Case: Shacklady v Atkins (1994) 30 IPR 387
Outcome: cited
The formulation of s 77(2) at [216] addresses reproduction of the artistic work by applying a design to an article and operates whether the corresponding design was either not registered or not registrable (s 77(1)(d)). Notwithstanding the change to the earlier formulation of s 77(2) and the inherent 'critical question' identified by Franki J partially raised by the earlier formulation, a design for the purposes of s 74 and s 77 under the formulation at [216] remains a design as defined by the Designs Act ( Hosokawa Micron International v Fortune (supra) at 396; Shacklady v Atkins (1994) 30 IPR 387 at 394 and CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 at [82] ). 237 The protection afforded by s 77(2) of the Copyright Act applies only when a respondent reproduces the applicant's work 'by applying that or any other corresponding design to an article' . An article means any article of manufacture [231] ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461. The process of application by the respondent of a corresponding design inherent in the applicant's artistic work involved a particular process. The respondent brought into existence a two-dimensional drawing representing a substantial reproduction of the applicant's work. That two-dimensional reproduction was used by the respondent to enable it to apply the corresponding design in the applicant's drawing to an article of manufacture. The applicant contends that the step of making a two-dimensional drawing which is a reproduction of the applicant's relevant work is not susceptible of protection under s 77(2) ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (supra) at 474; Shacklady v Atkins (1994) 30 IPR 387 at 393; CIPEC v First Melbourne Securities Pty Ltd (supra) at 530), because the statutory immunity applies only in relation to the application of a corresponding design to articles of manufacture. The two-dimensional drawings of the respondent are not articles of manufacture. If this contention has force, it gives rise to a counter-intuitive anomaly of a respondent being free to apply the applicant's industrially applied corresponding design to articles of manufacture yet being constrained by infringement of copyright in the applicant's artistic work in making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture. 238 The authorities mentioned above which are said to support the notion that making a two-dimensional drawing as a step along the way to the application of the corresponding design to articles of manufacture is not an infringement of the copyright in the artistic work, require brief examination. In CIPEC v First Melbourne Securities , Merkel J acknowledged that it was common ground between the parties that s 77(2) only applies to three-dimensional reproductions of the drawings in suit and, 'Thus, s 77 has no application to plan to plan copyright infringement: see Shacklady at 393' . Accordingly, there was no controversy about the question between the parties and no contradictor to the proposition that s 77(2) might extend to provide immunity in respect of the two-dimensional drawing. In Shacklady , Davies J accepted that the defence in s 77 'merely concerns itself with three dimensional reproductions in the context of a corresponding design that is applied industrially' . That assumed position was adopted by Davies J in response to a submission that s 77 did not apply in the circumstances of the case because Mr Shacklady's right to enforce his copyright was influenced by a transitional period between the statutory regimes arising out of re-enactment of particular provisions taking effect from 1 October 1990 and one issue was the operation of the section in relation to past events in circumstances where, nevertheless, articles to which the corresponding design had been applied were sold after the commencement of the new provisions. Notwithstanding that contextual question, it is clear that Davies J proceeded on the footing that the immunity provided by s 77(2) only operates in relation to three-dimensional reproductions brought about by application of an industrially applied corresponding design. In Amalgamated Mining v Warman (supra), the facts involved both production of an infringing two-dimensional plan used as a step along the way to application of a corresponding design and use of the applicant's two-dimensional artistic work itself to make the two-dimensional infringing plan used as a step along the way. Nevertheless, Wilcox J accepted that s 77 only provided an immunity, relevantly, in relation to acts 'within the scope of the copyright in the corresponding design' being the aggregate of things that the registered owner of a design would have the exclusive right to exercise. Therefore, s 77 'does not include a sheet of paper whose only function is to carry the design. It follows that the subsection has no application to plan to plan copying. The doing of such a thing is not an infringement of the monopoly in the registered design; it is not "within the scope of the copyright" or "monopoly" "in the corresponding design".'