Shacklady v Atkins

960

JUDGMENT No. ........ ...

.,..,,J ,,-.

C A T C H W O R D S

WEBLMXUAL PROPERTY - Copyright - whether copyright subsists in models and drawings of a yacht - infringement - whether flop-moulding from an existing yacht to produce a new yacht embodying the features of the protected work constitutes an infringing act - reproduction by copying in three dimensions from a three dimensional copy of the work - Designs - overlap between the

and -the - whether copyright protection lost through the industrial application of an unregistered corresponding design - temporal scope of the legislatwe provisions - whether the design industrially applied - whether an article was sold - meaning of "article" and "sale" - meaning of "design" - whether the drawings disclosed a registrable design - whether shape of design dictated solely by function.

m	l968 (Cth) - ss 21, 31,36, 77

11906 ss4(1), 17, 17A

v	(1990) 26 FCR 393

(1992) 39 FCR 348

td (1987) 11 IPR

. .

k t r o n ~

Patents C0 J,td [l9831 FSR 5

Press-F-

(1993) 40 FCR 274

rt A-

Ptv J .td v Puma A

ustralia Ptv Ltd (1985) 4 IPR 120

. .

v. Federal

of Taxation (1932) 48 CLR 178

M v Jvlacbeth & G w

[l9041 AC 223

[l9651 Ch D 1

Warman

v. F.nvirotech Australia Ptv Ltd (1986) 6 IPR 578

WEA Rec-

(1990) % ALR 365

(1992) 107 ALR 465

Davies J

30 November 1994

Sydney

12 DEC 1994

FEDERAL COURT OF

AUSTRALIA PRINCIPAL REQISTRY

COURT OF AUSTRAJ.IA	1
)

NEW	SOUTH WAJ .FS DISTRICT REGISTRY	) NG 423 of 1994
1 1

BETWEEN: POBERT SHACKLADY

Applicant

First Respondent

Second Respondent

LhWn:	Davies J
l2&:	30 November 1994
&!X	Sydney

COURT D

1. Copyright subsists in the model, exh E, and the drawings exhs RS1 to RS34 inclusive produced by Mr J.E. Adams for the Adams 10 Class Yacht.

2. The applicant IS, and has been slnce 9 December 1993, the owner of, and entitled to the copyright in all of the drawings exhs RS1 to RS34

inclusive for the yacht known as the Adams 10 Class Yacht.

3. The application be otherwise dismssed.

Costs be reserved.

&&xE Settlement and entry of orders 1s dealt wlth in Order 36 of the Federal

Court Rules.

FF.DF.RA1. COURT OF AUSTRALIA

1 1

NEW SOUTH WALFUSTRICI' REGISTRY	) NG 423 of 1994
1

BETWEEN: -

Applicant

m: -

First Respondent

PATRICK CBBBQbEL

Second Respondent

-	!ham:	Davies J
RE&:	30 November 1994
u!x:	Sydney

The applicant, Mr Robert Shacklady, has been involved in the construction and supply of yachts for approximately 20 years.

In October 1984, he purchased the

moulds for the Adams 10 and the Adarns 10 Cruislng yachts.

The Adams 10 is a 33

foot racing yacht and Adams 10 is a recognised class. Yachts of that class compete

regularly on Sydney Harbour. Since 1984, Mr Shacklady has been the supplier of new Adams 10 yachts. Over the tlme, he has supplied approximately 40 of the yachts to

purchasers.

There has, however, been only one contract for a new Adams 10 yacht since

1990. Recently, Mr Shacklady and the deslgner of the Adams 10 yacht, Mr Joseph

Alan Adams, have taken steps to develop a new 10 metre yacht, which Mr Shacklady

intends to call 'The Adams Super Ten". At the same time, some members of the

Adams 10 Class Association of Australia have become dissatisfied with what they

perceive to be Mr Shacklady's lack of promotion of the Adams 10 class. The

respondents, Robert A t b s and Patrick Carroll, are two members of the Association who have taken some action towards having Adams 10 yachts constructed by a builder independent of Mr Shacklady's organisation.

In the present proceedings, Mr Shacklady seeks a declaration that copyr~ght

subsisted in certain models which were produced by Mr Adams in or about 1976 in the course of the design of the Adams 10 class yacht, and also in the drawings, plans and specifications prepared by Mr Adams for the Adams 10 class yacht and that he, Mr Shacklady, is the owner of and entltled to the copynght in the drawings. Mr

Shacklady seeks a declaration that the respondents are threatening to infnnge the

copyright. He seeks an injunction restraining them from doing so and an order for the delivery up of certain articles. Mr Adams is not a party to the proceeding but no objection to the relief claims was raised by reason of the non-joinder.

