In action under Australian Copyright Act, High Court
rules that model of “sportboat” designed by Plaintiff and marketed in United
States and elsewhere did not constitute “work of artistic craftsmanship” under
Act but mainly involved naval engineering skill
The respondent in the High Court of Australia is Mr. J. H.
Swarbrick (Plaintiff below); he is a naval architect who has designed many
yachts. He controls Swarbrick Yachts International Pty. Ltd.(SYI) which
manufactures a yacht sold as the “JS 9000” in Australia, Europe, the United
States and elsewhere. The Plaintiff named the first JS 9000 built Bateau Rouge.
At the time Plaintiff filed the present copyright infringement case against the
Defendants in 2003, SYI had built 32 of the JS 9000 boats and delivered 20 of
them to customers. The prices ranged from $A50,000 to $A65,000.
In June 2003, the fourth Defendant, Boldgold Investments
Pty. Ltd. (Boldgold) hired the first Defendant, B. J. Burge, as operations
manager of its factories. He supervised work on the hull and deck of a JS 9000
yacht using a hull and deck molding that Boldgold had obtained from the second
Defendant, T. Rogers, for $7,500. Boldgold hired Rogers and the third
Defendant, B. Warren, to work at its factory; previously, they had worked for
SYI in the molding of hulls and decks.
Late in 2002, Plaintiff had given Rogers the hull and deck
molding which he later sold to Boldgold. The trial being in the future, there
is an as yet unresolved dispute as to the circumstances under which Plaintiff
had given the molding to Rogers. The fifth and sixth Defendants, G. P. Bosman
and S. E. Zaza, are directors of Boldgold.
The litigation turns upon a legal question, that is, whether
the Australian Copyright Act of 1968 (Cth) (ACA) applies to Plaintiff’s work
product. Specifically, the case focuses on the phrase “a work of artistic
craftsmanship” which appears in the definition of “artistic work” in Section 10
and in Section 77(1) of the ACA. (The reference to the ACA is to that statute
in its form before its recent amendment—after the filing of this case—by the
Designs (Consequential Amendments) Act 2003 (Cth) (the 2003 Act).
In the first instance court, Plaintiff offered, inter alia,
evidence such as journal articles promoting the advantages of the JS 9000 as,
for example, “this remarkable 30 footer from down under”. Yachting magazines
published in the United States and the United Kingdom carried these articles.
Their content sets the stage for the issues that arise on this appeal,
especially
the key indicia of “a work of artistic craftsmanship” and
its application to the JS 9000. In the U.S. publication, Sailing World, an
article entitled “Three New Inexpensive Imports” spelled out the key advantages
of the JS 9000.
It contains, inter alia, the following sentence: “Add to
that the pedigree of designer [Plaintiff], the brains behind the 12‑Meters
Kookaburra I and II and Chris Dickson’s Whitbread 60 Tokio, and it’s easy to
get excited about a $26,500 speedster that comes fully rigged with Spectra
running rigging, die‑form standing rigging, aluminum mast and boom, and Dacron
mainsail and jib.” An SYI business plan dated April 2003, described the
underlying concept of the craft and included this phrase: “all yachts produced
by [SYI] are protected by T[r]ademark and copyright laws of the state of
Western Australia, and the Commonwealth of Australia.”
Thus, the present case concerns the distinction between
copyright law and design law. As background, the High Court points out that,
while title to a design “derives from statutory registration, and a publicly
accessible register, there is no registration system for copyright. Further,
copyright subsists for a much longer period than the maximum period of
protection
under the Designs Act of 16 years from the priority date,(6)
now reduced to a maximum of 10 years protection from the filing date under the
New Designs Act.”
“In cases of possible dual protection, the legislative
policy manifested since 1911 in the United Kingdom and then in Australia has
been to encourage design registration and to limit or remove copyright
protection for artistic works which are applied to industrial products. But,
... the means adopted to that end have varied and successive legislative
schemes have sought to overcome the shortcomings of their predecessors.” [¶
10].
Plaintiff does not rely upon any design registration; it is
the absence of any utilization of the protection offered by the Designs Act
which is central to this appeal. The ultimate issue is whether the JS 9000
embodies ‘a work of artistic craftsmanship’ as used in the ACA. If so,
Plaintiff may take his claim of copyright infringement to trial and the absence
of a design registration is not a defense. The Defendants in this Court
challenge Plaintiff’s success to date. For the reasons that follow, Australia’s
highest court unanimously allows the Defendants’ appeal.
On September 13, 2003, upon Plaintiff’s application, the
service of an ex parte interlocutory injunction from the federal court stopped
JS9000 work at the Boldgold factory. The injunction as modified still remains
in force.
