Baker and Priem

[1989] ADO 2

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
         Design No. 93105, for a bull‑bar, was lodged on 13 December 1985 by EDWARD JOSEPH BAKER and ERROL FRANKLIN PRIEM and was registered on 17 July 1986.  On 21 July 1986 a letter, signed by PHILLIP GEORGE BROWN, was received in the Designs Office from a business known as VAN EXTRAS.  The letter enquires as to the status of  Messrs. Baker and Priem's design and refers to bull‑bars of similar design having been sold by Van Extras; a sales brochure is attached to the letter.  On 16 June 1987 a letter was received in the Designs Office from patent attorneys representing the said Mr. Brown and ROSLYN MARGARET BROWN.  This letter states that the Browns are defendants in an action [No. 1506 of 1987] before the Supreme Court of New South Wales, Equity Division, for infringement of Registered Design No. 93105, that in the course of defending that action the Browns are alleging that the registered design was not new and original, and requests that the Registrar consider two declarations attached to the letter when deciding whether or not to extend the registration under section 27A(9).

On 29 September 1987 solicitors for Messrs. Priem and Baker served on the Registrar, in accordance with N.S.W. Supreme Court Rules Part 81 Rule 9, re the abovementioned action, the following documents:

1.Summons

2.Affidavit of E.F. Priem sworn 10 February 1987

3.Affidavit of R.A. Pye sworn 3 February 1987

4.Affidavit of P.G. Brown sworn 18 March 1987

5.Cross‑claim

6.Affidavit of P.G. Brown sworn 15 April 1987

7.Affidavit of E.F. Priem sworn 1 May 1987

8.Affidavit of P.G. Brown sworn 13 July 1987

9.Particulars under Part 81 Rule 40.

Some documents missing from the original set (exhibits to one of the affidavits) were subsequently served on the Registrar on 28 January 1988.
         The design owners applied for extension of term of the registration on 7 December 1987 but were informed that an application for restoration was also required since the 12 month period referred to in sub‑section 27A(1) had expired and the registration had ceased.  On 1 March 1988 an application for restoration was lodged and was subsequently opposed by the Browns under sub‑section 27B(3).
         After these applications were lodged by the design owners to revive the registration, the Designs Office further considered the matter of the abovementioned letters dated 21 July 1986 and 16 June 1987 from Van Extras and the Browns' patent attorneys.  The Van Extras letter, which was received within the 11 months specified in sub‑section 27A(4), was deemed to be a notice lodged pursuant to that sub‑section, and the letter from the Browns' attorneys was thus deemed to be a matter which the Registrar may regard pursuant to sub‑section 27A(9).  The design owners were informed of these matters, according to sub‑section 27A(6) on 25 November 1988 and a reply, pursuant to sub‑regulation 25(2), was lodged by the owners' patent attorneys on 16 December 1988.
         The matter was heard in Sydney on 22 March 1989, the registered owners were represented by Mrs. Kerry Moore Chrysiliou and Mr. Priem was present at the hearing.  This type of hearing according to current Office procedures is required to be conducted ex‑parte.  Immediately preceding this hearing, in the same session, another hearing was held, inter‑partes, on the opposition to restoration; that matter is dealt with in a separate concurrent decision in which I have found that the design is fit for restoration insofar as the matter of section 27B is concerned.
Evidence and Submissions
         With regard to the Van Extras brochure received on 21 July 1986, Mrs. Chrysiliou submitted that there was no statement of the publication date of the brochure and that none of the bull‑bars shown therein are arranged such that the side loops are located under the vehicle headlights, as is the case with Design No. 93105.  Some of the bull‑bars in the brochure are shown with side loops located around the vehicle headlights.
         The two declarations attached to the letter from the Browns' attorneys, received on 16 June 1987, are made by the said Mr. Brown and by John Douglas Forster, patent attorney.  Mr. Brown declares that he is one of the proprietors of Van Extras which is in the business of supplying bull‑bars for motor vehicles and that on 27 November 1985 he took a photograph of a Toyota Tarago van, fitted with a bull‑bar, which was on public display at the premises of a Sydney motor vehicle dealer.  A photograph is exhibited with the declaration.  Mr. Brown also declares that on the same date at the same premises he purchased a "Baker and Priem bull‑bar for a Toyota Tarago Van" and that the bull‑bars purchased and photographed are identical to Design No. 93105.  Mr. Forster declares that a bull‑bar shown to him and identified as that purchased by Mr. Brown is visually identical to the subject Registered Design.
         Mrs. Chrysiliou submitted that Mr. Brown's photograph should not be included in the ambit of "matter that has been published in a document ..." according to sub‑section 27A(4); i.e. a photograph per se is not a document, (compared to a photograph in a newspaper for example), and that even if the photograph was taken on 27 November 1985 there is no evidence to indicate that the photographic print was available before the priority date.
Whereas sub‑section 27A(4) is restricted to matters published in a document, sub‑section 27A(9) allows the Registrar to have "regard to any matter ... that has come to his notice in connection with a design referred to in sub‑section (4), [to] refuse an application for extension ... on the ground that the design was not ... new or original". This would include the ground of publication by prior use, and it is suggested in Mr. Brown's declaration that the Design owners were selling bull‑bars of the subject Design before the priority date of 13 December 1985. In this matter Mrs. Chrysiliou argued that the Design owners were "saved by section 17A" of the Designs Act; i.e. that copyright subsists in artistic works corresponding to the Design. Section 17A reads:

