Technopak Limited v Monzeal Limited
[2024] NZHC 1420
•31 May 2024
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE
CIV 2018-404-002346
[2024] NZHC 1420
UNDER the Copyright Act 1994 BETWEEN
TECHNOPAK LIMITED
Plaintiff
AND
MONZEAL LIMITED
First Defendant
JAMES PETER GARRICK
Second DefendantSCOTT EDWARD LEANING
Third Defendant
Hearing: 7 to 11 August 2023
14 to 16 August 2023
21 & 22 August 2023
24 & 25 August 2023Appearances:
G C Williams & D Scott-Jones for the Plaintiff E St John & S P Maloney for the Defendants
Judgment:
31 May 2024
JUDGMENT OF TAHANA J
This judgment was delivered by me on 31 May 2024 at 3.30pm Pursuant to Rule 11.5 of the High Court Rules
…………………………
Registrar/Deputy Registrar
Solicitors/Counsel:
Richmond Chambers, Auckland A J Park, Auckland
E St John, Barrister, Auckland
S P Maloney, Barrister, Auckland Price Baker Berridge, Auckland
TECHNOPAK LIMITED v MONZEAL LIMITED [2024] NZHC 1420 [31 May 2024]
TABLE OF CONTENTS
[Para No.]
Introduction 1
Background 7
Parties 7
Development of Technopak 200+ 11
Development of Compak for Innovation Waikato 14
Development of new version Compak for Danone 22
Activities of defendants 25
Evidence 32
Alleged copyright infringements 41
Law of copyright 47
Requirements of copyright infringement 47
When does copyright subsist in a work? 49
Originality 51
When is copyright infringed? 54
Secondary infringement 57
Approach to assessing whether copyright has been infringed 58
General issues 62
Are the defendants relying on an affirmative defence? 62
Opportunity to copy 68
Chronological inferences 74
Use of Technopak’s terms and conditions 78
Bulk auger system 79
Bag loader swing arms 84
Is the Technopak design original and capable of being protected by copyright? 86
Monzeal designs 94
Does the Monzeal paddle design infringe Technopak’s copyright? 97
Objective similarity 97
Causal connection 113
Substantiality 116
Conclusion — Monzeal paddle design 119
Does the Monzeal finger design infringe Technopak’s copyright? 120
Objective similarity 124
Conclusion — Monzeal finger design 129
Conclusion — bag loader swing arms 130
Hexagonal filling spout 131
Is the Technopak design original and capable of being protected by copyright? 133 Has Monzeal infringed Technopak’s copyright? 136
Objective similarity 137
Causal connection 150 Substantiality 42 Conclusion — hexagonal filling spout 156
Bag clamp 157
Is the Technopak design original and capable of being protected by copyright? 160 Has Monzeal infringed Technopak’s copyright? 163
Objective similarity 163
Causal connection and substantiality 174
Conclusion — bag clamp 181
Collocation of the various parts 182
Bag stack guides 184
Is the Technopak design original and capable of being protected by copyright? 185 Has Monzeal infringed Technopak’s copyright? 189
Objective similarity 189
Causal connection and substantiality 195
Conclusion — bag stack guides 196
Bag back stop 197
Is the Technopak design original and capable of being protected by copyright? 199 Has Monzeal infringed Technopak’s copyright? 200
Objective similarity 201
Causal connection and substantiality 208
Conclusion — bag back stop 211
Two flight auger 212
Is the Technopak design original and capable of being protected by copyright? 214 Has Monzeal infringed Technopak’s copyright? 218
Objective similarity 220
Causal connection 227
Substantiality 228
Conclusion — two flight auger design 230
Conveyor and reject arm 231
Is the Technopak design original and capable of being protected by copyright? 232 Has Monzeal infringed Technopak’s copyright? 234
Objective similarity 234
Conclusion — conveyor and reject arm 239
Plastic roll feed 240
Is the Technopak design original and capable of being protected by copyright? 241 Has Monzeal infringed Technopak’s copyright? 242
Conclusion — plastic roll feed 245
Up down conveyor 246
Is the Technopak design original and capable of being protected by copyright? 247 Has Monzeal infringed Technopak’s copyright? 248
Conclusion — up down conveyor 249
Overall conclusion 250
Result 252
Costs 253
FIGURE REFERENCE AND DESCRIPTION
Figure Ref Paragraph Description Figure 1
[85]
Bag loader swing arm [BF16-12-SA02]
Figure 2 [94] Bag loader swing arm [MON.08N.336] Figure 3 [95] Bag loader swing arm [MON.08G.0257] Figure 4 [99] Overlay: [BF16-12-SA02] and [MON.08N.336] Figure 5 [104] Overlay: [BF16-12-SA02] and [MON.08N.336] Figure 6 [132] Hexagonal filling spout [BF15-28-SA01] Figure 7 [136] Hexagonal filling spout [MON.08E.0111] Figure 8 [159] Bag clamp [BF13-28-SA02] Figure 9 [163] Bag clamp [MON.08N.0326] Figure 10 [164] Overlay: [BF13-28-SA02] and [MON.08N.0326] Figure 11 [170] Monzeal and Xero fill head shape Figure 12 [185] Bag stack guide [BF20-23-SA01] Figure 13 [189] Bag stack guide [MON.08L.0092] Figure 14 [190] Overlay: [BF20-23-SA01] and [MZ-SA0606] Figure 15 [198] Bag back stop [BF16-23-SA01] Figure 16 [200] Bag back stop [MZ-SA0611] Figure 17 [201] Overlay: [BF16-23-SA01] and [MZ-SA0611] Figure 18 [213] Two flight auger [BF16-15-SA04] Figure 19 [219] Overlay: [BF16-15-SA04] and [PM-SA0003] Figure 20 [231] Conveyor and reject arm [TEC.00200090] Figure 21 [234] Conveyor and reject arm [MON.04.0257] Figure 22 [240] Plastic roll feed [TEC.0020006] Figure 23 [243] Plastic roll feed [MON.08S.0043] Figure 24 [246] Up down conveyor [TEC.0020007]
Introduction
[1] Technopak Ltd (Technopak) manufactures automated bag-filler machines, which machines fill bags with powered product, such as milk powder. The machine picks up a standard size bag, presents the bag to a filling spout, fills the bag with powder, seals the bag and conveys the bag to be packed away.
[2] The second and third defendants, James Garrick and Scott Leaning worked for Technopak. After leaving Technopak, they incorporated the first defendant, Monzeal Ltd (Monzeal), and are its shareholders and directors. Monzeal then started designing and manufacturing automated bag-filler machines.
[3] Technopak claims that the defendants have infringed Technopak’s copyright in its designs for ten different parts or assemblies incorporated within Technopak’s bag- filler machines. Technopak alleges that Monzeal manufactured the infringing designs and incorporated the parts within its own automated bag-filler machines, which were then offered for sale, or sold, to Monzeal’s customers.
[4] The defendants dispute Technopak’s claims and argued that: Monzeal’s automated bag-filler machines were designed independently of Technopak’s; any similarities are due to functional constraints arising from the common functions of automated bag-filler machines; and Technopak’s parts are commonplace and of low originality so that the level of copyright protection available to Technopak is low.
[5]The issues I need to determine are therefore as follows:
(a)Does copyright subsist in Technopak’s design for each part?
(b)If yes, has Monzeal infringed Technopak’s copyright in relation to the design of that part? In determining whether copyright has been infringed, it is necessary to consider:
(i)whether there are objective similarities between each Technopak and Monzeal design;
(ii)whether there is a causal connection between each Monzeal and Technopak design. Each Technopak design must be the source from which each Monzeal design was derived; and
(iii)whether each Monzeal design has reproduced a substantial part of each Technopak design.
(c)If Monzeal has infringed Technopak’s copyright, whether Mr Garrick and/or Mr Leaning authorised that infringement and/or are joint tortfeasors with Monzeal in that infringement.
(d)If there is any copyright infringement, the nature of relief to be granted to Technopak.
[6]Before considering the above issues, I set out the background and evidence.
Background
Parties
[7] Technopak was incorporated in 1999 and is a New Zealand-based manufacturer and distributor of automated bag-filler machines.
[8] Monzeal was incorporated in June 2012 and is also a manufacturer and distributor of automated bag-filler machines.
[9] Mr Garrick was employed by Technopak as a design engineer from 26 March 2004 to 27 January 2012. He has been a director and shareholder of Monzeal since its incorporation.
[10] Mr Leaning was contracted to Technopak as a project manager from 18 March 2009 to 27 April 2012. He has been a director and shareholder of Monzeal since its incorporation.
Development of Technopak 200+
[11] Having been awarded a contract to design an automated bag-filler machine, on 20 February 2003 Technopak commenced design work on a machine which would become known as Technopak’s 200+ bag-filler machine (Technopak 200+). The design of the Technopak 200+ is contained in computer aided design (CAD) models. Within those CAD models are drawings for individual parts of the Technopak 200+.
[12] On 26 March 2004, Mr Garrick started working at Technopak as a design engineer. His role included working on the CAD models for the Technopak 200+.
[13] On 7 November 2004, the first Technopak 200+ was installed and commissioned in the United States of America.
Development of Compak for Innovation Waikato
[14] In 2006, Technopak began developing a concept involving the use of an inline automatic bag sealer in conjunction with one of its bag-filler modules. The machine would become known as the “Compak.”
[15] On 18 March 2009, Mr Leaning was contracted to Technopak as a project manager.
[16] On 26 August 2010, Technopak successfully applied to the Foundation for Research Science and Technology for a grant to develop its Compak concept.
[17] On 20 April 2011, New Zealand Food Innovation (Waikato) Ltd (Innovation Waikato) contracted Technopak to install a powder handling and packaging solution into its facility at Waikato Innovation Park. Technopak agreed to provide a prototype Compak bag-filler machine which would be loaned to Innovation Waikato for four years. After that, Innovation Waikato had the option to purchase the prototype from Technopak.
[18] Together with Mr Garrick, the two were responsible for the bulk of the overall design of the Compak for Innovation Waikato. Mr Leaning explained that he provided
the concept and Mr Garrick did the engineering and design. The design was created as a three-dimensional (3D) CAD model.
[19] Mr Garrick ceased employment at Technopak on 27 January 2012 and the design of the Compak for Innovation Waikato was completed in or around 29 February 2012.
[20] The installation of the Compak for Innovation Waikato (the Innovation Waikato Compak) started in February 2012 and was completed by May 2012.
[21]On 27 April 2012, Mr Leaning ceased contracting to Technopak.
Development of new version Compak for Danone
[22] In November 2011, Technopak received an order from Danone at Balclutha for a second Compak machine. The design incorporated a bag-filler module and an inline off-the-head impulse heat sealing unit. It also incorporated new features, including a top-up auger and the ability to pre-fill powder. Mr Garrick worked on the 3D modelling for the design along with other Technopak staff.
