- Article by Gillian Serisier
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The legal rights and responsibilities and designers continue to be an often misunderstood and treacherous area. Gillian Serisier looks at some of the basic distinctions between copyright and design registration when it comes to design IP.
For legitimate design retailers, wholesalers, agents and dealers the ‘fake’ designer market is an enormous problem, and that’s putting it mildly. The Barcelona chair is perhaps the most ubiquitous of the knock-offs, but increased production speed means many designers find this year’s model ‘infringed’ as fast as you can say ‘press release’. Protecting designers and their designs is difficult, but steps can be taken to help safeguard this precious commodity.
Design registration and copyright legislation are complex aspects of the law and policing is even more difficult. As barrister James Samargis states: ‘It is the law in Australia that three-dimensional products manufactured and offered for sale lose their copyright. Designers have nothing to hang their hat on unless they have the design registered before they have offered it for sale or manufactured 50 products.’
Within Australia, the most important distinction is that of copyright and design protection. Simply put: copyright protects the original of the design, but not the design in production. Copyright in Australia exists under Commonwealth legislation. It is not part of the common law, but it attaches automatically on the creation of a work in Australia. It does not require the © symbol to validate copyright, though this can operate as a deterrent. Once your design is industrially applied (more than 50 items), sold or hired, the product loses its copyright.
Design protection in Australia exists under Commonwealth legislation as well, but requires making an application (with drawings or photos) at IP Australia and the payment of a fee. If you register the design prior to offering for sale and manufacture, your rights are protected. If an industrial application (more than 50 items) has taken place, however, and there is no design registration applied for, then third parties are free to copy the design. And this is where timing becomes key. The protection must be applied for before production and offers for sale commence.
Unfortunately, many designers fail to address the law’s requirements and design registration for industrialised products cannot be applied retroactively.
Registering a three-dimensional design is actually not that difficult. A lawyer or patent attorney will assist for around a thousand dollars. Alternatively, IP Australia  provides information online or as a hard copy with everything clearly outlined and explained. The process involves submitting simple line drawings, which permit all views of the object in the round. Any design feature unique to your design needs to be clearly illustrated. You complete a form identifying the product, the originator and the owner of the design and pay a fee of about $200. Registration can only be granted for new and distinctive designs compared with the prior art base. Once registered the design is protected for up to 10 years.
If there is a loss of rights due to the designer’s failure to register the design, the Trade Practices Act of 1974 cannot be relied on as an avenue for recourse to protect the design. The Act’s concern is with misleading and deceptive conduct towards the consumer (‘A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.’ ss52 and 53 provisions), not the presumed rights of the original designer. In 1982 the Full High Court case of Parkdale v Puxu determined that: ‘The persons likely to be affected in the present case, the potential purchasers of a suite of furniture costing about $1500, would, if acting reasonably, look for a label, brand or mark if they were concerned to buy a suite of particular manufacture.’ (At p199) . In effect, the case showed that with correct labelling no deception was perpetrated despite the knock-off Parkdale couch being identical in appearance to the earlier Puxu couch. As stated above, the Act’s concern is for the consumer, not the design.
The common law action of ‘passing off’ isn’t going to offer much help either. ‘The tort of passing off is a common law action used to prevent trader A from misusing trader B’s  goodwill or reputation by misrepresenting that A’s goods or services are those of or related to B.’ For most designers, the action would seem to logically protect them, particularly when they have designed something fairly unusual. Even though a design has unusual features, however, what has to be shown is that those features have been used over time in marketing to identify the designer and design business, such that there is an exclusive reputation for those design features. Proving a case of ‘passing off’ for a three-dimensional object remains extremely difficult. As Samargis points out: ‘Passing off cases for shapes tend to sit with well-known packaging shapes such as the iconic Coke buddy bottle or the Dimple whisky bottle where reputation has been established over a long period of time.’
By way of a theoretic example, Samargis points to Australian designer Marc Newson.