"17A.(1) Where ‑

(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 the registration of a corresponding design,

that design shall not be treated for the purposes of this Act as being other than new or original, or as having been published, by reason only of any use previously made of the artistic work unless ‑

(c)the previous use consisted of or included the sale, letting for hire or offering or exposing for sale or hire of articles to which the design had been applied industrially, other than articles specified in regulations made for the purposes of sub‑section 17(2); and

(d)the previous use was made by, or with the consent of, the owner of the copyright in the artistic work.

Any regulations in force under the Copyright Act 1968 that make provision for determining the circumstances in which a design is, for the purposes of section 77 of that Act, to be deemed to be applied industrially have effect for the purposes of sub‑section (1)."

Mrs. Chrysiliou submitted that the artistic works are as follows:

(i)A cardboard template of the "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 this case the profile is of a pointed shape, similar to a mathematical "greater‑than" symbol.  The template was presented as evidence at the hearing.

(ii)A cardboard drawing; this has been presented as evidence in the said Supreme Court action but was said to be not available for the hearing.

(iii)The bull‑bar of the subject Design; since "when originally made it constituted a sculpture". She submitted that the bull‑bar is not a work of "artistic craftsmanship" and therefore does not have to show "artistic merit", but it can be considered as an artistic work or sculpture for the purposes of section 17A. She compared the bull‑bar to other welded metal sculptures and suggested that it is "pleasing to the eye."

Even though copyright may subsist in artistic works corresponding to a design, if it can be shown that, before the priority date, a publication of the copyright material existed, which showed this material applied to an article industrially and either showed the article as being for sale, letting for hire or offering or exposing for sale or hire, then the design may in fact be found to be not novel. See paragraph (c) of sub‑section 17A(1). Regulation 17 of the Copyright Regulations, which has effect for the Designs Act, states that "a design shall be deemed to be applied industrially if it is applied to more than fifty articles". Mrs. Chrysiliou argued that the deeming provision of regulation 17 of the Copyright Act is exhaustive; she referred to, inter alia, Trade Practices Commission v. Bowral Brickworks Pty. Ltd. (1984) 55 ALR 733 at 735 and Muller v. Dalgety & Co. Ltd. (1909) 9 CLR 693 at 696, and she concluded:

"The phrase applied industrially is not defined otherwise than in regulation 17(1) of the Copyright Act,it's not a precise expression as a matter of ordinary or legal english, accordingly it's understandable that Parliament would have sought to resolve doubt as to its meaning by a deeming clause having the effect of an exhaustive definition."

