Foggin v Lacey

[2003] FCAFC 147

Federal Court of Australia (Full Court)|2003-06-30|Before: Bennett JJ

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Court

Federal Court of Australia (Full Court)

Decision date

2003-06-30

Before

Bennett JJ

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Original judgment source is linked above.

Judgment (24 paragraphs)

[1]

REASONS FOR JUDGMENT MOORE AND BENNETT JJ: 1 This appeal concerns Australian Registered Design Number 134633 ('the Design') in respect of a non electrical head massage device, registered under the Designs Act 1906 (Cth) ('the Act'). The monopoly is claimed in the features of shape and configuration. The respondent, Dwayne Derrick Lacey ('Lacey') is the owner of the Design and markets a device known as an 'Orgasmatron', which is an application of the Design. Lacey claims that the appellant, Chris Foggin ('Foggin'), has infringed his rights in respect of the Design by selling a head massage device called the 'Shiver Me Timbers!' head massager ('the Foggin article'). The issues in dispute before the primary judge were the validity of the Design and, if it is valid, whether the Foggin article has infringed the design. The primary judge upheld validity and made orders declaring that Foggin had infringed the Design and made orders restraining further infringement: see Lacey v Foggin (2002) 56 IPR 436. Foggin now appeals from those orders. 2 The Design was granted and registered on 12 August 1998 pursuant to an application lodged on 12 January 1998. The term of initial registration was one year commencing on 12 August 1998. The registration of the Design has been extended and is currently in force until 12 January 2004. The article in respect of which the Design is registered is: '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 of the Design is a representation in the form set out below:

[2]

