornish, 8 U. Brit. Colum. L. Rev. 219, 1973
4
See Lucasfilm v Ainsworth, [2011] 3 WLR 487, [2011] 4 All ER 817, [2011] ECDR 21, [2011] FSR 41, [2011]
UKSC 39
5
See George Hensher Ltd v Restawile Upholstery (Lancs) Ltd, [1976] AC 64, [1975] RPC 31; Lucasfilm v
Ainsworth, [2008] ECDR 17, [2008] EWHC 1878 (Ch), [2009] FSR 2
Exceptions for designs in international treaties

Instrument Rule Exceptions

Berne “the rights of authors in their literary
and artistic works.”
Convention, “…artistic works” shall include every
19486 production in the literary, scientific and
artistic domain, … such as ... sculpture,
... works of applied art;7
UCC, 195210 adequate and effective protection of the
rights of authors and other copyright
proprietors in … artistic works, including
… paintings, engravings and sculpture11
Paris The protection of industrial property has
as its object ... industrial designs14 ...
Convention, Industrial designs shall be protected in
195813 all the countries of the Union.15
it shall be a matter for legislation in the
countries of the Union to determine the
extent of the application of their laws to
works of applied art and industrial designs
and models, as well as the conditions under
which such works, designs and models shall
be protected8
It shall be a matter for legislation in the
countries of the Union to determine the term
of protection of ... works of applied art in so
far as they are protected as artistic works;
however, this term shall last at least until the
end of a period of twenty-five years from the
making of such a work.9
… the term of protection in those Contracting
States which protect … works of applied art
in so far as they are protected as artistic
works, shall not be less than ten years ...12

TRIPS, Members shall comply with Articles 1
through 21 of the Berne Convention17 ...
199416 Members shall provide for the protection
of independently created industrial
designs that are new or original18…
EU Design Whereas, in the absence of
harmonisation of copyright law, it is
Directive, important to establish the principle of
199821 cumulation of protection under specific
registered design protection law and
under copyright law22 …
A design protected by a design right …
shall also be eligible for protection
under the law of copyright23 …
Members shall be free to meet this obligation
through industrial design law or through
copyright law.19 The duration of protection
available shall amount to at least 10 years.20
… whilst leaving Member States free to
establish the extent of copyright protection
and the conditions under which such
protection is conferred,24
The extent to which, and the conditions
under which, such a protection is conferred,
including the level of originality required,
shall be determined by each Member State.25

6
Berne Convention for the Protection of Literary and Artistic Works
7
Berne Convention, Articles 1 & 2(1)
8
Berne Convention, Article 2(7)
9
Berne Convention, Article 7(4)
10
Universal Copyright Convention, UN Treaty No. 2937
11
UCC, Article I
12
UCC, Article IV
13
Paris Convention for the Protection of Industrial Property
14
Paris Convention, Article 2(2)
15
Paris Convention, Article 5quinquies
16
Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), Annex 1C to the Agreement
Establishing the World Trade Organization, OJ 1994 L336 p. 213
17
TRIPS, Article 9(1)
18
TRIPS, Article 25(1)
19
TRIPS, Article 25(2)
20
TRIPS, Article 26
21
Directive 98/71 on the Legal Protection of Designs, OJ 1998 L 289, p28; Regulation 6/2002 on the
Community Design, OJ 2003 L 236, p344
22
Directive Recital 8, Regulation Recital 32
23
Directive Article 17, Regulation Article 96(2)
24
Directive Recital 8, Regulation Recital 32
25
Directive Article 17, Regulation Article 96(2)
Precursors and origins of the Own Intellectual Creation test

