A coffee mug, a chair or a jewellery design may attract copyright automatically – yet industrial application can limit or extinguish that protection. Espie Angelica A. de Leon explains why the same design can fall under copyright, design rights, both or neither, depending on the jurisdiction.

What happens when copyright and industrial design overlap?

First, let’s look into the differences between copyright and design rights.

Copyright protects original works of art such as literary and musical works, cinematographic films, sound recordings and other artistic works. Computer software is also protected by copyright. Copyright does not protect works that are purely functional or utilitarian.

Copyright is vested automatically upon creation of the artistic work. Therefore, it does not require formal registration. Protection lasts throughout the creator’s lifetime plus several decades after his death. 

Industrial design rights protect a product’s visual appearance and its aesthetic elements. According to Aditi Verma Thakur, managing partner at Aishani Partners in Bengaluru, design rights based on India’s Designs Act, 2000 lean more toward industrial or commercial rights. “They are granted, upon registration, for new or original two-dimensional or three-dimensional visual features of shape, configuration, pattern, ornament or composition of lines or colours that are applied to articles by an industrial process,” Thakur explained. 

Therefore, an industrial design has to be formally registered for a design right to be granted to the holder. Protection of industrial design rights is shorter than that of copyright. Another key takeaway is that design rights are important for commercially mass produced items. In India, copyright in an unregistered registrable design ceases once the article has been reproduced more than 50 times by an industrial process; in Australia, industrial application is deemed to occur where a design is applied to more than 50 articles, although copyright may also be lost when products made to the corresponding design are first commercialized.

The overlap

In certain instances, copyright and design rights overlap. Generally, this happens when a design qualifies simultaneously as a copyrightable work of art and as a registrable design at the same time.

To illustrate, let us discuss copyright and design from the perspective of Thailand’s laws.

Under Section 4(7) of the Thai Copyright Act, a “work of applied art” is broadly defined as any work combining an artistic element with utility. It could be decorative furniture, appliance ornamentation or product packaging. A high level of artistic value is not required.  

Meanwhile, Thailand’s Patent Act defines “design” as “any form or composition of lines or colours which gives a special appearance to a product and can serve as a pattern for a product of industry or handicraft.” The definition is also quite broad.

“The loose boundaries of both definitions mean that many industrial designs satisfy both sets of requirements,” said Nuttaphol Arammuang, a partner at Tilleke & Gibbins in Bangkok.

“The overlap generally arises when an original artistic work is used as the basis of a design that is applied to an article of commerce through an industrial or manufacturing process,” Thakur said. “For instance, take a new artistic design which is subsequently applied to a coffee mug. Copyright may automatically exist in the original artwork itself. However, when features derived from that artwork are applied to the coffee mug through an industrial process, those features may also be capable of protection as a registered design.”

Jenni Rutter, a partner at Dentons Kensington Swan in Auckland, offered another example: “A designer creates sketches for a new and original chair. Copyright will exist automatically in the original drawings. If the design is new and original, not the type that is excluded from registration such as one that is purely functional, it could also be protected as a registered design. If the designer applies to register the design, copyright in the design and the registered design right will overlap.”

This also applies to copyrightable artistic designs that are eventually used in lighting, jewellery, fabrics and other fashion products, graphical user interfaces and other consumer products.

“Singapore’s copyright legislation contains provisions that limit copyright protection in certain circumstances where artistic works have been industrially applied, and design protection is available. The policy objective is to prevent copyright from being used to obtain what is effectively much longer protection for commercial product designs after design rights have expired,” said Sanil Khatri, a local principal at Baker McKenzie Wong & Leow in Singapore.

In several jurisdictions, copyright protection may cease as soon as the artistic work is used in a product that is commercially mass produced. 

India’s Copyright Act provides that where a design may be registered under the Designs Act but is not registered, copyright in that design ceases once the product to which the design has been applied has been reproduced more than 50 times via an industrial process. To remain protected, the artistic work must acquire design rights via registration.

