The following note deals with the creation of IP by an advertising agency, remuneration and the creative possibilities that copyright offers. This was originally posted on the blog of marketing management gurus TrinityP3
The original note can be read here
Perhaps the number one (silly) copyright misconception is that copyright protection is somehow obtained by mailing your work to yourself and retaining the unopened envelope. This is commonly known as Poor Man’s Copyright.
“Symbolic Meaning”: You expect to lie on a couch with the bearded therapist prying into your relationship with your mother through interpretation of your dreams using Jungian symbolic meaning or Rorschach inkblot tests… but it is not so hard …Here we explain the TM, R Circle and Copyright symbols without the beard or couch.
I confess to being inspired by Harry Pearce and his book Conundrums – a beautiful collection of typographic puzzles.
Being a typophile, I thought I’d try my hand at a few of my own.
So, here begins a series of typographical conundrums with an IP (intellectual property) bent, fashioned after Harry Pearce and constrained to the same rules as his: one box, two colours, one typeface.
One a week, so watch this space.
IP Conundrum #1
You are almost ready to be entrusted with the secret ingredient of my secret ingredient soup. And then you will fulfill your destiny and take over the restaurant just as I took it over from my father who took it over from his father who won it from a friend in a game of mahjong.
Mr Ping to his son, Po
Kung Fu Panda (2008), Dreamworks
We are today all familiar with the concept of the signature dish, or “secret ingredient soup”, by which an individual chef or restaurant may be defined. Sydney chef Tetsuya Wakuda’s confit of ocean trout with konbu and fennel is considered one of the most iconic dishes in the world. Thus a signature dish is much more than a plated product: it is imbued with the personality of the individual chef – as definitive as an author’s voice or an artist’s style. Over time, it may come to identify a particular establishment such as Waldorf salad originally created at the Waldorf-Astoria Hotel in New York in the 1890s.
So what is the design process behind creating a signature dish?
In reality, it is created over time or develops through circumstance and the creativity of the chef. For example, Tetsuya’s famous dish is said to have started life as a salmon dish but developed into a dish of ocean trout (with several re-writes of the recipe) as a result of salmon not being available year-round back in the 1990s. Brisbane chef Philip Johnson of e’cco Bistro describes signature dishes as happy accidents. His signature dish of mushrooms on toast evolved from something in London, with his own creative twist: using olive toast and adding truffle oil and parmesan. It has remained on the menu at his restaurant for 15 years.
The popularity of a signature dish promotes bookings and hence forms a valuable asset for a restaurant.
So how is a signature dish protected?
Assuming most signature dishes are committed to material form (e.g. a recipe), copyright protects the specific expression of the recipe created by the chef (i.e. the words as expressed by the author). This means no one can reproduce, publish, translate, distribute or communicate (make available online) your specific expression of the recipe (or a substantial part of it) without your permission.
However, no one needs permission to use the information contained in a recipe (i.e. to follow the recipe). This is because copyright does not protect the information (e.g. ideas, lists of ingredients, methods or techniques for making a dish), only the specific way in which the information is expressed. “Were the law otherwise, everybody who made a rabbit pie in accordance with the recipe of Mrs Beeton’s cookery book would infringe the literary copyright in that book”: Cuisenaire v. South West Imports Limited [1969] S.C.R. 208 (Supreme Court of Canada).
Likewise, if someone watches you preparing a dish and writes down the ingredients and instructions (method) in their own words, this does not infringe copyright in the recipe. For the same reason, there is nothing to prevent “reverse engineering” of a completed dish to identify flavours and ingredients, or to stop other chefs or cooks from drawing inspiration from an idea underlying a recipe. However, giving credit to the source of inspiration is common among many chefs – and good practice.
With popular interest in celebrity chefs and the resurgence of interest in home cooking, cookbook sales have surged 9% according to Nielson figures published in August 2010, despite declining book sales plaguing the rest of the book publishing industry. It seems that many celebrity chefs are not afraid to share the recipes for their signature dishes with the public. A quick search on Google can locate a number of recipes for Tetsuya’s ocean trout. His recipe is also published in various books and the source of inspiration for other chefs, cooks and writers. Yet the waiting list for a booking at his famous restaurant remains strong and the signature dish remains a popular first choice among diners. Similarly, diners are willing to pay for a mushroom on toast dish that its own creator has stated could easily be made at home.
