Burge & Ors v Swarbrick

[2006] HCATrans 575

[2006] HCATrans 575

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Perth  No P24 of 2006

B e t w e e n -

BRENT BURGE

First Appellant

TREVOR ROGERS

Second Appellant

BENJAMIN WARREN

Third Appellant

BOLD GOLD INVESTMENTS PTY LTD

Fourth Appellant

GLEN PETER BOSMAN

Fifth Appellant

SERGIO EDWARD ZAZA

Sixth Appellant

and

JOHN HARLEY SWARBRICK

Respondent

GLEESON CJ
GUMMOW J
KIRBY J
HEYDON J
CRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT PERTH ON WEDNESDAY, 25 OCTOBER 2006, AT 10.00 AM

(Continued from 24/10/06)

Copyright in the High Court of Australia

__________________

GLEESON CJ:   Yes, Mr Garnsey.

MR GARNSEY:    If your Honours please.  Your Honours, yesterday we had replied in respect of the publications, the books, from extracts of which my friend had tendered and we had tendered the tables of contents, a perusal of which shows they are concerned with overall very, very technical matters as part of the objective evidence before the Court as to the area of activity.  Your Honours, in relation to the definition of “art” and the use of the term “art”, the Macquarie Dictionary is useful in relation to the different ways in which the word can be used and one sees that moving from one ‑ ‑ ‑

KIRBY J:   It is astonishing that the second is “journalism”.  I have not seen much art in journalism.

MR GARNSEY:   Your Honour, the somewhat recognised authorities have severe doubts as to the Macquarie Dictionary but it seems they have accepted status in the ‑ ‑ ‑

GUMMOW J:   Now, you fix on meaning 6, do you?

MR GARNSEY:   Yes, I do, your Honour, and that is indicated by the Chief Justice yesterday as the appropriate type of meaning.  Your Honour, in relation to what appears to be my friend’s central argument, as we can best understand it, that is the derivative work of artistic craftsmanship, we say this – and I would seek to make nine short points in respect of it and just state them with references where appropriate rather than take your Honours to the references.  Most of them have been dealt with or they are in our annexure C.

The first is this.  The plug has been found and held to be an original work and a sculpture and the hull and deck mouldings are precise reproductions, substantially identical manifestations and a replication of the shape of the plug.  This was clearly held by the trial judge and the Full Court.  The references are for the trial judge at appeal book 1229, lines 20 to 30, paragraph 63; 1233, lines 18 to 19, paragraph 79; 1243, lines 50 to 60, paragraph 128; 1244, lines 14 to 31, paragraphs 129, 130 and 131; 1248, lines 20 to 30, paragraph 151, and at lines 50 to 60, paragraph 153; and by the Full Court adopting the trial judge essentially at appeal book 1285, lines 1 to 40, paragraphs 32 and 34.

Secondly, these findings and holdings are not challenged or in issue on this appeal, that is that the plug was an original work and a sculpture and the hull and deck mouldings are precise reproductions, et cetera. 

Thirdly, a work of artistic craftsmanship in section 77(1)(a) of the Copyright Act is an exception to being an artistic work, that is, a work in which copyright subsists under the definition in section 10 and the other sections dealing with subsistence.

Fourthly, the Full Court at appeal book 1293, lines 40 to 50 to 1294, lines 1 to 15, paragraph 62 and 63, has not held that the plug was a work of artistic craftsmanship, has said that it probably could not be, but has held that the hull and deck mouldings were works of artistic craftsmanship and that copyright subsisted in the hull and deck mouldings.

Fifthly, copyright does not and cannot subsist in the hull and deck mouldings, even accepting they were produced from the plug by craftsmanship because they lack originality over and are mere exact reproductions of the plug which has been held to be a sculpture and an original artistic work by the trial judge and the Full Court.  This is not challenged.

GUMMOW J:   What do you say about the reliance by your opponent on something I said in Interlego on this question of originality?

MR GARNSEY:   Well, Interlego, as I understand it, it was found there was a difference in the drawings.  It is a factual distinction, if your Honour pleases.  Why I gave all those references earlier and used the phrase “precise reproduction, substantially identical manifestations, replication of the shape of the plug”, that is what the trial judge said.  They were his words.

So we say then, sixthly, even if the hull and deck mouldings can be characterised as works of artistic craftsmanship, that is, potentially copyright works, they cannot be original works in which copyright subsists. 

Seventhly, for the reasons given by the trial judge, the plug was a sculpture.  It was carved and crafted with much work and detail, had precise form and was the first reduction of the work to a very material form.  In a way that is unnecessary for me to say given the issues in this case.  It is not in issue that the plug was a sculpture, but in the light of my friend’s reference to lost wax casting, for whatever relevance it might be considered to have, Mr Ricketson in his book on intellectual property or his service at paragraph [7.335] deals with reduction to material form and permanency and refers to cases, including the cases referred to by the trial judge.  In particular, he refers to a case of Wood v Stoddarts Ltd [1928‑35] MacG Cop Cas 294.  I am sorry, your Honours, I do not have copies of that.  It was beyond even the paper‑friendly instructors that I have to find a copy of that at short notice.

GUMMOW J:   What is the name of it?

MR GARNSEY:   Wood v Stoddarts Ltd [1928-35] MacG Cop Cas 294.

GUMMOW J:   Thank you.

MR GARNSEY:    The lost wax casting then is irrelevant on two bases to this case, but factually it is very distinguishable because the wax is lost. It could be considered a step in the reduction to material form, but that is not for decision in this case. Your Honours, we say, with respect, that disposes of my friend’s central argument and it inevitably disposes of it especially in the light of section 22(1) of the Copyright Act.

