Hosokawa Micron International Inc v Fortune, M. & Filtaire Products Pty Ltd

Re: HOSOKAWA MICRON INTERNATIONAL INC and DUCON MIKROPUL AUSTRALASIA PTY LTD
And: MICHAEL FORTUNE and FILTAIRE PRODUCTS PTY LTD
No. V G245 of 1989
FED No. 655
Copyright and Designs
(1991) AIPC 90-754/97 ALR 615
26 FCR 393/19 IPR 531

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Northrop(1), Lockhart(2) and Gummow(3) JJ.

CATCHWORDS

Copyright and Designs - copyright in drawing dated 1972 - whether capable of registration under Designs Act 1906 as it stood before Designs Amendment Act 1981 - design "dictated solely by function" - meanin of that expression - whether applicable to pre-1981 definition of "design" - relevance of British decisions as to design function.

Copyright Act 1905

Designs Act 1906

Copyright Act 1968

Designs Amendment Act 1981

The Patents, Designs, and Trade Marks Act 1893 (Tas) (1787) 27 Geo III, c. 38 (Imp) (1789) 29 Geo III, c. 19 (Imp) (1794) 34 Geo III, c. 23 (Imp) (1839) 2 and 3 Vict, c. 13 (Imp) (1842) 5 and 6 Vict, c. 100 (Imp)

Patents, Designs, and Trade Marks Act 1883 (UK) (46 and 47 Vict, c. 57)

Patents and Designs Act 1907 (UK)

Copyright Act 1911 (Imp)

Patents and Designs Act 1919 (UK)

Registered Designs Act 1949 (UK)

Copyright Act 1956 (UK)

The Copyright, Designs and Patents Act 1988 (UK)

Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 79 ALR 534

Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited (1990) AIPC 90-667

Kolozsy v K. Biro and Co. Pty Ltd (1971) 2 NSWLR 444

George Hensher Ltd v Restawile Upholstery (Lancs.) Ltd (1976) AC 64

Holdsworth v M'Grae (1987) LR 2 HL 380

Dover, Limited v Nurnberger Celluloidwaren Gabrik Gebruder Wolff (1910) 2 Ch 25

Rogers v Driver (1850) 16 QB 102; 117 ER 817

In re Clarke's Design (1896) 2 Ch 38; (1896) 13 RPC 351

Windover v Smith (1863) 32 Beav. 202; 55 ER 78

Hecla Foundry Company v Walker, Hunter, and Co. (1889) 6 RPC 554; (1889) 14 App Cas 550

Re Wolanski's Registered Design (1953) 88 CLR 278

Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725

Cooper v Symington (1893) 10 RPC 264

Gillard v Worrall (1904) 22 RPC 76

Le May v Welch (1884) 28 Ch D 24

Moody v Tree (1892) 9 RPC 333

Werner Motors, Ld v A.W. Gamage, Ld (1904) 21 RPC 621

In the matter of Bayer's Design (1906) 24 RPC 65 (CA); (1908) 25 RPC 56 (HL)

British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd (1981) 1 NSWLR 448

Ogden Industries Pty Ltd v Kis (Australia) Pty Ltd (1982) 2 NSWLR 283

D. Sebel and Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224

Clive Investments Pty Ltd v Paul Segaert Pty Ltd (1966) 36 AOJP 1577

Mangraviti v Vardi (1976) 2 NSWLR 225

Copyright Owners Reproduction Society Limited v EMI (Australia) Proprietary Limited (1958) 100 CLR 597

King Features Syndicate, Inc. v O. and M. Kleeman Limited (1941) AC 417

Vandervell and Co. v Lundberg and Sons (1915) 33 RPC 60

Tecalemit Ld v Ewarts' Ld (No. 21 (1927) 44 RPC 503

Kestos Ld v Kempat Ld (1935) 53 RPC 139

Stenor, Limited v Whitesides (Clitheroe), Limited (1948) AC 107

Amp Incorporated v Utilux Proprietary Limited (1972) RPC 103

Interlego AG v Tyco Industries Inc. (1988) RPC 343

P.B. Cow Limited v The Cannon Rubber Manufacturers Limited (1961) RPC 236

HEARING

MELBOURNE

#DATE 28:9:1990

Counsel and solicitors for the Appellants: Dr J. McL. Emmerson QC and D. Clarke Esq. instructed by Messrs Barker Gosling

Counsel and Solicitors for the Respondents: J. Burnside QC and P. Pascoe Esq. instructed by Messrs Mulcahy Mendelson and Round

ORDER

Appeal dismissed.

Appellants pay costs of the respondents.

NOTE: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.

JUDGE1

Having come to the conclusion that the respondents to this appeal are entitled to the benefit of the defence provided by s.77 of the Copyright Act 1968, I agree with Lockhart and Gummow JJ. that the appeal be dismissed with costs.

I have read in draft form the reasons for judgment of each of Lockhart J. and Gummow J. and it is apparent that although each of their Honours come to the same conclusion, their reasons differ to some extent. In these circumstances, it is undesirable that I should attempt to express a third set of reasons which could, in the absence of any statement of opinion by the High Court, cause possible greater confusion in this complex area of law. My own line of reasoning is so similar to that expressed by Lockhart J. that I shall merely say that I have reached the same conclusion as his Honour on every point in this case and would dismiss the appeal for the reasons he has given.

JUDGE2

This appeal concerns the meaning of the word "design" as it appeared in 1972 in Division 8 of Part III of the Copyright Act 1968 ("the Copyright Act") and in s. 4 (the interpretation section) of the Designs Act 1906 ("the Designs Act"). The particular question that arises is whether the definition of "design" in s. 4 of the Designs Act in the form which it took in 1972 excluded from registrability a design which was dictated solely by the function of the article to be made in accordance with it. This is the first occasion on which the question has been considered by an appellate court in Australia. The role and meaning of the "function" of an article in copyright and designs law has attracted the interest of courts and writers of legal textbooks for many years.

Although the definition of "design" in the Designs Act was significantly amended in 1981 the questions involved in this case may arise many years hence because 1972 is the relevant year in this case and the rights conferred on the owner of copyright under the Copyright Act continue for the life of the author plus fifty years. The interaction between the Designs Act and the Copyright Act will be discussed later in my judgment.
The first appellant is the owner of copyright in a number of drawings, including a drawing "Std-B-39" dated October 1972 which consists of two sectional drawings of what is known as a Venturi collar ("the drawing").
The name "Venturi" is derived from an Italian physicist by that name who lived from 1746 to 1822. The Oxford English Dictionary defines "Venturi", used attributively:

"to designate a short constriction in a tube between two longer tapered portions that are usually of unequal length but terminate with the same diameter, so that there is a drop in pressure in a fluid flowing through the constriction which may be used to determine the rate of flow or used as a source of suction; also devices having this form and the effect involved."

The respondents copied the drawing indirectly by making a mould of one of the appellants' Venturis, which had been made according to the drawing, and by reproducing the Venturi collar. Prima facie the respondents therefore infringed the first appellant's copyright in the drawing. The respondents assert, however, that they are entitled to rely on the protection given by Division 8 of Part III of the Copyright Act, a submission which was upheld by the Supreme Court of Victoria (King J.).

The proceeding commenced in 1987 when the appellants sought relief in respect of alleged breach of copyright, breach of confidence, misleading or deceptive conduct and passing off. Before the Supreme Court only the allegations as to breach of copyright and breach of confidence were pursued; and before this Court the appeal was confined to questions of copyright.
The first appellant is a United States corporation which has carried on for many years the business of designing, manufacturing and distributing a range of air pollution control and dust collection equipment. The second appellant is the sole and exclusive distributor in Australia for the first appellant of those products. The part of the appellants' range of air pollution and dust control equipment with which this case is concerned is a range of automatic cleaning reverse pulse filters. The operation of this equipment is explained in the reasons for judgment of King J. and need not be repeated here except to say that in general terms its operation involves the induced movement of dust-laden or impurities-laden air from factories or other places served by the equipment into a collector housing which is closed at the top by plates called bag-plates (and also tube sheets) which opens at the bottom into a hopper. Filter bags in the form of cylinders extend vertically downwards from the bag-plates and into the housing. The filter bags are open at the top end and closed at the base. The dust-laden air is caused to move through the walls of the filter bags which retain the dust on their outer surfaces, leaving the air freed of dust to escape through the open end of the filter bag. The deposit of dust on the outside surfaces of the filter bags causes a build up of resistance to the passage of air which is overcome by intermittently releasing blasts of air into the tops of the filter bags. Each momentary inrush of high pressure air flows from air supply pipes to a blow pipe placed above each row of filter bags, through orifices located centrally above the open mouth of each bag, and then through a Venturi fitted to the collector housing in the top of each filter bag. This produces a shock wave ripple effect down through the material of the bag, causing dust deposited on the outer surfaces of the bag to be dislodged and to fall into the hopper. By this means a row of bags is cleaned simultaneously.
At the hearing before the Supreme Court the respondents were alleged to have infringed the first appellant's copyright in thirty-two drawings by their production of twenty drawings including drawings of Venturis. The appellants also claimed breach by the respondents of their copyright in certain brochures. The respondents admitted, subject to the provisions of ss. 77 and 218 of the Copyright Act, that one or other of the appellants owns copyright in the thirty-two drawings. They also admitted that the second respondent infringed the appellants' copyright in four sheets from the second appellant's brochures, the use of the material having ceased before the commencement of the proceeding in the Supreme Court. Other concessions were made by the respondents which are not relevant for present purposes.
King J. found that, subject to the defence under ss. 77 of the Copyright Act, the respondents had infringed the first appellant's copyright in the drawing in a number of respects.
His Honour dealt with the defence raised by the respondents under s. 77 of the Copyright Act, the defence under s. 218 being irrelevant. His Honour found that the design constituted by the drawing was capable of being registered under the Designs Act at the time it was applied industrially, namely, within a year or so following the production of the drawing in October 1972, and that the design constituted by the drawing was "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" within the meaning of s. 4(1) of the Designs Act. His Honour found that the design constituted by the drawing was not a design dictated solely by function and that the visual features of the Venturi made in accordance with the drawing were not dictated by function. His Honour concluded that the production by the respondents of Venturis which indirectly copied the drawing had not therefore infringed the copyright of the first appellant in the drawing.
Section 77(1) of the Copyright Act provides as follows:

"77(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."