Relevantly, the lower court enjoined Defendants from
reproducing or authorizing the reproduction in a material form of an object
identified as “the Plug” and from manufacturing, or procuring the manufacture of,
any mold using the JS 9000 hull and deck molding. The Plug was a hand‑crafted
full scale model of the hull and deck sections of what became the finished JS
9000 yacht. Plaintiff produced the hull and deck molding from molds taken
separately of the hull and deck sections, the molds themselves being exact,
although inverted, copies of the Plug.
Although the Plug was destroyed, Plaintiff asserts an
incorporeal right under copyright law, whose continued subsistence does not
turn upon the fate of its first material embodiment.
The re‑amended defenses dated January 28, 2004 filed on
behalf of each of the present Defendants included the assertion that, in the
absence of registrations under the Designs Act, Section 77 of the Copyright Act
applies and there is no copyright infringement by the Defendants. On November
6, 2003, by consent, the judge ordered that it would decide questions of
liability for infringement separately and expeditiously.
In this Court, Plaintiff’s counsel conceded that the only relevant
artistic works which could be works of “artistic craftsmanship” under the ACA
were the Plug and the final hull and deck molding for the Bateau Rouge;
Plaintiff could seek no wider injunctive relief under the ACA.
The question of “overlapping” between the law of designs and
the copyright law became critical for the new legislative scheme. The 1911 Act
required no formalities such as registration of copyrights and adopted a
lengthy period of protection, generally, for published works, the life of the
author plus 50 years. The 1911 Act also [Section 1(2)] so defined the copyright
monopoly in
terms to include the reproduction of the work or of a
substantial part thereof “in any material form whatsoever”, thereby
encompassing three‑dimensional reproductions of two‑dimensional works.
A distinguished English judge has paraphrased the awkwardly
worded Section 22 of the 1911 Act as follows: “This Act shall apply to designs
capable of being registered under [the 1907 UK Act], which are not used or
intended to be used as models or patterns to be multiplied by any industrial
process. With that exception, this Act shall not apply to designs capable of
being registered under [the 1907 UK Act].”
What is relevant for present purposes is the statement in
Mackie Designs Inc. v. Behringer Specialised Studio Equipment (UK) Ltd., [1999]
R.P.C. 717 at 723 that: “[i]t was clearly the intention of the framers of [the
1988 UK Act] that copyright protection was no longer to be available to what
can be compendiously described as ordinary functional commercial articles.”
Kevlacat Pty. Ltd. v. Trailcraft Marine Pty. Ltd., (1987) 79
A.L.R. 534 is an important case. It was an unsuccessful effort in the Federal
Court to restrain the copying of a Catamaran marketed as the Kevlacat where
there was no design registration. The Court held that, even if copyright
subsisted in drawings from which the prototype of the Kevlacat had been made,
the production of the Catamarans was an industrial application of the
“corresponding design” and denied copyright protection under Section 77 of the
ACA.
As with Section 10 of the 1956 UK Act, the Australian
legislation proved unsatisfactory in various respects. In 1989, the Copyright
Amendment Act 1989 (Cth) (the 1989 Act) made further changes. It is the text of
the 1989 Act which governs the outcome of the present appeal. Paragraph (a) of
Section 77(1) provided a further exception from the operation of the limitation
imposed by Section 77 and it is this which is critical for the present appeal.
“The paragraph provides that Section 77 may be engaged where copyright subsists
in artistic work ‘other than a building or a model of a building, or a work of
artistic craftsmanship’. ... The effect of that special provision is that
buildings or models of buildings or works of artistic craftsmanship retained
copyright protection, but only if they were not registered as designs. This is
not, speaking strictly, overlapping or dual protection.” [¶ 42].
“... Hence the defence under Section 77 in this case that
there was no copyright infringement because the Plug and the final hull and
deck molding were not works of artistic craftsmanship. This then invites
consideration of the part played since 1911 by the work of ‘artistic
craftsmanship’ as a species of artistic work under the Copyright Act.” [¶ 44].
“In Australia on the day that Plaintiff filed the present
litigation, Section 10 of the [ACA] contained the following relevant
definition: “artistic work means: (a) a painting, sculpture, drawing, engraving
or photograph, whether the work is 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 (c) a work of artistic craftsmanship to which neither of the last
two preceding paragraphs applies.....” [¶ 46]
“This appeal immediately concerns the expression in ¶ (c) of
the definition of ‘artistic work’ in Section 10 of the [ACA]. Paragraph (c) of
the definition in Section 3(1) of the 1956 UK Act is in terms essentially
indistinguishable from Section 10 of the [ACA]. ” [¶ 49]. The evidence of the
marketing of the JS 9000 class of racing yacht illustrates these constraints.
