Crocker, A v Papunya Tula Artists Pty Ltd

[1985] FCA 275

Re: ANDREW CROCKER
And: PAPUNYA TULA ARTISTS PTY. LIMITED and ABORIGINAL ARTISTS AGENCY PTY.
LIMITED
No. G424 of 1984
Trade Prctices
(1985) ATPR para 40 - 582
(1985) AIPC para 90 - 229

COURT

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Morling J.

CATCHWORDS

Trade Practices - misleading conduct - art catalogue - second edition - whether description of applicant as editor misleading - author of catalogue not owner of copyright - whether second edition represented by publisher as unaltered work of author

Trade Practices Act 1974, s.52

Copyright Act 1968, s.191(a)

HEARING

SYDNEY
#DATE 26:6:1985

ORDER

1. Application dismissed.

2. Applicant to pay respondents' costs.

JUDGE1

The applicant in this case is Mr Andrew Crocker, an Englishman, who resides at Wasp Cottage, Behind Myrtle Cottage, Kingsbury Episcopi, in the County of Somerset. He has not always resided in such verdant parts. For many years he has had a deep interest in Aboriginal art. In 1972 he was employed by the Australian Council for the Arts as an assistant project officer in work associated with Aboriginal art. In 1979 he commenced work in Alice Springs as the manager of Papunya Tula Artists Pty. Limited and he remained in that position until September 1981. He has been deeply involved with touring exhibitions of paintings by Aboriginal artists.

1. The Aboriginal Artists Agency Limited (the second respondent) is a non-profit company which represents Australian Aboriginal and Torres Strait Islander artists. Its functions include licensing and protecting the copyright in art works, music and other works of art and in entering into agreements and joint ventures to promote the work of Aboriginal artists, and generally acting as agent and business adviser to Aboriginal and Torres Strait Islander artists. The evidence does not make clear the precise functions of the first respondent, but its principal object appears to be the purchase of paintings by Aboriginal artists for sale at a profit, presumably to the artists concerned.

2. In 1981 the applicant was employed as art director of the first respondent. Whilst so employed he conceived the idea of producing a small book to be called "Mr Sandman Bring Me a Dream", being a collection of photographs of paintings by Aboriginal artists. He arranged for the production of this work. The arrangements included the engagement, on behalf of the first respondent, of a photographer to photograph some of the paintings, the taking of some photographs himself, and the interviewing of the artists whose paintings were to be included in the work. He also composed a commentary on each of the paintings and on each of the artists whose work was portrayed. He wrote a short note entitled "Contemporary Art of the Western Desert" which was included in the volume. He arranged for Mr R.J. Kimber to contribute an article entitled "Central Australian and Western Desert Art: Some Impressions". This, together with a foreward by Mr Clifton Pugh was included in the work. The applicant himself composed an Introduction. The omission of the Introduction from what is, in effect, a second edition of "Mr Sandman Bring Me a Dream" is the reason for the applicant bringing these proceedings. The Introduction is about one and a half pages in length. It acknowledges the assistance given by several persons in the preparation of the work. It refers to the applicant's employment by the first respondent and states that all members of the first respondent are Aboriginal artists. It contains a few short observations on the evolution of Aboriginal paintings. Reference is made to some of the difficulties experienced by the applicant in his work as manager of the first respondent. It does not purport to be a commentary or an introduction to the paintings which are reproduced in the body of the work.

3. "Mr Sandman Bring Me a Dream" was published in 1981 by the respondents. The frontispiece of the work gave the names of the publishers, and under a heading "Photography" gave the names of the applicant and two others. No prominence was given to the name of the applicant as the editor. However I think the evidence establishes that he was its editor and, indeed, I did not understand the respondents to contend otherwise. There is a notation on the frontispiece of the work indicating that, for the cataloguing purposes of the National Library of Australia, Mr Crocker was regarded as the editor.

