Burge & Ors v Swarbrick

[2006] HCATrans 573

[2006] HCATrans 573

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 TUESDAY, 24 OCTOBER 2006, AT 10.16 AM

Copyright in the High Court of Australia

__________________

MR J.J.J. GARNSEY, QC:   May it please the Court, I appear with my learned friend, MR R.J.L. McCORMACK, for the appellants.  (instructed by Stables Scott)

MR D.M. STONE:   May it please the Court, I appear with my learned friend, MR T.J. CARMADY, for the respondent.  (instructed by Williams & Hughes)

GLEESON CJ:   Yes, Mr Garnsey.

MR GARNSEY:   If your Honour pleases.  Your Honours, when the poet enunciated the self‑evident truth that a thing of beauty is a joy forever, no one doubted that statement and it gave one a comfortable feeling and one says “How true” automatically.  When one enunciates the proposition that the hull and deck mouldings made from the moulds made from a plug for a racing yacht designed to be manufactured, industrialised, marketed and, if possible, raced in a class, when one says that such a yacht or the hull and deck mouldings of it are works of artistic craftsmanship, one does not have the same immediate confidence that, if those words are ordinary English words, they bear a meaning which is appropriate for a racing yacht or its component parts.

The proposition which we advance in this case is to advance a proposition which contains a positive test for work of artistic craftsmanship based on the legislative history and the authorities and we invite your Honours to set the boundaries to that term, because at present, your Honours, it is our respectful submission that the horse is out of the stall, is running around the stable yards and it is high time that someone put a halter on it and got it back.

KIRBY J:   Could you not have thought of a nautical analogy instead of an equine one?  Seeing as you began with the poet and I was lifted into a higher plane, suddenly I am getting mixed metaphors here.

MR GARNSEY:   Well, your Honour, I do not know if the amount of paper we are going to inflict on your Honours will lift your Honours to a higher plane.

GLEESON CJ:   No, it will not.  Somebody on your side of the record seems to think that the word “lengthy” when applied to submissions is a badge of honour.  We have read the written submissions.

MR GARNSEY:   Yes, your Honour.  Your Honour, the submissions themselves were within the number of pages and the additional documents were intended to assist the Court rather than just providing references in the footnotes, if your Honour pleases, to expedite the hearing of the appeal.

CRENNAN J:   If you are proposing a test, Mr Garnsey, it would be useful perhaps to know what it is now.

MR GARNSEY:   Yes, your Honour, and we have set it out in paragraph 17 of the statement of argument in the written submissions and that is that to be a work of artistic craftsmanship the work should manifest an intention to create an artistic object to be evaluated aesthetically per se, that is, on its own account as such a work, but in respect of the relevant work it should be found and held that there is a craftsman exercising his craft or craftsmanship in an artistic manner with an aim or intent of producing an object, whether functional or not, which is a work of art or applied art to be valued chiefly and principally for its aesthetic qualities.

Now, your Honours, there have in the cases been a lot of propositions enunciated about the phrase “work of artistic craftsmanship” but they have been largely negative propositions in the sense of the term does not exclude non‑handcrafted goods or they have concerned the means by which one ascertains what is a work of artistic craftsmanship, that is, whether expert evidence can be received and to what effect.

GLEESON CJ:   Can I ask you a question about your definition because, as Justice Crennan has indicated, that seems to be the appropriate level of debate in this Court.  What do you mean by the concluding words “to be valued chiefly and principally for its aesthetic qualities”?  You told us earlier that this is a design for a racing yacht.

MR GARNSEY:   Yes.

GLEESON CJ:   I suppose that means that its principal object is to stay afloat and go fast.

MR GARNSEY:   Indeed, or in this particular yacht the objects were stated a little more fully by the respondent, the designer, and at the time to be a yacht that can be sailed by two people, to appeal to the market with grey hairs, that is, a parent and child.

GLEESON CJ:   Do not speak in derogatory terms of that market.

MR GARNSEY:   I am sorry, your Honour.

GLEESON CJ:   Mr Garnsey, what I am interested to know at the moment is if you have a beautiful racing yacht, how do you decide whether it is valued chiefly and principally for its aesthetic qualities?

MR GARNSEY:   Your Honour, you do so by first asking is there one initial work produced by a craftsman and is that work the product of artistic craftsmanship, the artistic craftsmanship being determined by facts, and there must be the initial production of a work of fine or applied art by craftsmanship.

GUMMOW J:   Yes, but valued by whom?  Are you asking what is going to sell it, what is going to make people buy it?

MR GARNSEY:   No, we ‑ ‑ ‑

GUMMOW J:   You are not valuing it in the sense they are going to go along to a museum, not going to be stuck on a wall.

MR GARNSEY:   Indeed, your Honour, perhaps the word “appreciated” or “desired” would be better than “valued”, but the point being that if one takes the yacht, one looks at it and says, “Do I want that yacht because it is so beautiful I could just moor it or take it out of the water on a slipway and look it or the hull of the deck and say, ‘Dear, that is a great work produced by a craftsman’?”

GLEESON CJ:   But we are just testing your test at the moment.  Is a Lamborghini motor car valued chiefly for its aesthetic qualities?

MR GARNSEY:   No, with respect.  The look of it may be one factor, but no one would buy a Lamborghini if it could not be driven.

GLEESON CJ:   Would they buy a racing yacht if it would not go fast?

MR GARNSEY:   They would buy a – if it would not sail, we would say, if your Honour pleases.

KIRBY J:   In this case, the designer said that he specifically made modifications for the purpose of favouring beauty over speed.

MR GARNSEY:   To a degree, if your Honour pleases, but we say when one looks at the evidence, one sees that the modifications so far as they were concerned with making the yacht look better were concerned with visual attractiveness to a relatively small degree when one considers the many other factors that the ‑ ‑ ‑

KIRBY J:   I do not know, but I would have expected that in the matter of speed, design is not unconnected, that sleekness as in animal life, so in craftsmanship, that sleekness and pattern and the movement of air against the body of the object is encouraged by designs which are themselves aesthetically pleasing to human beings.

MR GARNSEY:   Indeed, if your Honour pleases, but they are encouraged by designs which may happen to be aesthetically pleasing but the function of the design gives the speed in relation to what your Honour is saying.

KIRBY J:   Your theory is that you could never have a car, you could never have a boat, you could never have a plane, you could never have anything that has practical utility which is to be classified simply as a work of artistic craftsmanship.

MR GARNSEY:   No, your Honour, we do not go as far as that.

KIRBY J:   Well, somehow you have to find the space short of that which is consistent with a stable principle.

MR GARNSEY:   Yes, and that is what I am going to attempt to do in the submissions which we propose to make to this Court.  But, your Honour, we do say that when one has the car or the yacht which may happen to function – it may not – that is beside the point, because one has to look at the whole thing or, in this case, the hull and the deck and say, “Is it produced by an artist craftsman as a work in which copyright is claimed, as a work which has been produced and is to be appreciated or desired or valued in that sense, and as ascertained objectively on the whole of the evidence, chiefly or principally or perhaps solely for its aesthetic qualities?”

