Protection of aesthetic appearances in the Copyright Act 2021 and Registered Designs Act 2000

3 July 2023

The interaction between the Copyright Act 2021 (“CA”) and the Registered Designs Act 2000 (“RDA”) has stymied many a neophyte in the world of intellectual property rights. The layman who perceives the Graphical User Interface (“GUI”) applied to the latest new-fangled tech release (did someone say “Apple Vision Pro”?) may consider that artistic copyright would apply to protect such a sleek and aesthetically pleasing work of art, before only subsequently discovering to their chagrin that their reliance on artistic copyright protection was misplaced given the strictures of the CA.

While aesthetic appearances may potentially obtain protection under the registered designs regime or the copyright regime, certain provisions have been enacted to minimise this overlap and prevent concurrent protection being provided to the same work under both regimes. These provisions are targeted at reducing the scope of copyright protection for certain artistic works that have been registered or ought to have been registered under the RDA, and, by extension, GUIs, which are registrable as designs under the RDA.

Section 272 CA provides that it is a permitted use of an artistic work (i.e. not infringement) to do any act within the exclusive rights of a corresponding design once it has been registered under the RDA. A “corresponding design” in relation to an artistic work means a design which, when applied to an article or a non-physical product, results in a reproduction of that work (see section 270 CA read with section 2(1) RDA).

In turn, section 274 CA provides that it is a permitted use of an artistic work (i.e. not infringement) to do any act that would have been within the exclusive rights in the corresponding design if the design had been registered in respect of articles and products (but was not in fact registered under the RDA), if the corresponding design has been applied industrially to those articles or products by or with the consent of the copyright owner and dealt with commercially. Regulation 69 of the Copyright Regulations 2021 provides, inter alia, that a corresponding design is applied industrially to articles if it has been applied to more than 50 articles.

It has historically been suggested that the effect of sections 272 and 274 CA is such that the failure to obtain registration for artwork that is applied as a design would denude any copyright protection that would otherwise arise from that artwork, as it would be a permitted use of the artwork to do any act within the exclusive rights of a corresponding design (even if the design is not actually registered). This is not necessarily the case, as we explain below.

First, it is permitted use of the artistic work to do any act that is within “the exclusive rights in the corresponding design” (see sections 272(2)(b)(i) and 274(2)(b)(i) CA). The exclusive rights in a registered design are (see section 30(1) RDA):

(a) to make in Singapore, or import into Singapore, for sale or hire, or for use for the purpose of trade or business -

(i) any article in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied; or

(ii) any device for projecting a non‑physical product (being a non‑physical product in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied);

(b) to sell, hire, or offer or expose for sale or hire, in Singapore -

(i) any article or non‑physical product in respect of which the design is registered and to which that design, or a design not substantially different from that design, has been applied; or

(ii) any device for projecting a non‑physical product mentioned in sub‑paragraph (i).

On the other hand, section 113 CA provides that the exclusive rights in respect of an artistic work are to (a) make a copy of the work; (b) publish the work if the work is unpublished; (c) communicate the work to the public.

Sections 272 and 274 CA do not terminate the existence of copyright in a given artwork. Rather, it permissively allows for the doing of certain acts (prescribed by the RDA) that would otherwise constitute infringement. A simple comparison of the exclusive rights afforded under each regime demonstrates that the overlap in rights is not total, as set out above.

It is therefore entirely possible for copyright in an artistic work to be infringed notwithstanding the application of section 272 or section 274 CA, in relation to certain specific acts. Consider the following hypothetical scenario.

Scenario A person (X) draws the design for a GUI on a piece of paper. The drawing of the GUI is an “artistic work” that enjoys copyright protection under the CA, and is intended to be (and, by virtue of Practice Direction No. 4 of 2018, registrable as) a design within the meaning of the RDA. X registers the design under the RDA in respect of a mobile phone interface. (a)     Another person (Y) makes and sells in Singapore another mobile phone to which a similar GUI has been applied. Y has infringed the exclusive rights in X’s registered design. Y is arguably not liable for copyright infringement as Y has done an act within the exclusive rights of the corresponding design, such that section 272 CA applies. (b)     Another person (Z) thinks that X’s GUI would make an interesting non-fungible token (NFT) for his line of tech-related images and mints the GUI online for sale. As the right of communication does not fall within the exclusive rights afforded to owners of registered designs, section 272 is inapplicable. Z may therefore be liable for copyright infringement under section 113 CA for making an infringing communication of X’s artistic work.