The provisions of s. 77 that follow, in so far as they are presently relevant, state that during certain periods of years it is not an infringement of the copyright in a work to do anything that at the time when it was done would have been within the scope of the monopoly in the corresponding design if that 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.
Section 74(1) defines "corresponding design", in relation to an artistic work, as meaning:

"... a design that, when applied to an article, results in a reproduction of that work".

The word "design" is not defined in the Copyright Act but it appears in various sections, though not in a sense which really assists with its definition. The word has been held to have the same meaning in s. 77 of the Copyright Act as it has in the Designs Act: Edwards Hot Water Systems v S.W. Hart and Co. Pty. Limited (1983) 49 ALR 605 per Franki J. at 632; Kevlacat Pty. Limited v Trailcraft Marine Pty. Limited (1987) 79 ALR 534 at 550-551.
Before its amendment in 1981 the Designs Act defined (in s. 4) the word "design" in these terms:

"'Design' means 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."

The Designs Act was substantially amended in 1981 (Act No. 42 of 1981) by the introduction of s. 18 and a new definition of "design", the combined effect of which makes it clear that designs are not incapable of registration by reason only that, in the language of s. 18, "the design consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose". The amendments came into operation on 1 April 1982.
The question before the learned primary Judge with respect to the Copyright Act and the Designs Act and which is before this Court broadly stated is whether the conditions mentioned in s. 77(1) of the Copyright Act are satisfied in the present case.
Counsel for the appellants submitted that, although the definition of "design" in the English Designs Acts from at least 1883 and continuing to the present time, has changed in language from time to time, there has been no substantial change to the meaning of the word. Anything which is in substance a "mere mechanical device" is excluded from the definition of design and therefore the protection of the English Designs Acts. In order to qualify as a design something more than a new shape is required because it has been held by the highest authority in England that "design" as defined by the English Designs Acts involves more than the notion of mere shape; in order to find that there is a design capable of registration it is necessary to find that there is something added of a design and character for the purposes of shape, configuration, pattern or ornament over and above what is required simply to make the device work or, as it is sometimes referred to in the textbooks and cases, something over and above the fundamental form of the article.
It was argued for the appellants that the meaning of the word "design" in the United Kingdom legislation has not changed effectively since 1906 (when the Australian Designs Act became operative) and that "design" in the Designs Act of Australia has the same meaning as it has in the United Kingdom legislation notwithstanding the differences in language from time to time and the various amendments to the definition of "design" in the United Kingdom legislation. The legislative changes in the United Kingdom Act have done no more than to restate the law as it existed from time to time and essentially as it has been since 1883.
It was submitted by counsel for the appellants that the design of the Venturi embodied in the drawing was not registrable under the Designs Act because, by its application, it does not produce visible alteration or embellishment of the fundamental form of the article. The Venturi collar, being the article to which the design has been applied, does not appear to the eye to contain any characteristics over and above the fundamental form of the article and therefore is not a design within the meaning of "design" in the Designs Act. It was argued that a design for a pattern must necessarily produce an alteration in the appearance of the article for it will always involve a substantial addition to the fundamental form and that the design in suit does not do that. In the present case there is simply a mere mechanical device, that is a shape in which all the features are dictated solely by the function of the article and therefore there cannot be a registrable design for it.
Counsel for the appellants submitted that his Honour erred in finding that the design constituted by the drawing was not a design dictated solely by function and in finding that the visual features of the Venturi made in accordance with the drawing were not dictated by function.
Counsel for the respondents submitted that there is no hint in the English cases decided before the 1919 amendments to the English Designs Act that references to a mere mechanical device are references to something which has features which are functional only. The point of departure between the early authorities and the current position in the United Kingdom is found in Tecalemit Limited v Ewarts Limited (No. 2), (1927) 44 RPC 503 especially per Romer J. at 508 and later in Kestos Limited v Kempat Limited (1935) 53 RPC 139, in the judgment of Luxmoore J. at 151, who held that a "mere mechanical device is a shape in which all the features are dictated solely by the function or functions which the article has to perform" and relied on Tecalemit as support for that proposition. It was submitted that these cases were wrongly decided and that neither of them used the expression "mere mechanical device" in a way consistent with its use in the cases decided in England before 1919. Counsel for the respondents submitted that there is no warrant in the Designs Act of Australia to exclude from registration a design which does not contain features irrelevant to the function of the device.
Counsel for the respondents argued that the primary Judge correctly held that the design of the Venturi was not dictated solely by function and that this finding was amply supported by the evidence.
I turn first to the question of whether a design was capable of registration under the Designs Act in 1972 if the design was dictated solely by the function of the article to be made in accordance with it.
Broadly speaking s. 77 of the Copyright Act has the effect of depriving the owner of copyright from copyright protection if the owner could have registered a design but did not do so.
The relevant form for present purposes of the definition of "design" in the Designs Act is the form which it took before the 1981 amendments came into force because the drawing is dated October 1972 and it is the only drawing in issue on the appeal.
It was not disputed that the drawing was used by the appellants in trade to make Venturi collars, so no question arises as to the industrial application of the design. The question is whether there was a "corresponding design" which the appellants did not register under the Designs Act.
The opening words of the definition of "design" in s. 4 of the Designs Act, as it stood before the 1981 amendments, involve a tautology. This aspect of the definition has been much criticised by courts and authors of text books for many years as the tautology was present as long ago as 1883 in the English Designs legislation. The design must be an industrial design applicable to the purpose of ornamentation or pattern or shape or configuration of an article or any two or more of those purposes. The purpose which underlies the notion of an industrial design is ornamentation, pattern, shape or configuration. Ornamentation or pattern will generally be revealed by a simple inspection of the design of the article. But a problem arises with shape which has bedevilled the courts for a long time, namely, whether the word "shape" in the definition includes a mere mechanical purpose or function or as it is sometimes called in the cases "a mere mechanical device". Also, a further problem arises in relation to shape because it is the design which is protected, not the article made according to the design.

The English cases on the English Designs legislation since 1883 to the present time require close scrutiny because a proper analysis of them holds the key to the question whether a shape may itself be a design or, put another way, whether shape in which all the features are dictated solely by the function of the article can be a design for the purposes of the Australian Designs Act prior to the 1981 amendments.
It is necessary therefore to go to the law that existed after the English Patents, Designs and Trade-marks Act 1883, s. 60 of which defined "design" as:

"any design applicable to any article of manufacture or any substance artificial or natural or partly artificial and partly natural whether the design is applicable for the pattern or for the or configruation or for the ornament thereof or for any two more of these purposes by whatever means is applicable ...within the protection of the the protection of the Sculpture Copyright Act of 1814."

This early definition distinguished between the design itself and the article to which the design was applied, a distinction inherent in Designs legislation. Also, pattern, shape, configuration or ornament were treated as being a purpose of the design.

The 1883 Act was amended in 1907 so that the definition then read:

"Any design (not being a design for a sculpture or other things within the protection of the Sculpture Copyright Act, 1814) applicable to any article, whether the design is applicable for the pattern, or for the shape or configuration, or for the ornament thereof, or for any two or more such purposes, and by whatever means it is applicable, whether by printing, painting, embroidering, weaving, sewing, modelling, casting, embossing, engraving, staining, or any other means whatever, manual, mechanical, or chemical, separate or combined."

A new definition was introduced into the English Act in 1919 when "design" was defined as meaning:

"The features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by the eye; but does not include any mode or principle of construction, or anything which is in substance a mere mechanical device."

The last words in the 1919 definition relating to the appeal to the eye and not including mode or principles of construction or anything which is in substance a mere mechanical device were inserted for the first time by the Act of 1919; but in my opinion simply state in statutory form what had previously been said to be the law in many decided cases. To understand how this comes about it is necessary to go to the early cases.
First, Le May v Welch (1884) 28 Ch D 24. Like many of the early cases this case was concerned with articles of clothing, the particular article being a design for a shirt collar.
In the Court of Appeal Baggallay L.J. said, in relation to the 1883 Act, at 33:

"In order to justify the registration of a design, especially with reference to such matters as collars and other articles of dress which are in constant and daily use, there must, according to my view of the case, be some clearly marked and defined difference between that which is to be registered as a new design, and that which has gone before. If the difference of half an inch in the placing of a stud, or any other similarly trifling difference from previous designs, were to be taken as justifying registration of a design for a collar, no one could have a collar made in his own house by his servants without running the risk infringing some registered design. It would be oppressive in the extreme, if any trifling change in the shape of such an article as this, would justify the registration of the design so as to preclude all the rest of the world from from making an article of the same or like form. Upon this ground it it appears to me the case is not brought within the 47th section section of the Act, which on permits registration of a new or original design. In my opinion this is not new or original design, the registration of it therefore was a mistake, and

the register ought to be rectified by its removal."

Bowen L.J., in an oft cited passage, said at 34:

"We must not allow industry to be oppressed. It is not every mere difference of cut, every change outline, every change of length or breadth, or configuration, in a simple and most familiar article of dress like this, which constitutes novelty of design. To hold that would be to paralyse industry and to make the Patents, Designs and Trademarks Act a trap to catch honest traders. It cannot be said that there is a new design every time a coat or waistcoat is made with a different slope or a different number of buttons. Tailoring would become impossible if such were law, and it dows not appear to me that such is the law. There There must a mere novelty of outline, but a substantial novelty in the design having regard to the nature of the article."

His Lordship concluded with these words at 35:

"It would be a most dangerous view of this Act to allow a design which presents no other element of novelty than this, to have the benefit of registration."

Fry L.J. said at 37:

"I think that unless the design be in substance either novel or original, it is not novel or original with the meaing of the Act. ... That brings me to the second question, was the design of the Plaintiffs substantially novel or original? That is a question which clearly must be answered mainly by the eye."

Le May v Welsh like many other cases emphasises the point that a design must be something substantially novel or original, something out of the ordinary, a matter to be judged by the eye; something more than a mere new shape is required for registrability of a design.
The next case to which I propose to refer is Cooper v Symington (1893) 10 RPC 264. It too is a clothing case, but this time about corsets. Chitty J. said at 267:

"It is argued for the plaintiff, in substance, that a design may be well registered under the Act, although the thing to which the design is applied is also in the nature of an invention, as a new manner of manufacture within the realm. I accede to the argument to this extent, that a design which is otherwise registrable is not the less registrable because the article to which it is applied is also useful, but I consider that this ticket is a matter of considerably importance for the decision of this case because the plaintiff, when he puts his article with the design on the market, does not refer to the design but refers to the thing as being a new method for more conveniently dealing with the busk. He does not more conveniently dealing with the busk. He does not say, by way of invitation to the public, 'Buy this because the design is taking, because 'it is ne and beautiful' or anything of that sort: he makes no reference to it as a design. Now, without repeating the definition or explanation of the the term 'design', as used in this part of the Act of Parliament, it is obvious that a design, to be within this part of the Act, is something which appeals to the eye ... I come, therefore, to the question of novelty and originality, that seems to me that so far as design within the proper meaning of the Act of Parliament is concerned, there is not novelty or originality in the plaintiff's design sufficient to justify the registration. The eye must be the ultimate judge of design; ..."

