Oehlschlager, Jurgen August Robert v Landcare Australia Ltd
[1998] FCA 300
•31 MARCH 1998
FEDERAL COURT OF AUSTRALIA
COPYRIGHT - applicant owned copyright in certain designs - allegation that the second respondent had deliberately copied applicant’s design - concept of a pair of hands viewed in silhouette with fingers encircling negative space - negative space suggests outline of the land mass of Australia.
Copyright Act 1968 (Cth)
Ancher, Mortlock Murray & Wooley P/L v Hooker Homes Pty Ltd (1971)
2 NSWLR 278 cited
University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601 cited
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 followed
JURGEN AUGUST ROBERT OEHLSCHLAGER v LANDCARE AUSTRALIA LIMITED (ACN 008 656 513) AND OTHERS
NO SG 33 OF 1996
O’LOUGHLIN J
ADELAIDE
31 MARCH 1998
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
NO SG 33 OF 1996
BETWEEN:
JURGEN AUGUST ROBERT OEHLSCHLAGER
ApplicantAND:
LANDCARE AUSTRALIA LIMITED ACN 008 656 513
First RespondentCLIFF BURK
Second RespondentLANDCARE AUSTRALIA LIMITED ACN 008 656 513
Cross-claimantJURGEN AUGUST ROBERT OEHLSCHLAGER
Cross-respondentJUDGE:
O’LOUGHLIN J
DATE OF ORDER:
31 MARCH 1998
WHERE MADE:
ADELAIDE
THE COURT ORDERS THAT:
The application be dismissed.
Further consideration of proceedings reserved.
The matter otherwise be adjourned sine die.
Liberty to any party to apply including liberty to relist on seven days notice.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
NO SG 33 OF 1996
BETWEEN:
JURGEN AUGUST ROBERT OEHLSCHLAGER
ApplicantAND:
LANDCARE AUSTRALIA LIMITED ACN 008 656 513
First RespondentCLIFF BURK
Second RespondentLANDCARE AUSTRALIA LIMITED ACN 008 656 513
Cross-claimantJURGEN AUGUST ROBERT OEHLSCHLAGER
Cross-respondent
JUDGE:
O’LOUGHLIN J
DATE:
31 MARCH 1998
PLACE:
ADELAIDE
REASONS FOR JUDGMENT
The applicant in these proceedings Mr Jurgen August Robert Oehlschlager, carries on business in Gawler and the Barossa Valley as a master signcraftsman, screen printer and graphic designer. For the last thirty five years or so, he has been continuously engaged in his business which he has described as “painting signs for businesses, associations, schools and people in the Gawler and Barossa area and down to Elizabeth and Smithfield”.
In 1983 Mr Oehlschlager prepared a design that he called “All Hands Shape Australia”. That design is Figure No 1 in the attachment to these reasons (“the 1983 design”). It shows, in silhouette, two hands, cupped together, generally in the shape of a pyramid so that the negative space within the outline of the hands represents an outline of Australia. During that year, Mr Oehlschlager published his design widely. He forwarded copies of it to politicians, members of the media and business houses in his efforts to have it accepted as a national design or symbol.
In 1984 the design appeared, by licence, on the Programme for a concert that was held in Gawler to celebrate the 125th Anniversary of the “Song of Australia”. Mr Oehlschlager also forwarded a copy of it to the Australian Broadcasting Commission suggesting that it might be incorporated in the record cover for the “Song of Australia”. He also enclosed in that letter copies of clippings from local newspapers and other examples of how his design had been used. In late 1987 and early 1988 the design, or a derivation of it, appeared in “the Advertiser” newspaper and “The Bunyip”, a local weekly paper circulating in the Gawler and Barossa areas. Mr Oehlschlager listed eighteen dates on which the design appeared in the Advertiser between December 1987 and 7 May 1988. The design appeared in “The Bunyip” on 7 and 13 April and 16 June 1988.
