Re Ametex Fabrics Inc v C and F Fabrics Pty Limited [1992] FCA 529; (1992) Aipc 90-935 (1992) 24 IPR 449 (1992) 111 ALR 565 (1992) 38 FCR 415 (6 November 1992)

FEDERAL COURT OF AUSTRALIA

Re: AMETEX FABRICS INC
And: C. and F. FABRICS PTY LIMITED
No. N G768 of 1992
FED No. 800
Number of pages - 24
Copyright
[1992] FCA 529; (1992) AIPC 90-935
(1992) 24 IPR 449
(1992) 111 ALR 565
(1992) 38 FCR 415

COURT

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox J.(1)

CATCHWORDS

Copyright - Design applied to fabric - Design was within the definition of "corresponding design" in s.74 of the Copyright Act 1968 until the commencement of the 1989 amending Act - Design not within current definition - Design first used within Australia prior to commencement of amending Act - Whether infringement proceedings available in relation to unauthorised reproduction after amending Act - Nature of the restrictions on infringement proceedings under 1912 Act and 1968 Act as originally enacted - Whether s.8(a) of the Acts Interpretation Act applies.

Copyright Act 1968, ss.74, 77.

Acts Interpretation Act 1901, s.8(a)

Roland Corporation v Lorenzo and Sons Pty Ltd [1991] FCA 617; (1991) 33 FCR 111 not followed.

HEARING

SYDNEY
6:11:1992

Counsel for the Applicant: M. Ellicott (16 October 1992) and

P.G. Hely QC (29 October 1992)

Solicitors for the Applicant: Minter Ellison Morris Fletcher

Counsel for the Respondent: D. Yates and W. Corell

Solicitors for the Respondent: Strikis and Trayer

ORDER

THE COURT NOTES THAT:
A. The applicant gives the usual undertaking as to damages; and B. The parties have agreed that, in the event of interlocutory

relief being granted, the applicant will arrange for the
giving of a guarantee by an Australian bank in the sum of
$100,000 whereby the bank guarantees the applicant's payment
of any damages ordered to be paid by it pursuant to its
undertaking as to damages, such guarantee to be in a form
agreed between the parties or, failing agreement, approved
by the District Registrar of the Court.

THE COURT ORDERS THAT:

1. Pending further order, the respondent, its servants and
agents, refrain from exhibiting by way of trade, offering to
sell or selling in Australia any fabric the pattern of which
reproduces the "Dubonnet" design, as illustrated in annexure
"A" to the affidavit of Odette Margaret Gourley of 13
October 1992, or any substantial part thereof.
2. The costs of this application be applicant's costs in the
principal proceeding.
3. There be liberty to apply on 2 days' notice. 4. The matter be

listed for directions at 9.30am on Friday, 4

December 1992.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. (See also Order 37 rule 2(3)).

DECISION

WILCOX J. This application for an interlocutory injunction raises an important point concerning the amendments to the Copyright Act 1968 which came into operation on 1 October 1990. Amongst other effects, those amendments, made by the Copyright Amendment Act 1989, substituted new provisions (ss.74, 75 and 77) in the part of the Act (Division 8 of Part III) which deals with the interaction of copyright law and the law concerning registered and registrable designs. One of the changes made in 1990 was the exclusion from the definition of "corresponding design", in relation to an artistic work, of "a design consisting solely of features of two-dimensional pattern or ornament applicable to a surface of an article". It is agreed that the artistic work the subject of this proceeding is a two-dimensional design applicable to a surface of an article. The major present issue in the case is whether the effect of the amendment is to provide copyright protection in respect of that work.

2. The relevant facts emerge only sketchily from the presently available evidence, some of which is hearsay material. It appears that, in about 1988, one Paolo Fasoli, an Italian citizen and resident, painted a design which he called "Dubonnet". The design was a floral pattern involving the blooms and leaves of several varieties of flowers. When he painted the design, Mr Fasoli was a member of a partnership known as Union Design. He apparently created the design on behalf of the partnership, the work being done at Como, where the partnership carried on its business. At a date which is unspecified, but apparently sometime in 1988 or 1989, Union Design assigned its copyright in the design to Ametex Fabrics Inc ("Ametex"), a company incorporated and carrying on business in the United States of America. Ametex is the applicant in this proceeding.

