Warner v Commercial Systems Australia Pty Ltd

[1995] ADO 3

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(4) by Commercial Systems Australia Pty Ltd; hearing.

Decision:    Issued            .

Abstract: Design not new or original. The provisions of s.17A found not to be satisfied given the evidence filed. The proprietor is allowed 30 days to submit any further evidence to establish the consent specified in s.17A(1)(b).

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

Application for a registered design no. 0997/92 was lodged on 22 April 1992 by Barry J Warner (hereinafter referred to as "Warner"). The application indicated Warner as the author of the design. The application was registered on 1 November 1993 under registration number 118681. The priority date for the purposes of section 17 of the Designs Act is 22 April 1992.

The initial 12 months registration expired on 1 November 1994. Warner applied under section 27A(2) for the registration to be extended. The latest date for lodging a notice under section 27A(4) was 1 October 1994.

On 8 June 1994 Commercial Systems Australia Pty Ltd (hereinafter referred to as the "informant") lodged a notice under section 27A(4). The notice was accompanied by two statutory declarations by Gavan Costelloe and several other documents. The notice refers to material allegedly published in documents in Australia before the priority date and which is considered relevant to whether the design was new or original at the priority date.

On 23 December 1994 comments in answer to the s.27A notice were provided on behalf of Warner by patent attorneys Davies Collison Cave and a statutory declaration by Warner was also filed.  In addition, a request to amend the register was filed by Warner seeking to include Mark Skelton as co-author of the design.  On 23 February 1995 both parties were advised that the Deputy Registrar of Designs had considered the material filed and was of the opinion that the registered design was not new or original over the material lodged by the informant.  The reasons were set out in a written opinion by the Deputy Registrar of Designs dated 23 February 1995.  The registered owner, Warner, then requested to be heard on the matter.

I heard the matter in Canberra on 19 May 1995.  Mr Barry J Warner appeared, and the informant was represented by Mr Gavan Costelloe, director of the informant company, with Mr Mark Skelton also attending.

The dESIGN

The article to which the design is applicable is a Bus Shelter.  The representations for registered design 118681 comprise an elevation and an end elevation of a structure and a perspective view.  The representations illustrate a rectangular structure in plan with one side and both ends enclosed.  The structure has a roof, curved in end elevation, which does not extend beyond the ends or the sides of the structure.  The structure has a round tubular support at each of its four corners, each such support having an identical decoration cap at its upper extremity and a connecting pad or plate at its lower extremity.  The representations indicate that the enclosed ends and one side have a lower opaque panel surmounted by a transparent panel which extends to the lower edges of the roof, the panels being joined to the tubular supports.

The statement of monopoly for design 118681 is:

"I claim a monopoly in the shape and configuration of the bus shelter as shown in the representations."

The scope of the present registration is thus a bus shelter having all the features of shape and configuration as shown on the accepted representations.

DEPUTY REGISTRAR'S OPINION

In his opinion, the Deputy Registrar summarises the s.27A(4) material and the registered owner's reply thus:

"3. The Informants declarations

Mr Gavan Costelloe, Managing Director of Commercial Systems Australia Pty Ltd lodged two statutory declarations in support of the Form 8. They assert:

. Mr Barry Warner falsely declared himself to be the designer of a bus shelter as manufactured for the City of Waverley

. the concept design was in public circulation in August 1991

. Waverley Council openly exhibited the design from January 1991

. Barry Warner made a prototype in August 1991 using the design concept drawing

. Commercial Systems Australia Pty Ltd made 8 shelters in June 1992.

An accompanying letter refers to a copy of an article from the Waverley Post of 24 September 1991 showing a group of people sitting in a bus shelter and a photographer's proof sheet containing a proof of the photograph used in the Waverley Post article.

4. The Registered owner's Reply

Mr Warner replied to the informant's material by a statutory declaration lodged 23 December 1994.  It asserts:

. concept drawing of a bus shelter prepared by Mark Skelton and dated 9 January 1991. The copyright owner was City of Waverley.

. made modifications with Mr Skelton and prepared a prototype and in August 1991 installed it in [Springvale] Road. At paragraph 3 it is stated: "This shelter incorporated the original design concept of Mark Skelton together with further design contributions by me."

