The pre-17 June 2004 position
216 Sections 74 and 77 prior to 17 June 2004 were in these terms:
'Division 8 - Designs (Part III)
74 Corresponding design
In this Division:
corresponding design, in relation to an artistic work, means a design that, when applied to an article, results in a reproduction of that work, but does not include a design consisting solely of features of two‑dimensional pattern or ornament applicable to a surface of an article.
…
77 Application of artistic works as industrial designs without registration of the designs
(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.
(2) 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.
(3) This section does not apply in relation to any articles in respect of which, at the time when they were sold, let for hire or offered or exposed for sale or hire, the corresponding design concerned was excluded from registration by regulations made under the Designs Act 1906, and, for the purposes of any proceedings under this Act, a design shall be conclusively presumed to have been so excluded if:
(a) before the commencement of the proceedings, an application for the registration of the design under that Act in respect of those articles had been refused;
(b) the reason, or one of the reasons, given for the refusal was that the design was excluded from registration under that Act by regulations made under that Act; and
(c) when the proceedings were commenced, no appeal against the refusal had been allowed or was pending.
(4) The regulations may specify the circumstances in which a design is, for the purposes of this section, to be taken to be applied industrially.'
Section 77 in this form was first introduced into the Copyright Act by an Amendment Act of 1989 which was repealed by the Copyright Amendment (Re‑enactment) Act 1993 (Cth) which re‑enacted certain provisions of the 1989 Act. The re‑enacted provision was given effect as from 1 October 1990 by s 4 of the 1993 Act.
217 The pre‑condition to the operation of s 77(2) involves four integers. First, the subsistence of copyright in an artistic work. Secondly, the industrial application of a 'corresponding design' by or with the consent of the copyright owner. Thirdly, the sale (or hire or offering for sale) of 'articles' to which the 'corresponding design' has been 'applied' and fourthly, at the time of sale (or hire or offering for sale) of articles to which a corresponding design has been applied industrially, the corresponding design was not registrable under the Designs Act 1906 or had not been registered under that Act.
218 In those circumstances, s 77(2) provides that it is not an infringement of the copyright in the artistic work to reproduce the work on or after the relevant date by applying the corresponding design or any other corresponding design to an article. A corresponding design in simple terms is a design which has a relevant correspondence with the artistic work. A 'corresponding design' in relation to an artistic work, in precise terms, means a 'design' that when 'applied' to an 'article' results in a 'reproduction' of that work (leaving aside the exclusion in the concluding words of the definition (s 74)).
219 The term 'design' is not defined in the Copyright Act but it is a central conception of the Designs Act 1906 (Cth). There it is defined to mean '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' (s 4).
220 Sections 74 to 77 of the Copyright Act seek to provide a solution to the overlap between the bundle of exclusive rights comprising the copyright in an artistic work (and their duration) and the perceived need for limitations upon those rights in respect of a design inherent in the artistic work applied industrially in the manufacture of articles which exhibit, to the eye, those design features. Since the scope and duration of rights in such a design, if registered, is comparatively constrained by the Designs Act 1906, ss 74 and 77 of the Copyright Act seek to constrain the reach of the copyright in the artistic work so that no copyright infringement arises if the challenged conduct is the application of the design to a particular article that results in a reproduction of the artistic work even though the copyright owner's design was not registered nor registrable.
221 Without tracing the history of the amendments to ss 74 and 77 it is sufficient to note that s 77(2) immediately prior to the introduction of the formulation at [216] provided, in substance, that no infringement of the artistic work arose by doing anything that at the time it was done, would have been within the scope of the monopoly in the corresponding design if the corresponding design had, immediately before that time, been registered in respect of the relevant articles. That particular formulation of s 77(2) and its relationship with s 77(1)(d) raised the 'critical question' noted by Franki J (Edwards Hot Water Systems v S W Hart & Co Pty Ltd (supra) at p 632) as to whether a design which is not 'registrable' under the Designs Act 1906 could fall within s 77(2) at all. A design might not be registrable because that sought to be registered did not satisfy the definition of 'design' in the Designs Act 1906 or because the design was not 'new or original', or was otherwise disqualified. This focus on registrability arising out of that formulation of s 77(2) taken in conjunction with no definition of the term 'design' in the Copyright Act, led Franki J to conclude that 'there will, of course, be designs that come within the word "design" in s 74(1) [giving meaning to "corresponding design"] which are not new or original but I consider that before a design can be a corresponding design within Div 8, Part III of the Copyright Act, it must satisfy the definition of design within the Designs Act'.