“Therefore, if design registration is not sought while the design remains new or original, and the design is subsequently commercially reproduced at scale, the right holder may lose an important form of protection. Eventually, the design may no longer satisfy the requirements for design registration because of prior disclosure or use, while copyright protection in the industrially applied design may also cease once the statutory limit is crossed,” said Thakur.

However, even if copyright protection for the design or artistic work ceases once it is industrially applied to a product, copyright in the original and independently existing artwork remains.

Risks and challenges

This copyright-design overlap leads to certain risks and challenges. Some of these are as follows:

Legal uncertainty

According to Arammuang, Thai patent and copyright laws do not explicitly address whether cumulative or simultaneous protection is permissible. “This legislative silence creates significant ambiguity. In practice, Thai courts have sometimes adopted a non-cumulation approach – declining to recognize a design as protected under both copyright and patent law on the reasoning that subject matter entitled to protection under one statute should not be given overlapping protection under another. This judicial tendency can have the practical effect of forcing a rights holder to choose one form of protection or risk losing the benefit of the other,” he explained.

Rights holders also face unpredictable outcomes in litigation. 

“The most delicate tension often surfaces in infringement disputes, where the central question is whether the contested feature embodies original artistic expression deserving of copyright protection, or whether it is simply a functional or aesthetic element of product design that falls within the domain of industrial design rights,” Divina Ilas-Panganiban, a partner at Quisumbing Torres in Manila, added.

Weighing the pros and cons becomes difficult

The vague and overlapping statutory definitions of copyrightable works of applied art and design-patentable subject matter and the accompanying legal uncertainty make it difficult to weigh the pros and cons in a copyright versus design right scenario. Hence, determining in advance which regime applies and whether both can coexist would be challenging.

“At times, right holders tend to focus on one right over the other, particularly by assuming that copyright protection over the original artwork is sufficient. However, such an approach carries the risk of losing an important industrial design right which may provide stronger and more direct support during enforcement against competing manufacturers or traders,” said Thakur.

“In New Zealand, the duration of copyright protection is capped at the same shorter duration as a registered design, so this requires careful consideration,” added Eve Brown, a senior associate at Dentons Kensington Swan in Auckland.

She explained that original artistic works like design drawings for a chair are automatically protected by copyright for 50 years from the end of the calendar year in which the author dies (this term will be extended to 70 years in the next few years). However, the right owner can generally prevent someone from making more than 50 copies of the design in 3D for 16 years (25 years for works of artistic craftsmanship) after the design has been industrially applied.

In contrast, a New Zealand registered design lasts for 15 years from the date of registration and must be renewed every five years.

Loss of copyright protection

As mentioned above, a major risk arises when a design that should have been registered but was not is commercially exploited. “Once the article carrying the design has been reproduced more than 50 times through an industrial process, copyright in design for that article may cease,” Thakur stressed.

Arammuang said that in some instances, Thai courts refused to recognize copyright in subject matter that could, or should, have been registered as a design patent, applying a notion that overlapping protection is inappropriate. “A rights holder who registers a design patent may inadvertently undermine a parallel copyright claim, or vice versa,” he said.

Protection gap for unregistered designs 

This is true in jurisdictions with no system of protection for unregistered designs. If a design patent lapses, is invalidated, or was never obtained in the first place, the rights holder may have no other option but to rely on copyright. However, if the court rejects copyright on anti-cumulation grounds, there may be no protection at all.

Enforcement problems 

“A rights holder may attempt to invoke both copyright and industrial design rights against an alleged infringer, while the defendant may argue that the claimed features are functional, lack originality, or should have been protected only through design registration,” said Ilas-Panganiban.

Then again, there could be additional questions as to which artistic features incorporated into the useful article remain copyrightable. Let’s take the chair as an example. A furniture manufacturer may build one with a backrest that is not your ordinary backrest. Instead, it is distinctive, artistic and sculptural, thus serving both decorative and functional purposes. “If a competitor reproduces the design, the manufacturer may assert copyright over the artistic elements of the backrest while also relying on an industrial design registration covering the chair’s ornamental appearance. The competitor, however, may contend that the design features are primarily functional or insufficiently original to qualify for copyright protection,” Ilas-Panganiban said.

