We discuss a recent Full Federal Court decision that highlights the difficulty in establishing that a functional design has copyright protection as a ‘work of artistic craftsmanship’.
Pursuant to the ‘overlap’ provisions in the Copyright Act 1968 (Cth), copyright protection is lost in an artistic work where a corresponding design has been industrially applied and the design is not registered, or is not registrable, pursuant to the Designs Act 2003 (Cth). However, if the artistic work is a ‘work of artistic craftsmanship’, copyright protection will not be lost.
State of Escape Accessories Pty Limited v Schwartz  FCAFC 63
In State of Escape Accessories Pty Limited v Schwartz, the Full Court dismissed an appeal from a finding that a handbag was not a ‘work of artistic craftsmanship’. The decision is significant because it provides further clarity in, and another example of, identifying works of artistic craftsmanship, particularly within the fashion industry.
What is a work of artistic craftsmanship?
‘Work of artistic craftsmanship’ is not defined in the Copyright Act. The leading authority on identifying a work of artistic craftsmanship is Burge v Swarbrick  HCA 17. At  of that case, the High Court stated:
‘It may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to “a work of artistic craftsmanship” within the meaning of the Copyright Act as it stood after the 1989 Act. However, determining whether a work is “a work of artistic craftsmanship” does not turn on assessing the beauty or aesthetic appeal of the work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations.’
The primary judge in State of Escape Accessories Pty Limited v Schwartz found that the bag’s design was constrained by functional considerations and was therefore not a work of artistic craftsmanship. The Full Court upheld this decision with reference to:
The designer’s evidence
The Full Court considered that the designer’s evidence about the bag was admissible but its weight was affected by two factors.
First, the artistic qualities of the work must be manifested in the object itself. Therefore the designer’s intentions and aspirations as to the artistic quality of the work are not determinative.
Secondly, the designer will view the work in light of their own tastes and preferences which may not be shared by others. Both factors suggest that a designer’s evidence as to whether a work is a work of artistic craftsmanship may be of limited weight.
The designer’s skill
The primary judge found that the designer was not an ‘artist-craftsperson’. This supported the conclusion that the bag was not a work of artistic craftsmanship. The appellant submitted that this was an error.
The Full Court stated that the evidence that some skill was exercised in designing the bag was not inconsistent with the conclusion that the designer was not an artist-craftsperson.
The Full Court clarified that whether a person has ‘special training, skill and knowledge in a relevant field’ is not a determinative factor as to whether they are an artist-craftsperson. However, lack of such training, skill and knowledge is ‘at the very least a factor that may tend to show that the work [they have] created is not a work of artistic craftsmanship.’
‘Evolution in styling’ versus ‘work of artistic craftsmanship’
The Full Court upheld the primary judge’s finding that the decision to combine commercially available materials in a unique way was not an act of artistic craftsmanship. Rather, the creative act of selecting materials for the bag was, ‘at its highest, an evolution in styling’.
This is significant for the fashion industry. Selecting unique and creative combinations of materials will not, of itself, ensure that a design is protected by copyright.
Aesthetic beauty versus function
The Full Court rejected the appellant’s submission that the primary judge failed to give proper weight to the beauty or aesthetic appeal of the bag and failed to consider the bag as a whole.
The Full Court noted the ‘supposed terrors for judicial assessment of matters involving aesthetics’. Relying on the primary judge’s analysis which gave considerable weight to the expert evidence, the Full Court concluded that ‘functional considerations substantially outweighed other considerations pertaining to its visual and aesthetic appeal in the determination of the shape, configuration and finish of the Escape Bag.’
The Full Court of the Federal Court in State of Escape Accessories Pty Limited v Schwartz  FCAFC 63 has affirmed that even stylish pieces of clothing, accessories and other works of craftsmanship can fail to attract copyright protection where such works have a significant functional component. This reinforces the importance of registering designs where registrable.
Resolve Litigation Lawyers has extensive experience in Intellectual Property law and copyright protection. Please contact us if you are seeking advice on these issues.
David Hing, Harley Milano and Cora Fabbri
Date: 6 May 2022
 State of Escape Accessories Pty Ltd v Schwartz  FCA 1606.
 State of Escape Accessories Pty Limited v Schwartz  FCAFC 63 .
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Illustration by Diana Light on Unsplash