3. Following the copyright assignment, Ametex reproduced the design on fabric. The fabric was available for purchase in the United States by December 1989. At about that time, an Australian company, John Kaldor Fabricmakers Pty Limited ("John Kaldor") became interested in the design. It is the practice of John Kaldor to buy base cloth from various sources and have selected designs printed on the cloth in order to create finished fabrics. The company then sells the finished fabrics to trade purchasers. In particular, considerable quantities of fabric are sold to furniture manufacturers for use in upholstering furniture, making up bedspreads and the like. Fabric is also provided to retailers for sale in that form to members of the public.

4. John Kaldor arranged for promotional samples of the "Dubonnet" design to be sent to Australia in early 1990. The design was applied to base cloth and marketed in Australia by John Kaldor under the name "Chantilly". The fabric was available in sale quantities by mid-1990; that is, before the 1989 amending legislation took effect. The evidence suggests that the design has been very successful, being one of John Kaldor's biggest selling prints. It has apparently been applied to good quality cloth and thereby enabled to command a premium price.

5. The respondent to this proceeding, C and F Fabrics Pty Ltd ("CandF"), is an Australian company based in Melbourne. Amongst other activities, it distributes to trade purchasers fabric imported by it from overseas manufacturers. Commencing in May 1992, CandF has sold in Australia a fabric imported by it from Brazil which it calls "Sorrento". The "Sorrento" design is claimed by the applicant to be identical with the "Dubonnet" design. Accordingly, the applicant says that the sale of "Sorrento" fabric infringes its copyright in the "Dubonnet" design.

6. It appears that, on 1 September 1992, Gregory Chambers, a John Kaldor sales representative, saw the "Sorrento" fabric on some upholstered furniture displayed by a furniture manufacturer. He reported the matter. On 2 October 1992, the applicant's solicitors wrote to CandF requiring certain undertakings. The solicitors for CandF responded promptly, denying any liability and offering to accept service of any process. On 14 October the present proceeding was commenced, leave being given to make the Application returnable at 2.15 pm on 16 October 1992.

7. On 16 October both parties were represented by counsel. The affidavits filed on behalf of the applicant were read. Counsel for the applicant pressed for an interlocutory injunction, offering the usual undertaking as to damages. Subject to one matter, counsel for the respondent accepted that there was a serious question to be tried in relation to the claim for infringement. He did not dispute that there was a substantial argument in favour of the proposition that, if the "Dubonnet" design was the subject of protection under the Copyright Act, the sale of "Sorrento" fabric infringed that copyright. In relation to the matter of protection, without binding his client at a final hearing, counsel for the respondent accepted that the apparent effect of regulation 4 of the Copyright (International Protection) Regulations was to make the Copyright Act applicable to the "Dubonnet" design. But counsel argued that there was no protection by reason of the operation of Division 8 of Part III of the Act. He supported that contention by citing the decision of Pincus J in Roland Corporation v Lorenzo and Sons Pty Ltd [1991] FCA 617; (1991) 33 FCR 111.

8. On 16 October it seemed to me, as it seems to me now, that the issue between the parties as to the application of Division 8 of Part III of the Act was likely to be determinative of the case. I could have taken the view that it was, at least, strongly arguable that copyright protection was available, notwithstanding that Division, and granted interlocutory relief. It was, and is, apparent that the sale by the respondent of "Sorrento" fabric is likely to occasion a degree of commercial damage to the applicant which will not be easy to determine. In his affidavit, Mr Chambers expressed the problem in this way:

"The availability of a Chantilly look-a-like fabric which is
significantly cheaper than Chantilly has the potential to cause great
damage to sales of Chantilly in a short space of time. Even though the
quality of the fabric is inferior to that of Chantilly, the price makes
the fabric attractive to furniture manufacturers. As well as sales lost
directly in that manner, the availability of a cheap look-a-like creates
a great risk that the major furniture retailers will cease promoting
Chantilly."

