John Michael Jarvie v Comtec Industries Pty Ltd
[2018] ADO 5
•31 October 2018
DESIGNSACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for revocation of registration by John Michael Jarvie of design numbers 201515406 and 201616328 both in the name of Comtec Industries Pty Ltd
| DELEGATE: | Adrian Richards |
| REPRESENTATION: | Requestor: Robert Wuff and Derek Baigent of Griffith Hack Registered Owner: Walsh & Associates (did not make submissions) |
| DECISION: | 2018 ADO 5 Request for revocation of two designs pursuant to section 51 of the Designs Act 2003 (Cth) – whether requestor is sole person entitled to be the owner of the designs – whether requestor is sole or joint designer of the designs – whether requestor was employed by the registered owner or an independent contractor – requestor found to be the sole designer and entitled to be recorded as the owner of both designs – whether the Registrar of Designs has discretion to alter the register to change ownership in this circumstance – no such power found – designs revoked and declaration made pursuant to section 52(2) naming the requestor as the entitled person |
Background
This decision with reasons concerns a request for revocation on the basis of entitled persons (‘the Request’) under s 51 of the Designs Act 2003 (Cth) (‘the Act’) of design numbers 201515406 and 201616328 (‘the Designs’). The Request was filed on 4 May 2017 by Mr John Michael Jarvie (‘the Requestor’).1 The Request asserts that the Requestor is the sole designer of both designs, and that
because of this he is the sole person entitled to be entered on the Register of Designs as their owner.
On 25 May 2017 a delegate of the Registrar of Designs wrote to the registered owner of the Designs, Comtec Industries Pty Ltd (‘the Owner’) at its then address for service, Anderson-Taylor & Associates. The letter asked whether the Owner wished to contest the claims made in the Request.
1 Also included in the Request was design number 201415843. On 9 June 2017 the Requestor withdrew his request for revocation of that third design, noting that its term of registration had ceased.
Three days later, this office received a request to change the address for service of the Owner in favour of Walsh & Associates. This request asked that all future correspondence be sent to that firm, but did not mention the recent letter from the delegate. Walsh & Associates later confirmed in a telephone call that the Owner did indeed intend to contest the claims made in the Request.
As a result of this new information, the delegate issued directions to the parties on 25 July 2017 which set out the practice and procedure to be followed in deciding the Request. In accordance with the terms of those directions, the Requestor filed evidence in support of the Request, the Owner then filed evidence in answer to the evidence in support, and the Requestor filed evidence in reply to the evidence in answer.
With the evidence stages having been completed, on 12 June 2018 the delegate invited the parties to request a hearing. The Requestor did so on 28 June 2018, and the Owner did not. Formal Hearing Notices issued on 31 July 2018. They indicated that the Request in respect of each of the Designs would be heard together, in Canberra on 19 September 2018. I was subsequently allocated to hear and decide on the Request in my capacity as a delegate of the Registrar of Designs.
In preparation for the hearing, on 28 August 2018 I wrote to the parties. Among other things I asked the Owner whether it planned to attend the hearing, and I invited both parties to file their outline of submissions by 12 September 2018. The Requestor duly filed its submissions, but I received no response from the Owner.
The hearing went ahead as scheduled. Robert Wulff and Derek Baigent of Griffith Hack along with the Requestor attended by videoconference. Consistent with its failure to file written submissions, the Owner did not attend.
Evidence
The evidence filed in the prosecution of the Request consists of the following:
Evidence in support
Statutory declaration of John Michael Jarvie, founder and co-director of Armour Wall Group Pty Ltd, made 23 September 2017 with annexures JMJ-1 to JMJ-15 (‘the Requestor’s First Declaration’)
Statutory declaration of Luke Anthony Jarvie, listed as the sole designer of design 201515406 and son of John Jarvie, made 23 September 2017 with annexure LAJ-1
Statutory declaration of John Michael Jarvie, made 14 October 2017 with annexures JMJ-16 to JMJ-18 (‘the Requestor’s Second Declaration’)
Evidence in answer
Statutory declaration of Stephen David Whelan, Consulting Civil and Structural Engineer, a director of the Owner and listed as co-designer of design 201616328, made 16 March 2018 with annexure A
Evidence in reply
Statutory declaration of Jon Michael Jarvie, made 18 May 2018 with annexure JMJ-162 (‘the Requestor’s Third Declaration’)
Discussion
The Designs
The Requestor’s First Declaration provides an explanation of the Designs, some images of which I have included below. This aspect of the factual background is uncontroversial, and I include it here for context. The Designs are intended to be used in combination to provide a retaining wall or sea wall. Design 201616328 is recorded on the Register as having been designed by Ryan Nugent and Stephen David Whelan, and is titled ‘sheet pile’. These flat faced, roughly rectangular cross-section elements of the wall are driven into the ground and packed with soil or other heavy filler. Design 201515406 is recorded on the Register as having been designed by Luke Anthony Jarvie, and is titled ‘pin pile’. These circular cross-section elements slot in between the sheet piles, coupling with the sheet pile using the clutches visible around the outside of both Designs. The pin piles reinforce and stabilise the wall, and permit the line of the wall to meander. An example of this appears in the image below titled ‘Wall example’.
