For the creatives who design the latest fashions in clothes, furniture and appliances, protecting the intellectual property around their work is likely to be a lower order priority for them compared with the drive to push the boundaries of function and form.
I frequently hear comments like “I don’t need to worry about IP. To protect my artistic integrity I rely on Copyright, which is automatic, world-wide protection – right?”
Er, yeah, kind of.
Copyright & Designs (the painful overlap)
It’s true, under the Berne and Universal Copyright Conventions (Australia is a signatory to both), copyright is automatic, and provides world-wide protection. Further, in Australia, the term of copyright protection does not expire until 70 years after the death of the author! So what’s the problem?
Well, if you’re dealing with and producing 3D copyright works for industrial application (i.e. mass-production of a repeating design like a funky new sofa or a decorative coffee pot), then there is a serious issue. And it is this:
- 3D copyright is lost with industrial application (e.g. when 50 or more articles are offered for sale, etc.).
- And if you haven’t applied to register a corresponding design for your 3D copyright work, then the industrial application of your 3D copyright will also prevent you from being able to obtain a valid design right.
In such a case, you will have no protection at all, at least in the 3-dimensional sphere.
“OK – but so I retain my 2D copyright in my original design drawings?”
Yes – that’s correct. But what if your competitor is able to evolve a competing 3D design without having to revert to the 2D world. A while ago, you might have said – “impossible!” But enter the world of 3D printing and manufacturing. Here, the 3D work can be recreated in cyberspace. And, we then need to ask - is the computer-aided design that exists in cyberspace a 2D or a 3D work? Do you really want to try and fight out that legal argument in the courts?
PS – with a registered design, unlike with copyright, you don’t need to prove or infer copying. It doesn’t matter if a third party imitator isn’t aware of your registered design – they will still infringe and can be stopped. Plus - a registered design can be used to protect the distinctive features of your design.
“I also own my copyright and I keep it, even if someone pays me for it, so what’s the issue?”
Correct, the author of the copyright work retains the copyright, and the third party that pays you for it only gets an implied, royalty-free licence to use that work in perpetuity for the purpose for which it was created. That is of course, unless you’ve agreed to transfer the copyright. Thus, you do need to carefully check any contract you sign with that third party (i.e. look out for the IP clause).
And if you later decide to offer that work to another party, you better make sure you’re not in breach of that implied licence, or any other terms in the contract you might have signed with that third party.
PS – it’s much easier to enforce copyright in China and the US if you register it there, so do consider that for any important international works you create.
Trade Marks (Brands)
“I don’t need to register my trading name or brands. I’ve already registered my company/business name and domain.”
A registered company name, business name or domain name give you no rights to that name! Rights in relation to a trade mark (trading name or brand) can only arise in two ways:
1. Through use (i.e. these are known as Common Law usage rights, but they are only as strong as the extent of your use/reputation).
2. By registering your name or brand as a trade mark.
OK, to qualify for registration, your trade mark does need to be distinctive of your goods/services. But, assuming it is, registration will give you Australia-wide rights and will protect you against any third party trade mark that is also substantially identical or deceptively similar to your registered trade mark. Registration also crystallises the value of your brand into an identifiable asset.
Your Australian trade mark registration also provides a basis for international protection (assuming someone hasn’t already independently adopted a similar trade mark in an overseas country).
Confidential Information (Trade Secrets & Know-How)
“Again, I keep my trade secrets & know-how confidential.”
This may well be the case, but have you securely documented your key confidential assets? Have your employees signed confidentiality agreements, and agreed not to take your trade secrets & know-how to a competitor? Have you let any of these secrets out at a trade show? What about third party suppliers and contractors to your business? Are they aware of their obligations not to disseminate any of your confidential information?
“Patents are of no relevance to me. Also, they’re expensive.”
Sometimes a new design can also qualify for patent protection. If the design does qualify, a patent provides the strongest form of protection for a new design concept. But this is a complex area, and can be expensive if the process isn’t well-managed. You really do need to speak to a patent attorney if you decide to go down this path.
We live in an age where the products of our creativity (the intangible assets) have become the most valuable assets of a business (think Apple v Samsung). So, every designer should be asking themselves – “what am I doing to protect my artistic integrity and ensuring that the value of my creativity is not being squandered?” Yes - designers should care about their Intellectual Property.
If you have any questions or require expert advice on patents, please don't hesitate to contact us.