intellectual property winter session 2013 therese catanzariti
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Therese Catanzariti
DesignsIntellectual PropertyWinter Session 2013
Therese Catanzariti
Therese Catanzariti
artist craftsman => industrial designer
1754 Royal Society of Arts
1787 Designing and Printing of Linens Act 1787 (Eng) 27 Geo III c 28
Fabric design – linen, muslin, cotton, calico Sole right of printing design for 2 months
Manchester mills – linen, muslin, cotton, calicoTHEN any ornamentation on productsTHEN any visual features of products 1906 Designs Act 2003 Designs Act
history
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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
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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.
Form follows function, ornament is a crimeBauhaus / Modernism
I don't design clothes, I design dreams -Ralph Lauren
“…good design pays. It is ..a crucial element in corporate strategy, and as integral to the customer focus required for business success. It is a key part of innovation in industry. In terms of specific market attributes, modern design is seen as essential to product differentiation and brand loyalty.” ALRC Report 94 “Designs”1995
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Sir James Dyson
Painting - Byam Art School (now Central St Martins)
Furniture and interior design – Royal College of Art
“I just want things to work properly.”
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Sir Jonathon Iwe “Its very easy to be differentIts very difficult to be better.”
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culture-specific
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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
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"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
product – thing that is handmade or manufactured – s6
design
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“Visual feature” in relation to a product, includes the shape, configuration, pattern and ornamentation of the product
Visual feature may but need not serve a functional purpose
NOT The feel of the product The materials used in the product If the product has one or more indefinite dimensions
◦ The indefinite dimension◦ If the product also has a pattern that repeats itself – more
than one repeat of the pattern
Visual feature – s 7
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Court determine what is a visual feature tho expert evidence may provide technical
assistance
Dart Industries v Décor (1989) 15 IPR 403 “the design is the mental conception conveys to
the mind by the eye…Court determine meaning of design …while some designs are so simple… the court needs no expert evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them”
court determine
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pattern,ornamentation – 2D
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pattern,ornamentation – 3D
hot water bottle ribbingCow & Co v Cannon Rubber
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shape, configuration – 3D
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Indefinite dimension
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monopoly for one particular, individual and specific appearance
NOT if suggest general shape appropriate to function that are consistent with a variety of particular shapes
Firmagroup Australia v Byrne & Davidson Doors – (1987) 9 IPR 353 - recessed handle and lock for shutter doors
Re Wolanski (1953) 88 CLR 278 - necktie support
particular appearance
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Particular appearance
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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
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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
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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
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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
Keller v LED Technologies
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Designer – person who created design Employer if created in course of
employment Person who commissioned under contract Assignee Legal personal representative
Owner – s13
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◦ designed on his own property during his own time
◦ nothing associated with his conditions of employment that created a general expectation that he create new designs for tanks;
◦ no specific direction given by the employer that led to the development of this tank
Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 – modular rainwater tanks
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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
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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
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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
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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
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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
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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
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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
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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
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Nature of rights◦ Copyright – prevent copying, allow independent creation◦ Design - monopoly
Ownership◦ Copyright – author, employer, assignment in writing◦ Design – author, employer, commissioner
Registration◦ Copyright – subsist on creation, no registration◦ Design – registered on Design Register
Term◦ Copyright – author life+70 years◦ Design – 5+5 yrs
differences
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Part III, Division 8, Copyright Act
limit copyright protection for essentially industrial products
if products infringing design◦ If registered design, can only claim infringe design, not infringe
copyright◦ If no registered design but design industrially applied, cannot claim
infringement
exception◦ Works of artistic craftsmanship◦ Other copyright infringement (eg publish design in book)unless incidental to making product (plan to plan copying)– s77A
resolving the conflict
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If corresponding design registered – s75=>not infringe copyright in artistic work to
reproduce work by embodying work or corresponding design in product
If corresponding design not registered – s76 corresponding design industrially applied with
copyright owner’s licence not work of artistic craftsmanship=>not infringe copyright to reproduce work by
embodying corresponding design in product
no copyright infringement
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“corresponding design” - visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work – s74
Shape or configuration – does not include designs for 2D such as wallpaper, textiles
embodied - woven into, impressed on or worked into the product
“corresponding design”
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“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”
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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
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arts and crafts movement / anti-industrial John Ruskin, William Morris, Tiffany – V&A
works of artistic craftsmanship
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George Hensher v Restawhile [1976] AC 64 – chicken wire prototype of sofa chair
Coogi v Hysport- commercial fabric
Merlet v Mothercare (1986) RPC 115 – baby cape
Sheldon v Metrokane (2004) 61 IPR 1– rabbit corkscrew
Burge v Swarbrick (2007) 232 CLR 336 – boat plug and mouldings
works of artistic craftmanship
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Sheldon v Metrokane - rabbit corkscrew