Baker and Priem

[1989] ADO 4

In the Matter of the Designs Act 1906

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In the Matter of Registered Design No. 93105 in the Name of EDWARD JOSEPH BAKER and ERROL FRANKLIN PRIEM

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In the Matter of Application under Section 27A for Extension of the Period of Registration.

DECISION OF AN ASSISTANT REGISTRAR OF DESIGNS:
Background
         In my decision in this matter dated 6 June 1989 I found that there was no evidence before me that copyright subsisted in any artistic work corresponding to the Registered Design, that prima facie section 17A of the Designs Act was not applicable and that the design was published by prior use and was not new or original pursuant to sub‑section 17(1).  On that basis I was not prepared to extend the period of registration.  For the reasons indicated in my earlier decision, I allowed the design owners 30 days to submit any further evidence of copyright subsisting in an artistic work corresponding to the registered design.  On 6 July 1989 detailed written submissions from the design owners, accompanied by evidence comprising a declaration by Errol Franklin Priem, were lodged at the Designs Office.  Most of the matters referred to in my earlier decision were addressed in the submissions.  I now comment on these submissions and the further evidence.

Submissions and Comments
         Firstly, the owners submitted that copyright subsists in a cardboard template of part of the subject Registered Design.  The Design, No. 93105, is for a bull‑bar, especially suited for Toyota vans.  The template is for a "profile" of the bull‑bar, the profile being a side view of either one of the two vertical members which support the horizontal loop members.  In my earlier decision I found the template not to be an artistic work equivalent to the Registered Design since it only relates to one portion of the bull‑bar.  The owners submitted the following argument:

"... the question is not whether there was an equivalent artistic work, but whether there was an artistic work in which copyright subsisted and an application was made for registration of a corresponding design.

Section 75 of the Copyright Act provides that when a copyright exists in an artistic work (in this case, the template for the uprights) and a corresponding design is registered under the Designs Act, it is not an infringement of the copyright in the work to do anything, while the monopoly in the registered design exists under the Designs Act, that is within the scope of the monopoly in the design. "Corresponding design" in relation to an aartistic work is defined in Section 74(1) as meaning a design that when applied to an article results in a reproduction of that work. The artistic work is the template for the upright, while the article is the bullbar including the upright. It is quite clear that the artistic work ‑ the template of the upright ‑ is reproduced when the design is applied to the bullbar. Section 75 therefore means that reproduction of the bullbar, including the uprights, does not infringe the Copyright in the template. However, the words "corresponding design" in Section 74 must be interpreted in the same way in Section 17A. This means that the words "corresponding design" in Section 17A(1)(b) applies in the case of the template, even though the uprights are only part of the bullbar."

The significant matter to be considered, pursuant to sub‑section 74(1) of the Copyright Act, is whether the design is a reproduction of the artistic work and consequently whether the design can be seen as infringing the copyright in the artistic work. Even though the features of the bull‑bar profile shown in the template can be seen in the design, I think it is significant that the design has other features not shown in the template. These features, such as the bull‑bar loops, are essential features of the bull‑bar and are not immaterial details. In considering an analogous infringement situation I think that these differences would be seen as constituting a creative contribution by the design owner and that the incorporation of the profile in the overall design of the bull‑bar would constitute a fair use of the copyright material. A literary analogy is the lawful use of copyright material in compilations such as directories and text‑books. Also, in the present circumstances, I think it is appropriate to consider a patent analogy, since the subject matter of the design and of the copyright material is of a utilitarian nature. In a patent situation the bull‑bar would not be considered as being an infringement of a patent to the profile since some of the essential features of the bull‑bar have not been disclosed in the material relating to the profile. Also in this matter section 71 of the Copyright Act is relevant; the section relates to reproduction of work in different dimensions and reads as follows:

"71For the purposes of this Act ‑

(a)the making of an object of any kind that is in three dimensions does not infringe the copyright in an artistic work that is in two dimensions; and

(b)the making of an object of any kind that is in two dimensions does not infringe the copyright in an artistic work that is in three dimensions,

if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work."

