Foggin v Lacey

(f) the design does not embrace every conceivable form of head scratcher/massager design:PB Cow & Co Ltd v Cannon Rubber Manufacturers Ltd [1959] RPC 240. 28 There is nothing in the Design to make flexibility of the prongs an element. Even if there were, the validity of the Design is determined by consideration of the Design itself. The Design depicts a particular shape and configuration, of which the overall shape of the prongs, from the handle to the tips, is an essential element. That overall shape arising from the curvature of the prongs from the handle to the tips is specific; the exact angle of the bends and the resulting length of each prong are, from the Design itself, not essential elements. In any event, as judged by the eye, such precise mathematical analysis forms no part of the mental picture conveyed to the brain (Dart (at 412)). That does not in any way detract from the specificity of the shape, configuration and appearance, being an overall curved or ovoid shape. 29 We agree with the primary judge that the Design is valid.

supplementary written submissions FROM THE APPELLANT 30 At trial, the appellant had advanced the argument that it was the Foggin article in the straightened state that is relevant for the test of infringement. This argument was abandoned on appeal. In supplementary written submissions filed after the hearing of the appeal purportedly in accordance with specific leave, the appellant sought to reintroduce this argument. 31 The notice of appeal included no ground of appeal directed to any argument that the Foggin article in the straightened state is relevant for the test of infringement. In fact, all grounds of appeal relating to infringement were based upon the assumption that the time to test infringement is once the Foggin article is manipulated in accordance with the directions. Leave was not sought to amend the notice of appeal. In written submissions in advance of the hearing and in oral arguments, the appellant asserted that the relevant time to test infringement is after the Foggin article has been manipulated in accordance with the directions. 32 At the hearing of the appeal, the Court raised with counsel the question whether the appropriate article for testing infringement was the article actually sold by Foggin to the consumer, that is, in a straightened state before applying the directions and whether the person who applied the Design for the purposes of s 30 of the Act was Foggin or the ultimate purchaser. This, in turn, raised the questions of authorisation to infringe and contributory infringement and the specific provisions in the Act. 33 At the conclusion of the hearing, the parties were granted leave to make supplementary written submissions but only in relation to specific issues. The relevant time to test infringement was not one of these issues though it is possible counsel for the appellant understood that what was said allowed that issue to be addressed. 34 As has been noted, the appellant did not seek leave to amend the notice of appeal to raise this issue. 35 While the appellant's supplementary submissions purported to deal with this additional issue and the respondent, under protest, addressed it also, there was no examination of it in any real detail. As has already been said, it was not dealt with substantively during oral argument. 36 It was made clear by Mason J in Carr v Finance Corporation of Australia Ltd (1981) 147 CLR 246 at 257-258, that the hearing is the time and place for the presentation of arguments: 'I should express my dissatisfaction with the way in which the appellants' case has thus far been presented. … After argument had concluded in this Court lengthy written submissions dealing with issues not hitherto raised and a further affidavit were filed. … The material was submitted without leave having been given by the Court. The impression, unfortunately abroad, that parties may file supplementary written material after the conclusion of oral argument, without leave having been given beforehand, is quite misconceived. We have to say once again, firmly and clearly, that the hearing is the time and place to present argument, whether it be wholly oral or oral argument supplemented by written submissions.' 37 Where parties are authorised to provide the Court supplementary written submissions, it is appropriate for the Court's directions to be strictly complied with; Jackson, in the matter of Conway v Conway [2000] FCA 1530 at [29]. 38 The notice of appeal included no ground of appeal directed to any argument that the Foggin article in the straightened state is relevant for the test of infringement. The appellant did not seek leave to amend the grounds of appeal to include such an argument. In both the oral and written submissions, the appellant conceded the point. It was not intended that the appellant could provide supplementary written submissions on this aspect. Consequently, we have had no regard to the appellant's supplementary written submissions as to the time to test infringement. CONCLUSION 39 The Design is valid. The Foggin article, as sold with the directions that were in evidence, infringes the Design. ORDERS 40 The subject of the appeal was the Foggin article with specific directions. It may be possible that the Foggin device, in its straightened state, can be manipulated in accordance with different directions in a way that does not infringe the Design. The orders made by the primary judge are not limited to any particular directions. Counsel for Lacey accepted the original orders were expressed too broadly. Accordingly, the court varies the orders made by the primary judge as follows: 2 (c) manufacturing, selling, offering for sale, or keeping for sale during the term of the Design any head massagers marketed under the name "Shiver me Timbers!" together with directions in the form of those reproduced at [4] of these reasons, or any directions which direct the purchaser or user of such massagers to manipulate or bend the prongs of the massager into a shape substantially similar to the shape of the head massager depicted in the Design. The appeal is otherwise dismissed with costs. I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Moore and Bennett.

