SW Hart & Co Pty Ltd v Edwards Hot Water Systems

SW Hart & Co Pty Ltd v Edwards Hot Water Systems - [1985] HCA 59 - HCA 1985 case summary — Zoe

[16]

Next it was submitted on behalf of the respondent that having regard to the dissimilarities, and notwithstanding the similarities, the respondent's products did not constitute a reproduction of the drawings or a substantial part of them. Brinsden J. identified sixteen points of similarity. On behalf of the respondent it was submitted that these similarities could be explained by the fact that both parties had relied on sources of information commonly available in earlier products or publications or by the fact that the function to be performed by the absorber units had determined their nature. In fact, Brinsden J. found that the information already available had not been of much assistance to the appellant in evolving its product. However, once it is accepted that the respondent did copy the appellant's drawings it is immaterial, even if it were true, that the respondent might have reached the same result if it had used the commonly available knowledge as the foundation of its own research and experiments. Counsel for the respondent further relied on the extent and nature of the dissimilarities between the respondent's products and the appellant's drawings. They submitted a schedule showing twenty-one dissimilarities. Some of those were discrepancies between the products of the appellant on the one hand and those of the respondent on the other and not between the appellant's drawings and the respondent's products and are accordingly irrelevant so far as the question of reproduction is concerned. Particular reliance was placed by Fox J. and in argument before us by counsel for the respondent on the differences in the dimensions of certain parts manufactured by the respondent and the dimensions of corresponding parts shown on the drawings, but I agree with Franki J. that it does not follow that the relevant similarity does not exist merely because the dimensions of a part shown in a drawing and those of the corresponding three-dimensional part differ somewhat. Minor differences of that kind may be deliberately made for the very purpose of disguising the fact that copying has occurred. It is true that there were a good many differences in detail between the respondent's products and the appellant's drawings, although they seem to me to be comparatively minor. It would serve no useful purpose to set out and discuss these differences, or for that matter the similarities; lists of both were provided for us by counsel. The question is not whether there are dissimilarities but whether the respondent's products closely resembled the appellant's drawings or a substantial part of them. It was submitted that Brinsden J.'s statement that "the similarities greatly exceed the dissimilarities" indicated that he must have considered the number, rather than the quality, of the similarities and dissimilarities. However, Brinsden J. concluded by saying that "there is a substantial similarity between the [respondent's] absorber plate and the absorber plate depicted in [the two drawings]". Earlier in his judgment he had cited from Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [6] , the words of Lord Pearce: "Did the defendants reproduce a substantial part of it? Whether a part is substantial must be decided by its quality rather than its quantity." There is no reason to assume that Brinsden J. approached the question before him other than correctly, and it has not been possible to point to anything in his judgment that indicates that he misapplied the principles. On the contrary, in the light of the fact that the respondent actually copied the appellant's drawings, obviously for the purpose of appropriating the benefit of the appellant's labour, and having regard not merely to the volume, but to the significance, of the similarities between the respondent's products and the drawings, I consider that Brinsden J. and the majority of the Federal Court were right in concluding that the respondent did reproduce a substantial part of the appellant's drawings.

[22]

The provisions of s. 9(8) of the English Act were no doubt intended to give effect to the recommendation contained in the Report of the Copyright Committee (October 1952), p. 95, "that a limitation is desirable in the protection to be given to a drawing by reason of its reproduction as a building, machine or utilitarian article; otherwise the scope of the Copyright Act would again be extended into fields far beyond its main or original intent and properly to be covered by other forms of protection if at all". Although the object of the provisions is understandable, the form in which they are expressed, involving the use of a triple negative, is not altogether clear and their application proves difficult in practice. A particular difficulty is caused by the words "persons who are not experts in relation to objects of that kind". It will be observed that these words do not refer to persons who are not experts in any field, but to persons who are not expert only in relation to the objects which it is claimed infringe the copyright: see L.B. (Plastics) Ltd. v. Swish Products Ltd. [7] . That means, in the present case, that the persons referred to are those who are not expert in relation to absorber units, and perhaps solar energy hot water systems. There can be no doubt that such persons should be assumed to be of reasonable intelligence: Merchant-Adventurers v. Grew & Co. [8] ; Solar Thomson Engineering Co. Ltd. v. Barton [9] ;Ogden Industries Pty. Ltd. v. Kis (Aust.) Pty. Ltd. [10] ; Fire Nymph Products Pty. Ltd. v. Jalco Products (W.A.) Pty. Ltd. [11] . The section does not expressly make it relevant whether the notional non-experts should or should not be familiar with engineering and design drawings, and it seems right to attribute to the non-experts at least sufficient ability to interpret drawings to enable them to perform their notional function intelligently: cf. Sifam Electrical Instrument Co. Ltd. v. Sangamo Weston Ltd. [12] ; L.B. (Plastics) Ltd. v. Swish Products Ltd. [13] .

