Picture this. Your client has created a masterpiece – it is a board game that consists of a square piece of cardboard with beautiful ornamental patterns applied to the face of the square, a stack of cards with similar ornamental patterns adorning them, some board tokens and a pair of dice. Oh and then you get the page of written rules and instructions on how the game should be played.
Your mission is straightforward – you need to do everything necessary to protect this creation from unauthorised use by others. Well, at least, you think it's straightforward. You have to protect the game, the artistic works on the board, the cards and the tokens and the literary work which provide the rules of the game.
Your client has already registered the name of the game as a trade mark under the Trade Marks Act 1995 (Cth). What else is there? Patent law? Design law? Copyright law? To receive patent protection under the Patents Act 1990 (Cth), an object has to be an useful invention which is new or novel. But a board game that is an useful invention, is not necessarily novel or new within the meaning of patent law. This is because patent law distinguishes between the artistic works and the new ideas behind the game, on the one hand, and the invention, on the other. So while we know that the artistic works and the ideas behind the board game are new, we also know that the invention – that is, the method of putting together pieces on a board, throwing the dice and dealing the cards – is not new or novel. What we have is a well-known, age old method for playing a board game.
That leaves us with copyright and design law. Design law protects the look of commercially produced things. For example, you invent a teleporter (you know, a "Beam me up Scotty" machine) which you register as a patent. Then, your funky, groovy marketing manager designs your teleporter in the new season colours of denim teamed with gelato stripe, with cute hexagonal shaped buttons. You register the design of your funky, groovy teleporter. Put simply, design registration protects the appearance, shape or get-up of the board game. The law of copyright, on the other hand, protects the rules of the game (a literary work) and the drawings on the board and the cards (the artistic works). Let's leave aside the literary work since we know that it is protected under the Copyright Act 1968 (Cth), and focus on the artistic works.
Here comes the problem. Sections 74-77 of the Copyright Act says that where copyright subsists in an artistic work and a "corresponding design" is registered under the Designs Act 1906 (Cth), copyright protection will be lost in relation to the artistic work. Effectively, this means that the price of registering the design of the board game is sacrificing the copyright of the design in the artistic work. What is the big deal, I hear you say?
Well for a start, there is no need to register your work in order to receive copyright protection. Also, once published, copyright protection extends for the life of the author plus 50 years whereas under the Designs Act 1906 (Cth), registration will only protect the design for up to 16 years. Clearly, if we had to choose, we would prefer to have copyright protection.
Buoyed by the creativity of our client, we persevere until we find an answer. Sections 74-77 of the Copyright Act only apply if you have an artistic work which has been applied as a "corresponding design". A "corresponding design" is defined, in an artistic work, as a design that, when applied to an article, results in the reproduction of that artistic work. Got that? Wait, there's more. A "corresponding design" does not include a design consisting solely of features of 2-dimensional ornamental patterns upon the surface of an article. And there it is! The patterns applied to the face of the cardboard square and the cards are simply 2-dimensional artistic works applied to a 3-dimensional object. In other words, this "design" consists solely of features of a 2-dimensional pattern applied to the surface of an article. In the usual complicated way known only to the law, this means that: (i) our client could register the design of the board game, and (ii) design registration would not have the effect of striking out copyright protection for the artistic works on the board and cards. So, our client received trademark, copyright and design protection for the board game when she thought she would only need patent protection. It is just a game, you know.
David Yates and Bashi Kumar are on Arts Law’s panel of volunteer lawyers.