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

EMMETT J: 41 This appeal concerns a design for a device known as an 'Orgasmatron', which is a head massager. The respondent, Dwayne Derrick Lacey ('Lacey'), is registered under the Designs Act 1906 (Cth) ('the Act') as the owner of Australian Registered Design Number 134633 ('the Design'). Lacey sells the Orgasmatron in a form that involves the application of the Design. Lacey claims that the appellant, Chris Foggin ('Foggin'), has infringed Lacey's rights in respect of the Design by the manner in which Foggin sells a head massage device called the 'Shiver Me Timbers!' head massager ('the Foggin Article'). A judge of the Court upheld those claims and made orders declaring that Foggin had infringed the Design and restraining further infringement: see Lacey v Foggin (2002) 56 IPR 436. Lacey now appeals from those orders.

THE DESIGN 42 The registration of the Design is currently in force until 12 January 2004. The article in respect of which the Design is registered is described in the certificate of registration as: 'Non electrical head massage device.' The certificate of registration in respect of the Design contains a statement of monopoly in the following terms: 'Monopoly is claimed in the features of shape and configuration of a non electric head massage device as shown in the accompanying representations.' Annexed to the certificate of registration is a representation in the form set out in the joint judgment of Moore and Bennett JJ (at [2] above) ('the Representation'). 43 The features of the Design include a cylindrical handle to which is attached an inverted wine glass shaped, or cage like, set of eight prongs. The primary judge described the significant visual features of the Design as:

• a cage, or inverted wine glass, effect;
• stalk-like handle shape to which the prongs were attached;
• centripetal tendency of the ends of the prongs.

THE FOGGIN ARTICLE 44 The Foggin Article consists of a bamboo handle about 10 cm long, to which are attached eight metal prongs of approximately 24 cm. Each prong has a diameter of approximately 2 mm. When the Foggin Article is supplied by Foggin to buyers the eight prongs are bound by a rubber band and extend in a straight line from the handle. 45 In the form in which it is sold, the Foggin Article is not capable of being used as it is intended to be used. Therefore, the packaging in which the Foggin Article is sold includes directions ('the Foggin Instruction') describing how the prongs are to be manipulated in order to render the Foggin Article useable as a head massager. The Foggin Instruction is set out in the joint judgment of Moore and Bennett JJ (at [4] above).

LACEY'S CLAIMS 46 On 27 June 2001, Lacey, commenced a proceeding in the Court claiming relief under the Act. Under the pleadings as amended, Foggin has admitted that he has sold, manufactured, and authorised the manufacture throughout Australia of, the Foggin Article. Foggin also admitted that he has profited from the manufacture, sale and supply of such articles and concedes that Lacey had priority in relation to the Design. 47 The questions for determination in the proceeding before the primary judge were therefore limited to:

• whether the Design was validly registered; · whether Foggin has infringed Lacey's monopoly in the Design.

Foggin challenged the validity of the Design on the ground that, if it has the effect claimed by Lacey, the Design amounted to 'a method or principle of construction' and was therefore excluded from protection under the Act. Foggin also contended that, assuming the registration of the Design is valid, he has not infringed Lacey's monopoly in the Design by selling the Foggin Article.