Second, the exclusive rights in a corresponding design would only be infringed by activities conducted in respect of an “article”, “non-physical product” or “device for projecting a non-physical product” for which the design has been registered (section 272 CA) or could have been registered (section 274 CA). To revisit the example above - if the design for the GUI had been registered, but the artwork is subsequently applied by a third party onto t-shirts, section 272 CA would not be applicable, allowing the designer to bring an action for copyright infringement. The interplay between the CA and RDA therefore does not completely prevent one from relying on the law of copyright to protect his or her artistic works.

There is a risk that an unsophisticated creator could unwittingly forego certain rights in, or be made to incur additional expense, to protect his artistic design. There is an argument that this could suppress, rather than encourage, creative output.

Sections 272 and 274 CA were adapted from section 74 of Singapore’s Copyright Act 1987, which was in turn based on section 10 of the UK Copyright Act 1956. In the UK, a line of case law had led to the anomaly where unregistrable designs were inexplicably afforded greater protection than registered designs. In Dorling v Honnor Marine [1964] 1 All ER 241, the English Court of Appeal held that section 10 of the UK Copyright Act 1956 did not apply to unregistrable designs (as compared to designs that could have been but were not registered). Such unregistrable designs would enjoy artistic copyright protection for the designer’s life plus 50 years. In contrast, registrable designs enjoyed only a maximum of 25 years of protection under section 8 of the UK Registered Designs Act 1949. As a result, it was ironically beneficial for designers to argue that their designs were incapable of registration to preserve copyright protection.

Over time, the UK provisions evolved into what is now section 51 of the UK Copyright, Designs and Patents Act 1988 (“CDPA”). Section 51(1) CDPA provides that copyright in a “design document” is not infringed by the making of an article to the design, unless the article made is an artistic work or a typeface. Section 51(3) CDPA defines “design document” as any record of a design (including a drawing) and gives “design” a restricted meaning compared to the UK Registered Designs Act 1949 i.e. “the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration”. This appears to broadly mirror the present position in Singapore, in that a distinction is drawn between the exclusive rights in a design, and the exclusive rights in the underlying artwork to that design.

Another important distinction is that section 51 does not apply when the manufactured article is itself an artistic work such as a work of artistic craftsmanship or sculpture. As alluded to by the English Court of Appeal in Lucasfilm Ltd & Ors v Ainsworth & Anor [2009] 2 All ER (Comm) 1101 at [41], a cast or model of a sculpture intended for multiple production could potentially be eligible for “dual protection” under both the copyright and registered designs regimes. This contrasts with the Singapore regime in sections 272 and 274 CA, which is designed expressly to avoid giving the same article dual protection of both copyright and registered design rights.

For completeness, the UK has also introduced an unregistered design right in Part III of the CDPA to provide some limited protection to unregistered designs. The right arises in a “design” which means “the shape or configuration (whether internal or external) of the whole or part of an article” which is not “surface decoration” (section 213 CDPA). However, where an action for copyright infringement is available, an action for design right infringement cannot be brought (section 236 CDPA).Conclusion

Unlike the UK regime wherein certain articles could potentially enjoy dual protection, the Singapore regime excludes protection altogether in respect of articles that have been or could have been registered as a design (once industrially applied). One potential issue is that such rightsowners may find that their rights are unwittingly diluted because of the additional requirement of registration under the RDA.

Nevertheless, given the differing objectives of design and copyright protection, the registered design and copyright regime in Singapore appears to, at first blush, strike a fair balance. Where artistic works are concerned, the medium in which the work is expressed serves only to carry the expression of the artistic work. However, registered designs intended for sale have an intrinsic use or function and are more appropriately protected under the registered designs regime. The Singapore approach therefore helps to prevent uncertainty by minimising the overlap in these related but distinct forms of intellectual property and disallowing rightsholders two bites of the cherry.