[23] Technopak’s design was created as a CAD model and completed in or around August 2012.
[24] The Compak was installed at Danone Balclutha from August to September 2012 (the Danone Balclutha Compak).
Activities of defendants
[25]As set out at [8] above, Monzeal was incorporated in June 2012.
[26] Mr Garrick created a website for Monzeal which was launched in August 2012. The website contained renderings, images and a video depicting an automated bag- filler machine.
[27] In early August 2012, Technopak received communications from customers asking about Monzeal. One customer expressed concern that the equipment that
Monzeal was offering was a “rip off” of Technopak’s equipment. Technopak became aware of Monzeal’s website and cached a copy of the images.
[28] On 8 August 2012, Technopak’s solicitors communicated with Monzeal’s solicitors alleging that Monzeal had infringed its copyright. Monzeal disputed the allegations in a response dated 20 August 2012. Communications continued between Technopak and Monzeal, with Monzeal continuing to dispute any copyright infringement.
[29] In July 2013, Monzeal was approached by a potential client to provide a quote for a bag-filler machine. Monzeal received its first order on 9 June 2014. Monzeal designed and manufactured an automated bag-filler machine in response to that order.
[30] In early 2017, both Technopak and Monzeal quoted to supply an automated bag-filler machine to a potential client in New York State. Monzeal was successful in securing that business.
[31]Technopak commenced these proceedings in October 2018.
Evidence
[32]Technopak called two witnesses: Mr Shane Reckin and Mr Craig Russell.
[33] Mr Reckin is a director and shareholder of Technopak, and the current Director of Design and Development. He gave evidence about how each of Technopak’s bag- filler machines (Technopak 200+, Compak Innovation Waikato and Compak Danone Balclutha) was designed and developed. While the defendants attempted to challenge Mr Reckin’s credibility because he does not have a formal university qualification in engineering, I consider that Mr Reckin’s many years of experience qualify him to provide evidence as to the design and functionality of automated bag-filler machines. A university qualification does not necessarily result in its holder having greater expertise and/or experience than those who do not. Mr Reckin was honest and credible and made appropriate concessions.
[34] Mr Russell is the director of a product design and engineering company. He has expertise and experience in CAD modelling. Mr Russell’s evidence compared the dimensions of the Technopak and Monzeal designs as contained in CAD models. Mr Russell opined that Monzeal had copied some of Technopak’s designs for parts incorporated within Technopak’s automated bag-filler machines. He also gave evidence as to the likely time it would have taken Monzeal to create the images that were depicted on its website in August 2012.
[35] The defendants challenged Mr Russell’s independence and credibility in circumstances where he admitted during cross-examination that he provides services to Technopak and does not have a university qualification in engineering. I accept Mr Russell should have disclosed his connection to Technopak in his brief of evidence as it is relevant to his independence. But that failure does not necessarily undermine the credibility of his evidence in so far as it relates to a comparison of the dimensions of designs within CAD models. I also note that it is for the Court to reach its own opinion as to whether the designs are similar. The expert evidence assists the Court to be able to perceive and appreciate the points of similarity and difference, but it is ultimately for the Court to determine the issue.1
[36] Monzeal called three witnesses: Mr Garrick, Mr Leaning and Dr Shayne Gooch.
[37] Mr Garrick gave evidence as to his individual experience in designing automated bag-filler machines including his experience at Technopak. He explained that he prepared the images that were depicted on the Monzeal website in August 2012 and that they were only “rudimentary sketches” and were able to be prepared in a reasonably short period of time. He also gave evidence as to the design and development of Monzeal’s automated bag-filler machines and said that they were designed independently of Technopak. Mr Garrick was honest and credible and made appropriate concessions.
1 Ancher, Mortlock, Murray and Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 (SC), cited with approval in Plix Products Ltd v Frank M Winstone (Merchants) Ltd (1984) 1 TCLR 176, 3 IPR 390 (HC) at 188, 403.
[38] Mr Leaning gave evidence as to his individual experience in designing automated bag-filler machines, including his involvement in the design of automated bag-filler machines for other manufacturers (Sapac and Xero) in the 1980s and 1990s. Mr Leaning explained the similarities and differences between the Technopak and Monzeal designs. Mr Leaning explained the process for the design of Monzeal’s automated bag-filler machines and how the first machine was not designed until after Monzeal had received an order. Mr Leaning was more guarded than Mr Garrick and gave evidence suggesting that Technopak’s designs were copies of other manufacturers’ designs.
[39] Dr Gooch is an Associate Professor in mechanical engineering at the University of Canterbury. Dr Gooch explained the functions of an automated bag- filler machine and why he considers that both the Technopak and Monzeal designs are adaptive designs with a low level of originality. Dr Gooch opined that Monzeal’s automated bag-filling machines were developed independently.
[40]Against the above background, I set out the alleged copyright infringements.
Alleged copyright infringements
[41] Technopak claims copyright in the CAD models for each of the Innovation Waikato Compak and the Balclutha Danone Compak and in the respective drawing packs for those machines (which packs contain individual drawings of different parts).2 Technopak also claims copyright in a drawing of a plastic roll feed, a conveyor concept drawing and drawings for parts incorporated in its Technopak 200+ machine.3
[42] Technopak claims that Monzeal has infringed copyright in its CAD models and/or drawings for the following parts or assemblies:
2 While Technopak originally claimed copyright in the Compak system installed for Innovation Waikato and the Compak system installed for Danone at Balclutha, in its closing submissions it indicated that it no longer relies on those prototypes which were ultimately not used as models and were sold.
3 As set out at Sch 1 of the Fourth Amended Statement of Claim.
(a)bag loader swing arms and tie rod (including the geometry of these particular components) (bag loader swing arms);
(b)hexagonal filling spout (hexagonal filling spout);
(c)bag clamp (including its bag clamp silicon rubber componentry) (bag clamp);
(d)collocation of its hexagonal filling spout design, bag clamp design, bag loader swing arms and tie rod design, and top pick manifold and tail (Scorpion) (collocation);
(e)adjustable bag width side guide posts (bag stack guides);
(f)locking side-pivot backstop (bag back stop);
(g)two-flight bulk auger design (two flight auger);
(h)reject conveyor and/or reject arm (reject conveyor and reject arm);
(i)plastic roll feed (plastic roll feed design); and
(j)up down conveyor (up down conveyor).
[43]Technopak claims that Monzeal has infringed its copyright by, without licence:
(a)manufacturing automated bag-filler machines;
(b)producing CAD models and/or drawings;
(c)possessing in the course of a business automated bag-filler machines and/or CAD models and drawings; and/or
(d)offering for sale and selling in the course of a business automated bag- filler machines;
which reproduce or incorporate a substantial part or parts of Technopak’s CAD models or drawings for each of the parts or assemblies set out at [42] above.
[44] Turning to Mr Garrick and Mr Leaning, Technopak claims that they authorised; and/or procured or induced Monzeal’s infringements of Technopak’s copyright. Further, it is alleged that they were party to a concerted design that resulted in Monzeal infringing Technopak’s copyright.
[45] Technopak alleges that all the defendants acted in flagrant disregard for its rights.
[46] Before considering whether any of the alleged infringements are made out, I first set out the requirements for establishing copyright infringement.
Law of copyright
Requirements of copyright infringement
[47] The parties agree on the requirements to establish an infringement of copyright. Technopak must satisfy the four-part test set out in P S Johnson & Associates Ltd v Bucko Enterprises Ltd:4
(a)there is a work in which copyright can subsist;
(b)copyright does subsist in the work;
(c)the plaintiff owns the copyright in the work; and
(d)copyright in the work has been infringed.
[48] I set out below the legal principles applicable to each of the above requirements.
4 P S Johnson & Associates Ltd v Bucko Enterprises Ltd [1975] 1 NZLR 311 (SC) at 315.
When does copyright subsist in a work?
[49] Copyright is a property right that exists, in accordance with the Copyright Act 1994 (the Act), in original works, which include artistic works.5 The work will not be original if:6
(a)it is, or to the extent that it is, a copy of another work, or
(b)it infringes the copyright in, or to the extent that the work infringes the copyright in, another work.
[50] Section 21 of the Act prescribes who is the first owner of any copyright,7 as follows:
21 First ownership of copyright
(1)Subject to the provisions of this section, the person who is the author of a work is the first owner of any copyright in the work.
(2)Where an employee makes, in the course of his or her employment, a literary, dramatic, musical, or artistic work, that person’s employer is the first owner of any copyright in the work.
(3)Where—
(a)a person commissions, and pays or agrees to pay for, the taking of a photograph or the making of a computer program, painting, drawing, diagram, map, chart, plan, engraving, model, sculpture, film, or sound recording; and
(b) the work is made in pursuance of that commission,— that person is the first owner of any copyright in the work.
(4)Subsections (2) and (3) apply subject to any agreement to the contrary.
(5)Subsections (1) to (4) apply subject to sections 26 and 28.
5 Copyright Act 1994, s 14(1)(a).
6 Section 14(2).
7 Section 21(1).
Originality
[51] It is for the plaintiff to establish that the work is original.8 The concept of originality is not defined in the Act and common law principles apply.9 To be original, the work must originate from its author and must be the product of more than minimal skill and labour.10 The copyright author must have created the work independently and using their skill, judgement, labour or effort to make the work original.11 There is no need for inventiveness or novelty.12
[52] In Oraka Technologies Ltd v Geostel Vision Ltd, the Court of Appeal indicated that the concept of originality is relevant to the level of copyright protection: 13
… Originality, in the sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented. The greater the originality, the greater the protection that copyright law will afford it.
(footnotes omitted)
[53] It is therefore necessary to identify whether each Technopak design is an original expression that was created independently by Technopak using skill, judgement, labour or effort. Any copyright in a design produced by an employee or contractor of Technopak during the course of their engagement will be owned by Technopak.
When is copyright infringed?
[54] Section 29(1) of the Act prescribes that a person infringes copyright by doing a restricted act other pursuant to a copyright licence. References to the doing of a restricted act are to the doing of that act:14
(a)in relation to the work as a whole or any substantial part of it; and
(b)either directly or indirectly;—
8 Henkel KGaA v Holdfast New Zealand Ltd [2006] NZSC 102, [2007] 1 NZLR 577 [Henkel] at [37].
9 At [37].
10 At [37].
11 University of Waikato v Benchmarking Services Ltd (2004) 8 NZBLC 101 (CA) at [27].
12 University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608-609.
13 Oraka Technologies Ltd v Geostel Vision Ltd [2013] NZCA 111 [Oraka] at [130]–[132].
14 Copyright Act, s 29(2).
and it is immaterial whether any intervening acts themselves infringe copyright.
