State of Escape in a neoprene nightmare of its own design

State of Escape, an Australian company that designs and sells handbags and tote bags, recently brought an allegation of copyright infringement of the Escape Bag, a perforated neoprene tote bag, against Stefanie Schwartz. Unfortunately for State of Escape, copyright was not enough to prevent Stefanie Schwartz from escaping infringement. The Federal Court rejected the allegation of copyright infringement, finding that the bag was not a work of artistic craftsmanship and providing useful guidance on whether a work is a “work of artistic craftsmanship” in accordance with the Copyright Act 1968 (Cth).

The Escape tote bag (pictured below), designed and sold by State of Escape, is an oversized, perforated, neoprene tote bag with a rope (“sailing rope”) handle that also wraps around the body and base of the bag.


State of Escape alleged that copyright subsisted in its Escape Bag design on the basis that the bag was an artistic work and the copyright was being infringed by bags sold by Ms Schwartz and Chuchka. However, the Federal Court disagreed.

Under the Copyright Act 1968 (Cth), copyright subsists in an artistic work, which includes works of artistic craftsmanship. While the Act is largely silent on what defines a work of artistic craftsmanship, the High Court decision in Burge v Swarbrick [2007] HCA 17 made it clear that a key tenet in determining whether something is a work of artistic craftsmanship lies in whether that work is “unconstrained by the function or utility of the article so produced”.

State of Escape presented evidence demonstrating the aesthetic qualities and features of the bag and the design process in support of the assertion that the Escape Bag was a work of artistic craftsmanship. Justice Davies accepted the evidence but noted that the question of whether the Escape Bag could be characterised as work of artistic craftsmanship did not turn on such evidence. Rather, applying the principles of Burge v Swarbrick [2007] HCA 17, the question turns on “the extent to which the Escape Bag’s artistic expression, in its form, was unconstrained by functional considerations”.

In view of the evidence presented, Justice Davies came to the conclusion that the functional considerations did dictate the form of the work. At [120], Justice Davies commented that “the choice of the perforated neoprene as the fabric for the carry all bag was unconstrained by the function and utility of the Escape Bag and I accept that the selection of that fabric was governed by considerations of appearance and aesthetics. However, once the fabric had been selected, the design choices embodied within the bag were constrained by functional considerations.”

As the functional considerations dictated the form of the work, Justice Davies found that the Escape Bag was not a work of artistic craftsmanship, copyright did not subsist in the Escape Bag and thus Chuchka did not infringe the rights of State of Escape.

This decision reinforces that the bar for an article to quality as a work of artistic craftsmanship remains quite high and leaves those relying on copyright in uncertainty territory when it comes to enforcement, particularly for products that are industrially applied and mass produced.

If State of Escape had registered the Escape Bag as a registered design, it is likely that this problem could have been avoided. Indeed, Justice Davies noted in her decision that copyright law is drafted to “encourage design registration and to limit or remove copyright protection for artistic works which are applied to industrial products.” This outcome should be taken into careful consideration, especially by those in the fashion industry, when considering how they will protect their products if a copycat emerges. Relying on copyright alone may not yield the desired outcome and leave designers with little in the way of enforceable rights.  

We strongly recommend that designers with products having a unique appearance very seriously consider design protection instead of relying on copyright protection. If you have a product and you are not sure whether it is covered by copyright or design protection, contact us for a free consultation to discuss your options.