Instrument Article Recital

Semiconductor The topography of a semiconductor
Topography product shall be protected in so far as
Directive it satisfies the conditions that it is the
(1986) 26 result of its creator's own intellectual
effort and is not commonplace ...27
Washington … intellectual property protection in
Treaty on respect of … layout-designs
Semiconductor (topographies) that are original in the
Products sense that they are the result of their
(1989)28 creators’ own intellectual effort and
are not commonplace …
Computer A computer program shall be
Program protected if it is original in the sense
Directive that it is the author's own intellectual
(1991) 29 creation. No other criteria shall be
applied to determine its eligibility for
protection.
Term Directive Photographs which are original in the
(1993) 30 sense that they are the author's own
intellectual creation shall be
protected …. No other criteria shall be
applied to determine their eligibility
for protection.
Database ... databases which ... constitute the
Directive author's own intellectual creation
(1996) 31 shall be protected as such by
copyright. No other criteria shall be
applied to determine their eligibility
for that protection.
whereas the development of such
topographies requires the investment
of considerable resources, human,
technical and financial, while
topographies of such products can be
copied at a fraction of the cost needed
to develop them independently
In respect of the criteria to be applied
in determining whether or not a
computer program is an original work,
no tests as to the qualitative or
aesthetic merits of the program should
be applied.
… a photographic work … is to be
considered original if it is the author's
own intellectual creation reflecting his
personality, no other criteria such as
merit or purpose being taken into
account
Whereas no criterion other than
originality in the sense of the author's
intellectual creation should be applied
... for copyright protection, and in
particular no aesthetic or qualitative
criteria should be applied;

26
Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor
products. OJ L 024/36, 27.01.1987
27
Article 2(2). Note that this corresponds to "originality" in the copyright sense: the corresponding part of the
US Semiconductor Chip Protection Act 1984 17 USC Chapter 9 s902(b) (to which the EU Directive was a
reaction) has "Protection under this chapter shall not be available for a mask work that — (1) is not original; or
(2) consists of designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of
such designs, combined in a way that, considered as a whole, is not original." Likewise the Washington Treaty,
Article 3(2)(a), incorporated by reference within TRIPS.
28
Washington Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC) signed May 26, 1989
29
Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs OJ L 122/42,
17.5.1991, codified as Directive 2009/24/EC of 23 April 2009, OJ L 111/16
30
Council Directive 93/98/EC of 29 October 1993 harmonising the term of protection of copyright and certain
related rights, OJ EC L290/9 (now superseded)
31
Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of
databases OJ L 077/20
Bright-line separation from industrial designs

The scheme of common law industrial property protection of the early 20th century attempted to
draw a bright line between industrially applied (i.e. mass produced) works, to be protected by design
registration only, and artistic works, to be protected by copyright only. The line involved two
elements: whether the work was “primarily artistic” (which chiefly referred to sculptures) and
whether it was “industrially applied”. Within recent years, Australia32 and Singapore33 have both
reviewed, and decided to maintain, this bright line.

In the UK, a registrable design consisted of “features of shape, configuration, pattern or ornament
applied to an article by any industrial process or means”. The Copyright Act 1911 then provided
that copyright “shall not apply to designs capable of being registered …, except designs which… are
not used or intended to be used as models or patterns to be multiplied by any industrial process.”

Later, protection for works which were not originally intended to be “industrially applied” was
curtailed as soon as they had been so applied.34

However, certain articles which were “primarily literary or artistic in character”35 were excluded
from design protection, even where mass produced, and were added back to benefit from copyright
protection.36

Thus, except in the case of articles (such as sculptures) which were primarily artistic in character,
industrial application was required for design protection and excluded from copyright protection.

Primarily artistic Primarily artistic

Not (intended to be) industrially applied (Intended to be) industrially applied

Not primarily artistic Not primarily artistic

Not (intended to be) industrially applied (Intended to be) industrially applied

UK Copyright Protection for products

Some common law countries have retained this absolute separation.37 In others, the absolute
refusal of copyright protection was softened, and the same test was used instead to restrict the term

32
Review of the Designs System - Final Report, Australian Government Advisory Council on Intellectual
Property, 2014, http://www.acip.gov.au/pdfs/ACIP_Designs_Final_Report.pdf
33
Final Report on the Review of Singapore's Registered Designs Regime, 16th March 2016, Ministry of Law and
Intellectual Property Office of Singapore
https://www.mlaw.gov.sg/content/minlaw/en/news/press-releases/registered-designs-regime--to-provide-
greater-protection-and-cla.html
34
Copyright Act 1956, s10
35
Registered Designs Act 1949 s1(4). The items concerned were listed in Rule 26(1) of the various Registered
Designs Rules and including sculptures, book jackets, playing cards and so on. Previously, sculptures were
excluded by section 60 of the 1883 Patents & Designs Act and section 93 of the 1907 Patents & Designs Act.
36
Most recently by The Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989/1070)
37
E.g. Malaysia, by virtue of Copyright Act 1987 s7(5) & (6); India, Copyright Act s15(1) & (2),
of copyright to either the lifetime of a corresponding design registration or the quarter century
provided by the Berne Convention.