[55]Restricted acts comprise any the following acts:15
(a)to copy the work:
(b)to issue copies of the work to the public, whether by sale or otherwise:
(c)to perform the work in public:
(d)to play the work in public:
(e)to show the work in public:
(f)to communicate the work to the public:
(g)to make an adaptation of the work:
(h)to do any of the acts referred to in any of paragraphs (a) to (f) in relation to an adaptation of the work:
(i)to authorise another person to do any of the acts referred to in any of paragraphs (a) to (h).
[56] Copying is further defined to include storing digitally and making copies in two or three dimensions.16
Secondary infringement
[57] Copyright infringement may also occur other than by copying. Section 36 of the Act prescribes when a secondary infringement may occur:
Copyright in a work is infringed by a person who, in New Zealand, other than pursuant to a copyright licence,—
(a)possesses in the course of a business; or
(b)in the course of a business or otherwise, sells or lets for hire; or
(c)in the course of a business, offers or exposes for sale or hire; or
(d)in the course of a business, exhibits in public or distributes; or
(e)distributes otherwise than in the course of a business to such an extent as to affect prejudicially the copyright owner—
15 Sections 2 and 16(1).
16 Section 2.
an object that is, and that the person knows or has reason to believe is, an infringing copy of the work.
Approach to assessing whether copyright has been infringed
[58] The parties agree that the applicable test is set out in the Court of Appeal decision in Wham-O MFG Co v Lincoln Industries Ltd:17
(a)the reproduction must be either of the entire work or of a substantial part of it;
(b)there must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part of it; and
(c)there must be some causal connection between the copyright work and the infringing work. That is, the copyright work must be the source from which the infringing work is derived.
[59] The Court of Appeal in Oraka considered that the logical order for considering the Wham-O factors is to first examine whether there is objective similarity before turning to the question of causation and finally substantiality.18 I therefore adopt that order in considering whether copyright has been infringed.
[60] In Oraka the Court of Appeal also provided guidance on the relevance of functional constraints: 19
[130] … Originality, in the sense of the contribution of the author’s skill and labour, tends to lie in the detail with which the basic idea is presented. The greater the originality, the greater the protection that copyright law will afford it.
[131] The issue of functional constraints may become important at this point. If similarities between two works are dictated by the function of the item, then the similarities are an inevitable consequence of the object and its function rather than the labour and skill of the claimant, against whose misappropriation the law of copyright seeks to protect.
17 Wham-O MFG Co v Lincoln Industries Ltd [1984] 1 NZLR 641 (CA) [Wham-O] at 666.
18 Oraka at [86].
19 At [130]–[132].
[132] Functional constraints have been considered in the United Kingdom under the notion of “commonplace”. If the claimant’s design is very ordinary (commonplace) given the constraints imposed by the function of the object and there is nothing new added, then the originality of the claimant’s work might be non-existent or so low that the defendant can easily avoid breach by adding something of his or her own to the design. The situation has been described as follows:
If a number of designers working independently of one another in the same field produce very similar designs by coincidence the most likely explanation of the similarities is that there is only one way of designing that article. In those circumstances the design in question can fairly and reasonably be described as “commonplace”. It would be a good reason for withholding the exclusive right to prevent the copying in the case of a design that, whether it has been copied or not, is bound to be substantially similar to other designs in the same field.
(footnotes omitted)
[61] In assessing the three issues prescribed in Wham-O, I therefore must also consider whether there are any functional constraints and/or designs that are commonplace. Before undertaking that assessment, I consider general issues that apply to each alleged instance of copyright infringement.
General issues
Are the defendants relying on an affirmative defence?
[62] Technopak argued that the defendants were not entitled to assert that Technopak had copied its designs from other manufacturers’ automated bag-filler machines in circumstances where the defendants had not pleaded copying as an affirmative defence. Technopak relied on Hoyle v Hoyle where this Court held that it would be contrary to established principle to allow the defendant to rely on a positive case against originality and ownership.20 In that case, the Court considered that the defendant’s arguments against originality and ownership amounted to affirmative defences and that it was necessary for those defences to be pleaded.21 The defendant in that case argued that the works relied on were not original because they were based on, or developed from, designs of components of earlier machines designed by the
20 Hoyle v Hoyle [2016] NZHC 3120 at [59].
21 At [61] citing Manukau Golf Club Inc v Shoye Venture Ltd [2012] NZCA 154, (2012) 21 PRNZ 235 at [21] and [22].
defendant.22 The defendant also argued that even if the works were original, a third party and not the plaintiff was the actual owner of copyright.23
[63] Here, the defendants argued that originality is a fundamental requirement for copyright to subsist and the onus is on Technopak to prove originality. They dispute that the burden of proof rests with them.
[64] Mr Leaning gave evidence that Technopak copied some of its designs from the Xero and Sapac automated bag-filler machines. That evidence suggests that the defendants are asserting that Technopak’s designs are not original and are copies. Mr Leaning's evidence was also that the Technopak 200+ is essentially a copy of the Sapac Modugas bag-filler machine. Mr Reckin accepted that the Technopak 200+ design was influenced by the Sapac design.
[65] I accept that the evidence of Mr Leaning suggested that Technopak had copied earlier machines of other manufacturers such as Sapac and Xero. However, the defendants’ submissions were directed to the extent of originality rather than an allegation that Technopak had copied the designs. I reject any allegation that Technopak copied the designs on which it relies to allege copyright infringement. Mr Leaning’s evidence as to alleged copying by Mr Reckin suggested that the defendants were relying on an affirmative defence when the submissions did not advance that proposition. It was unhelpful and distracted from the issue of whether the design (and not the idea) was original.
[66] I understand the defendants’ submissions to be focused on the extent of originality. The defendants argued that the components of Technopak’s designs (for example, the use of swing arms or the use of a hexagonal spout) are not original ideas and are features of other machines. Their arguments are relevant to whether the concept, rather than the design, is original. Copyright may subsist in the expression of an unoriginal idea or concept.
22 At [55].
23 At [55].
[67] I do not therefore consider that the defendants are seeking to argue an affirmative defence that Technopak copied its designs although Mr Leaning’s evidence suggested otherwise. If I am wrong, the defendants have failed to establish that the designs on which Technopak relies were copied from other third-party designs.
Opportunity to copy
[68] Technopak submitted that Mr Garrick and Mr Leaning had an opportunity to copy by reason of:
(a)Mr Garrick’s eight years’ experience working with Technopak which work included drawing, redrawing and enhancing Technopak’s CAD models and drawings;
(b)Mr Garrick confirming he had retained parts on his laptop from the time when he had worked at Technopak;
(c)Mr Leaning’s experience working with Technopak’s machines including the Innovation Waikato Compak; and
(d)Monzeal acquiring Technopak drawings from third parties.
[69] Where a defendant has had an opportunity to copy the copyright work, the Supreme Court in Henkel has observed that similarity may support an inference of copying:24
… If the alleged infringer has had access to, and therefore an opportunity to copy, the copyright work, and the similarity between the works supports an inference of copying, it may well be appropriate for the Court to conclude, on the balance of probabilities, that there was indeed copying. This of course is subject always to the evaluation of any evidence there may be that no copying actually took place.
[70] Where there is prima facie evidence of copying and access to the copyright works, there is a shift in the evidential burden to the defendant, which may be refuted
24 At [43].
by evidence of independent creation or by giving an alternative explanation for the similarities.25
[71] Mr Garrick acknowledged that he had retained commercial off-the-shelf (COTS) drawings which were labelled with Technopak’s name. Mr Garrick and Mr Leaning both denied retaining any of Technopak’s CAD models or drawings that were not COTS parts. I accept their evidence. No inference can be drawn from the retention of drawings of COTS parts. The evidence clearly indicated that COTS parts are freely available on the internet. No copyright subsists in COTS parts so no adverse inference can be drawn from retention of those drawings.
[72] I accept that Mr Garrick and Mr Leaning would have general knowledge of Technopak’s designs given they worked at Technopak. The knowledge of Mr Garrick and Mr Leaning also needs to be viewed in the context of their respective working history which included Mr Leaning’s experience in design and development for other manufacturers.
[73] I do not consider that obtaining a Technopak drawing from a third party indicates an opportunity to copy when such drawing was obtained after the proceedings were commenced. I accept Mr Leaning’s evidence which indicated that the reason for obtaining that drawing was to assist the defendants in the defence of the claims and not for the purpose of copying Technopak’s designs.
Chronological inferences
[74] Technopak argued that the images of an automated bag-filler machine on Monzeal’s website in August 2012 indicate that it is likely the defendants had Technopak’s CAD models because there was insufficient time to generate the CAD models for those images in three months. Mr Leaning’s evidence was that Monzeal started its conceptual design on 1 May 2012.
25 Inverness Medical Innovations Inc v MDS Diagnostics Ltd (2010) 93 IPR 14 (HC) at [168] citing Kevin Garnett, Gillian Davies and Gwilym Harbottle (eds) Copinger and Skone James on Copyright (15th ed, Sweet & Maxwell, London, 2005) at [7]–[17].
[75] Mr Russell’s evidence was that it would have taken 32 40-hour working weeks to complete a CAD model for the machine depicted in the website images. In contrast, Mr Garrick’s evidence was that it was a two-dimensional model where there is “no detail, there’s just a rough outline.” He also said that a lot of the items are just blocks, there is no dimensional detail, and no drawings were done for them. Mr Leaning said that most of the parts contained in the image were COTS and could be quickly downloaded off the internet and that it would take days or weeks and not months to complete the top-level model. Further, Mr Leaning explained that Monzeal did not complete the design of its first bag-filler machine until after it had received an order in 2013 some months after August 2012.
[76] I prefer Mr Garrick and Mr Leaning’s evidence to Mr Russell’s. I do not accept that a full 3D CAD model would have been necessary for those images to have been rendered such that it should be inferred that a full 3D CAD model existed at that time. The purpose of the website was to generate customer interest and not to enable Monzeal to immediately manufacture an automated bag-filler machine. This is consistent with Mr Reckin’s evidence that Technopak did not design the Technopak 200+ until after it had received an order.
[77] Technopak also argued that the fact some of its customers referred to Monzeal’s images on its website as a “rip off” is relevant. I do not consider that this evidence indicates that Monzeal had full 3D CAD model given Mr Garrick’s evidence. It does indicate that Monzeal intended to use paddles as the mechanism to open the bags.
Use of Technopak’s terms and conditions
[78] Technopak referred to Monzeal’s use of Technopak’s terms and conditions as demonstrating a propensity to use Technopak’s intellectual property. Propensity evidence is evidence that tends to show a person’s propensity to act in a particular way.26 I do not consider that the use of the terms and conditions indicates a “propensity” to infringe copyright. It does demonstrate ignorance as to the copyright that subsists in legal terms and conditions, but it is not evidence of a propensity to
26 Evidence Act 2006, s 40(1)(a).
copy the designs of a competitor’s machines. Mr Garrick openly acknowledged that they had used Technopak’s terms and conditions. Mr Garrick did not try to avoid the question nor suggest that any copying was inadvertent. Mr Leaning could not recall having copied Technopak’s terms and conditions but accepted that they were the same.
