Edwards Hot Water Systems v S.W. Hart & Company Pty Ltd

[1983] FCA 265

Re: EDWARDS HOT WATER SYSTEMS
And: S.W. HART & CO. PTY. LTD. (1983) 81 FLR 101
No. 43 of 1982
Copyright and Designs

COURT

IN THE FEDERAL COURT OF AUSTRALIA

WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Fox(1), Woodward(2) and Franki(3) JJ.

CATCHWORDS

Copyright - Artistic work - Whether copyright in technical drawings infringed by three dimensional article - Whether article would appear to be a reproduction to a non-expert - Whether design registrable - Industrial application of design - Dual protection under Copyright and Design Law.

Copyright Act 1968, ss. 14(1)(b), 21(3), 71, 74, 77.

Designs Act 1906, ss. 4, 17, 18.

Copyright and Designs - Infringement - Reproduction of substantial part - Technical drawings infringed by three-dimensional article - Artistic work - Whether article would appear reproduction to non-expert - Onus of proof - Copyright Act 1968 (Cth), s 71.

Copyright and Designs - Infringement - Reproduction of substantial part - Artistic work - Defence that within scope of monopoly of corresponding design if had been registered - Whether design which is not registrable within defence - Whether must be a "design" within Designs Act - Copyright Act 1968 (Cth), s 77(2) - Designs Act 1906 (Cth), s 4.

HEADNOTE

Section 71 of the Copyright Act 1968 provides:

"For the purposes of this Act -

(a) the making of an object of any kind that is in three dimensions does not infringe the copyright in an artistic work that is in two dimensions; and

(b) the making of an object of any kind that is in two dimensions does not infringe the copyright in an artistic work that is in three dimensions, if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work."
Held: (1) The principles in L B (Plastics) Ltd v Swish Products Ltd 9) (1979) RPC 551 ought to apply -

(a) The section applies only by way of defence and the defendant bears the onus;

(b) The issue must be decided upon the basis of an examination of the object in the eyes of persons not experts in relation to the objects under consideration;

(c) A judge applying the test in the case of detailed design drawings must be credited only with some ability to interpret such drawings;

(d) The issue of whether a substantial part has been taken depends on its quality rather than its quantity; on the physical significance of that which is taken and it is not any information which it is designed to convey which is protected.

(2) Where drawings are detailed sectional drawings of a fairly complex three dimensional mechanical article made up of many parts, the defence provided by s 71 may often be established on the balance of probabilities.

Per Franki J - The words "corresponding design" in s 77(2) of the Act must be read as "corresponding design" within the meaning of "design" in the Designs Act.

HEARING

Sydney, 1982, November 30; December 13, 14, 15, 16; 1983 October 12. #DATE 12:10:1983

APPEAL

Appeal from a decision of the Supreme Court of Western Australia (Brinsden J) concerning alleged infringement of copyright. The appellant relied on defences under the Copyright Act 1968, ss 71 and 77(2).

D K Malcolm QC and R French, for the appellant.

J D Merralls QC and R J Anderson, for the respondent.

Cur adv vult

Solicitors for the applicant: Warren McDonald French & Harrison.

Solicitors for the respondent: Muir Williams Nicholson & Co.

BAG

ORDER

1. The respondent have leave to apply within fourteen days to speak to the form the orders are to take consequent upon the reasons for judgment just delivered.

2. If no application for that purpose is made within fourteen days, the matter will be re-listed for the delivery of the orders intimated in the reasons for judgment.

Directions accordingly

JUDGE1

This is an appeal from the Supreme Court of Western Australia (Brinsden J.) in which he found in favour of the present respondent in proceedings for infringement of copyright. The respondent, the plaintiff in those proceedings, has for some years carried on a successful business in the manufacture and sale of solar heating appliances in respect of which it uses the trade name "Solarhart". The appellant has for some years carried on a business in respect of water heating appliances of one type and another and has in recent years moved into the solar heating business. It uses the name "Solar Edwards" in connection with its products. I shall on occasion use the convenient terms Solarhart and Edwards to describe the drawings and units the subject of this case.

The case of the respondent is that the appellant has infringed the respondent's copyright in certain drawings by reproducing those drawings in a three-dimensional form. It is not disputed that the drawings are artistic works, or that the respondent has the copyright therein. It is, however, disputed that there was an infringement of that copyright. The appellant also relies upon secns. 71 and 77 of the Copyright Act 1968 ("the Act").

The drawings in question are on three sheets (No's. B310/29, B310/30 and 310/43). They were prepared in 1976 and 1977, and are engineering drawings sufficient to enable production. On each of the sheets there are principal drawings and some detail. The first two sheets referred to have legends, and it is not disputed that reference can be made to those in understanding the drawings. The defendant had access to the first two drawings, and a drawing of the respondent's of an earlier and smaller tank, but he did not have access to the last-mentioned drawing. The Judge's conclusion was that the appellant had obtained a tank produced from the drawing referred to, and dissected it.

Solar heating equipment consists essentially of three parts. There is the absorber panel, the plates of which absorb the sun's rays and transmit the heat into copper pipes through which water flows. The water is stored in a tank which is the reservoir for the household or other reticulation system. This latter is the third element of the total apparatus, and it is not necessary to give it any particular attention in this case. The absorber plates are essentially rectangular sheets of aluminium painted black on one side, under which, in grooves, run a number of what are called riser tubes. At the top and bottom are horizontal tubes of larger diameter, called headers, to which the risers are attached. The bottom one is an inlet for cold water which comes from the tank, and the top one is the conduit for the hot water into the tank. The risers, headers and plates are fixed in a metal casing with a glass front.

The length of the plates is governed by the length of the riser tubes, which is in turn important to the thermo-syphon operation of the system. In brief, this means that as the water is heated it rises to the top of the riser tubes and is taken into the top portion of the tank. The cold water which comes from the bottom portion of the tank is introduced to the riser tubes through the bottom header, so that there is in effect a gradual heating of the water as it rises up the tubes.

The appellant's solar heating equipment which was alleged to offend was in evidence, as was the unit of the respondent created from the drawings. The exercise is, however, one of comparing drawings of the respondent on the one hand, with the solar heating product of the appellant on the other.

The Copyright Act 1968 is a patchwork of earlier legislation, the history of which, as related to its United Kingdom counterpart, is set out in Copinger and Skone James (12th ed., Ch. 1); note also The Modern Law of Copyright, Laddie Prescott and Victoria (1980) paras. 2.1 to 2.8. A number of key concepts, such as what it is that gives copyright, and what precisely the law protects, are not dealt with in the legislation. The confusion created has led to a mass of case law which in general is notable for its refined and sophistic approach to what are very practical matters. This in turn has led to a position in which even simple factual situations cannot be resolved before the courts without many days of hearing, often one or more appeals, and enormous cost. The well-known case of L.B. (Plastics) Limited v. Swish Products Limited (1979) R.P.C. 551-636, consideration of which is important for the present case, is an example. It related to a simple drawer for domestic use. According to the report, its hearing occupied ten days before Whitford J., a Judge much experienced in this field, twelve days before the Court of Appeal and eight days before the House of Lords. As has happened in a number of cases in England, if not most, where successive appeals have been taken, the Court of Appeal reversed the trial Judge, but was itself reversed by the House of Lords, - in both cases, unanimously. Plainly, at least in relation to copyright in drawings said to have been copied by the production of working objects, the protection of copyright by an owner, where it properly exists, is not for the inexperienced or faint-hearted.

The case we are dealing with relates to equipment which, in concept at least, is not particularly complicated, and which is widely used. Argument which, if I may say so, was admirably presented, nevertheless occupied seven days. One conclusion that seems to stand out, is the urgent need for a wholly revised piece of legislation according with modern requirements and values, which can be readily understood and applied.

The scope and function of the legislation is to be understood by reference to the operation of other law in the area of intellectual property, such as that respecting patents and designs. Section 71 of the Act (which is closely similar to s. 9(8) of the Copyright Act 1956 (Eng.)) was plainly introduced (in 1968) in order to limit the copyright protection given to drawings, in relation to the production of objects from them. It is only in relatively recent years that "artistic works" have come to include technical drawings (see per Buckley L.J. in Solar Thomson Engineering Co. Limited v. Barton (1977) R.P.C. 537, at p. 558), and, as a result, for it to be possible for copyright to be infringed by a three-dimensional object which can be said to have been "reproduced" from such drawings. Section 21(3) of the Act is as follows:

"21 . . . .

(3) For the purposes of this Act, an artistic work shall be deemed to have been reproduced -

(a) in the case of a work in a two-dimensional form - if a version of the work is produced in a three-dimensional form; or

(b) in the case of a work in a three-dimensional form - if a version of the work is produced in a two-dimensional form.

and the version of the work so produced shall be deemed to be a reproduction of the work."

