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Industrial Designs, "artistic craftsmanship" and possible copyright protection- a new case

Although copyright law can protect the value of your - or your client's -industrial designs, the designs need to be a 'work of artistic craftsmanship'. A recent High Court shows it might be safer to register the design. Patrick Shing

A famous naval designer John Swarbrick - who designed the 12 meter yachts Kookaburra I and Kookaburra II - designed a new yacht, the JS 9000. He built a full scale model.

Mr Burge used the full-scale model to reproduce the JS 9000. The designer Swarbrick sued Burge for infringing the copyright in the mould of the full scale model.

In the High Court, Mr Swarbrick lost his copyright claim because his work didn't amount to 'a work of artistic craftsmanship.' The learning from the case is that people with industrial designs should consider registering them.

How do you protect designs?

To protect design rights, a designer can either:

  • rely on copyright law - which provides protection for 70 years after the death of the creator; or
  • register a design which provides protection for up to 10 years.

However, copyright law does not protect designs used, or intended to be used, in an industrial process. This limit aims to avoid the potentially stifling effects of recognising lengthy copyright protection for industrial designs. The limit is to some extent balanced by, effectively, an exception which gives copyright protection to 'a work of artistic craftsmanship.' This is the phrase considered in the recent High Court case of Burge v Swarbrick.

A design as a 'work of artistic craftsmanship'

The Court rejected Mr Swarbrick's claim and found that the design of the yacht was not a 'work of artistic craftsmanship'. The Court did so on the basis that:

  • any 'real artistic quality' essential for works of artistic craftsmanship may be constrained by the design's functional requirements or commercial considerations.
  • that constraint may be so significant that the design can not be accurately described as 'a work of artistic craftsmanship' for the Copyright Act.
  • the relevant test to determine what is a 'work of artistic craftsmanship' is not decided by reference to the intentions of the designer. Instead it is an objective test for the Court.

For Mr Swarbrick's yacht, the Court ruled that the full scale model of the JS 9000 was not a work of artistic craftsmanship because it was designed primarily for functional rather than aesthetic reasons. Effectively, the 'matters of visual and aesthetic appeal were but one of a range of considerations in the design' and were of secondary importance compared with the functional objective of developing a high-speed yacht.


The High Court said that:

'it may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to "a work of artistic craftsmanship". However, determining whether a work is "a work of artistic craftsmanship" does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations.'

The Court's decision is unlikely to afford great comfort for designers or their clients in respect of designs that are prepared in potentially ambiguous areas which may include printing, weaving and furniture making. Accordingly, designers or their clients who consider there may be prospects of designs being used for mass production should seek advice on how best to protect their interests in the original design.

More information

If you would like more information concerning this topic, or protection of intellectual property rights generally, please contact Maddocks and ask for a member of our Intellectual Property & Technology team:

  • in Sydney on 02 8223 4100 or
  • in Melbourne on 03 9288 0555.

Lawyer in Profile

Paul Ellis
Paul Ellis
Special Counsel
PH: 61 3 9258 3524

Paul is a Special Counsel in the Maddocks Commercial team with particular expertise in commercial agreements for the supply of goods and/or services, the Personal Property Securities Act 2009, the National Consumer Credit Protection Act 2009 and the National Credit Code and the Australian Consumer Law.

Paul's key areas of practice include:

  • Australian Consumer Law;
  • credit and securities law;
  • commercial law and contracting;
  • government contracts; and
  • trust and superannuation law.

Before joining Maddocks, Paul was employed for 13 years with the Victorian Department of Justice, principally as a Deputy Registrar in the Victorian Magistrate's Court, but also as a legislation, policy and project officer for the Department.