Karina Fisheries Pty Ltd v Mitson

Re: GREENFIELD PRODUCTS PTY LTD
And: ROVER-SCOTT BONNAR LIMITED
No. Qld G334 of 1988
FED No. 154
Copyright
(1990) AIPC 90-667

COURT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.(1)

CATCHWORDS

Copyright - alleged infringement of drawings of lawn mower drive mechanism - no patent for invention - respondent imitated applicant's design to a considerable extent - nature and degree of difference determinative of what constitutes reproduction - adoption of idea or principle without infringement of copyright - whether employer an author under s.35(6) Copyright Act 1968 - principles governing ownership of copyright in drawings and three-dimensional objects - implied assignment of copyright in the sale of a business as part of Slutzkin scheme - whether Slutzkin arrangement evinced an illegal purpose - what constitutes "engraving" and "sculpture" - consideration of s.77 defence under the Copyright Act and relationship with s.17 Designs Act 1906 - what constitutes "design" - whether drawings first published by or under the direction or control of the Commonwealth - consideration of applicant's delay.

Copyright Act 1968, ss.31, 35, 71, 77 and 177

Designs Act 1906, s.17

Trade Practices Act 1974, s,52

HEARING

BRISBANE

#DATE 11:4:1990

Counsel for the applicant: Mr R.I. Hanger QC and

Mr D.K. Smith

Solicitors for the applicant: Kenny and Noel

Counsel for the respondent: Mr J.J. Garnsey QC and

Mr. A.J.H. Morris

Solicitors for the respondent: Clarke and Kann

ORDER

1. The application be dismissed.

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

JUDGE1

The applicant and the respondent are competing manufacturers of ride-on mowers for use in parks and gardens. The applicant's substantial case is that it designed a new kind of drive mechanism for its mowers; the respondent later used the same basic design, having carefully inspected the applicant's. The suit seeks an injunction to restrain further breaches of copyright, damages for infringement of copyright, an account of profits and other relief. There is also a claim for infringement of s.52 of the Trade Practices Act 1974 related to this drive mechanism, but that is of lesser importance than the copyright suit.

The way in which the applicant's design works is that a continuous v-belt transmits power from the motor to two aluminium pulleys which share a common shaft, but are contra-rotating. On the same shaft is an aluminium clutch plate for each pulley and each clutch plate can be moved along the shaft so as to take power from its pulley. The clutch plates are moved by applying pressure one way or the other to a central bearing placed between the clutch plates, which bearing is moved by a device called a clutch-fork connected to the mower's pedal. If the operator presses with his toe on the further end of the pedal, the machine moves forward and if he presses with his heel on the nearer end it moves backwards. This result is achieved by having the two clutch plates fixed to a square section of the common shaft so they cannot rotate on it. When the "forward" clutch plate is moved along the shaft so that the clutch face lining (which is made of cork) bears against the "forward" rotating pulley, then the machine goes forward and vice versa, as to the clutch plate and pulley providing rearward movement. There is a sprocket on the end of the shaft which, by means of a chain, transfers power from whichever clutch plate is being driven by its pulley at a particular time; of course, if there is no pressure on the pedal, then neither clutch plate is being driven and no power is being transferred to the wheels - the mechanism is in neutral.
The respondent adopted the applicant's design for what it calls its "auto drive", making quite a number of changes. The only change made in the principle of the design was that the respondent decided to have the clutch actuating mechanism move the two clutch plates together, rather than, as in the applicant's design, having each move independently of the other. The advantage of this, so the respondent's designers thought, was to ensure that when one clutch plate was pushed on to its pulley the other came off its pulley. The respondent claims that, in the applicant's design, it is possible that release of the pressure on one clutch plate will not remove it from its pulley; such removal depends, in the applicant's design, on the functioning of springs. On this reasoning the respondent decided to have the two clutch plates and central bearing (movable by an actuating mechanism linked to the pedal) all connected together in one unit.
There being no doubt that the respondent imitated the applicant's design to a considerable extent, taking advantage of the applicant's inventiveness and its development of that design over some years, some might have thought that the law would give the applicant some right of redress. The most obvious basis of a suit of that kind is the patent law, but the applicant had no patent for its invention (assuming it to be patentable) so the applicant has sued, as I have said, for breach of copyright, saying that the respondent copied its design.
In a very broad sense it did, and there are high authorities which suggest that such a claim as this is proved if copying is proved: L.B. (Plastics) Limited v. Swish Products Limited (1979) RPC 551 at 619:

"The protection given by the law of copyright is against copying, the basis of the protection being that one man must not be permitted to appropriate the result of another's labour. That copying has taken place is for the plaintiff to establish and prove as a matter of fact. The beginning of the necessary proof normally lies in the establishment of similarity combined with proof of access to the plaintiffs' productions."