Indirect protection by preliminary drawings

However, drawings and plans, even those devoid of artistic merit, are protectable in much of the
common law world. In general, any unauthorised reproduction is an infringement, including indirect
infringements and reproductions in three dimensions. Thus, on general principles, a copy of an
article such as the Tripp Trapp chair is capable of being an indirect and three-dimensional
reproduction of any preliminary drawings from which the chair was made. Much ingenuity has been
spent and mis-spent by judges and legislators in attempting to deal with the consequences of this.

Exclusion of infringement by three dimensional copying

In the UK,38 Australia,39 and Malaysia,40 making three dimensional articles to a design does not
infringe copyright in corresponding artistic works (except where the articles themselves are
sculptures or works of artistic craftsmanship – an exceedingly rare occurrence). The same is
generally true in the US in relation to the designs of useful articles41 (discussed further below).

Useful and useless designs

The solution adopted in the US was to remove from the scope of artistic copyright the design of any
“useful article”.42 A “useful” article is one “having an intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey information.” An article which exists solely to
be looked at is not “useful” – it is a work of “pure” art.

Where ornamentation can be dissected from the article, copyright protection may exist for any such
separable ornamentation. However, as the 4th Circuit remarked, "the industrial design of a unique,
aesthetically pleasing chair cannot be separated from the chair’s utilitarian function, and therefore,
is not subject to copyright protection."43 Only those parts of a chair which can be viewed separate of

38
Copyright, Designs & Patents Act 1988, s51. Ten year substitute protection may be available by way of
Unregistered Design Right under Part III of that Act; that would have applied to the Tripp Trapp Chair had it
been created at the relevant time.
39
Copyright Act 1968, s77A
40
Copyright Act 1987, s13A
41
Copyright Act 1976, 17 USC §113(b) retaining the effect of the principle that “copyright in a pictorial,
graphic, or sculptural work, portraying a useful article as such, does not extend to the manufacture of the
useful article itself.” H.R. Rep. No. 94-1476, at 105 (1976), quoting the Registrar of Copyrights’ Report of 1961
– though that principle had not been applied where the work was originally intended as a cartoon and
subsequently applied to dolls, in the US as in the UK.
42
Ibid., 17 USC §101.
43
Superior Form Builders Inc. v. Dan Chase Taxidermy Supply Co., 74 F.3d 488, at 493, 37 U.S.RQ.2d 1571 (4th
Cir. 1996)
its essential shape (such as the “ornamentation explosion” of carven leaves in Universal Furniture44)
are protectable.

The UK courts appear recently to have adopted a similar approach in the Lucasfilm decision in
deciding (at all instances) on whether an article is a sculpture and (at first instance45) a work of
artistic craftsmanship. These approaches amount to requiring that all artistic works are “art for art’s
sake” – devised to be uselessly admired merely or primarily for what is depicted or conveyed. Whilst
works of “fine art” pass the test, it is rare for “applied art” to do so.

Industrial Application

The standard common law test of “industrial application” is the making of 50 articles and the
marketing of one or more of them, by or with the consent of the copyright owner.46 A work is
protected until these criteria are met. Afterwards, the consequences vary from one country to
another:

 In Australia,47 Israel,48 India,49 Malaysia50 and Pakistan,51 three dimensional copying of a

registrable but unregistered design is permitted at any time thereafter;
 For designs of “useful articles” (defined in the same way as in the US), the same is true in
Singapore52 and Canada;53
 For designs of “functional” articles, the same is true in Ireland54 and for those with a
“utilitarian purpose”, in South Africa;55
 In the UK56 after 25 years of “industrial multiplication”, copyright57 cannot be enforced
against the maker of any article, and the same is true in Malaysia,58 and after 16 years59 in
New Zealand60 and 15 years61 in Hong Kong62.

