Background
1 The applicant ("CIPEC"), a French corporation, manufactures and sells expansion joints for use in the road making, civil engineering and construction industries. During 1985 CIPEC appointed Barlace Pty Ltd ("Barlace") a company owned and controlled by the third respondent ("Mossonidis"), as the distributor of its expansion joints in Australia. Barlace, acting in that role, purchased, imported and then sold expansion joints manufactured by CIPEC until 27 February 1992 when its distributorship was terminated by CIPEC.
2 Mossonidis, acting on behalf of Barlace, sought specifications for various road bridge projects from road construction contractors for the purpose of tendering for the supply and installation of CIPEC expansion joints for those projects. In the usual course Mossonidis sent copies of the specifications to CIPEC in France to enable it to prepare an appropriate quotation for the supply of CIPEC expansion joints for the project. When a tender by Mossonidis was successful, Barlace (and on some occasions an associated company, Kinetic Systems Pty Ltd) purchased the joints from CIPEC and then supplied and installed the joints pursuant to a contract with the road construction contractor for the project.
3 Expansion joints provide the means by which expansion is able to occur in a road bridge structure. As a bridge structure is subject to movement, including variations in length due to changes in temperature and shrinkage and creep movements where the bridge is a concrete structure, provision must be made for a variable gap between the bridge structure and the abutments which are the supporting structures for the bridge at either end. The gap, called an expansion gap because it allows for the expansion of the bridge structure, needs to be covered by an expansion joint. In the case of road bridges, the upper surface of the bridge structure will be covered with bitumen or the like, and is known as the deck. Hence, expansion joints used on road bridges are often called deck joints. Road bridges typically comprise sections spanning no more than 200 metres in length between the piers or pylons below. Bearing pads are provided between the bridge and the supports.
4 Through the 1980's the design of road bridges was increasingly performed by consultant engineers engaged by the road authorities. Contractors became responsible for road bridge construction and the calling for tenders, including tenders for the supply of expansion joints. Generally, the design of the bridge requires the installation of previously used and approved joints, or a similar joint if approved by the relevant government road authority. Although the choice of a joint was that of the contractors responsible for the construction of the road bridge, the relevant road authority retained control over the expansion joints that were permitted to be used. In Victoria, where CIPEC joints were extensively used, VicRoads was the relevant authority. In particular, the authority had to be satisfied that the joint would be able to fulfil its use and load bearing requirements.
5 Austroads, an association of state, territory and federal road and traffic authorities, published a bridge design code in 1992, explaining the functions and general requirements of expansion joints. An extract from the code explains those functions as follows:
"The function of deck joints is to provide a trafficable surface across permanent openings in the bridge deck between parts of the deck or between deck and abutments with the widths of such openings varying with environmental effects, loads and movements.
The number of deck joints and bearings in a bridge should generally be the practical minimum. Bearings and deck joints are expensive components. They are difficult to install and require regular maintenance. For some bridge types no bearings and/or deck joints may be necessary."
The general requirements for the joints were stated as follows:
"Deck joints shall allow for traffic loading and movements due to temperature, creep, shrinkage, loading and other causes without inducing unacceptable stresses in the joint or other parts of the structure.
Joints shall not generate excessive noise or vibration under traffic. Where pedestrians or animals have direct access over the joint, all gaps shall be sealed or covered. Joint materials where exposed shall be corrosion resistant and joints shall be easily accessible for purposes of inspection, maintenance and replacement.
…
Provision is to be made to prevent vehicles skidding, particularly where the joint contains large areas of steel work at surface level.
Sliding plane expansion joints can generate excessive noise and may give problems in service, and their use is not recommended under vehicular traffic.
…
Each side of the deck joint shall be attached to the deck or abutment by anchoring the joint so as to transfer all static and dynamic loads from the joint to the structure.
…
Joints shall normally be sealed to exclude grit and dirt. Deck joints are rarely completely watertight and where an additional water barrier is not installed, the use of a drainage system shall be provided to cater for any percolation of water which may occur.
…"
6 Expansion joints are classified according to the extent of the longitudinal movement which they permit. Accordingly, the figure in millimetres used in the description of an expansion joint refers to the maximum movement permitted for that joint. The typical range is from 80 to 300 millimetres.
7 Mossonidis was personally involved in tendering for the supply of CIPEC joints and supervising their installation. As a consequence, although he had no formal engineering qualifications, between 1985 and 1992 he became familiar with CIPEC's products and their usage, performance and installation.
8 In December 1990, with the consent of CIPEC, Barlace registered "CIPEC Australasia" as a business name for use in Barlace's distribution of CIPEC's expansion joints in Australia. By 1991 the relationship between CIPEC and Mossonidis had become strained. During 1991 Mossonidis decided to establish his own business of manufacturing, selling and installing expansion joints which would compete with the CIPEC expansion joints he had been distributing. On 13 February 1991 the first respondent, First Melbourne Securities Pty Ltd ("Firmsec"), was incorporated by Mossonidis as the vehicle for the expansion joint business he proposed to commence. In March 1991 Barlace transferred the business name "CIPEC Australasia" to Firmsec. On 20 February 1992 the registration ceased. On 20 March 1992, shortly after CIPEC had terminated Barlace's distributorship, Mossonidis incorporated the second respondent, CIPEC Australasia Pty Ltd ("CIPEC Australasia").
9 Mossonidis intended to manufacture and sell expansion joints which were equivalent to those that he had previously been distributing for CIPEC. Although the basic design of an expansion joint may not appear to be complicated, quite complex design and engineering matters have to be considered to ensure that the joint can fulfil the functions required of it and, in particular, that it has the requisite load bearing and use capacity.
10 Mossonidis had no intention of independently creating his own designs for the expansion joints that he proposed to market. Rather, it was his intention to create a range of expansion joints equivalent to those he had previously distributed on behalf of CIPEC and to secure for himself the benefit of the goodwill that he had established in the Australian market for those joints.
11 It is appropriate to raise, at this stage, the fundamental credibility issue concerning Mossonidis' evidence. A critical aspect of that evidence was that Mossonidis claimed that he independently designed the two expansion joints the subject of CIPEC's copyright infringement claims; the WOSd and the Wd joints. The WOSd joint consists of two metallic extrusions linked by an elastomeric seal. The Wd joint is a more complex metal "finger" joint. Whilst Mossonidis accepted that in designing the joints he utilised CIPEC's design concepts he denied copying, or authorising the copying, of either of the two joints or of any drawing of those joints. Mossonidis' evidence on those matters was not credible. As I later explain in some detail, the result of his endeavours to create joints "equivalent" to CIPEC's WOSd and Wd joints was the creation of a range of replicating joints the shape, configuration and dimensions of which could only have been derived by the direct copying of the equivalent CIPEC joint or of a CIPEC design and manufacturing drawing of the joint.
12 I am satisfied that Firmsec, acting through Mossonidis, created the equivalent of CIPEC's WOSd joint by requesting Alcan Australia Limited ("Alcan") to draw a design and manufacturing drawing of the aluminium extrusion, being the main element of CIPEC's WOSd expansion joint, which was supplied by him to Alcan for that purpose. I am also satisfied that Firmsec, acting through Mossonidis, created the equivalent of CIPEC's Wd joint by requesting a draftsman to copy CIPEC's confidential design and manufacturing drawing of its Wd joint, which Mossonidis had somehow obtained. Needless to say, the copying of both joints occurred without the authorisation or licence of CIPEC. I accept the evidence of the two experts called by CIPEC that it is virtually inconceivable that the design and manufacturing drawings from which Firmsec's equivalent products were derived could have been created by any process other than by direct copying of the CIPEC joint or drawing.
