Lacey v Foggin
[2002] FCA 1282
•17 OCTOBER 2002
FEDERAL COURT OF AUSTRALIA
Lacey v Foggin [2002] FCA 1282
INTELLECTUAL PROPERTY – Designs – alleged infringement of registered design for a head massager - whether respondent’s article is an application or obvious imitation of registered design - challenge by respondent to validity of applicant’s registered design – whether registered design amounts to a “method or principle of construction”
Designs Act 1906 (Cth) ss 4, 30, 32B
Firmagroup Australia Pty Ltd v Byrnes & Davidson Doors (Vic) Pty Ltd (1980) 180 CLR 483, followed
Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1984-86) 6 IPR 361, referred to
Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120, followed
Dart Industries Inc v Décor Corp Pty Ltd (1989) 15 IPR 403, followed
Wanem Pty Ltd v Tekiela (1991) 19 IPR 435, considered
Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268, referred to
Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119, cited
Macrae Knitting Mills v Lowes Ltd (1936) 55 CLR 725, referred toOren and Tiny Love Limited v Red Box Toy Factory Ltd [1999] EWHC Patents 255, considered
Schmittzehe v Roberts (1955) 72 RPC 122, considered
Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25, referred to
Dart Industries Inc v Décor Corp Pty Ltd (1993) 179 CLR 101, referred toDWAYNE DERRICK LACEY v CHRIS FOGGIN
N 987 of 2001
MADGWICK J
17 OCTOBER 2002
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 987 OF 2001
BETWEEN:
DWAYNE DERRICK LACEY
APPLICANTAND:
CHRIS FOGGIN
RESPONDENT
JUDGE:
MADGWICK
DATE OF ORDER:
17 OCTOBER 2002
WHERE MADE:
SYDNEY
THE COURT:
1.Declares that the respondent has infringed the Australian Registered Design No 134633 (“the Design”).
2.Orders that the respondent, whether by himself or his servants or agents, be permanently restrained from infringing the Design and in particular from:
(a)applying the Design or fraudulent or obvious imitations of the Design to non-electric head massage devices (“Infringing Head Massagers”); and
(b)selling, offering or keeping for sale or hire, Infringing Head Massagers; and
(c)manufacturing, selling, offering for sale or keeping for sale any of the head massagers marketed under the name “Shiver Me Timbers!” during the term of the Design.
3.Orders that an account be conducted by a Registrar of profits of the respondent arising out of his application of the Design with the parties to submit proposed directions in relation to the conduct of the account of profits within seven days.
4.Orders that the respondent is to pay the costs of the proceedings.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 987 OF 2001
BETWEEN:
DWAYNE DERRICK LACEY
APPLICANTAND:
CHRIS FOGGIN
RESPONDENT
JUDGE:
MADGWICK
DATE:
17 OCTOBER 2002
PLACE:
SYDNEY
REASONS FOR JUDGMENT
HIS HONOUR:
This case concerns the alleged infringement by the respondent of the applicant’s registered design in respect of a non-electric head massage device otherwise known as the “Orgasmatron” and described on its packaging as “the Ultimate Head Massager”. The device is designed to “gently massage the pressure points located around the head and back of the neck”. It is, in short, a head scratcher and, as the prosecution and defence of this case shows, apparently there is money in head scratchers. The respondent was, at all relevant times, the owner of a business trading under the name “Shiver Me Timbers!” and responsible for the manufacture and sale of the “Shiver Me Timbers!” head massager, the allegedly infringing article. By his amended application, the applicant seeks declaratory and injunctive relief and an order that all necessary accounts and enquiries be held of any profits made by the respondent arising from the alleged infringement of the design (a claim for damages was abandoned).
Background
The applicant, Mr Lacey is the author and owner of the Orgasmatron design (“the design”). Mr Lacey’s evidence is that he developed the design for a head massager in 1997 and commenced manufacturing and selling the Orgasmatron in early 1998. The design was granted and registered as Australian Registered Design No 134633 on 12 August 1998, and for the purposes of these proceedings, the relevant priority date for the design is 12 January 1998. The registration is currently in force until 12 January 2004.