‘Newson’s Lockheed Couch has not been industrially applied so it would retain its copyright. It is also in a position to be design registered. If those rights were lost, that is, if more than 50 were produced without the design being registered, it could still be quite difficult to argue a ‘passing off’. Newson would need to argue that the ‘orgone’ shape that he promotes as his own is embodied in the couch. He could further argue that this is an exclusive feature to him, which ‘brands’ his work as his.’ Most people in the design world, both participants and admirers, would agree that these attributes constitute a recognisable design aesthetic unique to Newson; however, Samargis concludes: ‘The problem lies in the question of whether the orgone shape is entirely unique to Newson? In this case, it would be easy to prove original talent and wide knowledge of the Lockheed Couch as Newson’s couch given its media exposure. Most designers, however, don’t have the advantage of Newson’s level of media exposure for their work.’
Conversely, Newson’s work for Qantas, which will be mass-produced, has been correctly design registered and a quick search of IP Australia locates Design Registration Number 155761. This is, in fact, Marc Newson’s rather fabulous design for a plane seat.
Unfortunately, having a registered design, cannot entirely safeguard against ‘fakes’ and, as recently as October 2007, McDonald’s was ousted by Fritz Hansen . As the legitimate licensed manufacturers of the Arne Jacobsen range including the Swan, the Egg and the Seven, Fritz Hansen had been contracted to supply specially designed Arne Jacobsen chairs for McDonald’s UK outlets. During supply, however, it discovered that McDonald’s was simultaneously taking delivery of pirated versions. ‘We simply will not cooperate or trade with companies that accept piracy, cost what it may. The fact that McDonald’s has chosen to use pirated copies is even more surprising since the company itself is legendary across the world in pursuing trademark and copyright suits to safeguard its product and name,’ says Fritz Hansen CEO Jacob Holm.
Getting ‘the look’ rather than authenticity seems to have been the goal and outcome, with UK McDonald’s spokeswoman Lorraine Homer citing cost as a driving factor when selecting chairs of similar appearance. She also claimed the copyright on the original design had expired in 1983 without acknowledging Fritz Hansen as the sole right holder and producer of Arne Jacobsen furniture.
Unfortunately, McDonald’s is not the only one stocking up on cheap copies. As Andrew Shapiro, managing director of Shapiro Design and Art and specialist in 20th century design, points out, many find a lower price ticket an acceptable compromise to the integrity of purchasing an authentic design: ‘What it comes down to is cost, something which might cost you five to 20 thousand dollars at the licensed dealership is being sold for $995. Obviously, they are not of the same quality – they are iconic fakes – there are a lot that just want to have the look. It is a decision people make themselves.’ Shapiro also points to a disparity between the failure of the fake’s quality and the success of knock-off sales. ‘With the copies there is a lot of variation; they are not as successful as the original, they are an adaptation, the structure may be slightly different, the leather not as good, they are a look. They are fakes, not reproductions. When licensed reproduction [is] versus a fake’s price tag… well, there are restaurants ordering them by the hundred – they want the look – the demand is so high. Fake has become overly successful.’
Shapiro’s commitment to educating consumers about design values and authenticity of design is commendable. So too are the moves towards internationally recognised laws and the work being done by Samargis, IP Australia and Arts Law to help protect and educate designers. It is, however, far from smooth sailing.
 UK Telegraph, ‘McDonald’s accused of piracy by chair firm’, Julian Isherwood and David Litterick, 9 October 2007.
Gilian Serisier reiterates the need for Australian designers to register their designs. She also looks at some of the international moves towards universal design protection as well as the realities of not registering and certifying a design.
Protecting industrial design rights remains the most challenging of the international Intellectual Property (IP) issues. ‘This is a complex area, with different options for protecting designs ranging from sui generis design laws, unregistered designs and design patents, through to copyright and trademarks. Hardly any other subject matter within the realm of IP is as difficult to categorise as industrial design,’ states the 2007 annual report of the World Intellectual Property Organisation (WIPO). The intention of the 184 member states comprising WIPO aims to protect the rights of designers and rights holders and focuses on creating and maintaining an international legal framework.