With regard to the burden of proof, Mrs. Chrysiliou submitted that "unless" in line 8 of sub‑section 17A(1) of the Designs Act indicates that the onus is on the objectors to prove the facts according to paragraphs (c) and (d) of sub‑section 17A(1). The matter of exception or excuse was discussed in Dowling v. Bowie (1952) 86 CLR 136 at 139 and 160:

"It lies upon the party seeking to avail himself of the exception or excuse to prove the facts which bring his case within it."

In this case she submitted that:

"The burden was on the objectors to establish that we industrially applied our design and sold at least 2 articles or offered for sale at least 2 articles before our priority date and they haven't done that."

The following parts of the material served on the Registrar pursuant to the Supreme Court Action are significant.
         Mr. Brown, in his affidavit dated 15 April 1987 refers to a "bundle of invoices":

"Exhibited to me and marked PGB‑3 is a bundle of invoices of the Plaintiffs produced by the Plaintiffs in answer to a subpoena as invoices for sales of articles to which the Plaintiffs registered design has been applied.  Invoices from that bundle show that between 11 November, 1985 and 12 December, 1985 inclusive, the Plaintiffs sold 44 such articles and that by 17 December, 1985 the Plaintiffs had sold 51 such articles."

Also, in the same affidavit, Mr. Brown argues that it would be unlikely that the plaintiffs, Messrs. Baker and Priem, would have manufactured the bull‑bars on a one‑off basis.
         Mr. Priem, in his affidavit dated 1 May 1987 refers inter alia to the construction of the bull‑bars and to the sales invoices.  In paragraph 2 he refers to ordering 300 profiles from a supplier prior to 13 December 1985.  In paragraph 7 he states:

"The 1986 Model Toyota Tarago was only released onto the market in October 1985 and the bullbar corresponding with the Registered Design was designed for that vehicle.  Because both the motor vehicle and the bullbar were entirely new concepts on the market we ordered in the profiles but only made the bullbars as each one was ordered.  I was uncertain at the time the orders were placed for the profiles to make bullbars corresponding with the Registered Design whether there would be any and, if so, how many, orders for such bullbars."

Further reference is made to the manufacturing methods in paragraphs 11 to 13; paragraphs 11 and 13 read as follows:

"11.The bullbars corresponding to the Registered Design were manufactured as each order was received or as soon as possible thereafter depending upon the number of other bullbars required to be manufactured in the factory.  In November 1985 we were manufacturing approximately 50 different models of bullbars and rearbars for commercial and passenger motor vehicles."

"13.The bullbar corresponding with the Registered Design could be completely manufactured in approximately forty five minutes and it was, therefore, not necessary for us to keep any of such bullbars in stock when we first began manufacturing them, nor in November and December 1985 did we keep them in stock."

Paragraph 12 refers to the use of jig, manufactured from "the original bull‑bar" and which was to assist in the assembly of bull‑bars manufactured in the plaintiffs factory "in the period November and December 1985".  Details are given of the use of the jig in the assembling and welding process.
         Paragraph 10 refers to the sales invoices:

"In November and December 1985, in relation to the bullbar corresponding with the Registered Design, it was our practice to receive an order by telephone and to then write out a sales invoice in duplicate.  The pink invoices, copies of which are Exhibit "PGB3" to the affidavit of Philip George Brown sworn 15 April 1987, were kept by us and the original sent to the customer when the bullbar was delivered.  We would also write out a delivery docket which was an exact copy of the sales invoice, in duplicate.  The original would be given to the person delivering the bullbar to the customer and the copy would be retained by us.  The original docket would be pinned to a board below the day on which the customer required the bullbar."