Establishment of similarity has a double significance: it can help to prove copying, but it is also necessary in order to show that what is alleged to infringe is sufficiently similar to the original to justify a finding of infringement. If there is no copying, but the respondent has luckily arrived at a similar result to the applicant's by working independently, then there is no infringement. But if the respondent has (as it did here) followed the applicant's design but arrived at a design which is somewhat different in detail from the applicant's, then the nature and degree of difference are determinative of the case. For there is no infringement, in a case of this sort, unless it is proved that the respondent reproduced the work: s.31(1)(b)(i) of the Copyright Act 1968, or a substantial part of it: s.14(1) of the Act, S.W. Hart and Co Proprietary Limited v. Edwards Hot Water Systems (1985) 159 CLR 466 at 473, 474, 476, 480, 481. It appears to be established that although a work lacking any sort of merit may be protected by copyright, meritorious elements in a work (if any) will be more zealously protected by the law. That approach is reflected in the rule that substantiality of reproduction must be decided by quality rather than quantity: Ladbroke (Football) Limited v. William Hill (Football) Limited (1964)1 WLR 273 at 293; drawings of commonplace objects will not necessarily be protected except against exact literal reproduction: Kenrick and Co v. Lawrence and Co (1890) 25 QBD 99 at 102; see also Ownit Homes Pty Ltd v. D. and F. Mancuso Investments Pty Ltd (1988) AIPC 38,235 at 38,243. For this reason, the evidence in the case dealt at length with the quality of the design of the various components. There was even much discussion of the significant differences between the design of ordinary springs used by the respondent and the design of rather less ordinary ones used by the applicant. The case was conducted on the assumption that, quality being relevant, so were matters such as originality and inventiveness. Obscure patent specifications were examined to show anticipation and the significance of the differences between the applicant's and the respondent's components was intensively analysed. The type of inquiry which was made is illustrated, although perhaps in an extreme way, by the discussion of the differences between the applicant's drawing of its clutch lining and the respondent's lining. The drawing is of a simple kind: it merely depicts two concentric circles and a narrow rectangle.
There were other issues. Before 1980, a company of the same name as the applicant carried on the manufacturing business under the same control, namely that of Mr T.W. Reinhold. In that year, the then functioning company sold its business to the applicant, as part of a tax avoidance scheme based on the decision in Slutzkin v. Commissioner of Taxation (1977) 140 CLR 314. The contract of sale made no express reference to assignment of copyright, and the respondent has taken the point that in the absence of a written assignment the applicant has no copyright in any drawings prepared prior to the date of its acquisition of the business. Further, the respondent says that the existence of those pre-acquisition drawings has two adverse affects on the applicant's case: it diminishes the quality of features to be found in the post-acquisition drawings and gives rise to a contention that some of the later drawings are merely copies of the pre-acquisition drawings.
An additional question relating to this 1980 transaction is whether it infects the applicant's claim with illegality; the respondent says that the tax avoidance scheme had an unlawful purpose, namely to defraud the Commissioner of Taxation.
In its final form, the statement of claim sets up that the necessary assignment of copyright of pre-acquisition drawings was implicit in the agreement for sale of the business. As to the older drawings, the statement of claim pleads that the applicant is entitled to copyright in "documents 39-53 in the List of Documents of Theodore William Reinhold sworn 10th March, 1989 and other documents which have subsequently been destroyed". The drawings relied on are contained in Exhibit A20 and were made from about 1967 on. Speaking generally, but not quite accurately, they depict, inter alia, components which are similar to those in the post-acquisition drawings; the principal exception is that some of the pre-1980 drawings relied on depict a design of clutch-fork quite different from that ultimately used.
The drawings of components which are relied on by the applicant in its pleading are all of components for the drive mechanism in its model called the "11-XLE".
In addition, the applicant says that there has been an infringement of its copyright in moulds used in casting pulleys and clutch plates and its copyright in the drive mechanism itself; the legal question whether it is possible to have copyright in such "three-dimensional" objects is raised by the respondent and discussed below.
Other issues raised by the respondent are the "non-expert defence" based on s.71 of the Copyright Act, delay in bringing the proceedings and "unclean hands", said to be constituted by the applicant's wrong use of the expressions "patented" and "patent pending".
OWNERSHIP OF COPYRIGHT
The agreement for sale which was part of the tax avoidance scheme is Exhibit A30. The vendor was Greenfield Products Pty Ltd (then the operating company) and the purchaser Power Mower Sales Pty Ltd; both parties subsequently changed their company names, the purchaser (the applicant) becoming Greenfield Products Pty Ltd.
Under cl.(1) of the agreement, the parties agreed to sell and purchase all the property described in a schedule. The description was as follows:

"The goodwill, motor vehicles, plant and equipment, patents, loose tools, trade debtors and stock of the business conducted by the Vendor as manufacturer and distributor of industrial mowers conducted by the Vendor at 1101 Beaudesert Road, Archerfield."

Clause (1) also provided that the purchaser should assume liability for certain debts which were not particularly defined.

In fact, the whole business formerly conducted by the vendor came under the control of the purchaser. The simple point taken by the respondent is that the description of the property sold neither expressly nor implicitly includes any intellectual property other than patents.
The expression "goodwill" has sometimes been defined in such a way as possibly to include some intellectual property: see "Goodwill", para.(2) in Stroud's Judicial Dictionary, 4th Ed. But the applicant did not argue that and contended merely that an appropriate term should be implied. It was said that the assignment of copyright was so obviously intended that it went without saying.
The respondent said that business efficacy could have been given to the agreement without any assignment of copyright, for example, by implying a licence to use any relevant copyright. Further, the respondent said that if there was a gap in the description of the property sold, that could be filled only by a suit for rectification, not by a process of implication.
While I accept that some contractual gaps may be filled only by rectification, it is my opinion that merely to show that there is room for inference that the gap is due to a mistake does not remove the possibility of filling it by implication or construction: see for example Ansett Transport Industries (Operations) Pty Limited v. The Commonwealth (1977) 139 CLR 54 at 72 and Secured Income Real Estate (Australia) Ltd v. St Martin's Investments Pty Ltd (1979) 53 ALJR 745 at 746. It is my view that, had the transaction been one at arm's length, an assignment of copyright would have been implied. It is absurd to suppose that the true intention was to assign the business including goodwill and patents, but leave copyright with the assignor. Looking at the agreement broadly, in the way one is encouraged to construe commercial documents, there can be no doubt that its general intention was that all the assets used in the business should go over; the omission particularly to mention a certain asset could prima facie be remedied by implying a term. However, it was contended for the respondent that the Court should not imply contractual terms so as to complete tax avoidance transactions which would otherwise be incomplete. It does not appear to me that this argument has any sound foundation. An implied term has an existence anterior to the judgment of the Court declaring the implication. It is not a remedy which may be granted or withheld on discretionary grounds. Although, in my view, the making of this implication must be close to the limit of the law concerning contractual implications, it does not appear to me that a Court has any power to refrain from implying a term merely because of the tax avoidance purpose.
Is there then a "writing", for the purposes of s.196(3) of the Copyright Act, which requires writing for an effective assignment? In my opinion, there is. It has become clear that documents which do not in terms assign copyright can suffice for the purposes of a provision such as s.196(3): E.W. Savory Limited v. The World of Golf Limited (1914) 2 Ch 566. Similarly, it has been established in the law of vendor and purchaser that there is a sufficient writing to make a contract for sale of land enforceable, even if the land the subject of the contract has to be identified by extrinsic evidence: Flockton v. Leonard (1902) 20 NZLR 431. As to the effect of an agreement to assign, as opposed to an immediate assignment, I refer to London Printing and Publishing Alliance Limited v. Cox (1891) 3 Ch 291.
The respondent contended that, if there was no assignment in writing, then for a number of reasons the applicant's rights could not be established on the foundation of an equitable assignment. I have considered that question, but have not found it necessary to reach a conclusion relating to it.
The next point raised under this heading depends on the fact that neither the vendor under the agreement just discussed, nor the applicant, was the "author" of any of the drawings and therefore in the circumstances of this case each has copyright only if it falls within the terms of s.35(6) of the Copyright Act:

"Where a literary, dramatic or artistic work to which neither of the last two preceding sub-sections applies, or a musical work, is made by the author in pursuance of the terms of his employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part."