Section 32 of the m

1968 (Cth) provides that copynght shall subsist

in original literary, dramatic, musical and artlstic works and s 35 provides that, subject to other matters such as assignment, the author of a literary, dramatic, musical or artistic work is the owner of any copyright therein.

Section lO(1) of the Act defines "artistic work" as:-

a painting, sculpture, drawtng, engraving or photograph, whether the work IS of

'(a)	anlstlc quahty or not
(b)	a bu~ldlng
quality or not; or

or a model of a bu~ldlng,

whether the bu~ldlng

or model is of anistlc

(c)

a work of artistlc craftsmanship to whlch neither of the last two preceding

paragraphs applies"

- In about 1976, Mr Adams, who was a self-employed yacht designer, was commissioned to design a 66 foot ocean racing yacht. Mr Adams commenced his task

by constructing timber models. To develop a model, Mr Adams first sculpted an

appropriate piece of wood with a tomahawk. The resultant form was smoothed. A keel was added, as was the rudder in the case of exh D. Exhibit D is a model of the

port half of the hull, as if the vessel had been cut from bow to stem. There is a

plywood insert for the keel and another for the rudder. The model is approximately

87 cm in length.

As the result of a change m the International Offshore Organisation rules, the

proposed class was abandoned, after only one yacht had been built. Mr Adams then

conceived the idea of using one of the models as a basis for a 33 foot racing yacht.

Exhibit E is the model, 64 cm in length, which he developed for that purpose. This model commenced as a model for the 66 foot ocean racing yacht. It is a model of the port half of the hull, with a plywood insert for the keel.

The evidence given by Mr Adams as to the steps taken by him m developing

the drawings from the model was not entlrely consistent. Mr Adams gave this

evidence:-

"And so rt IS not just a pure mathemat~al	relationsh~p	to get from a model to the 33
footer?---No.

And so you had to apply your slull as a yacht des~gner

to come up w~th

the dramngs

lncludlng in particular the first dramng of the hull?---That's correct.'

Mr Adams had earlier explained that the process of deslgnlng was complex and that

one of the factors to be considered was displacement, whlch involved matters of volume and weight. From thls evidence, I would conclude that designing skills, including the making of calculations and adjustments, were required in the development from the model to the drawings.

However, in hls re-examination, Mr Adams gave thls evidence:-

'So far as the drawngs you produced related to the appearance of the boat, that IS

reflecting the hull shape, keel and ngglng, what was lnvolved in worlong from the model to the drawings?---I changed the model a llttle bit to increase the beam for the 33 foot and you can see on these two models here if you look at them that they're very slmilar m n though one's a 66 footer and the other one's a 33 and then after, as I say, changing the model just sllghtly to Increase the beam on the 33 I took the lines off it. That just involves cutting out cardboard shapes and putting them on paper.'

This evldence shows that to make the model, exh E, suitable for a 33 foot rather than a 66 foot yacht, it was necessary to increase the beam, presumably to affect the displacement. The evidence in the above passage suggests that this change was made

on the model itself and that, thereafter, Mr Adams merely took the llnes off the model by cutting out cardboard shapes. Apart from the fact that thls evidence seems to conflict with the evidence prewously set out, it 1s lmposstble to see from the model, exh E, how or where the beam was increased. A brlef inspection of the model does not appear to show that fibreglass or other filling was added to the tlmber hull to increase the beam.

On the whole of the evidence, I have come to the view that the drawings were

not a mere routlne development from the model and that their creation involved

designing skill and elements of judgment. In developing his design, Mr Adams had a concept in mind. As his design progressed, Mr Adams made necessary calculations and adjustments to ensure that the yacht would have the desired displacement and the functional attributes which he sought. In my opinion, the development of the concept

was continuous, with the model exh E and the drawings being stages m which Mr Adams' concept was expressed. For the purposes of the present case, little is gained

by differentiating between the model and the drawings. They both gave expression to

Mr Adams' design, the drawings doing so in a form which could readily be applied by

a boat builder.

I should note, however, in case the distinction between the model exh E and the drawings becomes material, that Mr J Garnsey QC, with whom Mr J van Aalst of counsel appeared for the applicant, and Mr D K Catterns QC, with whom Mr R Cobden of counsel appeared for the respondents, were agreed that exh E was an

artlstic work for the purposes of the Act, at least on the footing that the model was a

sculpture. In view of the concession, I do not conslder the issue for myself.