9. On the other hand, it was evident that an injunction would have a significant effect upon the business of the respondent. This effect was spelled out in an affidavit sworn by John Malcolm Trayer, the managing director of CandF, sworn after 16 October but foreshadowed at the hearing on that day:

"9. If the injunction being sought by the Applicant is granted there
will be a 'snowballing' effect in that:
(a) Retailers such as Forty Winks who have promoted furniture
upholstered with the 'Sorrento' fabric will not be able to
supply such furniture and consequently will not be able to
honour their promotion of the product. These retailers will
suffer a loss of sales with the consequent effect upon their
businesses.
(b) Furniture manufacturers who have purchased or who have
committed themselves to purchase from C and F quantities of
the 'Sorrento' fabric will not be able to honour their
commitment to manufacture the furniture for the retailers
with the consequent loss of business.
(c) C and F will be unable to honour its commercial commitment to
supply further quantities of the 'Sorrento' fabric to its
customers.
10. I fear that if the injunction being sought by the Applicant is
granted, my reputation and that of C and F will be severely

affected

as we will gain the reputation of being unreliable in the market
place. In such circumstances I fear that C and F will suffer a
permanent and significant loss of customers and potential
customers not only in relation to the 'Sorrento' fabric, but also
in relation to other fabrics which C and F is able to offer for
sale."

10. Counsel were not ready to argue the application of Division 8 on 16 October. But I indicated to counsel that, under the circumstances, I thought that this should occur at an early date. I adjourned the further hearing of the interlocutory application until 29 October. At the time of the adjournment, I said to counsel that, subject to anything new which might arise, the fate of the application for interlocutory relief would probably depend upon the view I formed about Division 8.

11. On 29 October I heard argument about Division 8. Counsel also returned to matters of convenience but I stated that I still thought that the present application should depend upon the Division 8 issue. It remains apparent that, if an interlocutory application is granted, the respondent is likely to suffer damage which it could not easily quantify. On the other hand, if interlocutory relief is refused, the applicant is likely to suffer similar damage.

12. During the course of their submissions, both counsel referred to the history of the statutory provisions concerning the interaction of copyright and design law. The earliest Australian copyright legislation was the Copyright Act 1912. That Act applied in this country, subject to modifications, the terms of the 1911 United Kingdom Act: see s.8 of the 1912 Act. Section 22 of the United Kingdom Act excluded from the application of that Act "designs capable of being registered under the Patents and Designs Act 1907 except designs which, though capable of being so registered, are not used or intended to be used as models or patterns to be multiplied by any industrial process". One of the modifications made by the Australian Act (s.9(c)) was to substitute a reference to registration under the Australian Designs Act 1906. The effect of these provisions was altogether to exclude copyright protection for designs referred to in s.22, as modified: see Buzacott and Company Limited v Dutch (1930) 30 SR (NSW) 22 at 25.

13. The Copyright Act 1968 came into force on 1 May 1969, superseding the 1912 Act. The Act contained transitional provisions. One of them dealt with registrable designs that came into existence prior to the commencement of the Act. It read:

"218(1) Division 8 of Part III does not apply to artistic works made
before the commencement of this Act.
(2) Copyright does not subsist by virtue of this Act in an
artistic work made before the commencement of this Act
which, at the time when the work was made, constituted a
design capable of being registered under the Designs Act
1906, or under that Act as amended and in force at that
time, and was used, or intended to be used, as a model or
pattern to be multiplied by an industrial process."

14. In "The Law of Intellectual Property" (Law Book Company) 1984 at para. 22.9, Staniforth Ricketson commented that "the effect of this is to deny copyright protection completely to any artistic work which constitutes a design capable of registration". I agree with this statement, as applied to artistic works made before the commencement of the Act. In relation to such works, it was not a case of there being no possible infringement of copyright; there was no copyright at all.

15. In relation to future works, the 1968 Act provided a more complex regime. The new regime continued the policy of denying dual protection - of copyright and design law - to any particular design. But, at least according to the present applicant's argument, it did so in a different way: by denying the possibility of infringement, not the vesting of the copyright itself.

16. The new regime was contained in Division 8 of Part III. The Division was headed "Industrial Designs". It opened (s.74(1)) with a definition of the term "corresponding design":

"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."

