Burge v Swarbrick

Case [2007] HCA 17

HIGH COURT OF AUSTRALIA

GLEESON CJ
GUMMOW, KIRBY, HEYDON AND CRENNAN JJ

BRENT BURGE & ORS   APPELLANTS

AND

JOHN HARLEY SWARBRICK   RESPONDENT

Burge v Swarbrick
[2007] HCA 17
26 April 2007
P24/2006

ORDER

1.Appeal allowed with costs.

2.Set aside the orders of the Full Court of the Federal Court of Australia and in their place order that:

(a)the appeal to that Court be allowed with costs; and

(b)the orders made by Carr J on 24 June 2004 be set aside and in their place order that:

(i)the respondent's application to the Federal Court be dismissed; and

(ii)all questions respecting the cross-claims be stood over for determination by a judge of the Federal Court in conformity with the reasons of this Court; and

(iii)the respondent pay the costs of the appellants of the proceedings before Carr J up to 7 July 2004, including any reserved costs and the costs of the two motions notice of which was filed on 12 September 2003 and 3 October 2003.

On appeal from the Federal Court of Australia

Representation

J J J Garnsey QC with R J L McCormack for the appellants (instructed by Stables Scott)

D M Stone with T J Carmady for the respondent (instructed by Williams & Hughes)

Notice:  This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS  

Burge v Swarbrick

Copyright – Artistic works – Works of artistic craftsmanship – The respondent obtained an injunction against infringement by the appellants of the respondent's ownership of copyright in works constituted by a "plug" from which a mould for a yacht hull could be derived, and in the hull and deck mouldings of that yacht – Whether works protected by copyright or should have been protected, if at all, under the designs registration law.

Copyright – Artistic works – Works of artistic craftsmanship – Whether "work of artistic craftsmanship" is a composite phrase to be construed as a whole – Relevance of aesthetic appeal to the existence of a work of artistic craftsmanship – Relevance of machine production to the existence of a work of artistic craftsmanship – Relevance of functional or utilitarian constraints to the existence of a work of artistic craftsmanship – Whether the "plug" and mouldings constituted works of artistic craftsmanship.

Copyright – Anti-overlap provisions – Interaction between the statutory protection of copyright and designs – Absence of registered "corresponding design" – Exclusion of copyright protection in the three-dimensional reproduction of artistic works, other than works of artistic craftsmanship, where the "corresponding design" has been "applied industrially" – Whether the "plug" and mouldings were protected by copyright.

Intellectual property – Anti-overlap provisions – Interaction between statutory protection of copyright and designs – Position of works of artistic craftsmanship in the statutory scheme – Meaning of "corresponding design".

Words and phrases – "applied industrially", "artistic work", "corresponding design", "work of artistic craftsmanship".

Copyright Act 1911 (Imp), ss 4, 22(1).
Copyright Act 1912 (Cth), ss 4, 8.
Copyright Act

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AGLC
Burge v Swarbrick [2007] HCA 17
Case
[2007] HCA 17
Decision Date

CaseChat Overview and Summary

The High Court of Australia heard an appeal from the Full Court of the Federal Court of Australia concerning alleged copyright infringement. The respondent, Mr Swarbrick, claimed copyright in a "plug" used to create a mould for a yacht hull and deck, and in the mouldings themselves. The appellants, Burge and others, argued that these items were not protected by copyright, or if they were, such protection should have been sought under designs registration law. The central dispute revolved around whether the plug and mouldings qualified as "works of artistic craftsmanship" under the Copyright Act 1968 (Cth), and how this interacted with the designs registration provisions.

The primary legal issues before the High Court were whether the "plug" and the yacht hull and deck mouldings constituted "works of artistic craftsmanship" for the purposes of copyright protection. This required the Court to consider the meaning of "work of artistic craftsmanship" as a composite phrase, and the relevance of aesthetic appeal, machine production, and functional or utilitarian constraints to its existence. Furthermore, the Court had to determine the application of the anti-overlap provisions, specifically whether copyright protection was excluded due to the industrial application of a "corresponding design" in the absence of a registered design.

The High Court reasoned that the determination of whether a work is one of artistic craftsmanship is an objective one, not solely dependent on the author's intentions or aspirations. The Court found that while aesthetic considerations were present in the design of the plug, they were subordinated to significant functional and engineering requirements inherent in the design of a sports boat. Unlike items such as jewellery or stained glass where design choice is relatively unconstrained by function, the design of the yacht plug was heavily influenced by utilitarian constraints. The Court concluded that the plug and mouldings did not meet the threshold for being considered works of artistic craftsmanship, and therefore, copyright protection was not available under the Copyright Act, particularly in light of the designs legislation's anti-overlap provisions.

The appeal was allowed with costs. The orders of the Full Court of the Federal Court were set aside, and in their place, the respondent's application to the Federal Court was dismissed. Questions regarding cross-claims were to be determined by a judge of the Federal Court, and the respondent was ordered to pay the appellants' costs of the proceedings before Carr J.