Chitty J. therefore drew a distinction between a "design" as defined in the 1883 Act and "design" in the nature of an invention. At 268 his Lordship said:
"The plaintiff apparently has a very useful article, but the plaintiff has
fallen, as others have fallen before, by not observing the distinction
between a statutory design and an invention the subject matter for a
patent."
Moody v Tree (1892) 9 RPC 333 was about a design for baskets. The Divisional Court (Baron Pollock and Vaughan Williams L.J.) held that the design, which was a picture of a basket that had been registered, was not a design within the meaning of the Act of 1883 but in reality a process or mode of manufacture and that a design must be something appealing to the eye and separate from the object to which it is applied. This is an example of a number of cases which draw the basic distinction between a design capable of registration under the Designs legislation and a mode or method of manufacture. Baron Pollock said at 235, when quoting what was said by Lord Herschell in Hecla Foundry Company v Walker, Hunter and Co. LR 14 App Cas 550 at 555:
"It seems to me therefore that the eye must be the judge in such a case as
this, and that the question must be determined by placing the designs side
by side and asking whether they are the same, or whether the one is an
obvious imitation of the other."
Baron Pollock went on:
"That appears to me to come to this:- that where you have a subject matter
registered under the Designs Act as a design you have no right to enquire
with reference to its utility, either per se or when compared with other
designs which have preceded it; because it is not the subject matter of a
patent that is being discussed, but it is the subject matter of a design,
and the Designs Act was intended to add to the Patent Act by making that
which was not patentable the subject of a design."
There then followed a passage which has been frequently cited:
"Now there may be many things which might be said to answer both
purposes. A man might register a design for a doorway made with
bronze, and made with a figure of the Apollo Belvedere, that might or
might not be better or worse than a doorway that had preceded it; but it
would be foreign to the question altogether whether it was properly the
subject matter of a design, and whether it was new as a design under this
Act, although it had none of those advantages. The only question then
would be this: you must use your eye and say, looking at the figure or the
design, whether it is new or it is not, and beyond that you cannot go.
That seems to me to strengthen the argument here on behalf of the
Defendant, because the question we have to ask ourselves is this: not
whether this is a novelty with reference to any improvement in a
vessel for the holding of ripe fruit or not - not whether there has
been any such change or variation as makes this new in itself and
different from other baskets that have gone before, but we have to
consider solely the question that the judge asks us:- was this a
design which was the proper subject for Registration. I cannot help
I cannot help thinking, the more I look at the question, and considering
it is under the Designs Act, that this was not the subject of a design
Here is a basket, a perfectly well known thing as an article of
commerce and as an article which is made for the carrying of a great
number of things of all sorts and kinds and made and shaped in different
shapes for that purpose. But I do not gather from the evidence, and I do
not gather from anything I know myself of baskets, or that anyone has
suggested, that these baskets are treated as objects of art or as things
that are pleasing to the eye, and that it matters therefore, for that
purpose, whether the configuration is in one way or in another. It
may be more convenient for certain purposes and to carry out the uses
and objects for which they are intended that one configuration should
be adopted rather than another, and there may be a question as to the
novelty of the configuration in that sense between one basket and
another, but it seems to me to be alio intuitu altogether to speak of
the word 'configuration' as applicable to things of this kind. One
might go through a great number of instances in which an alteration,
or a slight variation between one article and another article of a
similar kind would gain some purpose, but it never would be said for
a moment it was in the mind of the person who made that alteration
that he intended to alter the configuration for the configuration's
sake, or in any way (to use Lord Herschell's words) to please the
eye. It seems to me it is for an entirely different object, and
therefore that this does not come within the Designs Act at all."
At 236 his Lordship said:
"Here was a basket which, if new and useful, would have been the
proper subject of a patent, but being neither new nor useful, in the sense
of a novel usefulness, it was found it could not be patented, and,
therefore, the owner set to work and endeavoured to convert it into a
design that could be registered under the Act. It seems to me that to
allow that would be to do something that was entirely foreign to the Act
itself, and would hamper commerce and interfere with trade
unnecessarily, without giving any commensurate advantage to the trade or
the world at large."
Vaughan-Williams J. made observations to similar effect including the following at 236:
"In my view the design within the terms of that definition (s. 60 of the
1883 Act) must be capable of an existence outside the article itself
altogether. It must be something that one can apprehend and something
which if one has it presented to one's eyes, one can see externally
to the article to which it is to be applied or to which it is
intended to be applied. If that view is right a mere mode of
manufacture is not a design at all. It is not something which is
capable of existence as a pattern, or as a shape or configuration, or
as a piece of ornamentation to be applied to an article or class of
articles, and when one looks at the thing which was registered as
and for a design under this Act one sees a mere picture of a basket which
is not intended to represent to anyone a peculiar shape or pattern of
basket or any form of ornamentation of basket; ..."
At 237 his Lordship said: "What it does embody is simply a mode of manufacture" and proceeded to hold that what was said to be a design was not a design at all and was not capable of registration.
In Re: Clarke's Registered Design (1896) 13 RPC 351 was concerned with the design for an electric lamp. It was held by the Court of Appeal (Lindley, Lopes and Kay L.JJ.) that there was no substantial novelty in the design as a whole and that it must be expunged from the Register of Designs under the 1883 Act. At p 358 Lindley L.J. said of the word 'design' where used in s. 60 of the 1883 Act:
"It must be taken to be used in its ordinary signification of something
marked out, a plan or representation of something. The subsequent
words, however, show that this Act does not extend to all designs, but
only to such as are applicable to some article of manufacture. ... this
Act is confined to designs applicable to manufactured articles, and
to the application of such designs to such articles. Again, the Act
applies to the design to the things to which a design is applied; the
Act applies to the design applied to them. The distinction is
obvious enough when the design is for a pattern or ornament; but
when, as in this case, the design is for the shape of a thing, the
distinction is reduced to the difference between the shape of a thing
and a thing of that shape. A design applicable to a thing for its shape
can only be applied to a thing by making it in that shape. A design for
the shape of something is what is meant by section 60 when shape is in
question; and a registered design for a shape of a thing is infringed if
that thing is made in the shape shown by the registered design (see
section 58). ... the Statute applies to all such designs as are within
it, whether they add to the utility of the articles to which they are
applied or whether they do not. The question of utility is wholly
immaterial in considering this Act of Parliament. ..."
Lopes L.J. made similar remarks at 361.
In the matter of Bayer's Design (1907) 24 RPC 65, another case concerning the design for a corset, it was held that the design in suit was an illustration of a method of manufacture and therefore was not capable of registration as a design and secondly, that even if it was capable of registration, the method of manufacture was not novel. The observations in particular of Vaughan Williams L.J. at 73-75, Fletcher Moulton L.J. at 76 and 79 and Buckley L.J. at 801 emphasised the distinction between a design and an invention, that a design must appeal to the eye and that a design must be a thing which exists apart from its expression. The design was held to be not capable of registration.
Dover Limited v Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910) 2 Ch 25 concerned the design for a grip for bicycle handles. Buckley L.J. said at 28 in a passage that has been frequently cited and with reference to the definition of "design" in the Patents and Designs Act 1907 (Eng):
"Design means, therefore, a conception or suggestion or idea of a shape
or of a picture or of a device, or of some arrangement which can be
applied to an article by some manual, mechanical or chemical means. It is
a conception, suggestion or idea and not an article which is the thing
capable of being registered. It may, according to the definition clause, be
applicable to any article whether for the pattern or for the shape or
configuration or for the ornament thereof (that is to say, of the article),
or for any two or more of such purposes. The design, therefore, is not the
article, but is the conception, suggestion or idea of a shape, picture,
device, or arrangement which is to be applied to the article by some one
of the means mentioned in the definition clause. It is a suggestion of form
or ornament to be applied to a physical body."
Simmons v Mathieson and Co. Limited (1911) RPC 486 concerned a registered design for the shape and pattern of the body of a children's carriage. Fletcher Moulton L.J. said at 489:
"The registration of a Design cannot give any rights unless that Design is
new or original. It was never intended that persons in their trade, in
which they are not only justified in using but bound to use the skill, which
they have acquired during years of practice, in making variations of the
shape of the articles they produce, should be harassed by persons
claiming a monopoly in Designs if those are really matters that are open to
the public. You must have something new before the law will allow you
to get any monopoly at all."
Buckley L.J. said at 491:
"In order to render valid the registration of a Design under the Patents and
Designs Act 1907, there must be novelty and originality, it must be a new or
or original Design. To my mind, that means that there must be a mental
conception expressed in a physical form which has not existed before,
but has originated in the constructive brain of its proprietor, and
that must not be in a trivial or infinitesimal degree, but in some
substantial degree. The intention of the Act is to protect a person who
has conceived and expressed in a physical form, the idea of something
which is new or original as a Design."
It is in the light of these decisions, and others in similar vein, that the amendments which are set out earlier were made to the English Act in 1919. The cases establish in my opinion that the amendments made to the definition of "design" in the 1907 Act and the 1919 Act did not introduce a change into the law, but simply stated principles which had already been established by the cases. The amendments operated as codification of the case law. In particular, I cannot accept that the amendment made in 1919 introduced for the first time into the Designs legislation of England the notion that, if a design is to be a "design" within the meaning of the Designs legislation, upon application to an article it must produce some visible alteration to the fundamental form; it must appear to the eye to contain characteristics over and above the fundamental form. This had then been the law for a long time. Fundamental form of an article was described by A.D. Russell-Clarke in his work on Copyright in Industrial Designs 1st ed, 1930 at p 12 as "those primary essential features which are the property of the fundamental article".