It is these constraints which make it difficult to support the Plug as “a work
of artistic craftsmanship”.
“The 1989 Act places some check upon entire acceptance of
what had been said earlier with respect to the 1956 UK Act in the most
significant judicial treatment of the scope and purpose of the special
treatment given the phrase ‘a work of artistic craftsmanship’. This was the
speech of Lord Simon of Glaisdale in George Hensher Ltd. v. Restawile
Upholstery (Lancashire) Ltd.
(1987) 79 A.L.R. 534.” [¶ 53]
This Court should adopt Lord Simon’s approach in dealing
with the present appeal. “In Australia, thus, there will be no occasion to
attempt from all five speeches in Hensher a distillation of what can be
regarded as the ratio decidendi.” [¶¶ 53, 56].
The Court adds several observations on statutory
construction. “First, the statutory expression is ‘artistic craftsmanship’, not
‘artistic handicraft’, notwithstanding that the aesthetic of the “Arts and
Crafts” movement [see works of leader William Morris (1834‑96) and supporter
John Ruskin (1819‑1900)] may have been that of the living artisan in his
workshop. ... Some leaders of the “Arts and Crafts” movement recognised that
they would have to come to terms with the machine, and referred to a lecture by
Frank Lloyd Wright, ‘The Art and Craft of the Machine’. Lord Simon concluded
that: “The Central School of Arts and Crafts, though foremost a school of
handicrafts, had, as a declared aim, to encourage ‘the industrial application
of decorative design.’ So, although ‘works of artistic craftsmanship’ cannot be
adequately construed without bearing in mind the aims and achievements of the
‘Arts and Crafts’ movement, ‘craftsmanship’ in the statutory phrase cannot be
limited to handicraft; nor is the word ‘artistic’ incompatible with machine
production....” [¶ 59]
“Whilst not denying an enduring distinction between fine
arts and useful or applied arts, in dealing with artistic craftsmanship there
is no antithesis between utility and beauty, between function and art. In that
regard, Lord Simon said in Hensher: ‘A work of craftsmanship, even though it
cannot be confined to handicraft, at least presupposes special training, skill
and
knowledge for its production ... ‘Craftsmanship’,
particularly when considered in its historical context, implies a manifestation
of pride in sound workmanship—a rejection of the shoddy, the meretricious, the
facile.” [¶ 61].
“Finally, it may be noted that the course of the statutory
and case law in the United States respecting works of artistic craftsmanship
requires separate identification of pictorial, graphic or sculptural features
from utilitarian aspects of the article concerned; the former features must be
capable of ‘existing independently’ of utilitarian aspects.
See [U.S.] Copyright Act 1976, 17 U.S. C. Section 101; Pivot Point
International Inc. v. Charlene Products Inc., 372 F. 3d 913 (7th Cir. 2004). In
the United States, the Vessel Hull Design Protection Act of 1998, 17 U.S. C.
Sections 1301, 1302, conferred a sui generis form of protection upon designs
for vessel hulls, including ‘plugs’ and ‘molds’: Nimmer on Copyright, vol 2,
Section 8A.13 – Section 8A.21.
However, ... such an approach should not be adopted in
construing the Australian legislation. This is derived from the 1911 Act, which
must be understood in the light of what was said in Hensher respecting the
‘Arts and Crafts’ movement and because the language of the 1911 Act is apt to
carry forward the objects of that movement.” [¶ 62 & note 80].
“The statute does not give to the opinion of the person who
claims to be the author of ‘a work of artistic craftsmanship’ the determination
of whether that result was obtained; still less, whether it was obtained
because he or she intended that result. Given the long period of copyright
protection [for published works, the author’s life plus 50 years], the author,
at the stage when there is litigation, may be unavailable. Indeed, ... the
author may be dead. Again, intentions may fail to be realised. Further, just as
few alleged inventors are heard to deny the presence of an inventive step on
their part, so, it may be expected, will few alleged authors of works of artistic
craftsmanship be heard readily to admit the absence of any necessary aesthetic
element in their endeavours.” [¶ 64].
“The primary judge started his analysis of the evidence from
the proposition that the evidence of intention of the author of the alleged
work was important, albeit not essential. Whilst allowing that [Plaintiff] was
‘scarcely a disinterested person’, the primary judge gave very great weight to
his evidence as to that intention. His Honour accepted that [Plaintiff] had
intended to design and build a yacht of ‘great aesthetic appeal’, that the JS
9000 had ‘a high level of aesthetic appeal’ and that this was the outcome
intended by Plaintiff.” [¶ 67].