[42]

no originality of thought is needed to sustain a claim to copyright. Under copyright ideas are not protected, only the skill and labour needed to give any given idea some particular material form, for it is the form in which the work is presented that is protected by copyright. That need only be original in the sense that it is all the author's own work. In my opinion, there is ample originality in the authorship of the drawings by the appellant. The proposition that the protection afforded by copyright is somehow greater where the artistic work embodies a novel or inventive idea than where it represents a commonplace object or theme was recently rejected by Buckley L.J. in the Court of Appeal in Catnic Components Ltd. v. Hill and Smith Ltd. [31] . His Lordship said [32] , in a passage cited by Franki J. in the Federal Court: what is protected is the plaintiffs' "artistic work" as such, not any information which it may be designed to convey. If it is said that a substantial part of it has been reproduced, whether that part can properly be described as substantial may depend upon how important that part is to the recognition and appreciation of the "artistic work". If an "artistic work" is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information, but not, in my opinion, by how important the information may be which it conveys or helps to convey. What is protected is the skill and labour devoted to making the "artistic work" itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the "artistic work". Counsel appealed to the older authorities for support, beginning with the decision of the House of Lords in Hanfstaengl v. Baines & Co. Ltd. [33] where Lord Watson said: But in cases where copyright is claimed for pictures or drawings which treat an old and common subject, such as love-making beside a stile, the privilege of the author must, in my opinion, be strictly confined to the particular design which he has chosen. But this passage merely serves to emphasize the fundamental principle that copyright rests not in the idea, however romantic or important that idea may be, but in the particular form in which the idea finds expression in the work. 1. [1979] R.P.C. 551, at p. 567. 2. [1982] R.P.C. 183. 3. [1982] R.P.C., at p. 223. 4. [1895] A.C. 20, at p. 28.

[43]

The question remains whether the trial judge's finding of reproduction is to be sustained. As I have shown, the trial judge dealt separately with the two factors which are involved in reproduction, namely similarity and copying. Although his findings on each of those factors, separately considered, may be sustained, I believe that to consider them in that fashion in the circumstances of this case is to introduce an artificiality into the process which overlooks the interdependence that naturally characterizes the two factors. There may be cases where this is not so. If a case is to succeed where there is no evidence of access to the copyright drawings, the similarity of the impugned product to the drawings will be required to be so strong as to itself sustain, without more, an inference of copying. On the other hand, in a case where there is strong evidence in support of an inference of copying such evidence as there is of similarity may take on added significance. It must, of course, still amount to a sufficient similarity of a substantial part of the copyright work. But such dissimilarities as are apparent may be seen as no more than a deliberate attempt to obscure what has actually taken place, namely, the appropriation of another person's labour. In Ancher, Mortlock, Murray & Woolley Pty. Ltd. v. Hooker Homes Pty. Ltd. [34] Street J. (as he then was) noted the fine line that may exist between the conduct of an architect who, having inspected an original plan or house, then proceeds to embody the architectural concept in an original plan prepared by him and that of an architect who merely proceeds by way of copying what he has seen. His Honour observed [35] that it may be that only after making a finding of copying, that is to say, of unfair or unconscientious use of the author's plan or building, that significance will attach to the degree of similarity. In finding an infringement in the case before him, his Honour acknowledged that his assessment had been coloured by the unmeritorious use made by the defendant of the plaintiff's plans and houses [36] .