Bulk auger system
[79] Technopak also referred to the fact that the centre points of the inlet and outlets of Technopak and Monzeal’s respective bulk feed augers overlap almost exactly as a “fingerprint” of copying. Technopak did not allege that Monzeal had infringed Technopak’s copyright in its design of the bulk auger system.
[80] Technopak argued that this “may show that the defendants had access to the plaintiff’s drawings at the time Monzeal’s bulk auger system was drawn.” When this was put to Mr Garrick in cross-examination, he responded that it “100%” is a co- incidence that the measurements only deviate by 3.4 mm. Dr Gooch accepted that the deviation would have been less if Monzeal’s bulk auger housing had two flanges (and gaskets) in it, like the Technopak design.
[81] Technopak submitted that the “almost exact” overlapping of the inlets and outlets is another indicator that the defendants copied Technopak’s designs.
[82] Whether any inference of copying can be drawn needs to be considered in the context of all the evidence. I therefore consider each alleged infringement separately and, in that context, determine whether copying can be inferred. I accept as a general proposition that there was an opportunity for copying by reason of Mr Garrick and Mr Leaning having worked at Technopak. I accept Mr Garrick and Mr Leaning’s evidence that they did not take Technopak’s CAD models. Mr Garrick in particular came across as honest and I accept his explanation as to how he created the images on Monzeal’s website.
[83]I now consider each claim for copyright infringement.
Bag loader swing arms
[84] Mr Russell describes the bag loader swing arms as a “part” or “assembly.” The part is used to pick up a bag and to present the bag to the spout for filling.
[85] Technopak claims copyright in the CAD model [BF16-12-SA02] of its bag loader swing arms [Figure 1]:
Is the Technopak design original and capable of being protected by copyright?
[86] The defendants argued that the “degree of originality” in Technopak’s design is low because bag loader swing arms with paddles are common in the industry. That argument goes to the originality of the idea and not the originality of the design.
[87] As to the use of swing arms, Mr Reckin accepted in cross-examination that a “fair few” other bag-filler machines used swing arms. He also acknowledged that today “probably 80 or 90%” insert paddles into the bags but that this was not the case in the early days, when vacuum cups were used.
[88] Mr Leaning’s evidence included examples of swing arm designs pre-dating Technopak’s design and he referred to a patent dated 30 November 2000 for swing arms. The evidence indicated that the use of swing arms was not an original concept.
[89] I also accept that the concept of a diagonal rod connecting swing arms is not original. Mr Leaning’s evidence was that a diagonal rod is an “extremely common mechanism” used to mirror link two components and that it was commonly used on bag loaders before Technopak incorporated it into its design. Mr Leaning gave an example of a patent where a diagonal rod was used to link two arms. I accept that the use of a diagonal rod was also not an original idea.
[90] While Mr Leaning’s evidence suggests that Technopak copied industry standard designs when designing its bag loader swing arms, he also clarified that it was the concept that he considered was not original:
The coming up with the idea is the part of the — the part of that statement I disagree with. I don’t deny there’s skill involved in drawing, but the concepts were simply copied.
[91] Whether the design is original and capable of being protected by copyright depends on whether it was arrived at using the skill, judgement or effort of Technopak’s staff. I accept Mr Reckin’s evidence that it was.
[92] The arguments advanced by Monzeal go to the extent of originality, which is relevant to the extent of copyright protection and not to whether copyright subsists in the design.
[93] It follows that Technopak owns copyright in its design of its bag loader swing arms. I accept that the extent of the originality of the design is low.
Monzeal designs
[94] Technopak submitted that several Monzeal designs27 infringe Technopak’s copyright. There are differences between the Monzeal designs: some incorporate paddles and others incorporate fingers at the end of the swing arms. Mr Russell’s evidence focused on Monzeal’s designs of swing arms with paddles [for example, MON.08N.336] as depicted below (the Monzeal paddle design) [Figure 2]:
27 MON.08N.0332, MON.08H.0028, MON.08G.0155, MON.08G.0257, and MON.08I.0001.
[95] In contrast, Dr Gooch’s evidence focused on Monzeal’s design of swing arms with fingers (the Monzeal finger design) [MON.08G.0257], as depicted below [Figure 3]:
[96] There are obvious differences between the Monzeal designs. I first consider whether the Monzeal paddle design infringes Technopak’s copyright and then consider the Monzeal finger design.
Does the Monzeal paddle design infringe Technopak’s copyright?
Objective similarity
[97] In assessing whether there is objective similarity, the visual similarity must be assessed by what is visually significant to a person to whom the work would normally be addressed.28 Here, the designs need to be assessed through the eyes of an engineer because they are engineering drawings to be used to manufacture parts. It is the impact on the engineering eye that is important.29
[98] In Zhang v Sealegs International Ltd the Court of Appeal held that the High Court’s analysis of objective similarity was deficient in not considering the extent to which the claimed copyright work was commonplace or dictated by functional constraints.30 Designs embodying features dictated by manufacturing constraints will necessarily be similar.31 Where competing products are necessarily similar due to manufacturing constraints, differences will be significant.32 Small differences will be enough to rebut the inference of copying.33 I therefore, need to consider whether any aspects of the design are commonplace or are because of functional constraints.
[99] Technopak says the objective similarity between the Monzeal paddle design and Technopak’s design is obvious and particularly so when the two images are mirrored and overlaid, as follows [Figure 4]:
28 Zhang v Sealegs International Ltd [2019] NZCA 389 [Zhang] at [164].
29 At [164].
30 At [138].
31 Beckmann v Mayceys Confectionary Ltd (1995) 33 NZIPR 543 (CA) at 546.
32 Rubbermark Industries Ltd v Trail Com Ltd HC Auckland CP338/00, 8 September 2000.
33 UPL Group Ltd v Dux Engineers Ltd [1989] 3 NZLR 135 (CA) at 145.
[100] Certainly, to the eyes of a layperson the angle of the designs depicted in [Figure 4] look strikingly similar, but they must be assessed from the perspective of an engineer and with consideration for functional constraints which may explain the reason for the similarities.
[101] Mr Russell opined that the Monzeal design was created using Technopak’s design. He referred to the dimensions and shape of the designs as objectively similar. He compared the thickness of the swing arms (5 mm) and the paddles (3 mm) and said they were identical. Mr Leaning’s evidence was that the thickness of Monzeal’s arms was 6 mm, so slightly thicker.
[102] Mr Russell accepted that there were differences between the link arm fabrication and that “it is most likely that the Monzeal design [of the link arm fabrication] was created independently.” He also concluded that the Monzeal link arm rod is most likely designed independently.
[103] The defendants submitted that Mr Russell had distorted the similarities by mirroring the designs and not aligning the pivot points. Figure 4 does not include the Monzeal pivot bar, which would appear above the pivot bar of the Technopak design. Mr Russell and Mr Reckin accepted that the Monzeal and Technopak assemblies pivot at different places.
[104] Mr Russell’s evidence also included the following image which does not depict the images mirrored and indicates the different lengths of the swing arms and different directions of the diagonal link [Figure 5]:
[105] Mr Leaning’s evidence set out the differences between the Technopak and Monzeal designs as follows:
(a)The tie rod is angled in the opposite direction.
(b)The connections are different (Technopak’s are “boxy” while Monzeal’s are smaller and rounded).
(c)The straight “pivot” rod between the arms extends past the arms on Technopak’s drawings but stops flush on Monzeal’s.
(d)The arms are different lengths (Monzeal’s are 675 mm long and Technopak’s are 727 mm long).
(e)The design of the piston is different.
(f)The Monzeal drawing has a bend in the lower half of the arms, whereas Technopak’s arms are straight.
(g)Monzeal’s arms are thicker (although, only very slightly (1 mm)).
(h)The Monzeal v-paddle has a longer “tab” at the bottom of the “v’, and the tab bends downwards.
[106] The difference between the shape of the paddles is more obvious in the 3D models of the designs. This is reflected in the difference highlighted at [105](h) above. The differences at [105] focus on the individual components that make up the overall design and include the parts which Mr Russell accepted were independently designed. It is appropriate to view the design overall and to identify any engineering differences, similarities due to functional constraints and/or whether parts of the design are commonplace.
[107] Dr Gooch accepted in cross-examination that there are similarities from a visual perspective but said that from an engineering perspective, they have different pivot points and to him “there is quite a difference.”
[108] Dr Gooch also accepted in cross-examination that he had not been asked to compare the Monzeal paddle design with the Technopak design. His evidence was focused on comparing Technopak’s design with the later Monzeal finger design. Dr Gooch did however identify the pivot arm length as different when comparing the Monzeal paddle design with the Technopak design. He also identified that in the isometric view [Figure 5] the paddles are at different heights.
[109] I have already found that the level of originality is low because the use of swing arms with paddles is commonplace. Small differences will be enough to rebut the inference of copying.34 The differences in the swing arms (length and pivot point) and the engineering differences rebut an inference of copying.
[110] The defendants argued that the shape of the paddles is due to a functional constraint because each paddle must fit into each corner of the bag when opened. The defendants produced two different shaped bags (gusseted and non-gusseted). The gusseted bag had a flat edge when opened and the evidence included examples of flat
34 UPL Group Ltd v Dux Engineers Ltd [1989] 3 NZLR 135 (CA) at 145.
paddles that are used to hold open these types of bags. The non-gusseted bag produced a v-shape at each end when opened.
[111] The defendants referred to the Behn + Bates bag-filler machine which uses paddles that are v-cup shaped. That indicates that while the shape of the bag is influential it does not dictate a perfect v-shape. I accept that the use of a v-shape paddle is similar but the longer tab and bend downwards on the Monzeal paddle are differences. Again, small differences in common place parts are sufficient to rebut an inference of copying.
[112] Given the differences in the length of the swing arms, the location of the pivot point, the differences in the link arm fabrication and the differences in the length and bend in the Monzeal paddle, I am not satisfied that the designs are objectively similar. Further, I accept the evidence that swing arms with paddles are commonplace and the shape of the bag creates a functional constraint on the shape of paddles such that the use of similar shaped paddles does not indicate copying.
Causal connection
[113] If I am wrong in finding that the designs are not objectively similar, I consider causality and substantially.
[114] I reject Technopak’s submission that it is implausible that Mr Garrick and Mr Leaning put their knowledge of Technopak’s v-paddle out of their minds and independently designed the v-paddle in circumstances where the use of paddles is commonplace and the paddles are designed to open the same size bag. If a designer selects paddles (rather than suction cups) as the mechanism to open the bag, then the shape of the paddle will be constrained by the shape of the bag when opened. Mr Garrick and Mr Leaning were entitled to use paddles as the mechanism to open the bag. The differences in the design are sufficient to rebut any inference of copying.