Now, as a matter of common sense one looks at cars, even Ferraris, being driven around the city, even Rolls Royce being driven around the city, and one does not have that automatic feeling.  Now, I am not going to invite your Honours to construe the phrase “work of artistic craftsmanship” by reference to just an automatic one‑off feeling, if your Honour pleases.  I seek to go back to the authorities in two respects and ‑ ‑ ‑

KIRBY J:   Your definition seems to do that by invoking this fiction of manifest an intention to create.

MR GARNSEY:   Yes.

KIRBY J:   It is sort of an attempt to have it both ways.  It has to have the intention, but it manifests it and therefore it is presumably some objective intention which you are talking of.

MR GARNSEY:   Yes, your Honour.

KIRBY J:   Then you talk of chiefly and principally.  What is the difference between those two adverbs?

MR GARNSEY:   I would have to say not much, if your Honour pleases.

KIRBY J:   None at all.  It seems a rather wordy formulation and ultimately you are going to have to try and help us to find a formula that fits all cases.

MR GARNSEY:  Your Honour, in relation to the principal part of the submissions, I am going to seek to do that by first going to the genesis of the phrase “work of artistic craftsmanship” which came in as part of the definition of “artistic work” when the 1911 United Kingdom Act was put into force in Australia by the 1912 Commonwealth Act and then have a look at the reports prior to the Copyright Act 1968 which were relevant to the form of the Copyright Act 1968, namely, the Gregory Report in England which was considered in the Spicer Report pursuant to which the 1968 Act was eventually enacted, and then to consider the authorities which have dealt with the term and to hopefully take your Honour to four of them: one, Sir George Pape in Cuisenaire v Reed which ‑ ‑ ‑

GUMMOW J:   He fixed on objectivity, did he not?

MR GARNSEY:   Yes.

GUMMOW J:   You do not seem to fix on that.  You seem to fix on intention.  How are you going to prove the intention when the man is dead?  This right lasts for life in 50 years.

MR GARNSEY:   If your Honour pleases, the words “manifest an intention” was intended to indicate an objectivity and it must be a test which is, we submit, objective, just as it is an objective test to see whether a contract has been entered into, if your Honour pleases, and objective in that sense.  A lot of room in the decisions has been occupied with the question “Is the subjective intention of the maker admissible and what weight do you attribute to it?”

GUMMOW J:   There seems to have been a lot of leading questions asked of the designer in this case as to what he had in mind that got in.

MR GARNSEY:   Yes, your Honour, and there are also a lot of questions asked about what other things he had in mind and what mainly he had in mind, and the trial judge and the Full Court completely ignored those other questions and, indeed, the other objective, what might be called factual matrix.

GUMMOW J:   Of course designers are going to elevate themselves in the aesthetic realm, are they not?

MR GARNSEY:   Yes, your Honour, and we do not ‑ ‑ ‑

GUMMOW J:   All this evidence seems to get in and then it is ruminated upon in these cases.

MR GARNSEY:   Your Honour, in this case, to be fair, the first affidavit from the designer did not mention an intention to create ‑ ‑ ‑

GUMMOW J:   It did later and it happened later after you had put on your defence; is that right?

MR GARNSEY:   Yes, but when one looks ‑ ‑ ‑

GUMMOW J:   That is understandable.

MR GARNSEY:   This is why I want to attempt, without taking too much time about it later, to go to the evidence – and I have attempted to set it out in a document to simplify that process.  One looks in vain for any contemporaneous statement from the designer, the respondent, or his business associates or in his own web page, or in his business plan put forward by others on his behalf for which he supplied information, as to aesthetic qualities being an important part or, indeed, any part of the concept of his yacht.

KIRBY J:   He might have thought it self‑evident.

GUMMOW J:   Another thing that puzzles me in all of this is was there any evidence as to any awareness of the existence of the design registration system?  The international design classification has a classification for boats and ships.

MR GARNSEY:   Yes, there was evidence.  We put on before the trial judge evidence from the Australian Designs Register of registrations of cars ‑ ‑ ‑

GUMMOW J:   Was there any evidence by the designer, taken from the designer, as to his awareness of these matters?

MR GARNSEY:   No, your Honour.  Presumably he was not the ‑ ‑ ‑

GLEESON CJ:   But I understand you to put emphasis on the fact that he was setting out to design a racing yacht.

MR GARNSEY:   Yes.

GLEESON CJ:   Well, if you are designing a racing yacht, presumably the most important constraint on your activity is that you are seeking to produce something that will win races.

MR GARNSEY:   Yes, indeed, and that is evident, we say, from the documents.  I want to take your Honours to them briefly later in the argument, if your Honours please.

KIRBY J:   Somehow you will have to reconcile that with the evidence that said that he was willing to sacrifice, to some degree, speed for beauty, that he stood back, looked at this object and wanted to make sure that it was a beautiful piece because, presumably, he felt that would sell it.

MR GARNSEY:   Your Honour, indeed, we do not quarrel with the proposition that Mr Swarbrick wanted to design a good‑looking boat.  We accept that.

KIRBY J:   Yes.  Well, to my untutored eye it looks a good‑looking boat just as to my untutored eye the Concord looked the most beautiful plane – a most beautiful plane.

MR GARNSEY:   Indeed, if your Honour pleases.  Were your Honour an aeronautical engineer, your Honour might look at, perhaps, if not the Concord, another aeroplane and think, “Well, that is disastrous” or “That is an ugly plane”.

KIRBY J:   The 747 is not particularly beautiful.  It is a great big blob but it does the job, but the Concord was beautiful – the sleekness, the smoothness, the sweep of the design.  I get the same sort of feeling about this boat.

MR GARNSEY:   If your Honour pleases.  Your Honour, when one looks at the evidence here – and I will take your Honour to it later – about what the peers thought of this boat – and they stem from a number of articles which the respondent himself put in evidence in his first affidavit as the reaction the boat had caused – one has the factors pointed to like speed, manoeuvrability, easily handle‑able, some other technical matters about ropes and pulleys that I do not quite understand, but one does not have a mention of “and it is the most beautiful or one of the most beautiful boats we have seen around for the last 20 years” or anything like that.

GUMMOW J:   There is no question that this man can get protection by the law.  The question is whether he is limited to registration in 15 years or life plus 50 or 70 years without registration.

MR GARNSEY:   Indeed, and if he has chosen not to register ‑ ‑ ‑

GUMMOW J:   The question is why has the law pushed this line – on one side of it there is one consequence, on the other side there is another consequence – where there is mass production of a utilitarian object?