In paragraph 16 Mr. Priem states that "the dates on the invoices represent the date on which the bull‑bar was ordered by the customer".
Mrs. Chrysiliou submitted that the documents served on the Registrar relating to the said Supreme Court Action demonstrate that Messrs. Baker and Priem's design was not published before the priority date. She emphasised that there was no build‑up of stock, that each bull‑bar was only made up when ordered and that the invoices were made up only when an order was received, not when the bull‑bar was manufactured. She regarded the creation of the jig from the original bull‑bar as use made of an artistic work, i.e. a sculpture, and she emphasised the evidence which indicates that a count of the invoices shows that only 44 were made out prior to the priority date, this number being below the threshold defined by sub‑section 17A(2) of the Designs Act.
Decision
         On consideration of the Van Extras brochure, I do not regard it as publishing the registered design.  The argument relating to the bull‑bar characterized by the side loops being under the headlights is not important since this relates to a functional aspect of the design.  It is more significant that no publication date of the brochure has been established and that none of the bull‑bars shown therein actually look like the registered design, which is characterized by a vertically raised central section and the pointed profiles previously referred to.
         With regard to the declarations of Messrs. Brown and Forster, I do not think that it is necessary for me to decide whether the photograph constitutes publication in a document, pursuant to sub‑section 27A(4), when I am able to consider whether it may relate to evidence of publication by prior use, pursuant to the broader scope of sub‑section 27A(9).  In this regard though, I have no definite proof of the date on which the photograph was taken, only Mr. Brown's statement that it was done so on 27 November 1985.  This evidence per se is insufficient.
Thus I turn to the documents served on the Registrar pursuant to the Supreme Court Action. Regarding the invoices and the number of bull‑bars ordered or sold before the priority date, firstly I note that it is established that the invoices relate to sales of bull‑bars of the Registered Design; such is stated in paragraph 10 of Mr. Priem's affidavit of 1 May 1987. Secondly, I do not accept the Design owners' argument that there is some significance in the fact that the sales invoices were dated when the orders were made for the bull‑bars. If orders were made then it follows that the bull‑bars were being offered for sale, even though delivery may have occurred sometime later, and offering for sale is to be treated as publication. A similar matter was dealt with by the English Court of Appeal in Re Wheatley's Patent Application (1984) 2 IPR 450, [1985] RPC 91. In that case, a prototype conveyor pull‑key device was made and demonstrated to a potential purchaser in confidence. The potential purchaser thereupon placed an order for 10 pull‑keys, which order was accepted by the applicant. Delivery of the pull‑keys did not take place until the priority date. The Court found that there had been prior use; by agreeing to sell, the applicant had used his invention to achieve his commercial object. In this present case affidavits from both parties establish that 44 orders were made out for bull‑bars of the Registered Design before the priority date.
         Thirdly, an inspection of the invoices per se reveals the following:

(i)Apart from the order date discussed above, many of the invoices have a second, later, date written thereon.  These later dates are generally in a handwriting different to that used on the rest of the invoice, and prima facie appear to be the dates of some subsequent actions, perhaps the dates of delivery or the dates of payment (which would usually follow delivery).  Two of the invoices (Nos. 1293 and 1316), show these later dates as 6 December 1985, (i.e. earlier than the priority date.

(ii)One invoice (No. 1336) has been made out to "cash", there is no customer name and no reference to a customer order number as is the case for the other invoices; normal business practice suggests that it is most likely that this invoice relates to an "over‑the‑counter" type of sale.  This invoice is dated 4 December 1985.

(iii)The "customer order numbers" on the invoices suggest that there may be a separate record of customer orders, which if available, would be of interest to compare dates and other information.

(iv)Two of the "invoices" are in fact entitled "delivery dockets"; these appear to relate to one sale for which there is also an equivalent invoice (No. 1388).  There is only one date associated with these three documents, namely 13 December 1985, so the documents cannot be considered as relating to a sale before the priority date, but the existence of these delivery dockets prima facie suggests that more equivalent delivery dockets may be available especially in the light of Mr. Priem's statements in paragraph 10 of his declaration of 1 May 1987 referred to above.

