Warner v Commercial Systems Australia Pty Ltd
[1996] ADO 1
•1 March 1996
official notice
decision of a delegate of the registrar of designs
Design: No. 118681 in the name of Barry J Warner
Article: Bus Shelter
Action: Extension of the Period of Registration; Notice under S.27A by Commercial Systems Australia Pty Ltd; further material and submissions filed regarding the provisions of S.17A following an earlier decision.
Decision: Issued
Abstract: The further material from the parties on the issue of whether the joint owner of copyright to the artistic work consented to the making of the design application was conflicting. Found, on the balance of probabilities, that the City of Waverley did not consent to the making of a design application by Mr Warner or his company.
The delegate considered that he was bound by specific findings in the earlier decision and could not reconsider those matters.
Given findings in the earlier decision, the design lacked newness. The application for extension of the period of registration of the design was refused.
DESIGNS ACT 1906
decision of a delegate of the registrar of designs
RE:Registered design no. 118681 in the name of Barry J Warner and Notice under Section 27A(4) by Commercial Systems Australia Pty Ltd.
background
In my decision in this matter dated 4 October 1995 I concluded from the material before me “that registered design 118681 is not a new or original design over the information lodged by Commercial Systems Australia Pty Ltd, because s.17A of the Designs Act 1906 does not apply.” That conclusion arose because, in my view, the evidence did not establish that the application for the corresponding design was made by, or with the consent of, the joint owner of the copyright in the artistic work, the artistic work being a proto-type bus shelter produced by Mr Warner. However, as I considered that Mr Warner may not have had sufficient opportunity to address the specific issue of whether the City of Waverley, as joint owner of copyright to the proto-type bus shelter (according to my findings), consented to an application being made by Mr Warner for a corresponding design, I allowed Mr Warner 30 days from the date of the decision to submit any further evidence to establish that such consent clearly existed prior to the making of the design application.
On 31 October 1995, in response to the decision, the patent attorneys for Mr Warner supplied a letter signed by Mr C P Cullino, Director, Infrastructure Services, City of Monash. City of Monash is the successor Council of the City of Waverley.
By letter of 21 November 1995 Commercial Systems Australia Pty Ltd (the “informant”) was given a copy of the material supplied by Mr Warner and invited to provide any submissions on the matter. Submissions together with 10 attachments were received on 13 December 1995. Given the material filed by the informant, as I considered the rules of natural justice required that Mr Warner be aware of the submissions and have an opportunity to provide any submissions in answer before I decided the matter, copies of the submissions and attachments were sent to Mr Warner on 18 December 1995. I invited any submissions by 19 January 1996 and also an indication by that date if Mr Warner wished to be further heard. I received further submissions from Mr Warner’s attorneys on 18 January 1996 and no indication of wanting to be further heard.
ADDITIONAL MATERIAL AND SUBMISSIONS
The Cullino letter
This letter is dated 26 October 1995 and is addressed to the Registrar of Designs. The relevant parts of this four paragraph letter are the following:
“I am aware of the matter of registered design 118681 in the name of Barry J Warner and understand the issues surrounding the design. ...... (para 2).
I confirm that design application 997/92 by Barry J Warner, lodged on 22 April, 1992, was made with the consent of the City of Waverley. A commercial arrangement between authorised officers of the City of Waverley were made with Mr Warner and his company Urban Design Furniture Pty Lt by which the City of Waverley assigned its interest in the design to Mr Warner in return for a royalty of money or kind for bus shelters sold by Mr Warner's company to anyone else." (para 3)
Para 4, which I have not quoted, of Mr Cullino’s letter refers to a letter dated 26 October 1993, but contrary to what Mr Cullino states, that letter (which is on the official file) does not include matter said to clarify “the commercial arrangement mentioned above”.
The informant’s submissions
The informant’s submissions cover several matters which I summarise as follows.