The Report of the Copyright Committee (1952) U.K. Cmd. 8662 (the Gregory Committee), to which we were referred, and which is mentioned in several of the cases, has this to say in para. 258:

"The problems of artistic works: (b) Reproduction in 'any material form'. The question then arises how far the reference in Section 1(2) to reproduction in 'any material form whatsoever' would and should cover articles made according to the drawings or designs. It is clear from the present case law, especially the 'Pop-Eye' case to which we have already referred, that an article such as a doll or brooch is to be regarded as a 'reproduction' of a sketch showing the figure forming the design of the doll or brooch. We think that this view, whether it is left to be inferred or perhaps, better still, brought out by some specific provision dealing in the Act with 'reproductions', is a reasonable one, subject to the recommendations we have made above in relation to revision of Section 22 and subject also to the requirement that a reproduction to infringe, must at least be a visible copy of the original work, obvious to the layman. 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 (1936), 155 Law Times Reports page 525) 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 drawings to erect a building or to construct an article based thereon if the result has no clearly visual resemblance to the drawing. Thus, we consider that a limitation (additional to any imposed according to our recommendations in respect of Section 22) 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."

The Report goes on to deal with the situation concerning registered or registrable designs, to which s. 77 of our Act has reference. In relation to s. 71, the particular concern was the relationship between the protection given by copyright law and that given by patent law. A patent is of course a grant of letters patent, and a detailed procedure is prescribed to that end. The grant of a patent may be opposed. In any event, there are a number of requirements, not existing in the case of copyright law, which must be fulfilled before a patent is granted, such as novelty and the need for an "inventive step," and absence of prior publication or prior user, within the jurisdiction. A patent, unlike copyright, creates a monopoly, and enures for sixteen years, unless extended. Copyright does not in general exist in the ordinary three-dimensional object (a building or a model of a building is, by definition (s.10) made an artistic work). It would not exist, for example, in either of the solar heating appliances dealt with in this case. Features, or possibly the whole, of some such appliances could be the subject of patents, if the stringent requirements of patent law were satisfied, but protection against infringement would be for the limited period I have mentioned.

Copyright, on the other hand, enures for fifty years from the death of the author, - a very long time indeed. Copyright does not provide the monopoly which a registered patent does, because it only gives protection against "reproduction". The work may enjoy copyright although it is substantially the same as an earlier work, of which it is not a "reproduction". Nevertheless, the author of drawings can secure a very long-term protection against anyone reproducing them for the purpose of manufacture, whether or not what is depicted can be the subject of a patent; a patent may have been refused. A somewhat similar situation exists in relation to designs, registrable under the Designs Act 1906. The matter can doubtless be looked at from a number of points of view (see, for example, the comments of Whitford J. in the L.B. (Plastics) Case, (supra.) at pp. 569-570), but the considerations I have endeavoured to outline suggest to me that a court should not be anxious to adopt a liberal approach to the protection of the copyright in engineering drawings when an article said to be similar thereto, or similar thereto in substance, is alleged to have infringed. In particular, s. 71 should be given its full effect, according to its ordinary meaning.

Copyright arises because of the skill and labour which the author devotes to the work, and it is only his skill and labour, as shown in the production of that work, which is protected. The standard of skill required is minimal. Many people, perhaps the majority of the population, can produce one or more copyright works within a few minutes. Given that the work is "original", that is to say, the work of the author, there is seldom any question as to whether it is entitled to copyright protection.

A matter much emphasised in this case, as in others which have come before the Court, is that an "idea" conveyed by the copyright work as distinct from the copyright work itself, is not protected. It was submitted on behalf of the appellant that the elements alleged to constitute a reproduction in this case were really the putting into operation of ideas, perhaps those found in the respondent's drawings and its units, but actually, as to many, from outside sources, such as the C.S.I.R.O. This dichotomy between ideas and their expression is apt to be misleading, and to confuse. The work will be the product of some thought or idea, however superficial the intellectual level. In the case of the present drawings, there was obviously much thought given to what form they should take. Some of the work possibly originated with the author or his employers, with little or no reference to existing materials. The idea, however, becomes merged in the work, the form of which is the only subject of copyright protection. A person who reproduces may well, and truthfully, be able to claim that he took the idea, but he will have done so by reproducing the work. On the other hand, he may merely be using an idea, from whatever source he obtained it. It is at least theoretically possible for him to obtain ideas from a source or sources, and to produce a work the same or virtually the same as a copyright work, without himself infringing that work. Difficult questions of fact can arise in determining whether ideas are used, or a reproduction is made.

An aspect of "skill" in technical drawings is that it does not relate to the efficiency of function of an object produced from them. There can readily be copyright in drawings which depict something which will not work, or cannot effectively be produced from them. "Drawing" is defined in s. 10 to include "a diagram, map, chart or plan". The absence of need for artistic quality in an "artistic work" is made plain by the definition of that term in the same section:

"'artistic work' means -

(a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;

(b) a building or a model of a building, whether the building or model is of artistic quality or not; or

(c) a work of artistic craftsmanship to which neither of the last two preceding paragraphs applies;".

Copyright is the exclusive right, among other acts, "to reproduce the work in a material form" (s. 31(1)(b)(i)). In s. 14 it is provided, in effect, that the reproduction of a "substantial" part is to be regarded as a reproduction of the whole. It is established that what is a substantial part is to be judged more by the quality of the work than the quantity. This is a rather vague guide, but nonetheless, when understood in the context of a particular case, is perhaps sufficiently meaningful. Doubtless it involves consideration of the importance of one part of the work in relation to the whole, and to the relative skill which was involved, or may be taken to have been involved (see per Buckley L.J. in Catnic Components Limited and Anor. v. Hill & Smith Limited (1982) R.P.C. 183, at p. 223). As a matter of common sense, the element of quantity remains a consideration. It is established by the authorities that to be a reproduction, the alleged infringing document (or article) need not be identical in all respects, but must, at least closely resemble the copyright work. This is not a licence to make a broad comparison; the question is whether there has been a reproduction, that is to say, a reproduction by copying (Copinger and Skone James, (supra.) para. 458). The word "version" used in s. 21(3), which I have set out above, is I think intended to be largely neutral, but, if taken at all literally, or etymologically, emphasises the need for the object to accord with the drawings. The Shorter Oxford Dictionary gives "translation" as a synonym. In the context of copyright legislation it is to be taken that the element of copying remains to be satisfied before there is an infringement.

Division 7 of Part III of the Act is entitled "Acts not Constituting Infringements of Copyright in Artistic Works". Section 71, to which I have already referred, is as follows:

"For the purposes of this Act -

(a) the making of an object of any kind that is in three dimensions does not infringe the copyright in an artistic work that is in two dimensions; and

(b) the making of an object of any kind that is in two dimensions does not infringe the copyright in an artistic work that is in three dimensions,

if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work."

This section propounds a test sometimes described as "lay recognition". It is undoubtedly difficult to interpret and to apply. In my view, however, these considerations should not be used as a reason for limiting the general thrust of its meaning. If the circumstances stated in s. 71 exist, there is no infringement. A non-expert looks at the three-dimensional object or objects, - in this case the absorber panels and the tank. If they do not appear to him to be a reproduction (i.e., a "version") of the works (two drawings in one case, and one drawing in the other) there is no infringement. It is to be assumed that he will examine carefully the drawings, and the objects said to infringe. He is not an expert in relation to the objects, and his knowledge of how they work will be that of such a person. It is reasonable to assume, and has been accepted in the authorities, that he is also not an expert in reading and understanding engineering drawings. Some he will readily understand. Others, because of their complexity or otherwise, he will not. In the latter case there will be no infringement. It has been laid down that a defendant, in the position of the present appellant, has to establish the "defence" under s. 71.

As a defendant will normally proceed with his case after the plaintiff has led evidence going to prove infringement, it may be useful for some purposes to say that s. 71 operates once a case of infringement has been established, so that concentration is centred on the question whether to the non-expert elements already relied on are apparent. It seems to me, however, that in a case such as the present, at least, it is best to adhere to the test as propounded by the section. The question is whether to the non-expert the object would not appear to be a "reproduction" of the work. The term "reproduction" is seemingly used in a sense which does not include the question of actual copying (see my earlier remarks concerning s. 21(3)). The fact is that s. 71 negates infringement, and is cast in general terms, requiring a visual comparison. It is my view that s. 71 was drafted in its present terms to overcome problems such as I mentioned earlier in these reasons. I should add that in this case no evidence relating to the application of s. 71 was called from a non-expert. I express no view as to whether any such evidence is necessary, or would be admissible, but point out that the test posed by s. 71 was left to be decided by the trial Judge, and has now to be examined by us.

We spent some time inspecting the appellant's product, and were helped by counsel in our understanding of the plans, and their relationship to the product. The respondent's product, said to have been produced from the drawings in question (with minor additions or alterations only) was also in Court. There were also drawings made by the respondent from the appellant's product. The drawings from which the appellant's unit was produced were not in evidence.

