Artisent, LLC

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration Nos. 356855, 356856, 356858 and 356859 in the name of Artisent, LLC– and – examination thereof.

Delegate:

Debrett Lyons

Representation:

Owner : Daneta Crump of FPA Patent Attorneys

Decision:

2017 ADO 3

Designs Act 2003 (Cth) - section 63 examination – subject designs found not to be new and distinctive over the prior art base – section 18 argued - prior disclosures of the designs were not artistic works – – examination completed and designs to be revoked

Background

On 9 July 2014 Artisent, LLC (“the Owner”) filed four applications for design registration under the Designs Act 2003 (“the Act”), each claiming an earlier convention priority date of 14 January 2014 (“the Priority Date”) from corresponding US Design Patent applications.
The applications were for design protection for products in the nature of combat headgear. The applications were registered and the registration numbers and corresponding particulars are:

Registration No.

Product name

Perspective Representation of the Design

356855

Visor

356856

Helmet mounted microphone

356858

Visor and mandible shield assembly

356859

Mandible shield

(“the Designs” or “the Products”)

On 12 November 2014, the Designs were the subject of a request for examination by the Owner.
Examination raised grounds for revocation of the Designs which were maintained through several official reports and in consequence of which the Owner asked to be heard.
The matter came before me, Debrett Lyons, a delegate of the Registrar of Designs for a hearing in Melbourne on 15 September 2016. The Owner was represented by Ms Daneta Crump of FPA Patent Attorneys who attended the hearing in person.
Ms Crump made both written and oral submissions. As a result of discussion at the hearing the Owner was allowed time to submit further legal argument and/or precedent. Further information was sent in a timely manner and this decision takes it into account along with the aforementioned submissions.
Examination
Examination requires the Office to have regard to section 65(2)(a) of the Act which creates a ground for revocation of a registration if the “design is not a registrable design”.Section 15(1) states that a design is registrable if it is new and distinctive compared to the prior art base.
In each case examination followed essentially the same path in terms of timing and content, the Examiner finding that a ground for revocation existed based on disclosures of the Designs before the Priority Date (“the Prior Disclosures”). The Prior Disclosures are of products made by the Owner.
In first reports dated 11 December 2014 the Examiner stated that the Designs are not new or distinctive because they are substantially similar in overall impression to designs shown in the Prior Disclosures.
In response the attorneys for the Owner sought to rely on section 18 of the Act which in limited circumstances immunizes a design registration corresponding with an earlier artistic work from invalidation through prior publication where that publication occurred “by reason only of any use previously made of the artistic work”.
In support thereof, the Examiner was provided with a declaration of Desmond Walsh, the Owner’s Director of Concept Development, dated 8 April 2015 (“the First Walsh Declaration”) and with a second declaration dated 31 August 2015 (“the Second Walsh Declaration”).
Further correspondence between the Examiner and the attorney for the Owner regarding the applicability of section 18 did not ultimately overcome the asserted ground of revocation and led to the hearing and to this decision.
In the lead up to the hearing the Office was provided with another declaration from Desmond Walsh, dated 6 September 2016 (“the Third Walsh Declaration”).
Legal framework and Submissions
Section 15
The starting position is an assessment of whether or not the Designs are new and distinctive relative to the prior art base. If they are, consideration of section 18 becomes unnecessary.
Section 15 of the Act provides:
Registrable designs
(1) A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
(2) The prior art base for a design (the designated design ) consists of:
(a) designs publicly used in Australia; and
(b) designs published in a document within or outside Australia; and
(c) designs in relation to which each of the following criteria is satisfied:
(i) the design is disclosed in a design application;
(ii) the design has an earlier priority date than the designated design;
(iii) the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
For the purposes of section 15, the Prior Disclosures cited during examination were:
·a 2013 Ops-Core Catalogue (“the Catalogue”);
·a YouTube video taken at the 2013 Shot Show held 15-18 January 2013 (“Citation 2”); and
·an article published on 17 January 2013 that includes photographs from the 2013 Shot Show (“Citation 3”).