44
Universal Furniture International, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010)
45
Mann J., [2008] EWHC 1878 (Ch), [2008] ECDR 17, [2009] FSR 2 at para 134
46
For the UK, see Section 52 of the Copyright, Designs & Patents Act together with The Copyright (Industrial
Process and Excluded Articles) (No 2) Order 1989 (SI 1989/1070)
47
Copyright Act 1968, s77
48
Copyright Act 2012, s7, discussed in Intellectual Property Law and Practice in Israel, Liss & Adin, OUP 2012 at
334-336
49
Copyright Act 1957, s15(2)
50
Copyright Act 1987, s7(6)
51
Copyright Ordinance 1962, s12
52
Copyright Act, s70
53
Copyright Act, s64 – for difficulties in interpretation, see Pyrrha Design Inc. v. 623735 Saskatchewan Ltd.,
2004 FCA 423 (CanLII) 247 DLR (4th) 485; 36 CPR (4th) 432 (concerning jewellery)
54
Copyright and Related Rights Act 2000, s79(2)
55
Copyright Act 1978, s15(3A)
56
Copyright, Designs & Patents Act 1988, s52 (prospectively repealed)
57
Other than that in sculptures or designs of sculptures
58
Copyright Act 1987, s13B
59
25 for a work of artistic craftsmanship
60
Copyright Act 1994, s75
61
25 years where the corresponding design is also registered
62
Copyright Ordinance (Cap 528), s87
“Catnic” defences – no infringement of patent drawings

In 1982, Mr Justice Whitford held63 that on applying for a patent, one elected to waive copyright
after its expiry in reproductions of the corresponding drawings to make the patented product:

"In my view, by applying for a patent and accepting the statutory obligation to describe and
if necessary illustrate embodiments of its invention, a patentee necessarily makes an election
accepting that, in return for a potential monopoly, upon publication, the material disclosed
by him and the specification must be deemed to be open to be used by the public, subject
only to such monopoly rights as he may acquire on his application for the patent and during
the period for which his monopoly remains in force, whatever be the reason for the monopoly
rights.

The UK law of both patents and copyright has changed since, that judgment has never been followed
in the UK64 (other than by the judge himself65) and has been criticised elsewhere,66 but if ever it was
good law in the UK then its effect was preserved67 and it remains so today.

The “Catnic” defence was, however, applied in Canada,68 and statutory “Catnic” defences were
enacted in both Australia69 and New Zealand.70

63
Catnic v Hill & Smith [1978] FSR 405, [1982] RPC 183
64
Distinguished in Gardex v Sorata [1986] RPC 623 for example
65
Rose Plastics v. William Beckett & Co. (Plastics) [1989] 1 FSR 113
66
E.g. Ireland (House of Spring Gardens v. Point Blank [1985] FSR 327), New Zealand (Wham-O Manufacturing
Co. v. Lincoln Industries [1982] RPC 281), Australia (Ogden Industries v. Kis (Australia) [1983] FSR 616) or Hong
Kong (Interlego v. Tyco Industries [1987] FSR 409 CA))
67
By the Copyright, Designs & Patents Act 1988, Schedule 1, para 19(9)
68
Rucker Co. v. Gavel's Vulcanizing Ltd. (1985) 7 CPR (3d) 294
69
Copyright Act 1968, S77(1A)
70
Copyright Act 1994, s74(1)
International design law treaty provisions

1 – Paris Convention

Article 5quinquies Industrial Designs

Industrial designs shall be protected in all the countries of the Union.

Article 4 Priority

A. (1) Any person who has duly filed an application for a patent, or for the registration of a utility
model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his
successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during
the periods hereinafter fixed.

C. (1) The periods of priority referred to above shall be twelve months for patents and utility models,
and six months for industrial designs and trademarks.

E. (1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing
of a utility model, the period of priority shall be the same as that fixed for industrial designs.

Article 5 B. Industrial Designs: Failure to Work; Importation of Articles

B. The protection of industrial designs shall not, under any circumstance, be subject to any
forfeiture, either by reason of failure to work or by reason of the importation of articles
corresponding to those which are protected.

2 – Berne Convention

Article 2

(1) The expression "literary and artistic works" shall include every production in the literary,
scientific and artistic domain, whatever may be the mode or form of its expression, such as ... works
of applied art; ...

