Digga Australia Pty Ltd v Norm Engineering Pty Ltd [2008] FCAFC 33

FEDERAL COURT OF AUSTRALIA

Digga Australia Pty Ltd v Norm Engineering Pty Ltd [2008] FCAFC 33

COPYRIGHT – infringement – respondent manufactured and sold buckets for use with Bobcat in accordance with engineering drawings it prepared for the bucket components – the drawings were in computerised form – appellant "reverse engineered" from respondent's bucket to enable it to manufacture and sell its buckets and, to that end, to prepare engineering drawings – whether appellant effected two-dimensional and three-dimensional reproductions of respondent's drawings of the bucket components – respondent's drawings reduced three-dimensional prototype of bucket to two-dimensional form - respondent's drawings recorded electronically on computer by use of computer aided design (CAD) system –– primary Judge found respondent had copyright in drawings created in September 2003 – whether primary Judge was entitled to so find – unclear state of evidence as to when drawings came into existence – primary Judge's finding that drawings came into existence as culmination of "process of "origination" over lengthy period culminating in September 2003 –whether that finding sustainable on the evidence – testimony of respondent's managing director to effect that drawings made in early 2002 – whether respondent had proved that its bucket that was inspected and copied by appellant was manufactured in accordance with the drawings sued upon – if not, whether respondent had failed to prove unbroken chain of causation between its drawings in which copyright subsisted and appellant's drawings and buckets – operation of s 77 within Div 8 of Pt III of the Copyright Act 1968 (Cth) prior to the Designs (Consequential Amendments) Act 2003 (Cth) – whether s 77(2) excepted from infringement appellant's two-dimensional reproductions (drawings) that came into being as steps on the way to appellant's three-dimensional reproductions of the buckets – whether appellant's drawings were articles of manufacture – whether in the case of one component (Pivot Arms) there was a "design" and therefore a "corresponding design" following the Designs Amendment Act (1981) (Cth) - effect of changes to Div 8 made by the Designs (Consequential Amendments) Act 2003 (Cth) as from 17 June 2004. Held: (1) on the evidence, the primary Judge was entitled to find that the requisite degree of originality was established for copyright to subsist; (2) on the evidence, the primary Judge was entitled to find the necessary causal chain was established; (3) prior to 17 June 2004 s 77(2) of the Copyright Act did not except from infringement drawings prepared in the course of the manufacture of articles, even though the manufacture of the articles was itself excepted from infringement; (4) after 17 June 2004, the new s 77A did effect such an exception; (5) both before and after 17 June 2004, the design of the pivot arm component fell within the definition of "corresponding design" and the manufacture of that component did not constitute a three-dimensional infringement of the respondent's copyright in its drawings.