This section requires a visual comparison to be made by a non‑expert in the art. In this case I consider that a non‑expert would not conclude that the bull‑bar of the design could have been reproduced from the template per se, since the bull‑bar consists of other essential parts in addition to the profile parts. Thus I confirm my earlier finding that the Registered Design is not a design corresponding to the template of the profile. For a discussion of the application of section 71 of the Copyright Act to utilitarian copyright material see the decision of the Federal Court in Edwards Hot Water Systems v. S.W. Hart & Co. Pty. Ltd. (1984) 1 IPR 228.
         Secondly, the design owners submitted that copyright subsisted in a "model bull‑bar which was made by the copyright owners on or around early November 1985 and which has since been destroyed".  The application for the Registered Design was lodged on 13 December 1985.  Some evidence of this model was before me when I made my earlier decision, but in the earlier submissions it was referred to as "the original bull‑bar".  In my earlier decision I concluded that the original bull‑bar could not be seen as being either a sculpture or a work of artistic craftsmanship and therefore was not an artistic work pursuant to section 17A of the Designs Act.  I concluded that the original bull‑bar could not be seen as being a sculpture since it was neither a conventional sculpture, which would be made primarily to be viewed, nor a model which would be distinguishable from the final form of the article.  Mr. Priem's declaration accompanying the submissions lodged on 6 July 1989 is concerned with this original or model bull‑bar.  He describes how he and Mr Baker created the "design for the uprights" and welded the components together, in paragraph 6 he states:

"The model bull‑bar referred to in clause 5 hereof was a model only and was not intended to be used as a bull‑bar.  The model was in fact unsuitable for use as a bull‑bar: because of the joins in the "hoops" and the lack of strength in the welding the model was not strong enough to be used as a bull‑bar."

He then describes how the model was fixed to a Toyota van and photographs were taken.  He deposes that photocopies of photographs attached as an exhibit to his declaration are copies of those photographs and that they show "visible joins" in the hoops on one side of the bull‑bar.  In paragraph 9 of his declaration he states:

"The model was removed from the van before the van was returned.  The model was then taken apart and used to create a jig for the purpose of reproducing the bull‑

bars in accordance with the model.  The model pieces were later discarded.  The jig was created before any of the bull‑bars were made."

In this matter I do not think that the evidence is sufficient for me to modify my earlier decision.  The photocopies of the photographs do, on a careful analysis, show a slight discontinuity in one of the hoops but this may or may not be proof that the bull‑bar shown in the photographs was a model as such.  I note that a copy of a photograph of a bull‑bar, "manufactured in accordance with the Design" (presumably not the model since it was not described as such) included in Mr Priem's affidavit of 10 February 1987 as exhibit EFP3, also shows a discontinuity in a similar position on the left hand side loop of the bull‑bar.  This causes further doubt as to whether such discontinuities are indicative of the bull‑bar being a model as such.  Also, I only have Mr Priem's statements as to when the photographs were taken; there is no corroborative proof.  In this matter I must be consistent with my earlier decision, where I found that a photograph filed as evidence under section 27A(9) by Mr Brown, the informant in the matter, was insufficient proof of prior use because there was no corroborative evidence of when the photograph was taken.
         Thus, I find that the evidence is insufficient to prove that a model as described existed before the lodgement date of the application for the Design and, since it is now allegedly destroyed (and from the evidence I conclude that it was not made public) there is also some doubt whether copyright subsisted in the model bull‑bar prior to the date of use pursuant to section 17A.  Furthermore, and notwithstanding the above comments, even if a model as described did exist, I doubt that such a model could be seen as a true model constituting an artistic work.  I stated in my earlier decision that a model should be "distinguishable from a final form of the article".  Mr Priem's alleged model in this case is the same size and substance as the subsequently produced bull‑bars and it was manufactured using similar welding techniques.  The only difference is purported to be that the alleged model was "cobbled together" instead of being completely welded, but I do not think that this difference is a sufficient distinction.
         Thirdly, the Design owners submitted that a bull‑bar generally may be considered as being a sculpture, and therefore an artistic work; notwithstanding whether or not there may be evidence of a model form.  The only further evidence lodged to support this contention was a copy of an article from Bulletin magazine entitled "Vox Pop Art" which discussed inter alia some sculptures which were welded together.  I do not think that this evidence is significant since the sculptures in the article were clearly all on public display primarily for the purpose as being viewed as a work of art.  Messrs Priem and Baker's bull‑bar cannot be said to be in the same category.  This matter is covered fully in my earlier decision and I have no further evidence before me to warrant changing that decision in this regard.
         Fourthly, submissions were made that the bull‑bar was a work of artistic craftsmanship, viz:

"Although you say on page 17 of your decision that in your view Messrs Baker and Priem, in assembling the original bullbar, did not have as their main object that the bullbar should have a substantial appeal to the aesthetic tastes of those who observe it, and therefore the model could not be viewed as a work of artistic craftsmanship, we say that the aesthetics of the bullbar were uppermost in the minds of the authors.  The statutory declaration of Mr Priem supports that."

In this matter I do not agree that the evidence supports the contention that the aesthetics of the bull‑bar were uppermost in the minds of the authors.  There is no indication of this in Mr Priem's latest declaration nor in any of his earlier affidavits or declarations.  In fact, the alleged model was taken apart soon after it was constructed and, after the jig was created, the model pieces were discarded.  This would seem to be a rather untimely end to the model if it really constituted an artistic work.
Fifthly, the Design owners submitted that the jig per se and the bull‑bars made from the jig were also sculptures and therefore artistic works. Section 10 of the Copyright Act defines a sculpture as including" a cast or model made for purposes of sculpture" and the owners argued that the jig is a kind of "cast". However, I have found that the alleged model bull‑bar cannot be seen as being a sculpture, and it therefore follows that the jig and subsequent bull‑bars also cannot be seen as being sculptures for similar reasons.
         Finally, the Design owners submitted that copyright subsists in the photographs taken of the model bull‑bar, copies of which were attached as an exhibit to Mr Priem's latest declaration.  In this matter it is important that it can be shown that copyright subsisted in the photographs before the use or sale of the articles to which the Registered Design is applied so that the criteria of section 17A of the Designs Act are met.  However, as discussed earlier in this decision there is inadequate proof as to when these photographs were taken.  Also there is some doubt as to whether the photographs were developed before the dates of sale of the owner's bull‑bars.  Some of the sales invoices, in evidence before me in my earlier decision, were dated early in November 1985, but the photographs may not have been developed until "towards the end of November 1985" as indicated in paragraph 1 on page 10 of the owners submissions of 6 July 1989:

"Section 10 of the Copyright Act defines "photograph" as "a product of photography or a process similar to photography". Under Section 32, copyright exists in the photographs, even though they may have been undeveloped and unprinted until towards the end of November, 1985, by force of Section 32 of the Copyright Act, which provides that Copyrights exists in an artistic work that is unpublished and of which the author was a qualified person at the time when the work was made. The author, being Mr Baker or Mr Priem, was a person resident in Australia and thus is a "qualified person" as defined in Section 22(4). While there is no explicit requirement in the Copyright Act that work should be in a material form before objection arises, it is submitted that the creation of a negative via the taking of a photograph is a material form and that in any case the definition of "photograph" in Section 10 of the Act ‑ "a product of photography" ‑ covers the situation."

If there was conclusive proof that the photographs were not taken until after some of the bull‑bars had been sold, section 17A of the Designs Act obviously would not be applicable since the "previous use" could not have involved use of the artistic work, as required by that section.  However, even in the present circumstances where there is some doubt as to the date of the photographs, I am still of the opinion that section 17A is not applicable, because there is no evidence before me of any use having been made of the photographs.  The photographs ostensibly have been taken merely as a record of the event of the construction of the original bull‑bar, they could not have been actually used in the construction of the bull‑bar (as for example may be the case with a set of drawings).  The very nature of a photograph is such that it cannot be taken before the event.
Conclusion
         The Design owners have now had a further opportunity to show that copyright subsists in any artistic work corresponding to their design and that section 17A of the Designs Act is applicable. However, I have found that they have not presented sufficient evidence to prove their case and consequently I refuse to extend the period of registration because, as found in my earlier decision, the Design is published by prior use and is not new or original pursuant to sub‑section 17(1) of the Designs Act.

(J.I. WELSH)