12 March 2004
Key Points:
Telling the user how to make your product into an infringing shape itself infringes a registered design.
Last year we reported on a decision of the Federal Court that a non-electrical head massager called the “Shiver Me Timbers Massager” infringed the registered design of a product developed by Mr Lacey, called the “Orgasmatron”. The finding of infringement has now been upheld on appeal by the Full Federal Court.
The “Orgasmatron” consisted of a handle with multiple prongs extending in a wine glass like shape so as to fit on the head of the user. The “Shiver Me Timbers” also consisted of a handle and prongs, but extending in a straight line, and was sold with instructions to bend the prongs so as to “shape to head”. Once those instructions were followed, the “Shiver Me Timbers” massager looked very similar to the “Orgasmatron”. The difference was that the “Orgasmatron” prongs curved evenly, whereas the “Shiver Me Timbers” prongs were more sharply angled, having been bent by hand by the user. The primary judge held that the registered design had been “applied” to the “Shiver Me Timbers” product and therefore the design was infringed.
On appeal, a two to one majority in the Full Court held that the “Shiver Me Timbers” product did infringe the design, not by because it “applied” the design but because it was an application of an “obvious imitation” of the design. Justice Emmett dissented, holding that the difference between the curved spines on the “Orgasmatron” massager and the spines on the “Shiver Me Timbers”, bent at an angle in accordance with the instructions, were sufficiently different that there was no infringement.
The Full Court held that the infringement was direct infringement, rather than “authorisation to infringe”. This was because the article being considered in determining infringement was the “Shiver Me Timbers” massager as it appeared not when it was sold, but after it had been manipulated into shape by the user in accordance with the instructions. The Full Court doubted whether, had the “Shiver Me Timbers” massager been considered in its “straight” state, before the instructions to the consumer had been followed, it would have infringed, since there is no express provision in the Designs Act dealing with authorisation to infringe. However, the makers of the “Shiver Me Timbers” massager had not sought to rely on this argument until after the hearing of the appeal, and the majority considered that the argument could not be raised following the conclusion of the hearing.
Was the design valid?
The makers of the “Shiver Me Timbers” massager also appealed from the primary judge’s decision as to the validity of the “Orgasmatron” registered design. Design protection applies to the visual appearance of an article and not a “method or principle of construction”. Where a design conveys no more than a general shape which is functionally appropriate for the article involved, the design is not registrable. Similarly, if articles made in compliance with the design could turn out to look markedly different, then what is really being protected is function, and, again, the design is not registrable. However, the Full Court held that this was not the case with the “Orgasmatron” design. There was no evidence to suggest that the design was a conventional shape for non-electric head massagers, and there was adequate specificity in the shape configuration and appearance of the design.
Although confirming that the design was valid and infringed, the Full Court substantially narrowed the scope of the orders against the makers of the “Shiver Me Timbers”, thereby opening the way for a limitation on design protection.
The primary judge had ordered that the “Shiver Me Timbers” product could not be sold at all. The Full Court narrowed this, only restricting the sale of the product with the instructions to the consumer to manipulate it into shape. The product in the “straight” form would be less effective for a consumer, and it will be clear to consumers that the spines of the product can be bent into shape. Therefore, consumers will continue to bend the spines of the product into a shape which, as both the primary judge and the Full Court found, infringed the “Orgasmatron” registered design.
This fact, and comments in both the majority and the dissenting judgments, strongly suggest a need for specific provision in the designs legislation dealing with “authorisation” of design infringement. If this is not addressed, there is potential for copycat products to avoid design infringement by selling the product at first instance with a different appearance, but facilitating a change in the product appearance by the consumer after purchase. Accordingly there is the potential for design protection to be weakened, although the extent to which consumer adjustment after purchase is likely to be possible for different types of products remains to be seen.
For further information, please contact Deborah Polites.