MR GARNSEY:   I am seeking to invite your Honours to go back to basics, if your Honour pleases, in the sense of seeing where that phrase “work of artistic craftsmanship” came from, what was thought at the time to be within that phrase in two respects:  first, there had to be a production of a work, the one work in which copyright subsisted; and secondly, that work had to be the product of an artist craftsman.  No one has ever really said what the test for the product of an artist craftsman is but help is gained from looking at the genesis, the arts and crafts movement ‑ ‑ ‑

GUMMOW J:   I do not think Ruskin was designing the Great Scotsman.

MR GARNSEY:   No, your Honour.  Again, your Honour may think that is a good‑looking engine, just like Justice Kirby thinks the Concord is a good‑looking plane but ‑ ‑ ‑

KIRBY J:   Beautiful, I think, beautiful.  I travelled in it once.

MR GARNSEY:   So did I, your Honour.

KIRBY J:   It was very noisy.

CRENNAN J:   Planes are registrable too, Mr Garnsey.  I mean, there is no real debate that these objects can have eye appeal.

MR GARNSEY:   No, indeed.  Your Honour, I do not want to anticipate part of the argument, but we say it is precisely for that reason, especially when one looks at the Designs Act in its present form which spells out in much greater detail how you ascertain eye appeal and what the test for it is, but one has to read that is an added factor apart from the genesis of the phrase “work of artistic craftsmanship” and its proper construction, but that is an added factor for sticking to what Justice Conti in Sheldon v Metrokane called a conservative construction. In relation to the argument before your Honours, I propose to present the argument in relation to section 77(1)(a) of the Copyright Act.

KIRBY J:   Why can you not embrace a very simple criterion and just say if it is something that is useful subject to mass production or repetition of production then it just fits into one category and not the other and that is how the two schemes of legislation are intended to work together?  At least I would understand that as a theory of the interaction of the legislation which would not be as wordy as your formulation which leaves lots of ifs and buts.

MR GARNSEY:   It is a very attractive theory, with respect, and one which ‑ ‑ ‑

KIRBY J:   Why does that not work?

MR GARNSEY:   Because we are not approaching the matter with a tabula rasa, your Honour.

KIRBY J:   There are not all that many cases in final courts about this issue.

MR GARNSEY:   No, your Honour, but can I go on and say that the reason is that the phrase was put into the Copyright Act so that persons who produced things other than paintings, drawings, sculptures, works what might be called of fine art, could get protection and that was because ‑ ‑ ‑

GUMMOW J:   Could get copyright protection.

MR GARNSEY:   Copyright protection, but copyright protection for what?  Persons who produced works in the arts and crafts movement, that is, works to which art was applied to produce an object which was appreciated, desired or valued for its appearance, for its distinctiveness. 

Now, the Federal Court did receive, after a little argument, accepting the views of Justice McHugh in Woods v Multi‑Sport over, I think, slightly contrary views of Justice Callinan, three copies of a little book called The Arts and Crafts Movement which said what that is.  I do not know if the three copies are still with the papers – they were not marked as an exhibit.  We have reproduced the first chapter of that in black and white.  The point being, in answer to what your Honour says, if your Honour looks through there, your Honour sees a lot of objects or, indeed, parts of buildings.  It is quite patent that when one looks at them they are objects or things which have been produced to be appreciated and valued, in that sense, for their appearance.

KIRBY J:   I suppose a classic case are those beautiful porcelain tubs in which the Chinese exported all sorts of objects but which are now greatly valued and collected as things of beauty in themselves.  You know the ones with the chrysanthemum design on them.

MR GARNSEY:   They are now but, we would say, in all probability they lacked what we say is an essential part of work of artistic craftsmanship, that is, the production by artistic craftsmanship of such a work.  That is, if you are just creating something to be a packaging, as part of commerce, it is a fair way away from what could be a work of artistic craftsmanship.

KIRBY J:   You will never convince me that a beautiful thing on which the whole delft industry was built is not a work of artistic craftsmanship if it is beautiful but also useful.

MR GARNSEY: It could well be held to be so within our rather wordy test, if your Honour pleases. Your Honour, as I was saying, I propose to present the argument in relation to section 77(1)(a) and work of artistic craftsmanship and that takes up most of our submissions. There was a second point relating to the construction of the definition of “artistic work” in the Copyright Act as it stood before amendment in 2003.  That is the form of the Act then was artistic work included sculptures, et cetera, buildings – that was (a) and (b) – and (c), any other work not being within (a) or (b) which was a work of artistic craftsmanship, and then the argument goes, if one has a sculpture, as was not in issue on appeal here ‑ ‑ ‑

GUMMOW J:   What was the sculpture?

MR GARNSEY:   Your Honour, the sculpture was the plug.

GUMMOW J:   Right.

MR GARNSEY:   My friend would say there is a derivative sculpture, that is, the hull and deck mouldings.  But the sculpture was the plug.

GUMMOW J:   Is not the plug also a work of artistic craftsmanship?

MR GARNSEY: Yes, and the argument is though that if it is a sculpture not of artistic quality within paragraph (a), it cannot be a work of artistic craftsmanship within (c) because it has already been dealt with and excluded by (a) and so it cannot be a work of artistic craftsmanship within section 77(1)(a). That was the second part of the argument. The definition of “artistic work” was amended in 2003 ‑ ‑ ‑

GUMMOW J:   It is now quite clear, is it not, “a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b)”?

MR GARNSEY:   Yes, your Honour, and one of the points of that argument which Mr McCormack will follow on, if your Honours please, is ‑ ‑ ‑

GLEESON CJ:   I beg your pardon?  What were you saying then?  We are going to hear two speeches from your side?

MR GARNSEY:   If your Honour pleases, yes.

HEYDON J:   Is it not adequately put in writing, the second point?

MR GARNSEY:   It is adequately put in writing, your Honour.  Your Honour, it is often the case that one’s junior, especially a junior of some seniority, does follow on ‑ ‑ ‑

GLEESON CJ:   Yes, and then you have a third argument about natural justice; is that right?

MR GARNSEY:   No, your Honour ‑ ‑ ‑

KIRBY J:   Reasons.

MR GARNSEY:  Reasons, but we do not ‑ ‑ ‑

KIRBY J:   I can see where that leads given that the matter is now before us.

MR GARNSEY:   No, that is so, your Honour.  It was more significance, perhaps, on the special leave and the lack of ‑ ‑ ‑

GLEESON CJ:   We will decide the case for ourselves.

MR GARNSEY:   Yes, your Honour.

GLEESON CJ:   That is why that argument leads nowhere.

MR GARNSEY:   Yes.

GUMMOW J:   It could only lead to another round in the Full Court.

MR GARNSEY:   I do not want that, your Honour, if your Honour pleases.

GLEESON CJ:   So you are going to put the argument on the meaning of the expression “artistic craftsmanship”?

MR GARNSEY:   Yes, and the construction of 77(1)(a).

GLEESON CJ:   And we are going to then hear Mr McCormack on the question of the relationship between paragraph (c) and paragraph (a)?