Design 201616328
2 The Requestor filed two annexures called JMJ-16. To avoid confusing them, I refer below to the sole annexure to the Requestor’s Third Declaration as JMJ-19.
Design 201515406
Wall example
Development of the Designs – the Requestor’s Account
By way of further background, and closely relevant to the issues to be decided here, the Requestor’s First Declaration outlines the Requestor’s qualifications and background in relation to coastal and shoreline protection systems. He declares therein that he has 30 years’ experience in the design and installation of such systems, using a range of materials including concrete, sandstone and timber. His most recent decade of work in this field has focused on solutions based on sheets made from composite material using a pultrusion process. He lists a series of benefits of these composites over more traditional materials: ‘they weigh less, are more water resistant, have greater ability to absorb forces and contribute to reduced overall project costs.’
The Requestor started using composite sea wall material in around 2007. At the time, he imported products from the United States of America. Working with these ready-made designs eventually showed up their limitations, and by 2010 the Requestor had resolved to come up with his own system. By 2011, the Requestor had conceived of his first model dubbed ‘Platypus’. At the heart of it is a series of identical, interlinked, composite sheet piles, pictured below. To work effectively, the Platypus system employs a series of geogrids and gridspines. This lessens the loading of soil that sits against the fascia of the sheet piles. The Platypus system, according to the Requestor, represented a breakthrough—the first time anywhere that geogrid had successfully been combined with a composite sheet pile system.
Not satisfied with this success, by early 2014 the Requestor conceived of several improvements to the Platypus system, which included a composite sheet pile very similar to Design 201616328. Below is the Requestor’s 2014 improvement as depicted in drawings sent to the Requestor on 27 July 2015.
Also in early 2014, the Requestor conceived of the idea of placing a pin pile in between each sheet pile from the Platypus system. This increased the sheer loading of the wall and dramatically decreased its footprint by removing the need for bulky geogrids. The first iteration of this pin pile appears in technical drawings dated 10 April 2014 in the following form:
By 27 July 2015 the pin pile had an extra pair of clutches added:
The remainder of The Requestor’s First Declaration is essentially concerned with the relationship between the Requestor and the Owner. I return to this material below. For now it is convenient to turn to the declaration of his son, Mr Luke Jarvie.
Mr Luke Jarvie is, in quite obvious contrast to the Requestor’s account above, currently listed as the designer of the pin pile, Design 201515406. The revelation contained in Mr Luke Jarvie’s declaration on this issue has to be among the most startling imaginable. He declares: ‘I have never been, nor have I ever held myself out to be, a designer of [Design 201515406].’
The reason for his appearance on the Register of Designs appears to have related to advice given to a director of the Owner (Mr Nugent) in relation to the Requestor’s eligibility to be listed as a designer. According to this account, Mr Luke Jarvie was listed the sole designer because Mr Nugent was under the impression that Mr John Jarvie’s financial position at the time disqualified him from being a designer.
If such advice was in fact given, it was utterly wrong. Who is the designer of a design is a question of fact. It cannot be changed by anything other than proof there was another, earlier designer. Questions of a designer’s financial standing, or for that matter whether they were employed to create the design, that they have subsequently assigned the design, or even they have died have absolutely no bearing on this fact.
