Vella v Cummins, McCullough, Levick, Cummins
[2001] QSC 246
•18 June 2001
SUPREME COURT OF QUEENSLAND
CITATION: Vella v Cummins, McCullough, Levick, Cummins [2001] QSC 246 PARTIES: DEAN LENARD VELLA
(Applicant)
GREG CUMMINS
(First Respondent)
DAVID McCULLOUGH
(Second Respondent)
DONALD LEVICK
(Third Respondent)
JOELLE CUMMINS
(Fourth Respondent)FILE NO/S: 39 of 1999 DIVISION: Trial PROCEEDING: Trial ORIGINATING COURT: Federal Court, Sydney DELIVERED ON: 18 June 2001 DELIVERED AT: Cairns HEARING DATE: 7-9 February 2000
2-5 May 2000
5 June 2000
11-13 December 2000JUDGE: Jones J ORDER: 1. I declare the applicant is the owner of a copyright subsisting in the artistic works set out in Schedule 1 to the Statement of Claim.
2. I declare that the first and fourth respondents have infringed the applicant’s copyright in the said works other than the abstract paintings.
3. I order that the first and fourth respondents whether by themselves, their servants or otherwise be restrained from reproducing or authorising the reproduction of works which infringe the applicant’s copyright in the said works without the licence of the applicant.
4. I order that the first and fourth respondents deliver up to the applicant for destruction such of the works made in breach of the applicant’s copyright as remain in their respective possession, custody or control.
5. I adjourn the further hearing of other applications including the question of costs to a date to be fixed.
6. The further hearing may be brought on by any party giving 7 days notice to the other parties.
CATCHWORDS: INTELLECTUAL PROPERTY – COPYRIGHT AND DESIGNS – INFRINGEMENT – INJUNCTIONS – DAMAGES - whether first and fourth respondents infringed applicant’s copyright in artistic works namely paintings – whether paintings reproduced, authorised to be reproduced or substantially reproduced without licence of applicant – whether sufficient level of objective similarity to amount to reproduction, adaptation or copying – whether similarities sufficiently close, numerous or extensive – whether deliberate intention to copy.
Copyright Act 1968 (Cth), s14(1)(b)
Anchor, Mortlock, Murray & Woolley Pty Ltd –v- Hooker Homes Pty Ltd [1917] 2 NSWLR 278, considered
Designer Guild Limited –v- Russell Williams (Textiles) Ltd (2000) UKHL 58, applied
S.W. Hart & Co. Pty Ltd –v- Edwards Hotwater Systems (1985) 159 CLR 466, consideredCOUNSEL: Mr S Archer and Ms S Dowling for the Applicant
Mr D Morzone and Ms H Sungaila for the First and Fourth RespondentsSOLICITORS: Coudert Brothers for the Applicant
Thomas Stevens & Co. Solicitors for the First and Fourth Respondents
The applicant, Dean Leonard Vella, seeks an injunction and damages for infringement of copyright against the first respondent, Greg Cummins, and his daughter, Joelle Cummins, the fourth respondent. The claims against the second and third respondents have been disposed of by discontinuance or by agreement.
The injunction seeks to restrain the first and fourth respondents from “infringing the applicant’s copyright in specified paintings by reproducing or authorising the reproduction of those works or a substantial part thereof without the licence of the applicant.”
The statement of claim in its final amended form alleges infringing copies were made of 27 paintings in which the applicant claims copyright. At the conclusion of his address, Mr. Archer of Counsel appearing for the applicant identified ten works of the applicant along with the alleged infringing work to which reference could be made to determine the issues. The relevant works (using the final Statement of Claim) are as follows:-
Original Vella WorkAllegedly infringed by –
IA(1) - Irises IIA(1), IIIA(3), IIIA(6)
IA(4) - Irises in red bowl IIA(1)
IA(5) - Irises in blue bowl IIIA(2)
IB(1) - White daisies (ex 2) IIB(1), (2), (3)
IC(5) - Yellow gerberas IIC(2), (3), (5)
IC(6) - Yellow gerberas IIC(1)
IC(10) - Yellow gerberas IIC(3)
ID(10) - Mixed bunch in red bowl IID(3)
ID(14) - Mixed bunch in yellow bowl IID(9)
IF(1) - Abstract work IIF(1)
For convenience I will refer to paintings by these identifying numbers rather than the exhibit marking assigned when the paintings were tendered.
The claim against the fourth respondent is now limited to 4 of her paintings and is incidental to the claim against the first respondent insofar as it raises no different issues relating to copyright.[1] Reference to the claim against the fourth respondent will be made in these reasons only after a determination of the issues affecting the first respondent.
