JUDGMENT No. 1.262 94 eesresecveveesel onevccssecs CATCH W INTELLECTUAL PROPERTY - Copyright - whether copyright subsists in models and drawings of a yacht - infringement - whether flop-moulding from an existing yacht to produce a new yacht embodying the features of the protected work constitutes an infringing act - reproduction by copying in three dimensions from a three dimensional copy of the work - Designs - overlap between the Copyright Act and -the Designs Act - whether copyright protection lost through the industrial application of an unregistered corresponding design - temporal scope of the legislative provisions - whether the design industrially applied - whether an article was sold - meaning of "article" and "sale" - meaning of "design" - whether the drawings disclosed a registrable design - whether shape of design dictated solely by function. Copyright Act 1968 (Cth) - ss 21, 31, 36, 77 Copyright Regulations - Reg 17(1) Designs Act 1906 ss4(1), 17, 17A Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348 Keviacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd [1983] FSR 5 Press-Form Pty Lid v Henderson's Ltd (1993) 40 FCR 274 Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120 Smith v. Federal Commissioner of Taxation (1932) 48 CLR 178 Reid v Macbeth & Gray [1904] AC 223 Dorling v Honnor Marine [1965] Ch D 1 Warman International v. Envirotech Australia Pty Ltd (1986) 6 IPR 578 WEA Records (1990) 96 ALR 365 Johns v Connor (1992) 107 ALR 465 ° ROBERT SHACKLADY v ROBERT ATKINS & PATRICK CARROLL NG 423 of 1994 Davies J 30 November 1994 Sydney 12 DEC 1994 FEDERAL COURT OF AUSTRALIA PRINCIPAL REGISTRY T_OF AUST ) ) Ww Ww, STRICT REGISTRY ) NG 423 of 1994 ) GENERAL DIVISION ) BETWEEN: ROBERT SHACKLADY Applicant AND: ROBERT ATKINS First Respondent PATRICK CARROLL Second Respondent Coram: Davies J Date: 30 November 1994 Place: Sydney MINUTES OF ORDER THE COURT DECLARES THAT: 1. Copyright subsists in the model, exh E, and the drawings exhs RS1 to RS34 inclusive produced by Mr J.E. Adams for the Adams 10 Class Yacht. 2. The applicant 1s, and has been since 9 December 1993, the owner of, and entitled to the copynght in all of the drawings exhs RS1 to RS34 inclusive for the yacht known as the Adams 10 Class Yacht. THE COURT ORDERS THAT: 3. The application be otherwise dismissed. 4. Costs be reserved. NOTE: Settlement and entry of orders 1s dealt with in Order 36 of the Federal Court Rules. UST: Ww. W, TRY NG 423 of 1994 BETWEEN: ROBERT SHACKLADY Applicant AND: ROBERT ATKINS First Respondent PATRICK CARROLL Second Respondent Coram: Davies J Date: 30 November 1994 Place: Sydney REASONS FOR JUDGMENT The applicant, Mr Robert Shacklady, has been involved in the construction and supply of yachts for approximately 20 years. In October 1984, he purchased the moulds for the Adams 10 and the Adams 10 Cruising yachts. The Adams 10 is a 33 foot racing yacht and Adams 10 is a recognised class. Yachts of that class compete regularly on Sydney Harbour. Since 1984, Mr Shacklady has been the supplier of new Adams 10 yachts. Over the time, he has supplied approximately 40 of the yachts to purchasers. There has, however, been only one contract for a new Adams 10 yacht since 1990. Recently, Mr Shacklady and the designer of the Adams 10 yacht, Mr Joseph Alan Adams, have taken steps to develop a new 10 metre yacht, which Mr Shacklady intends to call "The Adams Super Ten". At the same time, some members of the Adams 10 Class Association of Australia have become dissatisfied with what they perceive to be Mr Shacklady's lack of promotion of the Adams 10 class. The respondents, Robert Atkins and Patrick Carroll, are two members of the Association who have taken some action towards having Adams 10 yachts constructed by a builder independent of Mr Shacklady's organisation. In the present proceedings, Mr Shacklady seeks a declaration that copynght subsisted in certain models which were produced by Mr Adams in or about 1976 in the course of the design of the Adams 10 class yacht, and also in the drawings, plans and specifications prepared by Mr Adams for the Adams 10 class yacht and that he, Mr Shacklady, is the owner of and entitled to the copyright in the drawings. Mr Shacklady seeks a declaration that the respondents are threatening to infringe the copyright. He seeks an injunction restraining them from doing so and an order for the delivery up of certain articles. Mr Adams is not a party to the proceedings but no objection to the relief claims was raised by reason of the non-joinder. Section 32 of the Copyright Act 1968 (Cth) provides that copynght shall subsist in original literary, dramatic, musical and artistic works and s 35 provides that, subject | to other matters such as assignment, the author of a literary, dramatic, musical or artistic work is