The City of Monash’s letter dated 26 October 1995 “is not credible evidence of any true or formal consent of assignment ....”. In support of this view, reference is made to various quotations and contract dealings concerning the provision of ‘Waverley style Bus Shelters’ between the informant and the then City of Waverley over the period January to August 1992. One of the attachments is a letter dated 6 October 1992 sent to the informant by the City of Waverley in response to a specific enquiry by the informant which “clearly confirms that no design registration existed” and that Urban Design Furniture “had no more than a royalty agreement with Council”.
The informant asks that the issue of ownership of copyright be further considered. The comments imply that ownership of the prototype bus shelter design rests with City of Waverley, Urban Design Furniture manufacturing the prototype under the direction of the concept designer Mr Skelton in return for an agreed fee.
The informant asks that further consideration be given to the issue of public exposure of the Skelton concept drawings of January 1991. The submission adds “As these drawings were freely available from the date of drawing and are identical in every sense to the manufactured prototype we contend the design is public property and as such design registration is not legally applicable. ....”.
Further submissions on behalf of Warner
These submissions cover the following points:
The Cullino letter “confirms unequivocally that the application (997/92) was made by Mr Warner with the consent of the then City of Waverley.”
No evidence has been produced to establish that the concept drawings of Skelton were “publically available” prior to 22 April 1992.
If it is concluded that the concept drawings were published before April 1992, further reconsideration should be given to whether those drawings publish the design as registered. In this respect attention is drawn to 2 features of the drawings of the design registration, namely the ends of the roof being “stepped-in” and the “inset lower panels”.
Notwithstanding the decision in the Water Recreations case (Water Recreations Pty Ltd v Fairmile Pty Ltd (1982) AIPC 90-006), “the design in question is a corresponding design to the artistic work which forms the subject of the concept drawings and hence Section 17A does apply.” The submission refers to “the substantial reservations which exist as to the correctness” of the decision in the Water Recreations case and suggests it should not be used as a basis by the Designs Office for denying the applicability of Section 17A in this case.
DECISION
In view of the additional material and submissions, there are several issues to address - the issues are generally encompassed by the points referred to in the further submissions filed on behalf of Mr Warner. However, in considering the issues, insofar as an issue concerns or embraces a matter considered in my earlier decision, I believe I am bound by my findings as expressed in that decision (see R. Commissioner; ex parte Mole Engineering Pty. Ltd 147 CLR 340). The earlier hearing in this matter gave the parties the opportunity to place submissions before the Registrar on those matters relevant to the extension of term matter and the decision which I issued must be seen as deciding the case so far as possible of decision up to that time. At the hearing both parties had before them the Deputy Registrar’s opinion on the matter which indicated various issues relevant to the proceedings. I am however mindful that the earlier hearing was attended by Mr Warner and Mr Costelloe unaccompanied by professional advisers, but I have no reason to assume that they did not appreciate the nature of the hearing and that a decision on the extension of term would follow from it.
Consent by joint owner of copyright to make application for the corresponding design
In my earlier decision I found that the City of Waverley was a joint owner of copyright to the prototype bus shelter. I afforded Mr Warner an opportunity to establish that consent by the City of Waverley clearly existed prior to the making of the design application. Such consent is relevant for the provisions of s.17A of the Design Act to apply.
The Cullino letter states that design application 997/92 “was made with the consent of the City of Waverley”. The letter then goes on to repeat wording in exhibit BJW-2 mentioned in my earlier decision. Mr Cullino provides a clear statement about consent in his letter. I believe I must accept that Mr Cullino has sufficient understanding of the issues and circumstances surrounding the council dealings and the design to make the statement.
However, notwithstanding what Mr Cullino states in this letter, the material supplied by the informant casts doubt on the issue of consent. That material indicates that the informant won a contract in July 1992 from the City of Waverley to supply 8 Bus shelters similar to the prototype made by Urban Design Furniture. I understand that this contract resulted from an advertisement placed by the council in the “Waverley Gazette” of 3 June 1992 inviting submissions. On 18 August 1992 Mr Costelloe wrote to the City of Waverley in these terms:
“Construction of the 8 no. Bus Shelters is now underway however we note that Waverley Council have not provided a written indemity (sic) against any design registration if any held be (sic) the previous manufacturer.”