13 Mossonidis was concerned about the legal consequences of utilising CIPEC's name and copying its products. He sought legal advice from his solicitors and also from a barrister. I am satisfied that, after receiving legal advice, Mossonidis was of the belief that using CIPEC's name or copying CIPEC's products was likely to create legal problems for him.
14 Mossonidis' evidence on that issue was also unreliable. His evidence ranged from saying he believed that it was unlawful for him to copy CIPEC's products, to saying he believed he was entitled to do so. I am satisfied that Mossonidis set about copying CIPEC's WOSd and Wd joints in the hope that such alterations as he made, or good fortune, would protect him from legal action. Numerous criticisms were made by CIPEC's counsel of Mossonidis' evidence and credibility on a number of ancillary issues. In my view there is considerable force in those submissions which offer a further basis for my conclusion as to the unreliability of Mossonidis' evidence on the critical issue of copying.
15 Mossonidis contended that the potential range of designs of expansion joints is dictated by the functions of the joint and is therefore necessarily limited to products similar to those marketed by CIPEC. However, the evidence does not support that contention; a range of different designs have been used and there is no reason why an expansion joint, which differs significantly in engineering and design respects from those designed by CIPEC but has the same function, cannot be created.
16 In any event I am satisfied that Mossonidis intended, and set out, to produce and sell expansion joints which could be used immediately in road construction in place of the equivalent CIPEC joints. Mossonidis was aware that if the Firmsec expansion joints were in all relevant respects the same as the CIPEC joint which had been previously used with the approval of the relevant authority, no further authorisation would be required. Thus, in respect of the WOSd and Wd joints previously sold in Australia by Barlace, Mossonidis intended to produce equivalent joints which would not require any independent or prior testing by him or the road construction authorities prior to their approval for use in road bridge construction.
The WOSd 75 Expansion Joint
(a) The WOSd 75 Extrusion
17 CIPEC's copyright in its design and manufacturing drawings (55-219 and 55-249) ("CIPEC's WOSd 75 drawings") of the metallic section of the WOSd expansion joint was established and was not seriously in issue at trial. The drawings were of the metallic section, being the main part of the WOSd 75 expansion joint which, as explained above, is designed to permit a longitudinal movement of 75 millimetres. The joint comprised two metallic elements (that is, the extrusions) which, when installed opposite each other on a road bridge, are linked by an elastomeric seal which is designed so that the end sections of the seal (referred to as the claws) co-operate with the equivalent receiving mouth section of the extrusions. This ensures that the seal prevents foreign material such as water, leaves and dirt from seeping through the expansion joints to the underlying bridge structure.
18 CIPEC had designed, manufactured and sold in Australia, through Barlace, the WOSd 75 expansion joint. Early in 1992 Mossonidis requested Alcan to prepare a design and manufacturing drawing of the WOSd metal extrusion. I am satisfied that Mossonidis provided Alcan with a CIPEC WOSd 75 extrusion to copy. I do not accept the evidence of Mossonidis that he first prepared his own detailed drawing of the extrusion which he gave to Alcan to work from. Initially, Mossonidis denied that he provided Alcan with the CIPEC sample. However, later in his evidence he admitted that he did provide Alcan with a WOSd 75 sample but said he did so to enable Alcan to establish the alloy composition and hardness and to ensure that the claw of the elastomeric seal co-operated with the mouth of the extrusion.
19 The first Alcan design and manufacturing drawing of the extrusion, stated to have been made for "CIPEC Australasia Pty Ltd" and dated 11 February 1992 ("the first Alcan drawing") is, in relevant respects, almost an exact copy of the CIPEC WOSd 75 extrusion. Any design or dimensional differences are slight and insignificant. Although the Alcan drawing omitted the bolt hole depicted in CIPEC's drawing, I do not regard that omission as significant.
20 There is no evidence that CIPEC's WOSd drawings were, or were likely, to have been, in the possession of Mossonidis at the time. The similarity of the Alcan drawing to the WOSd extrusion is such that it is overwhelmingly probable that it was a drawing of the CIPEC extrusion. It is unnecessary for me to go into the detail of Mossonidis's evidence concerning the development of his extrusion as I am satisfied that I should not accept that evidence. Mossonidis tendered his recent reconstruction of the original drawing that he said he gave to Alcan (Exhibit MM-3). Notwithstanding earlier denials that he gave such a sample to Alcan, he conceded in his evidence that such a sample was given by him.
21 In my view Mossonidis' evidence as to his purpose in giving the sample to Alcan is not credible. Mossonidis intended to manufacture and sell a product equivalent to the WOSd extrusion which he had previously sold on behalf of CIPEC. The overwhelming probability is that Mossonidis gave to Alcan the extrusion, rather than a detailed sketch of his proposed extrusion, to copy. There seems little purpose in Mossonidis preparing a sketch of the design, of a kind he said he made, when the product itself was so accessible to him and to Alcan. Further, a contemporaneous document obtained from Alcan indicates that a sample was supplied to Alcan. In any event the similarity in shape, configuration and dimensions between the Alcan drawing and the WOSd 75 extrusion are such that it is almost certain that Alcan's drawing was derived from the sample.
22 Mr Triolo ("Triolo"), a sales representative of Alcan who dealt with Mossonidis, said that he believed that no sample was given to him to copy. However, in giving his evidence Triolo relied upon a recent conversation in which Mossonidis had incorrectly asserted that no sample had been provided to Triolo. Triolo was relying on his memory when giving evidence as to events which occurred more than seven years ago. In these circumstances it was not surprising that Triolo's evidence was inaccurate in relation to the provision of a WOSd expansion joint by Mossonidis to Alcan.
23 Alcan's original drawing was then altered in hand, on the instructions of Mossonidis, in two respects which differentiated it from the WOSd 75 drawings. The first alteration added a fourth "V" groove to the upper surface of the extrusion. This was said by Mossonidis to be his own design improvement to give the extrusion greater traction for motor vehicles and also to provide additional assistance for the drainage of water from the extrusion. The second alteration rounded off the squared rear end of the extrusion to a curved rear end purportedly to assist the removal of air pockets which Mossonidis' claimed tended to form between the cement and the extrusion during installation.
24 There was some dispute as to the efficacy of, and motivation for, Mossonidis' design alterations. The expert witnesses called on behalf of CIPEC stated that neither design change added to the efficacy of the joint and implied that such changes were cosmetic, and made for the purpose of concealing copying. Notwithstanding Mossonidis' evidence that he proceeded by "trial and error" in relation to the design of the expansion joint, he was unable to give any details of experimentation other than in relation to the efficacy of the claw of the seal. I am satisfied that Mossonidis did not carry out any tests to determine whether his improvements were likely to assist traction or the removal of air pockets as he claimed. Ultimately, Mossonidis conceded that the air pocket problem was one which only arises if the concrete pouring and installation of the extrusion was not properly carried out. Further, there is little evidence to suggest the incorporation of an additional groove provides any functional benefits.
25 In my view any improvements said to have been made by Mossonidis to the design of the extrusion were secondary to his endeavour to design a product that had some visual difference to CIPEC's WOSd 75 extrusion. As explained earlier, Mossonidis was conscious of the problem of copying the WOSd 75 joint and it is likely that this motivated his design changes more than any expectation that those changes would improve the performance of the product in any significant respect.
26 In all the circumstances I am satisfied that the design changes were probably made by Mossonidis for the purpose of making the extrusion appear to be sufficiently different to afford him with a defence to any claim by CIPEC that he copied its WOSd 75 extrusion.