the owner of any copyright therein. Section 10(1) of the Act defines "artistic work" as:- "(a) a painting, sculpture, drawing, engraving or photograph, whether the work 1s of artistic quality or not (b) a building or a model of a building, whether the building or model is of artistic quality or not; or (©) a work of artistic craftsmanship to which neither of the last two preceding paragraphs applies" - In about 1976, Mr Adams, who was a self-employed yacht designer, was commissioned to design a 66 foot ocean racing yacht. Mr Adams commenced his task by constructing timber models. To develop a model, Mr Adams first sculpted an appropriate piece of wood with a tomahawk. The resultant form was smoothed. A keel was added, as was the rudder in the case of exh D. Exhibit D is a model of the port half of the hull, as if the vessel had been cut from bow to stern. There is a plywood insert for the keel and another for the rudder. The model is approximately _ 87 cm in length. As the result of a change in the International Offshore Organisation rules, the proposed class was abandoned, after only one yacht had been built. Mr Adams then conceived the idea of using one of the models as a basis for a 33 foot racing yacht. Exhibit E is the model, 64 cm in length, which he developed for that purpose. This model commenced as a model for the 66 foot ocean racing yacht. It is a model of the port half of the hull, with a plywood insert for the keel. The evidence given by Mr Adams as to the steps taken by him in developing the drawings from the model was not entirely consistent. Mr Adams gave this evidence:- "And so it 1s not just a pure mathematical relationship to get from a model to the 33 footer?---No. And so you had to apply your skill as a yacht designer to come up with the drawings including in particular the first drawing of the hull?---That's correct." Mr Adams had earlier explained that the process of designing was complex and that one of the factors to be considered was displacement, which involved matters of volume and weight. From this evidence, I would conclude that designing skills, including the making of calculations and adjustments, were required in the development from the model to the drawings. However, in his re-examination, Mr Adams gave this evidence:- "So far as the drawings you produced related to the appearance of the boat, that 1s reflecting the hull shape, keel and rigging, what was involved in working from the model to the drawings?---I changed the model a little bit to increase the beam for the 33 foot and you can see on these two models here if you look at them that they're very similar even though one's a 66 footer and the other one's a 33 and then after, as I say, changing the model just slightly to increase the beam on the 33 I took the lines off it. That just involves cutting out cardboard shapes and putting them on paper." This evidence shows that to make the model, exh E, suitable for a 33 foot rather than a 66 foot yacht, it was necessary to increase the beam, presumably to affect the displacement. The evidence in the above passage suggests that this change was made on the model itself and that, thereafter, Mr Adams merely took the hnes off the model by cutting out cardboard shapes. Apart from the fact that this evidence seems to conflict with the evidence previously set out, it 1s impossible to see from the model, exh E, how or where the beam was increased. A bnef inspection of the model does . not appear to show that fibreglass or other filing was added to the timber hull to increase the beam. On the whole of the evidence, I have come to the view that the drawings were not a mere routine development from the model and that their creation involved designing skill and elements of judgment. In developing his design, Mr Adams had a concept in mind. As his design progressed, Mr Adams made necessary calculations and adjustments to ensure that the yacht would have the desired displacement and the functional attributes which he sought. In my opinion, the development of the concept was continuous, with the mode] exh E and the drawings being stages m which Mr Adams' concept was expressed. For the purposes of the present case, little is gained by differentiating between the model and the drawings. They both gave expression to Mr Adams' design, the drawings doing so in a form which could readily be applied by a boat builder. I should note, however, in case the distinction between the model exh E and the drawings becomes material, that Mr J Garnsey QC, with whom Mr J van Aalst of counsel appeared for the applicant, and Mr D K Catterns QC, with whom Mr R Cobden of counsel appeared for the respondents, were agreed that exh E was an artistic work for the purposes of the Act, at least on the footing that the model was a sculpture. In