Intellectual Property LPAB Winter Session 2012 Therese Catanzariti 5/28/12 Therese Catanzariti

 industrial revolution  Fabric design Manchester mills – linen, muslin, cotton, calico THEN any ornamentation on products THEN any visual features of products  1906 Designs Act  2003 Designs Act 5/28/12 Therese Catanzariti

 easy to manufacture  easy to use – “out of box readiness”  ergonomically sound  Good design is obvious. Great design is transparent  Everything is designed. Few things are designed well.  The design process, at its best, integrates the aspirations of art, science, and culture.  I don't design clothes, I design dreams - Ralph Lauren 5/28/12 Therese Catanzariti

5/28/12 Therese Catanzariti

5/28/12 Therese Catanzariti

 Appearance of product / visual features NOT function / performance (patent law) NOT method of construction NOT product itself – separate and distinct from product  In relation to product Microsoft Type Font – type font design not specify tangible thing Re Comshare Inc –computer screen display not product as ephemeral separate from computer screen  Monopoly – does not require copying  Term – maximum 10 years from filing date (5+ optional 5) – s46 5/28/12 Therese Catanzariti

"design", in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product – s5 Re Wolanski (necktie support) –monopoly for on particular individual and specific appearance “Visual feature” in relation to a product, includes the shape, configuration, pattern and ornamentation of the product –s7 Covers 3D (shape of box) and 2D (patterns) product – thing that is handmade or manufactured – s6 5/28/12 Therese Catanzariti

 registrable design if new and distinctive compared with prior art base for the design as it existed before the priority date – s15  Prior art base – s15(2) ◦ Designs registered ◦ Designs publicly used within Australia ◦ Published anywhere ◦ NOT published without owner’s consent – s17(2) ◦ NOT artistic work not industrially applied – s18 ◦ NOT prescribed by regulations – s17(1) 5/28/12 Therese Catanzariti

 new - new unless it is identical to a design that forms part of the prior art base for the design – s16(1)  distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base – s16(2) 5/28/12 Therese Catanzariti

 more weight to similarities than differences – s19(1)  “informed user” – standard of person familiar with product - s19(4) Review 2 v Redberry – familiarity with fashion trends, not necessarily fashion designer  factors – s19(2) ◦ State of development of prior art base ◦ Whether statement of newness and distinctiveness identifying visual features as new and distinctive ◦ If only part, amount, quality and importance of that part in the context of the design as a whole; and ◦ regard to freedom of creator to innovate 5/28/12 Therese Catanzariti

 combination dual lens rear lights for motor vehicles  absence of visible screws  different visual features of the rear or base views  cut out or recess at end of lamp  the sloping, rounded mounting brackets surrounding the lenses 5/28/12 Therese Catanzariti

 Designer – person who created design  Employer if created in course of employment  Person who commissioned under contract  Assignee  Legal personal representative 5/28/12 Therese Catanzariti

 owner entitled to register – s13  May file ◦ Common design for number of products – s22 ◦ Multiple designs for one product – s22  File ◦ 5 copies of each representation of each design – s21 design must be reasonably clear and succinct - appear with reasonable clarity and without requiring unreasonably prolonged or complicated series of deductions from registration – Keller v LED ◦ (optional) statement of newness – s69  May be taken into account for infringement – s19  No pre-registration examination ◦ IP Australia only checks formalities – s39, 40 ◦ IP Australia only examine post grant, on request – s63 ◦ need examine before bring proceedings – s73 5/28/12 Therese Catanzariti

 Applicant may elect publication or registration – s35  Publication not stop infringement BUT stop other registration - part of prior art base  Useful if large number of designs  similar to honest concurrent user  May withdraw registration and request publish only – s38 5/28/12 Therese Catanzariti

 to make or offer to make a product which embodies the design;  to import such a product into Australia for sale, or for use for the purposes of any trade or business;   to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product;  to use such a product in any way for the purposes of any trade or business;  to keep such a product for the purpose of such sale, hire or use  to authorise another person to do such things 5/28/12 Therese Catanzariti

 makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design;  imports such a product into Australia for sale, or for use for the purposes of any trade or business;  sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product;  uses such a product in any way for the purposes of any trade or business;  keeps such a product for the purpose of sale, hire, disposal or use 5/28/12 Therese Catanzariti

Owner can commence proceedings – s73 NOT exclusive licensee 1906 “fraudulent or obvious imitation” 2003 – identical or substantially similar in overall impression more weight to similarities than differences Foggin v Lacey (Orgasmatron) – compare to design not to product 5/28/12 Therese Catanzariti

 Person use or authorise use of product with registered design  Product is component part of complex product  Use for purpose of repair of complex product to restore its overall appearance in whole or part 5/28/12 Therese Catanzariti

 Injunction  Damages  Account of profits  Additional damages – s75(3)  Court may not award damages or account of profits or reduce damages if – s75(2) ◦ not aware design registered AND taken reasonable steps to ascertain if registered  Prima facie registered defendant aware if product or packaging say registered design – s75(4) 5/28/12 Therese Catanzariti

 Copyright term life+70 years copyright in artistic work include right to reproduce => Copyright rights include creating products  limit copyright protection for essentially industrial products  Part III, Division 8, Copyright Act 5/28/12 Therese Catanzariti

5/28/12 Therese Catanzariti

5/28/12 Therese Catanzariti

 “corresponding design” - visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work – s74  embodied - woven into, impressed on or worked into the product Polo v Ziliano Holdings – Ralph Lauren polo logo not embody design, as embody needed to give a material or discernible form to abstract principle 5/28/12 Therese Catanzariti

 Not infringe copyright in artistic work to reproduce work by embodying work or corresponding design in product ◦ If corresponding design registered– s75 ◦ If corresponding design unregistered but ◦ applied industrially to products Regulations – more than 50 units Press Form v Henderson –may be less than 50 if complex articles AND products sold, let for hire or offered or exposed for sale or hire – s77 Exception for works of artistic craftsmanship Sheldon v Metrokane – bottle opener Burge v Swarbrick – boat plug and mouldings 5/28/12 Therese Catanzariti