222 The elements of a design under the Designs Act 1906 in, for example, the pre‑1981 formulation involved an industrial design applicable in any way by any means 'to the purpose of ornamentation, or pattern, or shape or configuration of an article' and under the post‑1981 amendment, features of 'shape, configuration, pattern or ornamentation applicable to an article capable of being judged by the eye in the finished article but not including a method or principle of construction'.
223 Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose (Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429‑430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability, qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability (Greenfield Products Pty Ltd v Rover‑Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431‑432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition?
224 The formulation of s 77(2) at [216] addresses reproduction of the artistic work by applying a design to an article and operates whether the corresponding design was either not registered or not registrable (s 77(1)(d)). Notwithstanding the change to the earlier formulation of s 77(2) and the inherent 'critical question' identified by Franki J partially raised by the earlier formulation, a design for the purposes of s 74 and s 77 under the formulation at [216] remains a design as defined by the Designs Act (Hosokawa Micron International v Fortune (supra) at 396; Shacklady v Atkins (1994) 30 IPR 387 at 394 and CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 at [82]).
225 Moreover, the fundament of a design remains that there must be some aspect of visual appeal to the eye. It may well be that the features of shape serve a functional purpose or assist in making function efficacious but these attributes will not disqualify the features of shape or orientation as a design for the purposes of the Designs Act 1906 if the designer has selected features of shape or configuration or, put differently, 'if there was room for choice by the designer' (Hosokawa per Gummow J at p 429‑430).
226 As a result, it is not an infringement of the reproduction right comprised in the copyright subsisting in an artistic work to reproduce the work by applying features of shape, pattern or configuration derived by selection by the designer (author) notwithstanding efficacious functional contribution, to an article that when so applied, those features are capable of being judged by the eye in the finished article.
227 The essence of the applicant's case is that features of shape or configuration for five components are revealed in the artistic works in suit and those features can be seen in the finished manufactured 4 in 1 bucket of the respondent which contains assembled components representing three‑dimensional versions of the applicant's artistic works amounting to reproduction of each artistic work.
228 The applicant says that this conduct is something quite different from the application of a corresponding design inherent in the artistic work to an article in a way which enables the features of shape or configuration to be seen in a finished article. The applicant says there is no design within the meaning of the Designs Act 1906 and thus no corresponding design and therefore no role to play for s 77(2). That submission ultimately turns on three things. First, whether there is a corresponding design in relation to an artistic work capable of application to an article. Secondly, whether the article in question is the 4 in 1 bucket or alternatively components comprised in an assembled bucket. Thirdly, whether, by reason of the notion of a focus upon 'registrability', the artistic work is deprived of registration as a design because each drawing does not qualify for registration under the Designs Act 1906 as a design.
229 As to the first, it seems to me from an examination of each of the applicant's artistic works in suit and particularly those drawings for the components I have found to be original drawings, namely, drawings for the outside mounting bracket, inside mounting bracket and pivot arms comprising the pivot mechanism, that features of shape or configuration are apparent. Having regard to the evidence of Mr Pesch and that of Mr Gould, the shape of the outside mounting bracket might vary in its configuration having regard to the shape a designer might select. The criticism Mr Gould makes is that whatever shape a designer might select, the real question is whether a range of possible shaped outside mounting brackets will perform the function an outside mounting bracket is required to perform. It seems clear that the designer of the outside mounting bracket has selected the particular shape evident in the applicant's artistic work and in that sense there has been 'room for choice' by Mr Pesch. Mr Pesch gave evidence that the designer could have made one of a number of choices and that the shape selected by the author/designer was made to make the component look better and function more efficiently. As to the pivot mechanism, there is no doubt that the outer pivot arm and cranked inner pivot arm assume the features of shape in very large part to give structural strength to the opening mechanism under hydraulic load. That design change was brought into existence as a result of complaints to Mr Pesch of failures in the bucket under load by users. Clearly, the pivot mechanism with its two arms exhibit features of shape. However, it seems to me that these features are more than a blend of industrial efficiency with visual appeal. These features are very substantially determined by the requirements of strength and configuration for a double arm mechanism to enable the applicant's 4 in 1 bucket to open and close under hydraulic static and dynamic load. The demands of function overwhelm the features of shape for such a utilitarian component of a utilitarian bucket.