MR GARNSEY:   If your Honours please.

GLEESON CJ:   Yes.

MR GARNSEY:   The only point I wanted to make on that so that it is clear is that there is no difference, for practical purposes, in the form of 77(1)(a) under the Act before amendment in 2003 and subsequently.  There is a difference in the definition of “artistic work” before 2003 to what is there now and we did put what I hope would be a useful bit of paper which sets out a comparison of 74 to 77 of the Copyright Act with crossings‑out and underlinings to show the differences.

GUMMOW J:   It is headed “Design Copyright Overlap”.

MR GARNSEY:   Yes.  Your Honours will see that 77(1)(a) is not materially altered.  Your Honours, it is relevant to consider briefly the decision of the Full Court which refers to the trial judge.

GUMMOW J:   Well, at the moment you have an injunction against you, have you not?

MR GARNSEY:   Yes, your Honour.

GUMMOW J:   Is that the interlocutory injunction that Justice Carr ordered?

MR GARNSEY:   Yes, and extended, your Honour.

GUMMOW J:   On 12 September 2003?

MR GARNSEY:   That is when his Honour first ordered it, I think, and it was extended and continues.

GUMMOW J:   But it talks about the artistic works which includes the drawings and the moulds.

MR GARNSEY:   Yes, your Honour.

GUMMOW J:   How can the drawings be outside 77?  To put it another way, the drawings cannot be works of artistic craftsmanship.

MR GARNSEY:   Indeed, your Honour.

GUMMOW J:   How were these orders allowed to run on?

MR GARNSEY:   I cannot answer your Honour precisely as to that.

GUMMOW J:   What you are about to address us on is the plug, is it not?

MR GARNSEY:   Yes, your Honour.

GUMMOW J:   Is that right?It is about the plug?

MR GARNSEY:   It is about the plug and the hull and deck mouldings, which is tied in with the issue.

GUMMOW J:   How are the hull and deck mouldings works of artistic craftsmanship?

MR GARNSEY:   We say they are not.

GUMMOW J:   They are just taken from the plug, are they not?

MR GARNSEY:   My friend’s case is that they are derivative works.  The answer is, if your Honour pleases ‑ ‑ ‑

GUMMOW J:   What is meant by “derivative”?

MR GARNSEY:   I do not know.

GUMMOW J:   What, reproductions in the material form?

MR GARNSEY:   Yes, with no originality.

GUMMOW J:   But they are not distinct works.

MR GARNSEY:   No, if your Honour pleases.

GUMMOW J:   So are we not talking about the plug?  Unless we know what work is that we are talking about when we are debating artistic craftsmanship, we are just going to sink into ‑ ‑ ‑

MR GARNSEY:   Indeed, and that is why I am seeking, with respect, to take your Honour to the Full Court judgment because ‑ ‑ ‑

GUMMOW J:   I know you have lamentations about them.

MR GARNSEY:   No, not only lamentations, your Honour.  I have a mystery, if your Honour pleases.  Your Honour, can I say – and this may understand how the case developed – when my friend began the case he claimed relief in five works from the drawings up to the full yacht.  Before Justice Carr he claimed relief as works of artistic craftsmanship in the four works – he began by claiming in the plug, the moulds, which are the obverse of the hull and deck mouldings, the hull and deck mouldings, and the full yacht.  He then abandoned – or Justice Carr did not decide that the moulds were works of artistic craftsmanship.

GUMMOW J:   He decided they were sculptures, did he not?

MR GARNSEY:   Yes, I think his Honour did.  It is not entirely clear.  It then went to the Full Court and my friend claimed as works of artistic craftsmanship the plug, the hull and deck mouldings, and the full yacht.  Then there was a ‑ ‑ ‑

GUMMOW J:   That runs into Lord Reid, does it not?

MR GARNSEY:   Yes.

GUMMOW J:   Was that still controversial?  To put it another way, is the significance of what Lord Reid said denied by your opponent, as you understand it?

MR GARNSEY:   I do not really know, but his submissions are to the contrary of it.  But can I just proceed.  The appeal in this court took two and half days.  During the first two days, in questions from Justice Emmett and Justice Moore, my friend said, “No, I am really concerned with the plug” – and I can make all this good from the transcripts, if your Honour pleases, which is not reproduced in the books in this Court.  At the heel of the hunt, Justice Emmett asked a question concerned with relief, as I understood it.  That is, “Well, the plug has been destroyed.  It is enough if you get relief for the hull and deck mouldings”, and I understood his Honour to be talking about the form of relief, that is, you have to identify the plug which was destroyed by reference to the hull and deck mouldings and so make a meaningful order.

GUMMOW J:   I do not understand this.  It does not matter if the plug has been destroyed.

MR GARNSEY:   Indeed, your Honour, that is our point, or one of our points.

GUMMOW J:   But there might still be an infringement on it by reproduction in a material form ‑ ‑ ‑

MR GARNSEY:   Yes, indeed.

GUMMOW J:    ‑ ‑ ‑ by the yacht when it is sold.

MR GARNSEY:   Yes, and this is ‑ ‑ ‑

GUMMOW J:   So you get an injunction stopping you selling the yacht.

MR GARNSEY:   Yes.

GUMMOW J:   No big problem.

MR GARNSEY:   That is as may be, but, anyway, after the discussion which was shortly before the court rose, and on which I was not asked to make any submissions, the court went away and then judgment was delivered some time later.  In that judgment the court has said the plug cannot be a work of artistic craftsmanship but the hull and deck mouldings are and you can get relief in those but the yacht cannot be, if your Honour pleases, and that is the result.  That was notwithstanding findings by the trial judge, and referred to by the Full Court, that the hull and deck mouldings were reproductions of the precise shape of the plug. 

That, your Honour, is the factual basis for our submissions in relation to the first part of work of artistic craftsmanship.  That is, if one takes the Full Court’s decision that the plug was not a work of artistic craftsmanship, then you cannot get relief in relation to the hull and deck mouldings as works of artistic craftsmanship because, as works, they are reproductions of and lack originality over the plug.  That is the first part.  That is the Lord Reid point from Hensher and applied, we would say, necessarily to the judgment of the Full Court in its form.

GUMMOW J:   Suppose the Full Court was wrong about the plug.  That seems to me the ground for debate this morning on which you should use our time and whether the plug is or is not a work of artistic craftsmanship.

MR GARNSEY:   If your Honour pleases, there is no cross‑appeal.  The submissions before this Court are on the basis I have indicated, that the hull and deck mouldings are a derivative work of artistic craftsmanship.  In our submissions in reply, in the first two pages, we deal with that very point, if your Honour pleases.  It had been dealt with to some extent in our submissions in chief but, quite frankly, we did not understand that the issue was whether or not the plug was the work of artistic craftsmanship. 

