Its in the bag Full Federal Court finds that neoprene tote bag is not protected by copyright

What you need to know

• The Full Federal Court has upheld a finding that State of Escape's neoprene tote bag was not a work of artistic craftsmanship protected by copyright under the Copyright Act.
• This case is a useful reminder of the limitations of copyright law in protecting visual features and designs of consumer products.

What you need to do

• When asserting copyright claims, conduct careful diligence to confirm that copyright subsists in the relevant material before instigating legal proceedings.
• If developing a new product which incorporates functional elements, consider registering a design under the Designs Act prior to launch rather than relying on copyright to enforce your rights. Australian law does not recognise unregistered design rights.

First instance decision

State of Escape has manufactured and sold a range of bags since 2013, including tote bags designed with perforated neoprene fabric and sailing rope handles. It brought various claims, including for copyright infringement, against Ms Schwartz, who began selling her own range of perforated neoprene tote bags in 2015. For a summary of the primary judge's decision, see our previous article here.

The appeal

The sole issue before the Full Court was whether the primary judge erred in holding that State of Escape's tote bag (SOE Bag) was not a work of artistic craftsmanship within the meaning of the Copyright Act 1968 (Cth), and therefore not protected by copyright. State of Escape argued on appeal that the primary judge placed too much weight on the functional aspects of the design and failed to give proper weight to the aesthetic appeal of the SOE Bag, the artistic effort that went into designing it and its artistic quality as a whole.

The Full Court rejected these arguments, affirming that the SOE Bag was not a work of artistic craftsmanship.

The Full Court found no error in the primary judge's assessment of the evidence and the functional constraints that governed the design of the SOE Bag.

Functional considerations as design constraints

Referring to the High Court's decision in Burge v Swarbrick (2007) 232 CLR 336, the Full Court observed as a general rule that the more that functional considerations (such as the durability, quality and size of the bag) dictate the form of a product, the less likely it will be the product is of the kind of substantial artistic effort and expression which characterises a work of artistic craftsmanship.

In this case, the Full Court considered that functional considerations substantially outweighed aesthetic considerations in the choice of design of the SOE Bag, including its shape, configuration and finish, noting that:

• the designer of the SOE Bag had admitted that she had used sailing rope in the design for its structural quality, which she considered to be important; and
• the choice of perforated neoprene as the fabric for the SOE Bag was influenced by considerations of durability.

At best, the Full Court considered that the design of the SOE Bag was an "evolution in styling" rather than a new artistic design.

To what extent is a designer's aspirations and intentions for the product to be taken into account?

The Full Court held that evidence of the designer's aspirations and intentions when designing an item is admissible when considering whether an item is a work of artistic craftsmanship, but is not determinative or necessary. The mere fact that a designer considers their work to have artistic qualities does not necessarily mean that others who have different tastes and preferences would share the same view.

The Full Court instead emphasised that the question of whether a work is a work of artistic craftsmanship is to be determined by reference to the work itself and the extent to which any artistic expression is unconstrained by functional considerations.

Must the designer have specialist training, skill and knowledge in the field?

The Full Court also indicated that it is not essential for a person to have specialist training, skill and knowledge in a particular field in order to create a work of artistic craftsmanship. However, the fact that a person does not have specialist training, skill and knowledge is a factor that may tend to show that the work is not a work of artistic craftsmanship.

Authors: Lisa Ritson, Partner; Ted Talas, Senior Associate; Ray Cheng, Lawyer; and Lauren Howe, Graduate.