Louise Brunero / LLB (Hons), BSc (Hons) / Senior Associate – Solubility
Intellectual Property may not first spring to mind when you think of romance, but Romance Awareness Month is a perfect opportunity to reflect on IP rights in handcrafted jewellery and the often-misunderstood copyright/design right overlap.
Here at Solubility during Romance Awareness Month, Senior Associate Louise Brunero shares her tale of love, loss and some IP law, with learnings for those buying and insuring handcrafted jewellery, as well as for jewellery designers.
Love & Loss
While traditions and cultures around love and romance may differ, an exchange of wedding rings bears the same meaning throughout the world. It represents a love that should last forever, symbolised by a ring that has no beginning nor end. Engagement rings, wedding rings and eternity rings, while varying in design, all symbolise this love and promise shared between the wearers.
My tale starts earlier this year with my engagement ring, wedding ring and eternity ring, and an enthusiastic burst of new year house cleaning assisted by my 2 year old and my 6 year old. I removed my rings for safe keeping, never to be seen again. Most likely their fate was being placed into a bin by my ever helpful 2 year old and then off to kerbside bin collection… After the initial shock of losing the rings, police reports were filed and an insurance claim lodged, whereupon the myriad issues of IP rights attaching to handcrafted jewellery became apparent.
The insurance company proposed that rather than settle the claim for the bespoke rings by paying out the agreed insured value, I would instead be provided with exact replicas. I was advised that the insurance company had ascertained that the jewellery designer had not registered a trade mark in respect of the rings, and that as such, there were no IP rights to prevent copying them.
Putting to one side the issue that there can be unregistered trade marks known as common law trade marks, it is still perhaps not surprising that providing copies of the rings instead of replacing with the genuine articles was completely unsatisfactory particularly for an IP lawyer. So began a lesson for the insurance company in IP rights in handcrafted jewellery.
- Handcrafted jewellery may be protected by copyright or design rights, as elected by the creator of the works.
- Election should be made early or IP rights can be lost.
- Both copyright and design rights provide for the right to prevent others from unauthorised use or copying.
- Trade mark rights may also be relevant if the jewellery designer has a trade mark with respect to the jewellery.
- If copyright subsists in a piece of jewellery, then there are also moral rights in that work. Those rights are separate to copyright and are personal to the creator of the work.
- For those of you buying and insuring handcrafted jewellery, the jewellery may well be protected by a selection of the IP rights described above. Should you have the misfortune of your items being lost, damaged or stolen, you should not have to settle an insurance claim by accepting an unauthorised copy of a genuine article which is protected under Australian IP laws.
Can copyright exist in handcrafted jewellery?
The short answer is yes.
The Copyright Act 1968 (Cth) governs copyright in Australia. Copyright exists for 70 years after the author’s (creator’s) death, and does not require registration for protection to be granted. For copyright to subsist in a work it must meet each of these criteria.
- The work must be a type of work that attracts copyright with artistic work (such as a craftwork) being most relevant to jewellery.
- The work must be recorded in a material form i.e. the work is not just an idea. It must have been recorded in a physical way such as being written down, sketched on paper, crafted.
- The work must be original i.e. it is attributable to the author’s skill and labour, and not copied.
- The work must be substantial enough to be protected.
Handcrafted jewellery such as a diamond engagement ring with a particular band shape/style, diamond cut and diamond setting would be considered an artistic work and likely protected by copyright in Australia. However, a simple, plain gold band with no additional markings, gems or stones is unlikely to be original or substantial enough to be protected.
Who owns copyright in handcrafted jewellery?
As a general rule the creator of the original work is the owner of the copyright (even when the jeweller has been commissioned by a client to make the jewellery. However, the following exceptions exist.
- Employers generally own copyright in copyright material created by an employee in the course of employment, unless the employment contract states otherwise.
- Other contractual agreements can deal with copyright ownership or assign ownership from the creator to another person. For an assignment to be valid, it must in writing and signed by the copyright owner.
What rights does a copyright owner have?
The owner of copyright has the following exclusive rights.
- To reproduce the work, e.g. by making a copy, taking a photograph or filming it.
- To publish the work, e.g. by publishing photographs of the work in a catalogue or trade magazine.
- To communicate the work to the public, e.g. by posting images of the work to webpages, social media accounts or broadcasting such images.
Further information can be found here on copyright basics and artists (including jewellery makers) and copyright.
Are there design rights in handcrafted jewellery?
Jewellery can also be eligible for protection as a registered design, and if so, the designer can elect whether to seek design protection. It is not necessary to seek design protection and is solely at the discretion of the creator to do so. However, seeking design registration should not be done lightly, as it can cause copyright protection to end (see below).
Unlike copyright, design rights are not automatic. The designer must formally apply for, and be granted, protection under the Designs Act 2003 (Cth), or each corresponding regime in any other jurisdiction where protection is sought. The application must also specify the article(s) in respect of which the design is sought to be registered (e.g. rings). Design registration requires payment of fees, an examination by the issuing authority (IP Australia or corresponding office) and lasts for up to 10 years. Five years after the application has been filed, the registration can be renewed for a further five years by paying a single renewal fee.