The facts have been stated in some detail by Franki J. In relation to the tank, I am of the view that no case of reproduction was made out, and that, in any event, the application of s. 71 means that there was no infringement. The appellant's tank differed in many respects from that depicted in the respondent's drawing of the 300 litre tank (No. 310/43). The history of this drawing was dealt with by his Honour, the trial Judge. The external coverings of the tanks is markedly different; there is plainly no resemblance there. The external shape of the tanks themselves is different. The drawing shows, in cross-hatching, the intended location of something as a lining, while the inside of the appellant's tank has no lining in a corresponding location or at all. The respondent's drawing shows what has been called a sacrificial anode inside the tank; there is no such item in the appellant's tank. Various external fittings are different in shape and size. The dimensions of the tank domes differ. There are other differences.

His Honour relied upon a number of similarities which he regarded as significant. One particular matter he discussed as follows:

"The hot and cold water outlets are in the same relative positions as is the position of the relief valve and all three are on the dome end of the tank when one or more of them might have been elsewhere."

He found a similarity in the amount of insulation provided for between the tank and cover, both above and below the tank. He refers to the insulating material as being identical, but the drawing does not show what material was to be used. His Honour refers to the fact that both hot water outlets are fitted with a scoop, but they are different in shape. The sameness of the relative amounts of water to be above the thermostats was relied upon, but in fact the thermostats themselves are in different positions. Further, there is no indication in the drawing as to the level of water to be held in the tank.

In relation to findings on matters of fact, such as copying and substantiality, a trial Judge has many advantages not enjoyed by an appellate court. In the present case the conclusion about copying was not entirely inferential, but was supported by what in his Honour's view were false or evasive answers given by certain witnesses for the present appellant. Substantiality is a matter of judgment, and the trial Judge has the advantage of forming his over a period, as he hears and considers the evidence. Making as full an allowance for these matters as I can, I am nevertheless of the view that a case was not made of reproduction of plan 310/43. This was indeed the effect of the evidence given on this matter by the draftsman of the plans, Mr. Riley. At the most, it might be said that the appellant got a few ideas from the earlier drawing, or the 300 litre unit itself, but I doubt that this was so to any extent, having in mind what was done and the evidence given on both sides. I feel freer to differ because, as it seems to me, the learned Judge placed undue reliance on considerations of function and other extraneous matters to explain dissimilarities, and thus to affect his judgment on the matters of substantiality and close resemblance. I appreciate, of course, that the question of actual copying was before him, and that the considerations overlap. To take a few passages, he says:

"It is the difference in construction of the cylinders which to some extent results in there being dissimilarities in certain features of the two units. For example, the heating elements though in the same relative position are of different construction."

. . .

"As the Hart cylinder has to be enamelled that process really dictates the position of the hot water outlet. It is undoubtedly desirable to have the hot water outlet as close to the top of the tank as possible to prevent an accumulation of air above the hot water. The Edwards cylinder being of stainless steel allowed greater flexibility as to the positioning of the hot water outlet so there was no need for it to have been put on the dome end as it could easily have been placed on the top of the cylinder wall. Edwards justified the position by referring to past manufacturing experience with other units and difficulties in welding to the top side."

. . .

"The position of the thermostat in the Edwards unit is such that there is within two and a half per cent an equal volume of water above it as in the Hart unit. As has already been mentioned the location of the thermostat in Riley's view was a very important feature to which I have already referred. Edwards senior on the other hand attached no importance to the positioning as he claims it was put in exactly the same position as he had put it on all the units powered by electricity which he had previously manufactured."

His conclusion is expressed this way:

"It is not difficult to visualise from Ex. 4 the configuration of the tank. When I do substantial similarity between the Edwards tank and Ex. 4, that substantial similarity arising by reason of matters of substance rather than precise detail. It follows therefore in my view that those parts of the Edwards 305L which correspond to the drawings show sufficient resemblance to amount to a breach of copyright if the essential element of copying has been established."

What is protected is the drawing, as such. Similarities are similarities because they copy the drawings, and dissimilarities are dissimilarities, whether or not they are to be explained by other circumstances.

In relation to the absorber panels, depicted on plans B310/29 and B310/30, I have examined his Honour's findings in the light of the criticisms I have made, and have looked at the matter for myself.

It is well to bear in mind that the statutory term is "reproduction". There must of course be a copying. The Act tells us that in relation to artistic works, in general, there need only be a reproduction of a substantial part. This is not the same as a substantial copying. The judicial gloss goes only so far as to say that the reproduction need not be precise in all respects, but there must then be a close resemblance or close similarity. Caution must be exercised at this point, because it is often a very short step to bridge the difference by reference to function, that is, to say that while the differences are due to the defendant's decision to change, they result in a performance which the copyright drawings were calculated to achieve. In my view, this is to step out of the proper province of copyright. It really amounts to no more than saying that the idea, or the concept, was copied.

This consideration is, I believe, important in relation to the absorber panels. One aspect relates to the differences in measurements. The small difference in the lengths of the riser pipes, 1920 mm. (Edwards) as against 1865 mm. (Solarhart), taken alone, can be disregarded, but there are many other differences, and they do not in any way, or at any point, result from a reproduction to scale of the copyright drawings. I shall mention others, some of them, if taken alone, being trivial. The spacing between the riser pipes in Edwards is 150 mm., in Solarthart 148 mm.; the widths of the absorber panels is Edwards 998 mm., Solarhart 1020 mm. (there is a protrusion, a cover angle, on the Solarhart panel which adds 2 mm.); the lengths of the panels are Edwards 1975 mm., Solarhart 1934 mm.; the depths of the absorber panels are Edwards 80 mm., Solarhart 70 mm.; the lengths of the header pipes are Edwards 978 mm., Solarhart 1001; the diameters of the header pipes are Edwards 24.5 mm., Solarhart 25.4 mm., their thickness is Edwards 1.2 mm., Solarhart 0.9 mm.; the width of the absorber plates is Edwards 948 mm., Solarhart 988 mm., the length of the absorber plates is Edwards 1905 mm., Solarhart 1850 mm.; the width of the two absorber panels coupled together (including the external header nuts) is Edwards 2021 mm., Solarhart 2072 mm.; the distance between the panels which is occupied by the coupling nuts is Edwards 25 mm., Solarhart 32 mm. There are very few instances where the same measurements are used. One is the diameter of the risers, which are both 12.7 mm., but again there is a difference - their thickness is Edwards 1 mm., Solarhart 0.71 mm.

In an engineering drawing, designed to prescribe what is to be produced, it seems to me that differences such as I have been discussing must be important. It is, I think, very difficult, having in mind the many differences and how they range over the whole unit, to say that the Edwards unit reproduced, or was a "version" of the Solarhart drawings. Plainly, the drawings, even slightly adapted, could not be used for the production of the unit in question. Mr. Riley in his evidence says that reproduction means using measurements on the drawings, to within manufacturing tolerance. There can be no question of the differences to which I have referred being due to manufacturing tolerance.

The learned Judge relied heavily on close similarity in configuration, and the qualitative importance of this aspect, to support findings of copying and resemblance. It is desirable, I think, that I set out in full the relevant passage:

"The evidence to this point compels me to regard it to be reasonable to draw an inference of copying so I should now examine whether this inference can be displaced by evidence showing how the defendant arrived at its design and that it had not done so by copying. So far as the existing literature is concerned I am quite satisfied that it would not by itself have suggested the configuration of the Edwards unit even assuming that one started off upon the assumption of a need for a horizontal tank containing about 300 litres of water. The literature deals only with non-connected services and vertical tanks, that is vertical storage tanks coupled to a remote collector system. It does not deal with correlation between the length of the risers and the phenomenon of thermosyphon. There is no reference in the literature that I could discover relevant to horizontal cylinders. Nor do I find in the literature any necessary correlation which would directly lead the manufacturer to a ratio of four square metres of collector plate to 300 litres of water. Furthermore the literature does not suggest a combination of an aluminium sheet and a copper tube. Indeed Ex. 24 at p.5 says: 'Copper is the current preferred material for both tubes and sheet . . .. At the present time no cheap method of thermally bonding aluminium to copper has been proved in practice'. The configuration of two collector plates of the dimensions shown on the drawings connected together and thence to a horizontal tank has no parallel in any of the literature nor indeed in the practice of competing manufacturers."

It will be seen that his Honour relied upon the novelty of important aspects of the Solarhart equipment, and their appearance in the Edwards unit. At this point it seems to me that his reasoning skirts the borderline between reproduction of the copyright material, and taking an idea it shows. If there was in fact the novelty upon which his Honour relies, there is the consideration to which I have already referred, of attempting to use copyright protection instead of patent (or design) protection. One aspect that seems to have been new (so far as the evidence went) was the placing of the tanks in a horizontal position, lengthwise, as distinct from a vertical position.