Development of the Designs – the Owner’s Account
In the background to these proceedings is a similar matter decided by a delegate of the Commissioner of Patents on 6 July 2018:3 The similarities include:
· the same parties
· the same factual setting
· consideration of the inventorship and ownership of the subject matter of two provisional patent applications in the name of the Owner
· subject matter in those provisional patent applications include drawings of the Designs
· powers that the Commissioner of Patents exercised in hearing and deciding the matter were in large part analogous to the powers invoked here
3 John Jarvie v Comtec Industries Pty Ltd [2018] APO 46 (‘the Patents Matter’).
I mention all of this for two reasons. Firstly, by way of explanation, in some of Mr Whelan’s testimony he refers to inventions rather than designs. Wherever it is appropriate to do so, I have taken these as references to the Designs. Secondly, it appears that, based on my reading of Mr Whelan’s declaration (which I reiterate was the only material led by the Owner in the present matter) the Owner may have held an expectation that the Request and the patents matter would be treated as one by the Designs Office and the Patent Office. While the statutory offices of the Commissioner of Patents under the Patents Act 1990 (Cth) and the Registrar of Designs under the Act happen to be occupied by the same individual at present, the Commissioner and the Registrar remain separate offices with distinct functions. As such, I am not a delegate of the Commissioner. As a delegate of the Registrar I do not have access to the evidence filed in the matter before the Commissioner, and it is not the role of the Registrar or her delegates to seek to obtain evidence on the Owner’s (or any party’s) behalf. If the Owner wanted evidence from the Patents Matter to be considered in the present proceeding, the evidence should have been filed in in accordance with the directions as to practice and procedure set down on 25 July 2017. I now turn to the substance of Stephen Whelan’s declaration.
Mr Whelan declares that he is ‘the author of the drawings [of the Designs]. I pause here to note that authoring drawings is not the same as being the designer of the thing those drawings depict—the drawings could potentially be subject to copyright, but the ownership of this copyright does not necessarily inform the present enquiry. More to the point, Mr Whelan also declares that he is ‘the author of the design of the extrusions/profiles depicted in the designs registrations arising from [his] technical involvement in the design of a sheet and pin pile system, including refinements and technical input into the inventions.’ Some concession is made to the Requestor, however, when Mr Whelan declares that ‘John Jarvie was involved in the original conceptual works and as such was a collaborator in the inventions.’
There is no disagreement in the parties’ evidence, therefore, that Mr Nugent was not a co-designer of Design 201616328 and Mr Luke Jarvie was not the designer of Design 201515406. Both parties also agree that the Requestor was a designer of
the Designs. Where they differ is on whether this he was the sole designer, a question to which I now address.
As to how he came to be an author of the Designs, Mr Whelan declares that he received drawings of the sheet pile and pin pile as they were on 8 May 2015, which I take to be the Requestor’s 2014 improvement to the sheet pile and the 27 July 2015 version of the pin pile, as provided to this office by the Requestor.
- From this point, Mr Whelan declares that he applied his skills as an engineer to certain technical problems with the above designs.4 The result of Mr Whelan’s labours was the drawings that depict the Designs. For the purposes of comparison, cross-sectional views of the Designs before and after Mr Whelan’s contribution are set out below. I note that there are differences, particularly to the sheet pile component. Taking Mr Whelan’s declaration at face value, these may represent a significant application of engineering nous, but this is not the point. Designs are concerned with visual appearance. Visually then, the two iterations of the sheet pile are very close and the pin pile is almost identical.
| Before | After |
4 Whether there were such problems is contested by the Requestor, but this is not been necessary for me to decide.
Legal Principles - Designer
The Act defines ‘designer’ as ‘the person who created the design’.5 Adding to this, the designer has been held to be the ‘person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form’.6
Analysis and Conclusion - Designer
The Requestor has shown how, through many years and iterations, and in particular the spark of inspiration that hit him in early 2014, he arrived at the ‘Before’ shapes above. Mr Whelan’s case is, at its highest, that he took the ‘Before’ shapes and applied his skill as an engineer to them, resulting in the ‘After’ shapes. Mr Whelan is therefore clearly not the person whose mind conceived of these shapes—his contribution was a refinement of shapes already conceived in the mind of the Requestor. Mr Whelan’s work was that of a drafter and engineering consultant tasked with ironing out the kinks in someone else’s original concept. For completeness I also note that Mr Whelan’s declaration asserts that his drawings are the closest to the Designs, closer in particular to the ‘Before’ shapes above. As should already be clear by now, this is not the test.
I find that the sole designer of the Designs was the Requestor. Having so found, I am now able to turn to the main question—on the day the Designs were registered, who was entitled to be recorded as their registered owner?
Entitlement
Section 13 of the Act provides:
13 Who 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);
(b)if the designer created the design in the course of employment, or under a contract, with another person—the other person, unless the designer and the other person have agreed to the contrary;
(c)a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law;
5 Designs Act 2003 (Cth) s 13(1)(a).
6 Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75, 80 quoted in LED Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85, 96 [26].