Clearly a signature dish is more than the underlying recipe or the sum of its ingredient parts, and restaurants are not relying purely on copyright to protect the commercial success of their signature dishes. A signature dish articulates the skill, experience and creativity of the chef (restaurant). As such, it represents the brand of the chef and his or her restaurant and forms a key brand asset for a restaurant. Signature dishes can be as important a part of a restaurant’s (and chef’s) brand as the decor, the menu and the quality of the service. An iconic signature dish can serve to distinguish a chef/restaurant as much as the restaurant’s name.
The strength of the restaurant’s brand (built around a signature dish or dishes) attracts patrons and has led to the cult of the celebrity chef. This has also led to extension of the chef/restaurant brand to merchandise such as branded food products (e.g. sauces, butters, branded wines, olive oils), cookware and clothing. Thus brand protection is important to continuing commercial success and to driving interest in a chef/ restaurant…it attracts diners who want to try the chef’s version of a signature dish – even if they could make the dish themselves. The commercial value is captured and protected through protection and exploitation of the brand, not just the copyright.
To quote again from Kung Fu Panda, once Po has earned the privilege of learning the secret ingredient, his father Mr Ping reveals that “The secret ingredient is…nothing!” Similarly, there is no “secret ingredient” to many signature dishes: it is the chef who transforms the dish into something special. The brand of the chef is part of the magic.
Po: Wait, wait… it’s just plain old noodle soup? You don’t add some kind of special sauce or something?
Mr Ping: Don’t have to. To make something special you just have to believe it’s special.
Kung Fu Panda (2008), Dreamworks
This article was originally published in Issue 33, October 2010, of the industrial design magazine Curve
Authorship as identity
We all understand what it is to be an author. We identify series of books through characters. Think: Harry Potter. The author’s individual style also identifies the author as the common source of texts. Think: Dr Seuss.
In primary school we create our own stories and other works, and so engage the world as an author from a young age.
In his 1967 essay The death of the author, French literary theorist and philosopher Roland Barthes challenges the idea that a text can be attributed to a single author. Barthes argues that a text is never original because it is a reflection of references from a multitude of traditions and quotations from innumerable cultural centres. Thus every piece of writing reflects a fabric of inputs rather than a single voice.
Authorship as currency
In 1985 the International Committee of Medical Journal Editors sought to establish uniform standards for what contributions merit authorship in biomedical journals. This proposal was an attempt to stamp out the practice of “gifting” authorship in exchange for materials, research subjects, career advancement and so on.
Legal significance
The use of authorship as a bartering tool reflects its inherent value. Authorship is valuable because the right to own IP devolves from authorship.
Copyright
For copyright purposes, the author is the person who expresses an idea in tangible form (e.g. writing, a drawing). This is even if the idea was supplied by another person. Consider the following examples (based on legal cases):
The author is the person who produces an “original” work through the exercise of labour, skill and judgement. Merely transcribing material supplied by another person does not constitute authorship.
The default position for copyright is that the author is the owner. This is subject to:
Registered designs
Authorship of a registered design is attributable to the person who conceives the design (the relevant shape, configuration, pattern or ornamentation) and reduces it to visible form (e.g. by drawing it up or making a model).
Disputes may arise where one person conceives a concept for a design, puts it into a rough material form then contracts a second person to draw up the final design, If the first person leaves only minor details to the choice of the second person then the first person is the author. Conversely, if the instructions of the first person leave practically all to the second person, the author is the second person. Ownership of a registered design devolves from designership of the design.
The default position for registered designs is that the actual designer is the author and owner of the design and is entitled to apply for registration as the owner of the registered design. This is subject to:
What if a final design comes about through functional or practical production considerations rather than aesthetic considerations? Is a person who contributes technical expertise an author?
In the design of a security glass brick designed to be used in situations where greater structural strength is required (e.g. jails), a manufacturer of glass bricks relied heavily on technical expertise of a manufacturer of strengthened glass to arrive at the final design. The Australian Designs Office found that the contribution of the toughened glass manufacturer was sufficient to establish joint authorship in the final design – the result being that it was entitled to be recorded as a joint owner of the application to register the design: Glass Block Constructions (Aus) Pty ltd v Armourglass Australia Pty Ltd [2005] ADO 1. The relative contributions of two parties engaged in developing a product for manufacture were sufficient to establish designership rights for both parties.