27 Three other design and manufacturing drawings derived from the WOSd extrusion were relied upon by CIPEC. The drawings were used by Firmsec to produce the equivalent Firmsec extrusions; the FMSd 75 and FMSd 100 extrusions. Two of the drawings, which were Alcan drawings dated 11 February 1992 ("the second and third Alcan drawings), incorporated the fourth groove and the curved rear end in accordance with Mossonidis' instructions. The drawings recorded CIPEC Australasia and Firmsec respectively as Alcan's customer. The fourth drawing ("the MCK drawing") is a more recent design and manufacturing drawing of the extrusion by MCK Metals and Crane Aluminium with some minor differences. The MCK drawing was copied from the second or third Alcan drawings.
28 I am satisfied that each of the drawings was made, on the instructions of Mossonidis, in a two dimensional form in order to enable Firmsec to produce its version (with the curved rear end and additional groove) of CIPEC's WOSd 75 extrusion in a three dimensional form. CIPEC's WOSd 75 extrusion was made in accordance with its design and manufacturing drawing in respect of which CIPEC owns copyright.
29 Mossonidis, acting on behalf of CIPEC Australasia (in respect of the first and second Alcan drawings) and Firmsec (in respect of the third Alcan drawing and the MCK drawing), authorised the creation of those drawings.
30 Firmsec has marketed and sold two expansion joints, FMSd 75 and FMSd 100, which have been produced from the Alcan and MCK drawings. I refer to those joints as the FMSd range of expansion joints.
(b) The elastomeric seal in the WOSd 75 expansion joint
31 CIPEC's copyright, in drawing 55-258, of the elastomeric seal for the WOSd 75 joint was not in dispute. The seal was given to Alcan together with the metal extrusions to which the claw of the seal is attached at either end by Mossonidis for copying. As Mossonidis intended that the mouth section of his extrusion, which was to be configured to co-operate with, receive and retain the claw of the elastomeric seal, was to be identical to the mouth section of the WOSd 75 extrusion, it followed that the claw of his seal would be identical with the claw of the seal in the WOSd joint.
32 However, the central portion of the seal, designed and used for the FMSd joints, is of a significantly different design to that employed for the same section in the WOSd seal. The central portion of the WOSd seal is essentially a diamond shape. The central portion of the FMSd seal has a different configuration. Unlike the WOSd seal which has one "hill" section with a "valley" on either side, the FMSd seal has two "hill" sections with a central "valley" and a valley on either side.
33 Although the seals in the CIPEC and Firmsec joints perform substantially the same functions and the dimensions and design details of the claw of the WOSd seal were copied in creating the FMSd seal, in the result the appearance of the FMSd seal, quantitatively and qualitatively, as depicted in Firmsec's design and manufacturing drawings of the seal, is significantly different to that of the WOSd seal depicted in CIPEC's drawing 55-258. Thus, whilst the claw in each is necessarily identical, I do not regard that as significant when the overall shape or appearance of the seal depicted in Firmsec's drawings is considered. The seal used by Firmsec in its FMSd 75 and FMSd 100 products was based upon the seal depicted in its drawings.
34 It follows that CIPEC will have difficulty in establishing copyright infringement in respect of its design and manufacturing drawing of the WOSd seal or in respect of the seal itself. That difficulty will flow through to another aspect of CIPEC's case which is a claim of copyright infringement in respect of the WOSd 75 expansion joint itself. To a large extent that case was dependent upon CIPEC succeeding in its claim for copyright infringement in respect of both the extrusion and the seal, the copyright of which subsists in separate drawings of the extrusion and the seal. If CIPEC fails in its claim on either item, it must follow that it would fail in its claim in respect of the WOSd 75 expansion joint which was dependent upon its infringement claim succeeding in respect of both the WOSd extrusion and the elastomeric seal used to connect the two metallic extrusions.
The Wd 230 expansion joint
35 CIPEC's copyright in the design and manufacturing drawings of the metallic sections of the Wd 230 expansion joint (drawing 55-283) ("CIPEC's Wd 230 drawing") was established and was not seriously in issue in trial. Unlike the WOSd 75 expansion joint, CIPEC's Wd 230 expansion joint had been offered for sale but had not been distributed or sold in Australia by Barlace. Accordingly, Mossonidis, whilst aware of the existence and design of the Wd joint in general terms from CIPEC brochures and the sale of other Wd joints, did not have access from CIPEC to the Wd 230 joint itself nor did he have any identifiable means of gaining access to the design and manufacturing drawing of that joint.
36 A draftsman, Roger Pavan, acting on the instructions of Mossonidis prepared a design and manufacturing drawing of the Wd 230 joint which was dated November 1992 ("the FMS 260/320 drawing"). The FMS 260/320 drawing contained numerous identical dimensions and design details of the Wd 230 design depicted in CIPEC's Wd 230 drawing. Pavan was not called as a witness by Firmsec or Mossonidis. The common design details and dimensions between the two drawings were such that it is plain that the FMS 260/320 drawing was copied from CIPEC's Wd 230 drawing. The reason for the "260/320" description is that the length of the piece in the drawing measures 260 millimetres but is indicated to be 320 millimetres.
37 Mossonidis was confronted, for the first time in the witness box, with the extent of the coincidence in the design and dimension details in the two drawings but could offer no explanation as to how that had occurred. He maintained his denial that he copied or procured a copy of CIPEC's Wd 230 drawing. The evidence does not disclose how Mossonidis came to be in possession of CIPEC's Wd 230 drawing but his previous association with CIPEC's employees or distributors was such that it was likely that he procured it through one or other of those sources.
38 I am in no doubt that the FMS 260/320 drawing was copied from CIPEC's Wd 230 drawing, or a reproduction of the Wd 230 drawing, in respect of which CIPEC owns the copyright. In my view there is no other plausible explanation for the dimension and design coincidence that exists in the two drawings. Further, as was pointed out by counsel for CIPEC, the other coincidences include the dog leg cross section A/A in both drawings and the commonality, albeit by mistranslation, of the unusual descriptions in French of the "teeth" portion of the design. Whilst CIPEC's Wd 230 drawing did have some different dimensions and minor differences in design, I am of the view that they are not significant differences.
39 In these circumstances I do not accept Mossonidis' evidence that:
· he did not copy or authorise the copying of CIPEC's Wd 230 drawing;
· he gave all of the necessary instructions that enabled a cast to be made for his FMS joints (which coincided with CIPEC's Wd joint);
· the FMS 260/320 drawing was made from the casting.
40 The evidence is not altogether clear as to the steps taken by Mossonidis to move from his copied design drawing, which was for the FMS 260 joint, to the making of casts and patterns for Firmsec's FMS joints (being the FMS 320, FMS 230, FMS 180 and FMS 120 joints which I refer to as the FMS range of expansion joints) by the pattern maker, Magnesium Technologies Pty Ltd. The manager of Magnesium Technologies Pty Ltd gave evidence that Mossonidis provided him with a sufficient drawing and instructions in respect of the design to enable the preparation of a pattern and the fabrication of a cast that matched the CIPEC Wd 230 drawing. As a result of pricing difficulties Firmsec did not appear to proceed with Magnesium Technologies.
41 The moulds for the gravity casting used for production of the FMS joints were made by BSR Tooling. It is unclear how the first of the moulds was produced by BSR but it is highly likely that it was based, directly or indirectly, on the FMS 260/320 drawing.