Your Honour, in relation to that matter there is a document headed “APPELLANTS’ NOTE ON ISSUES CONCERNING THE PLUG” which is very short – it is a little over one page – which sets out our submissions as to the issues and annexes pages from the transcript of argument at trial and on appeal.  They are not reproduced in the appeal book in this Court.

KIRBY J:   That note is three pages long but it is a vehicle for annexing a substantial part of the transcript.  If Justice McHugh were here, he would make the point that the Rules require that the submissions be succinct and in this case you are having not three but four bites of the cherry with supplementary materials that you put forward.  They may prove useful, so I am not complaining.  I am just making a point.

MR GARNSEY:   If your Honour pleases, we did endeavour to comply with the Rules as to the documents filed.

KIRBY J:   Yes, do not let us waste time.

MR GARNSEY:   If your Honour pleases.  If I could take your Honours first having referred to the first two pages of our submissions in reply which set out our submissions as to the plug being the work which must constitute the first work of artistic craftsmanship, then take your Honours to Hensher’s Case [1976] AC 64 at 77E to G, behind tab 3. As no doubt some of your Honours recollect, this was the decision of the House of Lords ‑ ‑ ‑

GUMMOW J:   Page 77B?

MR GARNSEY:   Yes.  Lord Reid says, at C, a little below it:

The appellants maintain that the prototype of their furniture was a “work of artistic craftsmanship” within the meaning of section 3(1)(c).  The respondents admit that the prototype was a work of craftsmanship but deny that it was of “artistic craftsmanship.”

It is common ground that we must consider the prototype and not the furniture put on the market by the appellants.  Apparently this is because the articles put on the market were not works of craftsmanship.  But if there was copyright in the prototype then the furniture put on the market by the appellants was copied from it, and the respondents’ products were copied from the furniture which the appellants put on the market.  The respondents do not deny that this would be infringement of that copyright.

Then, from E to G, his Lordship refers to the point that he doubted whether a prototype could be a work of artistic craftsmanship on the grounds of basically lack of permanency or no intention to produce a lasting object. 

Now, what is behind Lord Reid’s reasoning in C to E is what is now stated in the statutory form in sections 10 and 22(1) of the Copyright Act 1968. The definition of “sculpture”, and I am afraid this was not in the materials, if your Honour pleases, is defined as including “a cast or model made for purposes of sculpture”. That was not immediately relevant to what his Lordship was talking about but then 22(1) says that a work is first reduced to material form when it is first made.

GUMMOW J:   Which subsection of 22?

MR GARNSEY: Section 22(1), your Honour:

A reference in this Act to the time when, or the period during which, a literary, dramatic, musical or artistic work was made shall be read as a reference to the time when ‑ ‑ ‑

GUMMOW J:   When did the word “artistic” go in?  It used to say literary, dramatic or musical work.

MR GARNSEY:   Your Honour, I am not sure about that but it was in at the time of this case.  It was 1989, I think, your Honour, from my note in the print I have: 

a literary, dramatic, musical or artistic work was made shall be read as a reference to the time when, or the period during which, as the case may be, the work was first reduced to writing or to some other material form. 

That was clearly the time when the plug was made.  In Coogi’s Case ‑ ‑ ‑

GLEESON CJ:   Just a minute.  Have you finished everything you want to say about Hensher?

MR GARNSEY:   No, your Honour.  Would it be convenient if I took your Honour to that while it is all open, if your Honour pleases.

GLEESON CJ:   Yes, certainly. 

MR GARNSEY:   Your Honour, Lord Reid continues at page 78B to say:

The word “artistic” is not an easy word to construe or apply not only because it may have different shades of meaning but also because different people have different views about what is artistic . . . 

But here two questions must be determined.  What precisely is the meaning of “artistic” in this context and who is to judge of its application to the article in question?  There is a trend of authority with which I agree that a court ought not to be called on to make an aesthetic judgment . . . 

I think we must avoid philosophic or metaphysical argument . . . I think that by common usage it is proper for a person to say that in his opinion a thing has an artistic character if he gets pleasure or satisfaction or it may be uplift from contemplating it.  No doubt it is necessary to beware of those who get pleasure from looking at something which has cost them a great deal of money.  But if unsophisticated people . . . 

It is I think of importance that the maker or designer of a thing should have intended that it should have an artistic appeal but I would not regard that as either necessary or conclusive.  If any substantial section of the public genuinely admires and values a thing for its appearance and gets pleasure or satisfaction, whether emotional or intellectual, from looking at it, I would accept that it is artistic although many others may think it meaningless or common or vulgar.

I think that it may be misleading to equate artistic craftsmanship with a work of art.  “Work of art” is generally associated more with the fine arts than with craftsmanship and may be setting too high a standard.

Then there is a reference to the arts and crafts movement.

KIRBY J:   Would you just in a thumbnail sketch say what the arts and crafts movement was?

MR GARNSEY:   Your Honour, the arts and crafts movement was a philosophically based movement which had artistic and political ramifications.

GLEESON CJ:   It is described on pages 89 to 90 in the judgment of the speech of Lord Simon, is it not?

MR GARNSEY:   Yes.  That is perhaps the most convenient to answer ‑ ‑ ‑

GLEESON CJ:   Page 89H to page 90F.

MR GARNSEY:   His Lordship relevantly for the issue before the House started off by treating it as a reaction to the deficiencies of the Fine Arts Copyright Act 1865 which dealt only with fine art and did not protect the products of the arts and crafts movement.

KIRBY J:   Was this by people who were producing useful objects in large mass production but contended that there was an artistic quality in what they were doing?

MR GARNSEY:   No, it was converse, that the arts and crafts movement required, or rather, the philosophy of it was that useful objects could be produced which although functional were attractive, fitting, suitable and not indistinctively mass produced, but those useful objects could be intended to be industrialised or mass produced.  But one started off with an object which was to be appreciated for itself as well-proportioned, visually fitting in, if it was a building, with the surroundings, not having an inhuman form but being friendly to the user – I am putting it rather crudely, if your Honour pleases.  In the chapter that I have ‑ ‑ ‑

KIRBY J:   It just seems if one takes, for example, this beautiful object, in the book that you handed to us, it just seems false to have a strict dichotomy because things can be both beautiful and useful.

MR GARNSEY:   Yes, your Honour, we do not contend for a strict dichotomy at all.

KIRBY J:   Once you do not contend for that it becomes quite a difficult and tricky thing to decide where you draw a line.

MR GARNSEY:   Indeed it does.  That is why this case is here.

KIRBY J:   I am going to put that object in front of me so that I get pleasure from it during the whole of this case.

MR GARNSEY:   I am relieved your Honour does.

KIRBY J:   If from nothing else.

MR GARNSEY:   Your Honour, the chapter that your Honour has just answered gives the background to what Lord Simon ‑ ‑ ‑

KIRBY J:   I was referring to the book by Cumming and Kaplin that you handed up.