Fourthly, I note that Mr. Priem states in his affidavit of 1 May 1987 that the bull‑bars "were manufactured as each order was received or as soon as possible thereafter" and that they "could be completely manufactured in approximately forty five minutes".  In this light, it seems likely to me that some orders made in early November 1985 would have been made up and delivered before 13 December 1985.
         It could be argued that some of these comments on the invoices are of low probative value in determining prior use, but when considered in addition to the more probative view of the evidence in the light of Wheatley's Application, as discussed above, I am drawn to conclude that the design owners actually sold or offered for sale a number in the order of 44 of their bull‑bars of the Registered Design before 13 December 1985.

Mrs. Chrysiliou argued that the design could not be deemed to be applied industrially firstly because less than fifty articles are involved and secondly because of her view of the exhaustive nature of the deeming provision of Regulation 17 of the Copyright Act, referred to above. This matter however is not clear‑cut, since in Safe Sport Australia Pty. Ltd. v. Puma Australia Pty. Ltd. (1985) AIPC 90‑210, 4 IPR 120, King J. of the Supreme Court of Victoria expressed support for the view that it be "a question of fact whether there is industrial application of a design in a case where less than fifty applications of the design have taken place", suggesting that Regulation 17 is not definitive of industrial application and not exhaustive. Further support for a view contrary to Mrs. Chrysiliou's submission can be found in Kevlacat Pty. Ltd. v. Trailcraft Marine Pty. Ltd. & Ors. (1987) AIPC 90‑458 where the Federal Court decided that Regulation 17 should be read as having an inclusive rather than an exhaustive construction.
However, instead of attempting to resolve this doubt on whether the design may have been industrially applied, I will now consider whether copyright subsists in an equivalent artistic work, since, if it can be shown that no copyright subsists, then the question of industrial application becomes irrelevant. Firstly, I do not consider the cardboard template of the bull‑bar profile to be an equivalent work since it only relates to one portion of the bull‑bar. Secondly, I cannot comment on the cardboard drawing since it has not been presented before me and I have no real evidence of its existence. (If such a drawing does exist, it would be important to establish whether the date of the drawing was before or after the dates of sale of the bull‑bars: in the latter case the design would lack novelty for the purposes of sub‑section 17(1) of the Designs Act and would not be saved by sub‑section 17A(1)).
I now consider the matter of whether the original bull‑bar can be construed as being within the ambit of the definition of "artistic work" in sub‑section 10(1) of the Copyright Act 1968, which reads:

""artistic work" means

(a)a painting, sculpture, drawing, engraving or photograph whether the work is of artistic quality or not;

(b)a building or a model of a building, whether the building or model is of artistic quality or not; or

(c)a work of artistic craftsmanship to which neither of the last two preceding paragraphs applies."

Whether the bull‑bar can be considered as a "sculpture", according to paragraph (a), or as a "work of artistic craftsmanship", according to part (c), is open to question, which I will now consider.  S. Ricketson, in The Law of Intellectual Property comments on sculptures in paragraph 5.79:

"In modern usage, to paraphrase the Shorter Oxford English Dictionary, "sculpture" means that branch of fine art which is concerned with the production of designs or figures in the round or in relief, either by the carving of some hard substance or by the fashioning of some plastic substance or by the making of a mould for casting in metal. The essence, then, of a work of sculpture is that it exists in a three dimensional form. Although earlier enactments contained more detail as to what constituted a sculpture, both the 1911 and 1968 Acts have left its meaning open, except to include, under s.10(1), casts or models made for purposes of sculpture. Furthermore, given that there is no requirement that such works be of artistic quality, a wide and diverse range of subject matter has been held to be eligible for protection as sculptures. These have included such things as plaster models of human and animal figures made for the purpose of casting metal toys, statuettes, wall plaques, commemorative medallions, a plaster model of a wolf cub's head used for making papier mache copies to be displayed on Boy Scout totem poles and even a wooden model for the making of plastic flying discs called "frisbees". Accordingly, there is no reason why such objects as coins, waxwork figures, dolls, puppets and even the lowly garden gnome should not be regarded as "sculptures". It is less clear, however, whether some modern three dimensional works of art would fall within the scope of the concept outlined above. Each of the foregoing examples involves the application of skill and labour to the moulding or shaping of some substance or material, whether hard or plastic. Many modern works, however, consist simply of everyday objects joined or welded together or, in some cases, simply arranged in a particular position, as in the case of a pile of bricks which were displayed at London's Tate Gallery in 1976. Such works do not necessarily display the techniques normally associated with sculpture. Nevertheless, as their purpose is the representation of an artistic concept in a three‑