42 Each of the FMSd joints was a scaled up or scaled down version of the joint depicted in and derived from the FMS 260/320 drawing. Ultimately, Firmsec substituted the FMS 320 for the FMS 260 joint. The "teeth" sections which are central features of the design of the expansion joint were rounder at the ends in Firmsec's joint. Also in the scaling up and scaling down of the design, the "teeth" were necessarily longer and shorter respectively and related to each other and the design at different angles than that which is represented in the CIPEC Wd 230 design. There were also certain other differences in the manufactured version of the FMS joints. However, I do not regard the differences that emerged as significant, quantitatively or qualitatively, having regard to the extent to which the features of Firmsec's FMS design have been copied from CIPEC's Wd 230 drawing. Indeed, Mossonidis in his Affidavit, which is supported by CIPEC's expert evidence, made a statement that the differences between the FMS product and the FMS 260/320 drawing, were
"always marginal and minimal differences."
43 Firmsec subsequently prepared manufacturing drawings of parts of the FMS joint for use in the manufacture of the FMS 180 joint ("the FMS 180 drawings"). The drawings were derived from the 260/320 drawing.
44 Although CIPEC initially pursued claims of breach of contract and of s 52 of the Trade Practices Act 1974 (Cth) against the respondents, those claims were not pressed at trial. CIPEC also did not pursue its claim against the fourth respondent, Lisa Thomas. Thus, the claim by CIPEC against Firmsec and Mossonidis, and to a lesser extent CIPEC Australasia (who I refer to compendiously as "the respondents") was essentially for infringement of copyright in respect of CIPEC's WOSd 75 and Wd 230 drawings.
Copyright infringement
45 CIPEC is the owner of the copyright subsisting in the design and manufacturing drawings, which were first published in France, in respect of:
· the metallic section of the WOSd 75 extrusion;
· the elastomeric seal for the WOSd 75 expansion joint;
· the metallic section of the Wd 230 expansion joint.
46 By reason of reg 4 of the Copyright (International Protection) Regulations 1969 (Cth), the provisions of the Copyright Act 1968 (Cth) ("the Act") apply to, inter alia, artistic works first published in certain countries which include France, in like manner as those provisions apply in relation to artistic works first published in Australia and to Australian residents: see Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 4 FCR 450 at 457-458. Thus, pursuant to s 32(1) of the Act copyright subsists in CIPEC's design and manufacturing drawings if they are artistic works.
47 An "artistic work" is defined in s 10(1) of the Act as including a "drawing…whether the work is of artistic quality or not". Thus, although CIPEC's design and manufacturing drawings would not be regarded as having any artistic quality they are plainly artistic works as defined in s 10(1) of the Act: see Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461 at 470-471 and SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466.
48 Section 31(1)(b)(i) of the Act provides, inter alia, that copyright, in relation to an artistic work, is the exclusive right to reproduce the work in a material form. Section 36(1) provides that copyright in an artistic work is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does in Australia or authorises the doing in Australia of any "act comprised in the copyright".
49 Section 13(1) provides that a reference to "an act comprised in the copyright" in a work is a reference to "any act that under [the] Act, the owner of the copyright has the exclusive right to do". Section 14(1) provides that the doing of any act in relation to a work includes a reference to the doing of that act in relation to a substantial part of the work.
50 Accordingly, the respondents will have reproduced CIPEC's design and engineering drawings in a material form, and so infringed CIPEC's copyright in them, if they have reproduced them or a substantial part of them in a material form or authorised others to do so.
51 CIPEC alleges that Firmsec, CIPEC Australasia and Mossonidis have reproduced, or authorised the reproduction of, CIPEC's design and engineering drawings by producing the design and manufacturing drawings of the FMSd and FMS range of expansion joints and by the sale and supply of the FMSd and the FMS range of expansion joints. In that regard s 21(3) of the Act provides:
"For the purposes of this Act, an artistic work shall be deemed to have been reproduced:
(a) in the case of a work in a two-dimensional form - if a version of the work is produced in a three-dimensional form; or
(b) in the case of a work in a three-dimensional form - if a version of the work is produced in a two-dimensional form;
and the version of the work so produced shall be deemed to be a reproduction of the work."
52 In Henley Arch Pty Ltd v Clarendon Homes (Aust) Pty Ltd (1998) 41 IPR 443 at 460 I summarised the relevant principles in relation to copyright infringement in respect of architectural plans. The principles, which are applicable to the respondents' design and manufacture drawings, can be summarised as follows:
"1. The question of reproduction for the purposes of copyright law involves the two elements of resemblance to, and actual use of, the copyright work. These elements have been described as 'a sufficient degree of objective similarity between the two works' and 'some causal connection between the plaintiffs' and the defendants' work': see Willmer LJ in Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614; see also S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 472 and Eagle Homes at 570.
2. There is no reproduction for the purposes of the Act where two persons produce substantially similar works through independent effort: see Ladbroke (Football) Ltd at 276; S W Hart at 472 and Eagle Homes at 570.
3. In determining whether 'a substantial part of the work' has been reproduced, for the purposes of s 14(1) of the Act, greater weight must be given to the quality of what is copied than to its quantity: see S W Hart at 474 per Gibbs CJ, 481 per Wilson J and 503 per Deane J. When considering the quality of the part of the architectural drawing which is said to have been reproduced the simpler and more common place the drawing the more closely must the alleged infringer adhere to it for liability to exist: see Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 at 483 and Eagle Homes at 574.
4. A number of cases suggest that the degree of protection under copyright law of an architectural plan may be limited by reason of the significant proportion of features which are common to all plans, with the result that the remaining portion of a plan in which copyright will subsist is consequently limited : see Beck v Montana Constructions Pty Ltd [1964-1965] NSWR 229 at 232; Lend Lease Homes Pty Ltd v Warrigul Homes Pty Ltd [1970] 3 NSWR 265 at 269; Ancher, Mortlock, Murray & Woolley Pty Ltd at 283. However, these authorities do not indicate that different principles should be applied to cases involving allegations of breach of copyright in architectural plans than are applied to cases involving other kinds of artistic work. The difficulties referred to in the authorities concerning architectural plans are difficulties of proof (that is, evidentiary difficulties): see Eagle Homes at 574.
5. Whether the alleged infringing work is sufficiently similar to the work in which copyright subsists to amount to a reproduction of a substantial part of that work is for the court to determine. However, in determining that question the court will be assisted by expert evidence which 'is of value in exposing the facets of the ultimate question to which the expert opinion evidence is directed': see Ancher, Mortlock, Murray & Woolley Pty Ltd at 286 per Street J and Eagle Homes at 575."
53 These principles, were those discussed by Branson J in Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1997) 39 IPR 565 at 573-575, and were affirmed on appeal ((1999) 161 ALR 503) notwithstanding that her Honour's decision was overruled. In Eagle Homes, Branson J dismissed the application by Eagle Homes for infringement of its copyright in the floor plans of certain project homes (known as "Kookaburra") by the respondent's (Austec Homes) floor plans for its project homes (known as the "Paterson" and the "Robertson"). Her Honour held the allegedly infringing floor plans were not sufficiently similar to the Kookaburra floor plan drawings to constitute a reproduction of them or a substantial part of them. Consequently, her Honour concluded that advertisements of the Paterson and the Robertson, which included their floor plans, and the building of the Paterson and Robertson homes did not amount to a reproduction. Her Honour arrived at those conclusions notwithstanding that she had found that there had been some actual copying by Austec Homes of the Kookaburra floor plan drawings.
54 Counsel for Firmsec, CIPEC Australasia and Mossonidis submitted that even if, contrary to his submission, I found that there was some actual copying by the respondents of CIPEC's design and manufacturing drawings, the FMSd and FMS ranges of expansion joints were not sufficiently similar to CIPEC's design and manufacturing drawings to constitute a reproduction of those drawings or a substantial part of them. Thus, considerable emphasis was placed on the differences between the FMSd and FMS expansion joints sold by Firmsec and the design and manufacturing drawings of CIPEC depicting its equivalent expansion joints.