Another common situation is when one party develops IP rights incidental to development of a product owned by another party. In Dennis Gravolin and Trailer Vision Pty ltd v Lomac Holdings Pty Ltd as trustee for Lomac Trust [2007] ADO 7, the owner of a patent for a trailer plug obtained assistance from a manufacturer to manufacture a trailer plug product. The manufacturer filed applications to register designs for a number of trailer plugs. None of the design applications related to the actual product that was the subject of the arrangement between the parties or a confidentiality agreement signed by the manufacturer – there were clear differences in the shape and configuration of the housing of the patented plug and that of the relevant design applications. The dealings between the parties were silent on IP created by the manufacturer incidental to the arrangement with the patent owner. Therefore, the manufacturer was free to develop incidental IP rights with no obligation to disclose them to the patent owner. There was no evidence to establish any right to authorship (through contributions to the development of the designs) by the patent owner.
This decision illustrates that the owner of certain IP rights (e.g. the patent owner) does not necessarily own all rights incidental to arrangements with other parties relating to their IP. The manufacturer’s design rights were created independently from the patent owner’s rights and, absent any circumstances to establish the contrary, the manufacturer owns them.
Patents
When is a person who contributes to an invention entitled to claim inventorship? When one person has a general idea of what is required but does not necessarily know how to put those ideas into effect and a second person does, then both are the inventors: Row Weeder v Nielsen (1997) 39 IPR 400. The question might be whether the invention would have occurred without the second person’s involvement: Costa v GR & IE Daking (1994) 29 IPR 241. The contribution of the second person needs to have a material effect on the final concept of the invention: Row Weeder. There is no joint inventorship with a person who bases the claim on knowledge derived from the true inventor: Stack.
Practical significance
The unifying element for joint authorship, designership and inventorship is the involvement of multiple people in an activity of original creativity. Title devolves from the creator of the work to the person obtaining the legal monopoly right.
For designers (other than employees), the default position for:
This assumes the designer is making a sufficient, original contribution to establish authorship, designership or inventorship. As the default position for ownership can be altered by agreement, designers need to be able to identify when steps are required to secure ownership or when you are the owner. Agreements about IP ownership must be written. By understanding your rights, you may have leverage to insist on ownership or be adequately compensated in dealings with clients.
This post originally appeared as an article in Issue 32, July 2010, of the industrial design magazine Curve
“Oh how life can be” is the final lyric of “Kookaburra sits in the old gum tree” for which it seems fitting that a song published in a Girl Guides’ magazine is causing problems for “Men at Work”.
“Spicks And Specks” – a public broadcasting rock comedy show – alerts a potential breach of copyright for which the owners were not aware of.
Sweet irony that the Girl Guides rise above Men at Work in the battle of the sexes.
Men at Work: “Can’t you hear, can’t you hear the thunder? You better run, you better take cover”
only to be replaced by:
“Laugh, Kookaburra! Laugh, Kookaburra! Gay your life must be”
“[We] resembled each other like two drops of water, but we had different reflections”.
Salvador Dali, The Secret Life of Salvador Dali
Artistic copyright and registered design rights can each provide protection for a product design but, taking a leaf from Salvador Dali, they provide different reflections. One can long survive the other, or be extinguished by it. The art is in finding the gaps and exploiting them as best you can.
This post addresses the overlap (and gaps) between what is known as “artistic copyright” and design protection in Australia. We present a series of theoretical scenarios involving some of Dali’s designs to illustrate the boundaries of copyright protection for product design.
We continue the Dali theme, because Dali’s work typifies that of many designers in the sense that it spans a broad range of industrial or commercial spheres (see the box). We have taken great artistic licence in relation to actual events (we made them up), timing (now) and location (Australia).
Scenario 1: copycat design when there is no design registration
Dali creates a new design for a sofa in 2007: the Mae West Lips Sofa. He has created some design drawings and a handmade wood and satin prototype but not applied to register the design.