[115] I am not therefore satisfied that Technopak’s design [BF16-12-SA02] was the likely source of the Monzeal paddle design.
Substantiality
[116] Whether a substantial part has been produced depends on the quality rather than quantity of what has been taken.35 The Supreme Court in Henkel noted that whether the defendant copied a substantial part of the work can sometimes be a difficult matter of valuation and is usually the most difficult question which arises.36 What amounts to a substantial part in an artistic work depends more on qualitative visual impression rather than on quantitative analysis.37
[117] Further, in Henkel, the Supreme Court considered that where the qualitative impression does not indicate that a substantial part has been copied, that will indicate that the defendant has not appropriated a substantial part of the skill and labour which went into the authorship of the work.38
[118] Given the differences I have highlighted when considering objective similarity, I am not satisfied that the Monzeal paddle design incorporates a substantial part of the Technopak design.
Conclusion — Monzeal paddle design
[119] It follows that the Monzeal paddle design does not infringe Technopak’s design.
Does the Monzeal finger design infringe Technopak’s copyright?
[120] Technopak submitted that if Monzeal started its design process by substantially copying Technopak’s v-paddle design, then any further revision, iteration or addition is unlikely to have cured that infringement.
[121] Technopak relies on Steelbro NZ Ltd v Tidd Ross Todd Ltd where the Court of Appeal upheld the High Court’s finding of copyright infringement, noting that the case came down to a question of fact: whether the Judge was correct in finding that Steelbro
35 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 276 cited in Steelbro NZ Ltd v Tidd Ross Todd Ltd [2007] NZCA 486 [Steelbro] at [109].
36 Henkel, above n 6, at [44].
37 At [44].
38 At [52].
had crossed the line into copying not only the concept of Tidd Ross Todd (TRT) model but also the expression of that concept.39 The Court noted the factors that are relevant in considering whether copying has occurred:40
The sort of factors to which courts commonly have regard include: the “starting point” of the defendant’s work; the extent of the defendant’s alteration (ie whether a substantial part of the plaintiff’s work survived in the defendant’s so as to appear to be a copy of the original work); and generally the way in which the defendant has taken advantage of the plaintiff’s work. In that respect, as Lord Reid sagely observed in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 276 (HL) “the question whether [the defendant] has copied a substantial part depends much more on the quality than on the quantity of what he has taken” (emphasis added).
[122] It is helpful to set out the High Court’s analysis in finding that the TRT design had been the basis for the infringing design. The Court was not satisfied that the defendant had followed an independent design path in arriving at its own design: 41
[136] I do not accept the defendant’s argument that it created the SB121 through its own independent design process. As counsel for the plaintiff commented:
“In most cases the documentary evidence shows where Steelbro got to, rather than where they started or how they got there.”
An illustration is provided by the v shaped recess in the chassis. Assertions that it had been derived from one of Steelbro’s own products (the SB330) fell flat and the defendant was then forced to fall back on the argument that such a design feature was obvious and elementary (Mr Swarbrick) or was not a significant design feature (Mr Joyce). The evidence indicates to me that the defendant’s independent input was simply building on the copyright work that had been infringed.
[123] Here, while Mr Leaning acknowledged that the Monzeal paddle design was a “concept” design and that it [MON.08G.0155] was fabricated as a prototype, he also said that it was “abandoned very quickly.” His evidence was that it “didn’t work very well.”
39 Steelbro, above n 33, at [103].
40 At [109].
41 Tidd Ross Todd Ltd v Steelbro NZ Ltd HC Christchurch CIV-2004-409-1386, 1 December 2005.
Objective similarity
[124] The Monzeal finger design bears no resemblance to the Technopak design, and I am not satisfied that there are any objective similarities to justify a finding that it was derived from the Technopak design.
[125] The designs are visually different. There is no similarity between the fingers and the v-paddle, and it is also difficult to see how the Monzeal paddle design is the basis for the Monzeal finger design as they share no objective similarities. I accept Dr Gooch’s evidence that the “fingers” are actuated to grip the bag and lift. In his opinion, that is a very different and more complex method when compared with Technopak’s arms, which use paddles to apply opposing force and stretch the mouth of the bag.
[126] Further, I do not consider that the swing arms and linkage system are similar especially when the concept of swing arms and a diagonal rod are commonplace features, and the swing arms are different lengths and have different pivot points. Further, I am satisfied that Monzeal has demonstrated an independent design path in arriving at the Monzeal finger design.
[127] Further, Technopak does not explain how its design is incorporated into the Monzeal finger design other than by referring to Mr Leaning’s evidence that the v- paddle was a conceptual design only and “transitional.” I accept Mr Leaning’s evidence that when the design was prototyped, the concept was rejected and the Monzeal finger design was then developed.
[128] In circumstances where the finger design bears no resemblance to Technopak’s design, I do not accept that Monzeal’s finger design was derived from Technopak’s design.
Conclusion — Monzeal finger design
[129] It follows that Monzeal’s finger design [MON.08G.0257] does not infringe Technopak’s copyright in its design of bag loader swing arms [BF16-12-SA02].
Conclusion — bag loader swing arms
[130] I find that neither the Monzeal paddle design nor the Monzeal finger design infringes Technopak’s copyright in its design of bag loader swing arms [BF16-12- SA02].
Hexagonal filling spout
[131] The filling spout directs powder from the inlet to the bag through the spout’s outlet.
[132] Technopak claims that it owns copyright in the following drawing [BF15-28- SA01] depicting its filling spout and a bag clamp assembly [Figure 6]:
Is the Technopak design original and capable of being protected by copyright?
[133]Mr Leaning’s evidence suggested that the design was unoriginal because Behn
+ Bates manufacture a hexagonal shaped spout. Again, this created confusion between originality of an idea and originality of an expression of an idea, only the latter being relevant when considering whether the design is original and capable of being protected by copyright. I reject any suggestion that Technopak copied other designs.
[134] I accept that Mr Reckin was honest when he said that he was not aware of another hexagonal shaped spout when Technopak designed its spout. Mr Leaning’s evidence did not indicate when the Behn + Bates spout had been manufactured and even if it did exist when Technopak designed its spout, there is no evidence that
Technopak was aware of it and/or copied it. Mr Garrick was honest and accepted in cross-examination that none of the Xero, Innopak, Sapac, nor Avapac machines used a hexagonal spout.
[135] I accept that Technopak’s CAD model and drawing is an original expression of a filling spout and therefore copyright subsists in its design.
Has Monzeal infringed Technopak’s copyright?
[136] Technopak relied on different Monzeal drawings (with different specifications and profiles) to allege copyright infringement. First, Technopak relies on the following Monzeal drawing [MON.08E.0111] which depicts both a filling spout and bag clamps [Figure 7]:
Objective similarity
[137] Technopak submitted that Monzeal had copied Technopak’s design and referred to the designs being the same hexagonal shape and being a very similar length at the outlet (which Mr Russell described as a “fingerprint” of copying). Mr Russell also opined that he believed that Monzeal had made changes to its design so it would look different. He reached this inference because he considered Monzeal’s design had a negative feature — being the clearance between the clamp and filling spout was less than the same clearance in the Technopak design.
[138]Mr Russell’s evidence was as follows:
The pivot points are in different places (1), and an additional linkage (2) is added to drive the Clamp arms.
The stop position is in different locations (3) and bag clamp 1 stops with 0.46 deg (4) difference to Technopak’s Spout. Due to the differing geometry, there is an 8 mm (6) reduced clearance for the bag in the horizontal plane and a 28.4 mm (5) reduced clearance in the vertical plane, reducing access to present the bag to the spout.
It is very unlikely that these two products would have been designed in isolation. It also seems that the changes have had a negative effect on the functionality of the product giving me reason to believe that the changes were made to make the spout look different.
(emphasis added)
[139] Dr Gooch disagreed with this conclusion and his evidence was that after analysing the function of the Monzeal bag clamp design, he considers it is an improvement on the Technopak design. I consider that Mr Russell’s conclusion of copying by reason of the reduced space between the bag clamp and spout is speculative. The reduced clearance for the bag is more likely to be attributable to the differences in the bag clamp assembly design (which differences are considered in the section below regarding the bag clamp), than a deliberate attempt to make the filling spout look different. This is particularly so when Dr Gooch’s evidence is that overall, the functionality of the Monzeal design is an improvement on Technopak’s design. Mr Russell’s inference of copying is speculative.
[140] Mr Russell also said that the similarities in length at the spout outlet are a “fingerprint” of copying. He relied on four different drawings of the outlet on the Monzeal filling spout:42
… so those four models have exactly the same outlet shape. There are other changes in the rest of the bag spout, but that outlet shape was identical for those.
[141] Based on those four drawings, Mr Russell considered that the length of the Monzeal spout was very similar to the Technopak spout, as follows:
Technopak spout outlet shape is hexagonal to be strong for clamping the bag and relatively easy to manufacture.
42 MON.08F.0145, MON.08E.0105, MON.08R.0073 and MON.08N.0326.
Monzeal’s spout is also hexagonal, with a very similar overall length 0.94 mm shorter at each end (1). The perimeter of Monzeal’s spout is 15% less than Technopak’s (2). The width is 7.5 mm wider (3) on each side. It is most unlikely that these two products would have been designed in isolation due to the following facts:
·Item 3 width variation of 7.5 mm per side or 15 mm total is surprising when Technopak’s Spout width is 159.89.
·Item 1 length variation of 0.94 mm is very similar.
Given bullet point 1 above, it is my opinion that whoever designed the Monzeal spout had Technopak’s drawings of its spout to hand.
[142] In closing, Technopak indicated that it no longer relied on Mr Russell’s measurements as to the width of the four Monzeal designs.
[143] Mr Russell’s evidence was that the difference in length (0.94 mm at each end) is a fingerprint of copying, being a total difference of 1.88 mm. The evidence supported the widths and perimeters being different but the lengths being similar.
[144] The defendants sought to refute the evidence of Mr Russell as to the difference in length by arguing that Mr Russell had not identified the cross-section from where he took his measurements so that his evidence could not be tested. Mr Russell produced a sketch indicating where he took the measurements so it was open to the defendants to take the same measurements.
[145] While Mr Leaning’s evidence included a table of differences between Technopak’s design [BF07-21-SA01] and Monzeal’s design [MON.08R.0081], that Monzeal design was not one of the four Monzeal designs that Mr Russell compared to arrive at a difference in length of 1.88 mm. Mr Leaning’s evidence does not therefore assist.
[146] I reject the defendants’ argument that it was unable to verify Mr Russell’s measurements of the small difference in length. It appeared reasonably obvious as to where Mr Russell had taken the measurements and it would have been open to Monzeal to provide evidence of counter measurements. I accept the length was similar but not that this is a fingerprint of copying when other features of the spout (width and perimeter) bear no similarity.