55 In that context it is useful to consider the manner in which Lindgren J (with whom Finkelstein and Weinberg JJ agreed) approached a similar submission in Eagle Homes which succeeded before Branson J but failed before the Full Court. At paras 70 and 72 Lindgren J said:
"The word 'reproduce' is not defined in the Act. It has its ordinary meaning of 'make a copy, representation, duplicate, or close imitation of' (Macquarie Dictionary) or 'repeat in a more or less exact copy; produce a copy or representation of' (New Shorter Oxford English Dictionary). But these definitions prompt such inquiries as how much of the copyright work must be reproduced before it can be said that that 'work' has been reproduced and how similar must what is produced be to the copyright work? The effect of s 14 (1) of the Act is that the reference in s 31 (1) (b) (i) to reproducing an artistic work in a material form includes a reference to reproducing a substantial part of such a work in a material form. In terms, this provision acknowledges a distinction between the undifferentiated whole of a copyright work and a substantial part of it. The Paterson does not reproduce exactly the whole of the Kookaburra. Copinger and Skone James on Copyright (13th ed, 1991) at par 8-20 states as follows:
'It is unusual for an infringement to consist of an exact copy or use of the whole of the plaintiff's work. In some cases, the defendant's work may to a greater or lesser degree resemble the whole of the plaintiff's work, in which case the question is whether the defendant's work is a colourable imitation. [Sillitoe v McGraw-Hill Book Co (UK) Ltd [1983] FSR 545.] Alternatively, the defendant's work may have been taken from part only of the plaintiff's work. Here, the defendant's work may be an exact reproduction of that part of the plaintiff's work or it may only to a greater or lesser degree resemble that part. In this alternative class of case, the first step is to identify the part of the plaintiff's work which is alleged to have been reproduced and then decide whether it constitutes a substantial part of the plaintiff's work. If it does, but it is not an exact copy of that part, it must then be decided whether it is a reproduction or colourable imitation of that part of the plaintiff's work. [Spectravest Inc v Aperknit Ltd [1988] FSR 161.]'
…
In my opinion, the present case is one of resemblance between the whole of the Paterson and the Kookaburra. While the Paterson does not reproduce the whole of the Kookaburra exactly, this is not a case in which the Paterson resembles only an identifiable part of the Kookaburra, for example, the front half of the house. It is therefore not necessary to undertake the step of deciding whether a particular part of the Kookaburra constitutes a 'substantial part' of that work. Rather, the question is simply whether the Paterson is a 'reproduction or colourable imitation' of the Kookaburra as a whole.
…"
56 Similarly in my view, the present case is not one in which the FMSd or the FMS drawings or the metallic elements in the FMS or the FMSd joints merely resemble an identifiable part of the WOSd 75 or the Wd 230 metallic elements or drawings. However, as I later explain, even if the present case was one of reproduction of part only of CIPEC's drawings it would not produce a different result as the part reproduced constitutes a "substantial" part of CIPEC's works. A different situation arises in respect of the FMSd seal where only the claw resembles the CIPEC WOSd elastomeric seal; thus, in respect of the seal only that part has been taken from CIPEC's work.
57 Having regard to the submission of counsel for the respondents that the design of an expansion joint is dictated by its function and will, of necessity, have a number of common features, it is also appropriate to consider the observations of Lindgren J at paras 91-92, 94 and 98-99 as to the significance of a finding of actual copying in the analogous situation of the plans for project homes:
"…I think that the issue of sufficient objective similarity simply poses in the case of project homes, as in other cases, the usual question whether the copyright drawing can still be seen embedded in the allegedly infringing drawing, that is, whether the allegedly infringing drawing has adopted the 'essential features and substance' of the copyright work: Hanfstaengl v Baines & Co [1895] AC 20 at 31 (Lord Shand) (I exclude the exact replication of a discrete unoriginal part of the copyright work discussed earlier).
…I do not accept, however, that where, as here, actual copying is found to have occurred, 'reproduction', and therefore infringement, cannot be proved in the absence of such a specially close similarity as might be required in a particular case to support an inference of subjective copying. To insist that a copyright owner can satisfy the 'sufficient objective similarity' limb of reproduction only by establishing such a close similarity, is a hurdle too high to be placed before a copyright owner who is found to have proved subjective copying. The way of the copier, including the copier of a plan of a project home, should not be made easy. A copier intends to benefit from another's skill and labour. It may transpire that what the copier produces is, at the end of the day and as a result of whatever intervening causes, so dissimilar from the copyright drawing that the copyright drawing cannot be seen in the allegedly infringing drawing. But in my view that is not this case.
…
[The] observation was made by Starke J in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396. His Honour, sitting at first instance, found actual copying and said (at 404):
'It is not for the Court to make the way of the taker of copyright matter easy. It is a sound principle of copyright law that the Court should not allow one man to take away the result 'of another man's labour, or, in other words, his property,' unless it is satisfied that the part taken is 'so slight, and the effect upon the total composition was so small,' 'as to render the taking perfectly immaterial,' or, what is much the same thing, that the part taken is an unsubstantial part (Hogg v Scott (1874) LR 18 Eq 444 at 458; Chatterton v Cave (1878) 3 App Cas 483 at 490, 495).'
…
The two elements of 'causal link' and 'sufficient objective similarity' are not referred to in the Act and are but aspects of 'reproduction'. The two are interrelated and it can be artificial to consider them separately, at least in a case like the present one where actual copying is found to have occurred. A finding of copying can add significance to objective similarity; cf Ancher, Mortlock Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd at 289 (set out below); S W Hart & Co Pty Ltd v Edwards Hot Water systems (1985) 159 CLR 466 at 474 (Wilson J)…
It is often suggested that once a copyright owner has established subjective copying, that makes easier the task of proving that what was taken was a 'substantial part' of the protected work. For example, in Ancher Mortlock, above, Street J said (at 289):
'I have already . . . inferred that the defendant did engage in unfair copying of the plaintiff's plans and houses. This adds significance to the similarities that do exist and diminishes significance from the dissimilarities.'
See also Bradbury v Hotten (1872) 8 LR Ex 1 and Chappell & Co Ltd v DC Thompson & Co Ltd [1928-35] MacG Cop Cas 467 (Ch D)."
58 His Honour's observations are apposite in the present case. The extent of the actual copying I have found to have occurred is of significance first in determining whether Firmsec's drawing and products adopt the essential "features and substance", or are a "colourable imitation", of CIPEC's works and also in considering the qualitative significance of the similarities compared to the dissimilarities when I turn to the alternative case of whether a "substantial part" of the copyright work has been reproduced.
59 As explained already, the function of an expansion joint, whilst dictating the features of the design of a particular joint, does not dictate features of the design which will necessarily be common to other joints having the same function. However, even if I had acceded to the respondents' submission in that regard, for the reasons given by Lindgren J, the force of the submission diminishes in a case where actual copying is established.
60 The claims of infringement against the respondents are primarily for authorising infringement. However, the claims against Mossonidis are that he directly authorised the infringement of copyright in his own capacity and in his capacity as director of Firmsec and CIPEC Australasia. In Henley Arch (at 463-465) I considered the liability of a director for personally authorising the company, of which the person is director, to commit the act of infringement and also that person's liability as a joint tortfeasor. In the former category, the director is liable for authorising another person to commit an act of copyright infringement if the director sanctioned, approved or countenanced the infringing conduct in a manner that has thereby authorised it. In the latter category, a director may be liable for copyright infringement if that person has expressly or impliedly directed or procured the infringing conduct of another person. No issue of fact arises in respect of these matters in the present case as it is plain that Mossonidis was the directing hand in respect of authorising and procuring the conduct relied upon as infringing conduct.