The applicant first became aware of the Shiver Me Timbers! head massager in December 1998 and, following further investigations, in or about September 1999, the applicant was informed that the respondent and another individual were responsible for the manufacture and distribution of the Shiver Me Timbers! head massager. The product has been sold at markets and shops in New South Wales and Queensland. (The other individual subsequently advised the applicant that he was not involved and accordingly, is not a respondent in the present proceedings.) The applicant’s solicitors first wrote to the respondent on 7 October 1999 to protest the alleged infringement. A further letter was sent on 30 April 2001 requesting the respondent to agree to certain undertakings, effectively requiring him to cease the import, manufacture and/or sale of the respondent’s article.
On 27 June 2001 the applicant filed an application in this Court seeking relief pursuant to the Designs Act 1906 (Cth) (“the Act”). As a result of amended pleadings, the issues that require determination have been narrowed. The respondent admits that he has sold, manufactured and authorised the manufacture throughout Australia of the Shiver Me Timbers! head massager. The respondent also admits that he has profited from the manufacture, sale and supply of the article and further, concedes that the applicant had priority to the design. The issues remaining in dispute include a challenge to the validity of the design (via the respondent’s amended defence and cross claim) and, if it is a valid design, whether the respondent’s article has infringed the design.
The applicant’s design
The applicant’s certificate of registration is for a design of a “non electrical head massage device” and the statement of monopoly claimed is as follows:
“Monopoly is claimed in the features of shape and configuration of a non electric head massage device as shown in the accompanying representations.”[emphasis added]
The accompanying representations to the certificate are shown in Annexure “A” to these reasons.
As can be seen, the design’s features include an upright cylindrical handle shape surmounting an inverted wine glass shaped/cage-like set of prongs. The significant visual features are the cage effect (or inverted wine glass effect), the stalk-like handle shape surmounting the cylinder and the centripetal tendency of the feet of the prongs.
Validity of the design
It is convenient to consider first the respondent’s challenge to the validity of the design. This challenge was initially based on two grounds; firstly that the design amounted to “a method or principle of construction” which is excluded from protection under the Act (s 4) and secondly, that the design was not “new or original” because of previous use by the respondent, and so was ineligible for registration under the Act (s 17). However, having conceded that the applicant has priority to the design, the respondent did not press the second ground further.
The definition of “design” is found in s 4 of the Act and includes:
"features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction.”
An article is defined as “any article of manufacture and includes a part of such an article if made separately”: s 4.
In claiming that the applicant’s design is invalid because it amounts to a “method or principle of construction”, counsel for the respondent submitted:
(i)the features of the design do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform;
(ii)
the features are consistent with a variety of different shapes in articles containing those features, such as the respondent’s article, also a pronged head massage device, but not having the curved quality of the applicant’s design. A representation of it, as assembled, is at Annexure “B” hereto (this annexure is a photographic representation made at my direction of “Exhibit 1”, which was tendered at the hearing by the respondent as an example of the respondent’s article, manipulated in accordance with
the respondent’s directions, as contended by the respondent that those directions should be read; the respondent’s directions are set out at [17].
(iii)the monopoly features claimed are too general, such that it is possible to get several different appearances, which all embody the general features of the design.
Counsel for the respondent submitted that, in reality, the applicant was seeking to protect the idea behind the design, namely a method of construction and not a particular shape and configuration which would be visible to the eye when considering the completed article. He also argued that any right claimed for a flexible device other than as depicted in Annexure “A” could not be upheld because such would amount to a method or principle of construction.
In Firmagroup Australia Pty Ltd v Byrnes & Davidson Doors (Vic) Pty Ltd (1980) 180 CLR 483 (at 487), the High Court considered the scope of protection provided by the Act:
“The Act is concerned with shape and configuration not function … Specificity of shape and configuration must be conveyed by a registrable design; features of a design which do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform and which are consistent with a variety of particular shapes in articles copying those features are not amenable to protection by the Act. In Pugh v Riley Cycle Co Ltd (1912) 29 RPC 196 at 203, Parker J said:
‘The difficulty arises where the conception, thus arrived at, is not a definite conception as to shape or configuration, but only a conception as to some general characteristic of shape or configuration, necessitated by the mode or principle of construction, the definite shape or configuration being, consistently with such mode or principle of configuration, capable of variation within wide limits. To allow the registration of a conception of such general characteristics of shape and configuration might well be equivalent to allowing the registration of a conception relating to the mode or principle of construction.’