He displays the prototype sofa at a design fair later that year and receives interest from manufacturers. As a result, the sofa is made by Vogue Manufacturer (Vogue), a high end manufacturer with a strong reputation in design, under licence from Dali. The Mae West Lips Sofa is a runaway success, with the first run of 50 sofas sold out at the product launch in 2008.
Rogue Manufacturing (Rogue) is always scouting for new designs with consumer appeal. It buys one of the Mae West Sofas, and makes drawings and measurements from it in order to copy it and make its own line of lip-shaped sofas to sell to the public.
Dali comes across Rogue’s sofas. He has no design registration for his sofa design. Can he stop Rogue on the basis of copyright infringement?
Turning first to Dali’s design drawings, they fall into the category of works known as “artistic works” under the Copyright Act 1968 (s10). Therefore, assuming they are “original” and created by Dali, he will have copyright protection in his design drawings as “artistic works”.
Dali may have created more than one design drawing – perhaps different perspectives and several detail drawings. Each of those drawings is potentially a separate and independent copyright work (to the extent that each is original and not a direct copy of an earlier version). In assessing whether copyright has been infringed, a critical first step is to consider – what are the copyright works and which of those works has been infringed?
What about the handmade sofa prototype? It is an original artistic work in its own right and therefore has copyright protection independent of Dali’s drawings. Therefore, Rogue’s actions may have infringed copyright in one or more drawings as well as the sofa prototype.
Thus a single product design can encompass a body of copyright works, each separately protected by copyright (and indeed potentially other intellectual property (IP) rights). The copyright works recognised in law do not necessarily correspond precisely to the “thing” protected (here, a sofa). Conversely, the physical product or object (sofa) protected is often an aggregation of copyright works, each capable of being independently and separately infringed. It is important to recognise the range of possible copyright works in a single product.
Returning to Rogue’s activities, the drawings and sofas it makes are 2D and 3D reproductions, respectively, of Dali’s design drawings (or at least one of his drawings, but for convenience they will be referred to as drawings). Under the Copyright Act 1968 (Cth) (s21), a 3D artistic work is reproduced if a version of the work is produced in 2D form, and vice versa. However, are Rogue’s 2D and 3D reproductions infringing?
The Copyright Act provides a defence to infringement to reproduce an artistic work by embodying that work in a product if a “corresponding design” of the artistic work has already been industrially applied by or with the licence of the copyright owner (section 77).
In other words, if a corresponding design (namely, Vogue’s sofas) of Dali’s artistic works is applied to an article (50 copies made and sold) then Rogue may have a defence that effectively excludes Dali’s copyright protection in his artistic works. However, all may not be lost because the defence under s 77 does not apply if the artistic work is a “work of artistic craftsmanship”.
Is Dali’s sofa prototype a “work of artistic craftsmanship”? Quite likely, since it possesses aesthetic qualities and, in making his sofa prototype, Dali had significant freedom of design choice relatively unconstrained by the function or utility of the article: see Burge v Swarbrick [2007] HCA 17; (2007) 234 ALR 204. Assuming that Dali’s sofa prototype is a work of artistic craftsmanship, then copyright protection is not excluded even after industrial application of the work. Therefore, production and sales of the sofas by Vogue does not preclude copyright protection in Dali’s sofa prototype.
Conclusion: Rogue’s drawings and sofas infringe copyright in Dali’s sofa prototype.
In relation to Dali’s design drawings, they are not works of artistic craftsmanship and therefore copyright protection in the drawings was extinguished by industrial application of the design drawings to sofas made and sold by Vogue.
Conclusion: Rogue’s drawings and sofas do not infringe copyright in Dali’s design drawings. However, as Rogue’s conduct infringes Dali’s copyright in the prototype, Dali can prevent Rogue from continuing to make and sell the sofas.
Scenario 2: copycat design when there is a design registration
What if Dali had successfully registered the design in relation to articles of furniture?
Dali would have to rely on the design registration to stop Rogue from making and selling copycat sofas. All artistic works (whether a work of artistic craftsmanship or other form of artistic work) lose copyright protection upon design registration of a corresponding design. Therefore, Dali would lose copyright protection in both the drawings and the prototype.
In Australia, design protection is limited to 10 years. As a result, Dali would have no recourse under copyright or design laws to stop Rogue from making and selling copycat sofas after his design registration has expired.
