A few weeks ago we posted about the different forms of Intellectual Property. There are many things that fall under the broad heading of Intellectual Property and it can often be confusing to try and figure out what types of IP you have and what can be protected. It’s come to my attention that there is often confusion around Copyright and Design Protection -as, some things can fall under both.
Copyright is an automatic right granted to the creator of a ‘work’ that falls under copyright protection, however a design is only protected once registered formally. Further, a design is registrable only when it is new and distinctive. New means that the identical design cannot have been sold or marketed in Australia, nor can it have been published anywhere in the world – including on a website or in any publicly available document. Distinctive means that it must be different in overall appearance to other designs and products already available in the marketplace.
So – if you have a product that is eligible for design protection you must file your design application before disclosing the design to anyone/anywhere. And, if you have interest in protecting the same design outside of Australia you will need to determine this as soon as possible. Most countries will allow you a period of 6 months from filing in Australia to claim priority (based on your Australian application) and move forwards. Filing an international application outside of 6-months from filing in Australia may be deemed invalid, as the publication of your design details from the Australian application will count as a public disclosure of the design – so, another country may not see it as ‘new’ any more due to the publication, even though it’s your own design.
What is a Design?
Design registration protects the overall appearance of a product – it’s shape, configuration, patterns and/or ornamentation when it is new and distinctive. The owner of a registered design is given the right to use and exploit it as such. However, be mindful that to obtain the right to stop others from copying the design you must go through a second part process of having the design examined. If, during examination, the government department can see that at the time of filing the design was new and distinctive they will certify the design registration. Only once this has occurred may you take any action (or threaten any action) against people using the design without your permission. Issuing any sort of letter of demand prior to having your design examined and certified is a breach of the Designs Act currently in force in Australia.
What is Copyright?
Copyright covers many things, including literary works, artistic works, dramatic works, broadcasts, musical works, sound recordings etc. And, each of these ‘works’ will include many examples. The Australian Copyright Council has a fantastic range of fact sheets available – for a large range of industries and professions to help understand exactly what copyright may apply to your business.
Copyright can extend to 3 dimensional products that may also be eligible for design protection. For example, a range of ‘craftworks’ are protected by copyright when they meet certain criteria – and, craftworks comes under the broader category of “artistic works”. Things such as jewellery, woodwork, sewing & knitting and some toys are ‘craftworks’ for the purposes of copyright protection but generally they are copyright when hand made and are made for artistic purposes rather than functional purposes. Any 2D drawings/patterns for these craftworks are generally also protected by copyright.
As referenced above, copyright is automatic. Ownership usually lies with the original author or creator of the works. You do not need to formally register your copyright. As soon as you create or author ‘works’ you may include a copright notice with those works. For example: © 2012 Mark My Words Trademark Services Pty Ltd.
If you wish to protect a product that is used in a functional sense, or is mass produced rather than handmade and artistic, then you will need to consider whether you are eligible to register the product as a design.