The City of Waverley responded on 6 October 1992, the response including:
“Registration of the “Waverley” bus shelter is presently being investigated.
Urban Design Furniture who previously manufactured the bus shelter holds no registration over the design and whilst they do market the design, we have an agreement with them for payment of a design royalty.”The letter ends indicating that any further enquires can be directed to Mr Cullino or Mr Skelton.
From this exchange of correspondence it would be reasonable for Mr Costelloe, and for that matter any reader of the correspondence, to believe that Urban Design Furniture or Mr Warner held no design rights for the bus shelter. However at that time Mr Warner had applied for design registration and, if the City of Waverley had consented to that application being made, as Mr Cullino states in his 26 October 1995 letter, then it is somewhat surprising that the existence of the application or pending design rights was not mentioned.
Another item of correspondence relevant to the issue of consent and the design application is the letter of 21 December 1993 from the City of Waverley to Mr Warner. I was referring to that letter at the last line of page 8 of my previous decision although I incorrectly identified it as a letter of “5 December”. In that letter the council says: “we are most concerned to ensure that recognition is given that the shelters are ‘Waverley's’ intellectual property and suggest that this be acknowledged in your publicity. However we have no issue with your ongoing registration should this occur.” The letter goes on to refer to the “original agreement” and makes reference to a design fee payable for each Waverley type bus shelter sold by Mr Warner’s company. Had the City of Waverley consented to the design application and assigned its interest in the design, it seems somewhat strange that the issue of design registration was even mentioned in this letter.
Given these items of correspondence, I am left in some doubt as to whether the City of Waverley provided consent to Mr Warner to make the design application. On the one hand there is Mr Cullino’s letter of 26 October 1995 with his statement about consent. On the other hand there are the much earlier letters of 6 October 1992 and 21 December 1993 from the council which, in my view, suggest away from the council having had knowledge of the design application and having consented to its making. Interestingly, I note that the further submissions on behalf of Mr Warner do not refer to the submissions on consent provided by the informant. In my view the onus is on a party claiming that the provisions of s.17A apply in a particular case to establish that the relevant conditions exist. I believe that the degree to which I need to be satisfied that consent had been given to make the application is, where there is doubt, “on the balance of probabilities”. Given the doubt expressed above I conclude on the balance of probabilities that the City of Waverley did not consent to the making of a design application by Mr Warner or his company.
Publication of the registered design
The informant contends that given the public exposure of the Skelton concept drawings of January 1991, the design is public property and as such design registration is not legally applicable. In answer, the submissions on behalf of Mr Warner dispute that the drawings were “publically available” or, in the alternative, do not publish the registered design.
The issues raised go to matters considered in my earlier decision, and to the extent that I decided a particular matter I believe I am bound by any such finding. In my earlier decision I said:
“Mr Warner did not raise issue with the Deputy Registrar's conclusion that “Documents (a) and (d) would deprive the present design of newness”. I agree fully with the Deputy Registrar's conclusions and his reasons for so concluding.”
Documents (a) and (d) were described as follows:
(a)concept drawing dated 9 January 1991 and declared to have been "openly exhibited" in January 1991; and
(d)a photographer's proof sheet showing the photograph, inter alia, published in the Waverley Post.
The Deputy Registrar gave reasons in his opinion, which I quoted in length in my earlier decision, for concluding that documents (a) and (d) deprived the design of newness. For instance he said: “On the information provided I consider documents (a) and .... were published before the priority date, ie. 22 April 1992.” Elsewhere he discussed document (d) and its availability and disclosure. At the earlier hearing the Deputy Registrar’s conclusions or reasons for so concluding were not challenged by Mr Warner. I also note that no submission as now raised on behalf of Mr Warner concerning document (a) was included with material supplied on behalf of Mr Warner in answer to the original material supplied with the S.27A(4) notice. In particular I note that the following statements in Mr Costelloe’s statutory declaration dated 6 June 1994:
“That the City of Waverley design concept drawings for the Waverley Bus Shelter were in Public circulation in January 1991.