A recent series of design questionnaires distributed to the WIPO member states is intended to progress the Standing Committee’s work towards harmonising design registration formalities and procedures. And while it is good to see such moves afoot, there is little point in holding one’s breath. ‘There was a suggestion a few years ago, from some member countries of WIPO, that the logical progression of this work would be the development of a design law treaty along the lines of the Patent Law Treaty and the Trademark Law Treaty. If this is agreed, the work would take some time. So it would seem that there is progress towards finding areas where practice converges on an international scale, but reform is not imminent,’ says Peter Willimott, director, Marketing and Customer Engagement, IP Australia. As the situation stands, the WIPO-administered ‘Hague Agreement Concerning the International Deposit of Industrial Designs’, established in 1925 and most recently amended in 1999, allows for the registration of industrial design for protection rights in a single application for a multitude of countries (currently 48) within the treaty. As with design registration within Australia, application through the Hague Agreement cannot be made retroactively and must be in place prior to industrial application.
Unfortunately, international design registration is not quite as simple as a one-stop shop and the individual laws of each country must be considered when manufacturing or importing. When Australian designers export a design, they must register their intellectual property with each country of interest within (generally) a six-month period of registering the design in Australia. Using detailed drawings for your initial registration is essential, as many countries do not recognise photographs as valid documentation. Unequivocally registering with countries of interest must be done prior to export.
Industrial design protection is further complicated if the three-dimensional object can be categorised as ‘a work of artistic craftsmanship’ . Under this category the work may be eligible for protection under copyright law and enjoy an extended period of protection. Arbitration in this area becomes increasingly difficult as the line between art and design is often blurred. For example, when WIPO poses the art versus design question in regard to Le Corbusier (‘Are the classic chairs designed in 1929 by Swiss architect and designer, Le Corbusier – such as this chaise longue – simply items of furniture, or also works of applied art?’), to those in the design world, the answer seems straightforward enough, but the law does not see things in quite the same way. This is further complicated by differences between countries. In Australia the law is quite clear: once a ‘design’ has been industrially applied (i.e. 50 items have been produced) copyright is forfeit.
In the case of Le Corbusier, Cassina is the only company making an authentic, licensed product. A licence is generally an agreement whereby a fee granting reproduction rights goes back to the foundation or family. As Andrew Shapiro points out, though, it is not all about the fee. ‘There is a professional courtesy involved where the reproduction is true to the original design specification in structure, material and the quality of engineering.’ Unfortunately even a cursory browse through the internet locates Le Corbusier replicas in abundance.
Design replicas are not illegal. Morally questionable? Yes. Illegal? No. Notwithstanding it is jolting to see a design as recent as Ross Lovegrove’s Supernatural chair of 2005 (for Moroso) appearing as a replica on the internet for the princely sum of $119. And while it affects the design community as a whole to see such flagrant disregard for the designer’s moral rights, for the designer himself it is an unspeakable offence. ‘Looking at my Supernatural chair copy is like looking at someone you love with a scar across their face!’ says Lovegrove from his London studio. Granted, there are slight visual differences: the replica does not have the hole in the seat, the dimensions are slightly different, as is the form. Technically they also differ with the replica boasting ‘ injection moulded [sic] plastic with reinforced fiberglass [sic] legs,’ while the authentic design utilises fibreglass-reinforced, air-injected, integrally coloured polypropylene to create a light but strong and weather resistant chair.
The slight changes to the visual aspects of the design possibly reflect a misguided belief that a change by 10 percent makes it legal. Contrary to this belief, no change is necessary – the chair has not been design protected in Australia and can be directly copied. So, while no infringement has occurred it is undoubtedly a knock-off. Lovegrove’s general thoughts on piracy speak volumes. ‘Piracy and plagiarism are for opportunists whether culturally or commercially inclined. It’s an unstoppable force and confirms the value of originality and innovation and the importance of remaining optimistically engaged in creating a culture of quality ahead of the field.’
In an ironic twist, the replica is being touted as café furniture. Lovegrove’s intention was to create an affordable yet durable chair for outdoor use. This brings us back to what Shapiro calls ‘the look’. Indeed, it isn’t the real thing, but it looks a hell of a lot like it. The question here is: how can this happen? Ross Lovegrove is an established designer, his chairs are recognisably unique, and the Supernatural range is distinctly his original talent.