Neither sub-s.(4) nor sub-s.(5) applies to these drawings and therefore, prima facie, any drawings made by an employee under the terms of his employment vest copyright in the employer. The difficulty, and it is not a trivial one, is that it is unclear from the evidence which of the relevant drawings falls within s.35(6). Mr Hanger QC urged me to infer, in the absence of any precise evidence, that the relevant drawings were all done by employees in accordance with the terms of their employment. It appears to me that I should do that as to some but not others. Where the evidence is that the drawing was performed by an employee and nothing more is said, it is a reasonable inference that s.35(6) applies. However, as to certain of the drawings which reveal, on their face, neither that they were drawn for Greenfield Products Pty Ltd nor any identified author, it would seem wrong simply to assume that s.35(6) applies in favour of the applicant. Those drawings are numbers 16 and 17 in Exhibit A20. It should be added that these are merely drawings of ten-tooth sprockets. They fall within the category of commonplace objects and because the respondent's sprockets are somewhat different from the applicant's, there is in any event no infringement.

I turn now to the drawings done for the purchaser - i.e. the applicant - after the transfer of the business. I do not find it necessary to discuss the evidence on the point in detail. It is enough to say that insofar as the draftsmen were not shown to be employees (and that applies only to Exhibits A12, A13 and A14) I am prepared to infer, from the fact that each drawing appears on its face to have been made by somebody in the employ of Greenfield Products Pty Ltd, that it was so done: cf. Waterlow Publishers Ltd v. Rose cited in Halsbury Monthly Review, December 1989.
In the result, I find that copyright in the drawings relied on by the applicant, with the exceptions I have mentioned, was, at material times, vested in the applicant. The exceptions are, in the end, of no real consequence.
The only other question which may be conveniently dealt with under this heading is copyright in a drawing of an 11" pulley which, according to the applicant's pleading (para.11(b)(vi)(a)) was made on a table napkin. Evidence was given by Mr Reinhold and a Mr R.A. Kerr in support of that assertion, to the effect that at a certain lunch Mr Reinhold produced and handed over an informal drawing of an 11" pulley. I do not find that Mr Reinhold never made any relevant drawing on a table napkin, but precisely when and where he did so and what its effect was are matters of which one could not be confident. Mr Kerr said in cross-examination that he could not recall whether the drawing was on a napkin or a piece of paper and did not know where it went. He also explained that, apart from a drawing, there was other information on the paper: "Probably details of bearing diameters, offsets on the pulley to the bearing". It is my opinion that the applicant's witnesses did not manage to establish any case with respect to this drawing of the 11" pulley on which one could reasonably make a finding in the applicant's favour; therefore, no question of authorship or ownership arises as to that alleged drawing.

The point just mentioned is of some significance because there is no other evidence of the applicant's having prepared, at a relevant time, a drawing of an 11" pulley - the size adopted by the respondent; the drawings the applicant relied on were of 12" pulleys. The only 11" pulley drawing proved (Exhibit A14) was drawn late in 1987 and therefore cannot have been copied by the respondent. The "reverse engineering" cases cannot assist the applicant as to these pulleys, for they depend upon the concept that there is an infringement of rights in a copyright drawing by the copying of an object made from the drawing; absent the copyright drawing, the principle does not apply: see British Leyland Motor Corporation Ltd v. Armstrong Patents Co Ltd (1986) 6 IPR 102.
ILLEGALITY
One argument advanced for the respondent was that the evidence shows that, with a view to assisting his tax position, Mr Reinhold entered into an arrangement which involved him in the commission of an offence. It was said that there was a scheme to defraud the Commonwealth.
The illegal purpose alleged was to strip the then operating company of all its assets and make it unable to meet its tax liability, under the scheme referred to above.
Discussion of this subject in the course of the evidence was, I thought, complicated by the circumstance that Mr Reinhold at times appeared to regard the entity he controlled before the scheme operated as being identical with that he controlled afterwards. It is my opinion that Mr Reinhold believed the scheme to be a perfectly lawful and proper one, by means of which he was likely to be able to get a one-year "tax holiday". The submissions made on behalf of the respondent did not go so far as to say that Mr Reinhold had any actually dishonest intention or even that he believed that he was doing anything unlawful. The written submission said that the question was "not whether he knew the scheme to be illegal, but whether he knew of the facts which amounted to an attempt to defraud the revenue".
In Slutzkin v. The Commissioner of Taxation (1977) 140 CLR 314, the High Court considered the liability of shareholders in a family company which had undistributed profits; they transferred their shares to a dividend-stripping company for a price about the same as the value of the assets. The Commissioner attempted to assess the shareholders to tax on the basis that the money received from the dividend strip was income. The assessment was held to be erroneous. Aickin J. remarked that:

"To adopt a course which produces a result outside the scope of the Act is not to alter the incidence of tax, or to defeat any liability to tax or prevent the operation of the Act, notwithstanding that such course is adopted with full knowledge of the provisions of the Act and with a conscious intention that the proceeds should not fall within the operation of the Act." (p 327)

The facts of that case can be ascertained in more detail from the report of the reasons of the primary judge in 76 ATC 4019. The problem which confronted the taxpayer there was to get the undistributed profits out of the company without paying tax. Had a dividend simply been declared, tax would have been payable. To facilitate the scheme, the company's assets were converted to cash. There was apparently some difficulty arranging that, as the major asset was a debt due by an associated company which had to borrow to repay the debt. After the purchaser got the shares a dividend-stripping operation was effected. The trial judge found (4030) that there was a determination "to take the profits out of the Company, and then to have taken steps to get out of reach of a liability which would fall on them if they took those profits by means of an ordinary business dealing". It is true, and was pointed out during the course of the hearing, that in the Slutzkin case there was no need to discuss the criminal, as opposed to civil, consequences of what was done. Yet it is hardly conceivable that, if the taxpayer in that case was thought to have been involved in something akin to an unlawful conspiracy, the matter would have passed without comment.
Here, the essential point which is relied upon to show criminality is that, so it is alleged, it was proved that Mr Reinhold knew that the company's tax liability would not be met.
An example of the sort of answers said to show criminality in Mr Reinhold is the following:

"And you knew that no creditor, at that stage, could get any money out of it, or the Taxation Commissioner, unless the new owners put money into it, didn't you? --- Well, there was no - there was no money owed to anybody, only the Tax Department - the tax liability was all you were chasing. And you did not think --- ? --- Avoiding. --- after the scheme went through that any new owners would put any money into the company to pay its tax liability, did you? --- I do not think that was planned by anybody."