Mr Adams prepared the drawlngs whlch are in evidence, exhs RSI to RS34.

The plans show various detalls of the yacht lnclud~ng

the ng.

Thereafter a wooden vessel or plug was constructed by a boatbu~lder in

accordance with Mr Adams' plans. The wooden plug is in fact still sailing today. A

female fibreglass mould was bullt over the wooden plug. This process occurred for all

parts of the yacht that were to be moulded. The plug was coated with jelcoat and

several layers of glass reinforced plastic were sprayed onto it. Finally, the plug was removed leaving the female mould. To construct a yacht, the process was reversed. The ~nside of the female mould was coated wth jelcoat. Then glass reinforced plastic

was sprayed within the mould. The female mould was removed leaving the hull or

other part for its designed use.

Approximately 100 fibreglass Adams 10 yachts were constructed using the original set of fibreglass moulds. In October 1984, Carina Yachts Pty Ltd was the owner of the set of moulds and the builder of the yachts. In that month, Mr Shacklady purchased the set of moulds. Thereafter, he had a number of the yachts

constructed for his clients using the set of moulds. Mr Shacklady first had the yachts constructed by Bosun Boat Builders of Caboolture, Queensland, then later by Bosum Boat Builders at Terrey Hills, Sydney and, finally, by Windersea Yachts, Taree, NSW.

These companies constructed the hull, the deck and the furniture components for the

yachts. If the client wished it, Mr Shacklady's company, Seahorse Marine Pty Ltd,

completed the yacht by installing a mast, the rigging and the deck equipment. -

Yacht Design Pty Ltd in about 1980 and was subsequently assigned by that company

to Mr Shacklady on 9 December 1993.

I am satisfied that Mr Adams was the author of the models and of the

drawings for the yacht and, as such, was the owner of any copyright therein. The

models and the drawings were orignal works.

It is alleged on behalf of the applicant that the respondents are seeking to obtain a builder to reproduce then design. It is alleged that thls is to be done by a process of flop moulding. It is said that th~s will amount to infringement of the

vessel as the plug from which a female mould a constructed.

Under s 31(1) of the m,

exclusive right "to reproduce the work in a material form". Under s.36(1), the copyright is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does or authorises the doing in Australia of an act comprised in the copyright. The alleged act m this case is the

reproduction of the work in a material form. Section 21(3) of the

"(3) For the purposes of this Act, an artlstrc work shall be deemed to have been

reproduced -

(a)

in the case of a work in a two-d~mens~onal

form - ~f a version of the work IS produced

m a three-dimens~onal

form; or

m the case of a work in a threedrmensionaf form - rf a verslon of the work IS

produced in a twodimens~onal

form,

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

work'

Moreover, S 14(1) of the Act provides:-

"(1) In thls Act, unless the wntraly ~ntentlon

appean

(a)	a reference to the dolng of an act in relatlon to a work or other subject-

matter shall be read as lncludlng a reference to the dolng of that act In

relat~on

to a substant~al

part of the work or other subject-matter; and

a reference to a reproduct~on,

adaptation or wpy of a work shall be read as ldudlng

a reference to a reproduct~on,

adaptation or copy of a substantial pan of the work, as

the case may be."

Havlng regard to these provisions, I am satisfied that the construction of an

Adams 10 yacht by using the process of flop moulding from an existing yacht rather

than by the direct application of Mr Adams' drawlngs would, subject to s 77 of the W, constitute an infringement of the copynght. A des~gn is registrable whether it is applicable for the shape or configuration of an article or for the pattern or ornament thereof. It follows that Mr Adams' design for the shape and configur- ation of the Adams 10 yacht may be infringed by the production, through a process of flop moulding, of a yacht which Incorporates hls design. Copying need not be direct.

See v S w h Products Ltd (1979) RPC 551; British Levland Motor

v m

Patents CO Ltd [l9831 FSR 51.