. the prototype shelter in Springvale Road is the same prototype as mentioned in the informant's declaration

. the City of Waverley assigned the concept design to Warner prior to 22 April 1992."

The Deputy Registrar then discussed the material in these terms:

"5. Discussion

It seems to me the chain of events is as follows:

(1) Mark Skelton produced a concept drawing of a bus shelter whilst employed by the Waverley Council. The drawing is dated 9 January 1991

(2) the concept drawing was put on display and a prototype of the bus shelter was requested by the Waverley Council on 12 August 1991

(3) Innovative Urban Design prepared manufacturing drawings for a bus shelter to meet the Waverley Council request. The drawings were dated 22 August 1991 and were used as the representations for application 997/92 filed by Mr Barry Warner. The manufacturing drawings showed differences from the concept drawing. The Warner declaration refers to modifications being made to the bus shelter as shown in the concept drawing

(4) the prototype bus shelter was publicly displayed on a  main road in the Waverley council area sometime after 12 August 1991, but certainly before 24 September 1991

(5) the City of Waverley assigned rights in a design to Barry Warner at a date before 22 April 1992

(6) a design application for the bus shelter was lodged on 22 April 1992.

Section 27A(4) of the Designs Act concerns challenging the validity of a registered design based on disclosures in documents. It is not a forum for challenging issues of ownership.

Setting aside any consideration of s.17A for the time being, I have the following documents before me:

(a) concept drawing dated 9 January 1991 and declared to have been "openly exhibited" in January 1991

(b) the manufacturing drawings of a bus shelter. These drawings are published, by virtue of S.27 of the Designs Act, as of 1 November 1993. The drawings are dated 22 August 1991

(c) the photocopy of an article from the Waverley Post of 24 September 1991, showing a photograph of a group of people sitting in a bus shelter

(d) a photographer's proof sheet showing the photograph, inter alia, published in the Waverley Post.

On the information provided I consider documents (a) and (c) were published before the priority date, i.e. 22 April 1992.

Whilst I think it probable that the manufacturing drawings would have been seen by a number of people I have no information before me to say that they were publicly available before the priority date.

The photographer's proofs are pictures of a possible prior use of the design. I can consider them under s.27A(9). They were available to the photographer before the priority date of the design.

Whilst the published photograph shows some of the features of shape of the bus shelter of the design it does not show all. Document (c) does not prior publish the registered design.

The photographer's proofs show all the elements of shape of the registered design. The bus shelter has a back panel that does not reach to the ground. That is the same as in the registered design. The reinforcing ribs in the panel can not be seen in the photograph because of the seat. I do not consider the provision of reinforcing ribs on a panel to be anything more than an immaterial difference. It certainly is a well known principle in building construction. I consider the registered design has been prior published by the bus shelter shown in the photographer's proof set.

Document (a) shows all the features of shape found in the registered design. The concept drawing does not show a connecting pad at the foot of each upright or the reinforcing ribs in the opaque panelling. These differences are immaterial and are known in the construction trade."

Consequently the Deputy Registrar was of the opinion that the  documents (a) and (d) to which he referred would deprive the present design of newness.

The Deputy Registrar then considered a defence raised by the registered owner based on section 17A of the Designs Act 1906. After discussing the circumstances, he concluded that section 17A can not apply and accordingly stated his opinion that the design was not new or original over the information lodged by the informant.

SUBMISSIONS AT THE HEARING

At the hearing Mr Warner's submissions were directed to issues concerning the defence based on section 17A concentrating on the two pre-conditions the Deputy Registrar considered had not been met. I will refer to relevant points of his submissions later as appropriate. Submissions on behalf of the informant covered the original Skelton drawings, which had been shown to and discussed with various manufacturers by the City of Waverley personnel, and the installation of the proto-type bus shelter in September 1991.

DECISION

Publication of the registered design

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. 

S17A defence to lack of newness

The registered owner stated in the letter from his patent attorney of 23 December 1994 that:

".....the design should be treated as new or original notwithstanding the prior installation of the prototype bus shelter....by operation of Section 17A of the Designs Act 1906."