I am asked to deduce that Mr Reinhold had a criminal intention. I am far from satisfied that he did. In my opinion, his answers read as a whole suggested that his understanding of the scheme was simply that the company, with its tax liability, was got rid of and then became the purchaser's problem. The assumption was made in cross-examining Mr Reinhold that there was no possible means of handling that problem, other than by the new owners themselves funding the tax liability. But that appears to be so only in retrospect. At the time when the transaction was effected (1980), Slutzkin's case, as well as Mullens v. Commissioner of Taxation (1975-1976) 135 CLR 290, and Cridland v. Commissioner of Taxation (1977) 140 CLR 330 gave ground for thinking that the Commissioner had no useful weapon with which to combat tax avoidance by means of artifical schemes. No one asked Mr Reinhold whether he had considered the possibility that those who purchased his company might have had in mind an attempt to erase its tax liability by use of a further scheme. Had he been asked, then I believe he might have had some difficulty bringing to mind accurately what his view of the matter was at the time.
It appears unrealistic to construe over-literally the answers which he gave to counsel about his state of mind a decade ago, looking for evidence of criminality. In my opinion, his position was simple: the scheme was one which business associates assured him he was foolish not to enter; it left him in control of the manufacturing business, then owned by a new legal entity, with no adverse consequence except payment of modest fees and commissions. Although some of the answers Mr Reinhold gave are capable of being read as confessing to a precise understanding of the mechanism which supposedly made the scheme work, I am by no means satisfied that he fully comprehended its legal implications.
In the course of submissions, counsel made reference to judicial discussion of the facts of prosecutions brought against promoters of similar schemes (not participants) as if they laid down propositions of law compelling a finding of criminality against Mr Reinhold. I have found no assistance in such dicta, which are, plainly enough, directed to the very different evidence there adduced. It would be going a long way to hold that this intelligent but rather unsophisticated businessman had such a knowledge of the legal consequences of the scheme he was advised to enter as to require the conclusion that he was a party to a criminal conspiracy.
This makes it unnecessary to discuss the legal question which was the subject of some submissions, namely the relevance of the fact that the alleged intention to defraud was not fulfilled; the tax was in the end exacted in full. I should add that there was evidence suggesting wrong dating of documents, but it was not put to Mr Reinhold, nor established by other means, that he had any involvement in that aspect of the matter.
COPYRIGHT IN THREE-DIMENSIONAL OBJECTS
There are no two-dimensional objects; the above heading is intended as a shorthand way of referring to the applicant's claim to copyright in certain moulds and in a drive mechanism, as opposed to its claim to copyright in drawings. The relevant parts of the statement of claim are paras.11(iii) (on p 4) and 13 (on pp 10 and 11). These allege, in effect, that there is copyright in "moulds used in connection with the casting of" certain pulleys and clutch plates and in a certain drive mechanism.
It was argued on behalf of the applicant that the Copyright Act, as presently construed, is wide enough to encompass such objects.
Under Part III of the Act, copyright may subsist in, inter alia, an artistic work and the applicant contends that the moulds and the drive mechanism are artistic works. The expression "artistic work" is defined in s.10 to mean, inter alia:

"A painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not".

Each of the words "sculpture" and "engraving" is separately defined:

"'Sculpture' includes a cast or model made for purposes of sculpture".

"'Engraving' includes an etching, lithograph, product of photogravure, wood cut, print or similar work, not being a photograph".

It was argued on behalf of the applicant that copyright can subsist in the moulds and machine parts because they are "engravings" and that the drive mechanism is an "artistic work", being made up of its components which are themselves sculptures and therefore artistic works.
It is convenient to take the latter point first. Although the definition of "sculpture" is not exhaustive, insofar as the word remains undefined it must be given its ordinary meaning, in accordance with orthodox principles of construction. It is for that reason that I rejected evidence proffered on behalf of the respondent to prove what "sculpture" means in certain circles. The word "sculpture" is, at least in this context, not a technical term so as to make evidence admissible on the issue of statutory construction.
It appears to me clear that neither the moulds nor the drive mechanism, nor the parts of the latter, are sculptures in the ordinary sense. It is true, as was pointed out in the course of argument, that some modern sculptures consist of or include parts of machines, but that does not warrant the conclusion that all machines and parts thereof are properly called sculptures, and similar reasoning applies to moulds. I respectfully agree with the conclusion arrived at in the New Zealand Court of Appeal, in Lincoln Industries Ltd v. Wham-O Manufacturing Co (1984) 3 IPR 115 at 131 that frisbies are not sculptures under the Copyright Act 1962 (NZ); that conclusion is consistent with mine.
I therefore reject the submission that there can be copyright in the drive mechanism. I do so with more confidence having regard to the concept of infringement by copying objects made from a copyright drawing; the development of that doctrine would have been unnecessary if machinery were itself the subject of copyright.
A submission which is not quite so easily disposed of is that the moulds are "engravings" under the Act; this has some support from the Lincoln Industries case just referred to and from the reasons of the Court of Appeal of Hong Kong in Interlego AG v. Tyco Industries Inc (1987) FSR 409 at 421 and 453. In the former case, there was evidence that the frisbee moulds were made by use of a tool, cutting metal blanks on a lathe. The Court remarked:

"We see no reason why the process involved in the production of the die or mould, particularly the creation of the cuts to produce the ribs or rings should not be regarded as the act of engraving within the provisions of s.2(1)(a) of the Act, and the mould or die so created an 'engraving' just as a 'print' is an engraving in terms of the extended definition in s.2 of the Act." (p 127)

The definition of "engraving" in issue there differed slightly from that with which I am concerned, but the difference is not of present significance.
I do not well understand why the Court thought that working at a lathe cutting into a rotating piece of metal with a tool is the work of engraving. One can use a tool fixed in a lathe to inscribe a pattern onto the surface of metal or other materials, but even that would not, perhaps, ordinarily be called engraving. It is true that dictionary definitions of engraving refer to cutting, but it is not all cutting which is engraving; for example, to cut a piece of steel rod into lengths is not to engrave it. Nor, in my opinion, is the process of cutting metal from a block spinning on a lathe a process of engraving the block, in the ordinary sense of the word. The term does not cover shaping a piece of metal or wood on a lathe, but has to do with marking, cutting or working the surface - typically, a flat surface - of an object. The Second Edition of the Oxford English Dictionary cites usages of the word "engrave" which appear to support the New Zealand decision. For example, a translation of the Metamorphoses has: "The fatall steele ... he waues Deepe in his guts, and wounds on wounds ingraues." But that was published in 1626 and no modern similar example is given. More generally, the text under "engrave" supports the view that in current usage the physical meaning is confined to cutting, marking or otherwise working a surface. The same may be said of the dictionary's treatment of "engraving", except that "engraving" can mean the product as well as the process.
I note that the Court of Appeal went on to say (129) that each frisbee made from a mould is an "image produced from an engraved plate" and therefore a "print". I was urged by Mr Hanger QC to adopt what he described as the "flexible approach" evinced in this decision, particularly as it has at least the tentative approval of the Hong Kong Court of Appeal in the Interlego case.
No consideration of policy, or other orthodox approach, could justify straining the English language so far as to call the moulds engravings. Despite the respect which one must have for any decision of the New Zealand Court of Appeal, I find myself unable to follow the approach in the Lincoln Industries case. In particular, I cannot, with respect, agree with the view that a frisbee is an image or that it is a print. Similarly, in my opinion, the moulds from which these machine parts are made are not engravings. It is unnecessary to consider the question whether "engraving" in the Act includes such objects as were dealt with in James Arnold and Co Limited v. Miafern Limited (1980) RPC 397.
I should add that I am by no means convinced that the New Zealand decision, even if correct, produces success for the applicant on this point; as was pointed out on behalf of the respondent, the basis of that decision appears to have been that operations which involve cutting to create a shape are properly called engraving. But here there was no evidence that the moulds were produced by any sort of cutting.
The applicant also contended that the machine parts are themselves "engravings". Counsel did not shrink from the proposition that a machined steel shaft, however enormous, is an "engraving". That seems to me preposterous.
I therefore arrive at the conclusion that the applicant's claim to copyright in the moulds and machine parts is ill-founded and cannot succeed, because they cannot be the subject of copyright.
DESIGNS ACT
The respondent relied upon s.77 of the Copyright Act as a defence. Sub-section (1) reads as follows:

"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."

Sub-section (2) makes it not an infringement of copyright in the relevant work during a certain period -

"... to do anything that, at the time when it is done, would have been within the scope of the monopoly in the corresponding design if the corresponding design had, immediately before that time, been registered in respect of all articles made to the corresponding design that had, before that time, been sold, let for hire or offered or exposed for sale or hire in those circumstances."

The period in question need not be analysed, because it is not in contest that the events in question here fall within it. The respondent argued that there was no infringement, on the ground that if a corresponding design - i.e. a design corresponding to each drawing - had been registered then all the respondent did (assuming everything else against it) have been within the scope of the monopoly in that design.
The applicant answered this argument by contending that moulds, machine parts and drive mechanisms are not designs. It is unnecessary to say anything about that because I have held there is no copyright in such objects. The applicant also said the drawings are not designs "because they do not show features of shape or configuration applicable to any article" or because the drawings have not been applied to articles. Further, the applicant denied that the drawings were new or original, for the purposes of the Designs Act 1906.
For the reasons which follow, I have concluded that this defence is made out.
The first question is whether drawings of machine parts can be "designs" under the Designs Act. That Act was amended in 1981 in ways which are of present importance and it is convenient to consider first the pre-amendment position. According to Lahore Intellectual Property in Australia - Copyright Law (p 12,172), one of the purposes of the 1981 amendments was to overcome the effect of the decision in Amp Incorporated v. Utilux Proprietary Limited (1971) FSR 572; it was there held (see Edwards Hot Water System v. S.W. Hart and Co Pty Ltd (1983) 49 ALR 605 at 634) that:

"... if a shape is chosen not to appeal to the eye but solely to make the article work or to perform functional requirements, no design within the definition in the U.K. Act exists."

It was argued for the respondent that, despite that decision, in Australia, a design of a purely functional shape could, even prior to the 1981 amendments, be registered. The contention was that differences in the language used in the U.K. and Australian legislation made the Amp case inapplicable here.
That proposition was examined in British Franco Electric Pty Ltd v. Dowling Plastics Pty Ltd (1981) 1 NSWLR 448 and in Ogden Industries Pty Ltd v. Kis (Australia) Pty Ltd (1982) 2 NSWLR 283. I respectfully agree with the analyses in these cases and adopt the conclusion arrived at. This was that Amp Inc v. Unilux Pty Ltd did not establish the law on the point as far as Australia is concerned and that purely functional designs were registrable even prior to the 1981 amendment. Even if that conclusion were a debatable one (which, in my respectful opinion, it is not) I would have been inclined to follow these two single-judge decisions, which appear to be the only Australian cases in which the point has been thoroughly examined and decided. It should be noted that although the discussion of the matter before me and some of the judicial discussion of it referred to registrability of designs, the question whether purely functional designs are registrable depends simply on the definition of "design", not the Act's further requirements for registrability,

After referring to those two Australian cases, Franki J. said in Edwards Hot Water System v. S.W. Hart and Co Pty Ltd (above) at p 635:

"I have great difficulty in thinking that what is shown in that drawing shows features of shape or configuration that are applicable to any article. What is in fact shown is a fairly complicated piece of equipment. In my opinion, the appellant has not shown that the (relevant drawings), even if new or original, could be registered as a design."