Section 16 of the Act provides:
Designs that are identical or substantially similar in overall impression
(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).
(3) …
The Catalogue has been the centre of attention. It is published under the under the name Ops-Core, Inc. The First Walsh Declaration states that the Owner is a wholly owned subsidiary of a company, Gentex Corporation, but does business under the name Ops-Core, Inc.
The Catalogue shows images of the Owner’s products and there is no submission that those goods are not offered by the Owner.
The Owner’s position is that the Prior Disclosures, for want of detail, do not adequately anticipate the Designs and therefore the Designs are new and distinctive. Its alternative position is that if the Catalogue does properly disclose the Designs then the Designs are “corresponding designs” for the purposes of section 18(1)(b) of the Act and are not to be treated as other than new and distinctive.
In the case of Re:Examination of registered designs 348271, 348344, 348345 and 348346 in the name of Bitzer Kuehlmaschinenbau GmbH [1] the owner argued that the examiners’ reports did not include representations which disclosed all angles of the prior art designs, merely single perspective views. It was argued by the design owner that the examiner therefore had to infer an overall impression of the earlier designs.
[1] 2015 ADO 1.
The Registrar’s delegate in that case referred to the criteria set out by Jessup J in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd[2] and further observed that:
“The Designs Manual of Practice and Procedure (‘the Manual’) notes that ‘[i]t will frequently be the case that a citation does not expressly display the cited product from all perspectives.’ This is because many publications containing images of designs, such as advertising materials, only show the product from a single angle. IP Office databases also only occasionally show the entire design. As far as I am aware, only the USPTO requires full disclosure of all angles of a design as a prerequisite for registration. Australia certainly does not. If it were the case that all angles of a design in the prior art base were required before it could form the basis of an objection this would severely constrain the ability of the Registrar to conduct effective examination of registered designs. This would in turn mean that many designs that are not new and distinctive would pass examination, against the intention of the Act.”
[2] (2007) 71 IPR 307.
Applying that thinking here, I am satisfied that the Catalogue, supplemented if necessary with other views of the Designs disclosed by Citation 2 and Citation 3, show sufficient detail against which to assess the distinctiveness of the Designs.
I am further satisfied that the Prior Disclosures anticipate the Designs and that, as a result, the Designs are not new or distinctive.
Section 18
That brings me to the Owner’s alternative argument that the Designs are not to be treated as other than new and distinctive by operation of section 18 of the Act, which provides:
Section 18 - Certain designs not to be treated as other than new and distinctive
(1) This section applies if:
(a) copyright under the Copyright Act 1968 subsists in an artistic work; and
(b) an application is made by, or with the consent of, the owner of that copyright for registration of a corresponding design.
(2) The design is not to be treated, for the purposes of this Act, as being other than new and distinctive, or as having been published, by reason only of any use previously made of the artistic work, unless:
(a) the previous use consisted of, or included, the sale, letting for hire or exposing for sale or hire of products to which the design had been applied industrially, other than products specified in regulations for the purposes of paragraph 43(1)(a); and
(b) the previous use was by, or with the consent of, the owner of the copyright in the artistic work.
(3) In this section:
"applied industrially" has the meaning given by regulations under section 77 of the Copyright Act 1968.
Section 18 is conditioned, amongst other things, by the requirements (i) that the applications for the Designs were made by, or with the consent of, the copyright owner, and (ii) that the applications for registration were for corresponding designs.
The Second Walsh Declaration makes it clear that the prototypes were made by employees of the Owner and in the course of their employment. The Owner is the copyright owner and was the applicant for the Designs.
Section 5 of the Act defines a “corresponding design”, in relation to an artistic work, to have the same meaning as in Division 8 of Part III of the Copyright Act 1968. Section 74 of the Copyright Act 1968 defines, for the purposes of Division 8 of that Act, a “corresponding design”, in relation to an artistic work, to mean visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work.