Mr Oehlschlager continued to work on his design and in 1988 he prepared and extensively publicised another version which appears as Figure No 2 in the attachment to these reasons (“the 1988 design”). In addition, between 1983 and 1988, Mr Oehlschlager also prepared several other designs based on the same concept of hands encircling Australia. These, together with Figure Nos 1 and 2 are hereafter sometimes referred to as “the drawings”. One or other of the drawings has been published since 1983 on signs and flags in and about Mr Oehlschlager’s business premises in Gawler and, with his licence, by various businesses, charities and Freemasons’ lodges in and around Gawler.
Mr Oehlschlager claims that each of the drawings is an original artistic work in which copyright subsists and that he is the owner of the copyright in the drawings. It is the case for the applicant that the second respondent, Mr Cliff Burk, (“Mr Burk”) deliberately copied one or other of the drawings and submitted the copied work to the first respondent, Landcare Australia Limited (“Landcare”) who has since used it as its official Logo. Relying on the provisions of the Copyright Act 1968 (Cth) (“the Act”), he seeks damages and an account of the profits earned by each of the respondents.
Landcare was incorporated in the Australian Capital Territory on 10 October 1989 as a non-profit company limited by guarantee. One of the principal objects behind its incorporation is the development of a Landcare ethic amongst all Australians; another object is the encouragement and stimulation of public awareness of the importance of caring for the land and the adoption of Landcare principles. An important task in the early stages of Landcare’s incorporation was the development of a communications and promotion strategy in order to pursue those objectives. In turn, this led to a decision that Landcare should have a suitable national Logo. In early 1990 Landcare invited a small group of graphic designers to submit proposals for such a Logo. In March 1990 Mr Burk, who conducted a graphic design business, submitted a number of logo designs, all of which depicted two hands that were cupped together in such a way that they represented the shape of Australia.
Mr Burk’s design, that is, the design that has led to the institution of these proceedings (“the Landcare Logo”) appears at Figure No 3 in the attachment to these reasons. In his defence Mr Burk has acknowledged that he is the author of the Landcare Logo. However, he denies that it is a reproduction of any one or more of Mr Oehlschlager’s drawings. He likewise denies that it is a reproduction of a substantial part of any one or more of them. Landcare has also denied any breach of copyright and has filed a cross-claim against Mr Oehlschlager. In that cross-claim Landcare has alleged that Mr Oehlschlager has engaged in conduct that is misleading or deceptive, or, in the alternative, that is likely to mislead or deceive. The challenged conduct is alleged to be Mr Oehlschlager’s claims that he is the owner of the copyright in the Landcare Logo and his representations to that effect to numerous people.
At the request of the parties, the trial in this action proceeded only on the question of liability on the applicant’s claim. The issue of the cross-claim was deferred as were questions of any damages that might arise on either the claim or the cross-claim.
When asked to explain how the idea of the Landcare Logo was conceived, Mr Burk said that he could recall sitting in his office one evening contemplating the Landcare tender with his hands together and to the front. In his witness statement he said:
“I noticed that when my hands came together they formed a shape which looked like a map of Australia”
He said that he then photocopied his hands and used their outlines in a variety of positions, together with a map of Australia, until he was satisfied with the result. On 26 March 1990 he submitted three designs to Landcare, based on the theme of hands encircling Australia. Between March and May 1990, Mr Burk worked on further designs; most, but not all, were developments of the original theme. In May 1990, Landcare made its choice; Mr Burk was awarded the contract. He thereafter commenced preparations for layouts for stationery.
As Mr Fairbanks, Landcare’s secretary, said in his affidavit sworn 5 November 1997:
“To me, the image of a pair of hands forming an outline of Australia encapsulated Landcare’s objectives, which involved people caring for, nurturing, protecting and restoring the land in which they lived.”
Mr Burk said that about a year later, in March 1991, he received a phone call from Mr Bill Fairbanks of Landcare, informing him that Landcare had received a complaint from a Mr Bilney that the Landcare Logo was a copy of an original design that Mr Bilney had earlier composed. Nothing seems to have come of that complaint. Eight months or so later, Mr Burk received advice of another like complaint; on this occasion the complainant was Mr Oehlschlager. As to Mr Oehlschlager and his design, Mr Burk had this to say in his witness proof:
“The first time I became aware of the Applicant, Mr Oehlschlager, was in November 1991 when Landcare sent me a copy of a letter that they had received from Mr Oehlschlager dated 23 October 1991.
