Craige Jonathan Henrick v Richard Eaton Taplin and Craige Jonathan Henrick
[2009] ADO 1
•1 October 2009
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration Nos. 303779, 303780 and 303781, all in the name of Richard Eaton[1] Taplin and Craige Jonathan Henrick
[1] Refer to paras. 1, 3, 4, 54 and 55 of this decision.
and
Request for revocation under section 51 by Craige Jonathan Henrick
| Delegate: | Debrett Lyons |
| Representation: | Decision on the written record |
| Decision: | 2009 ADO 1 |
Background
Designs 303779, 303780 and 303781 were filed on 10 May 2005 in the names of Richard Eacon Taplin and Craige Jonathan Henrick, who were also named as the designers. In each case the product to which the design was applied is described as a “Building block”.
The designs were registered on 2 November 2005.
On 1 March 2006, a request was made under section 28 of the Act to amend, in each case, the name of Richard Eacon Taplin to Richard Eaton Taplin. The request was accompanied by a Form 308.
That request has not been actioned and Richard Eacon Taplin remains the name on record. A file annotation suggests that this Office asked for return of the certificates of registration so that they might be amended but there is nothing to indicate their return.
On 16 October 2008, Craige Jonathan Henrick (the Requestor) made a request for revocation in respect of all three designs on grounds relating to entitled persons under section 51 of the Designs Act 2003 (the Act).
The ground for revocation is that:
Richard Eacon Taplin is not a person entitled to be registered as an owner of the designs under s. 13 of the Designs Act.
The request was supported by a statement which is set out in full in Appendix “A” to this decision. That statement is not sworn, nor need it be under regulation 4.12(b) of the Designs Regulations 2004.
In that statement the Requestor points to the decision of a delegate of the Commissioner of Patents in Craige Jonathan Henrick v Granite Works Pty Ltd [2008] APO 21 (12 September 2008), a case in which the Requestor had filed a request under sections 32 and 36 of the Patents Act 1990 claiming that innovation patent application 2006100175 should proceed to grant in the Requestor’s name.
That innovation patent application had been filed on 7 March 2006[2] by Granite Works Pty Ltd and had named Richard Eaton Taplin as the sole inventor. The invention related to a block for use in wall construction.
[2] Innovation patent application 2006100175 was filed on 7 March 2006 by Granite Works Pty Ltd claiming priority from provisional application 2005901079 filed on 7 March 2005.
The Commissioner’s delegate found, amongst other things, that Taplin had no entitlement to the patent.
Taplin did not appeal that decision and so I later wrote to Taplin’s attorney asking, in light of that decision, what position Taplin intended to take with respect to the design revocation actions brought under section 51 of the Act. The attorney replied that “Taplin is a designer in each case but […] he does not want to defend the actions.”
I read that statement as requiring me to make a written decision in relation to the section 51 request and so on 15 May 2009 I wrote to the parties inviting any final submissions. No submissions were received.
Argument
In the case of Craige Jonathan Henrick v Granite Works Pty Ltd the Commissioner’s delegate found that the invention was conceived by Henrick alone. The delegate wrote:
I have found on balance that the conclusion most consistent with the evidence is that entitlement lies with Henrick to the exclusion of Taplin and Granite Works.
Pursuant to section 36(1), I declare that Henrick is the sole eligible person in relation to the invention. I determine under section 32 that the innovation application is to proceed in the name of Henrick alone.
In the case before me, the Requestor states that the building blocks which incorporate the designs “correspond” with the invention. In the statement accompanying the request for revocation, it is said that Henrick is the sole creator of the designs and that therefore Taplin has no entitlement to the design registrations.
The Requestor cites the case of Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8, in support of its concluding submission that “Henrick is both the inventor of the invention and the creator of the designs.”