In Water Recreations Pty Ltd v Fairmile Pty Ltd & Ors (1982) AIPC 90-006 at page 38,165, Olney J discussed s.17A in these terms:

"Section 17A(1) operates where:

(a)copyright under the Copyright Act 1968 subsists in an artistic work, and

(b)an application is made (with certain consent) for the registration of a corresponding design.

The section clearly distinguishes between an artistic work on the one hand and a design on the other.  The two are not synonymous."

The statutory definitions of "artistic work" and "corresponding design" in the Designs Act 1906 indicate the same meanings for these terms as in the Copyright Act 1968.

Where the situation expressed in s.17A exists, the design is not treated for the purposes of the Designs 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, save for the circumstances indicated in paragraphs (c) and (d) of s.17A(1).

In his opinion, the Deputy Registrar indicated that for s.17A to operate certain pre-conditions must be satisfied, they being:

1. there must be an artistic work;

1. an application must be made for the registration of a corresponding design;

1. the application for the corresponding design must be made by, or with the consent of, the owner of the copyright; and

1. the absence of novelty or originality must result from the use of the artistic work.

As a drawing and a building are examples of artistic works in accordance with the definition, I agree with the Deputy Registrar that in this case the concept drawings prepared by Mr Skelton, the manufacturing drawings prepared by Mr G Hall and the prototype bus shelter are all artistic works on which copyright under the Copyright Act 1968 exists. Thus pre-condition 1 is met.

Regarding pre-condition 2, the Deputy Registrar was of the opinion this was not met.  He said,

"The application for registration of the corresponding design - lodged 22 April 1992 - used photocopy reductions of manufacturing drawings dated 22 August 1991 as the representations. The corresponding design and the artistic work are thus the same.  See Water Recreations Pty Ltd v Fairmile Pty Ltd (1982) AIPC 90-006 at 38,166.

I do not believe s.17A applies because the alleged corresponding design and the artistic work are the same."

From s.74(1) of the Copyright Act 1968, a "`corresponding design', in relation to an artistic work, means a design that, when applied to an article, results in a reproduction of that work."

The representations lodged with the design application were photocopy reductions of manufacturing drawings dated 22 August 1991 drawn by Mr G Hall.  Amended representations were proposed before the Designs Office and were accepted and form the representations to the registration.  It is true to say that the amended representations show several differences to those first lodged but overall the design depicted is substantially the same.  The design depicted in the accepted representations is also substantially the same as the drawings forming the concept drawings of Mr Skelton.

At the hearing Mr Warner referred to the various drawings and aspects of his discussions with Mr Skelton and Mr Hall about the design leading to the manufacture of the proto-type shelter.  There were no submissions of note directed to the legal requirement embodied within pre-condition 2.  Accordingly, considering as the "artistic work" either the concept drawings of Mr Skelton or the manufacturing drawings of Mr Hall, the "corresponding design" is substantially the same as the artistic work.  Thus, with regard to these artistic works, following the judgement in the Water Recreations Pty Ltd v Fairmile Pty Ltd case, I conclude that the registration is not of a corresponding design as required by s.17A(1)(b) of the Designs Act 1906.

However given my conclusion above that the proto-type bus shelter is an artistic work, I believe that registered design 118681 is a registration of a corresponding design of that artistic work.  Accordingly I consider that pre-condition 2 is met.  I note that the Deputy Registrar's opinion does not extend to a discussion of the proto-type with respect to pre-condition 2.

Leaving aside pre-condition 3 for the moment I now turn to pre-condition 4. The Deputy Registrar phrased the pre-condition as: "The absence of novelty or originality must result from the use of the artistic work" and concluded it had been met. There is, I think, a qualification needed to the pre-condition as stated since the use must not be one falling within paragraphs (c) and (d) of s.17A (1). Thus I believe the pre-condition should be stated as:

"The absence of novelty or originality must result from the use of the artistic work other than a use identified in s.17A(1)(c) and (d)."

