Industrial Designs

7. Other Considerations

(b) Industrial Designs Compared to Copyrights

The interrelationship between copyright and industrial design is a complex area of the law, and one that is not yet fully settled. The Copyright Act, the Industrial Designs Act and the Industrial Design Rules each attempt to delineate and distinguish what is the proper subject matter for protection as between the copyright and the industrial design legislative regimes. If a design is capable of being registered as an industrial design, then copyright protection may not be available for the objects embodying the design. Amendments to the Copyright Act allow that copyright may subsist in a design applied to a useful article or from which the design of the useful article is derived. But, if the useful article was manufactured in over 50 copies anywhere in the world, it is not an infringement of the copyright to reproduce the article itself, make a drawing or reproduction of the article, or do anything else with the article that a copyright owner could do [Copyright Act, Section 64(2)]. (This assumes the original drawings created by the artist were not confiscated and, themselves used to create the copies of the useful article.)

A few exceptions to this provision of un-enforceability have been developed in order to further protect certain types of designs, including: artistic works which are graphic representations applied to the face of an article; trade-marks; woven or knitted patterned materials suitable for making piece goods, surface coverings or clothing; architectural buildings or models; and, representations of real or fictional characters. For example, under this exception, copyrights in the representation of floral patterns etc. etched onto the face of a storage box may still be infringed by copies, despite the fact that the subject box is produced in quantities of 50 or more. Nevertheless, features of the shape of the box itself would not be protected under this exception. Similarly, fabric, wallpaper and rug patterns can still be protected under copyright by relying upon this exception. Apart from this exception, the only protection for the ornamental features of useful articles, produced in more than 50 copies would be under the Industrial Designs Act. It is not yet clear, however, whether or not a design can be protected under copyright if, for some reason it was originally registrable as an industrial design, but no longer remains so (ie., if the designs were made available to the public more than one year prior to the filing of an application for an industrial design).

Certainly, in instances where it is unlikely that the design will be reproduced in quantities of 50 or more, or where design protection is novelty barred, registration of the copyright should be completed. Out of an abundance of caution, copyright registration should be obtained as a matter of course for all original designs created. Subsequently, the decision of whether or not to file an industrial design application can be based upon the commercial success of the design, having regard to the number of articles likely to be produced, and the time frame for publication of the design and/or sales thereof.