2002- 2003  

 

THE PARLIAMENT OF THE COMMONWEALTH OF AUSTRALIA  

 

 

HOUSE OF REPRESENTATIVES  

 

 

 

DESIGNS (CONSEQUENTIAL AMENDMENTS) BILL 2002  

 

 

SUPPLEMENTARY

EXPLANATORY MEMORANDUM  

 

 

Amendments  ( and new clauses ? is this required?)  to be Moved on Behalf of the Government

 

 

 

 

 

 

 

(Circulated by authority of the Parliamentary Secretary to the Minister for Industry, Tourism and Resources, the Hon Warren Entsch MP)

 

DESIGNS (CONSEQUENTIAL AMENDMENTS) BILL 2002

 

OUTLINE

 

 

This The Bill as introduced amends the Copyright Act 1968 to correct the anomalies that possibly defeat the policy intent of a number of provisions that operate generally to limit copyright protection for essentially industrial products.   The Bill also makes amendments to a number of other Acts consequential to the enactment of the Designs Act 2002 .

The se Government amendments to the Bill substitute a new section 76 of the Copyright Act to recognise the enactment of the Designs Act 2002 and add application provisions.  They also make a consequential amendment to the Scout Association Act 1924 .

 

 

FINANCIAL IMPACT

 

The amendments will have no impact on Commonwealth expenditure or revenue.

DESIGNS (CONSEQUENTIAL AMENDMENTS) BILL 2002

 

NOTES ON AMENDMENTS

Amendment 1

1.       Amendment 1 inserts a title to Part 1 of Schedule 1 to the Bill .  The addition of this title indicates that items 1 to 14 contain amendments to the Copyright Act.  Part II, added inserted by amendment 3, sets out application provisions.

Amendment 2

2.       Amendment 2 will add s item 4A to Schedule 1.

3.       Item 4A amends section 76 of the Copyright Act by substituting a new provision consequential to the enactment of the Designs Act 2002 .  Section 76 deals with the situation where a design has been falsely registered under the Designs Act 1906.  The new wording recognises the enactment of the Designs Act 2002 and different terms included in it.  The purpose of section 76 is unchanged.  Section 76 protects the owner of copyright in an artistic work where a corresponding design has been registered without the copyright owner’s knowledge.  It assists the copyright owner to enforce copyright against persons registered as owners of the design (but not against bona fide assignees or licensees).  Where proceedings are brought under the Copyright Act, the defence to copyright infringement at section 75 does not apply.  In addition, the design is treated as if it had never been registered for the purpose of the proceedings and nothing in the Designs Act 2002 constitutes a defence. The amendments replace the references to the Designs Act 1906 with reference s to the Designs Act 2002 and update the language to reflect th e terminology used in the Designs Act 2002 .

Amendment 3

4.       Amendment 3 adds items 15 to 20 to Schedule 1 of the Bill .  These items are application provisions in respect of the amendments made to the Copyright Act by the Bill .

5.       Item 15 provides for application of the amendments made by items 2 and 3 to the definition of ‘corresponding design’ at section 74 of the Copyright Act.  ‘Corresponding design’ is a key term used in sections 75 to 77 and new 77A.  The new definition of ‘corresponding design’ will apply in the same circumstances as the amendments made to sections 75, 76 and 77 apply.  It will also appl y ies in respect to section 77A where that provision operates.

6.       Item 16 provides that the amendments made to section 75 of the Copyright Act apply to products embodying a corresponding design that are made after commencing day.

7.       Item 17 provides that the amendments made to section 76 apply in relation to proceedings brought under the Copyright Act on or after the commencing day where the corresponding design was registered under the Designs Act 2002 after the commenc e ment o f that Act.  The amended section 76 will not apply where the corresponding design is taken to be registered under the Designs Act 2002 through the operation of section 151 of that Act. where a design has been falsely registered under the Designs Act 2002.  This item also provides that the transitional provisions at section 151 do not operate in determining whether a design has been registered under the Designs Act 2002.  (This means that, if a copyright proceeding is commenced after the commencing day, section 151 will not apply the new wording of section 76 to a corresponding design that was falsely registered under the Designs Act 1906.)

8.       Sub-item 18(1) provides that new paragraph 77(1)(b) as amended by item 5 applies to articles and products to which a corresponding design has been applied industrially that are sold, let for hire or offered or exposed for sale on or after the commencing day.  The new wording of paragraph 77(1)(b) has been adopted to make clear that the defence in section 77 applies where industrialisation takes place before or after 1 October 1990, the commencing date for paragraphs 77(1)(b) and (c) as amended by the Copyright Amendment Act 1989 .  That is, section 77 does not require that first industrial application must take place on or after 1 October 1990.  This application provision does not change the operation of paragraph 77(1)(b) before the commencing day.

9.       Sub-item 18(2) provides that new paragraph 77(1)(c) as amended by item 5 applies to products to which a corresponding design has been applied industrially that are sold, let for hire or offered or exposed for sale or hire on or after the commencing day.  Section 77 requires that sales occur after 1 October 1990.  This sub-item indicates that the amended definition of ‘corresponding design’ applies to sales that take place on or after commencing day.  It is not intended that, where sales have occurred after 1 October 1990, further sales must occur after the commencing day.

10.     Sub-item 18(3) provides that the amendments made to section 77 by items 6 to 13 apply to products that are industrially applied and sold after commencing day and to complete specifications or representations first published in Australia after the commencing day. 

11.     Item 19 provides that new section 77A applies to reproductions made on or after commencing day.

12.     Item 20 adds a definition of ‘commencing day’ for the purpose of these application provisions.

Amendment 4

 

(IP Australia to add) 13.            Amendment 4 adds new Item 16A to Schedule 2 of the Bill.

14.       Item 16A amends section 3 of the Scout Association Act 1924 to replace the reference to the Designs Act 1906-1912 with one to the Designs Act 2002 consequential to the repeal of the Designs Act 1906 and commencement of the Designs Act 2002 .