Legislation and case law
Section 13 of the Act states, relevantly:
13Who is entitled to be registered as the registered owner of a design
(1) A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the registered owner of a design that has not yet been registered:
(a) the person who created the design (the designer);
…
(3) To avoid doubt:
(a)more than one person may be entitled to be entered on the Register as the registered owner of a design;
…
The Act gives no further guidance as to how the designer or designers is/are to be identified. The Law Reform Commission’s Discussion Paper 58 and Report No. 74 considered the ways in which the Act would reform design law as it had developed under earlier legislation. The Report states at pages 133-4 that:
The [1906] Act does not define who the author is or provide guidelines for resolving disputes between competing claims but in most cases this is not difficult to determine. Where a dispute arises, then the question whether or not a person is the creator of a design is a question of fact to be determined on a case-by-case basis. It is possible for the court to determine that the design has been created by more than one person and that they are therefore joint owners of the design. Except in the case of commissioned, employee created or computer generated designs there is no need for the legislation to define further who is the creator of the design.
The single case to have so far considered section 13 of the Act is the decision on which the Requestor relies, Allen Hardware Products Pty Ltd v Tclip Pty Ltd. In that case the Commissioner’s delegate wrote:
In my opinion, the principles relating to inventorship under the Patents Act 1990 apply generally to designership under the Designs Act 2003. Both involve activities of original creativity. Both involve situations where multiple people can be involved in the creative exercise. And both require devolution of title from the creator of the work to the person obtaining the legal monopoly right.
That passage should be read narrowly. It is a simple observation on the alignment of principles which are common to inventorship under patent law and designership under design law[3]. It is not authority for a blanket proposition that the inventor(s) of a patent will always be the designer(s) of the corresponding design in the corresponding product.
[3] And not, for that matter, necessarily of universal application.
Clearly, there will be instances where the parties who fully conceived of an invention are not the same parties who reduced it to its embodiment or rendered the final aesthetic qualities of that embodiment. Those are the questions which deserve closer consideration in this case.
The Allen Hardware case did not involve a serious controversy as to origination of the designs. The decision is more concerned with the circumstances under which information was divulged by one party to the other. What is noteworthy is that the passage set out above in paragraph 18 follows on directly from the delegate’s approval of the Full Federal Court decision in Polwood Pty Ltd v Foxworth Pty Ltd [2008] 75 IPR 1 – a case concerned with inventorship in patent law – the relevant portion of which I repeat here:
In Row Weeder [4] joint inventorship was said to arise where one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to do so. The Delegate of the Commissioner of Patents concluded in Row Weeder (at 405) that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others had a material effect on the final concept of the invention.[5]
[4] (1997) 39 IPR 400
[5] At para. 53
In the Allen Hardware case, the delegate then applied to the determination of ownership of the designs the Row Weeder ‘test’ by asking whether the material allegedly divulged in confidence by one party to the other had “a material effect on the final concept” of the design.[6]
[6] At para. 21
In an earlier case decided under the now repealed Designs Act 1906, Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1, the Commissioner’s delegate considered two design applications in respect of a “Security Glass Block” and a request under section 20B of the Designs Act 1906 for a direction of the Registrar that the applications were to proceed in the name of Armourglass.
In that case the applicant for the designs was a manufacturer of glass bricks, and the section 20B requestor manufactured toughened glass products. The parties had been engaged in a cooperative arrangement whereby the applicant would provide standard glass bricks to the requestor, who would transform the bricks into the toughened, finished product.
Section 20B(1) of the Designs Act 1906 read:
20B. (1) Where, before a design is registered on an application for registration, a person would, if the design were then registered, be entitled under an assignment or agreement, or by operation of law, to:
(a) the registered design or an interest in it; or
(b) an undivided share in the registered design or in such an interest;
the Registrar may, on a request made by the person in accordance with the regulations, direct that the application proceed in the name of the person, or in the name of the person and the applicant or the other joint applicant or applicants, as the case requires.
Section 19 of the Designs Act 1906 read, relevantly:
19. (1) Subject to this section, the author of a design is the owner of the design.
…
(5) In this section, "design" does not include a registered design.