“His Honour did give much attention to the steps by which
the Plug came into existence in its final form. There were disputes between
witnesses on these matters. But, as a whole, that evidence is equivocal; it
suggests that yacht design requires engineering skills and that the problems
overcome as [Plaintiff] progressed had been predominantly to do with matters of
function.” [¶ 70].
“Taken as a whole and considered objectively, the evidence,
at best, shows that matters of visual and aesthetic appeal were but one of a
range of considerations in the design of the Plug. Matters of visual and aesthetic
appeal necessarily were subordinated to achievement of the purely functional
aspects required for a successfully marketed ‘sports boat’ and thus for the
commercial objective in view.” [¶ 73].
“During his cross‑examination, Plaintiff agreed that yacht
design was a very specialised branch of naval architecture and that a naval
architect was ‘basically an engineer’. [An expert witness] referred to a number
of works on the practice of naval architecture and the design of yachts. He
described as the main and essential requirements of yacht design the
application of mathematical and engineering principles together with the
relevant principles of physics.”
“This evidence adds force to the further statement by
Professor Denicola in his [influential] article: ‘Applied Art and Industrial
Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L.
Rev.707, 739 (1982‑83): ‘The designer cannot follow wherever aesthetic
interests might lead. Utilitarian concerns influence, and at times dictate,
available choices. Indeed, aesthetic success is often measured in terms of the
harmony achieved between competing interests.’”
“After referring to what he describes as ‘utilitarian
considerations’, including ease of operation, maintenance and cost of manufacture,
Professor Denicola concludes that the cumulative influence of such matters ‘can
render the designer’s task quite unlike that confronting the painter or
sculptor’. Id. at 740. That was true of the design of the Plug for the JS
9000.” (N. B. The Seventh Circuit majority accepted the thesis of the article
in Pivot Point International Inc. supra, at 927). In Hensher, above, Lord Simon
asked whether the work in question was ‘the work of one who was, in this
respect, an artist‑craftsman?’. ... “Lord Simon went on: [Hensher at 91] ‘In
between lie a host of crafts some of whose practitioners can claim artistic
craftsmanship, some not—or whose practitioners sometimes exercise artistic
craftsmanship, sometimes not. In the former class, for example, are glaziers.
The ordinary glazier is a craftsman, but he could not properly claim that his
craftsmanship is artistic in the common acceptation.”
“But the maker of stained glass windows could properly make
such a claim; and, indeed, the revival of stained glass work was one of the
high achievements of the “Arts and Crafts” movement. In the latter class is the
blacksmith—a craftsman in all his business, and exercising artistic
craftsmanship perhaps in making wrought‑iron gates, but certainly not in
shoeing a horse or repairing a ploughshare. In these intermediate—or rather,
straddling—classes come, too, the woodworkers, ranging from carpenters to
cabinet‑makers: some of their work would be generally accepted as artistic
craftsmanship, most not.” [¶¶ 77‑81].
“It may be impossible, and certainly would be unwise, to
attempt any exhaustive and fully predictive identification of what can and
cannot amount to ‘a work of artistic craftsmanship’ within the meaning of the
ACA as it stood after the 1989 Act. However, determining whether a work is ‘a
work of artistic craftsmanship’ does not turn on assessing the beauty or
aesthetic
appeal of work or on assessing any harmony between its
visual appeal and its utility. The determination turns on assessing the extent
to which the particular work’s artistic expression, in its form, is
unconstrained by functional considerations. To decide the appeal it is
sufficient to indicate the following.”
“The more substantial the requirements in a design brief to
satisfy utilitarian considerations of the kind indicated with the design of the
JS 9000, the less the scope for that encouragement of real or substantial
artistic effort. It is that encouragement which underpins the favourable
treatment by the 1989 Act of certain artistic works which
are applied as industrial designs but without design registration. Questions of
fact and degree inevitably arise.”
“In the present case, notwithstanding what [Plaintiff] later
said on the matter after litigation was on foot, the earlier statements in the
promotional material and in the business plan, with the evidence of the expert
should have led the primary judge to conclude that the Plug was not
‘a work of artistic craftsmanship’ because the work of
[Plaintiff] in designing it was not that of an artist‑craftsman.” [¶¶ 83‑85].
The bottom line is that the Full Court should have set aside
all of the orders made by [the court below]. “This Court should now so provide.
In place of the orders of [the trial judge], an order should now be made
dismissing the present Plaintiff’s application to the Federal Court with
consequential orders as set out above.” [¶ 106].
Citation: Burge v. Swarbrick, [2007] H. C. A. 17;
2007 WL 1207121 (High Ct. of Australia, April 26, 2007).
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