Designership and the death of the author
Authorship as identity
We all understand what it is to be an author. We identify series of books through characters. Think: Harry Potter. The author’s individual style also identifies the author as the common source of texts. Think: Dr Seuss.
In primary school we create our own stories and other works, and so engage the world as an author from a young age.
In his 1967 essay The death of the author, French literary theorist and philosopher Roland Barthes challenges the idea that a text can be attributed to a single author. Barthes argues that a text is never original because it is a reflection of references from a multitude of traditions and quotations from innumerable cultural centres. Thus every piece of writing reflects a fabric of inputs rather than a single voice.
Authorship as currency
In 1985 the International Committee of Medical Journal Editors sought to establish uniform standards for what contributions merit authorship in biomedical journals. This proposal was an attempt to stamp out the practice of “gifting” authorship in exchange for materials, research subjects, career advancement and so on.
The use of authorship as a bartering tool reflects its inherent value. Authorship is valuable because the right to own IP devolves from authorship.
For copyright purposes, the author is the person who expresses an idea in tangible form (e.g. writing, a drawing). This is even if the idea was supplied by another person. Consider the following examples (based on legal cases):
- a ghost writer who writes the life of a person who supplies the facts is the author;
- an artist who executes a drawing based on instructions of another person as to the subject and treatment is the author;
- a subeditor of a newspaper who substantially re-writes a news story submitted by a journalist is the author.
The author is the person who produces an “original” work through the exercise of labour, skill and judgement. Merely transcribing material supplied by another person does not constitute authorship.
The default position for copyright is that the author is the owner. This is subject to:
- an employment relationship – employers own IP created by employees in the course of employment; and
- a contractual arrangement – the author of a work owns the copyright unless agreed otherwise and assigned in writing.
Authorship of a registered design is attributable to the person who conceives the design (the relevant shape, configuration, pattern or ornamentation) and reduces it to visible form (e.g. by drawing it up or making a model).
Disputes may arise where one person conceives a concept for a design, puts it into a rough material form then contracts a second person to draw up the final design, If the first person leaves only minor details to the choice of the second person then the first person is the author. Conversely, if the instructions of the first person leave practically all to the second person, the author is the second person. Ownership of a registered design devolves from designership of the design.
The default position for registered designs is that the actual designer is the author and owner of the design and is entitled to apply for registration as the owner of the registered design. This is subject to:
- an employment relationship – where the designer makes a design in the course of employment, the employer owns the design; and
- a contractual arrangement – where a designer creates a design under a contract with another person, that other person is the owner of the design (unless agreed otherwise).
What if a final design comes about through functional or practical production considerations rather than aesthetic considerations? Is a person who contributes technical expertise an author?
In the design of a security glass brick designed to be used in situations where greater structural strength is required (e.g. jails), a manufacturer of glass bricks relied heavily on technical expertise of a manufacturer of strengthened glass to arrive at the final design. The Australian Designs Office found that the contribution of the toughened glass manufacturer was sufficient to establish joint authorship in the final design – the result being that it was entitled to be recorded as a joint owner of the application to register the design: Glass Block Constructions (Aus) Pty ltd v Armourglass Australia Pty Ltd  ADO 1. The relative contributions of two parties engaged in developing a product for manufacture were sufficient to establish designership rights for both parties.
Another common situation is when one party develops IP rights incidental to development of a product owned by another party. In Dennis Gravolin and Trailer Vision Pty ltd v Lomac Holdings Pty Ltd as trustee for Lomac Trust  ADO 7, the owner of a patent for a trailer plug obtained assistance from a manufacturer to manufacture a trailer plug product. The manufacturer filed applications to register designs for a number of trailer plugs. None of the design applications related to the actual product that was the subject of the arrangement between the parties or a confidentiality agreement signed by the manufacturer – there were clear differences in the shape and configuration of the housing of the patented plug and that of the relevant design applications. The dealings between the parties were silent on IP created by the manufacturer incidental to the arrangement with the patent owner. Therefore, the manufacturer was free to develop incidental IP rights with no obligation to disclose them to the patent owner. There was no evidence to establish any right to authorship (through contributions to the development of the designs) by the patent owner.
This decision illustrates that the owner of certain IP rights (e.g. the patent owner) does not necessarily own all rights incidental to arrangements with other parties relating to their IP. The manufacturer’s design rights were created independently from the patent owner’s rights and, absent any circumstances to establish the contrary, the manufacturer owns them.
When is a person who contributes to an invention entitled to claim inventorship? When one person has a general idea of what is required but does not necessarily know how to put those ideas into effect and a second person does, then both are the inventors: Row Weeder v Nielsen (1997) 39 IPR 400. The question might be whether the invention would have occurred without the second person’s involvement: Costa v GR & IE Daking (1994) 29 IPR 241. The contribution of the second person needs to have a material effect on the final concept of the invention: Row Weeder. There is no joint inventorship with a person who bases the claim on knowledge derived from the true inventor: Stack.
The unifying element for joint authorship, designership and inventorship is the involvement of multiple people in an activity of original creativity. Title devolves from the creator of the work to the person obtaining the legal monopoly right.
For designers (other than employees), the default position for:
- copyright is that the designer is the owner of those contributions;
- registered design rights is that the party contracting the designer to create the design is the owner of those contributions; and
- patent rights is that the designer is the owner of those contributions.
This assumes the designer is making a sufficient, original contribution to establish authorship, designership or inventorship. As the default position for ownership can be altered by agreement, designers need to be able to identify when steps are required to secure ownership or when you are the owner. Agreements about IP ownership must be written. By understanding your rights, you may have leverage to insist on ownership or be adequately compensated in dealings with clients.
This post originally appeared as an article in Issue 32, July 2010, of the industrial design magazine Curve