Section 4(1) of the Designs Act 1906 defined the “owner” of an unregistered design as:
a person who is the owner of the design in accordance with section 19 or, if there are 2 or more persons who have an interest in the design in accordance with that section, each of those persons
The Commissioner’s delegate wrote in the Glass Block Constructions case:
Turning now to the question of who authored the design, there are few legal precedents in this area. In fact, so far as Australian decisions subsequent to the amendments to the Designs Amendment Act 1981 are concerned, there appears to be but one: Chris Ford Enterprises Pty Ltd v B H & J R Badenhop Pty Ltd (1985) 4 IPR 485. Both parties referred to this decision, and each quoted a portion of the following passage from the decision:
"As to the nature of authorship of a design for the purpose of s.19 of the Act it would appear from definition of design in s.4(1) of the Act and the terms of s.19, that except in the case of an employee or of a design made by a person for valuable consideration, authorship is in the person whose mind conceives the relevant shape configuration pattern or ornamentation applicable to the article in question and reduces it to visible form. See Ricketson, The Law of Intellectual Property First Edition p.480”.
…
Mr McCormack also quoted Butterworths Copyright and Designs, which states:
"Decisions under comparable United Kingdom law suggest a need, when determining authorship, to take into account acts relating to "conceiving" of the design and acts relating to reducing it to some form in the sense of finally drawing it up or making a model, for example. These decisions are principally concerned with resolving competing claims to authorship, typically involving situations where if a first person arrives at a concept for a design, possibly reducing it to some rough material form, and then obtains the services of another to draw up the design in its final form or to make a model of it. If one person gives such instructions that only minor details are left to the choice of a second person who actual draws up or makes the design, then the first person will be the author. If, however, the instructions are vague, leaving practically all to the second person, the latter will be the author."
In the Glass Block Constructions case, much of the evidence and examination of witnesses turned on the question of who had conceived the use of a polycarbonate interlayer in the glass brick construction. Questions of the technical expertise of the parties arose in a way which was relatively unimportant in Craige Jonathan Henrick v Granite Works Pty Ltd.[7] It was also a case where the shape and configuration of the final design was the result of functional or practical production considerations rather than considerations of what might appeal to the eye, another differentiating factor.
[7] Indeed, the delegate in that case said at para. 55:
“There is some disagreement between the parties on the issue of technical competence. However, on weighing the evidence, I am satisfied that Henrick and Taplin each appear capable of contributing independently to the invention. Henrick is a stonemason by trade and, although employed by Granite Works in a sales position, I believe that Taplin would have been required to exercise at least a basic level of relevant technical know-how in his area of principle responsibility. Indeed, there is direct evidence that Taplin was offered employment partly on the basis of “his expertise in the building and construction industry”
That is so much of the recent case law which can assist me. In their book, Intellectual Property in Australia, McKeough and Stewart write that “[n]ormally the owner of an unregistered design will be its author … that is, the person who conceives the design and reduces it to material form”.[8] So far as guidance from the UK Courts is of help, the following passage is extracted from the seventh edition of Russell-Clarke and Howe on Industrial Designs [9]:
Primarily, then, it is the author of the design who is the proprietor and who is entitled to apply for registration. The actual designer is the author, i.e. the author is the person who conceives the idea or invents it, and gives visible expression to it with his hands, e.g. by drawing or by making a model. The person who is, in this way, responsible for the novelty is the author. In order to be the author a man need not, however, work out every detail in its final form. If he conceives the features and reduces them to visible form he will be the author, even though he instructs someone else to give the finishing touches, and actually to embody the design in its precise form. If, however, the instructions are such that the person who is to carry them out might, in accordance with them, produce a number of different designs, and he contributes the only features which give novelty to the design over the prior art, then that person will be really responsible for evolving the design, and he will be the author to the exclusion of his instructor.
[8] McKeough and Stewart, Butterworths, 1991, citing in support of that proposition the case of AMP Inc. v Utilux Pty Ltd [1972] RPC 103 at 108.
[9] Martin Howe QC, Sweet & Maxwell, London, 2005 at p. 154.
From a consideration of intellectual property laws in their generality, these various attempts to formulate a test for designership show the use of language deriving, sometimes from patent law, other times from copyright law - less surprising than that fact might be otherwise since design law has in other ways characteristics of those two bodies of law.
Reasoning
A starting point might be the Requestor’s statement that the buildings blocks which incorporate the designs “correspond” with the invention of the innovation patent.
