The Interplay Between Copyright and Design Protection
This article was written in 1994 and has since been extensively referenced in a number of leading publications such as the “Handbook on South African Copyright Law” and a number of others, making this article of relevance and importance still in February 2010.
There is a measure of overlap between protection granted to artistic works under the Copyright Act and protection granted to designs of articles by virtue of registration under designs legislation. No essential change has been brought about to this situation by the Designs Act, 1993. Over the years, however, design protection and copyright protection have had an uneasy relationship with each other and the legislature has vacillated between trying to separate the one form of protection from the other and to make them mutually exclusive to allowing unrestricted overlap between the two and thus complete dual protection for designs under both branches of the law. Prior to analysing the present position, it is instructive to take a brief overview of the historical evolution of the interplay between these two forms of protection which can be afforded to the designs of articles. At the outset, however, it is necessary to explain how such apparently diverse branches of the law can in principle grant substantially similar protection to designs of articles. This will be done by reference to the definitions of "artistic work" under the Copyright Act, 1978, as amended, and the definition of "design" under the Designs Act, 1993.
"Artistic Works" Under the Copyright Act
The Act defines "artistic work" as meaning:
"irrespective of the artistic quality thereof -
a. paintings, sculptures, drawings, engravings and photographs;
b. works of architecture, being either buildings or models of buildings; or
c. works of craftsmanship not falling within either para (a) or (b)."
Some of the terms used in the definition are themselves the subjects of definitions in the Act. We mention only that "drawing: is defined to include any drawing of a technical nature or any diagram, map, chart or plan."
Copyright subsists automatically in an artistic work provided certain conditions are met. The main conditions are that the work must be original, i.e. the product of independent effort on the part of the author or maker of the article, and the author of the work must be a South African subject or the subject of a country which is a member of the Berne Copyright Convention; alternatively, if the work is a published work, first publication must have taken place in South Africa or in a Berne Convention country.
The term "artistic work" is something of a misnomer. What is in effect included in this description are visual representations of ideas or the results of intellectual effort, in a material form.
Attention is drawn to the species of artistic works "drawings" and "works of craftsmanship". These species of artistic works comprise design drawings of articles of manufacture or industrial products and prototypes of such goods.
The qualified monopoly afforded to the copyright owner of an artistic works includes the exclusive rights to make reproductions or adaptations of such works. "Reproduction" in relation to an artistic work is defined to include a version produced by converting the work into a three-dimensional form, or, if it is in three-dimensions, by converting it to a two-dimensional form. "Adaptation" in relation to an artistic work is defined to include a transformation of the work in such a manner that the original substantial features thereof remain recognisable. Making a reproduction of something which is itself a reproduction of a copyrighted work also constitute reproducing that copyrighted work, albeit indirectly.
The copyright in an artistic work is infringed, inter alia, by reproducing, directly or indirectly, or adapting that artistic work in a two-dimensional or three-dimensional form, which artistic work can be a design drawing or the prototype of an industrial article. Infringement occurs when reproduction or adaptation takes place in relation not only to the work as a whole but also in relation to any substantial part thereof. In other words, making a copy of an industrial product which is derived either from an original drawing or an original prototype, can constitute infringement of the copyright in the underlying work if such copy is made without the consent of the copyright owner.
The Designs Act recognises two types of designs, namely aesthetic designs and functional designs. These two types of designs are defined as follows in Section 1 of the Designs Act:
· "´aesthetic design´ means any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof;"
· "´functional design´ means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works."
The common factor of the two types of designs is that it is a design applied to any article for the pattern or shape/configuration thereof. A design thus relates to the outward appearance of an article which must be an article of manufacture and must be intended to be multiplied by an industrial process.
In order to qualify for registration as a design a design must be new and original in the case of an aesthetic design, and new and not commonplace in the art, in the case of a functional design.
Registration of a design confers upon the proprietor the exclusive right to make, import, use or dispose of any article embodying the registered design or a design not substantially different from the registered design. Thus making a copy of a product embodying a registered design without the consent of the registered proprietor constitutes infringement of the design right.
Evolution of Dual Protection for Industrial Products Under Copyright and Design Laws
At the present time in principle manufactured products can be protected under both design and copyright law, subject to certain qualifications to which we will revert below, and copying the manufactured article can give rise to both copyright infringement and design infringement at the same time. These forms of protection have, however, travelled a long and winding road before reaching the present situation.