view of the concession, I do not consider the issue for myself. Mr Adams prepared the drawings which are in evidence, exhs RS1 to RS34. The plans show various details of the yacht including the ng. Thereafter a wooden vessel or plug was constructed by a boatbuilder in accordance with Mr Adams' plans. The wooden plug is in fact still sailing today. A female fibreglass mould was built over the wooden plug. This process occurred for all parts of the yacht that were to be moulded. The plug was coated with jelcoat and several layers of glass reinforced plastic were sprayed onto it. Finally, the plug was removed leaving the female mould. To construct a yacht, the process was reversed. The inside of the female mould was coated with jelcoat. Then glass reinforced plastic was sprayed within the mould. The female mould was removed leaving the hull or other part for its designed use. Approximately 100 fibreglass Adams 10 yachts were constructed using the original set of fibreglass moulds. In October 1984, Carina Yachts Pty Ltd was the owner of the set of moulds and the builder of the yachts. In that month, Mr Shacklady purchased the set of moulds. Thereafter, he had a number of the yachts constructed for his clients using the set of moulds. Mr Shacklady first had the yachts constructed by Bosun Boat Builders of Caboolture, Queensland, then later by Bosum Boat Builders at Terrey Hills, Sydney and, finally, by Windersea Yachts, Taree, NSW. These companies constructed the hull, the deck and the furniture components for the yachts. If the client wished it, Mr Shacklady's company, Seahorse Marine Pty Ltd, completed the yacht by installing a mast, the rigging and the deck equipment. - Copyright in the drawings for the yacht was assigned by Mr Adams to Adams Yacht Design Pty Ltd in about 1980 and was subsequently assigned by that company to Mr Shacklady on 9 December 1993. I am satisfied that Mr Adams was the author of the models and of the drawings for the yacht and, as such, was the owner of any copyright therein. The models and the drawings were original works. It is alleged on behalf of the applicant that the respondents are seeking to obtain a builder to reproduce their design. It is alleged that this is to be done by a process of flop moulding. It is said that this will amount to infringement of the copyright. Evidence was given that flop moulding is accomplished by using an existing vessel as the plug from which a female mould 1s constructed. Under s 31(1) of the Copyright Act, copyright in relation to a work includes an exclusive right "to reproduce the work in a material form". Under s.36(1), the copyright is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does or authorises the doing in Australia of an act comprised in the copyright. The alleged act im this case is the reproduction of the work in a material form. Section 21(3) of the Copyright Act provides:- "(3) For the purposes of this Act, an artistic work shall be deemed to have been reproduced - (a) in the case of a work in a two-dimensional form - if a version of the work 1s produced in a three-dimensional form; or (b) in the case of a work in a three-dimensionai form - if a version of the work 1s produced in a two-dimensional form, and the version of the work so produced shall be deemed to be a reproduction of the work." Moreover, s 14(1) of the Act provides:- "(1) In this Act, unless the contrary intention appears: (a) a reference to the doing of an act in relation to a work or other subject- matter shall be read as including a reference to the doimg of that act in relation to a substantial part of the work or other subject-matter; and (b) a reference to a reproduction, adaptation or copy of a work shall be read as including a reference to a reproduction, adaptation or copy of a substantial part of the work, as the case may be." Having regard to these provisions, I am satisfied that the construction of an Adams 10 yacht by using the process of flop moulding from an existing yacht rather than by the direct application of Mr Adams' drawings would, subject to s 77 of the Copyright Act, constitute an infringement of the copynght. A design is registrable whether it is applicable for the shape or configuration of an article or for the pattern or ornament thereof. It follows that Mr Adams' design for the shape and configur- ation of the Adams 10 yacht may be infringed by the production, through a process of flop moulding, of a yacht which incorporates his design. Copying need not be direct. See LB (Plastics) Ltd v Swish Products Ltd (1979) RPC 551; British Leyland Motor Corporation Lid v Armstrong Patents Co Ltd [1983] FSR 51. In Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77, French J said at 83:- "This transdimensional reproduction may be effected directly or indirectly by copying in