Having read innovation patent 2006100175, it is clear to me that the designs fall within the ambit of claims 1 to 3. It also seems reasonably clear to me that one of the designs is consistent with a preferred embodiment of the invention as depicted in the drawings, in particular, Figure 4 of Appendix “B” to this decision.
The invention provides for a block for use in the construction of a wall which includes a body portion and a facing panel secured to a side of the body portion. In its preferred embodiment, the body portion is a concrete block while the facing panel comprises any suitable facing such as sandstone, bluestone, granite or marble and is secured to the concrete block by an epoxy, adhesive or mortar. In practice, the concrete block is typically a Besser® building block adhered to one side of which is a facing of one or other stone type.
The three design registrations differ only in the appearance of the facing. Registration 303780 has a facing which looks much like the depiction in Figure 4, whilst registration 303781 has a stippled facing and registration 303779 has a sheer, ‘finished’ facing.
Those are the ways in which the designs might be said to “correspond” with the invention. I return now to the decision of Craige Jonathan Henrick v Granite Works Pty Ltd and to the information of relevance which I can derive from it.
In that case the Commissioner’s delegate considered the design registration at issue. He wrote:
The design applications
90. On 10 May 2005, DCC[10] filed three design applications on Taplin’s instructions. Each application was in the name of Taplin and Henrick, and sought registration in respect of a building block. Henrick states that he “recognised depictions of the Invention” from the photographs filed as representations of the building block.
91. As contended by Taplin:
“Henrick had I [sic] jointly selected the stone veneer for the Designs shown in the Design Applications. Consequently, my understanding was that Henrick may be considered a co-creator of the relevant Designs. I decided to file the Design Applications jointly in the names of Taplin and Henrick because it was not clear to me the Granite Works [sic] derived title to the Designs from Henrick.”
92. There is disagreement as to when Henrick became aware of the design applications, but this has no present significance. However, he denies having contributed to the selection of stone veneer, and in so doing asserts that the colour of the only stone veneer he and Taplin affixed to concrete blocks differed markedly from that shown in the photographs filed with the design applications. Taplin does not contest this evidence and, consequently, the basis for his “understanding” as to co-authorship of the building block design is not apparent. This in turn raises questions as to Taplin’s motive for sharing entitlement in the design with Henrick, but no useful inferences can be drawn here.
[10] Davies Collison Cave, Taplin’s patent attorneys.
Henrick denies having contributed to the selection of the stone veneer (facing) shown in the photographs filed with the design applications. From a reading of the decision as a whole, it is plain that the delegate found Henrick to be the more reliable witness over Taplin. On that basis I might simply accept Henrick’s denial, but for the same reason I can understand why the Commissioner’s delegate went on to question Taplin’s motive for filing the design applications in both names.
From the perspective of the different decision that I am required to make, I am less certain that no inference can be drawn from Taplin’s actions. Setting to one side Henrick’s denial, which if accepted would only help show Taplin’s entitlement, a self-serving Taplin would have filed the applications in his own name. The inference that might be drawn from the fact that he instructed the applications to be filed in both names is that he had been involved in choosing the facings and that he honestly thought Henrick had somehow participated in that action.
The alternative interpretation is that Taplin requested the applications be filed in both names when he had in fact played no part in the selection of the facings, an interpretation which appeals less to me since the evidence was that on 9 March 2004 Taplin ordered a crate of sample stone facings from Xiamen XinHengLong Stone Co, a stone supplier in China.[11]
[11] See para. 68
That crate of sample stone arrived in Australia on 30 March 2004. Whilst there was some doubt as to whether those samples were for use in the invention or for separate sale[12], a not unreasonable inference can be drawn that the stone veneer was selected by Taplin from the samples he ordered from China.
[12] See para. 70
There is evidence that Taplin and Henrick had adhered fascia to concrete blocks in 2004[13], before the design applications were filed, but that fascia material was in each instance sourced from Capital Quarries where Henrick was quarry manager and there is no evidence that those facings corresponded in any way with the facings shown in the design registrations. Nonetheless, this earlier collaboration around the same idea is not inconsistent with Taplin’s thinking that the facings of the designs had been somehow chosen together.