In Kevlacat Pty Ltd v

T r a i l c r a f t e

Ptv J .td (1987) 11 IPR 77, French J said at 83:-

Thh transdimens~onal reproduction may be effected directly or indirectly by mpylng m three dimens~ons from a three-dlmenslonal verslon of the work: king Feumm

ate Inc v 0 & M Meeman Ltd [l9411 AC 417; Dorlmg v Honnor Mnnne La[

[l9651 Ch 1; Mmhant Adventurers Ltd v M Grew & CO Ltd [l9711 2 All ER 657; LE (Plamcs) Lrd v Swrrh Products Ltd 119791 5 FSR 145, RPC 551. For completeness it

IS to be obsernd that the substantlal~ty promlons of s 14 apply to the process

mntemplated by s 21(3): S W Han & CO PIy Ltd v Edwards Hot Water Systems (1985) 61 ALR 251 at 254; 5 IPR 13 at 16 per G~bbs CJ, at ALR 258; IPR 20 per Mason J, and at ALR 268; IPR 13 at 30 per Brennan J."

T5e. shape and configuration of the yacht is set out m Mr Adams' draw~ngs such as exhs RSI, RS2 and RS12. The reproduct~on of the hull and deck, in

accordance with Mr Adams' design, would constitute a substantial reproduction of the design. Although plans such as exh RS12 show the mast, rigging and sails, the

configuration of these is understood to be optional. Mr Shacklady's evidence was that, on occasions, he supplied bare yachts and, on other occasions, fully fitted yachts. Masts, rigging and salls could be developed to the owner's specification. Accordmgly, the reproduction of the hull and deck would be a substantial reproduction of the design.

The evidence does not show that elther of the respondents themselves propose to infringe the copyright. Nor does the ev~dence show that events have reached the stage where a boatbuilder proposes to develop a set of moulds from an existmg yacht. Nevertheless, an issue has arisen which the Court should clarify by the grant of

appropriate declarations. The respondents have initiated inquiries which are inconsistent with Mr Shacklady's claimed rights and they have instructed counsel and

solicitors to oppose in these proceedings the claims which Mr Shacklady makes. Therefore, the respondents have put themselves at risk should the Court, in its

discretion, consider that a declaration should be made and that costs should be

awarded. Subject to S 77 of the Copvrieht Act, I am satisfied that those orders should

be made.

Section 77 in its present form was flrst introduced by the Govrieht

Amendment Act 1989, S 11. That Act was repealed by the Coovrieht Amend-

/Re-enactment', Act 1993 (Cth) (No 107 of 1993) which itself re-enacted certaln

provisions of the 1989 Act ~ncluding

s 11 thereof. The re-enacted provision was p e n

effect as from 1 October 1990. See s 4 of the 1993 Act.

Section 77, as enacted by these provisions, reads as follows:

7. (1) This section applres where:

mpyright subsists in an artlstrc work (other than a bulldmg or a model of a building,

(a)

or a work of anlstic craftsmanshrp) whether made before the mmmencemenr of 1111s a corresponding design is applred industrially, whether m Australia or elsewhere, by or

with the Ltcence of the owner of the copyright in the work m the place where the

industrial application happens;

(c)

mrmponding deslgn has been so applied (in thls section called 'anlcles made to the at any time on or after the commencement of thls sealon, articles to which the

corrcapondrng deign') are sold, let for hlre or offered or exposed for sale or hrre,

whether in Australia or elsewhere; and

(d at that trme, the corresponding desrgn IS not reglstrable under the *Dcstgns Act* 1906 or work on or after the day on whlch artlcles made to the corresponding desrgn are first (2)	has not been registered under that Act.
It is not an infringement of the copyright in the artlstlc work to reproduce the

so sold, let for hue or offered or exposed for sale or hrre, by applying that, or any

other, mrmponding design to an article.

The regulations may specify the crrcumstances m whrch a desrgn is, for the

(4)

purposes of this sectron, to be taken to be applled industrially "

Regulation 17(1) of the Copyright Regulations provides:

"17. (1) For the purpo~es	of sectron 77 of the Act, a dcsrgn is taken to be applied
industrially d lt is applred -

(a)	to more than fifty artrcles; or
@)	pieces."

to one or more artrcles (other than hand-made artrcles) manufactured in lengths or

The present S 77 applles to copyr~ghts

whether they come lnto existence before

or after the commencement of the Act.

See S 77(l)(a) & (c) and Interleeo AG

Tradine Ptv Jimited (1992) 39 FCR 348 at 385. Mr Garnsey submitted that

S 77 did not apply as Mr Shacklady's right to enforce his copyright, as it exlsted

immediately prior to 1 October 1990, was preserved by S 8 of the Acts Interoretation

1901 (Cth).

However, S 77 merely concerns ltself with three dimensional

reproductions in the context of a corresponding design that is applied industrially. The section is expressed to have operation in relation to past events but only in the circumstance that on or after its commencement articles to whlch the deslgn is applied are sold, let for hire and so on. The section must be given effect according to its

terms.

