Case: Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461
Outcome: cited
Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp &amp; Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands &amp; McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart &amp; Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577). 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".' 240 On the face of s 77(2) , the immunity is one from infringement of the reproduction right in the work expressed by applying a corresponding design to an article which having regard to s 74 is a design that 'when applied to an article , results in a reproduction of [the] artistic work'. Since the term 'design' for the purposes of the term 'corresponding design' must be understood having regard to the definition in the Designs Act 1906, the relevant reproduction seems logically to be confined to features capable of being judged in the finished article , that is, three-dimensional reproduction. Section 74 itself contemplates a resultant reproduction of the work by application of the design to an article . Although a construction of the provisions which avoids the frustration or partial frustration of the conferral of an immunity from copyright infringement in the application of a corresponding design industrially applied by the copyright owner, to articles of manufacture, has considerable merit, the court in CIPEC, Shacklady and Warman has accepted that the scope of the immunity does not extend to the two-dimensional infringing plan produced as a step along the way. Moreover, the Parliament intervened in a way which the respondent describes as merely declaratory or clarifying of the true prevailing position in any event so as to eliminate what is only an apparent anomaly, by introducing s 77A into the Copyright Act by s 14 of the D (CA) A 2003 which, subject to the terms of the section to be discussed shortly, in principle, provides that no infringement of copyright in the artistic work arises out of reproduction of the work derived from a three-dimensional product that embodies a corresponding design in relation to the artistic work. Accordingly, making a two-dimensional drawing from a three-dimensional product embodying the corresponding design is not an infringement of the reproduction right of the copyright owner in the artistic work. The Explanatory Memorandum for the Designs (Consequential Amendments) Bill 2002 before the House of Representatives at clause 46, provides: ' Sections 75 and 77 permit three-dimensional products to be reproduced without infringing copyright in an artistic work that relates to the design. However, a practical problem arises from the fact that it is not permissible to produce either a plan or drawing, or possibly a mould from which the product is made. That is, a drawing or plan made in the course of manufacturing non-infringing three-dimensional products may infringe copyright in the original drawing or plan. Unless such indirect copying in the course of manufacture is permissible, the legislative purpose of avoiding dual copyright and design protection for three-dimensional products may be frustrated.' 241 It seems to me that the only conclusion open to me is that s 77(2) in the period 2 December 2003 to 17 June 2004 did not operate so as to provide the respondent with an immunity from copyright infringement in relation to the applicant's artistic works reproduced by making a two-dimensional drawing as a step along the way to industrial application of a corresponding design (where applicable) to articles of manufacture reflecting the features of shape in the finished article.