[13] See para. 96
Taplin contributed to the subsequent development of the invention and to its reduction to practice, but that contribution was mostly confined it seems to the choice of adhesives[14] and to business arrangements concerned with exploitation of the products[15]. I can see no basis for according efforts at ordinary commercialisation of the products a role to play in designership. In regard to choice of glues, I need only note here what was said in the Glass Block Constructions case:
Mr Burke's evidence under re-examination in particular indicated that he did have a significant role in practical aspects of the final form of the block, such as in means (said to be "silicon" by Mr Burke, but he may have meant silicone) at the edges of the glass block to compensate for the different expansion rates of polycarbonate and glass, but these do not appear to be represented in the design which is the subject of design application 1054/03. [my emphasis]
[14] See para 97
[15] See para 82
In reaching his conclusion on entitlement to the innovation patent, the Commissioner’s delegate’s said this:
In according Henrick the status of sole inventor, I have not overlooked the fact that Taplin contributed to the subsequent development of the invention, both directly and through his industry contacts. Nevertheless, there is nothing in evidence to indicate that Taplin’s efforts to progress the invention, the conception of which was by then complete, brought about some result or advantage not envisaged by Henrick. That is to say, Taplin’s involvement went no further than assisting to produce a workable embodiment of the invention. In light of the authorities, Taplin does not, as a consequence, meet the description of a co-inventor.
Finally, I note the reservation that the delegate made about the evidence as a whole:
…these proceedings have arisen in the circumstances of events which took place some years before the hearing and, as would be expected, there is significant dispute about much of what occurred. Furthermore, the unaided professions of recall on which the parties have principally relied have posed considerable difficulties of proof for them.
In reaching my decision, I must apply the civil standard of proof and decide disputed issues on the balance of probabilities[16]. It is the Requestor who bears the onus of proof in that regard[17].
[16] See, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523 at 543-4
[17] See, for example, Stamp v W J Powell Pty Ltd, (1918) 24 CLR 339
In deciding who is/are the designer(s), I am guided first by section 5 of the Act which defines a “design” as:
design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.
and by section 7 which defines a “visual feature” to include the shape, configuration, pattern and ornamentation of the product.
The design registrations each carry the same Statement of Newness and Distinctiveness:
The features of shape and configuration of the building block shown in the accompanying representations are considered to be new and distinctive.
Although the design registrations show in each case the building block as an integrated unit, it is clear that the three blocks differ from each other only by the features of the facing that I have already described.
Weighing the evidence as it is, it would be open to me to accept Henrick at his word when he denies having played any part in the selection of the facings. The natural implication would then be that Taplin was solely responsible for selection of the facings, that aspect of each design intended to carry the new and distinctive visual feature of the product.
Even if on the weight of the evidence I am to somehow discount Henrick’s denial, I am satisfied on the balance of probabilities that Taplin either ‘had a material effect of the final concept of the design’, or played a role in ‘reducing the designs to material form’ or to ‘a visible form’, or was in some way ‘responsible for the novelty of the designs’.
Considering the evidence as a whole, I accept the evidence given by Henrick that he had no role in selection of the facings and so find on the balance of probabilities that it was Taplin who contributed this part to the designs.
Decision
The Act defines an "entitled person" as a person entitled under section 13 of the Act to be entered in the Register as the registered owner of the design. I decide that at the time designs 303779, 303780 and 303781 were first registered, Richard Eaton Taplin was an entitled person. Accordingly I decline to make a declaration under section 52(2) of the Act.
Regulation 9.05(2) reads:
The registrar may, on request made in the approved form, amend an entry in the Register:
(a) to correct a clerical error or an obvious mistake;
I direct that the Register be amended in relation to each of registration numbers 303779, 303780 and 303781 so that the name of Richard Eacon Taplin is corrected to read Richard Eaton Taplin.
Costs
Costs before the Registrar normally follow the event however there has been no claim for costs by either side and so I make no award of costs.
Debrett Lyons
Hearing Officer
Trade Marks & Design Hearings
1 October 2009
APPENDIX “A”
APPENDIX “B”
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