Therese Catanzariti

DesignsIntellectual Property

LPAB Winter Session 2012

Therese Catanzariti

5/28/12

Therese Catanzariti

industrial revolution Fabric designManchester mills – linen, muslin, cotton,

calicoTHEN any ornamentation on productsTHEN any visual features of products 1906 Designs Act 2003 Designs Act

history

5/28/12

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

principles of design

5/28/12

Therese Catanzariti 5/28/12

culture-specific

Therese Catanzariti 5/28/12

Therese Catanzariti

Appearance of product / visual featuresNOT function / performance (patent law)NOT method of constructionNOT product itself – separate and distinct from product

In relation to product Microsoft Type Font – type font design not specify tangible thingRe 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

key issues

5/28/12

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

“Visual feature” in relation to a product, includes the shape, configuration, pattern and ornamentation of the product –s7

Covers 3D (shape of box) and 2D (patterns)

product – thing that is handmade or manufactured – s6

design

5/28/12

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)

new and distinctive

5/28/12

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)

new and distinctive

5/28/12

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

is design substantially similar in impression

5/28/12

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

5/28/12

Keller v LED Technologies

Therese Catanzariti

Designer – person who created design Employer if created in course of

employment Person who commissioned under contract Assignee Legal personal representative

Owner – s13

5/28/12

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 – s21design 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

registration

5/28/12

Therese Catanzariti

Applicant may elect publication or registration – s35

Publication not stop infringementBUT 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

registration v publication

5/28/12

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

rights – s10

5/28/12

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

Infringement – s71

5/28/12

Therese Catanzariti

Owner can commence proceedings – s73NOT 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

Infringement

5/28/12

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

spare parts – s72

5/28/12

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 registeredAND taken reasonable steps to ascertain if registered

Prima facie registered defendant aware if product or packaging say registered design – s75(4)

Remedies – s75

5/28/12

Therese Catanzariti

Copyright term life+70 yearscopyright 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

copyright/design overlap

5/28/12

Therese Catanzariti 5/28/12

Therese Catanzariti 5/28/12

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

“corresponding design”

5/28/12

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 unitsPress Form v Henderson –may be less than 50 if complex

articlesAND products sold, let for hire or offered or exposed for sale or

hire – s77

Exception for works of artistic craftsmanshipSheldon v Metrokane – bottle openerBurge v Swarbrick – boat plug and mouldings

no infringement

5/28/12