Case: Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393
Outcome: cited
Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose ( Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429-430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability , qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability ( Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431-432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition? 224 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] ). 225 Moreover, the fundament of a design remains that there must be some aspect of visual appeal to the eye. It may well be that the features of shape serve a functional purpose or assist in making function efficacious but these attributes will not disqualify the features of shape or orientation as a design for the purposes of the Designs Act 1906 if the designer has selected features of shape or configuration or, put differently, 'if there was room for choice by the designer' ( Hosokawa per Gummow J at p 429-430). 226 As a result, it is not an infringement of the reproduction right comprised in the copyright subsisting in an artistic work to reproduce the work by applying features of shape, pattern or configuration derived by selection by the designer (author) notwithstanding efficacious functional contribution, to an article that when so applied, those features are capable of being judged by the eye in the finished article. 227 The essence of the applicant's case is that features of shape or configuration for five components are revealed in the artistic works in suit and those features can be seen in the finished manufactured 4 in 1 bucket of the respondent which contains assembled components representing three-dimensional versions of the applicant's artistic works amounting to reproduction of each artistic work.