Thus, in M e t e x Fabrics Inc v C & F Fabrlcs Ptv Ltd (1992) 24 IPR 449,

Wilcox J said at 458:-

'In my opinion, the reason why it was thought unnecessaty to lnsert a transitronal pronsion in the 1989 Act is that lnfrlngement of copyright is a day-to-day phenomenon. Whilst legislation stating that it u no1 an infringement to do certaln actions is in force, the person doing those actrons is protected. If that legislation u repealed, the protection remains in respect of actions done whilst the legslation wss in place because no cause of action arose out of the actrons. But there is no pmteaion in relation to future actions because, as from the moment of repeal, the immunity is lost; a cause of action may arise out of those actions."

Section 17A of the M e n s Act 1906 (Cth) supports this reading as, in the circumstances which it specifies, it preserves the ability to apply for a design until all the steps which S 77(1) specifies occur.

Para 77(l)(a) is satisfied as copyright subsists in Mr Adams' drawmgs for the

Adams 10 yacht.

Para 77(l)(b) IS satisfied as the deslgn was applied industrially with the hence of the owner of the copyright by be~ng

applled to approximately 100 Adams 10 Class

yachts. In my oplnlon, the regular application of the des~gn

in the construction of

yachts is an application of an Industrial nature be~ng the repetitive application of a design in the manufacture or construction of goods for sale. See Press-Form Ptv J.td

(1993) 40 FCR 274, Safe Sport Australia Ptv Ltd v Puma Australia

(1985) 4 IPR 120; Be Colliers A~plicati~n

(1940) 57 RPC 121; Kevlacat Pty

m v Trailcraft

Ptv J.td (1987) 11 IPR 77. The number specified in reg 17(1)

was exceeded. In -

Gummow J said at 282:-

'What reg 17 does do is to supply a fa~rly

plain measure by whlch there may be drawn

the line beyond which there is industrial~sation of the des~gn.'

See also SZIfe S ~ o r t

Australia at 126; Kevlacat at 88-89.

The operation of S 77(l)(c) poses more difficulty. Although s.77(l)(c) uses the term "articles", S 23(b) of the Acts Interpretation Act provides that, unless the contrary intention appears, words in the plural number include the singular. See m v (1992) 107 ALR 465 at 472-3. I read s 77(l)(c) as encompassing a single sale when the corresponding design has been applied industrially at a prior time and the sale is a continuation of the industr~al application of the design. The word "articles" is also used in S 77(2). In this context, it cannot be doubted that the first sale of an article made to the corresponding design would be sufficient 'for the operation of the sub-section provided that, at that time, it was intended that the corresponding design would be applied ~ndustrlally and that the amcle first sold came

into being in the course of the lndustr~al

application.

Mr Garnsey submitted that there was no sale after the commencement of S 77

on 1 October 1990. One Adams 10 yacht was supplled thereafter by Mr Shacklady's

company, Seahorse Marine Pty Limlted, to a company connected wth the respondent, Robert Atkins, Truflo Sales Pty Limited. The agreement for the construction of the

vessel was dated 25 February 1994. The requirement was for a "Bare Yacht" which was defined as "Glass hull with keel attached including any micro-ballooned filling, but excluding rudder and tiller, forestay and backstay fittings, deck collar and spas, standing and running rigging and associated fittings." The yacht was to be and was constructed to the stage of hull, deck and moulded furniture, with a number of other elements fitted and certain items supplied but not fitted. The yacht was delivered to Truflo Sales Pty Limited on 13 July 1994. In the following week, T d l o Sales Pty

Limited fitted out the yacht by erecting the spas and supplying and fitting the deck

hardware such as winches, cleats and internal fitt~ngs such as bilge pumps and

outboard brackets. Truflo Sales Pty Limlted delivered the yacht to its client, Mr Gary Hopes, on 25 July 1994. The contract between Mr Hopes and Truflo Sales Pty Limited is not in evidence.

Mr Garnsey submitted that the relevant contract was a contract for construction, not for sale.

But the term "sale" in a statutory context often has a wide

. .

denotation. See

v. Federal -

Taxati~g

(1932) 48 CLR

-178 and

. .

Xgbart W e e CO J-td	v. Federal Commissloner of	(1951) 82 CLR 372 at
382.