[48]

This is clearly a long stop defence. Unless the plaintiffs established that a substantial part of the two-dimensional drawing 479A had been copied by the defendants to produce their Swish drawer, the plaintiffs' claim for infringement of their copyright in 479A would have failed - and no question under section 9(8) could have arisen It is indeed a curious subsection. I find it impossible to discover any sensible reason why, in circumstances such as these, defendants who copy a plaintiffs' two-dimensional drawings (in which the plaintiff owns the copyright) and constructs a three-dimensional drawer from it and thereby infringes that copyright, should be taken not to have done so merely because persons who are not experts in "knock-down" drawers would fail to recognize that the plaintiffs' copyright had been infringed. If and when the law of copyright is again considered by Parliament, it may think that a long, cold look should be taken at this strange subsection. (Cf. also, I.M.I. Developments Ltd. v. F.C. Harrison Ltd. [39] ; Merchant-Adventurers Ltd. v. M. Grew & Co. Ltd. [40] ; Sifam Electrical Instrument Co. Ltd. v. Sangamo Weston Ltd. [41] ; Temple Instruments Ltd. v. Hollis Heels Ltd. [42] ; British Northrop Ltd. v. Texteam Blackburn Ltd. [43] .) The section was considered by the House of Lords in L.B. (Plastics) [44] . In the course of argument in the House, Mr. Aldous Q.C. was asked how s. 9(8) came to be in the 1956 Act. His reply [45] : It is generally believed to have been intended to apply to certain technical drawings such as circuit diagrams - drawings which an expert can understand but which a non-expert cannot. For example, a non-expert would not recognise a television circuit from the circuit diagram. It is not clear how far section 9(8) goes. Mr. Aldous could have gone on to trace the origin of s. 9(8) to a recommendation of the Gregory Committee in 1952 (Report of the Copyright Committee (Cmnd. 8662)). In par. 258 the Committee discusses the problem of the reproduction of drawings or designs in the form of three-dimensional objects. It expressed the view that such a reproduction, to infringe, "must at least be a visible copy of the original work, obvious to the layman". The Report then continues: For example, plans and other drawings referring to articles or machines frequently contain no sketch or view of what would be the outward appearance of the article and, in such cases at least, copyright in such drawings need not be infringed by constructing the article. In one case (Chabot v. Davies [46] ) it was held that the copyright in an architect's elevation representing a shop front was infringed by the erection of the shop since this was regarded as a reproduction of the elevation "in a material form". We do not dissent from such an application of copyright protection, provided the test is whether the building or other reproduction can be recognised visually by an ordinary man as being, in fact, a reproduction, even if in another material or on a different scale to what has been drawn. It should not be an infringement of the copyright in the drawing to erect a building or to construct an article based thereon if the result has no clearly visual resemblance to the drawing. This passage would suggest that the Committee considered that there could be no "visual resemblance" between a drawing and the finished product unless the drawing itself contained a pictorial representation or sketch of the finished product. The "ordinary man" could then make a simple and direct comparison of the one with the other. If this were so, the suggestion may have proved both understandable and capable of implementation in practice. However, difficulties are obviously engendered by the lack of clarity in the statutory provision designed to implement the Committee's recommendation. What capacity is to be credited to those "who are not experts in relation to objects of that description"? Is it a matter for evidence? Is it for the judge to place himself in the position of a non-expert in relation to (in this case) solar hot water systems and, if so, is he to be credited with some ability to interpret design drawings? Where does the onus lie? Whatever may have been the precise legislative intent in enacting the provision, its operation in practice led the Copyright Committee chaired by Whitford J. in 1976 to recommend its repeal: Report of the Committee to consider the Law on Copyright and Designs 1977 (Cmnd. 6732) (1977), par. 202(vii). 1. [1979] R.P.C., at pp. 635-636. 2. [1970] R.P.C. 299, at pp. 301-302. 3. [1972] Ch. 242, at p. 255. 4. [1971] 2 All E.R. 1074, at pp. 1076-1077. 5. [1973] R.P.C. 15, at p. 17. 6. [1974] R.P.C. 57, at p. 72. 7. [1979] R.P.C., at pp. 622, 630-631, 635-636. 8. [1979] R.P.C., at p. 611. 9. (1936) 155 L.T. 525.