(d)a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person;
(e)the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d).
(2) Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of a design that has not yet been registered if:
(a)the person has assigned all of the person’s rights in the design to another person; or
(b)the person’s rights in the design have devolved on another person by operation of law.
(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; and
(b)unless the contrary intention appears, a reference to the registered owner of a registered design in this Act is a reference to each of the registered owners of the design.
(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or
(e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered.
Apart from leaving me to join some dots between his directorship of the Owner and Mr Whelan’s alleged role as co-designer, his declaration provides no clear explanation of how the Owner came to have an entitlement to the Designs from him, let alone from the Requestor. Noting that the Owner has not put forward a positive case for its ownership of the Designs, I now turn to the account of the Requestor.
On one reading, this account is fairly simple and follows on from the discussion above. The Requestor brought his designs for the sheet and pin pile system to the attention of the Owner through its directors. One of those directors, Mr Whelan, created new drawings of the system components. At no point in this sequence of events is any implication that the Requestor was employed by the Owner. Indeed, the conceptualising of the Designs and their reduction to an early visible form had already happened before the Owner was incorporated on 2 April 2015. Further, there is no suggestion of an assignment of the Designs. The only conclusion open on this reading is that entitlement remained with the Requestor under s 13(1)(a) of the Act, since he was their sole designer and had not alienated the property.
Complicating things slightly is a relationship that the Requestor has in the past had with one of the directors of the Owner, Mr Nugent. The Requestor for a time performed work for Mr Nugent’s company, Nugent Developments Pty Ltd. This
overlapped with the period wherein the Requestor developed the Designs. The Requestor has provided a significant amount of information that goes to the nature of his relationship with Nugent Developments Pty Ltd. There is no reference to any contract requiring the creation of the Designs in the evidence, so that aspect of s 13(1)(b) of the Act need not be considered further. Turning to the only remaining possibility, employment, the starting point is to recall that:
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.’7
Adapting the relevant tests from patent case law then: a designer will have created a design ‘in the course of employment’ only where the employee’s duties include a duty to create designs.8 This has been held, in the patents context, to extend to situations where an invention relating to the employer’s commercial activities, made in the course of employment and using the materials of the employer. Even in such a situation, an absence of a duty to invent will mean that the property in the invention remains with the employee.9 In contrast, a design created by an independent contractor under a contract for services retains rights in any design created during the performance of the contract (subject, of course, to the terms of the contract).
On the balance of the evidence before me, it seems most likely that the Requestor created the Designs completely independent to his relationship with Nugent Developments Pty Ltd. However, in case I am wrong, I will also consider two other possibilities: that the Requestor created the Designs as an independent contractor of Nugent Developments Pty Ltd, or as an employee of Nugent Developments Pty Ltd.
Of these two options, it seems far more likely that the Requestor was an independent contractor performing general tasks relating to building work on a series of projects for Nugent Developments Pty Ltd. Indeed, the Requestor has provided copious evidence that goes to this point, including his answers to a tool on the Australian Taxation Office’s website used to indicate whether a person is
7 Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8, [19].
8 University of Western Australia v Gray (2009) 179 FCR 346.
9 Ibid.
an employee or a contractor and his superannuation statements covering the entire period of his work with Nugent Developments Pty Ltd. Among them are several strong indicators that the Requestor was in fact an independent contractor, including that he brought his own tools and machinery to the jobs, he operated as a sole trader with his own ABN, that he was permitted to subcontract his work, and that he did not receive superannuation or leave entitlements. If this was the case, in line with the principles set out above, any designs created by the Requestor remain his alone (subject to the terms of the contract, which have not been provided for me to consider here).
On the other hand, if I were to assume against the weight of the evidence that the Requestor was an employee of Nugent Developments Pty Ltd, then to find in favour of the Owner I would still need to be shown, evidence that the Requestor’s job included a duty to create designs or that he was otherwise was bound by a
fiduciary duty that would give rise to proprietary rights in favour of Nugent Developments Pty Ltd.10 The Requestor’s evidence is that his job was limited to masonry work and installing earth retention levies. Nothing in this implies a duty to create designs. Finally, he was not, for example, a director of Nugent Developments Pty Ltd, so nothing in the facts presented to me indicate that he was under a fiduciary duty to that company.