230 The notion of appeal to the eye does not necessarily mean aesthetic appeal (although that may well be present in a particular design) but simply means a 'mental conception conveyed to the mind of the eye' (Dart Industries v Décor Corporation Pty Ltd (1989) 15 IPR 403); in that sense, visual differentiation of shape is required. In some cases, the drawings potentially exhibiting a design may be complex such as detailed sectional engineering drawings and the features of shape may therefore be difficult to discern with the result that any element of appeal to the eye is solely based on the functional efficiency of the component (such as an engineering drawing for a sealed expansion joint for a bridge (CIPEC v First Melbourne Securities (supra)). Although the pivot mechanism exhibits identifiable features of shape, I am satisfied that those features, although they involve some minor element of shape selection, are almost entirely dictated by the utilitarian function that a pivot mechanism must perform in facilitating the separation of the front and back sections of the bucket. In respect of that component therefore, there is no relevant design. However, I take a different view in relation to the inside mounting bracket and accept that the drawing for that component exhibits a design.
231 The second question is whether the relevant drawings, although satisfying the first limb of the definition of 'design' because they exhibit features of shape, satisfy the second limb as features applicable to an article.
232 The applicant says the article is the assembled bucket. The term 'article' is not defined in the Copyright Act. However, the term is defined in the Designs Act 1906 to mean 'any article of manufacture and includes a part of such an article if made separately but does not include an integrated circuit, or part of an integrated circuit within the meaning of the Circuit Layouts Act 1989 or a mask used to make such a circuit', and provides the source of the meaning of the term for the construction of the Copyright Act provisions.
233 It seems to me that the applicant's 4 in 1 bucket is an article of manufacture. Articles of manufacture might be finished articles produced by a process which moulds or configures or extrudes particular material to a shape and in that sense the manufactured article is a single article. Articles of manufacture might also be an integrated whole made from assembled components. The definition plainly contemplates that an article of manufacture includes a part of an article if made separately. If the article is considered to be the assembled bucket, each component for the assembled bucket is itself an article and thus the features of shape or configuration qualifying as a design inherent in the artistic work are at least capable of application to the manufacture of the component part.
234 In Muscat v Le 60 IPR 276, Finkelstein J was prepared to proceed on the assumption that the application of a design to an article involved a determination of whether each component (namely, five components for a pattern) making up a garment ought to be addressed separately in terms of an embodiment of a design rather than simply looking to the assembled garment as an article although in that case the patterns were not articles of manufacture. In Edwards Hot Water Systems v S W Hart & Co Pty Ltd (supra) at p 633, Franki J noted the appellant's argument that in considering the application of a design to an article, the court had to look not only at the completed article (in that case the whole of the solar panel) but also to each individual component depicted in the drawing for the solar panel. In that case, the primary Judge was not satisfied that the individual components were articles for the purposes of the Designs Act 1906. However, Franki J noted that the conclusion of the primary Judge depended upon legislative provisions (subsequently repealed) and further noted that 'the amendment to the definition of "article", whereby an article includes part of an article if made separately, may be a significant change'. It seems to me the change is significant. That approach of testing the question by reference to the components and not just the assembled finished article, is consistent with the approach adopted by Pincus J in Greenfield Products Pty Ltd v Rover‑Scott Bonnar Limited (supra) where his Honour considered the application of a design to five component parts (central bearings, shafts, clutch‑fork, clutch plate and pulleys) of a drive mechanism for an assembled article namely a ride‑on lawnmower, for use in parks and gardens and not simply the ride‑on mower itself.
235 The third feature of a design is whether the features of shape satisfying the first limb of the term 'design' inherent in the artistic work once applied to an article of manufacture (the second limb) are features that are capable of being judged in the finished article. It seems to me an inescapable conclusion on the facts of this case that the finished article exhibits the features of shape apparent to the eye.
236 The third matter of contention [228] involves the notion that there can be no corresponding design because the plans are not registrable as a design. However, the question is not whether the plans are registrable as a design but whether a corresponding design inherent in the drawing exhibits features of shape or orientation which would qualify for registration because it satisfies the definition of 'design'. The question is not whether the plan can be lodged and registered as a design.