The principle is stated in Russell-Clarke on Copyright in Industrial Designs, 5th ed (1974), p 27, in a passage which has been judicially approved: ‘What he gets a monopoly for is one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general, and amount to a method or a principle of construction.’ (See Re Wolanski’s Registered Design (1953) 88 CLR 278…)” (emphasis added)
Disposition of the challenge to validity
In any way that the question may be considered, in my opinion what is involved here is not merely a “method or principle of construction”. The relevant monopoly claimed in this design is, in terms, in respect of the particular shape and configuration of the applicant’s head massager. As I described earlier, the significant visual features are the cage (or inverted wine glass) effect, the stalk-like vertical protrusion (the handle) surmounting the cylinder and the centripetal tendency of the feet of the prongs. The function of the article is to act as a head massager employing prongs so arranged as to afford stimulation over several linear centimetres of the scalp at the one time. This function could plainly be achieved in a number of ways through entirely different shapes and configurations from those employed in the applicant’s design. A comb would be one, a stiff brush another. The applicant’s design does not seek to monopolise the idea behind the design (namely an unmotorised head massage device) nor could one infer from the claimed representations that it is seeking to describe a method or principle of construction that would permit differences of shape: Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1984-86) 6 IPR 361 at 370; Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 at 124-5.
Infringement
The next question is whether the respondent’s article infringes the design. Section 25 of the Act grants a monopoly to the owner of a registered design. The monopoly granted is “the exclusive right to apply the design to an article in respect of which the design is so registered”: s 4. The circumstances in which a design will be deemed to have been infringed are set out in s 30 of the Act, as follows:
“(1)A person shall be deemed to infringe the monopoly in a registered design if he, without the licence or authority of the owner of the design:
(a)applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered;
(b)imports into Australia for sale, or for use for the purposes of any trade or business, any article in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied; or
(c)sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any article:
(i)to which the design or any fraudulent or obvious imitation of it has been applied in infringement of the monopoly in the design; or
(ii)in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied.
(2)If any person infringes the monopoly in a registered design, the owner of the design may bring an action or proceeding against him for infringement of the monopoly in the design.”
The evidence cannot support fraudulent imitation.
The cases regarding the test for infringement highlight that it is the visual comparison of the design with the alleged infringing article that is critical. It is necessary to look to the essential features of the design and rely more on a first impression than precise mathematical comparisons: see Dart Industries Inc v Décor Corp Pty Ltd (1989) 15 IPR 403 at 408-412 per Lockhart J (approved by Jenkinson and Gummow JJ). A useful summary of the principles in Dart Industries was given in Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 at 440 by Gummow J:
“(i)first impressions are important in determining whether there is an infringement of a design,
(ii)an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye notwithstanding slight differences,
(iii)the question must be looked at as one of substance and by examining the essential features of the design,
(iv) a closer correspondence between the registered design and the alleged
infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation,
(v) precise mathematical comparisons or matters of measurements or
ratios, which form no part of the mental picture which the eye conveys to the brain of shape or configuration suggested by the design, are not to be applied as the test of infringement; appearance to the eye is the critical issue, and
(vi) questions of infringement must not be determined by a narrow or overly technical approach, lest the registration be sapped of its worth to the registered owner.”
A design may be infringed in one of three ways: where the design that has been applied is the registered design, an obvious imitation being “not the same but a copy apparent to the eye notwithstanding slight differences” or a fraudulent imitation being “a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying”: Malleys v J W Tomlin at 127 referred to with approval by the High Court in Firmagroup. And in Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268 at 279-280 per Farwell J, an obvious imitation is “something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two” which highlights again the critical emphasis placed on the visual impression.
The respondent’s article
I turn now to consider the respondent’s article. The respondent’s product is sold with its constituent wires in a straightened state, that is, there is a handle with multiple prongs extending from the handle in a straight line. However, directions for the head massager’s assembly are included with the article. The directions are as follows:
Is the article an infringement of the applicant’s design?
Counsel for the applicant submits that the differences, if any, between the design and the respondent’s article are immaterial and the respondent’s article is, on a visual comparison, “virtually the same as the design”. On this basis, the applicant submits that there has been an obvious imitation of the design; alternatively, if it were found that there were minor differences between the design and the respondent’s article, it is submitted that the applicant’s design has been applied to the respondent’s article.