GENERAL PRINCIPLES 48 Under s 20 of the Act, the owner of a design is entitled to make an application for the registration of that design. Section 23(1) then provides that the Registrar of Designs ('the Registrar') must consider the application and, if satisfied as to certain matters, may register the design. The effect of s 25 and s 4(1) is that, when a design is registered, the owner of the registered design has the exclusive right to apply the design to an article in respect of which the design is so registered. 49 Under s 4(1) of the Act 'design' means: '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.' Shape and configuration signify something in three dimensions, being the form in which an article is itself fashioned. The relevant design features are applied to an article by making the article to the shape, configuration, pattern or ornamentation of the design: AMP Inc v Utilux Pty Ltd [1972] RPC 103 at 108. A design is not an article made according to a particular shape and pattern. Much less is it a method of making such an article or a method of achieving an end by the use of such an article. Rather, a design is a conception or suggestion as to shape, configuration, pattern or ornament. What the owner of a registered design gets by its registration is a monopoly for one thing only, namely, one particular individual and specific appearance: Re Wolanski's Registered Design (1953) 88 CLR 278 at 279, Pugh v Riley Cycle Co Ltd [1912] 1 Ch 613 at 619. 50 When a design satisfies the statutory definition contained in s 4(1), the monopoly conferred by registration does not extend to features of the design that do not determine the article's unique shape or configuration. That would be so even though the design may be applied to make a new and useful article. The Act is concerned with shape and configuration, not function. Specificity of shape and configuration must be conveyed by a registrable design. Features of a design that do no more than convey the idea of a general shape appropriate to the function that the article is intended to perform and that are consistent with a variety of particular shapes and articles copying those features are not amenable to protection by the Act. It is one particular individual and specific appearance that receives the monopoly. If it is possible to get several different appearances, which embody the general features that the proprietor claims, then those features are too general and amount to a method or principle of construction: Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 at 487. 51 The only design features that are susceptible of protection are those features that convey the idea of one particular individual and specific appearance. No registered design should be so construed as to give to its owner a monopoly in a method or principle of construction. Features that, although intended to make an article to which they are applied more useful than similar articles then in use but that are insufficiently precise to convey an idea of the unique shape or configuration, are not features susceptible of protection: Firmagroup (at 488).

APPLICATION OF THOSE PRINCIPLES TO THE PRESENT CASE 52 Lacey contends that, whether the result of shaping the prongs pursuant to the Foggin Instruction is to produce rounded prongs or angular prongs, the Design would be infringed if the result is an article that has a shape that can be characterised as a'cage'or 'inverted wine glass', namely, a shape that involves manipulation of the prongs such that, after they are bent to point away from the junction with the handle, they are bent again so that the tips point back towards the line of the extension of the handle, that is, towards the head when the prongs are placed over the head. 53 If that were the Design, the monopoly would not be limited to the particular appearance shown in the certificate of registration of the Design. Lacey, by such contentions is, in effect, seeking to protect features that make the Orgasmatron useful. However, the features that Lacey so seeks to protect are insufficiently precise to convey an idea of unique shape or configuration. The monopoly granted by the Act is not such as to protect features comprising eight malleable prongs attached to a cylindrical handle that can be manipulated in an infinite number of ways, so long as each is manipulated outwards and subsequently inwards, or away and then back towards the line of the cylindrical handle. 54 The grant of registration of the Design gives a monopoly only in the particular shape configuration pattern or ornamentation depicted in the representation attached to the Certificate of registration. On that basis, the Design is validly registered.

GENERAL PRINCIPLES 55 Under s 30 of the Act, a person is deemed to infringe the monopoly in a registered design if, relevantly for present purposes, that person, without the licence or authority of the owner of the design: '(a) applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered; (b) imports into Australia … any article … to which the design or any fraudulent or obvious imitation of it has been applied outside Australia …; (c) sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any article: (i) to which the design or any fraudulent or obvious imitation of it has been applied in infringement of the monopoly in the design; or (ii) … .' (Emphasis added). 56 Infringement might occur at the time of manufacture of an article, when the registered design is applied to the article. Alternatively, infringement might occur when an article, to which the design has already been applied, is imported into Australia. Again, infringement might occur when an article, to which the design has already been applied, is sold or offered for sale. 57 The same person would be responsible for each infringement where the manufacturer of an article then sold it or offered it for sale. However, different persons might be involved in infringements where, for example, a manufacturer applies the design to an article and then sells the article by wholesale to a retailer, who then sells it or offers it for sale by retail. Different persons might also be involved where an importer imports an article to which the design has been applied and sells it to a retailer, who then sells it. At whatever point the infringement occurs, it will only occur when the registered design is applied to the article in question or after it has been applied to the article. 58 That is to say, a necessary prerequisite for infringement is the application of a registered design (or a fraudulent or obvious imitation of it) to an article. That is consistent with the nature of the right conferred by registration. The registered owner has the exclusive right to apply the registered design. 59 The Act clearly distinguishes between the design and an article to which the design is applied. A design is not an article made to a particular shape or pattern. It is a particular individual and specific appearance of shape, configuration, pattern or ornamentation applied to an article. It is the design that is registered, not an article: Re Wolanski's Registered Design. 60 Essentially, the test of infringement is one of overall impression resulting from a visual comparison: Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 at 440. Thus, first impressions are important in determining whether there is an infringement. An obvious imitation is one that is not the same as the registered design but is a copy apparent to the eye, notwithstanding slight differences. That question is to be determined by examining the essential features of the design. 61 The effect of s 30 of the Act is that there will be an infringement in any one of three cases, namely, where the design that has been applied to the allegedly infringing article is: (i) the registered design; (ii) an obvious imitation of the registered design (ie, not the same but a copy apparent to the eye notwithstanding slight differences); and (iii) a fraudulent imitation (ie, a copy with differences that are both apparent and not so slight as to be insubstantial, but which have been made merely to disguise the copying).

