One New Year’s Eve, having just finished my shipwright apprenticeship, I sat down with a flute of Champagne and drawing pad, sketching an artist’s impression of what I considered to be the latest in sailing craft design. Like many yachting aficionados at this time of year, I had spent the week religiously watching yet another nail-biting Sydney to Hobart yacht race. Feeling inspired, and kicking off the New Year with some time on my hands, I set to work to transform my sketches into a three-metre long working model. As I fitted a windsurfer rig to my displacement hull and successfully sailed around the lake for the first time, I was blissfully unaware of the questions surrounding legal ownership of my design. Several months later, however, these questions came to the forefront as I was made aware of a locally produced windsurfer with lines deceptively similar to the unique vessel I had produced.
Intellectual property is the area of law that serves to protect innovation and creativity. While imitation is said to be the ultimate form of flattery, in the venerable industry of boatbuilding, where genuinely new innovations are often hard to come by, many see the copying of their designs as downright theft. All those years ago I never planned to mass produce my design; indeed I saw it as a way to advance my skills. However for today’s professional boat designers and builders, who make their living crafting custom-built vessels, intellectual property ownership is an essential component of their business model, and one they are eager to maintain.
Let us now consider the boat owner. While he or she finances the project, and may also contribute significantly in the creative process, they usually must rely on outside knowledge, expertise and skill. It is in this collaborative process between owner, designer and builder that creates an amalgam of legal ownership as intellectual property rights flow depending on input. The difficulty lies in discerning which party owns which rights and ensuring such rights are protected under the law. What if, for example, you as an owner decide to terminate the project early, can you prevent a designing company from using the plans they have already drawn up? Or if you have your boat built at a shipyard, can you stop builders from reproducing a suspiciously similar vessel? Or what if your new yacht is constructed and sits moored proudly on display, is there anything you can do to ensure someone doesn’t appropriate the overall look and style? These intellectual property scenarios present themselves regularly in the marine environment and due to the legal complexities, can be difficult and expensive to pursue if the correct course isn’t taken. Therefore, the importance of protecting your intellectual property from the outset is paramount.
Confidentiality and Copyright
As a prospective owner of a custom-built craft you often come to the planning table with drawings or sketches of what you want your vessel to look like. You may also have new and innovative ideas that you would like to see implemented. These sketches, ideas and concepts will almost always be the starting point for any discussions with a professional designer. However, what most people fail to appreciate is that even in these initial talks they may be forfeiting their intellectual property rights. Therefore, if you have an idea, you believe is original, you should consult with the relevant party and notify them that they would be required to sign a ‘Non-Disclosure Agreement’ or ‘Confidentiality Agreement’ before any discussions will be commenced. While this may seem a drastic step, it remains the best way to ensure IP rights are maintained. The agreement must, amongst other things, identify who is involved and what information is to remain confidential. Once the agreement is signed it will be binding for up to 12 months enabling you time to further investigate and develop your idea. These agreements can also help prove right of ownership where there is a conflict specifically relating to design registration.
Contrary to popular belief, creative works do not need to be registered for copyright protection in Australia. This means any drawings, sketches or plans you produce are regarded as your exclusive property and are automatically protected from unwarranted duplication. Copyright also extend to three-dimensional objects of an artistic nature, including ‘works of artistic craftsmanship’. However while any keen mariner would describe a beautifully constructed yacht as a work of art, the courts appear to disagree. In 2007, the High Court found the hull of a unique racing yacht not to qualify for copyright due largely to its predominately functional, rather than artistic, nature. This landmark decision highlighted the gap in the intellectual property regime in Australia, and stressed the importance of protecting any ‘new and distinctive’ designs through the process of registration.
A design refers to the overall appearance of a product, including shape, configuration and pattern. Unlike copyright, however, a design must first be registered if it is to be protected under Australian law. The process of registration is relatively straightforward, and a successful application grants the applicant sole proprietary rights over the design for a period up to 10 years. However a quick search of the online database shows merely a handful of listed boat and hull designs, suggesting that surprisingly few custom-built vessels have any formal legal protection against the copying of their design. This may be out of ignorance of the registration process, or due to a perceived lack of originality or novelty. Either way, the failure of a party to register a unique design can be a costly mistake.
A design application must be done by the owner of the design rights. Although the prospective boat owner initially commissions the work, the rights over the final design of the vessel will almost always lay with the commissioned designer. This is because the inherent value is born from the designer’s creativity. A rare exception to this rule is where the boat owner has had an active role in the drawing of the plans, and may therefore be regarded as part-owner of the design. Nevertheless, just like any other property, intellectual property rights may be bought, sold or licensed. This presents an avenue for parties with no prior IP interests to acquire ownership of a design.
As one of the main appeals of owning a custom-built vessel is its unique ‘one-off’ status, it’s not a shocking revelation that boat owners actively seek to prevent lookalikes from berthing next to theirs in the marina. These owners will often argue that as a result of the (usually hefty) designer’s fee, they have taken exclusive possession of the design rights. However unless this has been expressly agreed upon in contract, it is unlikely that any design ownership has actually passed between the parties. Instead, the courts may find the owner holds an implied licence to the exclusive use of the design. This alone may prevent the commissioned designer from using the same design in the future.
Protecting Your Rights
So how do you protect your intellectual property rights? The first step is to ensure that written agreements are drafted and signed before any work is carried out. In addition to outlining confidentiality and delivery timelines, these agreements should make it absolutely clear who owns intellectual property at this early stage of the process, as well as who will own the intellectual properties that result. However, while it may seem obvious, it must be noted that these agreements are only binding between signature parties. If you wish to prevent anyone else from copying your original designs, they must be registered with IP Australia, allowing you to pursue legal action against any unlawful appropriation.
In hindsight and with the benefit of a legal education, there was much that could have been done to protect the ownership of my personal design. However as a young shipwright the true value of my design was lost on me. Indeed I would not have been opposed to the idea of receiving royalties or a licensing fee for its use had I known differently. So whether you’re designing your own vessel, or commissioning a design, intellectual property rights should always be a key consideration. And as always, if you’re in doubt as to your intellectual property rights, or need help understanding or drafting agreements for the commission of work, you should consult a lawyer to help navigate these complex legal waters.