The applicant relies, among other matters, on expert evidence from Mr Cohen, a product design consultant, who was requested by the applicant to prepare a report in which he compared the respondent’s article with the applicant’s design. Whilst expert evidence can assist the Court, particularly in cases involving complex designs where technical assistance may be required to understand the design, ultimately the question of infringement is one to be determined by the Court: see Dart Industries per Lockhart J at 409; Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119 at 123 per von Doussa J.
Counsel for the respondent submits that the relevant features of shape and configuration in the applicant’s design are the “eight gently curved prongs joined at one end by a PVC piping handle”. Counsel submitted that the essential feature is the shape or configuration of the legs which give an overall impression of an “open ended cage”. To this extent, he agreed with the applicant’s expert, Mr Cohen. However, counsel submits that Mr Cohen’s opinion that the representation of the applicant’s design reveals a high level of angular definition should not be accepted. Counsel for the respondent then considered the respondent’s article in light of the applicant’s design. Firstly, he submits that it is the straightened state which is relevant for the test of infringement: “[s]hape is not achieved until the article is completely manufactured”: Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725 per Evatt J at 727 and, I infer, manufacture was said to be complete at the point of sale of the article. On that basis, counsel submits that the respondent’s article could not be considered an infringement of the design as it does not, at its point of sale by the respondent or his agents, resemble the particular shape and configuration of the prongs of the applicant’s design; it merely has similar functional features including a cylindrical handle and eight copper wire prongs, but these are able to be manipulated to fit any head shape.
Further counsel submits, if the directions supplied with the respondent’s article are followed, the end product does not infringe the design but produces an article with distinctive and sharply angulated bends, dissimilar to the curves of the applicant’s design. In addition, the handle and legs of the respondent’s article are longer than, and of different proportions from, the applicant’s design. So, even if it were found that some of the features resemble the applicant’s design, it is submitted that any similarities are in respect of general functional features, comprising and limited to the cylindrical handle and the eight copper wire prongs that can be manipulated to fit any head shape; but the applicant has no monopoly over such functional features.
Disposition of the infringement issue
As a preliminary point, I do not accept the respondent’s submission that I should consider the question of infringement by making the comparison of the respondent’s article with the applicant’s design at the point of sale, when the article is in its “unassembled” state. A design registered under the Act is in respect of “features of shape, configuration ……, being features that, in the finished article, can be judged by the eye...” (emphasis added). Where the article is sold on the basis of a common understanding between vendor and purchaser that the purchaser will continue a process of assembly to completion, the protection granted to the registered design extends to the features of the completed or finished article. The design and the respondent’s article both exist in a context where purchase of a “head-massaging” device by consumers is intended. Accordingly the matter should be viewed through the eyes of a notional consumer. As explained by Jacobs J in Oren and Tiny Love Limited v Red Box Toy Factory Ltd [1999] EWHC Patents 255 at paras 21-22, in proceedings which concerned a foldable baby’s “gym mat”:
“The Act [Registered Designs Act 1946 (UK)] concentrates on ‘features which in the finished article appeal to and are judged by the eye’. Suppose one has a design registration of a vase which included a picture of the underside, never seen in use. An exact imitation, even if it had a wildly different underside, would surely infringe. It would do so because the features which appeal to and are judged by the eye had been taken. …
What matters in the case of this article is what it looks like when unfolded. I do not think looking at this through the eye of the consumer that any particular significance is attached to the appearance of the folded article.” (emphasis added)
Upon that basis, the matter can be viewed in two ways. Firstly, as noted earlier, the significant visual features of the product are the cage (or inverted wine glass) effect, the stalk-like handle surmounting the cylinder and the centripetal tendency of the feet of the prongs. On this view, the fact that there are curves in the representations of the design is an irrelevancy or, at least, a minor detail since all the above elements remain if the respondent’s article is assembled, as counsel for the respondent contends, strictly according to the accompanying instructions.