three dimensions from a three-dimensional version of the work: King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417; Dorlng v Honnor Manne Le [1965] Ch 1; Merchant Adventurers Lid v M Grew & Co Lid [1971] 2 All ER 657; LB (Plasucs) Lid v Swish Products Lid [1979] 5 FSR 145, RPC 551. For completeness 1t 1s to be observed that the substantiality provisions of s 14 apply to the process contemplated by s 21(3): S W Hart & Co Pty Lid v Edwards Hot Water Systems (1985) 61 ALR 251 at 254; 5 IPR 13 at 16 per Gibbs CJ, at ALR 258; IPR 20 per Mason J, and at ALR 268; IPR 13 at 30 per Brennan J." The shape and configuration of the yacht is set out m Mr Adams' drawings such as exhs RS1, RS2 and RS12. The reproduction of the hull and deck, in accordance with Mr Adams' design, would constitute a substantial reproduction of the design. Although plans such as exh RS12 show the mast, rigging and sails, the configuration of these is understood to be optional. Mr Shacklady's evidence was that, on occasions, he supplied bare yachts and, on other occasions, fully fitted yachts. Masts, rigging and sails could be developed to the owner's specification. Accordingly, the reproduction of the hull and deck would be a substantial reproduction of the design. The evidence does not show that either of the respondents themselves propose to infringe the copyright. Nor does the evidence show that events have reached the stage where a boatbuilder proposes to develop a set of moulds from an existing yacht. Nevertheless, an issue has arisen which the Court should clarify by the grant of appropriate declarations. The respondents have initiated inquiries which are inconsistent with Mr Shacklady's claimed rights and they have instructed counsel and solicitors to oppose in these proceedings the claims which Mr Shacklady makes. Therefore, the respondents have put themselves at risk should the Court, in its discretion, consider that a declaration should be made and that costs should be awarded. Subject to s 77 of the Copyright Act, I am satisfied that those orders should be made. Section 77 in its present form was first introduced by the Copyright Amendment Act 1989, s 11. That Act was repealed by the Copyright Amendment (Re-enactment) Act 1993 (Cth) (No 107 of 1993) which itself re-enacted certain provisions of the 1989 Act including s 11 thereof. The re-enacted provision was given effect as from 1 October 1990. See s 4 of the 1993 Act. Section 77, as enacted by these provisions, reads as follows: "Tl. —(1)_—s This section applies where: (a) copyright subsists in an artistic work (other than a building or a model of a building, - or a work of artistic craftsmanship) whether made before the commencement of this section or otherwise; (b) a corresponding design 1s applied industrially, whether in Australia or elsewhere, by or with the licence of the owner of the copyright in the work in the place where the industrial application happens; (c) at any time on or after the commencement of this section, articles to which the corresponding design has been so applied (in this section called 'articles made to the corresponding design') are sold, let for hire or offered or exposed for sale or hire, whether in Australia or elsewhere; and (d at that time, the corresponding design 1s not registrable under the Designs Act 1906 or has not been registered under that Act. (2) It is not an infringement of the copyright in the artistic work to reproduce the work on or after the day on which articles made to the corresponding design are first so sold, let for hire or offered or exposed for sale or hire, by applying that, or any other, corresponding design to an article. (4) The regulations may specify the circumstances in which a design is, for the purposes of this section, to be taken to be applied industrially " Regulation 17(1) of the Copynght Regulations provides: "17. (1) For the purposes of section 77 of the Act, a design 1s taken to be applied industrially if 1t is applied - . (a) to more than fifty articles; or (b) to one or more articles (other than hand-made articles) manufactured in lengths or pieces." The present s 77 applies to copyrights whether they come into existence before or after the commencement of the Act. See s 77(1)(a) & (c) and Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348 at 385. Mr Garnsey submitted that s 77 did not apply as Mr Shacklady's mght to enforce his copyright, as it exsted immediately prior to 1 October 1990, was preserved by s 8 of the Acts Interpretation Act 1901 (Cth). However, s 77 merely concerns itself with three dimensional reproductions in the context of a corresponding design that is applied industrially. The section is expressed to have operation in relation to past events but only in the cifcumstance that on or after its commencement