I did not copy the design of Mr Oehlschlager and was unaware that such design existed until I received a copy of the letter from Mr Oehlschlager to Landcare dated 23 October 1991. I heard nothing further in respect of Mr Oehlschlager until the present proceedings were issued in May 1996.”
Mr Burk went on to say that a month before the institution of these proceedings, in April 1996, his company moved its offices from Kirribilli to its present location at Crow’s Nest. As part of the move, he discarded files and papers that he considered obsolete. As almost five years had passed since the time of the complaints, and not having heard anything since, Mr Burk destroyed his company’s file that contained the sketches and drawings that he had prepared in respect of the Landcare Logo. Mr Burk’s conduct in doing this was severely criticised. It was submitted that he was well aware that complaints had been made about the originality of his work; he had also been interviewed by members of the Australian Federal Police and solicitors from Crown agencies with respect to those complaints. Surely, with such a history, so it was argued, a person in Mr Burk’s position would retain his original and evolutionary sketches and art work to vindicate his innocence. Despite the initial appeal of this argument, I have, after reflection, rejected it. At the end of the day, I have come to the conclusion that I believe Mr Burk. I am satisfied that he was a truthful witness.
Mr Oehlschlager, Landcare and Mr Burk each called expert witnesses in support of their respective cases. Mr Littlejohn, who gave evidence on behalf of the applicant, is a lecturer in Graphic Communication at the University of South Australia, specialising in corporate identity and package design. He had worked as a graphic design visualiser and typographer for a number of studios before establishing his own consultancy in Scotland in 1970. In 1983 he was appointed to the position of Director of Studies at the Cleveland College of Art and Design in the United Kingdom and took up his current position in South Australia in 1986.
Mr Littlejohn performed an interesting experiment. He gave a project that he called “Hands around Australia” to students who were then in the first semester of their third year of the Bachelor of Visual Communications course. The students were handed a map of Australia and the concept of “Hands around Australia” was explained to them; they were given half an hour to design possible solutions to this concept. They were not shown Mr Oehlschlager’s drawings nor the Landcare Logo.
As Mr Littlejohn stated, the results of this exercise showed that a variety of approaches could be taken to the concept. He added that none of the fourteen students was “close” to Mr Oehlschlager’s drawings or to the Landcare Logo. I would have thought, as an independent observer, that two of them, those of Melanie and Marnie, were conceptually, reasonably similar. Their works appear as Figure No 4 and Figure No 5 respectively in the attachments to these reasons. Be that as it may, as a second exercise, Mr Littlejohn gave the students a copy of Mr Oehlschlager’s drawing (Figure No 2) instructing them to redesign the symbol but using it as a base for their interpretation. They were not given a copy of Landcare’s Logo. Mr Littlejohn’s assessment of the second exercise is that it showed that most of the students chose to simplify or stylise the hands and arrived at solutions very similar to the Landcare Logo.
Mr Littlejohn expressed his final opinion in his report dated 10 October 1997. He said:
“In my opinion the Landcare design appears to be a substantial reproduction of Mr Oehlschlager’s work. The parts of the Landcare design which coincide with Mr Oehlschlager’s drawing are numerous and important in establishing the character and proportions of the Landcare design. The stylisation and also the treatment of the fingers at the top and of the thumbs at the bottom, are an adjustment to achieve the internal map. These adjustments are cosmetic and insignificant and do not derogate the important parts of Mr Oehlschlager’s drawing which in my opinion appear to have been the reference on which the Landcare design is based.”
Mr Donald Goodwin, a graphic artist, gave evidence on behalf of Landcare. He has worked as a graphic designer since 1961. From 1976 to 1981 and again from 1990 to date he has also worked as an educator of students of graphic design. Mr Goodwin stated that he had viewed Mr Oehlschlager’s 1983 and 1988 designs together and compared them with Landcare’s Logo. On the subject of similar concepts he said:
“Over the last thirty years, I have viewed a large number of designs of different authors. I am aware of a number of instances where designers independently conceive similar or identical design concepts.”