dimensional form, it is submitted that they should still be regarded as "sculptures".  Such an approach would clearly accord with developing notions of art."

Functionality is a significant factor in determining whether a sculpture is registrable as a design : a sculpture having no industrial function is not registrable.  However, in determining whether copyright subsists in a sculpture, functionality is not a significant factor.  Copyright may subsist in an ordinary non‑
functional sculpture and it has also been found in a functional sculpture, for example in the frisbee case referred to by Ricketson, i.e. Wham‑O Manufacturing Co. & Ors. v. Lincoln Industries Ltd. [1982] RPC 281 (single judge) and [1985] RPC 127 (full court). In that case the Court of Appeal of New Zealand held that wooden models of the frisbees were sculptures and that the final plastic moulded frisbees and the dies and moulds used therefor were "engravings" and thus covered by copyright. The model was fashioned from wood and thus its creation was similar to that of a carved sculpture; the Court stated that "sculpture should in some way express in three‑
dimensional form an idea of the sculptor".  However, it also held that the final products ‑ the plastic frisbees produced by an injection moulding process ‑ were not sculptures.
Thus there are a diverse range of articles which may be construed as being sculptures and a question may be raised of where to draw the line. I do not think that any three‑dimensional object created by man necessarily constitutes a sculpture. For the purposes of interpreting sub‑section 10(1) of the Copyright Act one must not overlook the fact that a sculpture is still to be considered as an "artistic work" even though it is not required to have "artistic quality". Ricketson commented supra that "[a sculpture's] purpose is the representation of an artistic concept in a three‑dimensional form [my emphasis]. I think that the artistic concept may be manifest either in the article being created primarily to be viewed rather than used, or in a model which is distinguishable from a final form of the article. A model may be distinguished for example by features relating to size or substance or by using artistic techniques in its creation.
A further reason for concluding that there has to be some restriction on what type of three‑dimensional objects constitute sculptures is the very existence of part (c) of sub‑section 10(1); "works of artistic craftsmanship" could include three‑dimensional objects not viewed as being sculptures. This part is considered to include articles such as pottery, embroidery and silverware; the courts have considered articles such as a bicycle helmet1, a baby's

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1.  Safesport v. Puma, supra

rain cape2, a lady's frock3, a set of mathematical teaching rods4 and a moving sand picture5, under paragraph (c) as to whether they constitute works of artistic craftsmanship.  Also, in two cases involving exhaust pipes6 and boat moulds7, no submissions were made to the courts suggesting that these articles were sculptures.
Notwithstanding buildings or models thereof which are referred to in paragraph (b) of sub‑section 10(1), it is apparent that there are many three‑dimensional objects which do not fit clearly into the categories of sculptures or works of artistic craftsmanship. I am inclined to the view that three‑dimensional objects to which paragraph (a) clearly applies are obvious or conventional sculptures, in which the artistic aspect is inherent in the fact that they are seen to be sculptures. On the other hand, if there is some doubt about whether a three‑dimensional object constitutes a sculpture, it is more appropriate to consider whether it constitutes a work of artistic craftsmanship under part (c) of sub‑section 10(1).
         It has been established that "artistic" has a narrower meaning in the phrase "artistic craftsmanship" than when it is used in the more general phrase "artistic work".  For example in Cuisenaire v. Reed, supra, Pape J. stated:

"The true test, I think, is whether the author, in making the article in which copyright is alleged to subsist, was applying his skill and taste to its production with the main object of creating an article which, even if it be utilitarian, nevertheless will have a substantial appeal to the aesthetic tastes of those who observe it.  Put another way, it may be said that the test is whether the author was, in creating the

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2. Merlet v. Mothercare PLC 2 IPR 456
3. Burke v. Spicers Dress Designs [1936] Ch.401
4. Cuisenaire v. Reed [1963] V.R. 719
5. Komesaroff v. Mickle & Ors. (1986) AIPC 90‑355
6. British Leyland v. Armstrong [1986] RPC 279
7. Kevlacat v. Trailcraft Marine & Ors. (1987) AIPC 90‑458

article, cultivating one of the fine arts with the main object of appealing to the aesthetic tastes of those who view it, provided that the expression "the fine arts" is given the wide meaning of any application of skill and taste to the production of articles which are beautiful in themselves or which have an appeal to aesthetic taste."

In his affidavit dated 10 February 1987, Mr. Priem describes how he and Mr. Baker designed and constructed the original bull‑bar of the subject Design. As far as I can ascertain from the evidence, the original bull‑bar, which was immediately fitted to a vehicle, was the same shape, configuration, size and substance as the bull‑bars that were manufactured thereafter. The original bull‑bar was not made primarily to be viewed nor was it made as a model according to the criteria discussed above, thus I do not view it as being a sculpture as defined by the Copyright Act. Nor do I think that when Messrs. Baker and Priem were assembling the original bull‑bar, their main object was that it should have a "substantial appeal to the aethesetic tastes of those who observe it", and thus I do not view it as being a work of artistic craftsmanship.
Notwithstanding the matter of whether the bull‑bar constitutes an artistic work, the judgement in Water Recreations Pty. Ltd. v. Fairmile Pty. Ltd. & Ors. (1982) 42 ALR 273 is relevant to the present circumstances. In that case designs had been registered for parts of a waterslide, drawings of the parts had been published before the priority date and Olney J. of the Supreme Court of Western Australia decided that the representations shown in the registered designs were the same as the published drawings, that copyright subsisted in the published drawings and that generally section 17A of the Designs Act is only applicable where there is a design corresponding to an artistic work and "the two are not synonymous". In the circumstances of that case Olney J. found that there was no "corresponding" design and that the design registrations were invalid. At p.281 he states:

"There is no question in my mind that the artistic work (or more correctly artistic works) of which Mr Larry Timbes is said to be the author and in respect of which it is claimed he is the owner of the copyright under the Copyright Act 1968, is a series of drawings of waterslide flume components and it is those drawings which the plaintiff, with Mr Timbes' consent, applied on 7 January 1981 to register under the Designs Act 1906‑1973. Those several applications were not applications for the registration of a corresponding design of an artistic work, but were applications for registration of the artistic work itself."

Applying the judgement in that case to the present circumstances, I conclude that synonymy is evident because the original bull‑bar is substantially the same as those manufactured thereafter, as discussed above.
I have no evidence before me that copyright subsists in any artistic work corresponding to the Registered Design, thus I find that prima facie section 17A of the Designs Act is not applicable and that the Registered Design is published by prior use and is not new or original pursuant to sub‑section 17(1) of the Designs Act. Consequently, on this basis, I am presently not prepared to extend the period of registration. However, the circumstances of this case are unusual: with the concurrent restoration matters under consideration the procedures of regulation 25 have not been strictly adhered to and some evidence which may be significant was not available at the hearing; so I am prepared to allow the Design owners 30 days from the date of this decision to submit any further evidence which may indicate that copyright subsists in an artistic work corresponding to the registered design.

(J.I. WELSH)

Attorneys for the design owners: Chrysiliou Moore Chrysiliou, Sydney