Protect your creativity: design rights versus copyright

It’s a complicated topic that generally causes confusion amongst creative types: where do we draw the line between design rights and copyright? Fundamentally, copyright protects artistic and literary works. However what most designers don’t know is that they will need a registered design right to protect their products when they’re commercially applied.

To begin, let’s understand the key facts:

  1. copyright protects artistic and literary works in the context of 2D design and designs that have not yet been commercially exploited
  2. if you intend to mass manufacture your design, you’ll only be able to protect your product with a registered design right
  3. to have the best chance of successfully registering your design, you must keep it a secret and off the public record until your application has been submitted.

To illustrate this with an example, let’s say you’re a handbag designer and you make unique leather handbags targeted at the luxury market. Your bags have your logo embossed on the front and carry your logo on a small leather tag inside. You invest in professional photography and graphic design services to develop your promotional campaign and you plan to advertise via social, digital and print media.

As a creative innovator, you would ask yourself the following questions to confirm whether you’re covered by copyright protection or if you would need to apply to register your design:

In the future, do I want to mass manufacture my creation?

If so, you’ll need to protect your product with a registered design right to cover its overall appearance. Unless you want your designs to stay on paper, this is necessary to legally enforce your right over your design and deters others from copying your products.

Once you’re handbag idea goes from a sketch to the final prototype you would need begin the design rights application process. Remember, keep all sketches and prototypes confidential.

Will I be able to rely on copyright protection until I register my design?

Technically yes, until the design right is applied. However, we recommend that you avoid publishing your design and, where relevant, use non-disclosure agreements (NDAs) to limit the risk of a third party sharing details of your product before you submit your design right application. Our Design Examiners need to determine novelty in their examination, so if they find your product splashed across the Internet this will forego your eligibility to secure a design right.

Can my creation be covered by design rights and copyright at the same time?

No, a design object generally cannot be protected by both copyright law and designs law at the same time. This is because the Copyright Act contains provisions (often referred to as the copyright/design overlap provisions) which are intended to prevent dual protection for things which should really only be protected under the Designs Act 2003.

Going back to our example of the handbag designer, as the products are being produced for a mass market, they will not be protected by copyright. Assuming the handbags are new and distinctive and have not been published anywhere, then you would consider whether registering the design is viable. Once your handbag moves from a prototype to a mass produced item, your IP protection will transition from copyright to a design right, assuming you have applied and are eligible.

What about having a mix of other types of IP protection like a trade mark and a registered design?

Yes, you can secure multiple types of IP protection for one product and it’s likely that you’ll explore these options when mapping out your IP strategy.

As the handbags are embossed with a logo, just like the leading fashion houses, this can be protected with a registered trade mark.

Now what about the promotional material, photography and website content? This content will be covered by copyright. It’s important to note that copyright is an automatic right provided to the creator of the content, so if you’re paying a professional photographer or graphic designer, you may want to negotiate to have the copyright assigned to you or have an exclusive license to use the copyright. Remember to read the terms and conditions of contracts when working with contracted service providers to make sure you are the only person that can use and benefit from the creation of that IP.

Another thing to consider is if you want to include a confidentiality clause in your contract so the photographer or designer cannot disclose your images via their portfolio until you have decided if you want to register the design of your handbags.

How and when can I protect a print or pattern?

If you apply your print or pattern to an object then you’ll need to register a design right to protect it. Your print or pattern will automatically be protected by copyright until it’s applied to a product and commercially manufactured.

Where can I get a definitive answer for the type of IP protection my creation should have?

Read through our website and do your research. Once you’ve developed a basic understanding of the different IP rights, we recommend engaging an experienced attorney to receive advice for your specific situation.

More information

Published: 
8 June 2017

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