LW4641 Chap.10 Where Copyright Meets Design
Where Copyright Meets Design
Two regimes, one shape
Design covers product, industrial, fashion, packaging and many other fields, and it is costly and valuable work. Hong Kong regulates it through the Registered Designs Ordinance (Cap 522) and, for chips, the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445).
A registered design protects the appearance of a new design, but appearance is also what copyright protects in artistic works, so one product can be protected twice.
Copyright reaching a design directly
An artistic work includes graphic works, photographs, sculptures and collages irrespective of artistic quality, works of architecture and works of artistic craftsmanship.
The design cases show how far the categories stretch. In Wham-O v Lincoln Industries a flying disc and its mould were engravings and a wooden prototype was a sculpture, though the moulded discs were not. Breville v Thorn EMI treated sandwich-maker moulds as sculptures.
Greenfield Products v Rover-Scoot Bonnar refused to call a lawnmower part an engraving, and in Hensher v Restawhile a prototype chair was not a work of artistic craftsmanship, with the judges divided on whether craftsmanship means hand made.
Copyright reaching a design indirectly
Preliminary design drawings are graphic works protected irrespective of artistic quality, and in exceptional cases design documents such as a knitting pattern are literary works.
Making the article can then copy the drawing, because a three-dimensional copy of a two-dimensional work is still a copy.
How the Ordinance trims the overlap
Section 86 defines a corresponding design as a design that, applied to an article, would produce a copy of an artistic work.
Under s87, once the owner exploits the work by making articles industrially and marketing them, copyright in making such articles lasts twenty-five years from first marketing if the design is registered and fifteen if it is not. Without industrial exploitation, or for copying in other things, normal protection continues.
A registered design also protects against independent creation that is not substantially different, which copyright never does.
What this chapter covers
- 01
Design practice and the two Hong Kong ordinances
- 02
Artistic works irrespective of artistic quality
- 03
Engravings, sculptures and artistic craftsmanship
- 04
Design drawings as indirect protection
- 05
Corresponding designs under s86
- 06
The twenty-five and fifteen year rules in s87
- 07
Why a separate design system exists
Worked example · free
Work out what copyright is left in a mass-produced object
- 3Identify the artistic work and the corresponding design.
- 3Apply s87 to the rival's figurines.
- 3Distinguish the poster printer's use.
Key terms
- Artistic Craftsmanship
- A category of artistic work combining craft and artistry; a useful object can qualify, though a prototype chair did not in Hensher.
- Industrial Process
- Manufacture of articles in quantity; exploitation by an industrial process and marketing triggers the s87 reduction in copyright term.
- Indirect Protection
- Copyright in the drawings or documents on which a design is based, infringed when the article copies them.
- Engraving
- A graphic work that can include surface decoration on an object, even functional decoration, as the Wham-O court accepted for a flying disc.
Where Copyright Meets Design FAQ
Can a product design be protected by copyright in Hong Kong?
Yes, in two ways. The product itself may be an artistic work, such as a sculpture, an engraving or a work of artistic craftsmanship, and the drawings it was made from are graphic works protected irrespective of artistic quality. Once the design is exploited industrially, however, s87 shortens the copyright in making such articles.
How long does copyright last in a mass-produced design?
If the owner exploits the artistic work by making articles industrially and marketing them, copyright in making such articles lasts twenty-five years from the end of the year of first marketing where the design is registered, and fifteen years where it is not. Other uses of the work keep the normal term.
Why register a design if copyright already protects it?
A registered design is stronger in two ways the lectures stress. It protects even against someone who created a similar design independently, as long as it is not substantially different, and infringement needs only proof of no substantial difference rather than copying and substantial similarity. Registration also gives the longer twenty-five year period under s87.
Exam move
Practise the s87 arithmetic on three invented products until it is automatic: find the year of first marketing, check whether the design was registered, add twenty-five or fifteen to the end of that year, and compare the result with the date of the defendant's act. The calculation takes a minute and decides whether the rest of the answer matters.
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