High Court yacht case emphasises importance of design registrations

A recent High Court decision has shown why it can be important to obtain registered design protection for new and valuable designs.

The dispute

The decision of the High Court in Burge v Swarbrick put an end to a four year legal battle between two yacht designers. Mr Swarbrick had designed and marketed a yacht known as the JS 9000. Mr Burge and the other respondents had copied the design of that yacht hull for yachts that they were manufacturing and selling. Mr Swarbrick sued for copyright infringement, and was initially successful.

The copyright/design overlap provisions

The relevant legal question for the High Court was whether what are known as the ‘copyright/design overlap’ provisions of the Designs Act prevented Mr Swarbrick from enforcing his copyright in the yacht hull design against Mr Burge. Legislative policy in Australia encourages the registration of new designs by generally preventing designers from relying on copyright law to stop their original designs from being embodied in mass-produced products. For such mass-produced products, there is no unregistered design right in this country, meaning that designers will generally (subject to the exception discussed below) only have enforceable rights in their designs if they are registered under the Designs Act. If a design meets the requirements under the Designs Act, including that it is new (ie not publicly disclosed) and distinctive, the designer will then have a 10 year monopoly over that design—rather than a much longer monopoly under the Copyright Act.

The exception Mr Swarbrick tried to rely on

The starting position for Mr Swarbrick was that he could not enforce his copyright against Mr Burge or the other respondents to prevent the mass-production of yachts bearing Mr Swarbrick’s hull design. However, there is an exception in the copyright/design overlap provisions for where the copyright work is a ‘work of artistic craftsmanship’. Copyright in a ‘work of artistic craftsmanship’ can still be enforced, even though the designer could have sought registered design protection. The vexed question, though, is what is a ‘work of artistic craftsmanship’?

At trial, and on appeal to the Full Federal Court, all four judges held that the yacht hulls were a ‘work of artistic craftsmanship’. This allowed Mr Swarbrick to enforce his copyright against Mr Burge and the other respondents. However, on appeal to the High Court all five judges ruled that the yacht hulls were not a ‘work of artistic craftsmanship’.

The High Court’s decision

In reaching this conclusion the High Court looked back at the history of the inclusion of ‘works of artistic craftsmanship’ in the Copyright Act, finding that it was originally introduced to protect the works of craftsmen such as silversmiths, potters, woodworkers, hand-embroiders and similar. To resolve whether the yacht hulls were a ‘work of artistic craftsmanship’ or not the High Court looked at the extent to which those hulls had been designed for the purpose of achieving aesthetic appeal, and the extent to which the design of the hulls had been constrained by a need to achieve functional requirements (in particular, speed). The High Court viewed the functional requirements, rather than aesthetic requirements, as dominating the design choices made, and decided that the hulls were not ‘works of artistic craftsmanship’. Mr Swarbrick was therefore unable to prevent copying of the JS9000 hull design.

The lesson

The main lesson from this case is that where a person or company develops a new design, which is considered to have significant commercial potential, then it would be a good idea to speak with a legal adviser (before disclosing or commercialising the design) about the possibility of obtaining registered design protection.

This article was written by Craig Smith, Senior Associate of the Sydney Litigation team.

For more information on this article, please contact Campbell Thompson, Partner in the Melbourne Litigation group, and Kathryn Everett, Partner in the Sydney Litigation group.

Name : Campbell Thompson
Title : Partner
Office : Melbourne
Phone : +61 3 9288 1820
Fax : +61 3 9288 1567
Email : campbell.thompson@freehills.com

Name : Kathryn Everett
Title : Partner
Office : Sydney
Phone : +61 2 9225 5079
Fax : +61 2 9322 4000
Email : kathryn.everett@freehills.com