[54]

The (non-expert) judge should not repeat the process which, as judge with the assistance of expert and other witnesses, he has gone through in deciding whether there has been copying or not. Ordinarily a drawing will convey to the mind of a viewer a picture of what a three-dimensional version of that drawing would look like. But some drawings may be so complex or technical in their expression as not to yield any immediate visual impression of a three-dimensional object capable of being compared with the alleged infringing articles. In such a case there will be no infringement notwithstanding that in truth the article is a reproduction of the drawing. I appreciate that his Honour could properly be influenced by the view he took of the complexity of the drawings and the number of parts in the objects under consideration. The trial judge apparently took a different view when it came to visualizing the collector unit as it appears in the drawings. He saw no difficulty. For his part, Fox J. agrees that the bulk of the apparatus comprised in the product "appears very similar" to that which is provided for on part of the drawings, but his Honour then focuses on differences in detail which would lead a non-expert not to conclude that there was a reproduction. It may be that in coming to that conclusion his Honour was influenced by the view to which he had already come that in any event the collector unit was not a reproduction of the drawings. In my opinion, when it is said that the comparison to be made is a visual comparison, the test is a broad one. It must already have been decided that there is the requisite similarity of a substantial part and that the similarity has been achieved by an unauthorized copying of the artistic work which is the subject of copyright. Notwithstanding those findings, there will be no infringement if there is no visual resemblance, that is, if the object does not look like a reproduction of the artistic work or of a substantial part of it. 1. [1979] R.P.C., at p. 622.

[60]

Section 71, which follows the introduction of a corresponding provision in the United Kingdom (Copyright Act 1956 U.K., s. 9(8)), preserves the test of visual recognition. The Act does not deem the making of a three-dimensional object in accordance with a written specification - a "literary work" that is not a drawing - to be a reproduction of the specification, but s. 9(8) of the United Kingdom Act has been held to require a judge, stepping into the shoes of the notional non-expert, to take account of written matter on the drawing: L.B. (Plastics) Ltd. v. Swish Products Ltd. [56] ; Temple Instruments Ltd. v. Hollis Heels Ltd. [57] ; Merchant-Adventurers v. Grew & Co. [58] . It was conceded by the respondent in the present case that that was the correct approach. If the concession was rightly made, the test of visual similarity cannot be applied as a mere matter of impression. As Graham J. pointed out in Merchant-Adventurers it is necessary for the notional non-expert, endowed with "reasonable and average intelligence" for the purpose, "to visualize in his mind" what a three-dimensional object made in accordance with the drawing and the writing on it would look like, and then to compare that mental picture with the material object the making of which is said to infringe the copyright. Such an approach places a minimal restriction on the scope of copyright in trade drawings for it would require a comparison between the material object and the mental picture derived from the drawing and the writing on it, and it would permit the court to consider whether particular features of the object which is said to infringe the copyright corresponded with information contained in writing on the drawing. The last reference to the artistic work in s. 71 would have to be read as a reference to the mental picture, and the notional observer would have to be invested with a capacity to glean the true meaning of drawings and the writings which appear on them. He would have to be invested also with a capacity to take measurements and to ascertain the material of which an object is made if those matters are specified in the writing on the drawing.

[62]

The operation of s. 71 in the context of s. 21(3)(a) and s. 31(1)(b)(i) depends, in my opinion, on whether that be the right approach, but I forbear from considering that question in the light of the concession made. However, by adopting that approach, the task of applying s. 71 is made more complex. A drawing and the writing on it must be interpreted to get the required mental picture and consideration may need to be given to similarities and dissimilarities between the materials, measurements and other features of the object and the materials, measurements and other features written on the drawing. It is not surprising that the mental picture which one non-expert develops is different from the mental picture developed by another, nor that the emphasis which one non-expert gives to a particular similarity or dissimilarity in materials, measurements or other features written on the drawing will differ from the emphasis given by another. The finding by the trial judge as to the opinion of the notional non-expert is critical in such an exercise, for there is no legal touchstone by reference to which his finding as to the non-expert's opinion can be set aside if that finding is reasonably open on the facts of the case. Brinsden J. thought that it was not difficult for a non-expert to visualize in three-dimensional form the absorber plates and connecting links shown in the drawings. He was not satisfied that the manufactured components of the respondent's absorber plate would not appear to a non-expert to be reproductions of the defendant's drawings. Those findings were reasonably open. An appellate court is not justified in setting those findings aside merely because that court differs from the trial judge on the question of opinion as to what a non-expert who had examined the drawings would or would not visualize in his mind. Given the concession made by the respondent, I do not think that the majority of the Federal Court were entitled to depart from the findings made by Brinsden J. on the issues arising under s. 71.