His Honour's reasons, as just set out, also tend to discount unduly the published information that was available, particularly in the C.S.I.R.O. literature. For example, the discussion in a pamphlet issued in 1966 gave almost all the guidance necessary in relation to the desirable design of a thermosyphon. Guidance, some of it detailed, was also provided in a pamphlet published in 1964.

I have formed the view that in reading his conclusions on this part of the case, his Honour was giving an extended reach to copyright protection. I am of the view that reproduction was not established in relation to the drawings of the absorber panels (drawings B310/29 and B310/30).

It seems to me that the application of s.71 can and should be considered, notwithstanding the conclusions already reached. I am of the view that the section negatives infringement in relation both to the tank and the panels, and I say this whether or not I am correct in my conclusion that otherwise there were not infringements.

I shall consider the tanks first. It is perhaps sufficient to say that if the non-expert could fully understand the plans, he would observe very little indeed about the appellant's product which would appear to him to be a reproduction of them. The most he is likely to say (leaving aside insignificant matters) is that there are three connections at the end of the tank, which appear in the same position on the drawings, relative to the tank and to each other. However, he will see that they are very different in appearance, and there is nothing on the drawing to account for that. I agree with Woodward J. and Franki J. on this matter.

Concerning the absorber panels (and related units) I have come to the same conclusion as Franki J. I agree in substance with his reasons, but should add some remarks of my own. One matter about which I find difficulty is in assessing the non-expert's interpretation of the drawings. Franki J. has confessed, somewhat modestly I suspect, to "some knowledge" concerning the understanding of drawings. I cannot make the confession of Danckwerts L.J. in Dorling v. Honnor Marine Limited and Another (1965) 1 Ch. 1, at pp.21-22, or the disclaimer of Lord Hailsham in L.B. (Plastics) (supra.) at p.630, as my own training and experience have left me with "some" capacity to read engineering drawings. Nevertheless, one matter which strikes me is that, as a Court of three Judges, we spent much time in seeking assistance from counsel to understand the subject plans, including the legends thereto, sometimes, I suspect, to the point of being told what they were meant to mean. As far as I can recall, counsel were always able to proffer the assistance sought. I cannot help feel that the non-expert, even given all the support from the evidence to which he would be entitled would be at a loss when it came understanding adequately, especially to the point of visualising in three dimensions, the various sectional drawings, separately, or as part of an assembled unit.

The need for an adequate understanding of the drawings, and a visualisation of how a product made therefrom would appear, is emphasised by the consideration that at a first look, the panel part of the appellant's equipment appears very similar to that which is provided for on part of the drawings. This is the bulk of the apparatus; there is a glass covering under which is a rectangular black-coloured surface, with a series of vertical ridges, obviously containing pipes, running the full length of the surface. There is then some ancillary apparatus running horizontally at top and bottom. The number of risers could readily be counted on both drawings and equipment, and found to be the same. The fact is that similar arrangements (not necessarily with the same number of risers) are well enough known, in the industry, and among the lay public.

Closer examination would disclose other similarities between the respondent's drawings and the appellant's product. However, difficulties soon arise in a translation from the drawings to the object of some of the contents of the former. There are dissimilarities, some of them obvious. The differences in dimensions I have already referred to. Some will be readily apparent, some not. The depth of the equipment (10 mm.) will be among the former. The flanges of the absorber plates of the equipment are of a different shape to that provided for in the drawings, - one turns at an angle from the vertical of forty-five degrees; the other is stepped up in two bends, in what has been described as a gull-wing effect. While the drawings show an aluminium reflective foil behind the absorber plates, there is no such provision in the appellant's unit. There are then a number of less obvious differences, some depending on a close understanding of the subsidiary drawings.

In all, I think it likely that the non-expert, even were he able to understand fully the drawings, perhaps would not conclude that there was a reproduction. His first, and I think, insurmountable difficulty would be in understanding the drawings.

The learned Judge dealt very shortly with the application of s. 71 and said that the appellant (the defendant before him) had not satisfied the onus. It may be that where I differ from him most on this question is in the position of the non-expert, and in the knowledge or understanding to be attributed to him. Obviously, this last-mentioned matter is one of judgment, upon which views can readily differ. The question posed by the section is one of fact. If, as in this case, the parties leave the determination of the fact to the Court without evidence, it can be placed in a difficulty. It is inevitable that the Judge will then use his own knowledge and experience. What he must do (and what, I suggest we must do, at one stage removed from the hearing) is to determine the fact, as posed by the section and uninfluenced by, among other matters, expert evidence in relation to the plans, and on the question of reproduction. This is doubtless a difficult disembodiment for a Judge who has heard the expert evidence and formed conclusions on copying and reproduction, and not much less difficult for the appellate court, but it is a task required when s. 71 is to be applied. All I can say is to repeat what I said at the beginning, namely that the Act needs a thorough overhaul, in relation both to concepts and drafting.

There is no need for me to explore the sinuosities of s. 77 of the Act, and I do not do so.

In my opinion the appeal should be upheld with costs. The orders made in the Supreme Court should be set aside and the action there dismissed. The respondent should pay the appellant's costs of the proceedings in that Court. If any question should arise as to the scale of costs, or as to any other particular matter of the nature of those dealt with in other (4) of his Honour's orders, that question is remitted to be decided by the Supreme Court.

JUDGE2

I have had the advantage of reading the draft judgment of Franki J. His Honour has set out the facts of the case, which I need not repeat, and I find myself in agreement with everything he has said about the law to be applied in this appeal.

With one important exception, I also agree with him about the way that law should be applied to the facts of this case. In particular I agree with his acceptance of the learned trial Judge's view that, in spite of a number of minor differences, there was a substantial similarity between the appellant's absorber plate and the absorber plate depicted in the drawings of which the respondent owned the copyright.

I also share Franki J's doubt about the learned trial judge's parallel finding of "sufficient resemblance" (on which to base an action for copyright infringement) between the respondent's drawings and the appellant's storage tank. I do not think I would have come to the same conclusion as the learned trial judge, but I do not find it necessary to decide whether this Court could properly interfere with his Honour's finding on this question of fact.

Again, like Franki J., I can see no reason for this Court to interfere with the trial judge's findings, based on the evidence before him and the view he took of the witnesses, that it was reasonable to draw an inference of copying and that there was no evidence sufficient to displace that inference.

I accordingly approach the question of what Franki J. has described as the "non-expert defence", relied on by the appellant, on the basis that the evidence to that point has established an infringement of the respondent's copyright, at least so far as its absorber plate drawings are concerned.

S. 71 of the Copyright Act 1968 provides

"For the purposes of this Act -

(a) the making of an object of any kind that is in three dimensions does not infringe the copyright in an artistic work that is in two dimensions; and

(b) the making of an object of any kind that is in two dimensions does not infringe the copyright in an artistic work that is in three dimensions,

if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work."

The provision seems to be intended to inhibit the tendency for copyright law to overlap and interfere with well-established principles of patent law, which has become a risk in recent years with design drawings being treated as artistic works capable of copyright protection.

I accept the principles which Franki J. has drawn from the relevant English authorities and the gloss he has added to the effect that a judge applying the test must be credited only with some ability to interpret detailed design drawings. I take this to mean the ability of an intelligent layman who has had occasion to study such drawings from time to time but has never worked with them closely.

It follows from this that I accept also Franki J.'s conclusion that a defence under s. 71 may often be established, on the balance of probabilities, where the drawings concerned are "detailed sectional drawings of a fairly complex three-dimensional mechanical article made up of many parts".

I should say that I have felt some concern about the way in which a Court of Appeal should approach this question of fact. However, because the members of the Court are in just as good a position as the trial judge to make the necessary visual comparison, I have reached the conclusion that it is proper for us to consider the matter for ourselves, while paying due respect to the decision reached at first instance.

Coming then to the act of visual comparison between the relevant drawing (B310/43) and the appellant's tank and associated parts, I have no difficulty in saying that the tank "would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work".

Indeed I would regard this as a very clear example of the proper application of the defence. The general impression received by the non-expert is one of quite striking difference between the drawings and the three-dimensional object. It is only with the help of evidence from experts that one begins to see the points of identity found by the trial judge to be significant. To this extent, therefore, I differ from the learned trial judge and would allow the appeal so far as infringement of copyright in drawing B310/43 is concerned.

My difficulty in this case arises in relation to drawings B310/29 and B310/30 and the requirement to compare them with the appellant's absorber plates and associated parts. Here I find my first impression to be one of broad similarity between the drawings and the three-dimensional products. On closer examination, some points of difference appear but, as Lord Salmon pointed out in L.B. (Plastics) Limited v Swish Products Limited (1979) RPC 552, this is not really to the point. His Lordship said, at p.631,

"The defence . . . . 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".