Cross-border enforcement difficulty

The problem balloons with cross-border enforcement. “Different jurisdictions adopt different approaches to the coexistence of copyright and design rights, so a strategy that succeeds in Singapore may not necessarily produce the same result elsewhere in Asia, and vice versa,” Khatri explained.

“Rights owners should think about their reduced ability to enforce their copyright overseas if they shorten the applicable term of overseas copyright protection under the Berne Convention by applying for a registered design in New Zealand,” Brown added.

Other risks in litigation

Overlapping rights can increase litigation costs and complexity because parties may need to argue ownership, subsistence, validity, infringement and the interaction between IP rights.

In Thailand, challenges arising from the copyright-design overlap are compounded by the challenges of IP civil litigation. These are: difficulties in proving actual damages, lack of a formal discovery process, unpredictable judicial outcomes on IP matters and low damage awards.

How to deal with these challenges

Define the boundaries

This means separating the creative features of the product from its functional or utilitarian elements and then asking these questions: Are these contested features protectable artistic expression? Are they functional design? Or are they both? 

“Ultimately, the analysis turns on the delicate interplay of originality, functionality and the nature and boundaries of the protected subject matter under intellectual property laws. Defining the boundaries between the two regimes not only prevents overreaching claims,” noted Ilas-Panganiban, “but also enhances the precision and strength of enforcement efforts.”

Think: Copyright or design OR copyright + design and others

Rights owners should also ask themselves: When will my design likely be applied? When will my design be made into a product? How many products are likely to be manufactured? Are these products seasonal? The answers to these questions may help determine whether design rights are more beneficial than copyright protection.

If a product is likely to be mass produced or if its visual appearance is commercially important, Thakur said businesses must not rely solely on copyright; instead, they must consider design registration as well.

“In addition, rights owners should bear in mind that enforcing a registered design against copycat products may be easier than enforcing copyright, which usually requires the owner to prove originality and authorship, which can be onerous,” Brown revealed.

For Khatri, the most effective approach is to adopt a layered IP strategy, with copyright, design rights, trademarks and patents working together to protect a company’s assets.

Arammuang agreed. “This ‘portfolio approach,’” he noted, “ensures that if one form of protection fails, another may stand.”

Adopt a market-by-market protection strategy

This is particularly applicable to business enterprises operating across Asia where jurisdictions have differing ways of treating the copyright-design overlap. “Rights holders should prioritize filings and enforcement efforts based on their most commercially important markets,” Khatri advised.

Secure design registration early

The right holder has to decide fast and early, while the design is still new and original, as to whether design filing is important. “This decision should ideally be taken before the design is publicly disclosed or commercially produced at scale, after considering the prospective business scale of the article, its expected commercial life and the competitive advantage that the design may bring,” Thakur said.

“For products that are very successful commercially, even a year’s difference in the term of protection could have a significant economic impact,” Rutter said.

“Once a product has been launched, registration opportunities may be reduced or lost,” Khatri warned.

Have agreements in place

Licensing and assignment agreements, employment-related IP provisions and other IP contracts must be in place – thoughtfully crafted to address ownership, use and commercial exploitation of both copyright and industrial design rights.

Document

Document the creative process. Maintain records of designers’ contributions, ownership arrangements, dated design files, creative briefs and contracts.

Rights holders may also want to consider registering their original artistic works even though copyright subsists automatically. 

These documentation efforts will prove ownership and creation dates, thus strengthening both copyright and design claims and streamlining enforcement efforts.

Maintain records of IP strategy

“Maintain clear internal records of the IP strategy, particularly when asserting rights in both copyright and design patent, detailed evidence of when each right was obtained and the distinct aspects it protects,” noted Arammuang. He said such records can help convince a court that cumulative protection is not duplicative; rather, it is justified.

Monitor

Right holders must monitor the market, enforce early and take action to deter infringement early before things worsen.

The copyright and design overlap is perhaps inescapable – but there are ways to navigate the risks and challenges that this overlap presents.