[147] As to the width of the outlet, Dr Gooch’s evidence was that Mr Russell’s measurements were inaccurate and the width of Monzeal’s spout outlet is 175 mm not
174.89 mm as per Mr Russell’s evidence and Technopak’s spout width is 160 mm (not
159.89 mm as per Mr Russell’s evidence). Dr Gooch explained that it was unlikely that an engineer would use unrounded measurements. The difference in length is likely 2 mm, which I accept is small but not a fingerprint of copying when the other dimensions (width and overall perimeter) are obviously different.
[148] Turning to the other aspects of the Monzeal and Technopak designs, I accept that the evidence indicates the following differences:
(a)the Monzeal design is constructed differently and has different geometry and different structural properties.
(b)Technopak’s spout has “wingtips.”
(c)The Monzeal spout is smaller overall and has reinforced corners.
(d)The angle of Technopak’s fill head edge has a wider angle than Monzeal’s.
(e)The radius of Technopak’s spout is smaller than Monzeal’s. Mr Russell’s evidence is that this indicates that the shape of the bag does not dictate that the shape of the spout be the same. It also indicates that the dimensions of the hexagon are different.
(f)The spout construction is different. Technopak’s spout is fabricated using two pressed halves welded together whereas Monzeal’s is constructed of four parts (a top ring, a cone section, a taper section, and a bottom plate).
(g)Technopak’s bottom edge is folded sheet metal of constant thickness, and Monzeal’s is a machined block of varying thickness.
(h)The load cell mounting is integrated into Technopak’s spout whereas the Monzeal load cell is bolted on as a separate piece.
[149] The similarity between the four Monzeal designs and Technopak’s design is limited to the length of the outlet of the Monzeal spout and the overall hexagonal shape. The spouts are otherwise different.
Causal connection
[150] The existence of functional constraints may indicate that there is no causal connection between designs because the similarities are due to functional constraints and not copying. Monzeal argued that the similar hexagonal shape arises because of a functional constraint, being the shape of the bag when opened. Further, Mr Leaning and Mr Garrick provided evidence of the process they went through to design Monzeal’s spout which the defendants submitted indicates that Monzeal adopted an independent design path.
[151] Dr Gooch’s evidence was that the shape of the spout is influenced by the shape of the bag when opened, into which the spout must fit. I accept that the shape of the bag when opened, is a constraint on the shape of the spout. It explains the general similarities in shape as between the different spouts. Mr Leaning’s evidence of other manufacturers’ bag-filler spouts indicated that the shapes are generally similar whether they be diamond-shaped, oval, parabolic, hexagonal or octagonal. They are all of a rough similar shape as they must all fit into the same size bag. The Behn + Bates spout is also a hexagonal shape.
[152] Mr Leaning and Dr Gooch also explained that the flat surfaces on the spout help to ensure minimal creasing when the bag is clamped to the fill head so that the bag seals properly. That suggests that the use of flat (rather than round edges) is not necessarily due to copying but due to a desire to minimise creasing.
[153] Further, Mr Garrick’s evidence included a photograph of a wooden prototype of Monzeal’s filling spout and bag clamps in May 2013, which he said mirrored the parabolic curve that Mr Leaning had designed for Xero some years earlier.
Mr Garrick’s evidence was that the spout did not start as a hexagonal shape but as a parabolic shape as depicted in photographs provided in evidence.
[154] Mr Leaning explained that Monzeal’s design moved away from a curved spout and bag clamp design towards flatter edges, because flatter surfaces were a functional improvement. Mr Leaning explained that the Monzeal design is similar to the Xero design but they had flattened off the top of the parabola, with “very little geometry difference.” I accept that this evidence explains Monzeal’s design path and how the shape changed from rounded edges to a hexagonal shape. I do not accept that the Technopak design is the source of the Monzeal design.
Substantiality
[155] In circumstances, where the only similarity is the hexagonal shape and the length of the outlet as depicted in four Monzeal drawings, I am not satisfied Monzeal’s hexagonal filling spout reproduces a substantial part of Technopak’s design.
Conclusion — hexagonal filling spout
[156] It follows that the defendants have not infringed Technopak’s copyright in its hexagonal filling spout design [BF15-28-SA01].
Bag clamp
[157] The purpose of a bag clamp is to secure the bag against the filling spout. It operates as a sealing device that inhibits the migration of powder from the bag into the air. The complete bag clamp assembly was depicted in [Figure 6] above with the filling spout.
[158] My finding that Monzeal did not infringe copyright in Technopak’s design of its filling spout is relevant when analysing whether there is any copyright infringement of Technopak’s bag clamp design. The bag clamp mirrors the shape of the filling spout because it must clamp against it. I do not therefore analyse that aspect of the design (the shape arising from the filling spout) when considering whether copyright in the bag clamp has been infringed. I accept that Monzeal has not copied that aspect for the
same reasons as I gave when determining that Monzeal had not copied Technopak’s design of its filling spout. I consider the other alleged similarities between the designs.
[159] Technopak claims copyright in drawing [BF13-28-SA02] being its bag clamp assembly [Figure 8]:
Is the Technopak design original and capable of being protected by copyright?
[160] The drawing above comprises clamps at the bottom and arms. The defendants argued that the use of clamps is not original. Mr Reckin accepted that “the idea of clamping rubber between [two] plates is not new there’s no doubt about that, but there are other features in that that probably are unique.”
[161] Mr Leaning’s evidence was that Xero used a clamp with a silicon seal sandwiched between two plates in 1999. I accept that the use of rubber between two plates is not original nor is the use of clamps to secure the bag against the spout.
[162] I accept Mr Leaning’s evidence as to the use of silicon between two plates as unoriginal. There is no copyright in that concept. That aspect of Technopak’s design is not original, but Technopak’s expression of bag clamps is original in that it is the product of the skill, judgement or effort of Technoopak staff. I therefore accept that the design is original, and copyright subsists in the design.
Has Monzeal infringed Technopak’s copyright?
Objective similarity
[163] Technopak refers to the following Monzeal design [MON.08N.0326] as demonstrating an infringement of its copyright [Figure 9]:
[164] Technopak says there are obvious objective similarities when the respective Technopak and Monzeal designs are overlaid as follows [Figure 10]:
[165] Technopak relied on Mr Russell’s evidence as demonstrating objective similarities between the designs. Mr Russell opines that Monzeal has derived its design from Technopak’s design, as follows:
1.It can be inferred that the contour of the plate is derived from the outlet profile of the spout.
2.The position of the vertical arms is consistent with the [s]pout’s profile and ideal positioning of mounting lugs, suggesting that they were designed with the spout's characteristics in mind.
…
1. It can be inferred that the contour of the seal is derived from the outlet profile of the spout.
…
3. The addition of the cylinder mount on Technopak’s design is an integrated feature whereas [Monzeal] have the equivalent as a separate part that pivots.
[166] Mr Russell’s conclusions rely on the shape of the clamp having been determined by the shape of the spout and therefore if the spout has been copied, it follows that the shape of the clamp will have been copied. I have found that the design of the filling spout was not copied so Mr Russell’s inferences arising from the clamp reflecting the outlet profile of the spout are rejected.
[167] Mr Russell also relied on the fact that Monzeal has used different mechanisms to achieve the same functions. The inference is that Monzeal deliberately changed the mechanism so it would appear as though the design was not copied. While acknowledging differences between the clamps in terms of appearance and how they are constructed, Mr Russell concludes:
It is important to recognize that despite the difference in design, both the key and the step effectively [fulfil] the same function.
[168] That different designs have been used to achieve the same function supports a finding of independent design. If Mr Russell is inferring that the use of a different mechanism was deliberate to conceal copying, I reject that inference given my finding that Monzeal has not infringed copyright in Technopak’s design of its filling spout and has provided evidence as to its independent design path.
[169] I agree with Dr Gooch’s explanation that the features are indicative of an independent design path as they would not be present if one design was simply copied from the other.
[170] Nor do I accept that the similarity in the shape of the Monzeal and Technopak rubber seal indicates copying in circumstances where there is also similarity between the shape of the Monzeal seal and the Xero rubber seal. Mr Leaning explained that the Monzeal clamp design is a modification of the Xero clamp design which he designed prior to Technopak's existence. Mr Leaning says the evolution from the Xero design to the Monzeal design can be shown by comparing the two, as depicted in the image below [Figure 11]:
[171] I accept that there are differences between both the arms and the clamps that are incorporated in the design. I agree with Dr Gooch that the differences in the arms, are as follows:
(a)Monzeal's arms assembly comprises two separate parts whereas Technopak's assembly is one part.
(b)The horizontal "arms" (that connect to the spout) are a different shape.
(c)The vertical arms are a different shape, and Monzeal's are vertical while Technopak's slope backward at an angle.
(d)Technopak's assembly functions asymmetrically while Monzeal's is symmetrical. This was accepted by Mr Reckin and Mr Russell.
(e)Monzeal has a connection bar between the vertical arms whereas Technopak does not.
(f)The assemblies pivot at different points. Mr Reckin and Mr Russell both accepted this.
(g)The arms are mounted differently. Technopak uses a clevis joint to connect its clamp mechanism whereas Monzeal's arms attach from one side using a cantilever pin. Mr Reckin and Mr Russell agreed with this.
(h)Technopak's arm 1 is a folded "L" shape and its arm 2 is a flat triangular shape with a cylinder, whereas Monzeal's arms are straight. This was accepted by Mr Reckin in cross-examination.
I accept the evidence as to the following differences between the clamps:
(a)Technopak's clamp has sharper corners and edges than Monzeal’s.
(b)Monzeal's clamp extends outwards at the edges to form a longer seal, whereas Technopak's clamp terminates with a shorter seal at the edges (where it meets the "wing tips" of Technopak's spout).
(c)Monzeal's clamp has six connectors while Technopak’s has five.
(d)Monzeal's clamp has eight fasteners whereas Technopak's has six and the fasteners are different sizes (M6 versus M8).
(e)Technopak's clamp has a "tab" at the ends which is not present on the Monzeal design.
(f)Monzeal's seal is stiff, whereas Technopak's is flexible.
(g)Monzeal's top plate is thicker (12 mm) compared to Technopak's (5 mm). Technopak's bottom plate is thicker (5 mm).
(h)Monzeal's clamp is 550 mm wide while Technopak's is approximately 500 mm.
[173] Given my finding that Monzeal had not copied Technopak’s filling spout design, I do not consider that there are objective similarities between the Monzeal and Technopak design especially when Monzeal has used different mechanisms to achieve similar functions. Monzeal has also provided evidence as to its design path which includes photographs of how it developed its filling spout and clamp arms. Further, Mr Leaning was entitled to use Xero’s bag clamp as a starting point and the fact of the similarities between the Xero rubber seal and the Monzeal rubber seal support the Xero design being the source of Monzeal’s design.