articles to which the design is applied are sold, let for hire and so on. The section must be given effect according to its terms. Thus, in Ametex Fabrics Inc v C & F Fabrics Pty Ltd (1992) 24 IPR 449, Wilcox J said at 458:- "In my opinion, the reason why it was thought unnecessary to insert a transitional provision in the 1989 Act is that infringement of copyright is a day-to-day phenomenon. Whilst legislation stating that it 1s not an infringement to do certain actions is in force, the person doing those actions is protected. If that legislation 1s repealed, the protection remains in respect of actions done whilst the legislation was in place because no cause of action arose out of the actions. But there is no protection in relation to future actions because, as from the moment of repeal, the immunity is lost; a cause of action may arise out of those actions." Section 17A of the Designs Act 1906 (Cth) supports this reading as, in the circumstances which it specifies, it preserves the ability to apply for a design until all the steps which s 77(1) specifies occur. Para 77(1)(a) is satisfied as copyright subsists in Mr Adams' drawings for the Adams 10 yacht. Para 77(1)(b) 1s satisfied as the design was applied industrially with the licence. of the owner of the copyright by being applied to approximately 100 Adams 10 Class yachts. In my opimon, the regular application of the design in the construction of yachts is an application of an industrial nature being the repetitive application of a design in the manufacture or construction of goods for sale. See Press-Form Pty Ltd v Henderson's Ltd (1993) 40 FCR 274, Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120; Re Colliers Application (1940) 57 RPC 121; Keviacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77. The number specified in reg 17(1) was exceeded. In Press-Form Pty Ltd, Gummow J said at 282:- "What reg 17 does do is to supply a fairly plain measure by which there may be drawn the line beyond which there is industrialisation of the design." See also Safe Sport Australia at 126; Kevlacat at 88-89. The operation of s 77(1)(c) poses more difficulty. Although s.77(1)(c) uses the term "articles", s 23(b) of the Acts Interpretation Act provides that, unless the contrary intention appears, words in the plural number include the singular. See Johns v Connor (1992) 107 ALR 465 at 472-3. I read s 77(1)(c) as encompassing a single sale when the corresponding design has been applied industrially at a prior time and the sale is a continuation of the industnal application of the design. The word "articles" is also used in s 77(2). In this context, it cannot be doubted that the first sale of an article made to the corresponding design would be sufficient for the operation of the sub-section provided that, at that time, it was intended that the corresponding design would be applied industrially and that the article first sold came into being in the course of the industrial application. Mr Garnsey submitted that there was no sale after the commencement of s 77 on 1 October 1990. One Adams 10 yacht was supphed thereafter by Mr Shacklady's company, Seahorse Marine Pty Limited, to a company connected with the respondent, Robert Atkins, Truflo Sales Pty Limited. The agreement for the construction of the vessel was dated 25 February 1994. The requirement was for a "Bare Yacht" which was defined as "Glass hull with keel attached including any micro-ballooned filling, but excluding rudder and tiller, forestay and backstay fittings, deck collar and spas, standing and running rigging and associated fittings.". The yacht was to be and was constructed to the stage of hull, deck and moulded furniture, with a number of other elements fitted and certain items supplied but not fitted. The yacht was delivered to Truflo Sales Pty Limited on 13 July 1994. In the following week, Truflo Sales Pty Limited fitted out the yacht by erecting the spas and supplying and fitting the deck hardware such as winches, cleats and internal fittmgs such as bilge pumps and outboard brackets. Truflo Sales Pty Limited delivered the yacht to its client, Mr Gary Hopes, on 25 July 1994. The contract between Mr Hopes and Truflo Sales Pty Limited is not in evidence. Mr Garnsey submitted that the relevant contract was a contract for construction, not for sale. But the term "sale" in a statutory context often has a wide denotation. See Smith v. Federal Commissioner of Taxation (1932) 48 CLR -178 and Hobart Bridge Co Lid v. Federal Commissioner of Taxation (1951) 82 CLR 372 at 382. Whether the matter be looked at in accordance with the agreement between Truflo Sales Pty Limited and Seahorse Marine Pty Limited or whether what is examined is the transaction as between Truflo Sales Pty Limited and Mr Gary Hopes, I am satisfied that there