4. In my opinion the evidence establishes that the applicant was not only the editor of "Mr Sandman Bring Me a Dream" but also its author. He conceived the idea which found expression in the work, and it was he who determined which paintings were to be photographed and included in it. He wrote the Introduction and also the brief commentaries on each painting and its painter which, together with the paintings, make up some 52 pages of the work which contains some 62 pages in all. The only parts that he did not himself prepare were the contributions by Messrs Pugh and Kimber. In my opinion these facts establish that the applicant was the author of "Mr Sandman Bring Me a Dream" although he was not the author of all the several parts of which it is comprised: see Copinger and Skone James on Copyright, 12th edn, para. 325.

5. This is not to say, of course, that the applicant is the owner of the copyright in the work. Since it was produced by him in pursuance of the terms of his employment, his employer, the first respondent, is the owner of the copyright subsisting in it: see sub-s.35(6) of the Copyright Act 1968.

6. In the present proceedings the applicant claims that the respondents are guilty of conduct proscribed by sub-s.52(1) of the Trade Practices Act 1974 and para. 191(a) of the Copyright Act by reason of the publication and sale by them of a work entitled "Papunya - Aboriginal Paintings from the Central Australian Desert" ("'Papunya'"). Sub-s. 52(1) proscribes conduct, in trade or commerce, which is misleading or deceptive or likely to mislead or deceive. Paragraph 191(a) of the Copyright Act provides, inter alia, that where a work in which copyright subsists has been altered by a person other than the author of the work, a person is under a duty to the author of the work not to publish or sell the work as so altered, as being the unaltered work of the author if, to his knowledge, it is not the unaltered work of the author.

7. To understand how the dispute between the parties arises it is necessary to refer to the circumstances in which "Papunya" came to be published and to the contents of that work. "Papunya" was published by the respondents in 1983. Leaving aside miniscule matters, the only respects in which it differs from "Mr Sandman Bring Me a Dream" are as follows:
   
   

(a) the change in title;

(b) the omission of Mr Crocker's Introduction from "Papunya";

(c) the inclusion on the frontispiece of "Papunya" of the name of the applicant as editor.

1. The paintings featured in "Mr Sandman Bring Me a Dream" were collected together and exhibited overseas. The exhibition had been arranged by the first respondent and was held in July 1981. In late 1981 the applicant resigned from his employment and returned to live in England. Thereafter arrangements were made for another touring exhibition. By this time all the paintings included in "Mr Sandman Bring Me a Dream" had been acquired by Mr Robert Holmes a Court for his private collection. The Australia Council agreed to help finance a touring exhibition of the paintings. It was a condition of the Australia Council's grant of financial assistance that a suitable catalogue should be produced to accompany the exhibition. Accordingly, arrangements were made by the second respondent for the publishing of "Papunya". Mr Holmes a Court's paintings were exhibited over a period from 1982 to 1985 in Bonn, Bayreuth, Paris, Lisbon, Vienna, The Hague and Copenhagen. Foreign language editions of "Papunya" were produced in French, German and Portuguese. The production of "Papunya" did not come to the applicant's attention until some time in 1983.

2. Mr Anthony Wallis, who was the managing director of the first respondent at the relevant time, gave evidence, which I accept, that the applicant assisted in the production of "Papunya" to the extent that he supplied some photographs which had been lost by the printer. Mr Wallis said that it was his decision to delete the Introduction from "Papunya" and to include the applicant's name as the editor of it. When asked why he had done that, he said that he thought "it was a polite thing to do for somebody who had contributed to the whole project. The editor was the best title I could think of." He also said: "It was just that he had worked with us on both publications and that was the best way I could think of acknowledging his work."

3. It was conceded, correctly in my opinion, that one or other of the respondents is the owner of the copyright in both "Mr Sandman Bring Me a Dream" and "Papunya". It is plain that the two works are substantially similar. In these circumstances the dispute which brings the parties to court might fairly be described as a storm in a teacup. I am not persuaded that the publication of "Papunya" has caused the applicant any damage. Nevertheless, it is necessary to consider whether the applicant has established a breach by the respondents of either sub-s.52(1) of the Trade Practices Act or para. 191(a) of the Copyright Act.

