Bills Digest No. 130 2002-03
Designs (Consequential Amendments) Bill
This Digest was prepared for debate. It reflects the legislation as
introduced and does not canvass subsequent amendments. This Digest
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Contact Officer & Copyright Details
Designs (Consequential Amendments)
11 December 2002
House: House of Representatives
Portfolio: Industry, Tourism and
The Act will commence
immediately after the Designs Act 2002 commences.
The purpose of
the Bill is to:
- amend the Copyright Act 1968 to correct anomalies in
the provisions dealing with the overlap between design and
copyright protection, and
- make consequential amendments to a number of Acts, due to the
enactment of the Designs Act 2002.
This Bill contains amendments consequential to
the repeal of the Designs Act 1906 and the proposed
enactment of the Designs Act 2002. For an account of the
background to this initiative plus an overview of designs law see
the Bills Digest for the Designs Bill 2002 (Bills Digest No.
129, 2002 2003).
This Bill also contains amendments to the
Copyright Act 1968. The background to these amendments is
A key concern in the design protection area is
that of its relationship with copyright protection, as both regimes
may protect the same subject matter, particularly where a 'drawing'
may be a design.
Concerns about potential anomalies arise in
relation to the protection of artistic works. In broad terms
copyright provides anti-copying protection for artistic works for
50 years from the author's death.(1) By contrast designs
law provides exclusive exploitation rights for industrially applied
art for a much shorter period (currently 16 years and to be soon
changed to 10 years). As a policy matter it has been considered
inappropriate to allow industrially applied art the long period of
protection granted to artistic works protected by copyright. For
this reason there are provisions in the Copyright Act (sections
74-77) that seek to prevent dual protection. These provisions
attempt to exclude copyright protection for works industrially
applied as three-dimensional designs unless the work is a building,
a model of a building or a work of artistic
craftsmanship.(2) However copyright protection is lost
if these works are registered as designs.(3) Full
copyright protection is retained for works applied as
two-dimensional or 'surface designs , even if registered as
designs.(4) These provisions have been criticised for
being overly complex and for creating further anomalies.
The Australian Law Reform Commission in its
major review of designs law(5), examined these
design/copyright overlap provisions and considered four options for
- Option 1 full copyright protection for
artistic works industrially applied as designs ie sections 74-77
would be repealed and dual copyright and design protection would be
permitted for all two- and three-dimensional designs
- Option 2 retain existing sections 74-77 with
modifications to clarify existing policy
- Option 3 remove full copyright protection for
artistic works commercially exploited in two dimensions by limiting
the term of copyright
- Option 4 repeal sections 74-77 and introduce
an adaptation right for artistic works into the Copyright
Act.(6) An adaptation right gives the copyright owner
the right to industrially apply a version of the copyright work
that is itself an artistic work in three dimensions. The amendment
would preserve copyright for all three-dimensional products that
were not sculptures, works of artistic craftsmanship or buildings
or models of buildings. For example, a sculpture made from a
drawing of a sculpture would infringe copyright but a pump made
from an engineering drawing would not.(7)
The ALRC's preferred option was Option 4.
However if this option was not accepted, the ALRC recommended
implementation of Option 2. It rejected Options 1 and 3.
The Government in its response to the ALRC
report rejected Option 4 on the basis that the suggestion poses
further difficulties and uncertainty in terminology; and that there
would be a loss of copyright protection in the case of designs for
articles that have not been industrially applied.(8)
The Government's preferred response was Option
2, which this Bill implements.
Schedule 1 Amendments to the
Copyright Act 1968
Sections 74-77 of the Copyright Act provide a
defence to a copyright infringement action by providing that some
uses of an artistic work(9) do not infringe copyright in
that work. In summary, section 74 defines 'corresponding design',
section 75 removes copyright protection when a corresponding design
is registered under the Designs Act, section 76 applies where a
design has been falsely registered and section 77 provides a
defence to copyright infringement where an artistic work has been
industrially applied but not registered as a design or not
registrable. The possibility of dual protection is limited to
two-dimensional or surface designs. Works of artistic
craftsmanship, buildings and model buildings also retain copyright
protection but only if they are not registered as designs. Strictly
therefore they do not receive dual protection.