This passage was approved by the High Court in Malleys Limited v J.W. Tomlin Pty. Limited (1961) 35 ALJR 352 where Taylor, Menzies and Owen J.J. in a joint judgment said at 352:
"The answer to these contentions lies, we think, in the recognition of
what is essential to distinguish a design from a mere shape. It is, of
course, true that every shape is not a design; there must be 'sufficient
individuality of appearance' to distinguish it from what Russell-Clarke in
Ch 2 of his book Copyright in Industrial Designs aptly describes as 'the
fundamental form' of an article. Furthermore, the existence of that sort of
individuality is to be determined by the eye and not by measuring
dimensions. It follows that a design need not have the precision of a
working drawing; it concerns the shape or configuration of an article, as it
appears to the eye."
The learned author said of the words which appeared in the definition of the Act of 1919 "which in the finished article appeal to, and are judged solely by the eye":
"This part of the definition and all that follows was inserted for the first
time by the Act of 1919. It lays down what had been stated to be the law
in many decided cases (followed by references to Cooper v Symington;
In Re Bayer's Design and Harrison v Taylor 4 H and N 815 at 819). As to
what is meant by appealing to the eye, it is obvious that any appeal must,
in fact, be to one or more of the senses through the eye, as the eye itself
is no more than a mere medium through which impressions are conveyed
to the mind. ..."
Of the words which appeared for the first time in the definition in the Act of 1919 "but does not include any mode or principle of construction, or anything which is in substance a mere mechanical device" Russell- Clarke said at 14:
"By the present definition, mere mechanical devices are excluded, as is
anything which amounts to a mode or principle of construction. The
reason for specifically mentioning them as being excluded arose from the
fact that, in the past, attempts were frequently made to obtain by design
registration a monopoly in things of this kind, which were not really
designs at all, and, in fact, registrations were often obtained for things
of this character.
The Courts, however, never lost sight of the true nature of a design, and
invariably declared these unsatisfactory registrations to be invalid. The
present words, by specifically excluding mere mechanical devices, and
modes or principles of construction, substantially summarize what was
constantly being laid down in these cases, and thus make clear by statute
what had already been interpreted by the judges to be the law. In
interpreting the meaning of the words, very great assistance is, therefore,
to be obtained from a perusal of the decided cases. Though mere
mechanical devices, and modes or principles of construction are on the
same footing, in that they should both properly be the subject of a patent
and not a design, they are, of course, not identical, and require separate
consideration."
The learned author then proceeded to discuss "mere mechanical devices" and at 15-16 said this:

"No mere mechanical device, i.e., no shape in which all the features are dictated solely by the function of the article, can be a design.

A mere mechanical device is a shape in which all the features are dictated

solely by the function or functions which the article has to perform. It is,

in fact, the fundamental form, or something differing therefrom by only

minute variations. Such a shape cannot be registered as a design. If a

man invents an article, i.e. if he is the first person to ever produce an

article to fulfil a particular purpose or purposes, though he may take out a

patent for it, he cannot by registration of a design obtain a monopoly in

that article. He can only have a design for a particular form of the

article and that particular form must possess some features beyond

those which are essential for the thing to fulfil its main purpose or

purposes.

The fact, however, that some advantage, whether mechanical or

otherwise, apart from the main purpose of the article, is incidentally

derived from the adoption of a particular shape does not of itself exclude

that shape from registration as a design. Whether any such advantage is

obtained or not is quite immaterial. Provided the shape, as a whole,

complies with the requirements of a design, that is provided it is capable

of giving to the article to which it is applied a definite individuality of

appearance, which renders it distinguishable from the fundamental form,

it will be registrable even though some mechanical advantage

necessarily follows from the shape in question. In other words, it is only

mere mechanical devices, i.e. devices which fail to produce the requisite

individuality of appearance in the article to which they are applied which

are excluded. ... A mere mechanical device, however, if protectable at all,

can be the subject of a patent only, and not of a design. ... Anything

which amounts to a mode or principle of construction is also

specifically excluded. A mode or principle of construction is a

process or operation by which a shape is produced, as opposed to the

shape itself."

In my opinion these passages from Russell-Clarke correctly state the law as it existed in England both before and after the amendments to the definition of "design" in the 1919 Act and correctly stated the law in Australia in 1972. See Tecalemit; Kestos; and Stenor Limited v Whitesides (Clitheroe) Limited (1948) AC 107 per Viscount Simon at 122 and Lord Porter at 126 and 128. In Stenor Viscount Simon said at 122 that a design which is a shape in which all the features are dictated solely by the function which is to be performed by the article to which the shape is applied and where the shape possesses no features beyond those necessary to enable the article to fulfil its function, is not registrable. To similar effect was the speech of Lord Porter at 126-8. Lord MacMillan concurred in the speech of Viscount Simon. Lord Uthwatt expressed views to the same effect at 139. In Edmunds and Bentwich, The Law of Copyright in Designs 2nd ed. 1908 similar views are expressed at pp 20- 25 to those of Russell-Clarke. See also Turbo Tek Enterprises Inc. v Sperling Enterprises Pty. Limited, (1988) 13 IPR 368, a decision of Northrop J. and on appeal 88 ALR 524.
Extensive reference was made in argument to the judgment of the House of Lords in Amp Incorporated v Utilux Pty. Limited (1972) RPC 103. That case concerned the Registered Designs Act 1949 (U.K.) which redefined "design" to read as follows:
"In this Act the expression 'design' means features of shape,
configuration, pattern or ornament applied to an article by any industrial
process or being features which in the finished article appeal to and are
judged solely by the eye, but does not include a method or principle of
construction or feature, shape or configuration which are dictated solely
by the function which the article to be made in that shape or configuration
has to perform."
The significance of Utilux for present purposes is that the Court of Appeal and the House of Lords considered the meaning of the expression "dictated solely by the function which the article to be made in that shape or configuration has to perform" in the negative part of the 1949 definition. The Court of Appeal held that features of a design were dictated solely by the function which the article had to perform only when the article's function for successful performance required that it be made in that shape and in no other. The House of Lords reversed the Court of Appeal. The appeal to the House of Lords turned principally on two questions, namely, whether the features of the design in suit were dictated solely by function and whether the design appealed to and was judged solely by the eye. Lord Reid referred to Kestos where Luxmoore J. had said that "a mere mechanical device is a shape in which all the features are dictated solely by the function or functions which the article has to perform" and said at 109 that in his view:

"I think that he (Luxmoore J.) probably meant that all the features served purely functional purposes and that no feature was there for any other purpose."

Lord Reid rejected the view that a shape is only dictated by function if it is necessary to use that precise shape and no other in order to perform the function because:

"... if that is the meaning the scope of this provision would be reduced

almost to vanishing point because it is difficult to imagine any actual case

where one shape and one shape alone will work."

His Lordship said:

"If the purpose of the Act was to give protection to a designer where

design had added something of value to the prior art then one would

expect an exclusion from protection of those cases where nothing has

been added because every feature of the shape sought to be protected

originated from purely functional configuration".

He referred at 110 to Stenor with apparent approval and then said:

"If the shape is not there to appeal to the eye but solely to make the

article work then this provision (the 1949 definition) excludes it from the

statutory protection."

Lord Morris of Borth-y-Gest noted that the language of the 1949 definition of "design" differed from the language contained in the 1919 Act and in earlier Acts and that in the 1919 Act there had been an exclusion of anything that was in substance a mere mechanical device. His Lordship said that the words of s. 1(3) in the 1949 Act "follow words judicially used in reference to and by way of definition of the expression 'mere mechanical device'" and he referred to Kestos, Tecalemit and Stenor. His Lordship regarded the expression "mere mechanical device" as being a shape in which all the features were dictated solely by the function or functions which the article has to perform (114). He adopted (at 114-115) a view substantially the same as that which appealed to Lord Reid and rejected (at 114) the view of the Court of Appeal that features of a design are dictated solely by the function which the article has to perform when the article's function for successful performance requires the article be made in that shape and in no other. Viscount Dilhorne adopted the same view at 116-118. Lord Donovan agreed with Lord Reid at 119.
Lord Pearson regarded the substitution of the reference to features of shape or configuration which are dictated solely by the function of the article introduced into the 1949 definition of "design" as not intending a change of meaning from the earlier statutory phrase "a mere mechanical device" as interpreted by the Courts, but rather "to express more clearly the meaning intended by the phrase in the Act of 1919" as embodied in the formula of Luxmoore J. in Kestos at 151. His Lordship adopted in substance the view expressed by Lord Reid as to the meaning of the negative part of the definition related to function.
In Interlego A.G. v Tyco Industries Inc. (1989) AC 217 the Privy Council followed the view expressed in Utilux that a shape was dictated solely by function if its relevant features were brought about by or were attributable only to the function which the article in that shape was to perform, even if the same function could be performed by an article of different shape.
Lord Oliver of Aylmerton who delivered the opinion of the Privy Council in Interlego referred to the problems of interpretation and application that arise from the exclusionary reference in the definition of "design" in the 1949 Act to features of the shape or configuration which in the finished article appeal to and are judged solely by the eye, including the reference by Lord Reid in Utilux in the last two paragraphs of his speech to the exclusion operating even though the shape may also have eye-appeal. Lord Oliver said (at 244) that that proposition had been the subject matter of a good deal of debate before their Lordships in Interlego "principally because of the views of Lord Reid which were expressed with less than his customary clarity, at p 110, in the last two paragra phs of his speech".
The requirement present in the English Act of 1949 with reference to judging features "solely by the eye" is not an element appearing in the language of the Australian definition in the 1909 Act and there is no reason to incorporate it by judicial gloss upon the words of the statute.
In my opinion Utilux and Interlego provide strong support for the view that features of a design are dictated solely by the function which the article has to perform, not when the article's function for successful performance requires that it be made in that shape and in no other, but when the relevant features of the shape are brought about solely by or are attributable only to the function which the article in that shape is to perform even if the same function could be performed by an article of different shape. The essence of the registrability of a design is that it has an element of novelty having regard to the nature of the article and the state of the prior art. The cases mentioned earlier speak eloquently of this and Le May v Welch is a notable example.
There has been a division of judicial opinion in Australia among courts of first instance as to whether the exclusion appearing in the definition in the 1919 Act of the United Kingdom changed the law and whether later English authorities turned on any such change in the law. The cases which support the view that there was such a change in the law are British Franco Electric Pty. Limited v Dowling Plastics Pty. Limited (1981) 1 NSWLR 448, a judgment of Wootten J. of the Supreme Court of New South Wales at 453-6; Ogden Industries Pty. Limited v Kis (Australia) Pty. Limited (1982) 2 NSWLR 283, a judgment of Kearney J. of the Supreme Court of New South Wales who at 294-6 followed the judgment of Wootten J. in British Franco Electric; and Greenfield Products Pty. Limited v Rover-Scott Bonnar Limited (1990) AIPC 90-667 per Pincus J. at 36,242.
The cases which took the view that there was no change in the law brought about by the 1919 definition are D. Sebel and Co. Limited v National Art Metal Co. Pty. Limited (1965) 10 FLR 224, a judgment of Jacobs J., then a justice of the Supreme Court of New South Wales, in particular at 226; Clive Investments Pty. Limited v Paul Segaert Pty. Limited (1966) AOJP 1577, a judgment of Myers J. of the Supreme Court of New South Wales, in particular at 1578 and Mangraviti v Vardi (1976) 12 ALR 355, a judgment of Wootten J. where his Honour at 359-360 tentatively accepted this view, though later changed it in British Franco.
As mentioned earlier, in my opinion the words which were added to the 1919 definition in the English Act did not introduce any change in the law in the meaning of the word "design". The case law had reached the position by 1919 where the law was simply reflected in the 1919 amendments in the form of a codifying definition.
It follows that, before the relevant amendments were made to the Australia Designs Act by the 1981 legislation, a design which was dictated solely by the function of the article was not registrable. Changes introduced by that legislation were in my view designed to produce a different result so that there is now divergence on this question between Australian and United Kingdom designs law.
It was argued by counsel for the respondents that a number of the judgments of Australian courts before the 1981 amendments came into force favoured the view that questions of function were irrelevant on the question of the registrability of a design. The judgments on which reliance was placed are: Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725 per Dixon J. at 730; In re Wolanski's Registered Design (1953) 88 CLR 278 per Kitto J. at 279 and Malleys Limited v J.W. Tomlin Pty. Limited, above at 352 and 355.
In Macrae Knitting Mills Dixon J. said at 730:
"In the present case the object of the design, considered independently of
the Act, is plainly to produce a bathing garment which not only will have
a particular appearance but in fit and fastening will have also a particular
practical effect. The latter element is, of course, to be disregarded in
considering the questions of novelty and infringement which we are to
decide. The Designs Act is concerned with shape and configuration, not
function."
In Malleys Limited the High Court in the joint judgment of Taylor, Menzies and Owen JJ. made the observations at 352-3 quoted earlier.
Later at 355 their Honours said, when considering whether there was infringement of the registered design:

"Although in considering whether a shape is a design mechanical

advantage is immaterial, it is material in considering whether there has

been an infringement to find that an article, made according to the

registered design, would not be workable in circumstances in which the

article, in respect of which infringement is alleged, is workable."

I mention below the relevant passage on which reliance was placed from the judgment of Kitto J. in Wolanski.
What their Honours in each of these cases said was that it is the design itself that is the subject matter of a registered design which by the definition in s. 4 is directed to the purpose of the ornamentation, pattern, shape or configuration of an article. The inquiry is not as to the article to be made in accordance with the design and whether it is or is not made according to a particular shape or pattern or whether it is useful or not. This is an essentially different question from the question presently under consideration, namely, whether a shape in which all the features are dictated solely by the function of an article can be a registrable design. The point is best illustrated in Wolanski where Kitto J. said at 279, after describing the function to be performed by the article for which the design was intended:
"Such is the function to be performed by the article for which the design
is intended, but, for the purpose of deciding the case, I am not concerned
with any question of function: Hecla Foundry Co. v Walker, Hunter and
Co. (1889) 14 AC 550."
Kitto J.'s reference to Hecla is (although his Honour did not cite any particular page) plainly enough I think intended to be a reference to pages 554-5 in the speech of Lord Herschell where his Lordship said that the Designs Act of the United Kingdom gave protection to the design for the shape or configuration and that what practical advantages, if any, flowed from the making of articles in accordance with the design was an irrelevant question in an infringement case.
It was also argued by counsel for the respondents that Hecla, in particular the speech of Lord Herschell at 555, and the decision in Clarke's Registered Design, especially per Lopez L.J. at 361, supported his argument. I have already referred to Hecla and it remains to deal with Clarke's Registered Design. Again the passage relied upon in the judgment of Lopez L.J. at 361 says nothing that is relevant to the problem presently under consideration. His Lordship said:
"The section says nothing about utility - utility is immaterial. It is the
design, and the design alone, that is protected. The Court must find the
reasons for registration apparent to the eye. The design will not be the
less protected if it is useful, but usefulness is not an element to be
considered".
In my opinion the judgments on which reliance was placed by counsel for the respondents do not support his argument.
Counsel relied on the second reading speeches of the responsible ministers in the Senate and House of Representatives. I cannot discern support for counsel's argument in the Second Reading Speeches. I have looked at the Designs Law Review Committee Report on the Law Relating to Designs, February 1973 (the Franki Committee Report), in particular paragraphs 43-45. This report was the source of the amendments in 1981 to the definition of "design" and to the inclusion of s. 18. What the Committee said in its report was that it did not consider that the judgment of the House of Lords in Utilux should be reflected in any new definition of design in Australian designs legislation. In paragraph 43 the Committee referred to the judgment of Myers J. in Clive Investments at 1578 where his Honour said "to be a registrable design the form of t he design must possess some features beyond those necessary to enable the article to fulfil the particular purpose". As I read the committee's report it reflects the view of its members that the extent to which function can be taken into account in considering the registrability of a design should be put beyond doubt by the amendments. The relevant paragraphs of the report do not support the argument of counsel for the respondents.

In reaching the conclusion that prior to 1 April 1982 a design which was dictated solely by the function of the article was not registrable under the Act I emphasise that it is no bar to the registrability of a design that it may serve a functional purpose unless the features of shape or configuration are dictated solely by the function which the article has to perform.
The concept of function in this area of discourse is not easy to describe in clear terms because it often becomes in the end a philosophical debate, as the reported cases demonstrate. But when the design of an article necessarily derived its form solely from the shape of the article and had no distinguishing features giving it individuality of appearance, it was not a design capable of registration before the 1981 amendments to the Act.
Although the views expressed in British Franco, Ogden Industries and Greenfield on the one hand and Sebel and Clive Industries on the other are not reconcilable, some of the divisions between them reflect differences of emphasis and illustrate the ultimate philosophical nature of the discussion of certain of the aspects of the role of function of an article in its design.
Whether the amendments made in 1981 to the Designs Act merely restated the case law as it then stood is an interesting question, but not one which it is necessary to decide in this case.
Having reached the conclusion that prior to 1 April 1982 a design which was dictated solely by the function of the article was not registrable, the next question is whether the design in suit answers that description.
The primary Judge found that the design constituted by the drawing was not one dictated solely by function and that the visual features of the Venturi made in accordance with the drawing were not dictated by function His Honour found:
"I think it emerges from this evidence that there is a range of the forms of
Venturi in use in connection with dust collectors, that each of these forms
of Venturi will work acceptably, and that the configuration of each form
depends on the preferences of the individual designer. I think therefore
that according to the evidence it cannot be said that all visual features
Venturi made in accordance with drawing 'Std-B-39' were determined by
of a function and that such a Venturi was therefore not registrable under
the Designs Act."
It is not entirely clear what meaning his Honour attributed to the expression "not dictated by function"; but if the meaning adopted in Interlego, which I regard as correct, as to the function of an article was the test applied by his Honour his findings were in my view consistent with and supported by it.
In my opinion his Honour's findings on this question are supported by the evidence. Various different Venturi designs have been adopted by the appellants from time to time for their dust collecting machines. Several Venturis are in evidence and provide examples of various designs of Venturis of the appellants. We saw for ourselves these Venturis and in my opinion counsel for the respondents was correct in his submission that the drawing does not depict a mere mechanical device in the sense of a shape in which all the features are dictated solely by the function of the Venturis produced in accordance with it.
I agree with King J. that it is not possible to say that every feature of the design of the Venturis produced by the appellants is dictated solely by the function which they have to perform. Indeed, the evidence, including expert witnesses called by the appellants, was to the effect that there were so many variations in possible designs of Venturis that designers seeking to design a Venturi for the same dust collector would be unlikely to produce identical designs.
King J. had the benefit of seeing and hearing the witnesses, including the experts called by both sides, examining the Venturis in the light of that evidence and assessing the weight to be given to the evidence. His findings on this question should not be lightly disturbed. Indeed, I agree with them.
King J.'s conclusion that the design constituted by the drawing was capable of being registered at the relevant time was correct. Therefore, all the other requirements of s. 77 of the Copyright Act having been satisfied, the production by the respondents of Venturis which indirectly copied the drawing did not infringe the copyright of the first appellant in the drawing.
I would dismiss the appeal with costs.

JUDGE3

Introduction

The first appellant is a United States corporation which, with its predecessors, for many years has carried on the business of designing, manufacturing and distributing a range of equipment for dust collection and the control of air pollution. Since 1972, the second appellant has been the sole distributor in Australia of the products of the first appellant. In proceedings brought in the Supreme Court of Victoria, the appellants sought relief in respect of alleged infringement of copyright, breach of confidence, misleading or deceptive conduct and passing-off. However, at the trial before King J., the only allegations pursued were those of copyright infringement and breach of confidence. It was alleged that the present respondents had infringed the copyright of the appellants in 32 drawings and in certain brochures.

