Foggin v Lacey [2003] FCAFC 147

Foggin v Lacey [2003] FCAFC 147

The protected design is valid as it is not a method or principle of construction but confers a monopoly over a specific individual appearance of a non-electrical head massager. The ‘Shiver Me Timbers!’ article sold with directions to manipulate its prongs produces an article that is, to the eye, an obvious imitation of the registered design and therefore infringes; however, only directions that result in a substantially similar shape to the registered design are caught. The appeal is allowed only to the extent of narrowing the orders regarding the directions supplied; otherwise, the original orders are upheld.

Jurisdiction
Australia
Judgment Date
30 June 2003
Procedural Posture
Appeal / Judgment on Appeal From a Single Judge of the Federal Court of Australia
Outcome
Appeal allowed in part; orders below varied; appeal otherwise dismissed with costs.
Legal Topics
['designs Law' 'registered Designs' 'designs Act 1906 (cth)' 'infringement of Design' 'validity of Design' 'method or Principle of Construction' 'obvious Imitation' 'authorisation to Infringe' 'supplementary Submissions Procedure']
['intellectual Property'] ['designs Law' 'registered Designs' 'designs Act 1906 (cth)' 'infringement of Design' 'validity of Design' 'method or Principle of Construction' 'obvious Imitation' 'authorisation to Infringe' 'supplementary Submissions Procedure']

Case Brief

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Procedural Posture

Appeal / Judgment on Appeal From a Single Judge of the Federal Court of Australia

Legal Issues

  1. 1 ['Whether the registered design is valid or amounts to a method or principle of construction' 'Whether the ‘Shiver Me Timbers!’ head massager infringes the registered design for the Orgasmatron device' 'Whether supplying an article with directions amounts to authorisation to infringe under the Designs Act 1906 (Cth)' 'Whether supplementary submissions after argument can be considered']

Ratio Decidendi

The protected design is valid as it is not a method or principle of construction but confers a monopoly over a specific individual appearance of a non-electrical head massager. The ‘Shiver Me Timbers!’ article sold with directions to manipulate its prongs produces an article that is, to the eye, an obvious imitation of the registered design and therefore infringes; however, only directions that result in a substantially similar shape to the registered design are caught. The appeal is allowed only to the extent of narrowing the orders regarding the directions supplied; otherwise, the original orders are upheld.

Court Disposition

Appeal allowed in part; orders below varied; appeal otherwise dismissed with costs.

Orders

  • ["The orders made by the primary judge on 17 October 2002 be varied: restraining manufacturing, selling, offering for sale, or keeping for sale during the term of the Design any head massagers marketed under the name 'Shiver Me Timbers!' together with directions as specified, or any directions that instruct...