Counsel for the applicant relied upon this passage. It may be authority that a design of a fairly complicated piece of equipment cannot now be, or could not prior to the 1981 amendment have been, registered. If the design of a piece of equipment having a functional purpose is registrable, I do not understand why the fact that it is complicated should make any difference. Apart from that, there is nothing particularly complicated about any of the components in issue here.
One possible reading of the dictum of Franki J. which I have quoted is that it relies on the doctrine that discriminates between a design which is applied to or applicable to an article and one which merely shows an idea, e.g. a way of making or arranging an article or articles: In Re Wolanski's Registered Design (1953) 88 CLR 278. The Wolanski case shows that a drawing indicating a method of making an article or of achieving an end by the use of an article is not registrable under the Designs Act.
It can hardly assist the applicant to say that what is sought to be protected by these proceedings is merely an idea. If so, the applicants can have no relevant copyright. But it is my opinion that the drawings here in question cannot be placed in the same class as those considered in the Wolanski case. The shape or configuration they depict is applicable to an article and capable of being judged by eye.
It should also be added that, on any view of the matter, the drawings which came into existence after the date of operation of the Designs Amendment Act 1981 (1 April 1982) are unaffected by the principle of the Amp case. Section 18 of the Designs Act, inserted by the 1981 amendment, allows registration of a design which "consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose."
It is necessary to discuss satisfaction of the conditions in para.(b) and (c) of s.77(1) of the Copyright Act. Paragraph (b) has its operation affected by reg.17 of the Copyright Regulations made under s.77(5). It is unnecessary to set out that regulation or explain its content. It is enough to say that it deems a design to be applied industrially if it is applied to more than 50 articles; that was not in contest. But a point was taken about para.(c). It was said by Mr Hanger QC that even if the components in question were articles to which the corresponding design had been applied, it was not those articles which were sold, but the mowers incoporating those articles. Generalising the submission, it was that if what is sold is an assembly or collection consisting of the article to which the corresponding design has been applied, together with other objects, then s.77 is inapplicable.
If the point is good, it does not seem to matter whether the collection of articles sold is assembled or otherwise joined together. If two pieces of machinery designed to be interconnected are sold in a packet in a disconnected state, there is a sense in which it is true to say that the sale is not of article A or article B, but of the two of them together. Nevertheless, it appears that for the purposes of s.77(1)(c), each of the articles should be regarded as having been sold; the section does not say or imply that it is inapplicable where the relevant article is sold as part of a larger collection or assembly. Mr Garnsey QC suggested that an answer to Mr Hanger QC's submission may be derived from the definition of "article" in s.4(1) of the Designs Act. While I accept that the word "articles" in s.77(1)(c) should be construed having regard to the Designs Act definition, on the principle that the two statutes are, so far as relevant, in pari materia, I do not agree that the Designs Act definition helps Mr Garnsey QC. The question is whether the sale must be of the relevant article only, or whether a broader and (in my opinion) more practical construction could be adopted; I prefer the latter approach. I therefore conclude that relevant articles were sold within the meaning of s.77(1)(c), although, so far as the evidence shows, they were not sold separately. I would add that it would be surprising if, in fact, none were sold as spare parts; that was not proved.
I have mentioned that the applicant argued that its drawings would not have been registrable under the Designs Act because they were not "new or original". It was pointed out that the requirement that the design be "new or original" found in s.17(1) of the Designs Act has no exact counterpart in copyright law. However, the argument was not much pressed and for the good reason that it is opposed to a group of cases discussed by French J. in Kevlacat Pty Ltd v. Trailcraft Marine Pty Ltd (1988) 79 ALR 534. The decisions are Interlego AG v. Alex Folley (Vic) Pty Ltd (1987) 13 FSR 283; Interlego AG v. Tyco Industries Inc (above) and Bayliner Marine Corp v. Doral Boats Pty Ltd (1987) 13 FSR 497.
Section 77 of the Copyright Act operates where there is a "corresponding design" which, sub-s.(2) contemplates, is one which might have been registered. From that one might infer that a respondent can rely on s.77 only if the design is proved to be registrable. If so, then as pointed out in the Bayliner case (above) at p 503, the rather paradoxical result ensues that the alleged infringer of copyright may win by proving that his opponent's design is novel. The Canadian view was accepted in the two later cases, but the Australian statute is significantly different from those considered in the three foreign decisions, as explained in Kevlacat (above) at pp 547-550.
I do not here repeat French J.'s discussion, but respectfully agree with his Honour's conclusion. This was that, although "design" in s.77 of the Copyright Act has the same meaning as in the Designs Act, to fall within the former provision a design need not be registrable. One reason for my concurrence in his Honour's opinion is that the three cases I have mentioned concerned statutes which made the relevant defence apply only to "designs capable of registration"; that expression presents a more formidable hurdle than the merely implicit inference to registrability in s.77(2) of our Act. The requirements of s.17(1) of the Designs Act therefore should not be held to restrict the scope of defence in s.77 of the Copyright Act.
It follows that the drawings on which the applicant relied cannot be the basis of a suit for infringement of copyright, in the circumstances of this case.
INFRINGEMENT
I have concluded in the immediately preceding two sections of these reasons that there is no copyright in the three-dimensional objects mentioned in the pleading and that there is no infringement of copyright in the drawing because of the defence under s.77 of the Copyright Act. Despite these conclusions, it seems to me desirable to consider the question of infringement as if I had reached contrary conclusions on the topics just mentioned.
The respondent, correctly in my view, identified three infringement issues: whether the respondent's drawings and components were produced by its independent work, whether the respondent had reproduced a substantial part of the applicant's work, and the "non-expert" question under s.71.
As to the first point, the respondent put forward a very elaborate case, tracing in detail the history of the development of its "auto drive". Much of this evidence had to do with attempts to develop a different sort of drive, in particular what was called a "Cox drive"; that evidence appears to me to have been of no assistance. Showing that the respondent did a great deal of work towards developing other sorts of drives had no bearing upon the question whether it simply copied the applicant's drive mechanism or, on the other hand, developed it independently.
The witnesses called on the question of independent development were Messrs Green, Miatt, Jackson and Richardson. None of these men is an engineer. Mr Miatt is a draftsman and the others are tradesmen. Evidence was also called from Mr Zandegiacomo, the respondent's manufacturing manager, who is in charge of Messrs Green et al; they constitute what the respondent calls its research and development section.
The substance of the evidence called from these witnesses was that in 1986 it was decided to develop what they called a "mule drive". They made components and had them made by others, built and tested prototypes and eventually arrived at a final satisfactory result. Little of what they did involved what might be called advanced engineering work; their techniques required, in the main, the application of common sense, trial and error, and, of course, experience.
Although the respondent's witnesses suggested otherwise, it is my opinion that to a considerable extent the experience on which they relied was that of the applicant. They examined the applicant's machine carefully, I have no doubt, and adopted the applicant's layout and basic design. As was pointed out by the applicant's engineering witnesses, and I suppose is obvious enough, quite different solutions could have been adopted to the problem of getting the power through the drive to turn the back wheels at an appropriate speed, while using the applicant's basic design. In particular, the size, shape and general appearance of the clutch plates and of the pulleys used by the applicant and the respondent are somewhat similar; one could undoubtedly devise quite different-looking clutch plates and pulleys which would work.
Although the respondent's witnesses did not say so, I infer from the circumstances that they did not in truth produce what might be called an independent design; they adapted the applicant's design. They were encouraged to act as they did by advice from a patent attorney who informed them, accurately, that there were no patent rights and that the problem was copyright.
Time and effort were spent, futilely as it seemed to me, to emphasise to the Court the extent to which the respondent's research and development section had arrived at the design of the respondent's drive without regard to what the applicant had done. Insofar as the respondent's case went along that line, it must be rejected. The real question is whether, having examined the applicant's drive and produced what was in truth a modification of its design, they finished with a design which was lawful or unlawful. It does not appear to be correct that merely applying the principle of a design is an infringement of copyright: but cf. L.B. (Plastics) Ltd v. Swish Products Ltd (supra) at 629.
It is not possible accurately to reconstruct the precise process whereby the respondent's design was arrived at. One reason for this is that, according to the respondent's evidence, superseded drawings were destroyed from time to time; it appears that this happened even after the dispute arose. But I am satisfied that, pressed for time, the tradesmen employed by the respondent based the components they produced upon their examination of the applicant's machine. But I do not believe that they made drawings of the applicant's components and then developed those drawings. I accept the evidence of Mr Richardson, who did most of the physical work in building the relevant prototypes, that the components were, in the first place, produced from metal without benefit of drawings.
I should add that, in reaching my conclusion that what the respondent produced was a modification of the applicant's design, I have not relied to any extent on a matter much emphasised on behalf of the applicant, namely the paucity of design calculations. At this level of design work there is not a need for a great deal of calculation. Nor, I think, would any of the respondent's employees have had sufficient technical knowledge to work out, by engineering calculations, (for example) the precise thickness of the aluminium required at various points in the clutch plates and pulleys, starting from the forces applied and working to the stresses induced. Nor, as a practical matter, were such refined calculations necessary. The respondent's general experience of the design and manufacture of mower components, as well as the knowledge that components about the size and shape used by the applicant worked well enough, made it unnecessary for the respondent's designers to engage a person capable of attempting the sort of calculations I have mentioned, or even more rough-and-ready stress calculations. The low power being transmitted and comparatively low speeds of rotation made it unlikely that components such as the bearings, clutch plates and pulleys would fail in ordinary use through sheer lack of strength.
Likewise, the applicant's designs were not produced by precise calculations of stresses at various points from which the necessary strength of material was deduced. A more refined design might have been produced by engaging technical experts of the kind who gave evidence before me, but it may be that nothing significant would have been gained thereby. It is true that the design of the applicant's drive required inventive skill, the application of which brought about such a useful design that it has been imitated by the respondent. But I am far from thinking that the design of each of the individual components such as the shims, springs and sprockets exhibited, on the evidence, any high degree of skill.
The next question to be considered is whether the respondent's components were a reproduction of the XLE drive mechanism or drawings of it. As to the latter, the statement of claim asserted copyright in drawings of a drive mechanism (as a whole), but no such drawing was particularised or proved; the particulars allege only an exploded drawing, meaning one showing the components in the relationship to one another.
Exhibit A40 is a display, on a board, of components of the XLE drive mechanism. I was repeatedly invited on behalf of the applicant to compare that display with the components collected in Exhibit R13, being the corresponding components incorporated in the respondent's design. The difficulty about accepting the invitation is that the Court's primary task is to compare the relevant drawings of the applicant with the components in R13, keeping in mind the "non-expert" question: s.71 of the Copyright Act. However, it appears to me clear that the similarities between the two sets of components are presented more strikingly when R13 and A40 are seen side by side than when one merely compares the applicant's drawings with R13. It cannot be unfair, at least in the first instance, to do what the applicant's counsel invited me to do.
The principal components are five in number.
1. Central Bearings.