One of the drawings in question (which is identified as "Std-B-39") is dated October 1972 ("the drawing"). It followed from admissions made by the respondents that subject to a defence under s. 77 of the Copyright Act 1968 ("the Copyright Act") they had infringed copyright in that drawing. The drawing consists of two sectional drawings of what is known as the Venturi collar used in the appellants' range of air pollution and ust control equipment. The respondents copied this drawing indirectly by making a mould of one of the appellants' Venturi collars, itself made according to the drawing, and thereby reproducing the Venturi collar.
There had been no registration pursuant to the Designs Act 1906 ("the Designs Act 1906 ("the Designs Act") in respect of the Venturi collar. The appellants relied, as I have indicated, upon their rights under the Copyright Act in respect of the drawing, as an artistic work. However, the respondents successfully contended that by reason of s. 77 of the Copyright Act, it was not an infringement of the copyright in the drawing to do anything that when it was done would have been within the scope of the monopoly in the corresponding design if that design had been registered immediately before the time of the allegedly infringing acts. The terms of sub-s. 77 (1) are set out in the judgment of Lockhart J. and I do not repeat them.
On the appeal, the only issues pursued concerned the effect of the law as it stood in 1972 as to the overlapping between the protection afforded by the copyright legislation and by the designs legislation, with particular reference to s. 77 and the other provisions of Division 8 of Part III of the Copyright Act. King J. found that the design constituted by the drawing was capable of being registered as a design under the Designs Act at the time it was applied industrially, namely within a year or so following the production of the drawing in October 1972. Accordingly, his Honour held that by force of s. 77 of the Copyright Act, the acts of the respondents of which complaint was made did not constitute an infringement of the copyright in the drawing.
It should be emphasised that the appeal is concerned with the 1968 Copyright Act, not the 1911 legislation, and with the Designs Act as it stood before the changes which came into force on 1 April 1982 upon the commencement of the Designs Amendment Act 1981 ("the 1981 Act"). The Court is not presently concerned to construe the legislation as it stood after 1 April 1982.
The scheme of Division 8 of the Part III of the Copyright Act is to deal in a particular way with copyright in artistic works which, as applied industrially to articles, would be susceptible of protection under the Design Act. It will be recalled that the maximum period of protection under the copyright legislation greatly exceeds that under the design law. Further, whilst the subject of an artistic work is an article answering the description in the definition of "artistic work" in sub-s. 10 (1) of the Copyright Act, a design is a concept or suggestion as to shape or configuration, pattern or ornament. Hence, the form of the definition of "corresponding design" in sub-s. 74 (1) of the Copyright Act as meaning, in relation to an artistic work, a design, that when applied to an article, results in a reproduction of that work. In a case such as the present, Division 8 achieves its effect, if the terms of s. 77 are satisfied, by giving the respondents a defence to the claim of copyright infringement even though the 15 year maximum period permitted for a design registration under s. 26 of the Designs Act would have long since expired. By such means, Division 8 encourages designers to seek and be content with the shorter period of protection under the Designs Act.
No question arises on this appeal as to whether there ceases to be a "corresponding design" within the meaning of sub-s. 74 (1) of the Copyright Act where the design would not be capable of registration under the Designs Act, not for any intrinsic defect, such as alleged "functionality", but by reason of loss of novelty by prior publication. As to this, there have been differences of opinion in the authorities, as appears from the discussion by French J. in Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 79 ALR 534 at 548-551, and by incus J. in Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited (1990) AIPC 90-667 at 36,243-4.
The Issues on the Appeal
At the heart of this appeal are the questions whether, prior to 1 April 1982, a design was susceptible of registration in Australia even though it comprised features of shape or configuration which were "dictated solely" by the function the article had to perform. In Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited (supra at 36,242) Pincus J. concluded, in my view correctly, that, prior to 1 April 1982, such a design was registrable. But the present appeal equires further attention to the meaning of the concept of dictation solely by function. The submissions of the appellants were modified somewhat in the course of address, but, as I understood them, it was accepted that a design was not bad merely because the articles to which it was applied would be assisted by the particular shape of the design in achieving a functional purpose. That, as I shall explain, is consistent with a line of authority well established before the enactment of the Australian law in 1906. But it was submitted that in his judgment, King J. had fallen into error by concluding, in substance, that if there was any room for choice by the designer as to the shape of an article, the resulting shape could qualify as a design.
However, in my view, a design was registrable under the pre-1982 law in Australia if the designer had some element of choice open which was not foreclosed by the necessity to observe the dictates of function in the particular case. I would not accept, as applicable to the Australian legislation in issue here, the view expressed in some of the more recent British authorities (to which I will come later in these reasons) that a design is bad as being a mere mechanical device or contrivance, even though the designer might have adopted different shapes to achieve the same useful purpose. Thus, I would respectfully agree with the approach taken by King J., and challenged by the appellants.
Approaching on that basis the facts of the case, I agree with the learned primary judge that the drawing in issue on this appeal does not depict a mere mechanical device. King J. held on the evidence that "there is a range of the forms of venturi in use in connection with dust collectors, that each of these forms of venturi will work acceptably, and that the configuration of each form depends on the preferences of the original designer". Those findings were not challenged on the appeal. The effect of the evidence was that there were so many variations in possible designs of venturis that designers with the task of designing a venturi for the same dust collector would be unlikely to produce identical designs.6
However, I should deal more fully with the question of construction of the legislation, reaching back as the inquiry does, into the fairly distant past and beyond Australia.
The Australian Background
The definition of "design" in s. 4 of the Designs Act (as it stood before the 1981 amendments) was as follows:
"'Design' means 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"
In s. 60 of the Patents, Designs, and Trade Marks Act 1883 (U.K.) (46 and 47 Vict., c. 57) ("the 1883 Act"), the definition of "design" was:
"(A)ny design applicable to any article of manufacture, or to any
substance artificial or natural, or partly artificial and partly
natural, whether the design is applicable for the pattern, or
for the shape or configuration, or for the ornament thereof, or for
any two or more or such purposes, and by whatever means it is
applicable, whether by printing, painting, embroidering, weaving,
sewing, modelling, casting, embossing, engraving, staining, or any
other means whatever, manual, mechanical, or chemical, separate
or combined, not being a design for a sculpture, or other thing within
the protection of the Sculpture Copyright Act of the year 1814..."
It will be apparent that, on their face, neither of these definitions excluded designs which were dictated by function. It is also apparent that the Australian definition drew its inspiration from the 1883 Act.
In the second reading speech in the Senate, on 20 June 1906, on the Bill for what became the Designs Act, it was said (Hansard, Senate, p 394):
"The Bill may be said to be a legislative expression of the English
law as it exists at present. The English statutory law is found
in the Patents Designs and Trade Marks Act of 1883, subsequently
amended by statutes up to as far as 1888. That legislation,
together with what has been the interpretation of it by the
Judiciary in Great Britain, may be said to be the substance of this Bill."
Bill."
Thus, in my view, one may properly have regard not only to the test of the 1883 Act, but to the judicial interpretation placed upon it, at least up to 1906.
One difference between the two definitions was the insertion of the word "industrial' in the Australian definition. This does not appear in the 1883 Act, and the appellants saw some advantage in this circumstance for their case on this appeal. It is true that in Kolozsy v K. Biro and Co. Pty Ltd (1971) 2 NSWLR 44 at 51, Hope J. said that the word "industrial" in the definition of "design" threw some light on the nature of the designs to which the Designs Act was intended to apply. His Honour said that the design of an object not intended to have and not having any great artistic quality and not intended to be valuable because of its beauty could properly be regarded as an industrial design. But, in my view, the long history of the designs legislation as extending to designs for the printing of fabrics to which I will come shortly, suggests that aesthetic considerations have not been by any means contrary to concepts of good design; see the discussion by Lord Simon of Glaisdale of the Arts and Crafts movement in George Hensher Ltd v Restawile Upholstery (Lancs.) Ltd (1976) AC at 89-90.
In 1906, the responsible Minister, Senator Keating, had been under the impression that the term "industrial" was included in the definition in the 1883 Act (see Hansard, supra, p 402). On being inform ed that this was not the case, he responded that the term did appear in Part III of the Tasmanian Act of 1893, which was "really a transcript of the English Act". In truth, Part III of The Patents, Designs, and Trade Marks Act 1893 (Tas.) was headed "Industrial Designs", but the term "industrial" did not appear in the definition of "design" in s. 4. Thus, the inclusion of the term "industrial" in the Australian definition appears to have been something of a drafting accident to which no great significance should be attached.
In examining whether there was to be read into the terms of the Australian definition any restriction concerned with design function, one should turn first to the antecedent legislation in the Australian colonies, and then to the legislation in the United Kingdom which preceded the 1883 Act.
The position in the Australian colonies provides no great assistance. It is summarised in the following passage from the 1906 second speech (Hansard, supra, pp 393-394):

"Coming now to the position in the Australian States, we find that in the seventies, New South Wales passed its Copyright Act, and that its statutory law with regard to designs is embodied in that measure. That Act, as honorable senators will see, was passed before the British Parliament dealt with the comprehensive measure to which I have referred (in 1883), and which, so to speak, codified the statutory law relating to designs. Victoria passed its Copyright Act in 1890, and included in it its statutory law with regard to designs. That law in the main was based on the provisions of the English Acts running from 1883 to 1888. Queensland adopted legislation covering the registration of designs and their protection in 1884, 1886 and 1890, following, in each instance, the legislation that had been adopted in Great Britain between 1883 and

1888. The South Australian Copyright Act of 1878 deals, amongst other things, with the registration and protection of designs, but it differs from the Imperial legislation and that of the other States in that it omits the provision for separate classes in respect of which designs may be applied. It also omits certain provisions enabling a registration to be amended. The Parliament of Tasmania, in 1893, passed an Act - which, I think, came into force in January, dealing with patents, designs and trade marks, and it practically adopted the English Statute of ten years previously."

One looks then to the position in England.
The United Kingdom Legislation Before 1883
As is well known, the English law as to protection of designs is purely of statutory origin. The legislation commences in 1787 with the statute 27 Geo. III, c.38, the long title to which was "An Act for the Encouragement of the Arts of designing and printing Linens, Cottons Calicos, and Muslins, by vesting the Properties thereof in the Designers, Printers, and Proprietors for a limited Time". This statute was continued in 1789 by the statute 29 Geo. III, c.19, and was amended and made "perpetual" in 1794 by the statute 34 Geo, III, c.23. The Georgian legislation thus was directed only to a limited class of fabrics. In 1839, by the statute 2 and 3 Vict., c.13, the long title to which was "An Act for extending the Copyright of Designs for Calico Printing to Designs for printing other woven Fabrics", the legislation was given a wider scope. These statutes were in turn replaced in 1842 by the statue 5 and 6 Vict., c.100 ("the 1842 Act").
The long title to the 1842 Act was "An Act to consolidate and amend the Laws relating to the Copyright of Designs for ornamenting Articles of Manufacture". Section 3 provided that protection was conferred upon any "new and original" design whether applicable to the ornamenting of any article of manufacture or of any substance, artificial or natural, and whether the design be so applicable to the pattern or for the shape or configuration or for the ornament thereof or for any two or more of such purposes.

