At the core of the right to ownership of a registered design is the fundamental principle of entitlement derived from creation of the design. Ultimately, entitlement flows from the person who created the design, but may reside for example with their employer. An issue that often arises is who the actual designer is, particularly where there has been collaboration in the creative process, as illustrated by the recent decision issued by the Australian Designs Office in Jarvie v Comtec[1].
The request for revocation brought by John Jarvie revolved around establishing who was responsible for the creation of the designs the subject of registrations 201515406 and 201616328, and whether the listed owner was entitled to ownership. The designs were both filed in the name of Comtec Industries Pty Ltd. Design registration 201616328 listed two directors of Comtec (Ryan Nugent and David Whelan) as co-designers. The other registration listed Luke Jarvie as the designer. Luke, the son of the requestor John, claimed that he had never held himself out to be a designer of the design. Rather, it was said that he was listed as a designer because the directors of Comtec were incorrectly advised that the financial position of his father John disqualified him from being listed as a designer.
John filed a request for amendment of the designs on the basis of entitlement. John claimed he was the sole designer of both designs, and that Comtec were not entitled to the designs as no agreement existed relating to ownership of the IP he created. In response to the request, Comtec conceded that John was a designer of the designs, however it submitted that David Whelan was the author of the designs, and that John had collaborated with him in the conceptual works.
The Act defines ‘designer’ as ‘the person who created the design’,[2] a question of fact. 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’.[3]
It was established that David Whelan had received copies of John Jarvie’s drawings, which were conceived long before the two met. David Whelan subsequently made modifications to the designs to address certain technical problems. Upon comparison of the original and refined drawings, it was evident that David Whelan’s contribution was a refinement of a shape already conceived by John Jarvie. The drawings were almost identical. It was evident that John Jarvie had ‘conceived’ the drawings, and was the sole designer.
While the Designs Act states that the designer may be the entitled owner, if the design is created in the course of employment, or under a contract with another party, then the other party may be entitled to ownership. In this case, John Jarvie was not employed by Comtec and there existed no contractual agreement concerning the assignment of IP rights. Rather, John Jarvie was found to have acted as an independent contractor, with no contractual agreement pertaining to the assignment of IP he generated. John Jarvie was found to be the sole designer of both designs, and the entitled owner.
In the event
that a listed owner is not entitled to ownership of a design right, the
registrar can only revoke the design. The designs cannot be transferred to the
entitled person. However, the entitled person/s can file a further application
for the same design and retain the priority date.[4] In this case, both designs
were revoked, and John Jarvie can now file a further application for the same
design whilst retain the priority date of the revoked designs.
[1] John Michael Jarvie v Comtec Industries Pty Ltd [2018] ADO 5 (31 October 2018)
[2] Designs Act 2003 (Cth) s 13(1)(a).
[3] 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] FCA 1941; (2008) 80 IPR 85, 96 [26].
[4] ss 21 and 55 of the Act