The proto-type bus shelter was in use from at least September 1991, ie. before the priority date of the registration. In considering this pre-condition, the Deputy Registrar considered whether the previous use of the proto-type bus shelter was for the purposes of obtaining sales or for letting for hire or offering or exposing for sale or hire (uses identified in s.17A(1)(c)). He concluded that there was nothing to suggest it had been for those purposes, and then stated: "Rather it seems it was placed there at the request of an adjacent car dealership and to gauge the level of public interest in the bus shelter." There is nothing before me to conclude otherwise. I am satisfied that pre-condition 4 is met.

Pre-condition 3, which derives from paragraph (b) of s.17A(1), is:

"The application for the corresponding design must be made by, or with the consent of, the owner of the copyright."

The Deputy Registrar was of the opinion that pre-condition 3 was not met.  However his conclusion was based on a consideration of the corresponding design as if the artistic work were either the concept drawings or the manufacturing drawings.  In line with my conclusion regarding pre-condition 2, I will examine the pre-condition from the basis that the proto-type bus shelter is the artistic work.

The main issue concerns the ownership of the copyright in the proto-type bus shelter.  To consider that issue it is necessary to review how the proto-type came about and events thereafter.

Mark Skelton produced a concept drawing which is dated 9 January 1991. Mr Skelton is described as the Landscape Architect, Waverley City Council in the Costelloe letter of 15 February 1994 and as an employee of the City of Waverley at paragraph 2 of the Warner declaration (and see Exhibit BJW-2). Generally the author of an artistic work is the owner of the copyright in the work. No information is before me as to the actual conditions of Mr Skelton's employment, but as an employee of the City of Waverley Mr Skelton's concept drawing was most likely the property of the City of Waverley. [See Copyright Act at s.35(6).]

The concept drawings were made available to manufacturers early in 1991.  Mr Warner states that in April or May 1991 he "was forwarded a copy of the drawing by an official of the City of Waverley and invited to develop the concept drawing into a practical prototype."

The Warner declaration states that the proto-type "shelter incorporated the original design concept of Mark Shelton together with further design contributions by me". At the hearing Mr Warner said that he had extensively discussed the concept design and the production of a proto-type with Mr Skelton and Mr Hall. Mr Hall prepared manufacturing drawings which are dated 22 August 1991. From the evidence it is not clear whether Mr Hall made the drawings before the proto-type was completed. It would seem that the owners of the copyright in the manufacturing drawings are Mr Skelton, Mr Warner and Mr Hall the draftsman, unless otherwise provided for in the Copyright Act. However as an employee, Mr Skelton's portion would belong to the City of Waverley and, as an employee, Mr Hall's portion would belong to Mr Warner or his company, Urban Design Furniture.

Insofar as copyright in the proto-type bus shelter is concerned, as the shelter was made by Mr Warner, copyright would normally reside with him.  However the proto-type was based on the concept drawings of Mr Skelton incorporating modifications of Mr Warner.  The proto-type, like the design representation, included the "Waverley rings" decoration on the corner uprights, and other notable features shown in the concept drawings of Mr Skelton.  This alone suggests that the City of Waverley may share ownership of copyright in the proto-type bus shelter with Mr Warner.  However there is support for this view given several documents before me.  Firstly, in a letter dated 5 December 1993 addressed to Mr Warner of Urban Design Furniture and provided to me by Mr Warner at the hearing, the Chief Executive of the City of Waverley refers to the "Waverley type bus shelters sold by your company" and in part states "we are most concerned to ensure that recognition is given that the shelters are `Waverley's' intellectual property and suggests that this be acknowledged in your publicity".  There is also a reference to the original agreement concerning the use of the "Waverley rings" on shelters.  Secondly, in an advertisement apparently published on 3 June 1992 in the Waverley Gazette, the City of Waverley called for quotations for the "Manufacture and installation of 8 No. bus shelters similar to that recently installed in Springvale Road north of Waverley Road".  It seems to me that these references strongly indicate that the City of Waverley (in June 1992 and December 1993) believed it owned rights to the Waverley type bus shelters such as the proto-type installed on Springvale Road.

On the basis of the material before me, I believe ownership of copyright in the proto-type bus shelter resides jointly with Mr Warner and the City of Waverley.

