Case: Burge v Swarbrick [2007] HCA 17 ; (2007) 234 ALR 204
Outcome: referred to
In Burge v Swarbrick [2007] HCA 17 ; (2007) 234 ALR 204 Gleeson CJ, Gummow, Kirby, Heydon and Crennan JJ examined in detail the legislative history of the design/copyright overlap provisions of the Act and cognate legislation as they existed immediately prior to the enactment of the current version of Div 8. In 2003 the Designs Act 2003 (Cth) was passed and the former Div 8 of Pt 3 of the Copyright Act was replaced by the current provisions. The current expression of the Parliament's intention is found in the present provisions of the Copyright Act . The definition of 'corresponding design' in s 74(1) of the current Act is substantially different to that examined in Burge [2007] HCA 17 ; 234 ALR 204. 72 The amendments came about following concerns raised in the Australian Law Reform Commission's Report No. 74, Designs : see the revised explanatory memorandum accompanying the Designs ( Consequential Amendments) Bill 2003 circulated by the authority of the Parliamentary Secretary to the Minister for Industry, Tourism and Resources in the Senate. The revised explanatory memorandum said: 'The broad policy is that artistic works commercially exploited as three-dimensional designs should generally be denied copyright protection. However, artistic works exploited as two-dimensional designs continue to receive copyright protection (and may have dual protection if registered as a design). The ALRC supported the policy underlying sections 74 to 77 and the level of protection but recommended amendments to give more clarity and legal certainty. The amendments are to: &#8226; clarify the meaning of the term "work of artistic craftsmanship"; &#8226; amend the definition of "corresponding design" to deal with certain technical difficulties ...' 73 The revised explanatory memorandum also said that one purpose of the proposed amendment to the definition of 'corresponding design' was to remove the anomalous protection afforded to utilitarian three-dimensional articles such as pump parts. Those were not registrable as designs because they constituted a method or principle of construction, but the drawings for those pump parts were entitled to copyright protection. Another purpose of the amendments was to focus on the three-dimensional aspects of a design (see par 11 of the revised explanatory memorandum). The revised explanatory memorandum explained the reason for adding a new definition of 'embodied in' in s 74(2) was to address the previous exclusion of a design consisting solely of features of two-dimensional pattern or ornamentation applicable to the surface of an article (see par 13). It went on to say that the amendments to s 74 were intended to clarify that visual features could be embodied in a product by being woven into, impressed on or worked into the product. The revised explanatory memorandum continued (pars 15, 16): '... That is, a "corresponding design" can include artistic works exploited in products such as tapestries, knitted items and carpets. ... For example, artistic works will not have copyright protection (when used as a design) if a corresponding design is not registered but is industrially applied unless they are works of artistic craftsmanship, buildings or models of buildings. Under the amended definition, artistic works exploited in two dimensions as visual features of pattern or ornamentation will remain excluded from the definition of "corresponding design" and therefore retain copyright protection'.