[71]

The provisions of s. 71 are preclusive and not inclusive. A three-dimensional fabrication does not infringe copyright in a two-dimensional artistic work if the fabrication would not appear to lay persons to be a reproduction of the whole or of "a substantial part" (see the Act, s. 14) of the artistic work. That test is well attuned to established notions of copyright law whose essential concern had traditionally been with the copying by reproduction of the visual expression of a subject or idea: "[w]hat is protected is the skill and labour devoted to making the "artistic work" itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the "artistic work" ": per Buckley L.J., Catnic Components Ltd. v. Hill and Smith Ltd. [65] . It is in close accord with what has been recognized in the United States as a normal ingredient of the ordinary concept of reproduction by copying (see, e.g., King Features Syndicate v. Fleischer [66] ; Corpus Juris Secundum, vol. 18, "Copyright and Literary Property", s. 94a, p. 216) and with what had already been evolved by judicial decision in England and in this country: cf. Burke and Margot Burke Ltd. v. Spicers Dress Designs [67] ; Cuisenaire v. Reed [68] ; Lend Lease Homes Pty. Ltd. v. Warrigal Homes Pty. Ltd. [69] . Indeed the view was expressed, in the period between the enactment of s. 9(8) of the English Act and the introduction of its provisions in this country, that those provisions represented "statutory confirmation" of what "would seem to follow" from the decision in Burke and Margot Burke Ltd., namely, that Chabot v. Davies [70] was "confined to cases in which the appearance of the complete building appeals to the eye as being a reproduction of what appears on the architect's plan or elevation": Copinger and Skone James on Copyright, 9th ed. (1958), p. 258; 12th ed. (1980), par. 269; Cuisenaire v. Reed [71] . The s. 71 test also has the advantage of being, at least in the context of copyright law, comparatively uncomplicated in concept and elementary in application. It is true that the section dutifully adopts that cause of much dispute in copyright cases, the notion of "reproduction". For the purposes of s. 71 however, that notion is confined by the controlling reference to what would "appear" to non-experts: so confined, it does not embrace the hidden similarities or differences which none but the expert could discern or evaluate but is limited to what would appear to the observation of ordinary persons who are not experts in the relevant field. In effect, all that the s. 71 test does is to impose the requirement that ordinary people would observe that the allegedly infringing object appeared to reproduce the artistic work in a different dimension.

[73]

As Fox J. pointed out in the Full Court of the Federal Court [72] , the present case falls in an area in which one should be conscious of the distinct functions performed by the law of copyright and the law of patents and industrial designs and of the desirability of maintaining at least the semblance of a boundary between their respective fields of operation. The convoluted path by which a three-dimensional object has been held to be an infringement of the copyright in a technical drawing which has been neither factually copied nor even seen illustrates the incursions which copyright - with its extended life but more limited protection, its lack of any requirement of novelty or true inventiveness and its minimal standards of originality - is capable of making into what would ordinarily be seen as the proper domains of the law of patents and the law of industrial designs. Section 71 represents a deliberately imposed legislative restraint of that expansion of the law of copyright in cases such as the present where what is involved is the reproduction of a "drawing as a building, machine or utilitarian article" (Gregory Report, par. 258). In the simple and non-technical case where both artistic work and alleged infringing copy were made to be viewed rather than used, expert evidence is likely to be unnecessary to expose the similarities and dissimilarities between the two. In such a case, particularly where there is no direct evidence about actual copying, the question of reproduction in fact may largely turn upon whether the object appears to the judge, upon visual examination, to be a reproduction of the artistic work in a different dimension. When that is so, the question which the s. 71 test raises will closely correspond to what is involved in the issue of reproduction in fact. Conversely, the s. 71 test is likely to be of greatest independent significance in a case where complicated expert evidence is necessary to identify and explain technical points of similarity and dissimilarity, which are not apparent to a non-expert, between an artistic work made to visually convey technical information and an allegedly infringing object made to function or be used. Such cases fall within an area in which the copyright law's concern with distinctions between concepts such as form, expression and arrangement on the one hand and concepts such as subject, function and information on the other become increasingly more difficult to draw as the technical similarities and dissimilarities become further removed from what can be seen by the ordinary visual observation of ordinary people and as visual appearance becomes increasingly a reflection of function. In such cases, the s. 71 test, if left uncomplicated by unnecessary legal sophistry, provides a reasonably straightforward means of restricting the protection of the law of copyright to the category of case which it was designed and is best equipped to regulate. It is true that the effect of s. 71 is to extend the protection of a largely unmeritorious defence to some copyists of another's original artistic work. No doubt there have been and will be circumstances in which the availability of such a defence will appear unjust as between the parties. It is, however, no part of the function of the courts to allow distaste for the activities of the copyist in the particular case to lead either to further judicial blurring of a boundary which the legislature has sought to maintain or to the grant of curial protection in circumstances in which the legislature has determined that the overriding requirements of public interest should preclude it.