61 Finally, I turn to apply the above principles to the present case. Plainly, my findings establish the requisite "causal connection" between CIPEC's copyright design in the design and manufacturing drawings of the WOSd and Wd expansion joints and the respondents' drawings of its FMSd and FMS expansion joints and the joints produced on the basis of the drawings. Accordingly, the main issue arising is whether there is a sufficient degree of "objective similarity" between CIPEC's drawings and the joints depicted therein and the respondents' drawings and joints.
Copyright infringement in respect of the WOSd 75 expansion joint
(a) The CIPEC WOSd 75 drawing
62 The submissions of CIPEC may be summarised as follows:
· CIPEC Australasia has infringed CIPEC's copyright in the CIPEC WOSd 75 drawings by authorising the creation of the first and second Alcan drawings;
· Firmsec has infringed CIPEC's copyright in the same drawings by authorising the creation of the third Alcan drawing and the MCK drawing based on that Alcan drawing;
· Mossonidis has infringed CIPEC's copyright in the drawing by authorising the creation of each of the three Alcan drawings, and the MCK drawing;
· the four drawings are a reproduction of drawings of the cross-section profile of the WOSd extrusion;
· although the drawings do not include the bolt hole shown in the WOSd 75 drawing that does not mean that a reproduction has not occurred;
· alternatively, reproduction of a substantial part of the CIPEC's WOSd 75 drawings has occurred.
· the reproduction of the WOSd 75 drawings in the Alcan drawings occurred in fact by the Alcan draftsman copying the shape and dimensions of the three-dimensional sample of the WOSd extrusion which was made in accordance with the WOSd drawings; this constituted indirect copying of the WOSd drawings;
· indirect copying of a drawing by reverse engineering of an object made in accordance with the drawing is a well-recognised means of copyright infringement: LB (Plastics) Ltd v Swish Products Ltd [1976] RPC 551 (HL); Edwards Hot Water Systems.
· the three-dimensional FMSd 75 and 100 products are reproductions of CIPEC's WOSd 75 drawings;
· Firmsec sold FMSd joints made in accordance with the third Alcan drawing and the MCK drawing; in the three-dimensional form, the FMSd joints do have bolt holes.
63 The first Alcan drawing was derived entirely from CIPEC's WOSd 75 extrusion. In my view in reproducing the intricate mouth details, the shape, general configuration and the dimensions of the WOSd extrusion, Alcan reproduced the "essential features and substance" of that extrusion as depicted in CIPEC's WOSd 75 drawings. The only difference of any significance in the Alcan drawing is the absence of the provision for the bolt hole contained in the CIPEC drawings. However, that omission has not resulted in the Alcan drawing not reproducing the essential features of the WOSd extrusion depicted in the CIPEC drawings. Accordingly, I am satisfied that the first Alcan drawing is a reproduction of the CIPEC drawings. If, contrary to my finding, the absence of the bolt hole had the consequence, that only part of the drawings was reproduced, I would conclude there was a reproduction of a substantial part of the CIPEC drawings.
64 The three other drawings relied upon as infringing works are the two further Alcan drawings and the MCK drawing. Other than incorporating the curved rear end and the fourth "V" groove drawn in hand on the first Alcan drawing, the three drawings contain the same intricate mouth details, the shape, general configuration and the dimensions of the CIPEC drawings. As stated earlier, the changes were made primarily to create a design that would appear to be different to the WOSd extrusion. I am satisfied that the similarities between the three further drawings and the CIPEC drawings are such that, notwithstanding the design changes, those drawings still reproduce the essential features and substance of the WOSd extrusion depicted in the CIPEC drawings and thus are a "reproduction or colourable imitation" of those drawings. In any event, the qualitative and quantitative similarities are such that they greatly exceed the dissimilarities. Thus on the alternative approach, if part only of CIPEC's drawings was reproduced, I am satisfied that the part reproduced was a substantial part.
65 There is no dispute that the FMSd extrusions sold and supplied by Firmsec have been produced on the basis of the drawings to which I have referred. In my view there is plainly a substantial resemblance between those extrusions and the WOSd extrusion depicted in the CIPEC drawings. Further, the Firmsec extrusions contain the bolt hole which was omitted from its drawings thereby resulting in an additional similarity between the FMSd extrusion to the extrusion depicted in the CIPEC drawings. Thus, the three dimensional FMSd 75 and FMSd 100 products are in my view reproductions, alternatively substantial reproductions, of the extrusion depicted in CIPEC's drawings.
66 Accordingly, I accept that CIPEC's submissions as to copyright infringement have been made out in respect of the two dimensional drawings of the FMSd extrusion and in respect of the three dimensional FMS 75 and FMS 100 extrusions sold and supplied by Firmsec.
(b) The CIPEC WOSd 75 seal drawing
67 The submissions of CIPEC were that:
· Firmsec and Mossonidis infringed CIPEC's copyright in its drawing 55-258 of the seal for the WOSd 75 joint by drawing or authorising the drawing of the FMSd 75 seal and the FMSd 100 seal;
· the overwhelming probability is that the drawings were copied from a sample of the WOSd 75 seal;
· the claw sections of the drawings of the FMSd 75 and FMSd 100 seals are reproductions of a part of the CIPEC seal drawing, being the equivalent claw sections of CIPEC's elastomeric seal;
· the claw sections that have been reproduced in the FMS seal drawings constitute a substantial part of the CIPEC drawing;
· the fact that the middle sections are different is only of quantitative, but not qualitative, significance.
68 The shape, configuration and design of the drawing of the seal for the FMS expansion joint, save for the claw, are significantly different to the same aspects in the drawing of the elastomeric seal in the WOSd expansion joint. Viewing the resemblance between the drawings qualitatively or quantitatively, the dissimilarities greatly exceed the similarities. Overall, I am not satisfied that the claw section, despite its functional significance, is a substantial part of CIPEC's drawing. Thus, CIPEC has not made out its case of copyright infringement in respect of the seal section of the FMS expansion joints.
(c) The FMSd expansion joints
69 CIPEC's case for copyright infringement in respect of the FMSd expansion joints was dependent upon a finding that it had succeeded in respect of its case of copyright infringement in relation to the elastomeric seal. As it has failed on that aspect of its case it must follow that it fails in its case for copyright infringement in relation to the expansion joint.
The Wd 230 expansion joint
70 The submissions of CIPEC may be summarised as follows:
· Firmsec has infringed CIPEC's copyright in the Wd 230 drawing by authorising the creation of the FMS 260/320 and of the FMS 180 drawings and the manufacture and sale of the cast elements of the FMS 260, 320, 230, 180 and 120 expansion joints;
· Mossonidis has infringed CIPEC's copyright in CIPEC's Wd 230 drawing by authorising Firmsec's conduct and also the manufacture and sale of the FMS products by Firmsec Expansion Joints Pty Ltd;
· the FMS 260/320 drawing, or a substantially identical drawing, was used as the basis for the production of the FMS 260 and FMS 320 products;
· the FMS 230, 180 and 120 products are scaled down versions of the FMS 260 and FMS 320 products and are reproductions of CIPEC's Wd 230 drawing;
· the scaling down of the FMS 230, 180 and 120 products from the copied FMS 260/320 drawing and products does not mean that the Wd 230 has not been reproduced; dimensional differences are not significant as the same features appear in these products and are derived from the copied CIPEC Wd 230 drawing;
· precisely how Mossonidis used the FMS 260/320 drawing in the production of the completed FMS products is unclear as the products are not identical to the drawing; however, critically, Mossonidis' in his affidavit sworn on 29 March 1999 stated that:
"The [FMS 260/320] drawing…does not represent precisely the manufactured product. In particular the radius of the end of the teeth in the product is 7.5 rather than 5. There were also marginal and minimal differences."