Applying this test to the appellant's absorber plates and associate parts and the related drawings I believe, with the learned trial judge, that the non-expert defence fails. It is on this issue only that I differ from Franki J.

Since, as I have said earlier, I agree with Franki J. that there are no grounds for interfering with the finding that infringement of copyright has been established in relation to drawings B310/29 and B310/30, and that the defence under s. 77 fails for the reasons given by him, it follows that I would allow the appeal in part only. So far as the formal order of the Court is concerned, I would delete sub-paragraph (3) of paragraph 1, and sub-paragraph (b) of paragraph 3 of the order of the Supreme Court and direct that the appellant be at liberty, if so advised, to apply to the Supreme Court to seek to vary that Court's order as to costs in the light of this judgment. Otherwise I would affirm the orders of the Court. Because the appellant has succeeded on a substantial issue in this appeal but failed on the majority of the issues raised, I believe that this Court should make no order as to the costs of this appeal.

JUDGE3

This is an appeal from a Judge of the Supreme Court of Western Australia in which the learned trial Judge found that the copyright in certain drawings of the respondent had been infringed by the manufacture and sale of certain articles. The respondent, S.W. Hart & Co. Pty Ltd, is a very large manufacturer of solar hot water systems in Australia and the appellant, Edwards Hot Water Systems (a firm), is a major competitor.

The respondent was the owner of three drawings described in the judgment in the following terms:

(a) A drawing entitled "20 Squ.ft. - 300 Litre Standard Solar Panel" depicting a solar water heater absorber consisting of two panels connected together in series and certain details thereof. The drawing bears the identifying number B 310/29. The drawing was made in or about the month of March, 1976. (Exhibit 1).

(b) A drawing entitled "S.W. Hart Standard 20 Squ.ft. Absorber" depicting in detail header pipe connection nuts. The drawing bears the identifying number B 310/30. The drawing was made in or about the month of March, 1976. (Exhibit 2).

(c) A drawing entitled "430 mm 300L Solar Cylinder Assembly Detail" depicting a cylindrical tank of 300 litre capacity encased in insulating material and surrounded by an outer case. The drawing was made in or about the month of May, 1977, and bears the identifying number B310/43. (Exhibit 4).

I will refer to these drawings by their identifying numbers. The author of these drawings was a Mr. Riley, an employee of the respondent.

It was common ground that each of the drawings to which I have referred was an original artistic work and that copyright subsisted in each work pursuant to s. 32(1) of the Copyright Act, 1968 ("the Act"). Section 31(1)(b)(i) of the Act provides, inter alia, that, in respect of an artistic work, copyright includes the exclusive right to reproduce the work in a material form.

Section 36 of the Act provides that copyright in an artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia, of any act comprised in the copyright.

Section 21(3) of the Act provides:

"For the purposes of this Act, an artistic work shall be deemed to have been reproduced -

(a) in the case of a two-dimensional form - if a version of the work is produced in a three-dimensional form; or

(b) . . . . . .

and the version of the work so produced shall be deemed to be a reproduction of the work."

Section 21(4) provides that s. 21(3) "has effect subject to" ss. 65 to 73 inclusive. Section 14(1)(b) provides that unless the contrary intention appears a reference to reproduction of a work shall be read as including a reference to a reproduction of a substantial part of the work. So far as is relevant an "infringing copy" of an artistic work is defined in s. 10 as a reproduction of the work being an article the making of which constituted an infringement of the copyright in the work.

It was conceded at the trial that the respondent was the owner of the copyright in these three drawings, that they were artistic works and that they were original drawings. The appellant commenced to manufacture solar heaters alleged to infringe the respondent's copyright towards the end of 1978 and three units which had been sold are referred to in the particulars, each described as "Edwards Solar Heating System Model 305" ("Edwards L305"). The respondent manufactured a unit of about the same size which I will refer to as "Solahart 300L".

The following issues were before the learned trial Judge and are before us:

(1) Apart from the defences under s. 71 and s. 77 of the Act did the appellant infringe the respondent's copyright in any of the three drawings?

(2) Was the appellant entitled to succeed in a defence under s. 71 of the Act (the "non-expert" defence)?

(3) Was the appellant entitled to the benefit of a defence under s. 77 (the "designs" defence) of the Act?

The learned trial Judge's description of the operation in general of a solar hot water system was accepted by the parties in this appeal. It was:

"Whatever type of system it appears to consist of two fundamental parts: an absorber plate and a storage tank. The absorber plate consists of two header pipes, the top header and the bottom header which are connected by a number of riser tubes. The riser tubes are covered by a plate (collector plate) usually painted black and the plate is encased in the absorber casing, insulated and covered with glass. Cold water enters the system either direct to the bottom header or to the tank and from the tank to the bottom header. The top header is connected to the top of the tank. Hot water is drawn off from the tank. The absorber plate is exposed to the sunlight usually in the southern hemisphere facing the north. As the sun shines through the glass it heats up the collector plate and causes a transfer of heat through the collector plate into the risers and thence from the risers into the water. At the start of the operation the whole of the system is full of cold water. As the water heats up there becomes a difference in density between the cold water being brought to the bottom of the absorber plate and the water in the riser pipes which causes a flow by the cold water falling down under gravity pushing the hot water in the riser pipes into the top header and thence into the tank. The difference in densities is a measurable figure. The flow of water is called thermosyphon. If no hot water is being drawn off the tank and in conditions of maximum sunlight, the tank will fill with hot water. Meanwhile the collector plate continues to get hotter and hotter until it becomes hotter than any of the surrounding area and starts re-radiating energy. Eventually it collects less and less energy until it reaches about 120 degrees centigrade when it stops working completely. In other words it reaches an equilibrium. If no water is drawn off the tank the water will get hotter and hotter during the daylight, but of course there will be heat losses over night, but eventually it will reach a stable or stagnation temperature. The significance of the stagnation temperature is that it is a temperature which the system will reach without any usage under full radiation conditions. In order to overcome the possibility of insufficient sunlight an electric element is added to the tank so as to heat the water to the desired temperature. Coupled with the electric element is a thermostat to regulate the maximum temperature to which the water will reach when being heated by the element. Apart from the thermostat there would also be an auxiliary safety therm cut-out as well as a pressure temperature relief valve.

The description I have given has been a general description but with particular relevance to the 1975 model unit manufactured by the plaintiff."

It will be seen that a solar hot water system of the type under consideration consists basically of three parts: (1) a flat plate solar absorber, (2) a circulation system and (3) a storage tank. I pass now to consider the issues.

The First Issue:

Apart from the defences under s. 71 and s. 77, did the appellant infringe the respondent's copyright in any of the three drawings?

The appellant accepted that there were similarities between the Edwards L305 unit and the drawings but it submitted that these similarities should be related to the common idea underlying both the appellant's and the respondent's heaters reflecting their common source in C.S.I.R.O. Research.

Copinger and Skone James, Copyright, 12th Ed. at paras 456-458, deal with the broad concept of infringement involving copying, and the learned authors say at para 458:

"The foregoing may be summarised by saying that there is no infringement unless it is established that the defendant has produced a work which both closely resembles the plaintiff's work and has been produced by a direct or indirect use of the features of the plaintiff's work in which copyright subsists."

The appellant's argument on this issue was that there was not sufficient resemblance between the drawings or any of them and the Edwards L305 unit for that unit to infringe the drawings or any of them even if copying was established. It was also argued that some similarities were dictated by general ideas and should be given little weight, and that many of the features in the drawings were found in prior publications such as those of the C.S.I.R.O. or in solar heaters produced previously by other persons. The appellant placed some reliance on a case under somewhat different legislation, Hanfstaengl v. Baines & Co. (1895) A.C. 20 where Lord Watson at p. 28 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."

It was submitted that the judgment of the House of Lords in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 W.L.R. 273, which deals with a compilation which set out details of games of football, was another illustration of the same approach. In that case Lord Reid at pp. 276-277, in a much cited passage, said:

"Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial."

Lord Evershed at p. 283 said in relation to what is "substantial" that:

"It will, therefore, depend, not merely on the physical amount of the reproduction, but on the substantial significance of that which is taken."

Lord Pearce at p. 293 said:

"Whether a part is substantial must be decided by its quality rather than its quantity."

Senior Counsel for the appellant argued that one should give very little weight to features of the drawings which were commonplace or, indeed, not original or novel. He referred to what Jacobs J. (as he then was) said in Beck v. Montana Constructions Pty. Ltd. (1964-5) N.S.W.R. 229 at p. 232:

"It is clear I think that the degree of protection of an architectural plan must of its nature be very limited and it seems to me that one of the reasons for the severe limitation in the degree of protection under the law of copyright is that in any architectural plan more than any other forms of literary or artistic production there is a greater element which may be described as common to all plans and that the particular portion of the plan which may be regarded as belonging to the owner of the copyright, the particular features of it and of the expression, must consequently be more limited."