MR GARNSEY:   ‑ ‑ ‑ says, if your Honour pleases, but the point is and the Full Court in its judgment says it is clear you do not have to worry about a yacht being able to be a work of artistic craftsmanship if you can have as artistic works buildings or models of buildings.  That, with respect, completely ignores the philosophy and, indeed, the products of the arts and crafts movement.  The point is that a building or a model of a building, and one has to look at the definition, there is first a one-off.

The arts and crafts movement just did not say any building which is made and used craftsmen to build it is a work of artistic craftsmanship.  It said a specially designed building which meets the criteria of being human-friendly, recognising its historical basis, melding with the environment, et cetera, well designed, that is to be appreciated not for its function but for the aesthetic way that function is carried out.  That is important thing and one can see the pictures in the first chapter reproduced there, if your Honour pleases.  That is what the arts and crafts movement was concerned with and one cannot extrapolate and say just from mere buildings, mere yachts are okay and necessarily works of artistic craftsmanship.

GLEESON CJ:   Which is the passage in the speeches of Hensher that most closely approximates what you say is the test for a work of artistic craftsmanship? 

MR GARNSEY:   Your Honour, Lord Morris of Borth-y-Gest at 81F through to H:

In deciding whether a work is one of artistic craftsmanship I consider that the work must be viewed and judged in a detached and objective way.  The aim and purpose of its author may provide a pointer but the thing produced must itself be assessed without giving decisive weight to the author’s scheme of things.  Artistry may owe something to an inspiration not possessed by the most deft craftsman.  But an effort to produce what is artistic may, if forced or conscious, for that very reason fail.  Nor should undue emphasis be given to the priorities in the mind of a possible acquirer.  A positive need to purchase an objects or thing in order to put it to practical use may be the primary reason for its acquisition but this may be reinforced by a full appreciation of its artistic merits if they are possessed.

So I would say that the object under consideration must be judged as a thing in itself.  Doe sit have the character or virtue of being artistic?  In deciding as to this some persons may take something from their ideas as to what constitutes beauty or as to what satisfies their notions of taste or as to what yields pleasure or as to what makes an aesthetic appeal.  If, however, there is a resort to these or other words which may themselves have their own satellites of meanings there must follow a return to the word “artistic” which is apt without exposition to contain and convey its own meaning.

With the very greatest respect, that proposition may be doubted and that is why we are arguing before this Court. 

As to the second question, I consider that as in all situations where a decision is required upon a question of fact the court must pay heed to the evidence that is adduced.  Though it is a matter of individual opinion whether a work is or is not artistic there are many people who have special capabilities and qualifications for forming an opinion and whose testimony will command respect.  In practice a court will not have difficulty in weighing their evidence and in deciding whether it clearly points to some conclusion.  In cases where the court is able to see the work which is in question that will not warrant a decision on the basis of a spot opinion formed by the court itself but it will be a valuable aid to an appreciation of the evidence.

Then Viscount Dilhorne at 85H said this, which is collaterally relevant to what we advance:

How, then, is the phrase to be interpreted?  An “artistic work” is no more and no less than a work of art.  Every work of art is an artistic work and vice versa.  How does one distinguish between what is a work of art and what is not?  Various tests have been suggested.

Then there is a reference to the Court of Appeal in Hensher’s Case which was rejected.  Then at 86H, down the bottom, his Lordship said:

The phrase “works of artistic craftsmanship” is made up of words in ordinary use in the English language.  Unless the context otherwise requires, they must be given their ordinary and natural meaning.  I can find nothing in the context to require that they should be given a different meaning from that.

GUMMOW J:   Are you reading from 86?

MR GARNSEY:   Over to the top of 87.

GUMMOW J:   The paragraph on 86, letter F, as to why they were rejecting Mr Justice Graham may be important.

MR GARNSEY:   Yes, your Honour.  I perhaps should read that:

Mr. Parker for the appellants submitted that any work which is visible and which is made to have and has eye appeal is an artistic work and that a good design intended to appeal must also be an artistic design.  He said that the work must be visible in order to exclude internal works such as a piece of machinery which is covered up.  I do not think it possible to accede to this submission for I do not think it is right to say that every work which has eye appeal is necessarily a work of art, though some may be.  This submission would appeal to accord in all material respects with that of Graham J. which was, in my opinion, rightly rejected by the Court of Appeal.

If your Honour pleases.

GUMMOW J:   The last sentence.

MR GARNSEY:   

If right, it would mean that every design registrable under the Registered Designs Act 1949 is a work of art, or if one prefers the expression, an artistic work.

Indeed, your Honour, that is the submission we have made in our written submissions in effect.  Then Lord Simon, as your Honour the Chief Justice has noted, dealt with the arts and crafts movement.  His Lordship first at 88H referred to the history and then at 90F his Lordship says:

But although, in my view, there can be no doubt that when Parliament, in 1911, gave copyright protection to “works of artistic craftsmanship,” it was extending to works of applied art the protection formerly restricted to works of the fine arts, and was doing so under the influence of the Arts and Crafts movement, and although the aesthetic of the Arts and Crafts movement was a handicraft aesthetic, Parliament used the words “artistic craftsmanship,” not “artistic handicraft”.  It seems likely that this was done advisedly:  I have already indicated that section 22 of the Act of 1911 envisaged that an industrial design might be an artistic work.  Moreover, however ideologically opposed to current industrial and commercial society, at least some of the leaders of the Arts and Crafts movement recognised that they would have to come to terms with the machine.  As early as 1859 -

and then there is a reference to ‑ ‑ ‑

GLEESON CJ:   His Lordship makes the point in the middle of page 91 that it is the craftsmanship not the work that has to be artistic.

MR GARNSEY:   Yes, indeed, but it is not mere craftsmanship.  That point is also made throughout the passage.

GLEESON CJ:   But what is it that provides a discrimen between artistic craftsmanship and non-artistic craftsmanship?

MR GARNSEY:  That the craftsman is producing a work intended to be, in an objective sense, a work of fine or applied art that is, to be valued for its, when I say the aesthetic qualities, because one is talking about the production of an object, it is for its visual appeal.

GLEESON CJ:   Is it to be found by reference to some idea of the preponderance of the constraints under which the craftsman is operating?

MR GARNSEY:   The answer to that is not necessarily so long as the craftsman is intending to produce an object which is to be – whatever its function – appreciated in itself.

GLEESON CJ:   If you are intending to produce a racing yacht which is actually intended to be sailed in races with the hope of winning and you want it, amongst other things, to look beautiful, are the constraints under which you are operating as a craftsman different from the constraints under which you would be operating if you were producing a yacht that was going to be put in a museum or a gallery as an object of beauty?

MR GARNSEY:   I have difficulty in answering your Honour the Chief Justice because I am not quite sure what your Honour means by constraints.

GUMMOW J:   Constraints of utility, for example.

MR GARNSEY:   Yes, the answer is ‑ ‑ ‑

GUMMOW J:   Constraints of function.