There is no suggestion that the Designs are anything other than “corresponding designs”.
Section 18 goes on to state that a design is not to be treated as having been prior published by use of the artistic work unless that use consisted of the sale or exposing for sale of products to which the design had been “applied industrially”, that expression having the meaning given by regulations made under section 77 of the Copyright Act 1968.
Regulation 17 of the Copyright Regulations 1969, made pursuant to section 77(5) of the Copyright Act1968, provides that a design is taken to be applied industrially if it is applied to more than 50 articles. Nonetheless, it has been decided that application of a corresponding design to less than 50 articles might still be industrial application if products bearing the design have been made pursuant to a process for the systematic production of those articles.[3]
[3] Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120.
The First Walsh Declaration states that:
Relying on those statements the Owner submits that there was no industrial application of any of the Designs before the 14 January 2014 Priority Date. However, the question is whether the production of the prototypes amounts to industrial application.
The evidence would suggest that only one of each prototype was made. Nevertheless, an awkward fact presents itself since the Catalogue refers in its first page of text to the Owner’s claim of “a current production capacity of 1,800 helmets / week”, a statement which took the Examiner’s attention and caused some understandable concern.
I have balanced that statement in the Catalogue against the larger context in which it appears – set out below – which strikes me, if not as advertising puffery, then certainly not as a statement bearing down on the Designs at issue with any great specificity. It is noteworthy in that regard that none of the Products are for a “helmet”.
I note, further, that the Third Walsh Declaration describes the prototypes as being in the nature of “proof of concept” rather than “working units” or “working prototypes”. That is, they were faithful to the Designs in terms of shape and configuration but well shy of functional utility. The declaration describes a lead time from prototype to full working development of typically two years during which period demand for the goods is tested against commercial viability. The declaration states that it is not uncommon in the business for these goods for prototypes to never reach final production.
I have no reason to question those statements. They seem intuitively sensible and believable. Taken together with the other evidence and with the Owner’s submissions, there is a serious question as to whether there was industrial application.
That said, there is an element missing from this section 18 analysis so far, namely, the identification of a qualifying copyright work.
If I retrace the section 18 argument, I see that it was raised quite early in response to the Examiner’s first reports of 11 December 2014. By its 6 May 2015 letters, the Owner’s attorneys asked that disclosures in the Catalogue be disregarded under section 18 because:
… the design had not been industrially applied before the priority date of 14 January 2014. The [Catalogue] was prepared using the photographs of prototypes for future products. …
In this case, [artistic] copyright subsists in a photograph. … We therefore request that the image available from [the Catalogue] in 2013 be disregarded as prior art … .
By second reports dated 27 May 2015 the Examiner responded:
Your assertion is that the relevant artistic work is a photograph, yet you have not provided any information regarding when or where this photograph was taken or how ‘use’ of this photograph relates to the cited prior art.
It is not clear how ‘prototypes of the products depicted in the design’ can be described as use of the artistic work, being a photograph of the said prototypes. … The fact that a photograph was taken of the prototype means that it is a necessary condition that the prototype existed before the photograph was taken. Since the prototype necessarily predates the artistic work, the prototype cannot be the use of an artistic work.
In reply, the Owner’s attorneys wrote on 1 September 2015:
Copyright in an artistic work
The Copyright Act defines an artistic work as including a drawing, whether the work is of artistic quality or not.
Attached is a 3D CAD model dated 22 October 2012. Screenshots of this 3D CAD model are exhibited as Exhibit A of the declaration of Desmond Walsh dated 31 August 2015. Copyright subsists in this 3D CAD model.
The physical prototype
The physical prototype components were machined and 3D printed plastic parts, hand finished and painted. …
The physical prototype was photographed. These photographs were used in [the Catalogue].