Mr Goodwin went on to state:
“I have frequently seen designs featuring human hands. Some well known designs include the logos for St Vincent de Paul, Amnesty International and the United Nations. I am aware that the use of hands has historically proliferated in religious art. For example, Frank Lloyd Wright designed a chapel the shape of which was based on the concept of hands in prayer.”
Mr Goodwin also exhibited to the affidavit that he affirmed on 12 November 1997, copies of designs attributed to a Mr Bruce Bilney and a Mr David Maher. Mr Bilney, who had earlier complained to Landcare, presented ten designs, each showing a literal depiction of hands forming the outline of Australia but with a different motif within the outline. Thus, one had a car: another a kangaroo: a third had a representation of Ayers Rock and so on. Mr Maher’s design was, on the other hand, closer to those of Mr Oehlschlager and Mr Burk yet quite different. It remains of some interest however, because it so clearly portrays the concept of hands encircling Australia. It is reproduced as Figure No 6 in the attachment to these reasons and one of Mr Bilney’s - that of the car - is Figure No 7.
Mr Goodwin acknowledged that there were similarities in Mr Oehlschlager’s drawings and in the Landcare Logo. He pointed to the following features:
“in both designs the shape of the outline of Australia resembles the shape of the Australian continent;
both designs depict a representation of Tasmania;
in both designs, the image of the hands portray a strong likeness to human hands;
in both designs the shape and proportions of the hands are broadly similar.”
Mr Goodwin was of the opinion that once a designer had conceived the idea of designing a logo that depicted a pair of hands in profile that formed the outline of Australia, there would be a limited number of ways in which that notion could be expressed. He justified that statement by asserting that human hands in profile and the outline of the continent of Australia (including Tasmania) have “fairly uniform shapes”.
Mr Goodwin was of the opinion, based on his experience, that the fact that Mr Oehlschlager’s drawings and Landcare’s Logo involved the same concept, did not lead to the conclusion that the concept for the Landcare Logo originated from the applicant’s drawings. He went on to explain, that despite similarities, the drawings and the Logo featured many differences. He pointed to the hands in Mr Oehlschlager’s drawings - the scalloping of the fingers, the depiction of fingernails and joints of fingers. By way of contrast, the Landcare Logo uses graphic imagery in silhouette to achieve the effect of the hands; the thumbs and the tops of the forefingers are positioned differently and the positioning of Tasmania is quite different.
Mr Goodwin also perceived differences in the angles at which the forefingers met the palms of the hands. He expressed the opinion that the Landcare Logo was “smoother, more symbolic and more open” than Mr Oehlschlager’s drawings. Mr Goodwin then said:
“In my view, the combination of differences between the two designs results in the overall effect of the designs being quite different. As a result of the detail applied to the hands in the Applicant’s Design, the focal point of the Applicant’s Design appears to be the pair of hands, the shape of Australia being a secondary aspect of that design. In the Landcare Logo the weight of the hands against the shape of Australia is more balanced, so that the focus is more equally on both aspects of the design.”
Mr Ian Selwyn Kidd is a graphic designer who has worked in that industry since 1959. He was called as a witness on behalf of Mr Burk. His qualifications, like those of Mr Littlejohn and Mr Goodwin, are impressive. His conclusions were, like Mr Goodwin’s, diametrically opposed to those of Mr Littlejohn. Mr Kidd said that Mr Oehlschlager’s drawings and Mr Burk’s design “are not technically so close that it can be concluded artistically that Mr Burk copied the design of Mr Oehlschlager”. He gave as his reasons for coming to that conclusion the following explanations:
“4.1The 2 components of the design (the map of Australia and 2 hands) are fixed. The border of Australia is an objective fact and a hand is a hand. Once the concept is fixed, there are limited ways in which you can artistically express a particular concept. It is not all that difficult for a number of people to arrive at something visually similar as you do not have much to manoeuvre with. Indeed, to come up with a different artistic expression of the same concept would be more difficult than to come up with similar artistic expressions. Any good designer would aim to create a design which is visually pleasing while performing a certain task. Designers would only be able to achieve this by adopting a similar attitude, and weight of the drawing, of the hands as artistic choice is limited.