Sydney-based patent attorney, Ken McInnes (Hodgkinson McInnes Patents), theorises how a situation like this may have arisen. ‘Lovegrove is different in the sense that he is operating as the commissioned designer for Moroso. Under this arrangement, the patron may register the design in a number of regions to protect what is essentially their product. TAG Heuer SA has done so with several Lovegrove designed watches and spectacles. The fact that Moroso has not done so means the item may be replicated and sold in this region.’ The fundamental dilemma seems to be the differences in laws between regions. ‘European law allows for a system of unregistered design rights, which goes back to the European moral rights law. It is an industrial version of copyright,’ says McInnes.
Indeed the system operating in England for unregistered design rights affords some rights without registration. Barrister, James Samargis, describes it as ‘ a hybrid very suited to the realities of designers’ work and life – there is something smart and practical about it’. At present Australia does not have an equivalent of that law nor do most regions outside Europe. This disparity opens the way for piracy. Each exposure of the designer’s work frees any operator within a region where the three-dimensional design has not been registered to replicate it. ‘Lovegrove’s work runs the risk of other jurisdictions that require industrial property registration such as the US or Australia; he cannot get valid protection once he realises his design commercially – it is too late. By launching the product in Europe, if he then decides to export to the US or Australia, there is nothing he can do,’ says McInnes
Interestingly, Moroso has registered its corporate logo in Australia, but it does not own a single design registration in this country. McInnes sees this as typical of the view held in Europe of the Australian market. ‘Much of European industry sees Australia as a small market that is a long, long way away. Simply put, until we become a bigger market, who cares? Conversely if anyone puts Moroso or Henry Miller onto a product then all hell breaks loose.’ So how can the copier or seller of the replica apply Ross Lovegrove’s name to the promotion of their product? ‘If you say ‘inspired by’ or ‘replica’ – you are not using it as a trademark. If someone says this is a Lovegrove chair they will be sued for passing off, but by saying this is a replica Lovegrove, it is not the case. Replica is a statement of fact,’ says McInnes. Under these conditions the Supernatural chair copy is a replica of a design not registered in this country, which unfortunately means that neither Lovegrove nor Moroso can do anything about it. If the design were registered in Australia it would be illegal to replicate or reproduce the product and doing so would constitute an infringement and be deemed a civil wrong. McInnes believes that seeking the registration in China and South America where replicas are overwhelmingly manufactured is one alternative to registering a design in multiple countries.
The WIPO nomination (on 13 May 2008) of Australian national, Francis Gurry, as director general, augurs well for the harmonising of Australian and international IP law, as does the 2009 Australian Design Act review. ‘In relation to the Australian legislation, the new Design Act is to be reviewed in mid 2009 as originally planned (five years after implementation). Work is also being undertaken on developing Australia’s position in relation to the Hague Agreement,’ says Willimott.
For the present though we must accept the system in place and abide by its laws, regardless of the seeming lack of logic. ‘For Australian designers registration is granted to anything submitted, provided it is clearly a design and the drawings are technically competent. IP Australia will simply register the design; however, you cannot issue threats or commence legal proceedings if you have not sought certification of the registration to assure it is a new and original design matched against the database. Basically if you are getting a design registered you would be crazy not to get it examined. Without both, it is a toothless tiger,’ says McInnes, in accord with Samargis. ‘Registration is the shield, certification is the sword.’ Be warned though, if you don’t seek certification promptly after initial registration and are infringed, it can take up to six months before it gets examined. If there are problems, you then have to deal with overcoming the objections, which means delays and more expense. The other risk McInnes sees for designers is one whereby ‘a third party can seek to have your registration examined by paying half the government fee and have the opportunity to submit documents alerting the examiner to prior designs,’ he says. ‘If that happens you have a very short amount of time to pay the other half of the fees and if you do not your design registration is cancelled, regardless of the merits of your case.’
Our current laws leave much to be desired; however, they are the laws by which we must abide. Getting designs registered and certified remains a priority since it offers the only means of recourse should an infringement occur. Moral rights should be universal: reason must surely prevail. In the interim we await both the 2009 Design Act review and the updates to the Hague Agreement, we are not holding our breath, but we do have our fingers crossed.