was a relevant sale for the purposes of s 77(1)(c). The contract between Seahorse Marine Pty Limited and Truflo Sales Pty Limited was for the sale and purchase of a yacht completed to the "Bare Yacht" stage. The contract with Mr Hopes was for the sale and purchase of a fully completed yacht. Both transactions were sales for the purpose of s 77(1)(c). See, eg, Reid v Macbeth & Gray [1904] AC 223. Para 77(1)(d) was satisfied in that the corresponding design was not registered under the Designs Act. Mr Gamsey submitted that s 77 cannot apply unless the corresponding design was a design to which the Designs Act applied. As Lockhart J said in Hosokawa Micron Internationa] Inc v Fortune (1990) 26 FCR 393 at 396, the word "design" is not defined in the Copyright Act but has been held to have the same meaning in s 77 as in the Designs Act. I take the relevant date to be 1976, prior to the amendment of the Designs Act by Act No 42 of 1981. The Act as amended now provides that a design is not incapable of registration by reason only that it consists of features of shape or configuration that serve only a functional purpose. Mr Garnsey submitted that Mr Adams' design was never registrable under the Designs Act, for the design was dictated solely by the function which the yacht was to serve. This submission relied upon two bases. First, the Designs Act s 4(1) defines "design" as meaning:- "features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principie of construction". Secondly, the Designs Regulations, as in force when Mr Adams prepared his first drawings and when the first yachts were produced, provided, inter alia:- "20A. (1) For the purposes of sub-section (2) of section 17 of the Act, designs for articles included in any of the classes of artjcles specified mm the next succeeding sub- regulation are excluded from registration under the Act. (2) The classes of articles are - (a) works of sculpture other than casts or models used or intended to be used as models or patterns to be multiplied by an industrial process; A like issue was considered by Northrop, Lockhart & Gummow JJ in Hosokawa. There were some differences in their Honours expressions of the principle to be applied. However, the principle was subsequently restated in Interlego by Gummow J, with whom Black CJ and Lockhart J agreed, where his Honour said at 375:- "The authonities supporting the principle that design dictated solely by function 1s not registrable are considered in detail in the judgments in Hosokawa Micron Internanonal. They need not be analysed in detatl here. However, what must be stressed 1s that it 1s no objection to the registration of a design that it serves a function purpose, so long as its shape is not dictated solely by function: Hecla Foundry Co v Walker, Hunter & Co v Walker, Hunter & Co (1889) 14 AC 550 at 558-559; Cooper v Symington (1893) 10 RPC 264 at 267; Werner Motors Ltd v A W Gamage Lid (1904) 21 RPC 621 at 629; Gulard v Worrall (1904) 22 RPC 76 at 79; Re Bayer's Design; Bayer v Symington (1906) 24 RPC 65 (CA); (1907) 25 RPC 56 (HL). The rationale is clear: unlike patent law, design law will not give a monopoly in a particular function; but it will give a monopoly in a shape, not dictated solely by function, which produces an article that serves a useful purpose. So it ts no objection here that Lego had already received patent protection which had expired. As Vaughan-Willtams LJ stated in Re Bayer's Design (supra) at 74: 'If a Design 1s a Design, when tested by the eye, it will not cease to be a Design, or the less be a Design, because when you use this piece of ornamentation by applying it you will attain a mechanical result which could be subject matter of Letters Patent." At 376, Gummow J said:- "The issue 1s whether there is some feature of shape which 1s not dictated solely by function and which is apparent to the eye. If there is, then it 1s no objection that every feature of the shape is functional This issue 1s not dealt with by comparing an article in that particular shape to an imaginary article in an indeterminate, genenc shape and attempting to identify pomts of similarity and difference." At 375, Gummow J pointed out that the existence of potential variety points against the claim that the particular shape was dictated solely by function. At 376, his Honour said:- "Clearly, this [function] can be an integral element of the attractiveness of the product. For example, the car industry employs many people to design bodies that look sleek and fast. The only objection can be where the actual shape of the article is dictated solely by function." Gummow J had earlier expressed a similar opinion in Hosokawa, where his Honour summed up his opinion as follows, at 429-430:- "In my view, it follows from the course of authority upon the definition