Orders

Orders of the court

1. Appeal allowed with costs; 2. Set aside the orders of the Full Court of the Federal Court of Australia and in their place order that: (a) the appeal to that Court be allowed with costs; and (b) the orders made by Carr J on 24 June 2004 be set aside and in their place order that: (i) the respondent's application to the Federal Court be dismissed; and (ii) all questions respecting the cross-claims be stood over for determination by a judge of the Federal Court in conformity with the reasons of this Court; and (iii) the respondent pay the costs of the appellants of the proceedings before Carr J up to 7 July 2004, including any reserved costs and the costs of the two motions notice of which was filed on 12 September 2003 and 3 October 2003.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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[80]. However, given what has just been said, 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.[80]Copyright Act 1976, 17 USC §101; Pivot Point International Inc v Charlene Products Inc 372 F 3d 913 (2004). In the United States, the Vessel Hull Design Protection Act 1998, 17 USC §§1301, 1302, conferred a sui generis form of protection upon designs for vessel hulls, including "plugs" and "molds": Nimmer on Copyright, vol 2, §8A.13-§8A.21.Was the Plug "a work of artistic craftsmanship"? – the evidence The answer to the question whether the Plug is a "work of artistic craftsmanship" cannot be controlled by evidence from Mr Swarbrick of his aspirations or intentions when designing and constructing the Plug. His evidence was admissible. But the operation of the statute does not turn upon the presence or absence of evidence of that nature from the author of the work in question. The matter, like many other issues calling for care and discrimination, is one for objective determination by the court, assisted by admissible evidence and not unduly weighed down by the supposed terrors for judicial assessment of matters involving aesthetics[81].[81]cf Attorney-General v Trustees of National Art Gallery of NSW (1944) 62 WN (NSW) 212; In re Pinion dec'd [1965] Ch 85; Picarda, The Law and Practice Relating to Charities, 3rd ed (1999) at 61‑62; Cowen, "An Artist in the Courts of Law", (1945) 19 Australian Law Journal 112. 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, the author, at the stage when there is litigation, may be unavailable. Indeed, as Pape J noted in Cuisenaire[82], 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[83].[82][1963] VR 719 at 730.[83]cf Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286‑287. This is not to deny the admissibility of such evidence, nor to disparage the good character of such witnesses, and certainly not that of Mr Swarbrick; it is to reaffirm the well‑recognised dangers of hindsight which are present in various fields of intellectual property law, as in many other disputes that come to litigation.

Decision

Reasons for decision

GLEESON CJ CJ, GUMMOW, KIRBY, HEYDON AND CRENNAN JJ
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.Conclusions respecting the Plug This state of the evidence must strongly influence the answer to the question whether the Plug was "a work of artistic craftsmanship", within the meaning of the Copyright Act and allowing for the "overlap" provision made by the 1989 Act. With wallpaper, a tapestry, stained glass window, piece of jewellery or Tiffany artefact, there is considerable freedom of design choice relatively unconstrained by the function or utility of the article so produced. But, as the evidence disclosed, that was not the case with the design constraints upon a class of yacht such as the JS 9000. The general considerations in play in deciding whether the Plug was "a work of artistic craftsmanship" appear from a discussion by Professor Denicola in his influential article, "Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles"[88]. The writer referred to the statement by Frank Lloyd Wright in 1894 challenging designers to use the machine to best advantage rather than to produce "with murderous ubiquity forms born of other times"; Professor Denicola continued[89]:"The dominant feature of modern industrial design is the merger of aesthetic and utilitarian concerns. It is the influence of nonaesthetic factors, the nexus between what the product must do and how it must look, that distinguishes true industrial design from other artistic endeavors. The industrial designer as engineer – a perspective no less valid than industrial designer as artist – is subject to the functional constraints inherent in each undertaking."[88](1982-83) 67 Minnesota Law Review 707. The thesis of the article was accepted by the majority of the Court of Appeals for the Seventh Circuit in Pivot Point International Inc v Charlene Products Inc 372 F 3d 913 at 927 (2004).[89](1982-83) 67 Minnesota Law Review 707 at 739. During his cross-examination, Mr Swarbrick agreed that yacht design was a very specialised branch of naval architecture and that a naval architect was "basically an engineer". Mr Hood 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. In cross‑examination, Mr Hood was taken to a number of books written by yacht designers and agreed that there was a substantial body of opinion that yacht design is an art or involves creative ability and artistic ability. Some of these authors Mr Hood did not hold in high regard because he saw them as influenced by a poetic view of a vocation that was basically concerned with engineering. Naval architects who held themselves out as accepting design briefs to produce beautiful vessels for the rich and famous were regarded by Mr Hood as "stylists". If a client told Mr Hood that he wanted a beautiful boat, Mr Hood would be unable to proceed further with the brief without going into matters of purpose and function, of what must be always a significant piece of engineering.

Ratio Decidendi

Legal Principle Established

Established by: GLEESON CJ, CJ, GUMMOW, KIRBY, HEYDON AND CRENNAN JJ

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