For a design to be registered it must consist of new and distinctive visual features of shape, configuration (3D), pattern or ornamentation (2D), as applied to the specified article.
- New means it must not be identical to any design published anywhere in the world or publicly used in Australia.
- Distinctive means it must not be substantially similar in overall impression to any design published anywhere in the world or publicly used in Australia.
In practice, this means you need to keep your design secret before you register it.
A registered design gives the owner exclusive rights to stop others from making or selling specified articles (e.g. rings) to which the new and distinctive visual features of the design have been applied. The registration will not stop others from applying those features to other articles such as an article of clothing (e.g. a belt) or handbag clasp.
Possible loss of copyright protection or design protection and exceptions – the copyright/design overlap
There are some potential traps for jewellery designers where IP protection can be lost.
As a general rule, most copyright protection in a work is lost upon registration of a corresponding design under the Designs Act. This means the rights of the creator can only be enforced under the Designs Act, and only whilst the design is registered.
As a further general rule, copyright protection in a work is also lost where it has been “industrially applied” (such as where more than 50 copies of the work are made). However, “works of artistic craftsmanship” are exempt from this and retain copyright protection even when applied industrially.
The Copyright Act does not define “work of artistic craftsmanship” and the meaning of the term has not been settled by case law. However, it is clear that the work must:
- be of artistic quality – that is, it must have sufficient aesthetic quality to be a “work of artistic craftsmanship” and the intent of the creator is relevant to this question; and
- involve craftsmanship – that is, the work must reflect sound workmanship and skill.
Handcrafted jewellery such as engagement rings and eternity rings which have been individually designed and crafted by jewellers displaying sound workmanship and skill and who pride themselves on their expert craftsmanship and quality pieces would qualify as works of artistic craftsmanship. This means that even if more than 50 copies of a work are made, it retains copyright protection for the life of the jewellery designer plus 70 years unless the designer has registered the work as a design.
Trade mark rights
Trade marks are names, words, logos, shapes, colours, aspects of packaging, scents, or combinations of these which distinguish goods or services of one person from those of another.
Trade mark rights may also be relevant if the jewellery designer has marked their trade mark on the jewellery and/or if they have registered a particular aspect of shape of the jewellery as a trade mark, e.g. a particular 3D ring shape.
Trade marks can only be applied by the owner of the mark or a person authorised by them. It is a trade mark infringement for another person to apply a trade mark without the consent of the trade mark owner. Trade marks can be registered but the law also recognises unregistered ‘common law’ trade marks.
Do Moral Rights also attach to handcrafted jewellery?
Moral rights are personal to the author of a copyright work and are separate to copyright in that work. Moral rights always remain with the author even if the copyright is owned by someone else.
Where copyright subsists in a piece of handcrafted jewellery, the jewellery designer would also have moral rights in respect of the work. A jewellery designer’s moral rights are the rights:
- to be attributed as the creator of the work;
- not to have someone else falsely attributed as the creator of the work; and
- not to have the work subjected to derogatory treatment (such as an act that results in a material distortion, mutilation, or alteration of a work that is prejudicial to the creator’s honour or reputation).
It is important to remember that a jewellery designer could also have a moral rights claim in addition to any copyright claim that could be brought in relation to a piece of handcrafted jewellery.
And the insurance claim?
On providing the above lesson in IP law to the insurer, I’m pleased to report the claim was settled in my favour by close of business that day. It certainly pays to know the law, and to understand the value of IP rights.
And last but not least, what about romance?
My husband’s only comment on the above events was that while the rings may have been lost, our love and our marriage was not. In time for our 10-year wedding anniversary we’ll be having the rings recrafted by the original jewellery designer. New year cleaning will be strictly forbidden in future.
Want more information?
The Arts Law Centre of Australia is a community legal centre which provides a number of legal advice services to artists and arts organisations. You can contact them here for more information on the copyright, designs, infringement and moral rights issues described above. Solubility staff have been on the Arts Law Centre’s volunteer advice panel for over 15 years and have provided advice to dozens of artists.
Australian Government agency IP Australia is responsible for administrating IP rights and legislation in Australia and provides comprehensive online information “IP for fashion designers”, including information around designs, trade marks, patents and copyright.
The Australian Copyright Council is an independent, non-profit organisation which provides free detailed information around copyright including information sheets for persons working in various fields. A link to those sheets can be found here.
If you would like advice on which IP regime is best suited to your jewellery design work, or if you need assistance with copyright, trade mark, design or moral rights issues please get in touch with our team at Solubility.
Louise Brunero / LLB (Hons), BSc (Hons) / Senior Associate – Solubility
Copyright 2020, Solubility Pty Ltd. Reproduced with permission.