THE ISSUES ON APPEAL 3 The issues narrowed on appeal. Counsel for Lacey relied only on the shape as depicted in the Design and abandoned reliance on the configuration of the Foggin article as giving rise to infringement. 4 The Foggin article is sold by Foggin to buyers in a form that consists of a handle to which are attached eight prongs extending in a straight line from the handle. The packaging in which the Foggin article is sold includes directions as follows: 5 Before the primary judge, Foggin submitted that it was the Foggin article in the straightened state that is relevant for the test of infringement. The primary judge noted (at 442 [22]) that the definition of 'design' in s 4 of the Act referred to the finished article and held that, 'where the article is sold on the basis of a common understanding between vendor and purchaser that the purchaser will continue a process of assembly to completion, the protection granted to the registered design extends to the features of the completed or finished article'. 6 Section 30 of the Act relevantly provides: '(1) A person shall be deemed to infringe the monopoly in a registered design if he, 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 for sale, or for use for the purposes of any trade or business, any article in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied; or (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) in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied. (2) If any person infringes the monopoly in a registered design, the owner of the design may bring an action or proceeding against him for infringement of the monopoly in the design.' (Emphasis added). 7 In the absence of an express provision of the Act constituting authorisation to infringe as an infringement within s 30, we have some reservations as to whether there is infringement by Foggin in selling an article to which the design has not been applied. This was not, however, a ground of appeal. Indeed, counsel for the appellant actively submitted, both in written submissions filed prior to the hearing of the appeal and in oral argument, that the relevant state to test infringement is the article manipulated in accordance with the directions. There was, after the hearing of the appeal, an attempt to retreat from this position, which we refer to later. It should be emphasised that our consideration of the issues raised in this appeal proceeds on the footing that whether or not the Design is valid or has been infringed is to be assessed by reference to an article created by a consumer by following the directions included in the Foggin article. That is the basis on which the appellant elected to conduct the appeal. 8 There was no dispute as to the legal principles to be applied. In relation to infringement, the primary judge found that the Foggin article is an application of the design itself and, therefore, an infringement. Having made that finding, his Honour found it unnecessary to consider whether it also amounts to an obvious imitation. He found that the evidence did not support a finding of fraudulent imitation and there is no challenge to that finding. 9 The respondent did not, initially, file a notice of contention but sought to do so during the course of the hearing of the appeal, to rely upon obvious imitation. Leave was granted, subject to the right of the appellant to respond further in writing. GENERAL PRINCIPLES RELATING TO INFRINGEMENT 10 Infringement is determined by a visual comparison between the registered design and the allegedly infringing article. It is possible to take salient features of a design but still produce a design distinct from the registered design: Firmagroup Australia Pty Limited v Byrne & Davidson Doors (Vic) Pty Limited (1987) 180 CLR 483 at 488-489. If, to the eye, the shapes of the design and the article are substantially the same, there is infringement: Malleys Ltd v J W Tomlin Pty Limited (1961) 180 CLR 120 at 123. It is for the court to rule on the meaning of the design and the question of infringement, as determined by reference to the eye of the consumer: Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 at 408-409 per Lockhart J. In this regard, the decision of the trial judge is to be given particular weight, in the absence of a demonstrated error: Dart (at 412). 11 The monopoly conferred by registration extends to shape or configuration, not function. What can be protected is a particular, specific appearance (Firmagroup (at 488)) - pattern, shape, configuration or ornament but not function (Dart (at 408)). 12 In Malleys (at 127) the High Court set out three categories of infringement of a design: '…where the design which has been applied is: - (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy with differences which 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) but a finding of fraudulent imitation must 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.' 13 In Dart, Lockhart J (with whom Jenkinson and Gummow JJ agreed)set out the principles drawn from the authorities. Those principles were conveniently summarised by Gummow J in Wanem Pty Ltd v John Tekiela (1990) 19 IPR 435 at 440 as follows: '(i) first impressions are important in determining whether there is an infringement of a design, (ii) an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye notwithstanding slight differences, (iii) the question must be looked at as one of substance and by examining the essential features of the design, (iv) a closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation, (v) precise mathematical comparisons or matters of measurements or ratios, 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 applied as the test of infringement; appearance to the eye is the critical issue, and (vi) 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.' 14 The question of infringement must be looked at as one of substance and by examining the essential features of the design (Dart (at 410)). THE PRESENT CASE 15 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; and · centripetal tendency of the ends of the prongs. 16 His Honour also considered infringement if the curved or ovoid shape were also an essential element of the shape. He concluded that if, as here, a usual method of following the directions would result in something only trivially different from the Design or if the infringing article can, in the ordinary course of events, be manipulated so as to correspond sufficiently with the Design (Schmittzehe v Roberts (1955) 72 RPC 122 at 125), there is infringement by reason of the application of the Design. 17 Bearing in mind categories (i) and (ii) set out in Malleys and the distinction between those categories, we are of the view that there has not been an application of the Design. Category (i) requires that there be no differences that the eye can detect. That is not the case here when we compare the curved shape of the prongs with the angled prongs of the Foggin article. 18 The article obtained after following the directions has, however, each of the significant visual features described by the primary Judge. The only difference is the introduction, by reason of the directions, of the two angles in each prong. The directions do not suggest to the audience of consumers to which they are directed, that the angles have to be the same or of a particular magnitude. The first of those angles, the one closer to the handle, is similar to the curve in the same location in the Design. Indeed, in the Design, the change of direction at that point includes angles and curves. There is no part of the prong of the Design that strictly corresponds with the second angle, 4 cm from the end of the prong of the Foggin article made precisely in accordance with the directions. That does not affect, however, the strong overall impression of the end result: an article with each of the three significant visual features of the Design with a resulting ovoid shape. 19 Further, if one construes the directions 'shape to head' to mean to expand the end of the prongs to enable the device to fit onto the head, the Foggin article more closely resembles the Design in that the overall shape is more ovoid. In addition, we accept that a consumer might understand the direction in step 5 ('shape to head') as indicating that the straight line between the angles depicted in step 4, should be rounded. If the direction was understood this way the similarity would be even greater. 20 Farwell J in Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268 at 279 said: '… in my judgment "obvious" means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two.' That is the case here, when one compares the Design and the Foggin article. 21 We are of the view that, in following the directions, the resulting article is an obvious imitation of the Design. It may be possible to produce an article after the taking of steps 1 to 4 that is more elongated and angular than the Design but, after expansion of the area between the ends of the prongs to enable the Foggin article to be placed over the head (the interpretation of step 5 most favourable to the appellant), it is an article that is, to the eye, a copy of the Design. 22 Accordingly, we agree with the primary judge that the Foggin article infringes the Design but disagree that it is by reason of the application of the Design. Rather, it is by reason of the application of an obvious imitation of the Design. GENERAL PRINCIPLES RELATING TO VALIDITY 23 Section 32 of the Act permits a defendant in an infringement proceeding to apply for the rectification of the Register by the expunging the entry of the registration of the design from the Register. It is accepted that, where a design conveys the idea of a general shape appropriate to the function which the article is intended to perform and where that idea is consistent with a variety of shapes in articles of those features, that amounts to a method of construction and is not valid (Firmagroup (at 487); Malleys (at 124-125)). 24 Section 18(1) of the Act, however, provides: 'An application for registration of a design shall not be refused, and a registered design is not invalid, by reason only that the design consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose.' THE PRESENT CASE 25 The primary judge noted the significant visual features of the design and its particular shape and configuration. He also observed that the function of the article, as a head massager employing prongs so arranged as to afford stimulation over several linear centimetres of scalp at one time, could plainly be achieved in a number of ways through entirely different shapes and configurations than those of the Design. He gave examples of a comb or a stiff brush. He found that the Design does not seek to monopolise the idea of an un-motorised head massage device, nor is it seeking to describe a method or principle of construction that would permit differences of shape. 26 The appellant submitted that the flexible nature of the prongs means that the design amounts to a method of construction. 27 The respondent submitted that the Design is not a method or principle of construction on the following bases: (a) the design consists solely of a representation of particular features of shape and configuration: see Dalgety Australia Operations Ltd v FF Seeley Nominees Pty Ltd (1986) 10 FCR 403 at 414.9-415.3; (b) it has "one particular individual and specific appearance" (Russell-Clarke on Copyright in Industrial Designs (1930) cited with approval in Firmagroup (at 487) and Re Wolanski's Registered Design (1953) 88 CLR 278 at 279); (c) it does not allow for articles of different shape or appearance to be constructed from the design: Malleys; Mangraviti v Vardi (1976) 12 ALR 355; Kestos Ltd v Kempat Ltd & Kemp (1935) 53 RPC 139; Moody v Tree (1892) 9 RPC 333; (d) if the design is applied, the article produced will inevitably appear to be of a similar appearance and shape. There is no evidence to suggest that the design is a conventional shape for non-electric head massagers or that any of its features other than in general its having a handle and prongs are common to non-electric head massagers: Firmagroup; Re Wolanski's;Pugh v Riley Cycle Co [1912] 1 Ch 613; (e) it contains no technological data or other information relevant to the production of the article or is otherwise a process or operation used to produce the shape of the article, rather than the article itself: Kestos; Compagnie Industrielle de Precontrainte et D'Equipment des Constructions SA v First Melbourne Securities Pty Ltd (1999) 44 IPR 512; Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461 per Wilcox J; Warman International Ltd v Envirotech Australia Pty Ltd (1986) 11 FCR 478.

[4]

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.

[11]

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).

[13]

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).

[14]

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'.

[15]

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;

Foggin v Lacey

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Judgment (24 paragraphs)

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