In Vandervell and Co. v Lundberg and Sons (1915) 33 RPC 60, Younger J. held invalid a design registered under the 1907 Act, for application to switch boxes for use in electrical installations, primarily in motor cars. His Lordship held that there was no novelty in the design and also drew attention to the circumstances that in 1909 the plaintiff had taken out a patent for the switch board itself, and that the design was claiming a feature which was an integral part of the board and which was imposed on the design by necessity. Younger J. expressed his conclusion on this part of the case as follows (supra at 69):
"It is quite true that a Design is not bad
because it may incidentally be useful. It
is, however, quite another proposition to
say that a designer is entitled to claim as an
original feature of his Design some
pre-existing thing, not originating with him
as a designer but imposed upon him as
a feature or component part of that which
his Design has to fit."
In their submissions on the present appeal, the respondents accepted that decision as indicating (in my view correctly) that in order to qualify as a design under the definition in the 1906 Australian Act, as in the 1907 British Act, that which is put forward for registration must be the result of a process of designing, rather than slavish observance of requirements forced on the designer by the nature of the case (in this decision, a box to contain electrical dials and switches for motor cars). It was submitted (in my view also correctly), to be quite another proposition to say that an infringer is entitled to claim that the features of a design which are functional necessarily disqualify the design from registration and that a particular shape will be dictated by function even though the designer might have adopted a different shape to achieve the same useful purpose.
The respondents submit that the registration of functional designs should be encouraged rather than inhibited, and that to require the presence of non-functional features in the sense urged by the appellants would tend to encourage poor design and penalise good design; further, to require the presence of non-functional features as a condition for registration of designs, would produce the result that purely functional designs were protected as artistic works under the copyright legislation, with its longer period of protections, whilst designs with non-functional or functionally irrelevant features were protected only for the shorter period permitted under the designs legislation.
In 1919, yet another defintion of "design" was introduced in the United Kingdom. Section 93 of the Patents and Designs Act 1919 (U.K.) provided:
"'Design' means only the features of
shape, configuration, pattern, or ornament
applied to any article by any industrial
process or means, whether manual,
mechanical, or chemical, separate or
combined, which in the finished article
appeal to and are judged solely by the
eye; but does not include any mode or
principle of construction, or anything
which is in substance a mere mechanical
device."
The earlier decisions, to a number of which I have referred, had treated the concepts of a mechanical device or mechanical contrivance or method of construction or manufacture as referring to a potentially patentable invention, and not to utilitarian objects per se. The point of departure in the United Kingdom from the earlier authorities appears to have come in 1927 with the decision of Romer J. in Tecalemit Ld v Ewarts' Ld (No. 21 (1927) 44 RO4PC 503 at 508. The design in question consisted of a drawing or picture of a nipple, such as was used for the purpose of lubricating the bearings of automobiles. It was submitted for the plaintiff that if a design had utility, it might still be registered under the 1919 Act if it were capable of embellishment. However, his Lordship held that in substance the design was a mere mechanical device within s. 93 of the 1919 Act.
In 1930, there appeared the first edition of Russell-Clarke's work "Copyright in Industrial Designs". On p 15, the learned author cited the judgment of Romer J. for the proposition:
"A mere mechanical device is a shape in
which all the features are dictated solely
by the function or functions which the
article has to perform. It is, in fact,
the fundamental form, or something
different therefrom by only minute
variations. Such a shape cannot be
registered as a design."
However, the learned author observed in a footnote that the number of designs so far invalidated upon this ground was extremely small, and the only reported case was the Tecalemit Case (supra). Further, in the next paragraph of the text, the learned author qualified the generality of the proposition in the first paragraph by stating:
"The fact, however, that some advantage,
whether mechanical or otherwise, apart
from the main purpose of the article, is
incidentally derived from the adoption of
a particular shape does not of itself
exclude that shape from registration as a
design. Whether any such advantage is
obtained or not is quite immaterial.
Provided the shape, as a whole, complies
with the requirements of a design, that
is, provided it is capable of giving to
the article to which it is applied a
definite individuality of appearance,
which renders it distinguishable from the
fundamental form, it will be registrable
even though some mechanical advantage
necessarily follows from the shape in
question. In other words, it is only mere
mechanical devices, i.e. devices which
fail to produce the requisite
individuality of appearance in the article
to which they are applied which are excluded.
Thus, in fact, if a thing is patentable,
provided that it also appeals to the eye,
there is no objection whatsoever to its
being actually the subject of both a
patent and a registered design."
For the propositions in the second paragraph, the learned author cites authorities including Rogers v Driver (supra), l the Hecla Foundry Case (supra) and In re Clarke's Design (supra at 43-4; 358). The leading authority cited for the proposition in the third paragraph was Werner Motors, Ld v A.W. Gamage, Ld (supra). All of these authorities pre-dated the 1919 Act.
The next step in the United Kingdom was the decision in Kestos Ld v Kempat Ld (1935) 53 RPC 139. In that case, Luxmoore J. held that the plaintiff's design in respect of a bust bodice or bust support for women's wear was valid but had not been infringed. The defendant had submitted that there was no feature shown in the design that was not essential to the mechanical purpose of a brassiere so that in other words "the shape is dictated by its function" (supra at 147). The plaintiff had submitted that the design having been registered for a particular shape, it was immaterial that the shape achieved a useful purpose, and that evidence was necessary on the issue to prove that the shape was the only one possible to produce the result (supra at 148-149).
His Lordship preferred the defendant's submissions; he held (supra at 152) that it could not properly be said that the design was in respect of a mere mechanical device or a mode or principle of construction "within the meaning to be attributed to those phrases in accordance with the principles I have attempted to enumerate". Earlier (supra at 151), his Lordship had set out the definition in s. 93 of the 1919 Act and had continued:
"The first part of the definition is
directed to describing what may be the
subject-matter of registration while the
latter part of it is directed to excluding
from that definition the possibility of
any claim to a monopoly by reason of
registration for any mode or principle of
construction, or for any mere mechanical
device. A mere mechanical device is a
shape in which all the features are
dictated solely by the function or
functions which the article has to perform
(see Tecalemit, Ltd. v Ewarts, Ld. (No. 2)
(1927 44 RPC, page 503). In other words,
if a person produces an article for a
particular purpose, though that person may
obtain the grant of Letters Patent for it,
the producer cannot obtain a monopoly of
that article by registration of a design
for it. The only protection given by the
registration is for the particular form of
the article shown in the design
registered. Moreover, the particular form
must possess some features beyond those
necessary to enable the article to fulfil
the particular purpose, but the fact that
some advantage is derived from the
adoption of a particular shape does not
exclude if from registration as a design
(see In re Bayer's Design, (1907) 24 RPC,
page 65 at page 74)."
There are several strands of thought in this passage, (i) that the expression "mere mechanical device" is a shape in which all the features are dictated solely by the function or functions which the article has to perform, (ii) semble, that design features may be dictated solely by function, even though the shape selected has not been shown to be the only one possible to perform that function, (iii) the only protection given by a design registration is in respect of a particular form of the article shown in the design as registered and (iv) whilst that particular form must possess some features beyond those necessary to enable the article to fulfil the particular purpose, the fact that some advantage is derived from the adoption of a particular shape does not exclude it from registration as a design. I accept the submission for the respondents that the expression "mere mechanical device" was not construed by Luxmoore J. consistently with its use in the pre 1919 decisions. I refer again in particular to para. 32 in the second edition of Edmunds and Bentwich (supra) and to the authorities referred to therein including the Hecla Foundry Case (supra), Cooper v Symington (supra) and Werner Motors, Ld v A.W. Gamage, Ld (supra).
In Stenor, Limited v Whitesides (Clitheroe), Limited (1948) AC 107, the House of Lords held invalid a design registered in 1939 in respect of application to a fuse in a vulcanising apparatus. It was held, inter alia, that the article was a "mere mechanical device" since all the features of the shape were determined solely by the function to be performed by the article to which the shape was to be applied. But what was meant by the expression "determined solely by function"? Lord Porter dealt with the matter as follows (supra at 127-128):
"For the appellants (proprietors of the
design) it was argued that nothing,
whatever functional part it might play as
part of an article, was a mere mechanical
device if its shape was not required for
working all articles of the type in which
it was embodied. A yale key, it was said,
might be cut in all sorts of shapes each
of which would open a different yale lock
and each different shape would be a
registrable design though it was devised
for use with a particular type of lock
only, at any rate, if the shape of the key
was first devised and the lock, upon which
it was to operate, was thought out and
constructed later. The only non-registrable
design would be a key of a
shape which must be adopted in order to
open any yale lock. The respondents on
the other hand maintained that any article
the shape of which was required to perform
a functional purpose was a mere mechanical
device: it did not matter that different
shapes and different devices could be
adopted to perform a similar purpose - in
each case the shape is required for
operational purposes: its ward shape is
determined by its function. I do not know
that the question is capable of much argument.
In the present case the fuse is constructed in
the shape shown in order that it may be used
in connexion with a particular type of
vulcanising machine, and for this purpose,
I do not think it matters whether the machine
was devised to fit the fuse or the fuse to fit
the machine. No doubt another shape of fuse
and another type of machine could be invented
to perform the functional purpose of making the
machine work. Such a design is to my mind a
mechanical device because it has in view the
object of successfully performing a mechanical
act. It is a mere mechanical device because
substantially that is its only object . . .
Primarily the object of the Act is to
protect shape, not function, and not to
protect functional shape."
In his speech, Viscount Simon (supra at 121) referred to the concluding words of exclusion in the then current British definition and said that they first appeared in the 1919 Act "though it may be that they only express what was previously implied in the true conception of a design in the statute law relating to the subject". His Lordship then turned to the meaning of the expression "mere mechanical device" and adopted as a useful and accurate test what had been said by Luxmoore J. in Kestos Ld v Kempat Ld (supra). It follows from what I have said that in my view whilst it may well be true that the words of exclusion were inserted in the 1919 Act to do no more than express what was previously implied in the true concept of a design as understood under the 1883 and 1907 Acts, that concept was not as expressed by their Lordships in Stenor, Limited v Whitesides (Clitheroe), Limited (supra).
Nevertheless, in assessing the weight to be given to what was said in the House of Lords, particularly by Lord Porter, it is appropriate to bear in mind the facts of the case. They were analysed most closely by Morton L.J. in the Court of Appeal (whose decision was affirmed on final appeal). In truth, the design in question was functional in these reasons as contrary to the concept of a design as understood in 1906. Morton L.J. said, (1945) 63 RPC 81 at 95:
". . . I have formed the conclusion, on
the evidence of the Plaintiff's own
witnesses, that the shape shown in the
registered design was dictated solely by
functional considerations, and the fuses
to which it was applied were intended
solely to operate a vulcanising machine
which could be operated by these fuses and by no
others." (Emphasis supplied)
It may be said that Morton L.J. had considerable experience in this area of the law. The emphasised words in the above passage are of importance also in evaluating the later statement by Lord Reid in Amp Incorporated v Utilux Proprietary Limited (1972) RPC 103 at 109, that the scope of the proviso "would be reduced almost to vanishing point" if the reference to dictation solely by function were read as contended by the respondents on this appeal, and, as I have indicated, "because it is difficult to imagine any actual case where one shape and one shape alone will work". In truth Stenor's Case, supra, had provided such an example. So had Vandervell and Co. v Lundberg and Sons, Supra.
The 1949 British Act
In the definition in sub-s. 1 (3) of the Registered Designs Act 1949 (U.K.) ("the 1949 Act"), there was substituted for the phrase "anything which is in substance a mere mechanical device" as it appeared in the 1919 definition, the expression "features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform". By this means, the words used by Luxmoore J. achieved statutory force in the United Kingdom as giving content to the expression "mere mechanical device", itself introduced in the 1919 Act, but with origins in the earlier case law upon the 1883 Act and the 1907 Act. But the new statutory definition itself gave rise to difficulty. What was the force of the word "solely"? The position as understood between the introduction of the 1949 Act and Amp Incorporated v Utilux Proprietary Limited, supra, was described as follows by Laddie, Prescott and Vitoria in their work "The Modern Law of Copyright", 1980, para. 3.68:
"It was formerly thought that the word 'solely' meant that,
provided the designer had some element of choice open to him not
absolutely dictated by function, the design was in principle
registrable. As a result many applications were made, and
accepted, in respect of what were really functional articles (e.g.
pulley wheels) since it was possible in such cases to imagine some
different shape which would nevertheless perform the same
function."
Professor Cornish writes to the same effect in "Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights", 2nd Ed., 1989, s14-016. This approach was consistent with that of Morton L.J. in the passage I have set out above.
In Amp Incorporated v Utilux Proprietary Limited (supra) there were acute differences of judicial opinion between Lloyd-Jacob J., the Court of Appeal and the House of Lords. In the event, designs for electrical terminals for inclusion in Hoover washing machines were held by the House of Lords to be unregistrable because a potential customer for the terminals would decide to buy them solely for their utility and not because of any attraction to their shape. The designs appear (1970) RPC 397 at 399-401. The House differed from the Court of Appeal which had held that features of a design were dictated solely by the function the article had to perform (within the meaning of the 1949 Act) when the function of the article for successful performance required the article be made in that shape and in no other.
In assessing the significance for the Australian law before the 1981 Act of what was decided by the House of Lords, it is significant that Lord Reid said (supra at 107) that he got little assistance from the way in which the definition in the 1949 Act had evolved; see also Lord Morris at 114. Lord Donovan agreed with Lord Reid (supra at 119). Nor, it is fair to say, was there any real response to the point made by Graham J. in the Court of Appeal (1970) RPC 397 at 428) that a narrower view of the exclusion from registration was supported by the emphasis on better industrial design indicated by the progressive broadening of the legislation over the preceding 150 years in favour of manufacturers with extension of the field in which design registration might be obtained.
Further, there has been some difficulty in distilling a clear ratio decidendi from the speeches in the House of Lords in Amp Incorporated v Utilux Proprietary Limited (supra). This is illustrated by what was said by the Privy Council in Interlego AG v Tyco Industries Inc. (1988) RPC 343 at 353-356. Their Lordships (who were dealing with the 1949 Act as applied in Hong Kong) held (supra at 356) that the incorporation into the shape as a whole of some (perhaps a majority of) features dictated only by functional requirements would not deprive a design of protection if there were also some features of the shape which were not attributable solely to function. But their Lordships accepted (supra at 355) the House as having decided that:
"All that has to be shown is that the
relevant features of the shape were
brought about only by, or are attributable
only to, the function which the article in
that shape is to perform, even if the same
function could equally well be performed
by an article of a different shape."
The Amp Case had a significant impact upon the operation of the copyright-design overlap provisions in the Copyright Act 1956 (U.K.) which provided a source for the provisions in the 1968 Australian legislation. The result was to exclude strictly utilitarian articles from registration and so increase the scope of full-term copyright protection. The situation in Britain in the period between 1972 and the commencement of the latest legislation, The Copyright, Designs and Patents Act 1988 (U.K.) ('the 1988 Act") is summed up as follows by Professor Gerald Dworkin and Mr Taylor in their work "Copyright, Designs and Patents Act 1988", pp 143-144:
"The next development was rather
remarkable. The reduction in the period
of copyright protection to 15 years was
interpreted to apply only to registrable
designs. Accordingly, if there were a
drawing of a solely functional object for
example, the electric flag terminal in Amp
Inc. v Utilux Pty Ltd (1972) RPC 103), the
drawing would not be registrable as a
registered design and the copyright
protection accordingly would not be cut
back: there would be full protection of
the drawing and articles made directly or
indirectly from that drawing for the life
of the author plus 50 years. Thus arose,
in the view of the Whitford Committee and
others, the 'bizarre' situation that' if a
design is unregistrable because it is
functional or otherwise unacceptable it
could enjoy much longer protection than a
design which is registrable'; whereas, of
course, most would regard the more
functional designs as deserving of less,
not more, protection."
The reference to the Report of the Whitford Committee on Copyright and Designs Law of 1977 (Cmnfd 6732) was to para. 96. The new definition of "design right" in sub-s. 213 (3) of the 1988 Act applies both to aesthetic and functional designs, excepting, inter alia, features of shape or configuration which enable the article "to be connected to, or placed in, around or against another article so that either article may perform its function". Though not without its difficulties, this is a limited view of the disqualifying effect of functional purpose; see Dworkin and Taylor, supra at 147-149; Cornish, supra S14-026.
Conclusion