4.2Compared to Mr Oehlschlager’s design, Mr Burk’s design is more stylised and refined and exhibits a more elegant and simplified style. Given that the concept is fixed and that the number of ways to execute that concept are limited (see paragraph 4.1 above), it is not possible to conclude that Mr Burk’s design is a substantial reproduction of Mr Oehlschlager’s design.”
Mr Kidd was given the opportunity to examine the work of Mr Littlejohn’s students. It was his opinion that the students’ designs in the first exercise were not that different from either Mr Oehlschlager’s or the Landcare Logo. He considered that given more time, it would have been likely that their designs would closely resemble the design of Mr Burk “as it would allow them to refine, stylise and simplify their initial rough drawings”.
Mr Kidd and Mr Littlejohn were at odds on another important issue. Mr Littlejohn was not prepared to allow for the probability that this was a case of mere coincidence. Mr Kidd had a different view:
“From my own experience as a designer, I know that it is not uncommon for designers to come up with the same design independently and even simultaneously.”
The concept of using hands as a symbol of care is as old as the Bible and there is no originality in the idea of combining hands with a map of, or stylised representation of Australia. Evidence was placed before the Court of examples of such a use. Perhaps it was the recognition of this fact that caused counsel for Mr Oehlschlager to present his case - not upon the premise that Mr Burk had stolen Mr Oehlschlager’s idea or concept and not upon the premise that there had been an accidental or unintentional copying - but upon the premise that Mr Burk had deliberately copied Mr Oehlschlager’s drawings. In his statement that was received as part of his evidence in chief Mr Oehlschlager said:
“I do not believe that Mr Burk could have achieved the Landcare drawing in so short a space of time unless he copied my drawing.”
I have no doubt that Mr Oehlschlager is a witness of truth who genuinely believes that Mr Burk has copied his drawings. I was much impressed with his earnestness as he gave his evidence. He was very nervous but he was nevertheless able to convince me of his belief in his cause. There are similarities in the works of Mr Oehlschlager and Mr Burk: that is obvious to the naked eye and Mr Oehlschlager demonstrated it by the tracing exercise that he undertook whilst giving his evidence. I am satisfied that each of his drawings that are reproduced as Figure Nos 1 and 2 in the attachments is an “artistic work” within the meaning of that term as contained in s 10 of the Act and that Mr Oehlschlager was the author of each of them: see also s 127 of the Act. As Mr Oehlschlager’s name has appeared on several copies of the drawings, he is presumed, for the purposes therein set out, to be the author of the work. I am also satisfied, viewing each drawing as a whole, that copyright subsists in each of them and that Mr Oehlschlager, as their author, is the owner of the copyright: subs 35(2) of the Act. Whilst there is no originality in the concept of hands caring for Australia, there is sufficient originality in the manifestation of them in Figure Nos 1 and 2.
The review and development in the design between 1983 and 1988 does not present any difficulty to Mr Oehlschlager; an author of a work is not precluded from improving on the original: Ancher, Mortlock Murray & Wooley P/L v Hooker Homes Pty Ltd (1971) 2 NSWLR 278 at 281 per Street J. The word “original” was explained by Peterson J in University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601 at 608-609 in this way:
“The word “original” does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of “literary work” with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author.”
That definition was approved by Lord Reid in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 277.
There was no evidence that Mr Burk ever saw any of Mr Oehlschlager’s drawings. Nevertheless it was submitted on Mr Oehlschlager’s behalf that the proven publication of his drawings coupled with what he describes as the striking similarities between the two works is sufficient to prove copying. Counsel for Mr Oehlschlager claim that the similarities in detail are overwhelming and that the inference of copying is “irresistible”.