These look much the same.

Shafts.

The shafts are of the same type, but markedly different in

appearance. As to type, each has a square section with a machined area at each end of it and adjacent threading. But the machined area on the applicant's shaft is of partly square and partly round shape, whereas the respondent's is round. When one looks away from that part of the shaft, the two appearances are quite different. Apart from the length, the most noticeable differences are that the applicant's shaft has a threaded section of narrowed diameter at each end, whereas the respondent's has a threaded section at one only, of about the same diameter as the adjacent shaft; further, the applicant's shaft has a substantial machined section of narrowed diameter at each end, whereas the respondents has such a section at one end only. It is perhaps also worth mentioning, although this is not quite so obvious to the eye, that the respondent's shaft has, and the applicant's shaft has not, a narrow flat section at each corner of the square portion of the shaft.

Clutch-fork

As I have explained, the foot pedal works with what has been

called a heel and toe mechanism so that pressure on the toe end produces forward motion, and pressure on the heel end rearward motion. This is achieved by mechanical linkage to a clutch-fork so arranged that when pressure is applied to the foot pedal the lever moves the central bearing one way or the other. The two levers are quite different in design, the only notable similarity being that the parts of each which exert force on the bearing consist in a pair of lugs of similar size and shape, but the applicant's lugs are attached to a semi-circular piece of metal and the respondent's to a rectangular piece. From that point on to the attachment of the lever to the next component they are also very dissimilar: that part of the applicant's mechanism is one piece of metal, whereas the respondent's consists of two pieces welded together, one of which is a piece of flat steel and the other a piece of rod.

Clutch Plates

The clutch plates are similar in diameter - the respondent's

is slightly wider - and in general appearance. Each has a flat section around the rim, that section being rather wider in R13; then each has a dished portion with a boss and square hole in the middle, the bosses looking about the same size as each other, as do the holes.

The differences are thus matters of detail, but they are not

insignificant details. The dish portions are differently shaped in that the applicant's dish is geometrically part of a single cone, whereas the respondent commences (starting from the outside) with a short steep conical portion followed by an almost flat cone and then a flat ring adjoining the boss. Further the bosses are, without descending to detail, noticeably different in appearance. Lastly, the square hole in the applicant's clutch plate is simply that, whereas the respondent has what might be called channels cut in each of the four sides, of which two (deeper and narrower than the others) accommodate the small pieces of steel which hold the respondent's clutch plates together.

The Pulleys

These are the same diameter and each has six radial ribs on

one side and none on the other. So far as the ribbed sides are different in appearance, that is mainly due to the respondent's having and the applicant's not having an additional circular rib. Other differences which are less noticeable are that the radial ribs in the respondent's pulley are of a more elaborate shape than the applicant's: the former taper down from the outside to the intermediate circular rib and then up again, whereas the latter taper all the way down from inside to outside. Further, the portions of the ribbed side beyond the ribs, bordering the pulley's groove, are significantly different: in the respondent's, the ribbed portion is set in further from the rim and the respondent's pulley has a projecting flat bead around the extremity, the corresponding bead in the applicant's being much smaller.

On the unribbed side, the differences in appearance are less,

although there are some. The most noticeable, perhaps, is that on that side the respondent's pulley has three small flat formed areas equidistant from each other around the rim, and the applicant's has no such areas. Apart from that, the applicant's design close to the circumference is somewhat different, chiefly in that, although each pulley has what might be called a channel area adjacent to the circumference, the applicant's channel is wider and substantially different in shape.

There are many other differences in detail which were discussed repeatedly during the hearing, but do not, I think, require much elaboration here. There was debate about what seemed to me a trivial matter, namely that each design has two springs in it and the springs are in some ways similar and in others different. Again, the applicant's pulley has the bearing inserted in quite a different way, in that the applicant's bearing stays where it is (one hopes) because it is forced into a space from which it cannot be ejected except by similar force, whereas the respondent's is maintained in position by a circlet - an almost circular piece of metal set in a machined groove. Then there was evidence of an elaborate kind about such commonplace items as nuts, shims and sprockets. There was discussion of the fact that each uses clutch material in the form of a ring of cork, the applicant's being somewhat similar to the respondent's. In the end, however, the applicant's case depended on the major components which I have discussed, and of those, the most arguable elements were the pulleys and clutchplates which, at a glance, appear quite similar; most of the differences in them to which I have alluded appear obvious only on closer inspection.