Causal connection and substantiality
[174] If I am wrong in finding that Monzeal’s bag clamp design is not objectively similar to Technopak’s, I do not accept that there is a causal connection between Monzeal’s design and Technopak’s design.
[175] Technopak submitted that the Monzeal designs of its bag clamp are altered copies of Technopak’s equivalent components. That is, it is not an identical reproduction of the copyright works in question, but they take the essence of Technopak’s equivalent designs. Technopak relies on Steelbro where the Court of Appeal confirmed that Steelbro had started with TRT’s product distinctly in mind and found that in that sense the product Steelbro had produced was derivative.
[176] In Tidd Ross Todd Ltd v Steelbro New Zealand Ltd, this Court did not agree that the differences in the two designs were the result of an independent design and development process.43 The Court accepted the expert evidence that the differences arose from modifying the plaintiff’s design and not from an independent design process. The evidence as to any independent design process is therefore relevant.
[177] Mr Garrick gave evidence of the process Monzeal took to develop the bag clamp and spout, including producing photographs of the prototypes. He said Mr Leaning drew from his knowledge at Sapac and Xero to provide the basic sketch of the design. The first shape was prototyped with wood and Mr Garrick’s evidence included a photograph of that prototype. That photograph depicts a wooden filling
43 Tidd Ross Todd Ltd v Steelbro New Zealand Ltd, above n 39 at [127].
spout and bag clamps with rounded edges. Monzeal produced its first functional prototype in November 2013 and Mr Garrick produced a photograph of that design which also depicts rounded rather than straight edges. Mr Garrick’s evidence is that a criterion of their design was that they do not copy Technopak’s actuated arms. They wanted to avoid a few parts that were quite “complicated.” They then produced a working prototype:
Once we had a working prototype with the ability to automatically load a bag to the fill head, it was now clear that the combination of fill head shape and bag loader finger design were incompatible causing wrinkles in the top of the bag causing the bag to be difficult to seal in the sealer. The fill head shape would have to change. We then glued on some wooden pieces to fill in the curve. This created the more hexagonal shape that we have today.
[178] Mr Garrick was an honest witness. He made appropriate concessions and I accept his evidence as to the pathway Monzeal took to arrive at its bag clamp and filling spout designs. It is unlikely that Monzeal would have gone to the trouble of making wooden prototypes and photographing them if it had copied Technopak’s design.
[179] I also accept Mr Leaning’s evidence that he started with the Xero clamp in mind and adjusted the design. The photograph of the prototype indicates that Monzeal started with a more rounded shape for its spout and adjusted to use straight lines because of a desire to improve the sealing function.
[180] I accept that Monzeal adopted an independent design path to arrive at its bag clamp design.
Conclusion — bag clamp
[181] It follows that the defendants have not infringed Technopak’s copyright in its bag clamp design [BF13-28-SA02].
Collocation of the various parts
[182] Technopak claims that the defendants have reproduced and/or incorporated a substantial part or parts of Technopak’s designs for the collocation of its hexagonal filling spout, bag clamp, bag loader swing arms and tie rod design and top pick
manifold and tail design in their bag-filler machines. The Technopak collocation (or arrangement) is depicted in CAD models.44
[183] This claim was dependent on findings that the defendants had copied Technopak’s designs of its hexagonal filling spout, bag clamp, bag loader swing arms and tie rod. I have found that Monzeal has not infringed copyright in any of those designs. It follows that there is no basis for this claim, and I reject it.
Bag stack guides
[184] Bag stack guides are used to keep the 25 kilogram bags in place as they are fed into the automated bag-filler machine.
Is the Technopak design original and capable of being protected by copyright?
[185] Technopak says it has copyright in its CAD model [BF20-23-SA01] of its bag stack guides depicted as follows [Figure 12]:
[186] The defendants say there is little (if any) originality in these designs. Dr Gooch explained that the shape of the bag guides and back stop are simple and commonplace mechanisms for holding stacks of rectangular paper objects. The evidence indicated that vertical pins (or bollards) are used in magazines for other bag-filler machines.
[187] Mr Reckin agreed that vertical pins used to hold bags are not original and had been used before. He accepted that there was nothing unusual about this design and
44 [TEC.0020001] and [TEC.00200002].
that the use of pins was a functional design to allow someone to get their hands into the magazine.
[188] I accept that the idea of bollards and vertical pins is not original, but that Technopak’s expression of that idea as set out in its drawing was original such that copyright subsists in the drawing. The level of originality, however, is low.
Has Monzeal infringed Technopak’s copyright?
Objective similarity
[189] Technopak relied on Monzeal’s drawing of its bag stack guides [MON.08L.0092] as depicted below as demonstrating an infringement of its copyright [Figure 13]:
[190] Technopak relied on the evidence of Mr Russell that the objective similarities are obvious when the designs are overlaid as follows [Figure 14]:
[191]Technopak also relied on Mr Russell’s evidence as to similarities:
Both bag guides are affixed onto adjustable slotted plates, an element that underscores their similarity.
Further, they both employ a Dia 38.1mm tube, which further corroborates the parallel in their design.
It is most likely that the Monzeal design was created using the Technopak’s design.
[192] The evidence disclosed that the adjustable slotted plates are in fact different, and the diameter of the tube is standard. I do not consider that those alleged similarities indicate copying. That the designs were likely not copied is further supported by Mr Leaning’s evidence of the following differences between the designs:
(a)Monzeal's bag magazine is a mobile trolley, compared to Technopak's fixed design;
(b)Monzeal's design has only two pins on each side, compared to Technopak's three pins;
(c)Monzeal's pins are all the same height, whereas Technopak's are different heights; and
(d)Monzeal's guides slide only horizontally, whereas Technopak's slide diagonally.
[193] Monzeal submitted that any remaining similarities are a coincidence due to functional constraints and common subject matter (preventing the same-sized bags from sliding back during the same operation).
[194] I accept that the size of the bag is a functional constraint. I also accept that the use of vertical bollards is not original. There are differences between the two designs and different mechanisms are used to adjust the vertical pins. I do not accept that the designs are objectively similar especially when the use of bollards is commonplace and the size of the bags is a functional constraint.
Causal connection and substantiality
[195] If I am wrong in concluding that the designs are not objectively similar, the evidence indicates that Monzeal developed its design independently. Mr Leaning explained that Monzeal’s design started with standard shelf brackets from Bunnings, and he produced a photograph of those brackets (with two pins of the same height) fixed to its prototype bag magazine. I do not therefore consider that there is any causal connection with the Technopak design or any copying of a substantial part of that design.
Conclusion — bag stack guides
[196] It follows that the defendants have not infringed Technopak’s copyright in its bag stack guides design [BF20-23-SA01].
Bag back stop
[197]The bag back stop is designed to control and restrict the movement of bags.
[198] Technopak claims that it owns copyright in the following CAD model [BF16- 23-SA01] [Figure 15]:
Is the Technopak design original and capable of being protected by copyright?
[199] The experts largely agreed that the design is simple, not novel and the use of a bag stop is commonplace. I accept that evidence but am also satisfied that the design was arrived at by reason of the skill, judgement or effort of Technopak’s staff. While copyright subsists in the design, the level of originality is very low.
Has Monzeal infringed Technopak’s copyright?
[200] Technopak relies on Monzeal’s design [MZ-SA0611] as evidence of copyright infringement [Figure 16]:
Objective similarity
[201] Technopak relied on Mr Russell’s evidence as to the similarities, as depicted when the drawings are overlaid [Figure 17]:
[202] Mr Russell’s evidence was that there is a marked similarity between Technopak’s drawing and Monzeal’s drawing:
… one of the more evident similarities is the diameter of the main tube, which is identical in both models.
The primary difference between the two, as far as I can ascertain, is the smaller tube diameter on the arm of Monzeal's MZ-SA0611. It also incorporates an additional bend in the arm design.
However, it is important to note that, despite this alteration, the termination point of the arm remains consistent with that of the Technopak part. From a manufacturing perspective, it seems plausible that this design modification was implemented with the intention of reducing production costs.
In my opinion, the Monzeal design was copied from Technopak’s BF16-23- SA01 Module bag stop.
[203] Mr Leaning explained that the stainless-steel tube is a standard diameter size. Mr Russell accepted that Technopak and Monzeal had simply used a standard size, despite drawing a conclusion of copying in his report from the similarity in dimension.
[204] The shape of the bag stops are obviously different given the kink in the Monzeal design. I also accept Mr Leaning’s evidence that the designs have different connection points. Monzeal’s is flush to the top of the magazine whereas Technopak’s is secured by a raised bolt. Monzeal submitted that any remaining similarities are simply a coincidence due to functional constraints and common subject matter (preventing the same size bags from sliding back).
[205] The only similarity is the point at which the end terminates. Dr Gooch said that the termination points are not identical although he did accept, they are in a very similar location. Mr Garrick was unable to explain why the respective termination points were located so close together other than to claim it as coincidence.
[206] Mr Leaning's evidence is that there is something like 5 mm difference. He said, to an engineer, 5 mm is a big number.
[207] I find that the only objective similarity is that the designs both terminate in a similar location.
Causal connection and substantiality
[208] The defendants argued that the final design was derived from a prototype, not Technopak’s designs and relied on evidence from Mr Leaning. Mr Leaning said the bag stop design was based on the shape of a tap, which is a commonplace design.
[209] I accept that Mr Leaning’s evidence establishes an independent design path which explains how Monzeal arrived at the design. It follows, that the Technopak design is not the source of the Monzeal design.
[210] Further, I do not consider that the fact of a similar termination point without more indicates that Monzeal has copied a substantial part of Technopak’s design when both bag back stops are required to prevent movement of the same sized bags.
Conclusion — bag back stop
[211] It follows that the defendants did not infringe Technopak’s copyright in its bag back stop design [BF16-23-SA01].
Two flight auger
[212] The auger is designed to receive powder at the inlet, subsequently conveying powder through the conduits, and ultimately depositing powder into the designated receptacle.
[213] Technopak refers to its auger as a “two flight” auger, which is a reference to the two flights depicted in its design of its auger [BF16-15-SA04] [Figure 18]:
Is the Technopak design original and capable of being protected by copyright?
[214] I note that the witnesses referred to “two flight,” “double flight” and “dual flight” interchangeably. A reference to any of those terms in this judgment is therefore a reference to the same concept of two flights as depicted in [Figure 17] above.
[215] The evidence established that the concept of a two flight auger is not original. Dr Gooch showed the Court a drawing from 2001 of an auger with a variable flight pitch and two flights at the end.
[216] While the concept of a two flight auger is not original, I accept Mr Reckin’s evidence that two flight augers were not common in the industry in which Technopak sold bag-filler machines. While Mr Leaning sought to assert that two flight augers were commonplace, the evidence did not support this assertion. The concept was not original but the evidence did not establish that their use in bag-filler machines was commonplace.