237 The protection afforded by s 77(2) of the Copyright Act applies only when a respondent reproduces the applicant's work 'by applying that or any other corresponding design to an article'. An article means any article of manufacture [231] (Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461. The process of application by the respondent of a corresponding design inherent in the applicant's artistic work involved a particular process. The respondent brought into existence a two‑dimensional drawing representing a substantial reproduction of the applicant's work. That two‑dimensional reproduction was used by the respondent to enable it to apply the corresponding design in the applicant's drawing to an article of manufacture. The applicant contends that the step of making a two‑dimensional drawing which is a reproduction of the applicant's relevant work is not susceptible of protection under s 77(2) (Amalgamated Mining Services Pty Ltd v Warman International Ltd (supra) at 474; Shacklady v Atkins (1994) 30 IPR 387 at 393; CIPEC v First Melbourne Securities Pty Ltd (supra) at 530), because the statutory immunity applies only in relation to the application of a corresponding design to articles of manufacture. The two‑dimensional drawings of the respondent are not articles of manufacture. If this contention has force, it gives rise to a counter‑intuitive anomaly of a respondent being free to apply the applicant's industrially applied corresponding design to articles of manufacture yet being constrained by infringement of copyright in the applicant's artistic work in making a two‑dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture.
238 The authorities mentioned above which are said to support the notion that making a two‑dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture is not an infringement of the copyright in the artistic work, require brief examination. In CIPEC v First Melbourne Securities, Merkel J acknowledged that it was common ground between the parties that s 77(2) only applies to three‑dimensional reproductions of the drawings in suit and, 'Thus, s 77 has no application to plan to plan copyright infringement: see Shacklady at 393'. Accordingly, there was no controversy about the question between the parties and no contradictor to the proposition that s 77(2) might extend to provide immunity in respect of the two‑dimensional drawing. In Shacklady, Davies J accepted that the defence in s 77 'merely concerns itself with three dimensional reproductions in the context of a corresponding design that is applied industrially'. That assumed position was adopted by Davies J in response to a submission that s 77 did not apply in the circumstances of the case because Mr Shacklady's right to enforce his copyright was influenced by a transitional period between the statutory regimes arising out of re‑enactment of particular provisions taking effect from 1 October 1990 and one issue was the operation of the section in relation to past events in circumstances where, nevertheless, articles to which the corresponding design had been applied were sold after the commencement of the new provisions. Notwithstanding that contextual question, it is clear that Davies J proceeded on the footing that the immunity provided by s 77(2) only operates in relation to three‑dimensional reproductions brought about by application of an industrially applied corresponding design. In Amalgamated Mining v Warman (supra), the facts involved both production of an infringing two‑dimensional plan used as a step along the way to application of a corresponding design and use of the applicant's two‑dimensional artistic work itself to make the two‑dimensional infringing plan used as a step along the way. Nevertheless, Wilcox J accepted that s 77 only provided an immunity, relevantly, in relation to acts 'within the scope of the copyright in the corresponding design' being the aggregate of things that the registered owner of a design would have the exclusive right to exercise. Therefore, s 77 'does not include a sheet of paper whose only function is to carry the design. It follows that the subsection has no application to plan to plan copying. The doing of such a thing is not an infringement of the monopoly in the registered design; it is not "within the scope of the copyright" - or "monopoly" - "in the corresponding design".'
239 The immunity conferred by s 77(2) from copyright infringement arising out of reproduction of the work might logically be thought to include the making of a two‑dimensional drawing along the way to application of the corresponding design to articles of manufacture otherwise the lawful act of applying the design to three‑dimensional manufacture would be frustrated. It may be that not every application of the corresponding design involves the intermediate step of making a two‑dimensional drawing in order to apply the features of shape to articles of manufacture. However, plainly enough, in a number of cases such a step is orthodoxy in the lawful application of the corresponding design. The scope of the immunity must ultimately be governed by the language of the sections selected by the Parliament but construed according to the legislative scheme adopted for striking the balance mentioned at [220] and discussed more broadly by their Honours Gleeson CJ, Gummow, Kirby, Heydon and Crennan JJ in Burge & Ors v Swarbrick [2007] HCA 17, [21]‑[44].
