In Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 Metroll, a rainwater tank manufacturer, was unsuccessful in its claim that it was the person entitled to be registered as the owner of registered designs for new rainwater tanks.
The designer and the designs
Mr Collymore was the factory foreman of Metroll’s factory. New rainwater tanks had been designed by Mr Collymore. Mr Collymore came up with the idea for the designs for new modular rainwater tanks after watching one of his horses playing with a hose in a water trough on his property. He then refined his designs in his own time, after work. He subsequently filed three design applications for new rainwater tanks. The first of the designs (Registered Design no. 310528) is shown below.
Why an entitled person is important – the Designs Act 2003 (Cth)
Section 13 of the Designs Act 2003 (Cth) (”the Act”) specifies who is entitled to be registered as the registered owner of a design. Those people include:
(a) the person 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;
(d) a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person.
Incorrectly identifying the entitled person can have severe consequences, as a certified registered design may be revoked by a Court under section 93(3) of the Act if:
one or more of the original registered owners was not an entitled person in relation to the design when the design was first registered; or
each of the original registered owners was an entitled person in relation to the design when the design was first registered, but another person or persons were entitled persons in relation to the design at that time.
Nb: original registered owner, in relation to a design, means each person entered in the Register as the registered owner at the time the design was first registered.
The Court’s findings
Mr Collymore’s employment contract did not specify whether he or Metroll would own any designs or inventions he created which related to Metroll’s business. Metroll argued that its ownership of the designs should be implied, because Mr Collymore created the design “in the course of his employment”. The Court disagreed with Metroll. Instead, the Court accepted Mr Collymore’s evidence that he created the designs outside of the course of his employment. The Court also accepted Mr Collymore had told Metroll that he owned the designs and that he proposed to charge Metroll a royalty for the use of his modular tank designs.
Evidentiary issues
The Court rejected various pieces of evidence given on behalf of Metroll as to what was discussed in certain meetings regarding the creation and ownership of the designs. In particular, evidence was given for Metroll from one person that a “tank-making team”, of which Mr Collymore was said to be a part, was given instructions to create the tank designs. However, that evidence was not corroborated by anyone else who was said to be part of the “tank-making team”. The Court said
“Their absence is unexplained, and I infer that none of those witnesses would have provided evidence helpful to Metroll.” (at [34]).
Conclusions
In practice, a design application may proceed to registration in a matter of weeks if registration of the design is requested at the time of filing the application. It is therefore very important to know who is an entitled person(s) under the Act before filing any design application. If an entitled person is left off or incorrectly included in an application, the design application could quickly proceed to registration and may ultimately be susceptible to revocation.
Of course, ownership of intellectual property should always be clarified as early as possible, such as by including relevant provisions in employment contracts.
This case also shows that when ownership of intellectual property, such as designs, inventions or copyright, is unclear, people’s recollections of discussions which took place many years before may become very important in resolving any ownership dispute. If contemporaneous notes of relevant conversations and meetings exist, such documents may end up being very important when people have different recollections of what was previously discussed.
A further point to be taken from this case is that design registrations may provide effective protection of designs which, at least at first glance, look relatively simple.