I mention these matters not because the experience in the United Kingdom in recent years dictates or even offers any safe guide to the correct construction of the definition of "design" in the 1906 Australian statute. But the apparent dissatisfaction with the course of authority in the United Kingdom which construes the definition in the 1949 Act does suggest the need for caution in reading into the 1906 Designs Act words which do not appear on the face of the definiton of "design" and which had not been treated as implicit in the definition by the pre-1906 judicial decisions.
At the time of the introduction of the Designs Act in 1906, there was not the concern either in the legislature or the courts as to the inter-relation between designs and copyright law such as that which followed the introduction of the first overlap provisions in s. 22 of the 1911 Copyright Act. What was then of much greater concern was the inter-relation between design law and patent law, but that was resolved by the series of decisions upon the 1883 Act to which I have referred. As Professor Cornish has recently re-emphasised (supra s14-002) the design registration system was a nineteeth century answer to demands for at least a short-term protection for the design elements in mass-produced articles. Function was not perceived by the legislature or the courts as other than an element in design. It was in that setting that the 1906 Designs Act, with which this appeal is concerned, was introduced.
It would not be accurate to say that the essence of registrability of a design was an element of novelty, having regard to the nature of the article and the state of the prior art; of course novelty was essential to registrability, because the legislation said so in terms. But non constat that an article shaped to perform a particular function is not novel because the same function might be performed by an article of a different shape. The design in question may or may not be novel, but it will still be a design in the statutory sense. We were pressed by the appellants with Le May v Welch, supra, but as I have indicated, that case was concerned with the issue of novelty and only leads one off on a false trail.
What is more to the point, in this appeal, is that with the introduction of the 1911 Copyright Act, it became apparent that the artistic copyright in a drawing might be infringed by its reproduction as a three-dimensional article, and that the copying need not have been made directly from the plaintiff's work. Section 22 of that statue was the first legislative attempt to deal with that reach of copyright law into design law, by pushing the ambit of the available monopoly back into the domain of design law. The current Australian provisions, which govern this legislation, are in Division 8 of Part III of the Copyright Act, to which I have referred in the first section of these reasons.
This litigation is not immediately concerned with the construction of the Designs Act of 1906 as it applies to registrations actually effected pursuant to its provisions as they stood before 1982. It is concerned with the appellants' claim to the much longer period of monopoly under the copyright law. The issue that is thus presented is, by a twist in the legislative scheme, to be resolved by asking what might have been registered under the Designs Act. That legislation, as enacted in 1906, stood free of the complexities arising from its later co-habitation with overlap provisions of the copyright law.
But it would be ironic if the Australian definition of "industrial design" were to be interpreted by reliance upon English authority, post-1906, and concerned with now repealed legislation which the leading English commentators, including Whitford J. in their number, regarded as having produced a bizarre relationship between copyright and design law.
To make such a course even less attractive, the boundary line after Amp Incorporated v Utilux Proprietary Limited, supra, remained imprecise. Professor Cornish instances the earlier case of P.B. Cow Limited v The Cannon Rubber Manufacturers Limited (1961) RPC 236, in which a hot-water bottle carried a series of thick ribs with an insulating function, similar to a thick cover; the learned author says, supra s14-016:
"The Court of Appeal upheld the design
registered for vertical ribs, because they
might have been incorporated using
different patterns - horizontal or
diagonal lines, for instance, or some more
elaborate conformation. It is unclear
whether that design remained registrable
after Amp v Utilux; a set of ribs designed
to represent a teddy bear doubtless would
not be regarded as solely functional."
No doubt it may be possible to treat the drawing in question on this appeal as not being in respect of a design "dictated solely by function", within the meaning given that term in Amp Incorporated v Utilux Proprietary Limited (supra), by a reading which is generous to the respondents, on the footing (which the findings of King J. support) that, like the range of patterns in which the ribbing might have appeared on the hot water-bottle in P.B. Cow Limited v The Cannon Rubber Manufacturers Limited (supra), there were many possible designs for a Venturi collar. But to my mind, the quest for an accommodation of the facts in this case with the House of Lords' decision is something which one need not pursue, if the definition in the Designs Act be allowed its proper scope.
In my view, it follows from the course of authority upon the definition in the 1883 Act, as understood at the time of the enactment of the Australian legislation in 1906, (i) that a design was not invalid by reason only that the articles to which it was applied would be assisted by the particular shape of the design in achieving a functional purpose, and (ii) that if there was room for choice by the designer as to the shape of an article, the result of the designer's labours would qualify as a design, even if the articles to which it was applied served a functional purpose and attainment of that purpose was assisted by the particular shape in question. The facts in the present case lead inevitably to the result that the corresponding design in relation to the drawing was capable of registration under the Designs Act, and that the defence under s. 77 of the Copyright Act was made out.
I would dismiss the appeal with costs.

[1990] FCA 655

28 SEPTEMBER 1990