GLEESON CJ:   What do you say about the very last point that Mr Stone made concerning the unusual manner in which this design was developed?

MR GARNSEY:   Yes, that is merely an industrial process of the 19th century.  It is the way people did things then.  Conceptually there is no difference between it and working from a computer‑aided design program, that is, it does not make what is done any more or less a work of artistic craftsmanship, that is, it may be a different sort of craftsmanship but it does not affect the requirement of artistic.  One can sit at a computer and be very artful, and that is what Justice Drummond found in Coogi as to the first run.  One can choose to do it the old‑fashioned way and be a different sort of craftsman. 

What it does do is reinforce the argument I have just put because it is the production of a sculpture.  It is traditionally how you do sculpt as to wood, and that is the overwhelming evidence of Mr Swarbrick.  So we say that point makes no difference to the central principle here, and also in line with the definitions there when – my friend refers to that in conjunction with some statements in some of the texts about yacht designing being an art and that is how they do it back in the past.  It does the carving, the production of the plug is in line with meaning 6 in the Macquarie Dictionary meaning, if your Honour pleases.  That is what we say as to that.

Your Honours, can I then in relation to the evidence of Mr Hood and also the evidence as to what is done in the yacht designing process or the hull designing process refer to Mr Hood’s first affidavit at appeal book 745 to 759, line 20, and his second affidavit of 15 April 2004, especially referring to Mr Swarbrick’s publications and some others and Mr Hood’s exhibits at appeal book 775 to 778.

That evidence as to the nature of the iterative design process was not affected by any change in his opinion once all the facts emerged as to what Mr Swarbrick had done in producing the hull and, indeed, to avoid taking your Honours to the books, we have produced a short note of the reference in Mr Swarbrick’s affidavits and cross‑examination where he accepts what Mr Hood said.  They are important references, if your Honours please.  One of the cross‑examination references at 173, lines 10 to 20, I put to Mr Swarbrick directly that yacht design was an iterative process, you go from change to change, and he said, yes, he does accept that.

Now, your Honours, the other matters that we have to put are put in our written submissions in reply and I gave your Honours the references to originality apart from Lord Reid but in the other cases in those written submissions.  That is an important document from our point of view but I will not repeat the points made in it, if your Honours please.  It is not too long and it is well within the five pages.

GLEESON CJ:   Thank you, Mr Garnsey.

MR GARNSEY:    Your Honours, there is one final point.  Can I say this, behind the respondent’s case at trial and on appeal there is a very mysterious concept.  It led to the curiosity in the reasoning of the Full Court to which we have pointed, which in relation to artistic craftsmanship reminds one of a rather unsuccessful conjurer, that now you see it, now you do not.  It somehow comes in and comes out where one chooses. 

Behind it we suggest is perhaps a misapprehension stemming from the relativism of the modern world, that is, anything can be a work of art, anything can be a work of artistic craftsmanship.  Well, anything cannot, and that was exemplified – and this was before the Full Court – by one of the earliest examples which was criticised for promoting that theory, and that was Marcel Duchamp’s well‑known urinal.  This is not a light point.  I am obviously seeking to make it in a graphic way, but in the course of his flirtation with Dadaism and protests at the art world, he exhibited under the name of R. Mutt in 1911 I think eleven urinals which he bought and placed them in various museums.  There is one at the Museum of Modern Art in New York at the moment.  When the protests arose, he wrote a letter, which is on the page behind that, and ‑ ‑ ‑

KIRBY J:   Was this in the record?

MR GARNSEY:   Yes, this was on the record.  It was handed up to the Full Court, if your Honour pleases, and addressed on for the same point, and it will be found a reference to Justice Emmett, a question to me on the transcript, and I reply with this.

KIRBY J:   Did they take it out of the Museum of Modern Art as a result of the protest?

MR GARNSEY:   No.

KIRBY J:   Quite.

MR GARNSEY:   Justice Emmett did not protest.  He more or less said anything can be a work of art and I said, no, it cannot, and this is what ‑ ‑ ‑

KIRBY J:   Do you dispute that this beautiful porcelain object is a work of art?

MR GARNSEY:   Yes, and for the same reasons that the artist did, and that is on the page following the picture down the bottom:

Now, Mr Mutt’s fountain is not immoral, that is absurd, no more than a bathtub is immoral.  It is a fixture that you see every day in plumbers’ show windows. 

Whether Mr Mutt with his own hands made the fountain or not has no importance.  He CHOSE it.  He took an ordinary article of

life, placed it so that its useful significance disappeared under the new title and point of view – created a new thought for that object. 

As for plumbing, that is absurd.  The only works of art America has given are her plumbing and her bridges.

But that I think is an ironic – but if your Honour pleases, we say that ‑ ‑ ‑

GLEESON CJ:   Is this the artistic world’s equivalent of O’Malley?

MR GARNSEY:   Yes, it was in a way, although it was also connected with the Dadaist movement in theatre, drama and art which was more or less a universal protest made as rudely as possible, if I could put it that way, if your Honour pleases.  There was an interesting article on it recently in the New York Review of Books dealing with that.  Your Honours, unless there are any other matters on which I can assist the Court, they are our submissions.

GLEESON CJ:   Thank you, Mr Garnsey.  We will reserve our decision in this matter and we will adjourn for a short time to reconstitute.

AT 10.16 AM THE MATTER WAS ADJOURNED