(6) The works mentioned in this article shall enjoy protection in all countries of the Union. This
protection shall operate for the benefit of the author and his successors in title.
(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in
the countries of the Union to determine the extent of the application of their laws to works of
applied art and industrial designs and models, as well as the conditions under which such works,
designs and models shall be protected. Works protected in the country of origin solely as designs
and models shall be entitled in another country of the Union only to such special protection as is
granted in that country to designs and models; however, if no such special protection is granted in
that country, such works shall be protected as artistic works.

Article 7

(4) It shall be a matter for legislation in the countries of the Union to determine the term of
protection of photographic works and that of works of applied art in so far as they are protected as
artistic works; however, this term shall last at least until the end of a period of twenty-five years
from the making of such a work.

(8) In any case, the term shall be governed by the legislation of the country where protection is
claimed; however, unless the legislation of that country otherwise provides, the term shall not
exceed the term fixed in the country of origin of the work.

3 – TRIPS
SECTION 4: INDUSTRIAL DESIGNS

Article 25 Requirements for Protection

1. Members shall provide for the protection of independently created industrial designs that are
new or original. Members may provide that designs are not new or original if they do not
significantly differ from known designs or combinations of known design features. Members may
provide that such protection shall not extend to designs dictated essentially by technical or
functional considerations.

2. Each Member shall ensure that requirements for securing protection for textile designs, in
particular in regard to any cost, examination or publication, do not unreasonably impair the
opportunity to seek and obtain such protection. Members shall be free to meet this obligation
through industrial design law or through copyright law.

Article 26 Protection

1. The owner of a protected industrial design shall have the right to prevent third parties not having
the owner’s consent from making, selling or importing articles bearing or embodying a design which
is a copy, or substantially a copy, of the protected design, when such acts are undertaken for
commercial purposes.

2. Members may provide limited exceptions to the protection of industrial designs, provided that
such exceptions do not unreasonably conflict with the normal exploitation of protected industrial
designs and do not unreasonably prejudice the legitimate interests of the owner of the protected
design, taking account of the legitimate interests of third parties.

3. The duration of protection available shall amount to at least 10 years.

4 – HAGUE AGREEMENT, GENEVA ACT

Article 2 Applicability of Other Protection Accorded by Laws of Contracting Parties and by Certain
International Treaties

(1) [Laws of Contracting Parties and Certain International Treaties] The provisions of this Act shall
not affect the application of any greater protection which may be accorded by the law of a
Contracting Party, nor shall they affect in any way the protection accorded to works of art and works
of applied art by international copyright treaties and conventions, or the protection accorded to
industrial designs under the Agreement on Trade-Related Aspects of Intellectual Property Rights
annexed to the Agreement Establishing the World Trade Organization.

(2) [Obligation to Comply with the Paris Convention] Each Contracting Party shall comply with the
provisions of the Paris Convention which concern industrial designs.

Article 14 Effects of the International Registration

(1) [Effect as Application Under Applicable Law] The international registration shall, from the date of
the international registration, have at least the same effect in each designated Contracting Party as a
regularly-filed application for the grant of protection of the industrial design under the law of that
Contracting Party.

(2) [Effect as Grant of Protection Under Applicable Law]

(a) In each designated Contracting Party the Office of which has not communicated a refusal in
accordance with Article 12, the international registration shall have the same effect as a grant of
protection for the industrial design under the law of that Contracting Party at the latest from the
date of expiration of the period allowed for it to communicate a refusal or, where a Contracting
Party has made a corresponding declaration under the Regulations, at the latest at the time
specified in that declaration.

Article 17 Initial Term and Renewal of the International Registration and Duration of Protection
(1) [Initial Term of the International Registration] The international registration shall be effected for
an initial term of five years counted from the date of the international registration.

(2) [Renewal of the International Registration] The international registration may be renewed for
additional terms of five years, in accordance with the prescribed procedure and subject to the
payment of the prescribed fees.

(3) [Duration of Protection in Designated Contracting Parties]

(a) Provided that the international registration is renewed, and subject to subparagraph (b), the
duration of protection shall, in each of the designated Contracting Parties, be 15 years counted from
the date of the international registration.

(b) Where the law of a designated Contracting Party provides for a duration of protection of more
than 15 years for an industrial design for which protection has been granted under that law, the
duration of protection shall, provided that the international registration is renewed, be the same as
that provided for by the law of that Contracting Party.