QUESTION TWO
Annya, a young architect, has worked for some years for a company which designs and builds theme park rides in Australia and throughout South East Asia. She hears through the grapevine that one of Australia’s biggest theme parks, Magic Kingdom, is tendering for designs for a giant new waterslide, but that her employer has chosen not to put in a tender.
In her own time, working at home beyond the scope of her employment, she develops a unique design for a giant “water coaster”, 350 metres long, which when constructed will propel riders by means of powerful water jets through a series of slides and tubes, twisting and turning at high speed.
Annya prepares detailed drawings showing the overall “look” of the proposed ride. She then designs plans for a series of sample flume components, which are the individual pieces of the waterslide which join together to form the overall structure. There is no new technology or new mechanism employed in these designs, but Annya has come up with a unique and beautiful new shape for the project: four sleek Chinese dragons locked together in mortal combat, their elongated bodies coiling and uncoiling around each other in a tumbling cascade. The ride begins 10 storeys above the ground and flows down eventually to a large ornamental pool. The result looks unlike any other waterslide anywhere in the world, and the individual flume components that Annya has designed are unique in their shape as well, to accommodate the specific design requirements and the particular set of physical forces acting on the riders.
Annya is delighted with the result, which she calls “Dragonfall.” She knows enough about the growing market for theme park waterslides, all around the world, to realise that there is potential for many dozens if not hundreds of these “Dragonfall” designs to be built, under licence to her, in many different countries.
Annya puts together a portfolio which includes plans for all her new Dragonfall designs printed on paper. She arranges a presentation to Magic Kingdom. Wishing to protect her interests before this presentation, she attends to completing a trademark application in respect of the name “Dragonfall” (requesting an “expedited examination”) and to filing a design right application in the proper form.
She correctly understands that since all her Dragonfall designs are component parts of one product, she only needs to file one design application. However she cannot afford to build any kind of 3-D model of her components, or of her overall design, so she decides to submit the printed plans from her portfolio as her representation, noting in her application form that she is seeking to register the “design and/or the corresponding design”. She takes care, in the remainder of the application, to properly address all the other formal requirements, and she pays the required fees. She quickly receives an acknowledgement of her design right application, and also receives a number that accords her a priority date. She is told that her application is now in a queue to be processed.
Having made her trademark application and her design right application, she makes her presentation to Magic Kingdom, who are so impressed with her idea that they offer to purchase it on the spot. She explains that she is only willing to sell them the Queensland rights to her design, and for twice the price that they are offering. In relation to other territories elsewhere in Australia, and around the world, the design rights will remain hers. She explains that she has already made a design right application based on the same plans that she is showing to them now, and she further confirms that she has made a fast-track application for a trademark for the name “Dragonfall” as well.
Magic Kingdom indicate they will need time to consider this offer. They ask to retain a copy of Annya’s portfolio for a few more months, until the end of the formal tender process, so that they may compare it with other designs that come in. They sign a standard non-disclosure agreement, undertaking not to infringe Annya’s rights in her Dragonfall proposal in any way. Feeling confident, Annya agrees.
Two months later Annya has still not yet received any final word on her trademark application or her design right application. Meanwhile, she learns that Magic Kingdom is hosting a lavish industry function at which they will make an announcement regarding the design of their new waterslide. Annya attends – and there in the centre of the room is a giant 3-D model of Annya’s waterslide design, accurate down to the last detail. Magic Kingdom’s senior executives announce that Magic Kingdom will soon be constructing this wonderful new waterslide, which they have designed in-house and named “Falling Dragon”. They intend shortly to begin construction on other “Falling Dragon” waterslides all around the world.
TO DO: Consider in detail Annya’s position in respect of any statutory intellectual property rights she may have (or may be able to obtain) in her Dragonfall proposal, and consider whether or not she will be able to protect any of these rights against Magic Kingdom.