The Examiner issued third reports on 18 September 2015 stating:
Thank you for the information supplied in relation to the relevant artistic work and the use of same. I confirm that no further information is required in this regard.
The remaining issue is the question of industrial application. …
As seen, the Owner’s position moves about over the course of correspondence with the Examiner. Three candidates have at different points been offered up as the relevant work in each case: the CAD (computer-aided design) images of the Product; the prototype of the Product; and the photographs of the prototype.
Read together, the First and Third Walsh Declarations explain that in each case a polished physical prototype is made based upon the CAD model. The prototype is fabricated from plastic parts and hand painted. Photographs of the prototypes are taken and those photographs were used in the Catalogue.
The images held in the CAD computer program are not artistic works; they are part of a literary work for the purposes of the Copyright Act 1968. Section 10 of that Act defines a “literary work” to include “a computer program or compilation of computer programs” and further defines a “computer program” to mean “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” In my assessment, the images of the Designs held in the program only exist as a set of instructions to a computer and have no material form of their own.
The prototype in each case might qualify as an artistic work under section 10 of the Copyright Act , either as a “sculpture” or as a “work of artistic craftsmanship”.
The photographs of the prototypes qualify as artistic works under section 10 of the Copyright Act.
I am unable to find an authority for the proposition that, for the purposes of section 18 of the Act, the relevant artistic work must be the first made or first published work. Nevertheless, that proposition would seem to have some sense and since in each case the prototype was made first and published before the Priority Date I regard it as the relevant work for the purposes of section 18.
The case of Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd [4] (“Safe Sport”) concerned an interlocutory injunction to restrain the sale of sporting helmets said to infringe the applicant’s registered design. In the Supreme Court of Victoria, King J refused the application and referred the matter to trial, finding that there was a genuine case on validity because of prior disclosure by the design owner.
[4] (1985) 4 IPR 120.
King J. heard argument on what was then section 17A of the now repealed Designs Act 1906, a provision similar to section 18 of the Act. Three prototypes of the plaintiff’s helmets had been made before the priority date of the design registration. Argument centered on the question of industrial application but in so far as section 17A required the existence of an “artistic work”, the court proceeded on the basis that the helmets were “works of artistic craftsmanship” if anything. King J expressed reservations as to whether they so qualified as works of artistic craftsmanship and the issue was left undecided.
In my assessment, to attempt to treat the prototype as a work of artistic craftsmanship is attended by many difficulties[5], not least of which is consideration of the (artistic) intention or disposition of the creator. However, for the reasons which follow it is not necessary for me to look more closely into that issue because my later findings make it clear that the prototypes would not, for that reason alone, qualify as works of artistic craftsmanship.
[5] See, for example, Burge v Swarbrick [2007] HCA 17; see generally, “Works of Artistic Craftsmanship” remains an Enigma, Debrett Lyons, IP ASIA, 27 September 1993.
What is clear to me is that is the prototype qualifies as an artistic work by reason of being a “sculpture”, or not at all. However, whether it does so qualify is an uneasy question.
Section 10 of the Copyright Act defines an “artistic work” to mean “a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not”, and it defines a “sculpture” to include “a cast or model made for purposes of sculpture.” That last definition is somewhat circular but must be reckoned with since the prototype is clearly a cast or model.
So, whilst artistic merit is not a consideration, artistic intention is[6] and in the UK case of Lucasfilm Ltd v Ainsworth, (“Lucasfilm”) Mann J reasoned that:
A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes. I appreciate that this example might be criticised for building in assumptions relating to what it seeks to demonstrate, and then extracting, or justifying, a test from that, but in the heavily subjective realms of definition in the artistic field one has to start somewhere.[7]
[6] it is for this reason that if the prototype fails to be an artistic work, it fails as a work of artistic craftsmanship.
[7] [2009] EWCA Civ 1328 at [65].

