Can fashion designs, works of artistic craftsmanship or industrial designs, in general, receive copyright protection? We are frequently asked about these types of works, which stand on the verge of what is considered intellectual and industrial property. This is a subject of debate even among experts since there are several points of view and all of them can be argued in different ways. In an effort to be as pragmatic as possible, we will try to clarify this question in a simple and neutral way, so that you can decide what to do.
There are reasons to say that industrial designs shouldn’t be registered under copyright protection. In the event of facing a trial, for example, an entry in the patent and trademark office of the specific country where the infraction has taken place will be the safest option.
However, we would like to remind you -as always-, that it is advisable to have redundant pieces of evidence to back up your authorship. This is also known as “cumulative protection”, and it happens when industrial property overlaps with copyright. It means that under certain circumstances, your designs can be protected by copyright, in accordance with WIPO (the World Intellectual Property Organization).
Next, we are quoting an extract from the 2002 document “Industrial designs and their relation with works of applied art and three-dimensional marks”:
“Overlap with Copyright
22. The dual nature of industrial designs as functional and aesthetic creations allows at least two modes of protection, namely protection by copyright and protection by a special sui generis regime. Depending on whether one or both systems of protection are applicable, alternatively or simultaneously, at least three combinations of protection regimes may be conceived, namely, cumulative or dual protection, separation of protection regimes, and partial overlap of protection regimes. Cumulative Protection
23. Under this approach the copyright regime and the sui generis industrial design regime are made to operate simultaneously and independently from each other, automatically overlapping one another. An industrial design will therefore receive protection under both systems, in accordance with the particular rules and conditions that may apply under each of them. The design will receive copyright protection as a work of art (or applied art), and special protection under the sui generis designs regime.
24. Cumulative protection is based in a number of countries, in particular France where it was first consolidated, on the theory of unity of art (l’unité de l’art). This theory recognizes that art may be expressed in many ways, and fixed in any material support. Art is regarded as a unitary concept, and artistic creations should not be distinguished or discriminated on the basis of aesthetic merit or mode of expression. To the extent that a particular work expresses the personality of its creator, it deserves recognition as a work of art. An artistic expression should not be disqualified merely because it is fixed or embodied in a utilitarian article.
25. With cumulative protection, an industrial design (like a work of art) would be protected by copyright as of its creation or fixation in tangible form, as the law may require. Additionally, the same design could benefit from protection under the special law on designs as of the date of registration or deposit of the design, or from the first commercial distribution of the relevant product, where the law so provides.
26. Cumulative protection is often implemented by inserting non-preemption clauses in intellectual property laws. Such clauses expressly provide that protection of an industrial design or of a work of applied art under the applicable law does not preempt or affect protection of the same design or work by other laws that might be applicable. That approach is also suggested by the WIPO Model Law on Industrial Designs.
27. Contrary to the system of cumulative protection, a separation of protection regimes for industrial designs and for works of art has been proposed. Under this approach, an industrial design (i.e., the design of a useful object) may only be protected as such under the special regime for industrial designs. Industrial designs may not, as a matter of principle, be assimilated to works of art protected by copyright.
28. In countries adopting this approach, for example, the United States of America and (formerly) Italy, copyright protection is reserved exclusively for works of art. Therefore, the overall shape or configuration of utilitarian, industrial or consumer products may not receive copyright protection, regardless of how aesthetically pleasing or valuable that shape or configuration might be. The rationale for this strict separation is to prevent functional (technical) creations from circumventing the stricter conditions required by (in particular) patent and utility model legislation to obtain protection against copying.
29. This exclusion of industrial designs from copyright protection operates on the basis of the notion of “separability” and “independence” of a particular shape or configuration from the product in which it is embodied. In order that the shape or configuration of a product may enjoy copyright protection, that shape or configuration must be capable of being identified separately and exist independently from the functional aspects of the product in which it is embodied. The design must be such that the viewer can conceptually “dissociate” the design from the product in which it is embodied.
30. “Separation” or “dissociation” of the design from the object that embodies it would be clearly possible in cases where the object itself was primarily a work of art and was subsequently used as, or applied to, a utilitarian article. For example, a pair of statuettes reproducing two dolphins could be used as a set of salt and pepper shakers. The set could be protected by copyright as sculptural works, notwithstanding their utilitarian application as tableware accessories. However, the theory of dissociation will effectively exclude from copyright protection the shape or configuration of most industrial and consumer products, since their shape cannot normally be “separated” or considered independently from the objects themselves. The overall shape of objects such as furniture, household appliances and wearing apparel would consequently not qualify for copyright protection. Those shapes could only be protected as industrial designs under the special laws implemented for that purpose.
31. A halfway house system between, on the one hand, simultaneous, automatic cumulative protection of industrial designs by copyright law and by a special law on designs and, on the other hand, strict separation of protection regimes, would provide industrial design protection for the shape or appearance of any utilitarian, industrial or consumer products, but allow overlapping copyright protection in case the design can also be considered as a work of art (or of applied art). This system is or was applied, for example, under the Benelux Designs Law and in Germany, the Nordic countries (Denmark, Finland, Norway and Sweden) and Switzerland.
32. In practice, however, many of the countries that recognized the possibility of granting copyright protection to the designs of utilitarian products have traditionally been strict about the standard of aesthetic achievement required before a particular shape or configuration can be recognized as a work of art for copyright purposes. For example, the Benelux design law expressly provides that a design that has “a marked artistic character” may be protected both by that law and by the copyright laws of the Benelux countries, if the conditions for the application of both are met. On the other hand, designs that do not have a marked artistic character are expressly left outside the scope of protection by copyright law.
33. In countries adopting this approach, courts often require a high “artistic character” as a condition to protect industrial designs under copyright law. Designs that, in the eyes of the courts, do not have sufficient aesthetic originality or artistic value, may not be regarded as works of art, and cannot enjoy copyright protection. Since the large majority of consumer product designs fail to meet such high standards, overlap and double protection by copyright and industrial design laws might rarely occur in practice. This situation is likely to change to some extent in respect of the European Union countries, since the European Directive on industrial designs requires that industrial designs registered in a country in accordance with the Directive also be eligible for protection under the copyright law of that country. However, the conditions under which this protection is conferred, “including the level of originality required,” would still be determined by each State.
34. Along similar lines, partial overlap of protection regimes may also be made to depend on whether the shape of a useful article is regarded as a work of “handicraft” or “artistic craftsmanship,” or as a work of pure industrial design. For example, under copyright law in the United States of America, works of artistic craftsmanship embodied in useful articles such as tableware, glassware, cutlery and jewelry will receive copyright protection, even if they are or could be protected as designs under the patent law. In respect of such product configurations, overlap of protection would be possible in practice.”
Please keep in mind:
Official registers for the industrial property operate independently in each country. That means if you wish to protect a design at an international scale, you should register in each country where there may be risk of plagiarism.
The same can be said about of some copyright registries, although not necessarily. Safe Creative’s evidences fit the Berne Convention‘s standards, which means they are valid in all its signatory countries.
* World Intellectual Property Organization. Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, ninth session, Geneva, November 11 to 15, 2002, Industrial designs and their relation with works of applied art and three-dimensional marks. Geneva: October 1st, 2002. P. 12-15. http://www.wipo.int/edocs/mdocs/sct/en/sct_9/sct_9_6.pdf