Clutch plates may be comparatively modern, but pulleys have been used by human beings, no doubt in every conceivable shape, since ancient times. The applicant has no monopoly in pulleys about 11" in diameter, nor in 12" pulleys, nor in pulleys with one rather flat and one ribbed side, nor in such pulleys where the ribbed side is dished and the other not. No evidence was put before me to suggest that the choice of a six-ribbed design, rather than use of any other number of ribs, is unusual or particularly ingenious.
The clutch plates are, of course, fairly simple objects.
The points just mentioned are relevant for the reasons discussed above, namely that substantiality of reproduction must be judged by quality rather than quantity. A feature of a drawing which does not display any particular originality or other merit is unlikely to support a case of infringement unless the corresponding feature in the allegedly infringing work is very similar to it. The moral strength of the applicant's case is that, as I have explained, the respondent studied its design and produced one based upon it; Mr Reinhold thinks it unfair that this has occurred, and I am sure he regards his inventive work as having been wrongly taken by the respondent. But in my opinion, although the applicant has an arguable case with respect to the clutch plates and pulleys, each is an object of a fairly commonplace kind. The respondent's components are not sufficiently similar to the applicant's drawings to warrant a finding of infringement, particularly when the basically simple shape of the applicant's clutch plate is kept in mind, and when it is noted that the applicant's pulley in Exhibit A40 is of a different diameter from that in any drawing on which the applicant can rely. It appears to me that the applicant must fail, as to both these components. The shafts are too dissimilar to give the applicant any sort of a case and so, even more clearly, is the clutch-fork. The lesser components are of a standard or commonplace kind, as I have mentioned.
In reaching the conclusions just expressed, I have derived but little assistance from the four expert witnesses who were called. To a greater or lesser degree, each adopted an advocate's role. The most telling point made in the expert evidence on behalf of the applicant was that some of the differences between the applicant's and the respondent's components were of little or no functional significance; that gave rise to the suggestion that the respondent had made change for the sake of change and to disguise its copying. Further, it was contended in the expert evidence that some feature of the applicant's design, which had no functional significance, had been preserved in the respondent's components, supporting an inference of copying. I have taken these points into account in reaching my conclusion expressed above as to the extent to which copying occurred. An example is that Mr J.K. Pizzey, an engineer called by the applicant, said that the fact that the respondent's clutch plate was dished to a greater extent than the applicant's would not affect its operation; he thought the stresses in the plates would not be significantly different. I accept that, but I do not believe that the differences in the design of the two plates were caused merely by the respondent's desire to avoid legal liability. I think the respondent decided to use a plate of about the same size and with a rather similar shape to the applicant's but that the difference between the two shapes are genuine - in the sense that the respondent did not set out to make its plate rather different merely in order to disguise its genesis.
It does not appear to me necessary, in the circumstances, to give any separate consideration to s.71 of the Copyright Act.
I should add that comparison of the drawings relied on by the applicant with the respondent's components has not led me to any conclusion differing from those expressed above.
SECTION 177
It was submitted for the respondent that the relevant drawings, or some of them, were "first published by, or under the direction or control of, the Commonwealth ..." within the meaning of s.177. Therefore, it was said, by virtue of that provision the Commonwealth became the owner of the copyright.
The contention depended upon publication of the complete specification for a patent, the subject of application no. 402,230, which is in evidence.
Assuming that the legal foundation of the argument is correct, a point on which it is unnecessary to comment, a factual basis is lacking. It is true, as Mr Garnsey QC said, that one can see a ribbed pulley drawn in the specification, but what is there depicted is plainly not the set of drawings on which the applicant relies, nor anything sufficiently close to give the argument any substance.
Under the same heading, the respondent contended that the making of the application for a patent amounted to a waiver of copyright in the drawings in the complete specification. It does not appear to me that that point has in reality anything to do with s.177, but it is also, in my opinion, a bad one. The suggestion seems first to have been made in Catnic Components Limited v. Hill and Smith Limited (1978) 4 FSR 405 at 427. It was that "in return for a potential monopoly, upon publication, the material disclosed ... in the specification must be deemed to be open to be used by the public ..." One must respecfully agree with the implication that the co-existence of copyright and rights as a patentee in respect of the same subject matter would seem odd, but in my view disclosure of what is published by the applicant for a patent does in truth enable those who study it to use it. The law of copyright only prevents substantial reproduction of what is drawn, and there may be (as this case illustrates) adoption of an idea or principle without infringement of copyright.
I therefore decline to hold that publication of the material disclosed in the specification provides any defence to the respondent.
OTHER ISSUES
Some additional questions were raised of lesser importance than those mentioned above. The respondent contended that the applicant should fail because of delay, the suggestion being that the proceedings (instituted on 20 September 1988) were too late.
It is not absolutely clear when the applicant became aware that the respondent's mower with its new drive was available for sale, but it appears to have been some six months earlier than the date of institution of the proceedings. During that period, Mr Reinhold took advice from a patent attorney, from a firm of solicitors, who discouraged him, and then from a second solicitors' firm, who wrote a letter on 27 May 1988 seeking undertakings. It was contended on behalf of the respondent that the letter was rather unsatisfactory in that it did not allege a breach of copyright or seek appropriate undertakings. However, it gave a clear warning that the applicant regarded the respondent's conduct as illegal, in particular in the respect that the respondent's ride-on mower had "installed in it a drive mechanism which is almost, if not completely, identical to the drive mechanism invented by Mr Theo Reinhold ..."
Because of difficulties with the second firm, the applicant consulted a third firm of solicitors, being that which currently acts in the matter. Considering the complexity of such a case as this, and the difficulty which I think must have been encountered in framing the cause of action, the delay seems to me not to have been excessive. Were the case otherwise tenable, it should not fail on the ground of delay.
The applicant contended, in accordance with its pleading, that there was a breach of s.52 of the Trade Practices Act on the part of the respondent, that being the principal subject of its complaint in the letter dated 27 May 1988 just discussed. It did not appear that this point was strongly pressed in the end; no reference is made to it in the applicant's detailed written submissions. The point desired to be taken, so far as I can gather from discussion during the course of the trial, was that the respondent acted in a misleading way by describing its "auto drive" as "all new". I think those reading its advertising would take this to mean that the drive was "all new" so far as the respondent is concerned; it would not be understood to suggest that the respondent invented the drive.
In my opinion the suit brought on the basis of s.52 of the Trade Practices Act must fail.
CONCLUSION
The applicant's claim must be dismissed because it had no copyright in the three-dimensional objects, its copyright in the drawings was not infringed and the respondent has a good defence under s.77 of the Copyright Act.
Since, although its claim has failed, the applicant was successful on some issues, I shall invite counsel to address me on costs, which are no doubt very substantial.
The application is dismissed.

[1990] FCA 154

11 APRIL 1990