Mechanical drawings must be considered in the same category as architectural plans.

The House of Lords considered the question of the infringement of the copyright in drawings by the manufacturer of three-dimensional articles in L.B. (Plastics) Limited v. Swish Products Limited (1979) R.P.C. 551 ("L.B. Plastics").

At p. 619 Lord Wilberforce, with whom Lord Salmon, Lord Fraser of Tullybelton and Lord Keith of Kinkel agreed, said:

"There can be no copyright in a mere idea, so if all that the respondents had done was to take from the appellants the idea of external latching, or the "unhanding" of components, or any other idea implicit in their work, the appellants could not complain. Nor is there infringement if a person arrives by independent work at a substantially similar result to that sought to be protected. The protection given by the law of copyright is against copying, the basis of the protection being that one man must not be permitted to appropriate the result of another's labour. That copying has taken place is for the plaintiff to establish and prove as a matter of fact. The beginning of the necessary proof normally lies in the establishment of similarity combined with proof of access to the plaintiffs' productions."

At p. 622 His Lordship said:

"Substantiality being a question of quality rather than quantity, there is no doubt, in the judge's words, that the respondents 'copied many of those things which give it its specific individuality'. These he held, in my opinion rightly, as not, taken together, being less than substantial."

In Catnic Components Limited v. Hill and Smith Limited (1982) R.P.C. 183 ("Catnic") a similar question was considered by the Court of Appeal. An appeal on other aspects was taken to the House of Lords. At p. 223 Buckley L.J. said:

"I do not question the principle that in deciding whether what has been reproduced by an alleged infringer is a substantial part of the work allegedly infringed, one must regard the quality (that is to say the importance) rather than the quantity of the part reproduced (see Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 W.L.R. 273, per Lord Reid at p. 276 and per Lord Pearce at p. 293); but 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'. The protection afforded by copyright is not, in my judgment, any broader, as counsel submitted, where the 'artistic work' embodies a novel or inventive idea than it is where it represents a commonplace object or theme."

Although Buckley L.J. was a member of the Court of Appeal whose judgment was reversed in L.B. Plastics, I see nothing in that case to affect what was said by Buckley L.J. in Catnic.

Lord Hailsham of St. Marylebone in L.B. Plastics considered the question of the onus of proof which a plaintiff bears in an action for infringement of copyright and at p. 625 cited the following passage from the speech of Lord Wright in King Features Syndicate Inc. v. O & M. Kleeman Ltd. (1941) A.C. 417 when he said at page 436:

"Here the only evidence of actual copying, direct or indirect, is similarity with regard to the figure, which is a substantial part of the sketch, between the copyright work and the alleged infringement. I think, however, that, where there is substantial similarity, that similarity is prima facie evidence of copying which the party charged may refute by evidence that, notwithstanding the similarity, there was no copying but independent creation."

Lord Salmon and Lord Fraser of Tullybelton agreed with Lord Hailsham of St. Marylebone.

In L.B. Plastics at p. 619 Lord Wilberforce pointed out that there was a striking general similarity between the respondent's article and the relevant drawings and that the respondent had the opportunity to copy an article based on the appellant's drawings and the existence of these facts and certain other relevant matters established a prima facie case of copying which the respondents had to answer.

I proceed to consider drawings B310/29 and B310/30, which depict the absorber comprised of two panels. In general, no argument was presented that, apart from the defences under ss. 71 and 77, these two drawings should not be considered together although the case was pleaded and conducted on the basis that separate copyright existed in each drawing. The learned trial Judge found 15 points of similarity. These were described by the appellant in a schedule presented to us substantially as follows:

1. Diameter headers and risers 1 inch and half inch.

2. Header-riser pipes set-out the same.

3. Riser pipe spacing.

4. Material of pipes - copper.

5. Riser pipe fixing to collector plate.

6. Riser pipe length.

7. Collector plate width.

8. Configuration of absorber panel casing.

9. Absorber plates sit on similar insulation.

10. Glass panel above both plates.

11. Collector plates fluted on vertical edges.

12. Collector plates painted with flat black paint.

13. Riser-header connection at hole punched in header and silver soldered.

14. Connections of header pipes to cold water inlet and hot water outlet and to each other are similar.

15. Two absorber plates of same size connected to each other giving total area of 4 square metres in each case.

In this schedule the evidence was very carefully analysed and each similarity found by the trial Judge was considered and the reason for its incorporation in the Edwards 305L was sought to be explained. It is sufficient to say that some similarities were sought to be explained as common ideas, others as having their source in C.S.I.R.O. documents, others as not being novel or striking. Certain others were said not to show similarity and one or two not to be "a subject of copyright".

It does not follow that a relevant similarity does not exist merely because, for example, the dimensions of a part shown in a drawing and those of the corresponding three dimensional part differ somewhat. Many compilations are prepared basically from a variety of common sources but if one compilation is copied from the other this factor does not prevent a finding of infringement.

Another schedule was presented to us setting out the dissimilarities between the absorber panels depicted in the drawing and the Edwards 305L unit. I do not propose to deal with these in detail.

I agree with the learned trial Judge's view in relation to the absorber plates that "there is a substantial similarity between the Edwards absorber plate and the absorber plate depicted" in the two drawings.

I pass now to consider drawing B310/43 which depicts the tank. Similar schedules were presented to us with regard to this item.

The learned trial Judge found six points of similarity between the drawing under consideration and the tank. They were described by the appellant in the schedule presented to us as follows:-

1. Relative positions of hot and cold water outlets and relief valve.

2. Both hot water outlets fitted with a scoop terminating towards top of cylinder.

3. Volume of water above thermostat in L305 within 2.5 per cent of volume above thermostat in 300L.

4. 60 mm insulation at top in both units. Minor difference 3 mm at bottom.

5. Insulating material same.

6. Position of heating element.

A like schedule was presented to us setting out dissimilarities.

The learned trial Judge reached the following conclusion in relation to the tank:

"It is not difficult to visualise from Ex. 4 the configuration of the tank. When I do that exercise in my view there is a substantial similarity between the Edwards tank and Ex. 4, that substantial similarity arising by reason of matters of substance rather than precise detail. It follows therefore in my view that those parts of the Edwards 305L which correspond to the drawings show sufficient resemblance to amount to a breach of copyright if the essential element of copying has been established."

I am not satisfied that I would reach the same conclusion on this issue, which is simply a finding of fact, no question of any error of law being involved. However, because of the view I take on the second issue, I will not deal with this aspect further. I will proceed on the basis that, for the purpose of consideration of the defence under s. 71, I accept this finding of the learned trial Judge.

Upon the basis that substantial similarity has been shown to exist between the three drawings and Edwards L305, I pass now to a consideration of whether copying was established.

I approach this question by noting the learned trial Judge's assessment of the witnesses. His Honour said that "Wherever there exists in the case a conflict on a matter of expertise I prefer the evidence led on behalf of the plaintiff (respondent). So far as credibility is concerned, that of the witnesses led on behalf of the plaintiff was never in issue, but so far as Edwards senior and junior are concerned, as already indicated, I am unwilling to accept their evidence in a number of important respects." Mr Edwards senior was the senior partner in the appellant firm and Mr Edwards junior an employee of that partnership.

The finding of the learned trial Judge that the appellant had access to drawings B310/29 and B310/30 and the details of Solahart 300L, as manufactured, was not challenged in this appeal.

The learned trial Judge came to the conclusion that it was reasonable to draw an inference of copying in this case unless that inference was displaced by evidence showing that the defendant (appellant) arrived at its design otherwise than by copying and he reached the conclusion that, subject to the question of any defence under s. 71 or s. 77, infringement was established. Since the evidence does not displace the inference which his Honour had drawn with regard to copying, subject to the doubt which I have expressed concerning the question of substantial similarity in relation to the Edwards tank and drawing B310/43, I proceed to a consideration of the other issues upon the basis that infringement of copyright has been established in respect of each of the three drawings.

The Second Issue:

I pass now to consider the question whether the non-expert defence provided by s. 71 was established. This is the critical question.

S. 71 of the Act provides:

"For the purposes of this Act -

(a) the making of an object of any kind that is in three dimensions does not infringe the copyright in an artistic work that is in two dimensions; and

(b) the making of an object of any kind that is in two dimensions does not infringe the copyright in an artistic work that is in three dimensions,

if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work."

Section 71(b) does not differ in any material way from s. 9(8) of the English Copyright Act 1956. The meaning of s. 9(8) was considered by the House of Lords in L.B. Plastics. Lord Wilberforce, with whom Lord Fraser of Tullybelton and Lord Keith of Kinkel agreed, considered the meaning of the section at p. 622. The following principles were there clearly stated:

(a) The section applies only by way of defence and the defendant bears the onus.

(b) It is only to be considered after the issue of copying has been decided and on the assumption that that question has been decided in favour of the plaintiff.