[217] I accept Mr Reckin’s evidence that when he designed the auger, a two flight auger was not common. While the concept is not original, the design was original in that it was arrived at by the skill, judgement or effort of Technopak’s staff. Copyright therefore subsists in Technopak’s auger design.
Has Monzeal infringed Technopak’s copyright?
[218] Technopak relies on Monzeal’s drawing of its auger [PM-SA0003] as evidence of copyright infringement.
[219] Mr Russell’s evidence sought to demonstrate the similarities between the two designs by mirroring Technopak and Monzeal’s respective auger designs as follows [Figure 19]:
Objective similarity
[220] In arguing that Monzeal has copied Technopak’s design, Technopak relied on: Monzeal’s design having two flights; and the location of the changes in the flight pitch (the distance between flights as depicted by the measurements in [Figure 18] above). Technopak submitted that these are fingerprints of copying. I consider each in turn.
[221] While I accept that two flight augers were not common, the concept was not original. The use of a two flight auger without more is not evidence of copying. Dr Gooch’s evidence was that two flights serve a functional purpose — to prevent inappropriate amounts of powder from dropping into the bag. Monzeal was entitled to use the same mechanism to achieve the same function. That feature on its own does not indicate copying.
[222] Turning to the location of changes along the auger, Mr Russell’s evidence was not unequivocal. He concluded that:
It is plausible to infer that Monzeal’s design may have been influenced, to a certain extent, by Technopak’s configuration.
(emphasis added)
[223] In cross-examination, Mr Russell explained that the same auger function can be achieved by the two different methods (diameter or pitch) so the fact the change occurs at roughly the same place indicates that Monzeal was influenced by Technopak’s design — it simply changed the method but not the location along the auger.
[224] Dr Gooch’s evidence was that there is no copyright in spacing such that this does not indicate copying:
The centre distance is determined by other geometric parameters such as: the desire for a small machine footprint; the height of the machine and conveyor which in turn affects bag loader swing arm length. If Mr Russell is asserting that copyright exists in spacing, that to my knowledge would be a novel claim.
[225] Dr Gooch opined that Monzeal had used a different solution for controlling the pickup and conveying of powder through the auger and had developed a unique solution of a reverse pitch propellor to reduce packed powder around the bearing. He considered that these are both aesthetic and functional differences and, in Dr Gooch's opinion, demonstrate that Monzeal has designed its auger independently.
[226] I do not accept that the fact of similar spacing and two flights at the auger end indicate that Monzeal copied Technopak’s design in circumstances where there is no copyright in the idea of a two flight auger, and it is unsurprising that the pitch changes in roughly the same place when the auger has to achieve the same function — to move the powder at the appropriate rate.
Causal connection
[227] It follows that the Technopak design is not the source of the Monzeal design given the obvious differences.
Substantiality
[228] The only similarity between the designs is the general location at which changes are made along the auger. I do not accept that such similarity reproduces a substantial part of Technopak’s design. Nor do I consider that Monzeal’s display of a two flight auger on its website in August 2012 indicates that it copied Technopak’s design.
[229] Mr Garrick accepted that the website displayed a two flight auger and said that it was always their intention to use a two flight auger. Given a two flight auger is not an original concept, I do not consider that the fact of Mr Garrick having a CAD model of a two flight auger indicates copying. Mr Garrick’s evidence was that he and
Mr Leaning had designed this component more than two-and a-half years after leaving Technopak.
An auger with a double flighted end was chosen for the final design. This design is common in our industry. It is more expensive to manufacture, however we found it was required to aid in the weight control of the difficult Tatua products. We opted to use only one extra auger flight at the tip to save costs.
Any similarities between our auger and Technopak’s is due to functional constraints. An auger is an ancient and simple mechanism. The size and thickness of an auger is dictated by strength requirements and the desired filling rate.
Conclusion — two flight auger design
[230] I accept that given the differences between the designs, Monzeal did not infringe Technopak’s copyright in its two flight auger design [BF15-15-SA04].
Conveyor and reject arm
[231] Technopak claims that copyright subsists in its conveyor belt and reject conveyor arm [TEC.0020089]. A drawing of the arm and conveyor belt is depicted below [TEC.00200090] [Figure 20]:
Is the Technopak design original and capable of being protected by copyright?
[232] The defendants dispute originality. The defendants produced photographs of similar designs that can be bought as COTS items. Mr Leaning showed an example of a COTS reject arm with a "kink" at the end. Mr Reckin admitted that this was not something he invented, and that similar reject arms could be bought off-the-shelf.
[233] I accept that Technopak owns copyright in its drawing but that the level of originality is very low in circumstances where conveyors and reject arms can be purchased off the shelf.
Has Monzeal infringed Technopak’s copyright?
Objective similarity
[234] Technopak claims that Monzeal’s drawings45 of its conveyor and reject arm indicate that Monzeal has copied Technopak’s design. The conveyor and reject arm designs [MON.04.0257] are depicted in [Figure 21]:
[235] Technopak says the similarities are striking, particularly between the drawings of the reject arms. Mr Garrick under cross-examination conceded that when he produced the drawings for Monzeal’s website, he had Technopak’s reject arm in mind:
Q. So, do you accept that the CAD model that was used to render this image -
45 MON.04.0257, MON.04.0258 and MON.04.0259.
A. Yes.
Q. - was in part derived from Technopak’s design for its reject arm and reject table?
A. Partially, yes. It would’ve been first in my mind.
[236] The renderings on the website depict a reject arm that operates in the same direction as Technopak’s arm. Mr Garrick accepted that the reject arm was depicted in a proposal to a customer which included a Monzeal drawing of a reject arm that pushes.
[237] The defendants argued that the reject arms were different because they operate in different ways — one pushes and one pulls. Mr Leaning gave evidence of the differences between the reject arms as follows:
(a)Monzeal's arm pushes; Technopak's pulls;
(b)Monzeal's is a different shape;
(c)the arms sit on opposite sides of the conveyor belt;
(d)Monzeal's arm is longer (693 mm) than Technopak's (595 mm);
(e)the "kick" at the end is longer on Monzeal's (331 mm) compared to Technopak's (295 mm) and the angle of the kick is greater on Monzeal's (33 degrees) to Technopak's (22.5 degrees);
(f)Technopak's post that pivots the arm has a diameter of 7 5mm compared to Monzeal's thinner post at 50 mm;
(g)Technopak's post (at 369 mm) is taller than Monzeal's (at 318 mm); and
(h)Technopak's reject arm pushes bags onto a smooth section of metal while Monzeal's pulls the bags onto a flat section with rollers.
[238] Technopak argued that the way the arm operates (push versus pull) is irrelevant if the arms are objectively similar. I agree. A reject arm with a kink is commonplace. They can be bought off-the-shelf. The fact of the differences in size (as set out above) however, indicate that the reject arms are not objectively similar other than having a kink at one end and being used for the same overall function (to remove bags from the conveyor belt). The very low level of originality, the fact that reject arms with kinks are commonplace and the differences in the length of the reject arm indicate that Monzeal’s design is not objectively similar to Technopak’s design. It is therefore unnecessary to consider causal connection and substantiality.
Conclusion — conveyor and reject arm
[239] It follows that the defendants have not infringed Technopak’s copyright in its conveyor and reject arm design [TEC.0020089].
Plastic roll feed
[240] Mr Leaning produced a CAD drawing for Technopak in or around May 2011 while he was working at Technopak depicting a plastic roll feeder arrangement [TEC.0020006] as set out below [Figure 22]:
Is the Technopak design original and capable of being protected by copyright?
[241] I accept that the above drawing was prepared for Technopak and that it was created using skill, judgement or effort such that copyright subsists in the drawing.
Has Monzeal infringed Technopak’s copyright?
[242] Technopak submitted that the defendants had incorporated the arrangement depicted in the drawing at [Figure 21] into their designs for an automated bag-filler machine and that in doing so, have infringed Technopak’s copyright in the drawing.
[243] In its closing submissions, Technopak did not identify the drawing or the machine in which Monzeal had allegedly incorporated “the arrangement.” Monzeal did produce a concept drawing46 of a plastic roll feed design as follows [Figure 23]:
[244] Mr Leaning’s evidence was that Monzeal has never manufactured or marketed the plastic roll feed for sale. I agree with the defendants that the concept of a plastic roll feeder is not original. Further, there are no objective similarities between Technopak’s concept drawing and Monzeal’s concept drawing.
Conclusion — plastic roll feed
[245] It follows that the defendants have not infringed Technopak’s copyright in its plastic roll feed design [TEC.0020006].
Up down conveyor
[246] Technopak claims copyright in a concept drawing of an up down conveyor produced by Mr Leaning in May 2011 [TEC.0020007] when he was at Technopak [Figure 24]:
46 MON.08S.0043.
Is the Technopak design original and capable of being protected by copyright?
[247] I accept that the above drawing was prepared for Technopak and that it was created using skill, judgement or effort such that copyright subsists in the drawing.
Has Monzeal infringed Technopak’s copyright?
[248] Technopak claims that Monzeal has incorporated the arrangement of the up down conveyor depicted in [Figure 23] into its designs and that in doing so, has infringed Technopak’s copyright. Technopak did not identify the Monzeal drawing and/or the Monzeal machine which allegedly contains the up down conveyor.
Conclusion — up down conveyor
[249] In the absence of any evidence of any Monzeal drawing and/or machine that incorporates an up down conveyor, there is no evidential basis on which to find that any of the defendants have infringed Technopak’s copyright in its up down conveyor design [TEC.0020007].
Overall conclusion
[250] There is some merit in the defendants’ submission that Technopak has selected a small number of drawings from thousands in an attempt to establish copying. I am satisfied that the defendants followed an independent design path to arrive at the Monzeal designs and that any similarities between the designs arise because of functional constraints. Further, many of the parts incorporated within an automated bag-filler machine are commonplace. All automated bag-filler machines perform the same functions of presenting the same standard sized bag to a filling spout for filling with the same quantity of powder and conveying the bags to be packed away. It is unsurprising that there are similarities between the designs due to those common functions.
[251] While Mr Garrick and Mr Leaning had knowledge of Technopak’s designs, the differences between the designs, the fact of functional constraints, the fact parts are commonplace, and their evidence of an independent design path indicate that the defendants have not infringed Technopak’s copyright in their CAD models and/or drawings for their automated bag-filler machines.
Result
[252] I find that the defendants have not infringed Technopak’s copyright. Technopak is not therefore entitled to any relief.
Costs
[253] If agreement on costs cannot be reached, the parties have leave to file memoranda of no more than five pages. Technopak is to file and serve any costs memorandum within 10 working days after the filing and service of the defendants’ cost memorandum. I will then determine the issue of costs on the papers.
Tahana J
1
0
1