Visual comparison will establish (i) or (ii). However, a finding of fraudulent imitation will require something more, because in such a case visual comparison is not of itself sufficient to establish imitation. Otherwise, it would be an obvious imitation: Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 at 127. 62 Precise mathematical comparisons or matters of measurements or ratios, all of which form no part of the mental picture, which the eye conveys to the brain, of shape or configuration suggested by the design, are not to be implied as the test of infringement. Questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement, lest the registration be sapped of its worth to the registered owner. 63 Thus, where a design that has been applied to an allegedly infringing article has differences that are not discernable, there will, it seems, be an infringement by reason of the application of the registered design within category (i) described above. That appears to follow from the proposition that there will be an application of an obvious imitation where it is apparent to the eye that the design has been copied, not withstanding that there are slight differences, which are apparent to the eye. It also seems to follow from the proposition that a fraudulent imitation involves application of a design with differences from the registered design that are both apparent and not so slight as to be insubstantial. That is to say, an obvious imitation involves differences that are apparent but are so slight as to be insubstantial. 64 The words 'shape' and 'configuration' have similar meanings. However, those meanings are not identical. Thus, (see Shorter Oxford English Dictionary, 5th ed, Oxford University Press, Oxford, 2002): 'shape: … [e]xternal form or contour; the total effect produced by the outline of an object, geometrical figure, etc; a configuration; a particular instance of this…'; configuration: … [t]he (result of) arrangement of the parts or elements of something; internal structure, conformation, outline ….' 65 Nevertheless, Lacey does not rely on the term 'configuration' if the Court does not accept that the Foggin Article does not involve application of the shape comprised in the Design or an obvious imitation of the shape comprised in the Design. Nor does he rely on the term 'pattern' or 'ornamentation'.