(c) The Judge is entitled to take account of any written matter on the drawing.

(d) The Judge must be credited with some ability to interpret drawings but the comparison is a visual comparison. (emphasis added)

(e) The (non-expert) Judge should not repeat the process which, as Judge with the assistance of expert and other witnesses, he has been copy or not.

(f) The Judge's conclusion on this issue is one of fact.

Lord Hailsham at p. 631, with whom Lord Fraser of Tullybelton also agreed, said that it would be a wrong approach in considering this defence to enumerate dissimilarities which a non-expert would have recognised as dissimilarities since the defence "is concerned with points of resemblance or identity which are really there, but which the non-expert would have failed to recognise as points of resemblance or identity in 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".

Lord Salmon at pp. 635-636 said that the sub-section was "a curious sub-section", that the defendant bore the onus of establishing the defence under it and that it raised solely a question of fact. However curious and difficult to apply the section may be, it also may be thought curious that a technical working drawing of a complex mechanical article should fall within the category of "artistic work".

The Court of Appeal considered this section in Solar Thomson Engineering Co. Ltd. v. Barton (1977) R.P.C. 537. The judgment of the Court was delivered by Buckley L.J., who delivered judgment in the Court of Appeal in L.B. Plastics, and from which the House of Lords allowed an appeal. However I do not find anything in the judgment of the Court of Appeal in Solar Thomson Engineering Co. Ltd. v. Barton which would be affected by what was said by the House of Lords in L.B. Plastics. In Solar Thomson Engineering Co. Ltd. v. Barton a defence under s. 9(8) was considered and the drawing in respect of which infringement was claimed was a sectional drawing of a pulley tyre. It was alleged that this drawing, a sectional drawing, had been infringed by a three-dimensional object and, at p. 559, it was said that "the drawing being a sectional drawing, the notional unskilled observer should be treated as having a sectioned cheek piece in his hand for the purposes of section 9(8)". The drawing in that case was of a simple nature.

It is appropriate to note that, in the field of patents, Judges have been said by the House of Lords not to be experts in the reading or interpretation of photographs and also presumably of drawings. (See generally Van der Lely (C.) N.V. v. Bamfords Ltd. (1963) R.P.C. 61 at p. 71 and Terrell, On the Law of Patents, 12th Edn. para 926). I am of the view that Lord Wilberforce's statement that Judges must be credited with some ability to interpret drawings in considering a defence under s. 9(8) should be read with the emphasis on the word "some".

Section 71 poses the question whether the three dimensional object is a reproduction of the artistic work bearing in mind that s. 14(1)(b) provides that, unless a contrary intention appears, a reference to a reproduction of a work shall be read as including a reference to a reproduction of a substantial part of a work. The question whether a work has been reproduced for the purposes of s. 71 must be decided upon the basis of an examination of the object in the eyes of persons not experts in relation to the objects under consideration. I have cited passages from Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., supra, Catnic Components Ltd. v. Hill and Smith Ltd., supra, and L.B. Plastics, supra, which show that the question of whether a substantial part has been taken depends on "its quality rather than its quantity"; "on the physical significance of that which is taken" and that it is "not any information which it is designed to convey" which is protected.

The complexity of the drawings and the number of parts in the objects under consideration also raise difficulties for the non-expert. He has to imagine a sectioned article by dismantling, in some instances, part of the article under consideration to ascertain what it looks like. Finally he has to weigh up questions such as "the quantity and quality" and "the significance of what is taken" before he can decide whether the three dimensional article is a reproduction of the artistic work.

An examination of these drawings reveals a number of possibly significant features which a person with some ability to interpret drawings, and not an expert in relation to the object, would see in the drawings but would have no idea of their "quality". In addition, there appear to be features in the drawings which a person with only some ability to interpret drawings would not be expected to fully understand and therefore unable to reach a conclusion whether or not they were reproduced in the article. In general, in my opinion, where drawings are detailed sectional drawings of a fairly complex three dimensional mechanical article made up of many parts, the defence provided by s. 71 may often be established on the balance of probabilities.

I have compared the Edwards absorber plates and the other associated parts which are depicted in drawings B310/29 and B310/30 with those drawings. Where necessary, so far as seems possible for a non-expert, I have attempted to visualise the three-dimensional object under consideration as being sectioned so that a comparison can be made with the relevant part of the drawing under consideration. I have performed the task as a person with "some" ability to interpret drawings. As a non-expert in solar water heaters, I find myself of a different opinion to that of the learned trial Judge and I consider that the defence under s. 71 has been established in regard to those two drawings.

I take the same view in relation to the Edwards tank and the associated parts depicted in drawing B310/43. Mr Riley's evidence concerning similarities between the Edwards tank and the drawing was to the effect that the similarities were not numerous and those that did exist were rather of a technical nature and are, I think, unlikely to be evident to a non-expert. I do not regard Mr Riley's evidence on this aspect as being more than useful in determining what were features of a technical nature. I consider that the defence also succeeds in relation to drawing B310/43. I would therefore uphold the appeal.

The Third Issue:

I pass now to consider whether the appellant is entitled to the benefit of a defence under s. 77. Because of the view I have taken concerning the defence under s. 71 it is strictly unnecessary to consider this defence. However, because the question was argued at length and in case the matter should go further, I will deal with this issue.

Section 77 of the Copyright Act 1968 at the time of the hearing provided:

"(1) Where -

(a) copyright subsists in an artistic work;

(b) a corresponding design is applied industrially by, or with the licence of, the owner of the copyright in the work;

(c) articles to which the corresponding design has been so applied (in this section referred to as 'articles made to the corresponding design') are sold, let for hire or offered or exposed for sale or hire in Australia; and

(d) at the time when those articles are so sold, let for hire or offered or exposed for sale or hire, they are not articles in respect of which the corresponding design has been registered under the Designs Act 1906-1968,

the succeeding sub-sections of this section have effect.

(2) During the period of 16 years commencing on the date on which articles made to the corresponding design were first sold, let for hire or offered or exposed for sale or hire in the circumstances referred to in paragraph (1)(d), it is not an infringement of the copyright in the work to do anything that, at the time when it is 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 all articles made to the corresponding design that had, before that time, been sold, let for hire or offered or exposed for sale or hire in those circumstances.

(3) After the expiration of the period referred to in the last preceding sub-section, it is not an infringement of the copyright in the work to do anything that, at the time when it is done, would, if the corresponding design had been registered immediately before that time, have been within the scope of the monopoly in that design as extended to all associated designs and articles.

(4) For the purposes of this section, account shall not be taken of 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 under the Designs Act 1906-1968 by regulations made under that Act for the purpose of excluding from registration designs for articles that are primarily literary or artistic in character 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 those 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 for the purpose of excluding from registration designs for articles that are primarily literary or artistic in character; and

(c) no appeal against the refusal had been allowed before the date of commencement of the proceedings or was pending on that date.

(5) The regulations may make provision for determining the circumstances in which a design is, for the purposes of this section, to be deemed to be applied industrially."

Section 74(1) provided:

"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."

Section 75 provided:

"Subject to the next succeeding section, where copyright subsists in an artistic work and a corresponding design is registered under the Designs Act 1906-1968, it is not an infringement of the copyright in the work -

(a) to do anything, while the monopoly in the registered design subsists under the Designs Act 1906-1968, that is within the scope of the monopoly in the design; or

(b) to do anything after the monopoly in the registered design has expired, that, if it had been done while the monopoly in the design subsisted, would have been within the scope of that monopoly as extended to all associated designs and articles."

These sections deal with the question of what has been called the problem of dual protection under the Copyright Act and Designs Act. The Designs Act 1906 was amended in 1968 (No. 64 of 1968) and the amendments to it and the Copyright Act 1968 were both assented to on the same day.

When the 1968 Copyright Act was enacted it contained the definition of "corresponding design" in s. 74(1) but it did not and does not now contain any definition of "design". One of the amendments made in 1968 was to s. 4 of the Designs Act when a definition of "artistic work" was inserted and it was given the same meaning as in the Copyright Act 1968. A definition of "corresponding design" was also inserted and it was given the same meaning as in Division 8 of Part III, i.e. ss. 74-77, of the Copyright Act 1968. By No. 42 of 1981 the definition of "design" in the Designs Act was amended. Before that amendment "design" was defined in s. 4 of the Designs Act as "an industrial design applicable, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article, or to any two or more of those purposes". After that amendment "design" was defined as meaning "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".

Section 17A was also introduced into the Designs Act in 1968 by No. 64 of 1968 and was amended by No. 42 of 1981. It provides:

"(1) Where -

(a) copyright under the Copyright Act 1968 subsists in an artistic work; and

(b) an application is made . . . . for the registration of a corresponding design,

that design shall not be treated for the purposes of this Act as being other than new or original or as having been published, by reason only of any use previously made of the artistic work unless . . . .".