MR GARNSEY:   Yes.  In this sense, that one has to be able to posit that the yacht is created as a thing of beauty to be a joy forever, if your Honour pleases, not as a functional racing yacht which may look good.  That may well exclude most things like cars, tractors and boats, and, indeed, most registrable designs because artistic craftsmanship – its genesis was something that led to the creation of a work that you could say that is a work of fine or applied art.  It may be functional, like the decanter or vase your Honour Justice Kirby is looking at, but that does not matter.  It may be a chair, it may be sittable in, like a Frank Lloyd Wright chair, but they do not seem terribly functional since one does not want to sit in them for too long.

GUMMOW J:   The constraints of utility and function in designing a vase are one thing.  Hopefully, it is not true of all vases, but hopefully it is going to contain water and you put flowers in it.  But the constraints are not all that drastic; there is a lot of room to move from the point of view of aesthetics.

MR GARNSEY:   I should perhaps say ‑ ‑ ‑

GUMMOW J:   Designing a motor car it is quite different.

MR GARNSEY:   Yes, your Honour.  Indeed, I should have answered your Honour the Chief Justice in this way.  The constraints are this, your Honour.  It does not matter whether the yacht sinks or sails.  It does not matter whether the car functions or not, if one is just creating the work of artistic craftsmanship through craftsmanship.  His Honour, the trial judge, put the proposition to be, well what about a yacht by Rodin, would you say that was a work of artistic craftsmanship.  I said in all probability, yes.  He said that is because it would sink and I said, “Yes, it would sink but also” – and I put what I have just put to your Honour – “it would not matter whether it worked or not”.  One can say that it is the production of a work of art, fine or applied, by the use of artistic craftsmanship that is in the process.

GLEESON CJ:   But bearing in mind that it is, as Lord Simon keeps saying in his speech, the craftsmanship not the work that has to be judged to be artistic, there must be something about craftsmanship in one case that enables you to say of it that it is artistic, whereas you would say in the other it is not.  He gives the example of the glazier compared to somebody who makes a stained glass window.

MR GARNSEY:   Yes, and with respect, that shows that one looks both to the craftsmanship and to the product of the craftsmanship because if you look at the stained glass window – they are intertwined, if your Honour pleases.  The work embodies the artistic craftsmanship, but the work ‑ ‑ ‑

GLEESON CJ:   He says on page 95, it is the “aim and impact” of the craftsmanship that determines whether it is artistic.

MR GARNSEY:   That is to be gauged in part from the finished work. 

GLEESON CJ:   Is that related to your test of whether it will be valued chiefly for its aesthetic qualities?

MR GARNSEY:   Yes.  One can say it does not matter if it does not work.  The trial judge, and my learned friend refers to this as the display case fallacy.  There is no fallacy in what we say.  We say it can work or it cannot.  It might be intended to be put in a display case, it might not.  But the point is it is just not any functional object that happens to look good, even if people want it to look good. 

GLEESON CJ:   A stained glass window is intended to perform a very practical object.  It keeps people dry and warm.  It keeps the weather out.

MR GARNSEY:   But the way it is intended to perform that is to fill in the space, not merely to block out the weather but in the middle ages to educate the illiterate masses in the ways of God, and a little later when people have more universal literacy, to inspire a reaction from its aesthetic qualities to uplift the soul. 

GLEESON CJ:   But to get back to something Justice Gummow put to you earlier, where you are designing a window, in terms of aesthetics, you have probably got a good deal of room to manoeuvre given that you have to produce something that will occupy the space and not let the wind and rain in, then you can make it beautiful, you can choose the colours, the design and so forth.  But if you are setting out to produce a racing yacht, you have some very heavy utilitarian constraints, do you not?

MR GARNSEY:   Indeed, your Honour.  This is something, we say, is clearly established on the evidence that I will take your Honour to briefly and it is reflected in the respondent’s own evidence consistently throughout, including the summary of it behind my friend’s written submissions as to how he prepared the yacht and what work he did on the plug.  One might change it to get a better look in various respects but a number of the changes – they are listed at the back of my friend’s written submissions in the Annexure B – are for technical reasons, for functional reasons.

GLEESON CJ:   I am not inviting you to read us any evidence in answer to my question.  My question is what is the reference in the evidence that best demonstrates that the yacht was intended to be a racing yacht?  The answer to that question ought to be a number.

MR GARNSEY:   Sorry, your Honour, it is the word “best” that is causing the slight delay.  Your Honours, volume 2, pages 791, lines 30 to 50, and 792 – that is just below the paragraph in the same affidavit - at lines 20 to 30, 792, referring to articles JHS2 which is the peer review adopted by Mr Swarbrick and put forward.

GLEESON CJ:   Thank you.

MR GARNSEY:   Your Honour, the JHS2 has been reproduced as it was tendered in colour in a separate little document which is no doubt with your Honours somewhere but I do not seek to take your Honours to it. 

GUMMOW J:   This is 791 and 792, is it?

MR GARNSEY:   Paragraph 6 of the affidavit, 791 ‑ ‑ ‑

GUMMOW J:   Yes, got that.

MR GARNSEY:    ‑ ‑ ‑ and 9 of the affidavit, 792 of JHS2.

GLEESON CJ:   Thank you. 

MR GARNSEY:   Now, your Honour, and indeed ‑ ‑ ‑

GUMMOW J:   I think there was evidence that some 30 had been sold, including overseas.  There was a finding by the primary judge, was there not?

MR GARNSEY:   Yes, there was a finding but it had been agreed there was industrial application.  That was not in dispute.

GUMMOW J:   It is paragraph 43 of the primary judge’s judgment:

To date Swarbrick Yachts International has constructed 32 of the JS 9000 yachts, with over half of them having been delivered to customers overseas.

MR GARNSEY:    Yes, but it was not an issue that there had been industrial application of the design…..and I am instructed there were sales in the pipeline that would have increased the number.  Your Honours, returning to Hensher’s Case, your Honour the Chief Justice had directed attention to page 91 and there – and this will save me reading Cuisenaire v Reed – Lord Simon referred to the Cuisenaire Cases, then in the succeeding pages his Lordship disposed of various arguments from one or the other side and at 94D his Lordship said:

It is, my Lords, I confess, easier to question the criteria put forward by others than to propound one’s own.  The attempt must nevertheless be made.  I start by re‑emphasising that the statutory phrase is not “artistic work of craftsmanship,” but “work of artistic craftsmanship”; and that this distinction accords with the social situation in which Parliament was providing a remedy.  It is therefore misleading to ask, first, is this a work produced by a craftsman, and secondly, is it a work of art?  It is more pertinent to ask, is this the work of one who was in this respect an artist‑craftsman?  It follows that the artistic merit of the work is irrelevant.