[77]

The non-experts to whom s. 71 refers are not to be discounted as rash, illogical or foolish. Like some other notional inhabitants of the law, they are to be presumed to be reasonably observant, rational and careful persons of average intelligence: cf. Merchant-Adventurers Ltd. v. M. Grew & Co. Ltd. [75] ; Ogden Industries Pty. Ltd. v. Kis (Aust.) Pty. Ltd. [76] . The test which the section propounds involves a notional direct visual comparison of the artistic work and the alleged infringing object, viewing them together: cf. Solar Thomson Engineering Co. Ltd. v. Barton [77] ; L.B. (Plastics) Ltd. [78] ; Ogden Industries Pty. Ltd. [79] . In making that comparison, the notional non-experts are to be presumed to have access to any material written upon a two-dimensional drawing which may explain it: cf. L.B. (Plastics) Ltd. [80] ; Ogden Industries Pty. Ltd. [79] . In that regard however, it is important to note that, since the notional comparison by non-experts is a visual one between the two-dimensional drawing and the three-dimensional object, the assistance to be derived from what is written on or around the drawing must be limited to what non-experts would understand as explanatory of the actual visual representation which is the drawing as distinct from the underlying idea, substance or working of what is depicted. The non-experts are to be credited with such ability to observe and comprehend what the two-dimensional drawing visually represents as would be possessed by a person of reasonable and average intelligence, knowledge and education, with ordinary ability but without expert knowledge with relation to the kind of object which the drawing visually represents. There is authority to support the view that, where the two-dimensional drawing depicts the face of a sectioned part of a three-dimensional object, the non-experts are also to be presumed to have available for the purposes of visual comparison the corresponding face of the relevant sectioned part of the allegedly infringing object: cf. per Buckley L.J., Solar Thomson Engineering Co. Ltd. v. Barton [1] . Where, as in the present case, there is an obvious inter-relationship between two distinct drawings, they can be viewed together: cf. Merchant-Adventurers Ltd. v. Grew [2] .

[85]

In the course of his speech in L.B. (Plastics) Ltd. [11] , Lord Wilberforce said that s. 9(8) of the English Act "applies by way, and only by way of defence, i.e. after the issue of copying has been decided, and on the assumption that it has been decided in favour of the plaintiff". To the same effect was the comment of Lord Hailsham [12] that the defence under s. 9(8) "only arises if there is a reproduction of a part of the copyright work sufficiently substantial to be otherwise an infringement of copyright". It seems to me, with respect, that those comments must be read in the context of the reasons for their Lordships' rejection of the conclusion reached by the Court of Appeal that it would not appear to non-experts that there had been a reproduction. Their Lordships were concerned to stress that the members of the Court of Appeal had mistakenly approached that question on the basis of their finding that there had in fact been no substantial reproduction: per Lord Hailsham [13] . As Lord Salmon pointed out [14] , on that basis no question could arise under s. 9(8) of the English Act. So read, the above comments were directed more to disapproving the view that s. 71 might properly be approached on the basis that there had been no reproduction in fact than to asserting the view that the section should properly be approached on the basis or assumption that there has been a positive finding that there was in fact such reproduction. On the other hand, their Lordships' remarks are framed in words which are appropriate to lay down the proposition that the issue raised by a defence under s. 9(8) of the English Act cannot properly be dealt with unless an actual finding or assumption of actual reproduction of the whole or a substantial part of the two-dimensional artistic work is made. To the extent that their comments are properly to be construed as laying down that proposition, I respectfully consider that they should not be followed by Australian courts in relation to s. 71 of the Act.