Returning to the specific requirement of pre-condition 3, the question remains whether the application for the corresponding design was made by, or with the consent of, the owner of the copyright in the artistic work.  There is no information before me to indicate that the City of Waverley intended to apply for registration of the design of the bus shelter.  There is also no documents before me which establish that the City of Waverley gave their consent, as part owner of copyright in the proto-type shelter, for Mr Warner to apply for the registration of the corresponding design.  Mr Warner declares

"... prior to this date [22 April 1992, the date of the design application], I made a contractual commercial arrangement with the City of Waverley according to which the City of Waverley assigned its ownership of Mr Skelton's concept design and any other subsequent contributions to me in return for a royalty undertaking."

Mr Warner seeks support for this statement from Exhibit BJW-2, being a letter dated 5 December 1994 from the Chief Executive of the City of Waverley to Davies Collison Cave concerning the registered design 118681.  This letter states:

"I refer to recent discussions with .... relating to Bus Shelter Design and registrations design 118681 in the name of Barry J Warner.

I am familiar with the design covered by the registered design and confirm that aspects of the design were the creation of an employee of the City of Waverley, Mark Skelton, and were illustrated in a concept drawing by Mr Skelton.  Mr Skelton and Barry Warner subsequently worked together in developing that concept drawing. I confirm that, prior to 22 April 1992, the City of Waverley made a commercial arrangement with Mr Warner and his company Urban Design Furniture 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."

It is not clear to me from this letter to what extent the City of Waverley considered it had assigned its "interest" in the "design" to Mr Warner.  It could have been simply to permit Mr Warner to use the design in manufacturing further bus shelters in return for a royalty per shelter.  The letter does not indicate that by assigning its interest in the design, the City of Waverley as co-owner of copyright to the proto-type bus shelter consented to an application being made for a corresponding design.  In any event the reference to the City of Waverley assigning its interest in the December 1994 letter contrasts with the December 1993 letter, to which I have already referred, wherein reference is made to the recognition that the shelters are "`Waverley's' intellectual property".  Furthermore, as the City of Waverley in June 1992 sought the manufacture of 8 shelters similar to the proto-type made by Mr Warner, this raises doubts as to the nature of any assignment between the City of Waverley and Mr Warner before 22 April 1992 encompassing the proto-type bus shelter and its design.

No assignment document between the City of Waverley and Mr Warner or his company concerning the design or shelters has been tendered in evidence.  It seems that a formal document may not exist since at the hearing Mr Warner indicated that there had been a verbal consent regarding the design.  What is apparent to me is that Mr Warner, given some agreement or arrangement with the City of Waverley, was permitted to use the concept drawing of Mr Skelton to develop a proto-type shelter and was allowed to manufacture further shelters subject to a royalty payment.  Although it is stated that the City of Waverley assigned its interest in the design to Mr Warner, there is also material before me which suggests that this may not have been so.

In my view, the material before me does not establish that the application for the corresponding design was made by, or with the consent of, the owner of the copyright in the proto-type bus shelter.  Pre-condition 3 is therefore not met.

To summarise, as pre-condition 3 is not met, section 17A can not apply to design 118681.

CONCLUSION

From the material before me I conclude 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. Consequently, on this basis, I am not prepared to extend the period of registration.

My findings regarding the issue of whether the provisions of s.17A apply to design 118681 are based on the proto-type bus shelter being the artistic work in terms of that section, and thus my consideration of pre-condition 3 is somewhat different to that presented in the Deputy Registrar's opinion. Mr Warner has had an opportunity to establish why s.17A should apply in this case, including being heard on the matter. However I am mindful that Mr Warner may not have had sufficient opportunity to address the specific issue of whether the City of Waverley, as co-owner of copyright to the proto-type bus shelter, consented to an application being made by Mr Warner for a corresponding design. In the circumstances I am prepared to allow Mr Warner 30 days from the date of this decision to submit any further evidence to establish that such consent clearly existed prior to the making of the design application. In the absence of such evidence being filed I will formally refuse to extend the period of registration.

I will consider the question of an award of costs when finally determining whether to extend the period of registration.

Trevor Bruhn
Delegate of the Registrar of Designs

Patent attorneys for the registered owner  : 

Davies Collison Cave, Melb

Address for informant   :             Mr Gavan Costelloe
PO Box 800
GLEN WAVERLEY  VIC  3150