THE PRESENT CASE 66 Lacey does not, and could not, suggest that the Design, or a fraudulent or obvious imitation of it, is applied to a Foggin Article at the point of manufacture. As indicated above, the Foggin Article, upon manufacture, is in a form that consists of a handle to which are attached eight prongs extending in a straight line from the handle. It could not be said that the Design has been applied to the Foggin Article in that form. At the time of sale of the Foggin Article, it could not be said, if nothing further was done to it, that there was an infringement of the Design. So much is accepted by Lacey. 67 However, Lacey says that the Foggin Instruction, furnished at the point of sale, should be taken into account for the purpose of determining whether there has been infringement of the Design. Lacey says that, if a seller gives instructions, a reasonable interpretation of which would involve application of a registered design, there will be infringement by the seller. In essence, he says that the Design is infringed by Foggin at the time of sale of the Foggin Article with the Foggin Instruction. 68 It is clear that any example of the Foggin Article is capable of manipulation into a shape that would involve the application of the Design or an obvious imitation of it. On the other hand, the Foggin Article is also capable of manipulation into a shape that involves application of neither the Design nor an obvious imitation of the Design. Assuming that instructions for use given at point of sale are an infringement, a difficulty with Lacey's contentions is to determine which shape of the Foggin Article is to be compared with the Design, in order to ascertain whether there is an article to which the Design, or an obvious imitation of it, has been applied by Foggin. Lacey contends that the shape to be compared is a shape produced by complying with the Foggin Instruction. 69 A further difficulty with that approach, however, is the possible ambiguity of the Foggin Instruction. Lacey contends that a fair reading of step (5) of the Foggin Instruction involves requiring the buyer to manipulate the prongs into the shape of the Design or an obvious imitation of that shape. That would call for a shape that effectively removes the angles resulting from bending the prongs at the two marks pursuant to steps (2) and (3) of the Foggin Instruction. 70 It is difficult to see why step (5) should be so construed, although that is the way in which the primary judge construed it. The purpose of step (5) is to ensure that the prongs will fit over the head, but will still come into contact with the head so as to apply pressure at eight different points. Thus, step (1) requires a bend of each prong to create a star effect. The requirement that the star be 'even' requires that the angles between the prongs be the same. If the bends made pursuant to steps (2) and (3) are made at the same angle as each other, the eight tips would be in the same plane and would form an equilateral octagon. The diagonals of such an octagon may be too small for the article to fit over a particular head, depending upon the angle at which the bends were made pursuant to step (4). Alternatively, the diagonals may be too long for there to be contact between the tips and the head. In either case, it would be necessary to adjust the angles to ensure contact with the head of the user. Nevertheless, a significant length of the prongs would remain straight. 71 The plan of a human head is, on the whole, ovoid rather than circular. The invitation to 'shape [the Foggin Article] to head' is therefore directed to changing the angles of the three bends made in each prong, such that the intended user's head will fit into the prongs and the tips of the prongs will come into contact with the head with sufficient tension to be able to massage when the article is moved by the handle. The diagram showing the shape after step (4) confirms that that is what was intended by the directions. There is no reason to construe the directions as requiring the bends to be removed, so as to create curved prongs rather than angled prongs. 72 It may be that manipulation in accordance with the Foggin Instruction makes use of the idea or concept that underlies the Orgasmatron. However, that does not involve infringement of the Design. I do not consider that manipulation of the prongs in accordance with the Foggin Instruction produces the shape that is depicted in the Representation. Nor do I consider that manipulation in accordance with the Foggin Instruction produces an obvious imitation of the shape depicted in the Representation. 73 The appearance of the Foggin article after manipulation in accordance with the Foggin Instruction is significantly more angular than the shape depicted in the Representation. As I have said, it would be possible to manipulate the Foggin article such that the Design, or an obvious imitation of the Design, would be applied to it. However, the Foggin Instruction does not require the application of the Design to the Foggin article. Thus, even if manipulation of the Foggin article in accordance with the Foggin Instruction, by a person other than Foggin, constituted the application by Foggin of a design, the design that would be so applied would not be the Design or an obvious imitation of the Design. 74 A buyer of the Foggin Article might manipulate it into a shape that is identical to the shape depicted in the Representation, or is an obvious imitation of the Design. Such a person may infringe s 30(1)(a). That, however, is not Lacey's complaint. Lacey contends that, because the Foggin Instruction, if followed, would involve an application of the Design, or an obvious imitation of the Design, to a Foggin Article sold by Foggin, infringement occurs by Foggin at the time of sale. 75 However, even if carrying out the Foggin Instruction according to a fair reading of the Foggin Instruction would involve an application of the Design, it is difficult to see how, at the point of sale, there is any infringement, at that time, the Design has not been applied to any article. Nor has any obvious imitation of the Design been applied to any article. 76 The language of s 30(1) is specific in drawing a distinction among the following possibilities:

• applying the design to any article;
• importing into Australia any article to which the design has been applied; · selling any article to which the design has been applied;

Section 30, however, does not, in its terms, extend to the sale of an article to which a design has not been applied, with instructions for the application of the design.

77 There is nothing in the Act to the effect that conduct involving the aiding, abetting, counselling, procuring or inducing an infringement of the monopoly in a registered design constitute infringement. Under s 36 of the Copyright Act 1968 (Cth), copyright is infringed by a person who authorises the doing of acts comprised in the copyright. There is nothing in the Act that makes the authorisation of the application of a registered design to an article an infringement of the monopoly conferred by registration.

78 One might contrast the provisions of the Act with provisions such as those of the Registered Designs Act 1949 (UK) ('the UK Act'). The rights given to the registered proprietor of a design under s 7 of the UK Act, as originally enacted, included the exclusive right:

'to make anything for enabling any [article in respect of which the design is registered, being an article to which the design has been applied] to be made … .'

79 The matter might be tested by asking when any infringement occurs. If a particular example of the Foggin Article is never made up into a massager, it would be difficult to say that there had been an application of the Design, or an obvious imitation of it, to that article. Lacey seeks an account of profits from Foggin. Questions would arise as to whether the account should relate only to the examples of the Foggin Article to which the Design or an obvious imitation of it has been applied. However, in the light of the conclusion I have reached above, these questions do not arise.

conclusion 80 The appeal should be upheld and the orders made by the primary judge should be set aside. In lieu of those orders, there should be orders that the application be dismissed with costs. Lacey should be ordered to pay Foggin's costs of the appeal. I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Dated: 30 June 2003 Counsel for the Appellant: M J Colbran QC with D P Morzone

Solicitor for the Appellant: O'Reilly & Stevens Lawyers

Counsel for the Respondent: A H Bowne with J E O'Sullivan