Then there are some observations as to artistic merit.  At H his Lordship notes that evidence may be obtained as possibly:

the most cogent evidence is likely to be from those who are either themselves acknowledged artist‑craftsmen or concerned with the training of artist‑craftsmen – in other words, expert evidence.  In evaluating the evidence, the court will endeavour not to be tied to a particular metaphysics of art, partly because courts are not naturally fitted to weigh such matters, partly because Parliament can hardly have intended that the construction of its statutory phrase should turn on some recondite theory of aesthetics –

and then at 95B, as your Honour the Chief Justice has noted:

Given the craftsmanship, it is the presence of such aim and impact – what Stewart J. called “the intent of the creator and its result” – which will determine that the work is one of artistic craftsmanship.

Lord Kilbrandon adopted a more restrictive approach but which gives some support to our definition, though we do not put up one so strict, and at page 96F to G, his Lordship said:

In my opinion, the first essential of a work of art (which I think an artistic work must be) if it is to be distinguished from a work of craftsmanship – a distinction upon which Parliament insists – is that it shall have come into existence as the product of an author who is consciously concerned to produce a work of art.  The work either is or is not a work of art before anyone except the author has seen it; it does not depend for its artistic character upon the criticism, whether favour or unfavourable, of other people who may make value judgments about it.  It must be possible to deduce the conscious purpose of artistic creation from the work itself or from the circumstances of its creation, but this act arises only when the question whether it is a work of art becomes one for discussion or decision by others than the author.  Merit is another matter altogether.

If your Honour pleases, the your Honour the Chief Justice’s reference to the stained glass window is directly in point in relation to those remarks.

KIRBY J:   That passage in Lord Kilbrandon’s speech seems to be at odds with the passage of Lord Simon.

MR GARNSEY:    Yes.

KIRBY J:   Lord Simon makes the point that it is not the work that must be the work of art but the craftsmanship, whereas Lord Kilbrandon says, “The work either is or is not a work of art”.  It would seem from the statute that Lord Simon’s approach is the correct one.

MR GARNSEY:    Your Honour, it is, with respect, a distinction largely without a difference.  I say that for this reason.  One has to look for the product of artistic craftsmanship and one of those relevant things is, what is the product?  It is a bit of evidence you take into account as well as seeing how it was produced.  Indeed, Lord Simon does not say you cannot look at the product.  You just sort of go along to a person and say, “What were you doing and what are you meaning to do?” Lord Kilbrandon at 97C to D:

Whether a given object is a work of artistic craftsmanship can be posed as a question of fact, but only after the meaning of the word “artistic” has been determined; what that meaning is, is a question of law, since it involves a decision of what Parliament meant by the word –

et cetera, and then, if your Honour pleases, they are what might be respectfully said to be disparate approaches.

GLEESON CJ:   I am not saying your earlier answer was wrong, but why is the prototype of a Lamborghini motor car not a work of artistic craftsmanship?

MR GARNSEY:    Because it is a step in the intended production of a functional article chiefly for functional purposes.

GLEESON CJ:   It is that word “chiefly” that is the key to this, is it not?

MR GARNSEY:    Yes.

GLEESON CJ:   I would presume, although I do not know, that the designer of a Lamborghini motor car is self‑consciously setting out to produce something that will have great eye appeal.

MR GARNSEY:    Yes.

GLEESON CJ:   And that people will pay a lot of money for partly because of its eye appeal.

MR GARNSEY:    But an eye appeal, married with and to a large extent dictated by function, that is, if you have to have a powerful car, a sports car, to perform in a certain way with a certain size engine positioned where they may be ‑ ‑ ‑

GLEESON CJ:   You are never going to get away with an electric engine.

MR GARNSEY:    No, indeed.

GUMMOW J:   People are buying the trademark too for the Lamborghini, are they not?

MR GARNSEY:    Indeed.

GUMMOW J:   They are buying that little badge on the front to show off to other silly people who are impressed by that.

GLEESON CJ:   Well, that little badge would be a work of artistic craftsmanship, would it not?

MR GARNSEY:    It could be, yes.

GLEESON CJ:   Like the little statuette on a Rolls Royce.

MR GARNSEY:    And the original work would have been.

GUMMOW J:   Yes.  I gave some advice about that one.

MR GARNSEY:   I am sorry, there is.  I was not as remiss as I have just remembered we did cross-examine.  Volume 1, page 125.  I was cross‑examining at 124 Mr Swarbrick on the statement in one of the documents that all yachts are protected by trademark and copyright laws in Western Australia and the Commonwealth.  Then, at the top of page 125, I said:

So have you ever registered – or instructed anyone to register a design for any of the yachts that you have designed?---Never.

Have you known of the registration of designs under the Designs Act in Australia? That’s before this case started?---I’ve got several books on copyright law and patent law and design law, and I, like every other yacht designer that I’ve spoken to in the last five months, thinks that, you know, the copyright in the drawings extends to the three-dimensional object. I did note when I first grabbed those books that, you know, there are exemptions to it.

But you knew there was a system of designs registration in Australia at the time you drew the drawings in A, B, C and D of the confidential exhibit?---No, I didn’t.

HEYDON J:   You did not press that question?

MR GARNSEY:   I beg your Honour’s pardon?

HEYDON J:   That question was objected to and you ended up not pressing it.

MR GARNSEY:   Yes, but, with respect, that is because it was on the margins of relevance.

HEYDON J:   Well, is it in the evidence or is it not?

MR GARNSEY:   Even with the new definition of “relevance”.

KIRBY J:   What did his Honour rule on the objection?

GLEESON CJ:   He did not need to rule because you did not press it.

MR GARNSEY:   That is right, yes. 

GLEESON CJ:   So what appears at page 125, lines 10 to 13, is not part of the evidence, is it?

MR GARNSEY:   Yes, it is, with respect, lines 1 to 15.  He made admissions that he had not ever tried to register a design. 

GUMMOW J:   Yes, he thought he knew all about it:

I’ve got several books on copyright law and patent law and design law.

MR GARNSEY:   Yes.

GUMMOW J:   A dangerous field in which to be self‑taught.

MR GARNSEY:   He certainly did not strike out what I had asked, if your Honour pleases.

GLEESON CJ:   No, he did not rule on a particular question because you did not press it.

MR GARNSEY:   That is still there.

GLEESON CJ:   Anyway, we can read the transcript, thank you.

MR GARNSEY:   Yes, your Honour.  Your Honour, I see it is twenty past four.

GLEESON CJ:   How long do you think you will need to complete your argument?

MR GARNSEY:   Your Honour, I would need about 15 minutes.

GLEESON CJ:   All right.  The reason I asked that question is because…..about to say about the next case and the case after it.

MR GARNSEY:   If your Honour pleases.

GLEESON CJ:   We will adjourn now until 10.00 am tomorrow and we will list the second appeal at 10.15 and we will list the third appeal at not before 12.15.

AT 4.22 PM THE MATTER WAS ADJOURNED
UNTIL WEDNESDAY, 25 OCTOBER 2006