The effects of sections 74-77 are as
- Two-dimensional designs continue to receive copyright
protection as artistic works under the Copyright Act when applied
as surface designs to articles, to the extent that those design
features reproduce the artistic works. If the design is also
registered under the Designs Act then dual protection is given
- The copyright in a two dimensional artistic work continues to
be infringed by a two-dimensional copy of that work made in the
course of industrial application, that is, 'plan-to-plan'
- Three-dimensional articles retain copyright protection only if
they are works of artistic craftsmanship or buildings or models of
buildings. However copyright protection is lost if these items are
registered as designs
- In other cases, copyright protection for artistic works applied
as three-dimensional designs is effectively forfeited if the
corresponding design is commercially produced.(10)
Section 10 of the Copyright Act is a definitions
section. Item 1 amends the definition of 'artistic
work' in subsection 10(1) to clarify that a work can be both a work
of artistic craftsmanship and an artistic work. The purpose is
remove uncertainty as to the meaning of the term 'work of artistic
craftsmanship' for the purposes of section 77.
Central to the overlap provisions is the term
corresponding design in section 74. The difficulty with the current
definition of 'corresponding design' is that it has been held that
the word 'design' means only designs registrable under the Designs
Act and therefore non-registrable designs of three-dimensional
articles (eg functional designs such as pump parts) are entitled to
copyright protection.(11) Item 2 amends
the definition so that a corresponding design 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
proposed Designs Act 2002. The purpose of this amendment
is to make the definition consistent with the definition of
'design' in the proposed Designs Act 2002, and to clarify
that a 'corresponding design' includes designs that are not
registrable under the Designs Act. Item 3 makes a
further amendment to the definition of 'corresponding design' to
clarify that visual features can be embodied in a product by being
woven into, impressed on or worked into the product.
Section 75 removes copyright protection in an
artistic work when a corresponding design is registered under the
Designs Act 1906. Item 4 makes
consequential amendments to section 75 by inserting a reference to
the proposed Designs Act 2002 and updating the terminology
to reflect the new definition of corresponding design .
Section 77 limits copyright protection where an
artistic work has been industrially applied as a three-dimensional
design but is not registered as a design or is not registrable as a
design under the current Designs Act. Items 5-13
amend section 77 in a number of ways. They make consequential
amendments by inserting references to the proposed Designs Act
2002 (items 6-7, 11-12) and updating the
terminology to reflect the new definition of corresponding design
(items 9, 10 and 12). Item 8
inserts new subsection 77(1A) which has the effect
of allowing for the manufacture of a three-dimensional object
illustrated in a published patent specification or design
representation without infringing copyright. Item
13 inserts new subsection 77(5) which
adds definitions of the terms building or model of a building ,
'complete specification and representation . Buildings and models
of a building are exempt from loss of copyright protection under
section 77. The new definition of 'building or model of a building'
clarifies that the exemption does not encompass portable
Item 14 inserts new
section 77A which provides a defence to copyright
infringement for certain reproductions of artistic works made in
the course of, or incidental to, making products that do not
themselves infringe copyright. The Explanatory Memorandum provides
an example of where a drawing or plan made in the course of
manufacturing non-infringing three-dimensional products may
infringe copyright in the original drawing or plan. Under new
section 77A such drawings or plans would not infringe
Schedule 2 amends a number of
Acts consequential to the enactment of the proposed Designs Act
2002. The amendments tend to be of two types. They either:
- replace references to the Designs Act 1906 with
references to the Designs Act 2002 (for example,
items 1, 2, 4, 6, 9, 11, 14, 15, 17, and 19),
- insert actual references to the Designs Act 1906 (for
example, items 7, 10 and 16) in order to ensure
that rights preserved because a design was registered under the old
Act will be preserved on the commencement of the proposed
Designs Act 2002.
- Copyright Act 1968, section 33.
- ibid., section 77.
- ibid., section 75.
- ibid., section 74.
- Australian Law Reform Commission, Reform No 74 -
Designs, Sydney, 1995. Located at:
(as at 17.03.2003).
- ALRC, Op.cit, para 17.4.
- ibid., para 17.9.
- Government response to the ALRC Report. Recommendation 170.
(as at 17.03.2003).
- 'Artistic work' is defined in subsection 10(1) of the Copyright
- This material is extracted from the Australian Law Reform
Commission, Op.cit, para 17.6.
- Gaye Middleton, 'Copyright/Designs Overlap: The ALRC's
Recommendations and the Federal Government's Response',
Australian Intellectual Property Journal, v.10(4),
November 1999, p. 206.
Mary Anne Neilsen
26 March 2003
Bills Digest Service
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