17. Subsection (2) contained other definitional provisions not presently relevant. Section 75 dealt with the situation where copyright subsisted in an artistic work and a corresponding design was registered under the Designs Act. The section stated that, in such a case, "it is not an infringement of the copyright in the work" to do anything within the scope of the copyright in the design, during the subsistence of the copyright in the registered design under the Designs Act or after its expiry. Section 76 dealt with situations where a design was falsely registered. It is presently immaterial. Section 77 related to cases where copyright existed in an artistic work, a corresponding design was applied industrially by, or with the licence of, the copyright owner, articles to which the corresponding design had been applied were marketed in Australia and, at that time, the corresponding design had not been registered (subs.(1)), other than because they were excluded from registration by regulations under the Designs Act (subs.(4)). Subsections (2) and (3) set out the situation which then applied:

"(2) During the period of fifteen years commencing on the date on which
articles made to the corresponding design were first sold, let for
hire or offered or exposed for sale or hire in the circumstances
referred to in paragraph (d) of the last preceding sub-section, it
is not an infringement of the copyright in the work to do anything
that, at the time when it is done, would have been within the
scope of the copyright in the corresponding design if the
corresponding design had, immediately before that time, been
registered in respect of all articles made to the corresponding
design that had, before that time, been sold, let for hire or
offered or exposed for sale or hire in those circumstances.
(3) After the expiration of the period referred to in the last
preceding sub-section, it is not an infringement of the copyright
in the work to do anything that, at the time when it is done,
would, if the corresponding design had been registered immediately
before that time, have been within the scope of the copyright in
that design as extended to all associated designs and articles."

18. As indicated, counsel for the applicant places emphasis on the difference in language between s.218 and ss.75 and 77. He contrasts the rule applying to pre-May 1969 works "copyright does not subsist" with that applying to works created after that date "it is not an infringement of the copyright". Counsel argues that, whereas the old rule annihilates the copyright, the latter rule acknowledges the existence of the copyright (provided elsewhere in the Act) but confers immunities in respect of actions which would otherwise amount to infringements.

19. The amendments which came into force on 1 October 1990 included the repeal of the old ss.74, 75 and 77 and the enactment of new provisions in their place. The new s.74 fulfilled the same function as its predecessor; the provision of a definition of the term "corresponding design". The new definition followed the wording of the old. But it added the following words, which are critical to the present issue:

"but does not include a design consisting solely of features of
two-dimensional pattern or ornament applicable to a surface of an
article".

20. The "Dubonnet" design is, of course, a design falling within this description. It follows that the "Dubonnet" design does not fall within the current definition of "corresponding design". That much is common ground; the issue between the parties concerns the consequences of that fact.

21. Like its predecessor, the new s.75 deals with the situation where copyright subsists in an artistic work the corresponding design of which is registered under the Designs Act. In the present case, there has been no such registration. So I can pass that section by.

22. Section 76 was not amended. But it is irrelevant to this case.

23. Subsection (1) of s.77 is substantially similar to the corresponding part of the earlier section. The major difference is that the new section inserts three exceptions in its reference to an artistic work. It adds the words "other than a building or a model of a building, or a work of artistic craftsmanship". The section has no application to any of those three types of work. But it is not contended that the "Dubonnet" design falls within any of those three categories. Subsection (2) provides a general rule:

"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."

24. This general rule is subject to a qualification, provided by subs.(3), making the section inapplicable to designs excluded from registration by the regulations under the Designs Act.

25. The 1989 amending Act contained no transitional provisions. There is a difference between counsel as to the reason for this circumstance. Counsel for the applicant argues that, because of the nature of the previous provisions, transitional provisions were unnecessary. He says that, unlike the situation under the 1912 Act, the 1968 Act provided copyright over an artistic work which was industrially applied; but it provided that, in such a case, there could be no infringement of the copyright. But, counsel argues, infringement is a day-to-day phenomenon; whilst the repeal of the old provisions would not give rise to liability in respect of actions which occurred before the amendments took effect, they opened the way (without the necessity for transitional provisions) to liability in relation to infringing actions after that date. In counsel's submission, the proper way to approach the present case is to look at the provisions now in place and to ask whether they derogate from the copyright owner's usual rights. In contrast to this submission, counsel for the respondent say that the reason why transitional provisions were not inserted is that it was not intended to give the amendments retrospective operation. In this regard they draw attention to some remarks of the Minister for Justice, Senator Tate, during the debate on the 1989 Bill:

"The Government also rejects the implication that the copyright-designs
amendments will act as a disincentive to research and development. On
the contrary, the removal of copyright protection for three-dimensional
industrial articles will mean that manufacturers will be free to
manufacture an article if, upon searching the appropriate industrial
property register, the article is not covered by, for example, patents
or designs protection. This will greatly benefit research and
development of products in the manufacturing sector as a manufacturer
will be free to manufacture an article without the risk that there may
be in existence a design in which copyright subsists. This was an
argument strongly supported by the 1973 Franki Committee which reported
on the copyright-designs question. I should also make it clear at this
time that the amendments being effected by clause 10 will only apply to
the industrial application of designs which takes place on or after the
commencement of the new section. The new section has no retrospective
operation."