Conversely, if Dali had not registered the design, he would retain copyright in the sofa prototype for life plus 70 years. The risk, however, is that if a court held that the sofa prototype is not a work of artistic craftsmanship, Dali would be left without either copyright or design protection from the day Vogue first offered its sofas for sale.
Scenario 3: the copy is not identical
Let’s assume that Rogue does not make drawings of the sofa but instead makes a mould from the sofa and has it manufactured as a plastic injected bench seat. Can Rogue be stopped from selling the injection moulded version of the design?
Under copyright law
Under copyright law, an artistic work can be infringed by reproduction of the work or a substantial part of the work. The term “substantial” refers to quality rather than quantity. Whether a part is “substantial” depends on whether it is an essential part of the work – a vital or material part, even if only minor in quantity.
The injection moulded product would infringe a substantial part of Dali’s artistic work, assuming that the overall appearance of Dali’s work, including in shape and dimensions, is reproduced. As copyright protection in the drawings has been lost (as described in scenario 1), in order to establish infringement Dali’s sofa prototype would need to be a work of artistic craftsmanship.
A key aspect of copyright protection is that there must be a causal connection between the thing copied and the copy. In other words, if Rogue had independently come up with the injection moulded design of a bench seat shaped in the form of lips (and can prove this) then Dali has no claim to copyright infringement. Copyright does not prevent independent creation of the same expression of an idea. In contrast, independent creation is not a defence to infringement of a design registration.
Under design law
Assuming Dali has a design registration for his design in relation to articles of furniture, would the registration be infringed?
Rogue’s injection moulded bench seat is not identical to Dali’s design. The test then becomes whether Rogue’s sofa is “substantially similar in overall impression” to Dali’s design. “Design” is defined in the Designs Act (s5) to mean the overall appearance of the produce resulting from one or more visual features of the product.
The comparison is made between the visual features of the allegedly infringing product and those of the design registration, not Vogue’s sofa (see LED Technologies v Elecspress [2008] FCA 1941).
Visual features include the “shape, configuration, pattern and ornamentation of the product” but do not include the feel of the product or the materials used (s7 Designs Act). More weight is given to similarities than differences and consideration is given to the quality and importance of similarities in the context of the design as a whole. Therefore, similarities between the shape and configuration of Rogue’s sofa and those of Dali’s design registration (the lip shape, positioning of various components relative to each other) would be important factors, not the differences in materials used (wood and silk versus plastic). On this basis it is likely that Dali’s design registration would be infringed.
Scenario 4: print reproduction
Rogue obtains a copy of a marketing flyer distributed by Vogue at the product launch. The flyer contains a sketch of by Dali of the sofa. Rogue makes its own flyer using Vogue’s flyer “as a guide” but includes a copy of Dali’s sketch. Rogue has infringed copyright in Dali’s sketch by reproducing it in a flyer: see Caroma Industries Ltd v Technicon Industries Pty Ltd [2008] FCA 1465.
Assuming Dali’s sketch for the flyer was a separate sketch made for marketing purposes to his design drawings, this is a separate artistic work with copyright protection independent of the design sketches and prototype. Therefore, copyright in Dali’s sketch is not extinguished by his design registration and Rogue’s flyer infringes Dali’s copyright.
Scenario 5: registration of a 2D design
In collaboration with a fashion designer, Dali creates a trompe l’oueil painting as a fabric design which is printed on fabric and used to create an evening gown. Betty sees the design and copies it for use as a pattern on wallpaper as well as a print for t-shirts.
Assume the design is registered in relation to textile fabrics and garments. The design registrations would not prevent use on wallpaper. However, as the registered designs are purely representations of two-dimensional features, they are not “corresponding designs” under s74 of the Copyright Act (that is, they do not include any visual features of shape or configuration embodied in a product). Therefore, the design registrations do not limit copyright in Dali’s artistic work (the original trompe l’oueil painting) and Betty’s actions will infringe both copyright and the design registration in relation to garments.
A final word
“There is only one difference between a madman and me.
I am not mad.”
Salvador Dali, Diary of a Genius
This post is an expanded version of an article published in Issue 29, Oct 2009, of the industrial design magazine Curve