Sub-section (2) of s. 17A provides that any regulations in force under the Copyright Act 1968 that make provision for determining the circumstances in which a design is, for the purposes of s. 77 of that Act, to be deemed to be applied industrially have effect for the purposes of sub-section (1). Regulation 17, which was introduced by Statutory Rule No. 58 of 1969, is the rule referred to and that provides in substance that for the purposes of s. 77 of the Copyright Act a design shall be deemed to be applied industrially, inter alia, if it is applied to more than fifty articles and that a design shall be deemed to be applied to an article if the design is applied to the article by a process (whether a process of printing, embossing or otherwise) or the design is reproduced on or in the article in the course of the production of the article.

The critical question arising under this defence is whether a design which is not registrable under the Designs Act comes within the words of s. 77(2). The relevant part of that section is that which provides in substance that there is no infringement by the doing of 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 relevant articles. Registration may not be available because what is sought to be registered does not fall within the definition of "design" in the Designs Act or because, for example, under s. 17 of the Designs Act the design is not new or original. Registration may also be excluded because of regulation 20A made under the Designs Regulations SR No. 64 of 1969 and regulation 11 of the Designs Regulations SR No. 72 of 1982. I doubt whether either of those regulations, both of which include a reference to plans, are of significance in the case before us although s. 77(4) excludes designs within these regulations from the effect of s. 77. These regulations refer to "articles that are primarily literary or artistic in character". The respondent before us conceded that its pleadings had not raised any defence that any relevant design was not new or original and it did not seek to show that the question whether any design was new or original was relevant.

The respondent argued that s. 77 at least required "what it calls the corresponding design to be a design within the meaning of the Designs Act". In my opinion there will, of course, be designs which come within the word "design" in s. 74(1) which are not new or original but I consider that, before a design can be a corresponding design within Division 8 of Part III of the Copyright Act, it must satisfy the definition of "design" within the Designs Act. I consider that the words "corresponding design" in s. 77(2) must be read as "corresponding design within the meaning of 'design' in the Designs Act". In Dorling v. Honnor Marine Ltd. (1965) Ch. 1 the question which arose did not involve any question of whether the designs under consideration were new or original, but only whether the relevant designs were otherwise registrable designs.

In that case the decision of the Court was clearly that the sale of an article, the design for which was not registrable because it did not fall within the definition of "design", did not fall within s. 10(3) of the English Act as it was at that time. That section corresponded to s. 77(2) of the Australian Copyright Act. This decision has been the subject of much discussion. It would appear to extend to cases where the design was not registrable because the design was not new or original, although this issue was not specifically determined by the Court.

The next question is: To what does one look in deciding whether the design is registrable? Does one look to the whole of the solar panel in drawing B310/29 and the whole of the articles depicted in drawing B310/30 or does one only look at certain individual items and, if so, which? One problem in this case is that relevant amendments to the Designs Act (No. 42 of 1981) took effect from 1 April 1982, a date prior to the commencement of the hearing of this action. These amendments might well affect the registrability of a design because of the alteration in the definition of "design" and because of the introduction of s. 18 into the Designs Act. This section specifically provides that a design may include features which only serve a functional purpose. In relation to the claim for an injunction it is necessary to consider the position as it existed at the hearing but any question of damages is to be determined under the Act as it stood at the time of any relevant infringing act. The respondent argued that the Court was only concerned with the whole completed article, for example, the whole of the solar panel depicted in drawing B310/29, whereas the appellant argued that one had not only to look at the whole of the article depicted in the drawing but also had to have regard to each object within the drawing.

The learned trial Judge held that the appellant had not established any defence under s. 77. He considered mainly the position under the Act prior to the amendment of the Designs Act which came into effect in 1982. In my opinion his Honour reached the following four conclusions:

(a) As to individual components, his Honour was not satisfied that they were articles within s. 4 of the Designs Act. This conclusion depended to some extent on s. 29, which was repealed by the 1981 amendments, and also to some extent upon the view that an article made in accordance with a registered design was one likely to be delivered for sale and must therefore be marked in accordance with s. 29. However, the amendment to the definition of "article", whereby an article includes part of an article if made separately, may be a significant change.

(b) A design means features that can be judged by the eye in the finished article. His Honour cited Lord Pearson in Amp Incorporated v. Utilux Pty. Ltd. (1972) R.P.C. 103 at p. 121. The absorber plates had no eye appeal.

(c) A design does not include a method of construction.

(d) The various components are in their present form by reason of function and function only.

It is clear that a design, apart from any question of originality or novelty, can only be registered when it falls within the definition of "design" in the Designs Act at the relevant time.

In my opinion there are four questions which arise in deciding whether the 20 squ. ft. - 300 litre "Standard Solar Panel" depicted in B310/29 is a design. They are:

(a) Is the solar panel an "article"? An "article" was defined in the Designs Act prior to the 1981 amendment as meaning "any article or substance" and after the amendment as meaning "any article of manufacture and includes a part of such an article if made separately". It is not clear to me that a complicated technical object, as is depicted in the relevant plans, is an article, but I proceed upon the assumption that it is.

(b) Prior to the 1981 amendment was what is shown in, for example, B310/29 something which can be said to be applicable to the absorber plate? Prior to the amendment of 1981 was there a design applicable for the purpose of ornamentation or pattern or shape or configuration of an absorber plate, and after the amendment was there a design with features of shape, configuration, pattern or ornamentation applicable to an absorber plate? In my opinion the drawing is a detailed sectional drawing of an absorber plate and, notwithstanding the provisions of s. 5 which appeared in the Act before amendment, the drawing could not be registered as a design.

(c) Is the article one which "can be judged by the eye" or, perhaps putting it somewhat differently, can it be said that it "appeals to the eye"? It was held by the House of Lords in Amp Incorporated v. Utilux Pty. Ltd., supra, that the appeal was to the eye of the customer and not to the court. The judgment of the House included the proposition that that design was not registrable because it was dictated solely by function. Their Lordships expressed views which varied to some extent on the question of appeal to the eye and Lords Reid and Donovan said that if the shape was not there to appeal to the eye, but solely to make the article work, then it was excluded from statutory protection. In the present case I do not consider that it has been established that the features shown in what is depicted in B310/29 are features which appeal to the eye. In considering this question I have been prepared to assume, without so deciding, that a design is registrable even where some of the features of shape or configuration are internal features which would not be capable of being seen until the product was dismantled. See P. Ferrero and C.S.pA's Application (1978) R.P.C. 473.

(d) Is the question of function relevant? This was a question which was not entirely clear prior to the 1981 amendment. I interpret the decision in Amp Incorporated v. Utilux Pty. Ltd., supra, as showing that if a shape is chosen not to appeal to the eye but solely to make the article work or to perform functional requirements, no design within the definition in the U.K. Act exists. However, the position under the Australian Act prior to the 1981 amendment may well have been different. This was the view of Wootten J. in British Franco Electric Pty. Ltd. v. Dowling Plastics Pty. Ltd. (1981) 1 N.S.W.L.R. 448 and of Kearney J. in Ogden Industries Pty. Ltd. v. Kis (Australia) Pty. Ltd. (1982) 2 N.S.W.L.R. 283.

In my opinion no detailed argument was directed to which, if any, of the individual items in the relevant drawings, assuming novelty and originality, could be the subject of registration of a design. On the material before us I do not consider that the Court can attempt this task. In addition, the respondent had pleaded that copyright existed in the whole of each drawing.

I have great difficulty in thinking that what is shown in that drawing shows features of shape or configuration that are applicable to any article. What is in fact shown is a fairly complicated piece of equipment. In my opinion the appellant has not shown that the absorber plate depicted in drawing B310/29 or the absorber depicted in B310/30 or the solar cylinder assembly detail depicted in B310/43, even if new or original, could be registered as a design.

In conclusion I mention that I have had the opportunity of reading the judgment of Fox J. who points out the problems which arise from the existing legislation. I agree that the relevant legislation is complex and that it could well be improved. However, my opinion is that most of the difficulty in the present case arises from the attempt to apply concepts appropriate for copyright to mechanical articles of a functional nature which are substantially mass produced and are not in any real sense artistic works. In my opinion the task of providing adequate protection for the originator of such articles lies in the field of patents or designs rather than in the field of copyright. This is particularly so in the case of what I regard as fairly complex scientific articles like those under consideration in this appeal.

Copyright protection for industrial products is considered by some persons to be detrimental to industrial progress. See, for example, "Reform of the Law relating to Copyright, Designs and Performers' Protection" Cmnd 8302, a consultative document presented to the British Parliament by the Secretary of State for Trade in July 1981 at p. 6 paras 12 and 13. It is necessary to bear in mind that the law in Australia in relation to petty patents requires an appropriate level of inventiveness and that the Australian law relating to designs is materially different from that in England.

I agree with the orders proposed by Fox J.