See Parliamentary Debates (Senate), 2 May 1989, at 1632. Clause 10 was the clause which introduced the new ss.74 and 75.

26. Counsel for the applicant says that copyright may exist in an industrially-applied artistic work, s.32(1) providing a general rule applicable to all artistic works. He further says that the copyright vests in the author of the work or any assignee in the usual way (ss.35, 196); ss.75 and 77 merely provide that certain actions which would ordinarily amount to an infringement do not do so. Counsel argues that these sections must be applied as at the date of the particular actions; the scheme of the legislation is that protection is given against actions, which would otherwise amount to infringements, at the time when the actions occur. Counsel concedes that his client would have no right of action in respect of any reproduction in Australia of the "Dubonnet" design before 1 October 1990, the reason being that the design then fell within the definition of "corresponding design" in s.74, with the result that s.77 deprived it of copyright protection. But he says that, in relation to actions after 1 October 1990, the new s.74 defintion applies. The design being no longer a "corresponding design", s.77 is inapplicable; the copyright owner has the ordinary exclusive right of reproduction (s.31).

27. Counsel for the respondent accept that, if the "Dubonnet" design had not entered Australia before 1 October 1990, the position would be that suggested by counsel for the applicant. But they say that the importation of the design into Australia before that date is of critical importance. Counsel submit that, on the applicant's own argument, it was by virtue of the importation that the applicant acquired an Australian copyright in respect of the work; consequently, the extent of the right was fixed by the statutory provisions then in force. Counsel say that, because the work was then a "corresponding design", s.77 applied permanently to exclude the copyright protection which would otherwise have been available. Counsel argue that, by reason of s.8(a) of the Acts Interpretation Act 1901, this situation was not affected by the amendments which occurred on 1 October 1990. Section 8(a) reads:

"8. Where an Act repeals in whole or in part a former Act, then unless
the contrary intention appears the repeal shall not:
(a) revive anything not in force or existing at the time at which the
repeal takes effect; or ..."

28. Counsel for the applicant offers two responses to this argument: first, this is not a case of revival of anything not in force or existing at the time of the repeal; secondly, there is here evidenced a contrary intention.

29. In support of their s.8(a) argument counsel for the respondent refer to two decisions: Glamagard Pty Ltd v Enderslea Productions Pty Ltd (1985) 4 IPR 113 and Roland Corporation. Glamagard dealt with the situation under s.77 which existed between the enactment of the 1968 Act and the commencement of the 1989 amending legislation. At 117 McLelland J, of the New South Wales Supreme Court, said that:

"The effect of s.77 is thus to withdraw from the works in question the
copyright protection which might otherwise have been available to the
plaintiffs in relation to the application thereof to articles such as
the defendants' 'Clarendon' products."

30. Counsel argue that this passage supports the view that the effect of the pre-1990 legislation was similar to that under the 1912 Act - that s.77 denied the accretion of copyright, rather than merely excluded a right of action for infringement.

31. In Roland Corporation Pincus J dealt with some aspects of a claim of breach of copyright in two logos applied to the applicant's musical equipment. An issue under s.77 was raised, it being said that the logos fell within the pre-1990 definition of "corresponding design". Counsel for Lorenzo and Sons argued that this definition continued to apply, with the result that the logos were excluded from protection pursuant to s.77. That proposition was not contested by counsel for Roland Corporation. Pincus J accepted the view agreed between counsel, saying at 119:

"The contention is that the devices in the photographs copied are, if
artistic works, works in respect of which a 'corresponding design' has
been 'applied industrially by, or with the licence of, the owner of the
copyright in the work': see s.77(1)(a) and (b) of the Act in its old
form. It is common ground that the two devices, R and B, were applied
to the first applicant's equipment sufficiently often for the section to
apply. If it does apply, then it follows from s.77(2), which I will not
set out, that no suit for infringement lies. It is my opinion that to
the extent that the old s.77 put an end to suits for infringement of
copyright, its repeal does not revive that right; see s.8(a) of the
Acts Interpretation Act 1901."