The applicant’s case relied upon the following similarities:
the fundamental points and lines upon which each drawing is constructed are identical
the Landcare Logo’s right hand corresponds with Mr Oehlschlager’s 1988 design at the back of the right hand, the first knuckle and the tip of the finger
where Mr Oehlschlager depicted the second finger of the right hand, the outline of Landcare’s Logo shows only one finger but it follows Mr Oehlschlager’s second finger very closely
the “weight” of the left hand in each design is the same in that the thickness of the left finger in Landcare’s Logo is virtually the same as the thickness of Mr Oehlschlager’s two left fingers
even though the Landcare map and Mr Oehlschlager’s map differ, the outside lines of the hands nonetheless corresponded.
It was submitted that Mr Burk must have had, in some unspecified way, access to Mr Oehlschlager’s 1988 design. I find that that design was publicised in late 1988 at the applicant’s house in Gawler, on stickers on his car, on business and Christmas cards, on pamphlets and on letterheads. It was also publicised at the exhibition in the Constitutional Museum. But the evidence does not warrant a finding that such publication came to the attention of Mr Burk who was carrying on his business in Sydney. Mr Burk was an American national who, having married an Australian, migrated to Australia some four years or so before he received his commission from Landcare. He had never visited South Australia. The type of publicity upon which Mr Oehlschlager relies was regional. Most of it was centred on Gawler and the Barossa Valley; the balance was most unlikely to have gone beyond the borders of South Australia. There is no evidence that would point to Mr Burk ever having visited South Australia or ever having seen any publication of Mr Oehlschlager’s drawings.
It was submitted that the treatment by Mr Burk in thickening the fingers to suggest more than one finger undermines the respondents’ evidence that there is limited artistic scope in drawing the hands. I do not follow that submission. In fact, it suggests the opposite to me. If the general concept is to have a pair of hands encircling Australia so that the space between the hands is to represent the shape of Australia it would seem to me that the artist is limited in choice, in the first instance, to a literal or stylised presentation and then to an actual depiction of one or more fingers or an overall silhouette. Mr Oehlschlager chose a literal interpretation with a depiction of two fingers; Mr Burk presented a stylised design in silhouette form. It was next submitted that the omission of the appearance of the second finger whilst retaining, very nearly, the same line, also indicated copying. I do not accept that proposition. I have already set out in sufficient detail the particulars of the dissimilarities that are sufficient to overcome this complaint.
Although I have come to the conclusion that Mr Oehlschlager must fail in this litigation, I am aware that he and his advisers, including, in particular, Mr Littlejohn, genuinely believe in his cause. I respect their opinions and I respect their honesty. But I also respect the opinions and the honesty of Mr Burk and the two experts, Mr Goodwin and Mr Kidd. The question whether the Landcare Logo is sufficiently similar to any one of Mr Oehlschlager’s drawings to amount to a reproduction of them or a substantial part of anyone of them must be determined by the Court. However, in the performance of that exercise, the Court is entitled to have regard to the views of the expert witnesses. The onus being on Mr Oehlschlager to satisfy the Court that this was a case of deliberate copying, I am compelled to conclude that he has failed to meet that onus. It has not been established to my satisfaction that the Landcare Logo is sufficiently similar to any one of Mr Oehlschlager’s drawings to amount to a reproduction or a reproduction of a substantial part. Mr Oehlschlager must prove both copying (whether conscious or sub-conscious) and substantial reproduction. He has not been able to satisfy me on either. But even if I be wrong in my conclusion that there is no sufficient evidence to justify a finding of copying, there remains another hurdle confronting the applicant: I accept Mr Burk as a witness of truth. I accept his evidence that he did not copy Mr Oehlschlager’s work. I accept his evidence about the manner in which he conceived the idea for and compiled the design for the Landcare Logo.
The application is dismissed. I will hear the parties on consequential issues, including Landcare’s cross-claim and costs.
I certify that this and the preceding eleven (11) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice O'Loughlin
Associate:
Dated: 31 March 1998
Counsel for the Applicant: Mr H A L Abbott Solicitor for the Applicant: Messrs Rudall & Rudall Counsel for the First Respondent: Mr D K Catterns QC Solicitor for the First Respondent: Messrs Freehill Hollingdale & Page Counsel for the Second Respondent Mr M F Blue Solicitor for the Second Respondent Messrs Hardings Date of Hearing: 17-19 November 1997 Date of Judgment: 31 March 1998
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