4. I turn first to consider the claim that the respondents have engaged in deceptive or misleading conduct. The deception is said to arise from the circumstance that the applicant is described in "Papunya" as the editor of that work. It was asserted that he was not the editor of it and that the statement on the frontispiece of the catalogue that he was the editor was conduct proscribed by sub-s.52(1).

5. In my opinion there is no substance in this claim. The applicant was plainly responsible for the compilation of "Mr Sandman Bring Me a Dream" and can fairly be described as its editor. Because there is such a close correspondence between the contents of the two catalogues "Papunya" can fairly be described as a second edition of its predecessor. I do not think the omission of the Introduction from "Papunya" is of such significance as to make it misleading or deceptive to describe of the applicant as the editor of it. He remained the person whose ideas and efforts had led to the selection of virtually all the material which appeared in it.

6. It is true that "Papunya" was published after the applicant had left his employment with the first respondent. But it was the work which he performed during the course of his employment which virtually determined the form and contents of "Papunya". A person who was fully informed of all the circumstances which led up to the compilation of the catalogues would regard the applicant as the editor of both. It is plain from the frontispiece of both works that they were published by the respondents. I do not think that a reader of "Papunya" would necessarily assume that its editor had selected its title. If he directed his mind at all to the question whether the title had been selected by the publishers or the editor, he would probably conclude that the title was chosen by the publishers. It was therefore not misleading or deceptive of the respondents to state on the frontispiece of "Papunya" that the applicant was the editor of it, notwithstanding that he had not chosen the title.

7. Moreover, I do not think it was misleading or deceptive of the respondents to delete the Introduction from "Papunya". It is true that the applicant was not responsible for, and did not approve of, the omission of the Introduction. However, I do not think that a person reading the catalogue and seeing the name of the applicant as its editor would believe that he had determined every detail of its contents.

8. In the case of a newspaper, the mere fact that a person is appointed its editor does not give him control over its name or the material to be inserted in it: Halsbury, Laws of England, (4th edn) 1058. I can see no valid reason why a different rule should apply to an art catalogue prepared by an employee for his employer.

9. With hindsight, it might have been more accurate for a note to have been placed on the frontispiece of "Papunya" stating that it was based on "Mr Sandman Bring Me a Dream", of which the applicant was the editor. The failure to make such a notation in "Papunya" was no doubt due to the belief, correctly held, that the publishers owned the copyright in both works. However, I do not think the failure to identify with exactitude the precise nature of the work performed by the applicant in the compilation of "Papunya" made the description of him as its editor false or misleading. Under all the circumstances, the applicant was fairly described as its editor. For these reasons I am of the opinion that the claim under the Trade Practices Act fails.

10. I turn now to consider the claim under para. 191(a) of the Copyright Act. Section 191 provides as follows:
    
    

"191 Where a work in which copyright subsists has been altered by a person other than the author of the work, a person is, by virtue of this section, under a duty to the author of the work not to -

(a) publish, sell or let for hire, or by way of trade offer or expose for sale or hire, the work as so altered, as being the unaltered work of the author; or

(b) publish, sell or let for hire, or by way of trade offer or expose for sale or hire, a reproduction of the work as so altered, as being a reproduction of the unaltered work of the author,

if, to his knowledge, it is not the unaltered work or a reproduction of the unaltered work, as the case may be, of the author."

1. In my opinion para. 19(a) is not infringed unless an alteration is a material alteration having regard to the object with which the enactment was passed. In Carlton Illustrators v Coleman & Co. Ltd. (1911) 1 KB 771 Channel J. considered the meaning of sub-s.7(4) of the Fine Arts Copyright Act, 1862 (Imp.) which provided, in part, as follows:
   
   

"(4.) Where the author or maker of any painting, drawing, or photograph . . . . shall have sold or otherwise parted with the possession of such work, if any alteration shall afterwards be made therein by any other person, by addition or other wise, no person shall be at liberty during the life of the author or maker of such work, without his consent, to make or knowingly to sell or publish, or offer for sale, such work or any copies of such work so altered as aforesaid, or of any part thereof, as or for the unaltered work of such author or maker."