240 On the face of s 77(2), the immunity is one from infringement of the reproduction right in the work expressed by applying a corresponding design to an article which having regard to s 74 is a design that 'when applied to an article, results in a reproduction of [the] artistic work'. Since the term 'design' for the purposes of the term 'corresponding design' must be understood having regard to the definition in the Designs Act 1906, the relevant reproduction seems logically to be confined to features capable of being judged in the finished article, that is, three‑dimensional reproduction. Section 74 itself contemplates a resultant reproduction of the work by application of the design to an article. Although a construction of the provisions which avoids the frustration or partial frustration of the conferral of an immunity from copyright infringement in the application of a corresponding design industrially applied by the copyright owner, to articles of manufacture, has considerable merit, the court in CIPEC, Shacklady and Warman has accepted that the scope of the immunity does not extend to the two‑dimensional infringing plan produced as a step along the way. Moreover, the Parliament intervened in a way which the respondent describes as merely declaratory or clarifying of the true prevailing position in any event so as to eliminate what is only an apparent anomaly, by introducing s 77A into the Copyright Act by s 14 of the D (CA) A 2003 which, subject to the terms of the section to be discussed shortly, in principle, provides that no infringement of copyright in the artistic work arises out of reproduction of the work derived from a three‑dimensional product that embodies a corresponding design in relation to the artistic work. Accordingly, making a two‑dimensional drawing from a three‑dimensional product embodying the corresponding design is not an infringement of the reproduction right of the copyright owner in the artistic work. The Explanatory Memorandum for the Designs (Consequential Amendments) Bill 2002 before the House of Representatives at clause 46, provides:
'Sections 75 and 77 permit three‑dimensional products to be reproduced without infringing copyright in an artistic work that relates to the design. However, a practical problem arises from the fact that it is not permissible to produce either a plan or drawing, or possibly a mould from which the product is made. That is, a drawing or plan made in the course of manufacturing non‑infringing three‑dimensional products may infringe copyright in the original drawing or plan. Unless such indirect copying in the course of manufacture is permissible, the legislative purpose of avoiding dual copyright and design protection for three‑dimensional products may be frustrated.'
241 It seems to me that the only conclusion open to me is that s 77(2) in the period 2 December 2003 to 17 June 2004 did not operate so as to provide the respondent with an immunity from copyright infringement in relation to the applicant's artistic works reproduced by making a two‑dimensional drawing as a step along the way to industrial application of a corresponding design (where applicable) to articles of manufacture reflecting the features of shape in the finished article.
242 There is one further matter which might have the effect of removing the features of shape from the scope of a design for the purposes of the Designs Act 1906 and, as a result, from the notion of a corresponding design. A design excludes 'a method or principle of construction'. As Merkel J notes in CIPEC v First Melbourne Securities (supra) [95] - [98], the relevant principles emerged from the judgment of the High Court in Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 at 488. The notion is that only design features or those features which convey the idea of a particular shape qualify as a design. The contended design will not qualify to provide the proprietor with a monopoly in data or information conveying a method or principle of construction. To the extent that a drawing exhibits features of shape or ornamentation and thus exhibits a design but also contains dimensional data or other technological information facilitative of construction of an article of manufacture, such a drawing nevertheless continues to exhibit a design and is not prevented from falling within the scope of the definition of design merely by reason of the addition of other information. Although Wilcox J took a different view and determined that engineering drawings containing technological data either necessary or desirable for the manufacture of parts for slurry pumps for mining operations were not capable of registration as designs as a method or principle of construction and thus outside the definition of a design, I concur with the view of Merkel J in CIPEC v First Melbourne Securities that such a view adopts too broad an approach to the exclusion.
243 Accordingly, I am not satisfied that the applicant's drawings constitute a method or a principle of construction.
244 Accordingly, in the period 2 December 2003 to 17 June 2004 the application of a corresponding design in relation to the applicant's drawings for the outside mounting bracket and inside mounting bracket to articles of manufacture by the respondent so as to bring into existence components of its 4 in 1 bucket which evince the relevant features of shape and thus a reproduction of each work does not involve an infringement of the copyright subsisting in the applicant's drawings. However, the making of a two‑dimensional drawing as a step along the way amounts to a reproduction of the applicant's drawings for the outside and inside mounting brackets and is an infringement of the copyright subsisting in those artistic works. The respondent has also infringed the copyright in the applicant's drawings for the pivot mechanism by making a two‑dimensional reproduction of that drawing. The three‑dimensional reproduction of the applicant's pivot mechanism drawing is also an infringement as that conduct is not within the immunity conferred by s 77(2). As to the front assembly drawing, it seems to me that the drawing exhibits features of shape applicable to a 4 in 1 bucket which when viewed from the front perspective looking towards the bucket evince features to the eye consistent with a reproduction of the work.