Modern design and copyright law in practical terms commenced with the Patents, Designs, Trade Marks and Copyright Act, 1916. This Act dealt with both designs and copyright and provided protection to manufactured products against copying by substantially the same means as provided by current law. However, at that time the legislature did not want manufactured products to enjoy dual protection and this Act set out to achieve a situation where in the field of manufactured products the two forms of protection were mutually exclusive. The way in which this was sought to be achieved was that it was provided in the copyright part of the Act that the copyright provisions would not apply to designs capable of being registered under the designs part of the Act, save where such designs, though being capable of being registered as such, were not used or intended to be used as models or patterns to be multiplied by any industrial process. In other words, if a design was not capable of being registered under the 1916 Act, the works corresponding to the design enjoyed full copyright protection. If, however, the design was capable of being registered as such, then copyright protection was forfeited unless the corresponding designs were not used nor intended to be used as the basis for industrial multiplication.
The copyright provisions of the 1916 Act were repealed by the Copyright Act, 1965, while the design provisions of that Act were repealed by the Designs Act, 1967. The 1965 Copyright Act also strove to make design protection and copyright protection in respect of industrially manufactured articles mutually exclusive but sought to achieve this situation in a different manner to that utilised by the 1916 Act. The 1965 Act did not provide that no copyright subsisted in artistic works which were capable of registration as designs but rather imposed limitations on the right of the owner of the copyright in a relevant artistic work to sue for infringement of copyright in certain circumstances. The copyright continued to exist but became partially unenforceable. Section 11 provided that such part of the copyright as would have fallen within the scope of a corresponding registered design became unenforceable and was in effect "forfeited". Case law established that the forfeiture of the enforceability of the copyright in an artistic work only applied where the design of the article depicted in the work was capable of registration as a design; where the design of the article was dictated solely by the function which the article had to perform and was thus unregistrable as a design, the forfeiture did not take place.
Under the 1965 Copyright Act if a design was inherently unregistrable the copyright which corresponded to it remained of full force and effect. If the design was inherently registrable under the Designs Act then that part of the copyright protection which overlapped with the protection which would have been afforded by a registered design became unenforceable.
The Copyright Act, 1978, repealed the Copyright Act, 1965, and initially no effort was made to prevent there being overlap in copyright and design protection for industrially manufactured articles. In 1983 the Copyright Act was amended and that amendment made artistic copyright unenforceable in certain circumstances. This occurred when authorised three-dimensional reproductions of artistic work had been made available to the public, whether inside or outside South Africa and someone, without the consent of the copyright owner, made three-dimensional reproductions or adaptations of that artistic work by copying the authorised three-dimensional reproductions of that work, provided the authorised reproductions which serve as the basis for the copying primarily have a utilitarian purpose and are made by an industrial process. In effect this amendment allowed so-called "reverse engineering" of industrial products to take place but only ten years after authorised derivative products of the artistic work had been placed on the market anywhere in the world, or after 1993, whichever was later. In 1988 this provision was amended so as to render the exclusion from copyright protection operable immediately the three-dimensional authorised reproductions had been made available to the public with the copyright owner´s authority.
Unlike in the 1916 and 1965 Copyright Acts, this exclusion of copyright protection for industrially manufactured articles was not directly related in any way to design protection. However, in principle the type of articles excluded from copyright protection are pre-eminently the type of articles for which designs can be registered provided the designs meet the prescribed requirements. By indirect means, therefore, a measure of overlap between copyright protection and design protection for industrially manufactured articles has been cancelled out.
Analysis of Common Areas of Protection Currently Granted by Copyright and Design Legislation
Under the Copyright Act industrially manufactured articles which are derived from artistic works in principle enjoy full copyright protection. Until three-dimensional utilitarian industrially produced derivatives of an artistic work have been issued to the public, the work enjoys full copyright and the right to restrain making three-dimensional reproductions of the work. Even after three-dimensional utilitarian industrially produced derivatives of the work have been issued to the public the copyright owner can still restrain the making of three-dimensional articles from the drawing or prototype itself or two-dimensional reproductions of such works. All that is excised from the copyright or its "forfeited" is the right to restrain the making of three-dimensional reproductions or adaptations by indirect copying from an authorised three-dimensional reproduction. For the rest the copyright remains intact. Before the forfeiture of protection takes place the authorised reproductions, i.e. the derivative articles, must primarily have a utilitarian purpose and must have been made by an industrial process. It is often difficult to determine whether an article primarily has a utilitarian purpose. It has been held that the question must be determined by an objective test; the intention of the manufacture of the product as to its use and the purpose of a particular purchaser in acquiring the article are irrelevant. In the Bress Designs case it was held that a lounge sofa having an unusual attractive design was an article which primarily had a utilitarian purpose.