[89]

Certainly I would regard it as a wrong approach in deciding a question under section 9(8) to enumerate dissimilarities which are really there and which a non-expert would have recognized as dissimilarities, or points of identity which are not really there which a non-expert would have mistakenly thought he saw as points of identity The defence under section 9(8) is concerned with points of resemblance or identity which are really there, but which the non-expert would have failed to recognize as points of resemblance or identity in the three-dimensional form with the result that it would not have appeared to him that there had been the reproduction of any substantial part of the original artistic work. Those comments, which effectively adopted the submissions of counsel for the appellant in the case [16] , are related to, and develop, his Lordship's comments to the effect that s. 9(8) only arises if the court has decided that there has in fact been reproduction. As I read them, they assert that s. 71 can only operate upon the fact of actual reproduction in the sense that the section is not directed to the simple question whether it would not appear to non-experts that there was a reproduction but to the question whether, starting with the fact that there has been a reproduction, the non-expert is unable to perceive points of resemblance upon which the expert would rely to perceive that fact. In my respectful view, there is no justification for giving to the provisions of s. 71 of the Act such an artificial and restricted operation. As has been said, s. 71 operates to preclude a finding of infringement regardless of whether there has or has not been actual reproduction. The question which the section propounds is whether it would not appear to non-experts, on a visual comparison of the allegedly infringing object and the artistic work, that the object was a reproduction of the artistic work. It requires no assumption that there was actual reproduction any more than it requires an assumption that there was not. In making that visual comparison, regard must be paid both to similarities and dissimilarities between object and artistic work to the extent that they would be apparent to the eye of the non-expert. In particular, "dissimilarities which are really there and which a non-expert would have recognized as dissimilarities" are, in my respectful view, not only relevant to be noted or enumerated but may well prove decisive. 1. [1979] R.P.C., at p. 631. 2. [1979] R.P.C., at pp. 613-614, 616.

[96]

Much of the argument (on the s. 71 defence) on the hearing of the appeal was concerned with the effect of comparison between actual (Ex. 6) or hypothetical Hart absorber panels manufactured to accord with the illustrations and specifications of the two engineering drawings and the Edwards panels. In the circumstances of the present case, such comparisons are, in my view, likely to confuse rather than assist. The copyright which is alleged to be infringed is the copyright in the engineering drawings themselves and not some asserted copyright in the objects which experts might envisage or manufacture from a careful study of them. In deference to the careful argument of counsel however, I would add that even if it could be assumed that, contrary to my own view, examination of what is drawn and written on the two engineering drawings would suffice to create in the mind of ordinary non-experts a visual picture of the actual Hart panels corresponding to Ex. 6, I would nonetheless be of the view that it would not appear to non-experts that the Edwards absorber panels were a reproduction of that envisaged object. It seems to me that, once they progressed beyond the starting point that the absorbers of solar hot water systems are, customarily and functionally, regular-shaped black panels with parallel vertical ridges, non-experts would, on a careful comparison between the Edwards and Hart panels, be likely to be as much struck by differences as by similarities. There are observable differences between the two panels with respect to (among other things): the shape (proportion of width to depth); the dimensions; the spacing between riser tubes; the length of riser and header tubes; the housing of the glass cover; the top edge to the sides of the panels; the presence of side insulation; the connexion between absorber casing and header (nuts, casing and rubber pad inside opening); the presence of dimples in header pipes at connexion with riser pipes; the presence of a copper bend and nut for connexion of top header with storage cylinder pipe, and the presence of the distinctive Hart "gull-wing" vertical edges. It is, however, unnecessary to pursue the matter since, as has been said, the requisite comparison is a visual one of the Edwards panels with the actual drawings which constitute the artistic work and not with some notional three-dimensional object which an expert might visually or actually construct by studying the information which the drawings convey. As I have already indicated, it would not, in my view, appear to non-experts as a result of any visual comparison between Hart's two engineering drawings (as elucidated by what is written upon them) and the Edwards absorber panels that the latter were a reproduction of the whole or of a substantial part of either or both of the engineering drawings.

At a glance

Court

Decision date

Before

Source

Judgment (97 paragraphs)

Parties