Decision and Costs
Section 52(2) of the Act provides two bases for a successful application under s 51 of the Act:
(2)If the Registrar is satisfied that:
(a)a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or
(b)each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time;
the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.
Based on my discussion of the facts above, I find in favour of the Requestor under paragraph (a). At the time of their respective registrations, John Michael Jarvie was the only entitled person to be entered on the Register as the owner of the
10 University of Western Australia v Gray (No 20) (2008) 246 ALR 603, 940 [1418], 948 [1442].
Designs, and Comtec Industries Pty Ltd was not an entitled person for either of the Designs. These reasons shall be taken to be my written declaration to that effect.
The Requestor has asked that I use ‘discretionary powers’ under s 148 of the Act and reg 11.22 of the Designs Regulations 2004 (Cth) (‘the Regulations’) ‘to order that’ the Designs be transferred to the Requestor. I have set out those provisions below:
148 Exercise of discretionary power by Registrar
The Registrar must not exercise a discretionary power under this Act adversely to a person without giving that person an opportunity to be heard.
11.22 Exercise of discretionary powers by Registrar
(1)The Registrar must give a person an opportunity to be heard before exercising a discretionary power under these Regulations adversely to the person.
Note: See section 148 of the Act for a similar provision.
(2)For section 148 of the Act and subregulation (1), the Registrar must give the person an opportunity to be heard by:
(a)asking the person for written submissions; or
(b)notifying the person that, on request to the Registrar, the person may be heard by way of an oral hearing on a date, and at a time and place, determined by the Registrar; or
(c)notifying the person of the date, time and place of an oral hearing.
(3)The Registrar may exercise the discretionary power if the person:
(a)notifies the Registrar that the person does not want to be heard; or
(b)does not file written submissions if requested under subregulation 11.23(1); or
(c)does not attend an oral hearing if notified under subregulation 11.23(2).
(4)If the Registrar exercises discretionary power in any of the circumstances mentioned in subregulation (3), the Registrar must notify the person of the Registrar’s decision.
Neither of these provisions provide me with a positive power to amend the Register. Rather, they specify a procedure for me to follow should I intend to exercise a discretionary power elsewhere conferred under the Act or Regulations. The nearest provision to a power to change the ownership appears to be reg 9.05 of the Regulations, which is set out below:
9.05 Correction of Register
(1)The Registrar may, of his or her own motion, amend an entry in the Register to correct a clerical error or an obvious mistake.
(2)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; or
(b)if a name or an address entered in the Register has been changed—to change the name or address.
(3)If the Registrar proposes to amend an entry in the Register, the Registrar may give notice of the proposed amendment to a person who is entered in the Register as having an interest in the design.
(4)If a proposed amendment of an entry would materially alter the meaning or scope of the entry, the Registrar must publish, in the Official Journal, a notice of the request to amend the entry.
(5)A person may oppose the amendment by filing a notice of opposition, in an approved form, within one month from the publication of the notice under subregulation (4).
Note:For the circumstances in which an extension of time can be sought, see section 137 of the Act.
(6)The Registrar must give a copy of the notice of opposition to the person who requested the amendment as soon as practicable.
(7)If the amendment is not opposed, the Registrar must amend the entry as requested.
(8)If the amendment is opposed, the Registrar must amend the entry if the Registrar decides to do so, subject to a decision of a tribunal or prescribed court in relation to the opposition.
There being no clerical error or obvious mistake11 in relation to the ownership of either of the Designs, this power is not enlivened. On my reading of the Act and Regulations, having decided for the Requestor under s 52 of the Act, I am now required to follow the remainder of that provision. Had the Designs been at the application stage, I would have the power to do as the Requestor asked me due to the terms of s 30 of the Act. The Requestor may find some comfort in the fact that due to my declaration above, he is entitled by virtue of ss 21 and 55 of the Act to make an application for either or both of the Designs, and he will be entitled to the priority dates that each currently has.
The Designs are to be revoked one month from the date of this decision. If the Registrar of Designs has been served with a notice of appeal from this decision before that time, I direct that revocation shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this examination should be in accordance with the Court’s order or direction.
11 For a discussion of the meaning of these terms, see, eg, Johnson & Johnson v Self Care Corporation Pty Ltd [2014] ATMO 111, [16]-[33].
The Requestor has sought an award of costs. The ordinary course is for costs to follow the event. I see no reason to stray from that here. I award costs against the Owner in the applicable amounts set out in sch 3 of the Regulations.
Adrian Richards Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group 31 October 2018
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