Whether the matter be looked at in accordance with the agreement between

Truflo Sales Pty Limited and Seahorse Marlne Pty Limlted or whether what is

examined is the transaction as between Truflo Sales Pty Limited and Mr Gary Hopes,

I am satisfied that there was a relevant sale for the purposes of S 77(l)(c). The

contract between Seahorse Marine Pty Limlted and Truflo Sales Pty Limited was for

the sale and purchase of a yacht completed to the "Bare Yacht" stage. The contract with Mr Hopes was for the sale and purchase of a fully completed yacht. Both transactions were sales for the purpose of S 77(l)(c). See, eg, m v Wcbeth &

Para 77(l)(d) was satisfied in that the correspondmg design was not registered

under the -

Mr Garnsey submitted that S 77 cannot apply unless the corresponding design

was a design to which the Desims Act applied. As Lockhart J said in Hosokawa

Micron v Fortune (1990) 26 FCR 393 at 396, the word "design" is

not defined in the m i e h t Act but has been held to have the same meanmg in S 77

as in the -. I take the relevant date to be 1976, prior to the amendment of

the Q & n s Act by Act No 42 of 1981. The Act as amended now provides that a design is not incapable of registration by reason only that it consists of features of

shape or configurat~on

that serve only a functional purpose.

Mr Garnsey submitted that Mr Adams' design was never registrable under the

for the design was dictated solely by the function which the yacht was to

serve. This submission relied upon two bases.	First, the Des~ens	Act S 4(1) defines
"deslgn" as meaning:-

'features of shape, configurat~on, pattern or ornamentation applicable to an article, being features that, m the finlshed artrle, can be judged by the eye, but does not

include a method or pnnc~ple

of construct~on".

Secondly, the Designs Regulations, as in force when Mr Adams prepared his first

drawings and when the first yachts were produced, provided, inter alia:-

'Ulk (1) For the pulposes of sub-sectlon (2) of sectlon 17 of the Act, designs for

articles included in any of the classes of artlcles spec~fied m the next Sueceedlng sub-

regulation are excluded from ffiplratlon under the Act.

(2)

The cl-

of articles are -

(a)

works of sculpture other than casts or models used or mtended to be used as models

or pattern to be mult~plied by an ~ndustrial

process;

A like issue was considered by Northrop, Lockhart & Gummow JJ in

m.	There were some differences m their Honours expressions of the

principle to be applied. However, the principle was subsequently restated in bterleno

by Gummow J, with whom Black CJ and Lockhart J agreed, where his Honour said at

"The authonties supporting the pr~naple that deslgn d~ctated solely by function ls not registrable are considered in detail m the judgments m Hosokawa M m n Intananonal. They need not be m deta~l here. However, what must be stressed is that it a no objection to the reptration of a desrgn that a serves a functlon purpose, so long as its shape. is not dictated solely by fuqction: Hecla F o u w CO v W a k , Hunter & CO v Walker, Hunter & CO (1889) 14 AC 550 at 558-559; Coopm v Symvlgron (1893) 10

RPC 264 at 267; W-

Motors Ltd v A W Carnage Ltd (1904) 21 RPC 621 at 629;

Grllord v W m U (1904) 22 RPC 76 at 79; Re Bayer's &SIP;

Bayer v Symrngron (1906)

24 RPC 65 (CA); (1907) 25 RPC 56 (HL). The rationale is clear: unlike patent law,

design law will not gve a monopoly m a particular funct~on; but it wll gve a monopoly in a shape, not dictated solely by functron, which produces an amcle that servu a useful purpose. So it ls no objectlon here that Lego had already recewed patent protection whlch had exp~red. As Vaughan-Wdl~ams U stated in Re Bayer's Design (supra) at 74:

'If a Des~gn s a Desrgn, when tested by the eye. ~t will not cast 10 be a Design, or the less be a Des~gn, because when you use thls piece of

oraamentation by apply~ng

n you will attain a mechan~cal

result which

could be subject matter of Letters Patent.'"

At 376, Gummow J said:-

T h e issue a whether there a some feature of shape wh~ch

IS not drctated solely by

hrncuon and whch is apparent to the eye. If there is, then it is no object~on

that

every feature of the shape IS funct~onal Tha Issue IS

not dealt with by comparing an

article in that particular shape to an imag~nary art~cle

in an indetermrnate, genenc

shape and attempting to Identify points of slmllanty and d~fference."

At 375, Gummow J pointed out that the existence of potential variety points against

the claim that the particular shape was dictated solely by function. At 376, his

Honour said:-

"Clearly, this [function] can be an rntegral element of the attractiveness of the produn. For example, the car industry employs many people to design bodres that look sleek and fast. The only objection can be where the actual shape of the artrcle is &tared

solely by function.'