32. The decision of Pincus J was appealed: see Lorenzo and Sons Pty Ltd v Roland Corporation [1992] FCA 318; (1992) 23 IPR 376. The Full Court held that s.77 had no application to the use of the logos. Accordingly, the Court did not deal with the effect of the amendment to s.74.

33. Counsel for the present applicant seeks to distinguish Roland Corporation from this case on the basis that it was instituted before 1 October 1990: see the reference at 33 FCR 112 to the order made by Gummow J on 22 May 1990. But I do not think that the case can be distinguished in that way. The trial occurred after 1 October 1990 and injunctive relief was claimed. Apparently, therefore, there were alleged infringements after 1 October 1990. In any event, for the purpose of considering the claim for injunctive relief, the Court had to consider the position after that day.

34. It is appropriate that I follow a decision of a member of this Court, on a matter directly in point, unless I am clearly satisfied that it is wrong. I say so with diffidence, having regard to my respect for Pincus J, but I have reached the conclusion that, on this matter, his Honour was wrong. In reaching that conclusion, I have, of course, enjoyed advantages his Honour did not have; contrary argument on the point and an analysis of the history of the legislation.

35. The argument for the respondent involves the proposition that, whenever the Copyright Act specifies facts which do not amount to an infringement, to that extent it limits the copyright entitlement; not merely is the copyright owner deprived of a right of action, there is a pro tanto withdrawal of the proprietary interest. This argument may be tenable in a case such as s.77, where the effect of the facts falling within subss.(1) and (3) is that there is thereafter a total and permanent immunity from suit for infringement. But the phrase "it is not an infringement of copyright" is used in other contexts, where there is not a total and permanent immunity from suit. Division 3 of Part III lists a series of acts which do not constitute infringements of copyright. They include, for example, fair dealing with a work for the purpose of research or study, for criticism or review or for reporting news, reproduction for the purposes of a judicial proceeding or professional advice and the inclusion of a short extract of a work in a collection used by places of education. Other acts not constituting infringements are specified in Division 4. A characteristic of all the situations described in Divisions 3 and 4 is that they depend upon the actions of the particular person who, absent the statutory provision, would be an infringer. The immunity conferred by the provision applies only to the particular person and the particular occasion. If, for example, two people were simultaneously reproducing a particular work, one by way of fair dealing and the other not, the copyright owner would be able to restrain the second but not the first. The formula "does not constitute an infringement" confers an immunity in relation to particular actions. It does not have the effect of divesting the copyright interest.

36. I do not think that the comment of McLelland J in Glamagard conflicts with this analysis. To prohibit infringement proceedings in relation to particular actions is "to withdraw ... the copyright protection which might otherwise have been available". A withdrawal of protection need not necessarily be either total or permanent.

37. Contrary to the view expressed in Roland Corporation, it seems to me that s.8(a) of the Acts Interpretation Act has no application to the amendment of the definition of "corresponding design". The only way in which it can be argued that, at the date of the amendment, there was a revival of something not in force or existence prior to that date is by saying there was previously an absence of copyright, as distinct from a restriction on its enforcement. As I have indicated, I think that this is not a correct analysis of the situation.

38. 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 is not an infringement to do certain actions is in force, the person doing those actions is protected. If that legislation is 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.

39. There is scope for argument as to whether Senator Tate's comment is compatible with the conclusion I have expressed. The question depends on what he meant by his reference to "the industrial application of designs which takes place on or after the commencement of the new section". If he meant the day-to-day recurring application of such designs, each of which would be an infringement in the absence of Division 8, his statement accords with my conclusion. If he meant the first industrial application of the design, it does not. But it is not necessary to resolve this matter. It is probably legitimate to take account of the Minister's comment, although it was given in his speech in reply rather than in his Second Reading speech. Compare s.15AB(2)(f) of the Acts Interpretation Act, but note that the cases referred to in subs.(2) are mere particularisations of the general principle enunciated in subs.(1). But reference to extrinsic material is for the purpose of confirming that the relevant provision bears the ordinary meaning conveyed by the text or to determine its meaning in cases of ambiguity, obscurity or where the ordinary meaning leads to a result that is manifestly absurd or unreasonable. I do not think that any of these situations applies here. As it seems to me, the meaning of the amendments is plain. Nor is there anything absurd or unreasonable about the result. Indeed, the contrary view, making future liability turn upon the question whether an artistic work had been created in Australia, or imported into this country, before a particular date, provides a result which is at least inconvenient and arguably unjust.