in the 1883 Act, as understood at the time of the enactment of the Australian legislation in 1906: (i) that a design was not invalid by reason only that the articles to which it was applied would be assisted by the particular shape of the design in achieving a functional purpose; and (ii) that if there was room for choice by the designer as to the shape of an article, the resuit of the designer's labours would qualify as a design, even if the articles to which it was applied served a functional purpose and attainment of that purpose was assisted by the particular shape in question. The facts in the present case lead inevitably to the result that the corresponding design 1n relation to the drawing was capable of registration under the Designs Act, and that the defence under 8 77 of the Copyright Act was made out" In view of the approval of his Honour's opinion given by Black CJ and Lockhart J in Interlego, I consider that I should adopt that approach, an approach which, as Gummow J pointed out in Hosokawa at 429, has the merit of avoiding the "pizarre relationship between copyright and design law" which appears to be produced by some recent English authority. Although, in Hosokawa, Lockhart J, with whom Northrop J agreed, approached the issue in a somewhat different manner, the end result of his view accorded with that of Gummow J, as his concurrence in Interlego shows. Mr Adams gave evidence that he sought to design a yacht that was lightweight and very fast, would cost as little as possible and would outperform the yachts that were currently being used. Mr Adams gave evidence that appearance did not play any part in his consideration of the design. However, Mr Adams gave this evidence in cross-examunation:- "You set yourself the task of designing a 33 foot boat that is going to be fast and of light displacement, there are a large number of ultimate designs you could come up with, are there not?--- Yes. Every aspect of your skill in designing the Adams 10 imvolved various trade-offs between different aspects of design; is that right?---Yes If you decide to make a fast 33 foot boat there is no displacement that is dictated by that overall brief, is there?---Well, as you just said you can design many, many boats within 33 feet that can be very fast and to see the 35 footer which 1s similar it h as a different bottom. And part of your skill in designing the Adams 10 has been to make your own selection amongst all of the design parameters available to come up with a successful boat?--- Correct, But it 1s a good looking boat, 1s it not?---I don't know, I honestly don't know. Do you not think that is part of the reason for its success?---Well, if you look at the drawings you'll find that the deck 1s a straight line, the bow 1s a straight line and the - stern 1s a straight line; there's only three lines above the waterline and they're all Straight. And that 1s part of its aesthetic appeal, 1s 1t not?---[ don't know, I can't tell. It is not as cluttered as some other boats, 1s 1t?---No, certainly not. And sometimes in the search for speed boat designers have come up with elements of design that are not as attractive as the clean lines of the Adams 10 I suggest and I will give you an example; one 1s sometimes they have a little bulb at the waterline on the bow. Have you ever seen that?---Yes, I have * In the present case, I do not accept that Mr Adams' design was dictated solely by function. It seems to me that Mr Adams designed and intended to design an individual and distinctive shape, that in preparing his design he had many possibilities available to him and that it is improbable that another designer seeking to design a 33 foot yacht which would be fast and cheap to construct would have arrived at the same solution as that adopted by Mr Adams. Mr Adams was not constrained by the functions which he had in mind to adopt the shape and the features which appear in his drawings. In my opinion, Mr Adams' design was registrable under the Designs Act. This conclusion accords, in my opinion, with the views expressed by Gummow J in Hosokawa and Interlego, in the latter of which Lockhart J concurred, and also with the views expressed by Lockhart J in Hosokawa. In that case, at 411-2, Lockhart J said, inter alia:- "I agree with King J that it is not possible to say that every feature of the design of the Venturis produced by the appellants 1s dictated solely by the function which they have to perform. Indeed, the evidence, including expert witnesses called by the appellants, was to the effect that there were so many variations in possible designs of Venturts that designers seeking to design a Venturi for the same dust collector would be unlikely to produce identical designs" In Dorhng v Honnor Marine [1965] Ch D 1, the parties were not in dispute