Gummow J had earlier expressed a similar opinion in mokawa, where his

Honour summed up his opinion as follows, at 429-430:-

"In my vlcw, it follows hom the course of authorrty upon the defin~tion

in the 1883

Act, as understood at the trme of the enactment of the Australm legislation in 1906:

(i) that a d*np was not invalid by reason only that the articles to which rt was applied would be assisted by the particular shape of the design m ach~evlng a functional purpose; and (ii) that rf there was room for choice by the des~gner as to the shape of an article, the result of the designer's labours would qualify as a design, even if the articles to which it was applred served a functional purpose and attainment of that purpoac was assisted by the particular shape in question. The facts m the present

case lead inevitably to the result that the corresponang design m relation to the

drawing was capable of registration under the & S I ~ Act, and that the defence under

S 77 of the ~omieht &I

was made out "

In view of the approval of his Honour's opinion given by Black CJ and

Lockhart J in I, -I consider that I should adopt that approach, an approach which, as Gummow J pointed out in Hosokawa at 429, has the merit of avoidlng the "bizarre relationship between copyr~ght and design law" whlch appears to be produced

by some recent English authority. Although, in Hosokawa, Lockhart J, with whom

Northrop J agreed, approached the issue in a somewhat different manner, the end

result of his view accorded with that of Gummow J, as h ~ s	concurrence in
shows.

Mr Adams gave ewdence that he sought to design a yacht that was lightweight and very fast, would cost as little as possible and would outperform the yachts that were currently being used. Mr Adams gave ewdence that appearance did not play any part in his consideration of the design.

However, Mr Adams gave this evldence in cross-examnation:-

'You set yourself the task of designing a 33 foot boat that is going to be fast and of light displacement, there are a large number of ultimate designs you could come up with, are there not?---Yes.

b r y aspect of your skill in designing the Adarns 10 lnmlved various t r adwfh

between different aspccts of deslgn; is that right?---Yes

If you decide to make a fast 33 foot boat there IS no displacement that is dictated by that overall brief, is there?---Well, as you just said you can design many, many boats within 33 feet that can be very fast and to see the 35 footer which IS similar it h as a different bottom.

And pan of your slull in designing the Adams 10 has been to make your own selection

amongst all of the design parameters available to come up wth a successful boat?:--

Correct.

But it IS a good looking boat, e

it not?---I don't know, I honestly don't know.

Do you not think that is part of the reason for its success?---Well, if you look at the

drawinp you'll find that the deck is a straight h e , the bow IS a stralght line and the stem IS a straight line; there's only three lines above the waterline and they're all straight.

And that IS part of its aesthetr appeal. is it not?---I don't know, I can't tell.

It is not as cluttered as some other boats, is it?---No, certainly not.

And sometimes m the search for speed boat des~gnen

have come up wth elements of

deslgn that are not as attractive as the clean l~nes

of the Adams 10 I suggest and I wll

@ve you an example; one s sometimes they have a l~ttle

bulb at the waterl~ne

on the

bow.

Have you ever seen that?---Yes, I have "

In the present case, I do not accept that Mr Adams' design was dictated solely

by function. It seems to me that Mr Adams deslgned and Intended to design an

individual and distinctive shape, that in preparing h ~ s design he had many possibilities

available to him and that it is Improbable that another deslgner seeking to design a 33 foot yacht which would be fast and cheap to construct would have arrived at the same

solution as that adopted by Mr Adams. Mr Adams was not constrained by the functions which he had in m~nd to adopt the shape and the features which appear in

his drawings. In my opinion, Mr Adams' design was registrable under the Desiens

This conclusion accords, in my opmion, with the mews expressed by Gummow J in fIPsokawa and m,

in the latter of which Lockhart J concurred, and also with

the vlews expressed by Lockhart J in Hosokawa. In that case, at 411-2, Lockhart J

said, inter a1ia:-

"I agree with King J that it is not poss~ble

to say that every feature of the d a ~ g n

the Venturis produced by the appellants e d~ctated solely by the functlon wh~ch they have to perform. Indeed, the evidence, rncluding expert witnesses called by the appellants, was to the effect that there were so many varlatrons m possible deslgns of Venturls that designers seeking to deslgn a Ventun for the same dust collector would

be unl~kely

to produce ~dent~cal

des~gns"

In Q&g v Bonnor Marlne [l9651 Ch D 1, the partles were not in dlspute

that the design of a 14 foot salling dlnghy, designed to be the basis of the Scorpion

Class, was registrable under the Reelstered Desiens Act 1949 (UK), though it had not

been repstered. However, in the Court of Appeal, Danckwerts LJ said at 19:-

"It was suggested that the one thlng whlch was reglstrable under the Act was the shape of the completed dlnghy and the arguments proceeded on the fwtlng that the shape of the completed boat was a regrstrable des~gn I feel the greatest doubt whether that was correct. I should have thought that the shape of the boat was necessarily functional, and was, therefore, not reglstrable under the Registered Dealgm Act,

1949.'