71 The direct copying of CIPEC's Wd 230 drawing on the instructions of Mossonidis is a critical element of the copyright infringement case of CIPEC in respect of the FMS range of expansion joints. I accept CIPEC's submission that the two drawings "are for all practical purposes identical concerning the cross section and plan view of the cast elements, save that the length of the piece in the FMS drawing measures 260mm (but is indicated to be 320mm)". The copying was for the sole purpose of reproducing an expansion joint which, to all intents and purposes, was to be the same as the Wd joints. Those joints were considerably more complex in their design, configuration and shape than the simpler WOSd range of expansion joints. To the extent that there are dissimilarities in the teeth length, dimensions or the angle or configuration of the teeth depicted in the FMS 260/230, I do not regard those differences as having the result that there has not been an adoption of the essential features and substance of CIPEC's Wd 230 drawing. Thus, there has been a "reproduction or a colourable imitation" of the whole of the CIPEC Wd 230 drawing.
72 I am satisfied that the FMS 260/320 drawing was used as the basis for the FMS 180 drawings and for preparing the patterns and casts that were used for the production of the FMS range of expansion joints. In the result, Firmsec's products were either scaled up to produce the FMS 320 product or scaled down to produce the FMS 230, 180 and 120 products.
73 The scaling up and scaling down necessarily resulted in certain dimensional and design dissimilarities and in some cases, it would appear, a different number of teeth in the completed products, which were different in length and related to each at different angles. There are also a number of other minor differences in the manufactured FMS products as a result of the pattern and casting process which resulted in the products having other dissimilarities from the FMS 260/320 drawing. Thus, in the result the FMS joints are slimmer then the Wd joints, there are differences in the numbers of teeth and the shape and angle of the teeth in the FMS joints as well as in the non-slip grooving used. The submissions of counsel for the respondents set out in detail a number of the dissimilarities that can be gleaned from a comparison between the FMS expansion joints and the Wd expansion joint depicted in CIPEC's Wd 230 drawing.
74 Notwithstanding these differences, to which I have referred in considering "resemblance", I attach weight to two particular matters. The first matter is that Mossonidis, who controlled every aspect of the evolution of the FMS products starting with the FMS 260/320 drawing, regarded the differences as being only "marginal and minimal". The second matter is the finding that I have made that it was Mossonidis' purpose to copy the Wd product by scaling up and scaling down from the FMS 260/320 drawing he made from CIPEC's Wd 230 drawing. In that context, regardless of the many dissimilarities between the FMS produce range and the Wd expansion joint depicted in CIPEC's Wd 230 drawing, I am satisfied that in scaling the FMS products, up and down, Mossonidis adopted the essential features and substance of the Wd joint depicted in the CIPEC's drawing. Accordingly, in my view the scaled up and scaled down versions are a "reproduction or colourable imitation" of the Wd joint depicted in CIPEC's drawing.
75 In so far as the case is of reproduction of a part of the Wd 230 drawing I conclude that, whilst there may be quantitative dissimilarities the greater the scaling up and scaling down, the qualitative similarities in those versions significantly exceed the dissimilarities. I arrive at the same conclusion in respect of the FMS 180 drawings which reproduce a substantial part of the equivalent items in CIPEC's drawing. Thus, the alternative case of reproduction of a substantial part of the Wd 230 drawing is also made out.
76 Accordingly, I accept that CIPEC's submissions of copyright infringement in the creation of the FMS 260/320 and FMS 180 drawings and the FMS range of expansion joints have been made out. The approach I have taken to the comparison to be made between the expansion joints depicted in the CIPEC design and manufacturing drawings and the FMSd and FMS drawings authorised by Mossonidis and the expansion joints sold and supplied by Firmsec on the basis of those drawings, accords with the principles enunciated by Lindgren J in Eagle Homes.
77 I turn now to consider the respondents' defence under s 77 of the Act.
Section 77 of the Copyright Act
78 Section 77 provides a defence to infringement of copyright in relation to the application of artistic works as industrial designs where the designs have not been registered under the Designs Act 1906 (Cth) ("the Designs Act"). Although s 77 was amended in 1989, the amendments do not appear to affect the respondents' reliance upon the section. In any event, as s 77 provides a defence to a claim of infringement of copyright and infringement is alleged against the respondents since 1989 it is appropriate to consider the operation of s 77 as at the time of the alleged infringement.
79 The defence under s 77 applies where four circumstances are satisfied:
"(1) This section applies where:
(a) copyright subsists in an artistic work (other than a building or a model of a building, or a work of artistic craftsmanship) whether made before the commencement of this section or otherwise;
(b) a corresponding design is applied industrially, whether in Australia or elsewhere, by or with the licence of the owner of the copyright in the work in the place where the industrial application happens;
(c) at any time on or after the commencement of this section, articles to which the corresponding design has been so applied (in this section called 'articles made to the corresponding design' are sold, let for hire or offered or exposed for sale or hire, whether in Australia or elsewhere; and
(d) at that time, the corresponding design is not registrable under the Designs Act 1906 or has not been registered under that Act."
80 Section 77(2) provides that:
"It is not an infringement of the copyright in the artistic work to reproduce the work, on or after the day on which articles made to the corresponding design are first so sold, let for hire, or offered or exposed for sale or hire, by applying that, or any other, corresponding design to an article."
81 Section 74 of the Copyright Act provides:
"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…"
82 It was common ground that for the s 77 defence to apply CIPEC's drawings, the subject of its copyright infringement claims, must be capable of being a "design" as defined in the Designs Act: see Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at 396-397; Shacklady v Atkins (1994) 30 IPR 387 at 394. It was also common ground that the s 77 defence only applies to three-dimensional reproductions of CIPEC's two-dimensional copyright works. Thus, s 77 has no application to plan to plan copyright infringement: see Shacklady at 393.
83 A design is defined in s 4(1) of the Designs Act as:
"features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction."
84 CIPEC submitted that s 77 was inapplicable as CIPEC's drawings were not 'designs' and hence could not constitute a 'corresponding design' for the purposes of s 77. It contended that the drawings contain features that, in the finished article, are not 'judged by the eye' and, in any event, the drawings represent "a method or principle of construction".
85 CIPEC accepted that a design which served a functional purpose was capable of registration as a design under s 18 of the Designs Act. However, it submitted that mere functionality was insufficient to render an article a 'design' and that some aspect of visual appeal to the eye was required: see Dart Industries v Decor Corp Pty Ltd (1989) 15 IPR 403 at 408 per Lockhart J; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 375-376 per Gummow J and AMP Inc v Utiliux Pty Ltd [1972] RPC 103 at 110 per Lord Reid at 121-122 per Lord Pearson. It was then said that CIPEC's detailed design and manufacturing drawings possessed no visual appeal to the eye and represented purely functional devices: see Dart Industries at 412 per Lockhart J.
86 The respondents contended that the 'shape or configuration' of each expansion joint depicted in CIPEC's drawings constituted a "design". They submitted that in order for a design to be capable of being judged by the eye, the specific shape or configuration must simply be apparent in the finished article. Further, they disputed that the drawings were dictated solely by function since, so they said, the designer of the joint had chosen one of many possible configurations for the expansion joint. They also disputed that the drawings merely constituted a method or principle of construction.