1. It will be seen that there is a broad correspondence between this provision and para. 191(a) of the Copyright Act.

2. At p 780 Channel J. said:
   
   

"To come within the enactment an alteration must be a material alteration having regard to the object with which the enactment was passed; and that which would be material in that sense would be an alteration which might affect the credit and reputation of the artist. To my mind that is what is prohibited. I do not think that it would be necessary to find in any particular case that the alteration had affected the character and reputation of the artist; it is sufficient if the alteration is of such a character that it might affect his character and reputation."

1. Since the respondents (or one of them) were the owners of the copyright of "Mr Sandman Bring Me a Dream" they were entitled, without the consent of the applicant, to publish later editions of it, making such omissions and changes in the original work as would not injure the applicant's reputation. See Copinger & Skone James on Copyright, 12th ed., para. 1158 and Carlton Illustrators (supra) at p 780.

2. The gravamen of the applicant's case under para.191(a) is that by publishing "Papunya" with his name as the editor on the frontispiece the respondents represented that it was his unaltered work, whereas the deletion of the Introduction and the change in the title were material alterations not made by him.

3. Counsel for the respondents argued that para. 191(a) of the Copyright Act had no application to the present case because the facts did not establish that the respondents had published "Papunya" as being the unaltered work of the applicant. It was argued that all the respondents did was to put forward the name of the applicant as the editor of the catalogue and that to do this was not to represent that it was his unaltered work. I have not found this part of the case easy to decide but I have come to the view that the claim under para. 191(a) of the Copyright Act also fails. In my opinion the action of the respondents in publishing and selling "Papunya" with the name of the applicant as its editor did not amount to a representation that it had not been altered. It is a compilation of the work of several contributors and many artists. Whilst the applicant was its editor, the publishers owned the copyright in it. I do not think that a person who sells such a work is to be taken as selling it as the unaltered work of its editor. There are often sound reasons why the publisher of a book may alter the work of the person who has compiled it. For example, considerations of cost may lead a publisher to reduce the size of a book by eliminating some material which the editor would prefer to be included.

4. In Preston v Raphael Tuck & Sons, Limited (1926) 1 Ch 667 at 674 Tomlin J. said of sub-s. 7(4) of the Fine Arts Copyright Act (the terms of which are set out above):
   
   

"I think that to satisfy the words 'knowingly to sell or publish any copies of such works so altered as aforesaid as or for the unaltered work of such author or maker,' there must be found a selling or publishing in conditions in which, to the knowledge of the seller or publisher, there is made, either expressly or by necessary implication, a representation that the author is the author of the work sold or published in the form in which it is sold or published."

1. I do not think that by publishing and selling "Papunya" the respondents expressly or by implication represented that the applicant was its author in the form in which it was published and sold. "Papunya" was, after all, a catalogue consisting for the most part of reproductions of paintings. It was not a treatise on Aboriginal art or paintings. The reader of such a treatise might well assume that it is the author's unaltered work, in the absence of an indication to the contrary. But he would make no such assumption in respect of an art catalogue which does not contain the name of its author but merely states that it was edited by some person. The fact that a reader of "Papunya" would not regard it as being necessarily the unaltered work of its editor is not conclusive on the question whether para. 191(a) has been infringed since the purpose of the provision is to protect authors, not readers. Nevertheless it fortifies my opinion that on the facts of the present case no breach of para. 191(a) has been established.

2. Moreover, I am not satisfied that the omission of the Introduction could in any way affect the applicant's reputation. Its omission does not diminish the quality of the work. It is true that "Papunya" without the Introduction is a minimally different work from "Mr Sandman Bring Me a Dream". But neither that circumstance, nor the alteration in the name of the work, would have a tendency to affect the applicant's reputation.

1. For these reasons the application must be dismissed. The applicant must pay the respondents' costs.