The point of departure under the Designs Act is that in principle the outward appearance of an industrially manufactured article is capable of being registered as a design provided the requirements of novelty and originality, in the case of an aesthetic design, and novelty and not being commonplace, in the case of functional design, are met. However, the Designs Act makes provision for the following exclusions from this general rule:
•Solely functional features and methods or principles of construction cannot be the subject of rights in respect of an aesthetic design.
•Functional design rights cannot be obtained in respect of an article which is in the nature of a spare part for a machine, vehicle or equipment.
What follows is an analysis of in what circumstances articles are protected against reproduction by design law or copyright law, or both design law and copyright law, or by neither design law or copyright law. In this analysis the articles under consideration are industrially manufactured articles which are derived directly or indirectly from original drawings or prototypes and which meet the novelty and originality or not being commonplace requirement for registration as designs. It should be appreciated that in order to infringe copyright there must be substantial similarity between the competing articles and that similarity must be due to the later article being copied from the earlier article, while in the case of design infringement the only criterion is substantial similarity between the two articles; copying is not a requisite.
An article having an aesthetic design will not be protected under design law from being copied insofar as the features which are copied are necessitated solely by the function which the article is intended to perform or the subject of the copying is a method or principle of construction. Irrespective of the functional nature or otherwise of the features of that article it will be protected by copyright if what is copied is the original work itself or a two-dimensional reproduction of it. It will, however, not be protected against reverse engineering if the article being copied primarily has a utilitarian purpose. The fact that the article may have features of design which are necessitated solely by the function which the article is intended to perform does not necessarily have any bearing on whether that article primarily has utilitarian purpose. For instance, a toy is an article which does not primarily have a utilitarian purpose but it may nevertheless have purely functional features. Conversely, an article of furniture can have features which are purely aesthetic and thus qualify for design protection, but at the same time the purpose which the article serves is primarily utilitarian, i.e. being sat upon. On the other hand, if the article having an aesthetic design is registered as a functional design (which it can be) then the features of that article which are solely functional or the method or principle of construction of the article can be protected. Registration of the design of that article would, however, confer no design rights if the article is in the nature of a spare part for a machine, vehicle or equipment. In the case of that type of article no copyright protection against reverse engineering would be available either because the article obviously primarily has a utilitarian purpose.
In the case of an article with a functional design full copyright protection would once again be available against the making of reproductions from the original work or from a two dimensional reproduction of it. That article would also be protected by copyright against reverse engineering as long as it does not primarily have a utilitarian purpose. If it does have such a purpose no copyright protection against reverse engineering is available. The fact that the article has a functional design does not necessarily mean that it primarily has a utilitarian purpose. For instance, a rudimentary toy pistol could have a purely functional design but at the same time not fulfil a primarily utilitarian purpose. The method or principle of construction of an article having a functional design could be the subject of design rights but no such design rights can subsist in any article which is in the nature of a spare part for a machine, vehicle or equipment. Such goods having a purpose which is primarily utilitarian would not be protected by copyright against reverse engineering.
Articles in the nature of spare parts for machines, vehicles or equipment cannot enjoy functional design protection nor can they be protected by copyright against reverse engineering.They can, however, be the subject of aesthetic design provided aesthetic features are present and they can be protected by copyright from being copied if the copies are made from the original work or a two-dimensional version of it.
Articles which have a primary purpose which is not utilitarian, for instance, they are toys or ornaments, enjoy full copyright protection against reproduction, including by reverse engineering. If the designs of these articles are aesthetic registration as an aesthetic design will protect them from being copied save insofar as their methods or principles of construction or functional features are concerned. If the designs are registered as functional designs, whether such designs are aesthetic or purely functional, they will also be protected in that way from being copied even as to their functional features and methods or principles of construction.
The maximum period of protection of an industrially manufactured article under copyright is the lifetime of the author or maker of the copyrighted work from which the article is derived and a further period of fifty years. The maximum period of protection of an aesthetic design is fifteen years from the date of registration and that of a functional design is ten years from the date of registration. It will therefore usually happen that copyright protection in respect of an article as set out above will continue to subsist after design protection has lapsed.
It is apparent from the above that industrially manufactured articles cannot comprehensively be protected against unauthorised copying by design law or copyright law nor even by both cumulatively. The two forms of protection do not really complement each other and each by itself leaves considerable scope for the manufacturer’s position being abused by competitors. In order to minimise the scope for abuse as far as possible it is desirable that wherever feasible designs of articles should be registered so that the manufacturer can avail himself of the greatest measure of protection however inadequate that may be. Protection for industrially manufactured articles against copying has retrogressed as compared to that which was available during the currency of the 1916 and 1965 Copyright Acts. The policy pendulum has swung in favour of the copyist for better or for worse.
SPOOR & FISHER