87 In determining whether there is some feature of the shape depicted in an artistic work which can be judged by the eye, courts have tended to focus on whether there is sufficient individuality of appearance about the design which is capable of capturing the eye's attention. For example, Lockhart J in Dart Industries (at 408) stated that:
"The design is the mental conception conveyed to the mind by the eye; it is the mental picture of the shape, configuration, pattern or ornament of the article to which the design has been applied…For a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye."
88 This approach was affirmed by Gummow J in Interlego AG at 376-377. A shape must have "sufficient individuality of appearance to distinguish it from the fundamental form of an article…": see Interlego AG v Croner Trading (1991) 21 IPR 373 at 396 per Sheppard J and on appeal to the Full Court at 372-373.
89 Whilst functionality can be an integral element to the attractiveness of a product, generally features of an article dictated solely by function are less likely to constitute a "design" see: Interlego at 376 per Gummow J (with whom Black CJ and Lockhart J agreed); Hosokawa at 408; Shacklady at 395-396. For shapes that perform a function to constitute a design there must be a 'blend of industrial efficiency with visual appeal' see: AMP Inc at 110 per Lord Reid and Interlego AG at 397 per Sheppard J. Thus, where a shape does not appeal to the eye and only makes the article perform functional requirements, it would not be considered a "design" see: Edwards Hot Water Systems v Hart [1983] 1 IPR 228 at 258.
90 In order to determine whether a design's features are solely dictated by function, expert evidence can be relevant. For example, in Amalgamated Mining Services at 472, Wilcox J heard evidence from an expert engineer that the drawings of the pump parts in question were designed to maximise the efficiency of the pump and that aesthetic considerations had no role to play in the configuration of each part.
91 Edwards Hot Water Systems is analogous to the present case. In that case, the plaintiff owned copyright in certain drawings of a flat plate solar absorber and storage tanks of solar water heaters used to manufacture solar heaters. The plaintiff alleged that the defendant had infringed its copyright by reproducing the drawings in its solar water system and by manufacturing and selling the system based on the drawings. The defendant's reliance on the s 77 defence required the court to consider whether the engineering drawings constituted 'designs' for the purposes of the Designs Act. At first instance (1982) AIPC 90-017, Brinsden J (at 38,288 - 38,289) held that the drawings could not be considered 'designs' for the purposes of s 77 as they failed to have any 'eye appeal'. His Honour adopted the approach of Lord Pearson in AMP Inc and held that a design must have sufficient individuality of appearance to be distinguished by the eye. In the AMP Inc case, the article in question was a component of a washing machine. Lord Pearson observed, relevantly, at 122-123:
"If it had any eye appeal, that would be wasted, but I do not think it has any. An experienced electrical engineer, if he examined it carefully before it was incorporated in a machine, might be able to envisage it in operation and form some provisional opinion as to its probable efficiency when tested in operation. But he would be judging it by the mind for efficiency, not by the eye for appearance."
92 This approach was upheld on appeal to the Full Court of the Federal Court ((1983) 1 IPR 228), where Franki J (with whom Woodward J agreed) held at 256-258 that the drawings depicted a 'fairly complicated piece of equipment' that could not be said to constitute an article which appeals to the eye.
93 In my view a similar approach is appropriate in the present case. CIPEC's WOSd drawings and the extrusion depicted in them have no design feature that could be said to appeal to the eye. Whilst the extrusion is functionally efficient, its design is dictated solely by function and any "appeal" it might have is solely on the basis of its efficiency. CIPEC's Wd drawing and the metal section depicted in it is a more complicated item, but I have arrived at the same conclusion in respect of it. It does not appeal to the eye and such "appeal" as it might have is based solely on its functional efficiency and not on its appearance.
94 CIPEC contended that, in any event, CIPEC's drawings contained information relating to dimensions and data necessary for the actual manufacture of the joints. Thus, so it was said, the information contained in them constituted a method or principle of construction of the joints. The respondents disputed that contention and submitted that the drawings, which depicted the appearance of the joints from particular angles, remain drawings of the design even if they contain information relevant to their manufacture. They also argued that in order for the drawings to constitute a method or principle of construction they would have to depict the parts of the joint 'exploded' so as to demonstrate how each part fitted together.
95 Prior to the 1982 amendment to the definition of a "design" which expressly excluded 'a method of principle of construction' from the definition, a drawing that did no more than show a method or principle of construction did not attract protection under the Designs Act. The relevant principles were stated by the High Court in Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 at 488:
"The notion that a feature which does no more than identify a general characteristic of shape is a method or principle of construction and is therefore outside the protection of the Act appears in what this Court said in Malleys Ltd. v J.W. Tomlin Pty. Ltd. ante, p. 124:
"It is not the function of design to indicate a process of manufacture; indeed, anything amounting to a method of construction that would permit differences of shape spells invalidity."
The only design features that are susceptible of protection are those features which convey the idea of 'one particular individual and specific appearance', to repeat the phrase from Russell-Clarke. No design should be so construed as to give to its proprietor a monopoly in a method or principle of construction."
96 As a matter of statutory construction, I would interpret the definition in its post 1982 form as enabling the registration of a 'design' as defined but not in so far as the design embodies or contains information which relates to a method or principle of construction of the design. Thus, where a drawing embodies the design of an article and contains technological data necessary for the article's construction, that does not have consequence of preventing the drawing, rather than the data, from being registered as a design. The application of that interpretation to the CIPEC drawings in issue in the present matter would not result in the expansion joints depicted in the drawings not being designs merely on the ground that they also contain data enabling the manufacture of the joints depicted in them. Thus, on that view, the respondent's defence under s 77 could only succeed if the CIPEC joints were otherwise "designs" as defined.
97 However, a broader approach was taken by Wilcox J in Amalgamated Mining at 472 in which his Honour considered whether engineering drawings depicting parts of slurry pumps used for mining operations were capable of registration as designs under the Designs Act. Wilcox J concluded that the drawings were not capable of registration as designs, inter alia, on the ground that they did more than graphically describe the articles to be produced; the drawings contained technological data that was necessary or desirable for the manufacture of the articles and therefore were a method or principle of construction.
98 I have some difficulty in adopting the broad approach of Wilcox J. However, as I have found that the CIPEC manufacturing and design drawings are not registrable as designs under the Designs Act on the ground that they have no feature that could be said to "appeal to the eye" it is unnecessary for me to reach a final conclusion on whether the CIPEC drawings are not designs on the ground that they depict "a method or principle of construction".
Conclusion
99 For the reasons set out above, I am satisfied that CIPEC has made out its claims of copyright infringement in relation to the drawings of the FMSd metal extrusion and of the FMS expansion joints and the FMSd and FMS expansion joints made on the basis of those drawings. I am also satisfied that the respondents' defence under s 77 of the Copyright Act has not been made out. In those circumstances CIPEC is entitled to the relief it sought in respect of those infringements. It was common ground between counsel for the parties that if CIPEC succeeded in its claims for infringement of copyright the relief it sought in the draft orders it presented to the Court was appropriate.
100 I am of the view that costs ought to follow the event. Whilst CIPEC did not succeed in all of its claims, it has substantially succeeded in obtaining the relief it sought. The claims in which CIPEC has not succeeded, namely, the claim for breach of contract, contravention of s 52 and copyright infringement in respect of the FMSd seal were incidental to its main claims for copyright infringement in relation to the FMS and FMSd metallic sections. Further, the failure of CIPEC's claim in respect of the seal is not significant as it has succeeded in its claim in respect of the metal extrusion to which the seal is to be attached. Thus, looking at