that the design of a 14 foot sailing dinghy, designed to be the basis of the Scorpion Class, was registrable under the Registered Designs Act 1949 (UK), though it had not been registered. However, in the Court of Appeal, Danckwerts LJ said at 19:- "It was suggested that the one thing which was registrable under the Act was the shape of the completed dinghy and the arguments proceeded on the footing that the shape of the completed boat was a registrable design I feel the greatest doubt whether that was correct. I should have thought that the shape of the boat was necessarily functional, and was, therefore, not registrable under the Registered Designs Act, 1949," Harman LJ expressed a hike opinion at 16. This view follows, however, the line of authorities in the United Kingdom which, in Jnterlega, Gummow J distinguished as not applying to registration under the Designs Act. The former reg 20A is not relevant. The design was not a design of a sculpture but of a yacht. Although Mr Adams' design could possibly be gleaned from exh E, which is the port half of a solid timber model yacht, if one were an expert and if Mr Adams answer given in re-examination which I have set out above were entirely correct, nevertheless, the design was not of a work of sculpture. The model was simply an early step taken in the development of Mr Adams' concept of the yacht. The design which was to be applied industrially was a design of the Adams' 10. Mr Garnsey relied upon remarks of Wilcox J in Warman Internati v. Envirotech Australia Pty Ltd (1986) 6 IPR 578 at 596, where his Honour expressed the view that certain drawings in which copyright subsisted would not have been registrable under the Designs Act. His Honour said:- "However, the relevant drawings do no more than graphically describe the articles which have been produced by Warman They contain information in relation to data and tolerances which 1s necessary - or at least highly desirable - for the manufacture of the parts. This information is properly to be described as 'a method or principle of construction' and, as such, 1s excluded from the definition of 'design' in the Designs Act: cf Weir Pumps Lid v CML Pumps Ltd (1983) 2 IPR 129 at 132; Edwards Hot Water Systems v S W Hart & Co Pty Lid (1983) 49 ALR 605 at 634, 635." In my view, Mr Adams' drawings disclose a design in respect of which a corresponding design could have been registered under the Designs Act. Section 74 of the Copyright Act provides:- "In this Division: 'corresponding design', in relation to an artistic work, means a design that, when applied to an article, results in a reproduction of that work, but does not include a design consisting solely of features of two-dimensional pattern or ornament applicable to a surface of an article." Certainly, Mr Adams' drawings include some construction details and information which would be inappropriate on a document registered under the Designs Act. But the question is not whether Mr Adams' drawings would in their current form have been registrable under the Designs Act but whether they disclosed a design and whether a corresponding design would be so registrable. In my opinion, a corresponding design would have been registrable under the Designs Act. Mr Garnsey submitted that a-yacht is not an article for the purposes of the Designs Act. Section 4(1) of the Designs Act defines the term to mean "any article of manufacture". Both words have a wide denotation. The term "article" is one of the widest words there is. In the context 1t refers to a thing of manufacture. As to "manufacture", see WEA Records (1990) 96 ALR 365 at 368-70, the cases there discussed and The Commonwealth of Australia v Genex Corporation Pty Ltd (1992) 176 CLR 277. A yacht is an article, as Dorling and Kevlacat impliedly accepted. I need not discuss the authorities referred to in argument which considered whether certain constructions were articles. The Designs Act does not import a requirement of mass production, as Mr Garnsey faintly suggested. In these circumstances, s 77 of the Copyright Act applies and, by virtue of s 77(1), the threatened reproduction of Mr Adams' design would, not be an infringement of the copyright. I shall therefore make a declaration of ownership of the copyright as sought. I shall otherwise dismiss the application. Costs will be reserved. I certify that this and the 20 preceding pages are a true copy of the reasons for judgment herein of the Honourable Mr Justice Davies. Associate: Date: 30 November 1994 Counsel for the applicant: J.J. Garnsey & J. van Aalst Solicitors for the applicant: J. Hertz & Associates Counsel for the 1st & 2nd respondents: D.K. Catterns QC & R. Cobden Solicitors for the 1st & 2nd respondents: Sorensen & Brown Date of hearing: 8 & 9 August 1994 Date of judgment: 30 November 1994