Alternatively, the curved or ovoid shape is also an essential element of the shape or configuration. On that view, it is necessary to confront the way in which readers of the respondent’s instructions would be likely, as a practical matter, to interpret them and what is meant by the direction “shape to head”. The Macquarie Dictionary defines the verb “shape” to include the following meanings: “to give definite form, … or character to; fashion or form” and “to adjust, adapt”. The respondent’s directions, and in particular direction no. 5, do not merely direct the user to adjust the tips to head size or shape. Most human heads have a more or less ovoid shape, and an instruction to “shape to head” would, in my opinion, strongly suggest to a typical purchaser that the article should be curved to fit comfortably over the user’s head and not left in a stiffly angular format, as suggested by counsel for the respondent. On that basis, it would be sufficient if, as is the case here, a usual method of following the instructions would result in something that would only be trivially different from the registered design. In Schmittzehe v Roberts (1955) 72 RPC 122, a case concerned with the design of a pliable rag doll, Lloyd-Jacobs J held that, if a design has sufficiently significant visual features, it is enough that an infringing article can, in the ordinary course of events, be manipulated so as to fully enough correspond with the registered representation. As Lloyd-Jacobs J held at 125:
“There is no question that that figure can readily be manipulated into positions similar to those which form the illustration to the design registration, and if so manipulated they are in substance indistinguishable form that which forms the Plaintiff’s monopoly; but …Counsel for the Defendant, has submitted that unless the Defendant can be fixed with the knowledge of such manipulation of her figures as to resemble the illustrations in the design registration, the Plaintiff has not made out a case of infringement.
In my judgment that submission proceeds upon a mistaken appreciation of the scope of the Registered Designs Act. A registration, if valid, gives to the registered proprietor an exclusive right in relation to articles to which the registered design, pr design not substantially different from it, has been applied, and in my judgment the manufacture and offer for sale of a figure which, qua its characteristic features is indistinguishable from the registered design, is sufficient to establish infringement of the statutory monopoly, wholly irrespective of whether by manipulation the precise attitude chosen for the purposes of representation can be avoided.”
On either view of the significant visual features of the design and of the respondent’s article, in my opinion, the article is an application of the applicant’s design. It is unnecessary to consider whether it also amounts to an obvious imitation.
Remedies for infringement
An applicant is entitled to elect to seek damages or an account of profits: s 32B of the Act. Here, the applicant has elected to seek an account of profits. The principles regarding this remedy were discussed by Windeyer J in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 and again by the High Court in Dart Industries v Décor Corp (1993) 179 CLR 101. The order is a discretionary one. If the respondent satisfies the Court that, at the time of infringement was not aware that the design was registered, and that he had, prior to that time, taken all reasonable steps to ascertain whether a monopoly existed, an order for an account of profits may not be granted: see s 32B(2) of the Act. The respondent has not provided evidence to satisfy me that such an order should not be granted.
The applicant sought to have an account of profits conducted forthwith as part of these proceedings. Counsel for the respondent opposed this course of action on the basis that the respondent had understood that if such an order were made, the account would actually be taken at a later time.
The amended application seeks the following order:
“That all necessary accounts and inquiries be held of and damage suffered by the applicant and/or profits made by the respondent’s infringement of the design.”
In addition to this, a letter from the applicant’s solicitors dated 28 May 2002, which was sent to the respondent’s solicitors noted that, subject to their client’s final instructions, their client “will elect to seek an account of profits as his remedy”.
In the normal course of events, if a party seeks an order that an account of profits be taken, I would understand this to mean, that an account should be taken by an officer of the Court, other than the presiding judge. In my opinion, it was reasonably open for a misunderstanding to occur between the parties as to when the conduct of the account would actually occur. Whilst I wish to save the parties from further costs, it would be unfair to prevent the respondent from presenting further evidence in respect of such account, and I consider that it is appropriate that an account of profits should be taken after the respondent has had such an opportunity. I will hear the parties’ proposals in that regard.
Disposition
I will order that an account be conducted of profits of the respondent arising out of his application of the applicant’s design and otherwise make orders generally as sought by the applicant. The parties are to submit proposed directions in that regard within seven days. The respondent will be ordered to pay the costs of the hearing, of and incidental to the account and otherwise of these proceedings.
I certify that the thirty (30) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Madgwick.
Associate:
Dated: 17 October 2002
Counsel for the Applicant:
Ms A M Bowne
Solicitor for the Applicant:
Griffith Hack Lawyers
Counsel for the Respondent:
Mr D P Morzone
Solicitor for the Respondent:
O’Reilly & Stevens Lawyers
Date of Hearing:
18 June 2002
Date of Judgment:
17 October 2002
ANNEXURE A
No.134633
Register of designs
Designs Act 1906Representations relating to Design Registration No. 134633
ANNEXURE B“Exhibit 1” – Example of the Respondent’s article
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