That the design concept drawings were openly exhibited by Waverley City Council to all interested manufacturers including Commercial Systems Australia Pty Ltd in January 1991.”,
were, at the time of my earlier decision, uncontested. In fact even now there is no evidence before me to dispute the public availability of the concept drawings from January 1991. I believe I am bound by my earlier decision going to the public availability of document (a). Even were I not so bound, there is no evidence before me to conclude to the contrary.
The submissions on behalf of Mr Warner also asks that further consideration be given to whether the concept drawings publish the registered design. Attention is drawn to several aspects of the registered design, the “stepped-in” roof ends and “inset lower panels”, said to be significant features not shown in the concept drawings. Again I believe I am bound by my earlier decision to the effect that the concept drawings deprive the design of novelty. However, even were I not so bound, I believe the differences in the design with reference to the features mentioned compared to the concept drawings are ones involving immaterial details which do not change, to the mind’s eye, the appearance of the design.
Corresponding design and s.17A
The fourth point of the further submissions on behalf of Mr Warner argues that “the design in question is a corresponding design to the artistic work which forms the subject of the concept drawings”. In the submission the correctness of the decision in Water Recreations Pty Ltd v Fairmile Pty Ltd (1982) AIPC 90-006 is raised and the Registrar is urged not to deny applicability of s.17A in this case based on that decision. Whilst the submission is interesting and may have some merit, again I believe I am bound by my earlier decision where I concluded that the registration was not a corresponding design based on the concept drawings being the artistic work. Even if that conclusion is incorrect, I believe that the provisions of s.17A are not fulfilled since consent from the City of Waverley to apply for the registration in respect of the concept drawings has not been established.
The informant in submissions also raised an issue concerning copyright concerning the prototype bus shelter. My understanding of the submission is that the informant argues that the City of Waverley only owns the copyright in that prototype. I have considered the issue of ownership of this copyright in my earlier decision and I believe I am bound by my finding which was that it resided jointly with Mr Warner and the City of Waverley.
Newness of the design
In my earlier decision, and as mentioned above, I concluded that documents (a) and (d) would deprive the design of newness. I note that s.17A (1) in part states:
"... that design shall not be treated for the purposes of the Act as being other than new or original, or as having been published, by reason only of use previously made of the artistic work unless- ...".
The reference to only in this section means that it is only use of the artistic work which does not affect the newness of the design if the conditions of s.17A are otherwise established. Thus, in my view, even had the provisions of s.17A been established on the basis of the prototype bus shelter being the artistic work and relevant consent established, the design would still be lacking newness or originality given the publication of the concept drawings of Mr Skelton (document (a)). A similar conclusion would result based on the photographer's proof sheet showing the photograph of the prototype bus shelter (document (d)) if the provisions of s.17A were established in respect of the concept drawings being the artistic work. The use of the bus shelter itself would also cause a lack of newness in this latter situation.
CONCLUSION
I have concluded, on the balance of probabilities, that the City of Waverley did not consent to the making of a design application by Mr Warner or his company. I have reached that conclusion after considering the additional material filed by Mr Warner in relation to this issue following my earlier decision on this design. I believe I have afforded Mr Warner ample opportunity to clearly establish that consent had been given before making the application. The provision of s.17A have thus not been established for design 118681.
In line with my findings in my earlier decision on this design, the design lacks newness. I therefore refuse the application for extension of the period of registration of design 118681.
I reserved consideration of an award of costs in my earlier decision. I have found that the design lacks newness based on material raised by the informant and I have refused to extend the period of registration. In line with the normal practice that costs follow the event I award costs in accordance with Schedule 4 of the Designs regulations against Mr Warner and in favour of Commercial Systems Australia Pty Ltd.
Trevor Bruhn
Delegate of the Registrar of Designs
Patent attorneys for the registered owner : Davies Collison Cave, Melbourne
Address for informant : Mr Gavan Costelloe, PO Box 800, GLEN WAVERLEY VIC 3150
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