The UK Court of Appeal upheld Mann J’s reasoning that required a sculpture to have an “intrinsic quality of being intended to be enjoyed as a visual thing.”[8]
[8] Ibid at [75].
Arguably, this reasoning places a higher burden on a party seeking to prove a sculpture to be an artistic work than, for example, a “drawing”, which can be entirely prosaic and absolved from enquiry as to artistic intent.
This is perhaps one reason for apparently irreconcilable court decisions. Older decisions from the UK have, for example, held toy soldiers[9] and wolf cub heads[10] to be sculptures. It could be argued that those objects are intended to be enjoyed as visual things, but the New Zealand Court of Appeal held in the case of Lincoln Industries Ltd v Wham-O Manufacturing Co. (“Lincoln”) that the plainly utilitarian wooden models of “Frisbee” flying toys which were made early in the process leading up to the finished plastic products also qualified as sculptures.[11]
[9] See, Wood v Stoddard’s Ltd [1928-35] Macq Cop Cases 294
[10] See, for example, Pytram Ltd v Models (Leicester) Ltd (1930) 1 Ch. 639 concerning a model of a wolf cub’s head.
[11] (1984) 3 IPR 115, albeit that the Court went on to find that the plastic end products were not copyright works because they lacked the expressive intention of the creator.
A few years later in the Australian Federal Court case of Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd, Pincus J had to consider a claim to artistic copyright in drive mechanisms for ride-on lawn mowers. It was argued that copyright subsisted in the drive mechanism as an artistic work since it was composed of parts which themselves were sculptures and therefore artistic works. His Honour stated that:
“… in so far as the word (“sculpture”) remains undefined it must be given its ordinary meaning, in accordance with orthodox principles of construction.”[12]
[12] (1990) 17 IPR 417 at 427.
In Lincoln, Davidson CJ had to consider a definition of “sculpture” identical to that in the Copyright Act 1968, and he, too, took an orthodox approach to construction of the word “sculpture” by reference to, amongst other sources, the New Encyclopedia Britannica Vol.16, p 421, where it is said that “[S]culpture is not a fixed term that applies to a permanently circumscribed category of objects or sets of activities.”[13]
[13] (1984) 3 IPR 115 at 130.
By contrast, in the case of Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (t/as Viking Swimming Pools and Spas)[14], the Supreme Court of Northern Territory stated that[15] “the correct approach is to have regard to the object and purpose of the Act as a whole, the context within the Act in which it is used, and the history of the legislation.”
[14] (1998) 41 IPR 649.
[15] Per Mildren J at 650, considering the word “structure” in the context of a claim to copyright in buildings or models for buildings under the Copyright Act 1968.
To the extent that I can take guidance from the case law, I find that dictionary definitions of a “prototype” do not suggest a work in the nature of a sculpture. The definitions suggest something of a practical nature. There is no suggestion of works produced either by an artist or by a person having an artistic intention or purpose.
I find that the prototypes in this case were casts or models made for purposes of sculpture. Both legislative and artistic intention would point against them being sculptures. The evidence shows that the prototypes were produced either for the purposes of putting pictures of them in the Catalogue, or as a step in the production process.
There is no mention of the creator’s intention and the Third Walsh Declaration describes the prototypes as being in the nature of “proof of concept”, that is, a model on the way to full functional utility and something that may never reach final production.
Finally, if I return to those cases linked by common subject matter, I note that in Safe Sport there was no submission that the helmets were sculptures and in Lucasfilm (which concerned helmets and armour from the “Star Wars” franchise) the works were held not to be sculptures since their primary function was “utilitarian”.
Taking account of all these matters, I do not find that the prototypes are sculptures or artistic works within the meaning of the Copyright Act1968.
With that finding there is no qualifying artistic work for the purposes of section 18(1)(a) of the Act. I find that section 18 has been not established in respect of any of the four Designs. Accordingly, I conclude my finding that the Designs were not new and distinctive at the Priority Date.
Decision
I am satisfied that a ground of revocation has been made out in respect of all of the Designs. The provisions of section 68 now apply. I direct that Design Registration Nos. 356855, 356856, 356858 and 356859 be revoked one month from the date of this decision.
If the Registrar is served with a notice of appeal from this decision before that time, I direct that revocation shall not occur until either the appeal is discontinued or, in the event of a decision by the court, if revocation is contrary to any court order.

Debrett Lyons
Hearing Officer
Designs Hearings
26 April 2017

Registration No.	Product name	Perspective Representation of the Design
356855	Visor
356856	Helmet mounted microphone
356858	Visor and mandible shield assembly
356859	Mandible shield

[2017] ADO 3

24 April 2017