Harman W expressed a llke opinion at 16. Thls view follows, however, the line of

authorities in the Un~ted Kingdom whlch, m I,*Gummow J distinguished as

not applying to registration under the Desiens Act.

The former reg 20A is not relevant. The design was not a design of a sculpture but of a yacht. Although Mr Adams' design could posslbly be gleaned from exh E, which is the port half of a solid timber model yacht, if one were an expert and if Mr Adams answer given in re-examinat~on which I have set out above were entirely

correct, nevertheless, the design was not of a work of sculpture. The model was simply an early step taken in the development of Mr Adams' concept of the yacht. The design which was to be applied industrially was a design of the Adams' 10.

Mr Garnsey relied upon remarks of Wilcox J in Warman International v.

Bvirotech Australia Ptv Ltd (1986) 6 IPR 578 at 596, where hls Honour expressed

the view that certain drawings in which copyright subsisted would not have been

registrable under the m e n s Act.

HIS Honour said:-

"However, the relevant drawlngs do no more than graphically descnbe the artldes which have been produced by Warman They contaln lnformatlon tn relat~on to data

and tolerances whlch IS necessary - or at least h~ghly

desirable - for the manufacture of

the parts. This lnformat~on IS properly to be descr~bed as 'a method or pnnclple of construction' and, as such, IS excluded from the definltlon of 'des~gn' m the Designs

Act: cf Weu ANnps Ltd v CML Pumps Ltd (1983) 2 IPR 129 at 132; Edwards Hot

Water stem v S W Han & CO Pfy Ltd (1983) 49 ALR 605 at 634,635.'

In my view, Mr Adams' drawings dlsclose a des~gn in respect of which a corresponding design could have been regstered under the -

Section 74

of the m

provides:-

'In rhw Division:

'comsponding design', in relat~on to an artistic work, means a deslgn that, when applied to an article, results in a reproduct~on of that work, but does not include a design wnsbung solely of features of two-dimensional pattern or ornament applicable to a surface of an article.'

Certainly, Mr Adams' drawmgs ~nclude some construction details and information

which would be inappropriate on a document registered under the -. But the question is not whether Mr Adams' drawngs would in their current form have been registrable under the Desiens but whether they disclosed a design and whether a corresponding design would be so registrable. In my opinion, a corresponding design would have been registrable under the Desiens Act.

Mr Garnsey submitted that a.yacht is not an article for the purpos6S of the Desipns. Section 4(1) of the Desiens Act defines the term to mean "any article of

manufacture". Both words have a wde denotation. The term "article" is one of the widest words there is. In the context it refers to a thing of manufacture. As to - "manufacture", see W A Records (1990) 96 ALR 365 at 368-70, the cases there discussed and m Commonwealth of Australia v Genex Cornoration Ptv Ltd (1992)

176 CLR 277. A yacht is an article, as Dorling and Kevlacat impliedly accepted. I

need not discuss the authorities referred to in argument whlch considered whether certain constructions were articles. The Deslens - A a does not import a requirement

of mass production, as Mr Garnsey faintly suggested.

In these circumstances, S 77 of the

Act applies and, by virtue of

S 77(1), the threatened reproduction of Mr Adams' design would, not be an

infringement of the copyright.

I shall therefore make a declaration of ownership of the copyright as sought. I

shall otherwise dismiss the application. Costs will be reserved.

I certify that this and the 20 preceding pages

are a true copy of the reasons for judgment herein of

the Honourable Mr Justice Davies.

Date: 30 November 1994

Counsel for the applicant:	J.J. Gamsey & J. van Aalst
Solicitors for the applicant:	J. Hertz & Assoaates
Counsel for the 1st & 2nd respondents:	D.K. Catterns QC & R. Cobden

Solicitors for the 1st & 2nd respondents: Sorensen & Brown

Date of hearing:	8 & 9 August 1994
Date of judgment:	30 November 1994

[1994] FCA 960

30 Nov 1994