40. Although I have reached my conclusion by reference to the Australian legislation, it is relevant to note that it is consistent with an English decision which arose in a similar statutory context, Sifam Electrical Instrument Co Ltd v Sangamo Weston Ltd (1971) 2 All ER 1074. The plaintiff claimed copyright in a sketch for the front of an ammeter. The sketch had been industrially applied in 1967, although not registered under the United Kingdom Registered Designs Act 1949. Under those circumstances, the United Kingdom Copyright Act 1956, as in force in 1967, precluded any remedy for infringement. In 1968 the legislation was amended, so as to provide that, whether or not the design was registered under the Registered Designs Act, copyright subsisted under the Copyright Act for a period of 15 years after its first industrial application. Within the 15 year period, the plaintiff sought to restrain the defendant from reproducing its sketch in meters manufactured by it. The defendant argued that this remedy was not available to the plaintiff prior to the 1968 amendments and was not revived by those amendments. It relied on s.38(2)(a) of the United Kingdom Interpretation Act 1889, a provision in the same form as s.8(a) of the Acts Interpretation Act. At 1079 Graham J said:

"The point is not an easy one but, in my judgment, the giving of a
defence by a statute in particular circumstances, the effect of which is
that the plaintiff cannot exert his rights in those circumstances, does
not mean in the absence of express words that those rights are forever
destroyed and cannot ever be revived by an amending statute. As a
matter of construction it seems to me that the provision of the 'shield'
by the words of unamended s.10 is a method by which the legislation
shows its intention to protect the defendant for the time being whilst
the statute is in force without giving him any right which extends
beyond the expiry of the statute. If the latter had been the intention
it would have been very simple to have said so. The provision of such a
defence does not, in my judgment, enable the defendants to acquire a
right within the meaning of s.38(2)(c) of the Interpretation Act 1889,
as will be discussed more fully later. The effect is, therefore, in my
judgment, that so long as the unamended s.10 was in force the
plaintiffs' rights to industrial exploitation by way of application of
the design to meters under the Copyright Act 1956 were not wholly
destroyed forever but were in suspense. This is, of course, also on the
assumption that the defendants are correct that the design was one which
could have been registered under the Registered Designs Act 1949. As
soon, however, as the original s.10 was superseded by the amended s.10
the plaintiffs' rights under the Copyright Act 1956 revived and can be
enforced, and the shield given by the original s.10 is no longer
available to the defendants."

41. Counsel for the present respondent submit that Graham J erred early in this passage by denying that the plaintiff's rights had been "forever destroyed". I doubt the validity of that criticism, as applied to the United Kingdom legislation. But, whatever its validity, it would not be correct to say that rights were "forever destroyed" under the originally enacted 1968 Australian Act; in contrast to the position under the 1912 legislation. I think that Graham J's reasoning may be applied to the present case. It serves to support the view that Division 8 of Part III does not provide a defence to acts of infringement of the applicant's copyright in the "Sorrento" design which have occurred since 1 October 1990.

42. Upon the information presently available to me, I think the applicant is likely to prevail at the final hearing. As the issue of convenience is so finely balanced, it is appropriate to allow that conclusion to determine the outcome of this application. I note the applicant's undertaking as to damages. I note also that, at my suggestion and because the applicant is an overseas company not carrying on business in Australia, the applicant has agreed to support that undertaking by arranging for the giving of a guarantee by an Australian bank in the sum of $100,000 in a form to be agreed between the parties or approved by the District Registrar. I order that, pending further order of the Court, the respondent, its servants and agents, refrain from exhibiting by way of trade, offering to sell or selling in Australia any fabric the pattern of which reproduces the "Dubonnet" design, as illustrated on annexure "A" to the affidavit of Odette Margaret Gourley of 13 October 1992, or any substantial part thereof. The costs of this application will be the applicant's costs in the principal proceeding.