[1]See Defences filed 24 Jan 2000; Amended Defences filed 7 Feb 2000
This action was commenced in August, 1999 in the Federal Court at Sydney where an order was made on 9 September 1999 by consent that the action be transferred to the Supreme Court of Queensland in Cairns. This order was made upon the first respondent giving certain undertakings without admission of liability.
On 26 November, 1999 an application was made for a declaration that the first respondent was in contempt of the undertakings given to the Federal court and for an order that Joelle Cummins be joined as the fourth respondent. This application was based on allegations that paintings under the name Joelle Cummins were being sold at the Cairns Night Markets and that works of the first respondent were being offering for sale at the Cairns Central Gallery.
On 30 November, 1999 orders were made by consent which included undertakings in slightly different terms being given by both the first and fourth respondents.
The original statement of claim (doc. 37) was filed on 17 December, 1999. Defences were filed on 20 January 2000 and amended Defences on 7 February, 2000. The final pleadings consisted of a Further Further Amended Statement of Claim and an Amended Defence both filed at the commencement of the hearing. They will hereinafter be referred to respectively as the Statement of Claim and Defence.
From time to time allegations of breaches by the first respondents of his undertakings have been made and have prompted further applications for findings of contempt. These matters remain to be considered after their determination of the principal issues.
The trial of the action commenced on 7 February, 2000 but the hearing spanned three separate sittings throughout the year concluding finally on 13 December, 2000.
Somewhat surprisingly, at the time this action was commenced, neither party had sought the opinion of an expert as to the similarities between the copyright works and the alleged infringing works and whether the infringing works incorporated a substantial part of the independent skill, labour contributed by the creator of the original. This step was taken by the applicant only in December, 1999 and the first report was furnished in March 2000 after the initial pleadings had been delivered. On behalf of the first respondent expert advice was taken on 25 March 2000 and this report was furnished on 18 April, 2000. This fact has led to the identification of an unnecessarily large number of paintings to be assessed and compared and consequently a degree of prolixity in both the statement of claim and the cross-examination of the expert witnesses. I propose to confine my remarks to the ten paintings which at the end of the hearing were identified by counsel, as the paintings upon which the issues should be determined.
The issues
The applicant contends that the first respondent consciously studied the applicant’s works and thereafter produced paintings which, though not identical, were sufficiently similar to be a reproduction, adaptation or copy of those respective works within the meaning of s.14(1)(b) of the Copyright Act 1968 (“the Act”).
The applicant asks me to infer that there was, on the part of the first respondent, a deliberate intention to copy. This was said to arise not only because of the degree of similarity between the paintings, but also from the behaviour of the first respondent. The allegations as to his behaviour include the nature of his contact with the applicant’s painting, the fact that he produced works under assumed names, that he sought to keep the fact of his authorship from the applicant and his deliberate adoption of identical framing materials. The first respondent gives explanations for these aspects of conduct and asserts that he neither had the intention to copy, nor did he in fact copy, the applicant’s works. He concedes however that he was influenced in what he produced by his having seen the applicant’s paintings on display.
Two expert witnesses gave evidence. They took differing approaches as to what were the significant features of the various works in order to determine whether there was a sufficient level of objective similarity between the compared paintings to permit an inference of copying. Mr. Rees’ report attempted to focus also on the substantiality question. Whilst their respective opinions are instructive, ultimately the first step requires an objective determination of similarity/dissimilarity which might suggest copying and then the more subjective task of determining substantiality.
The approach to be followed was identified by Lord Millett in Designer Guild Limited v Russell Williams (Textiles) Ltd[2] who, after noting the distinction between a passing off action and an action for infringement of copyright, said (at para 41):-
[2](2000) UKHL 58
“41. The first step in an action for infringement of artistic copyright is to identify those features of the defendant’s design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and the differences. The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas. If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features which he alleges have been copied, and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying.
42. Even at this stage, therefore, the inquiry is directed to the similarities rather than the differences. This is not to say that the differences are unimportant. They may indicate an independent source and so rebut any inference of copying. But differences in the overall appearance of the two works due to the presence of features of the defendant’s work about which no complaint is made are not material…..
43. Once the judge has found that the defendants’ design incorporates features taken from the copyright work, the question is whether what has been taken constitutes all or a substantial part of the copyright work. This is a matter of impression, for whether the part taken is substantial must be determined by its quality rather than its quantity. It depends upon its importance to the copyright work. It does not depend upon its importance to the defendants’ work, as I have already pointed out. The pirated part is considered on its own (see Ladbroke (Football) Ltd v William Hill (Football) Ltd. [1964] 1 W.L.R. 273, 293 per Lord Pearce) and its importance to the copyright work assessed. There is no need to look at the infringing work for this purpose.” [3]
[3] See also Lord Hoffman (para 9) There were accordingly two main issues at the trial. First, what, if anything had the designers of (infringing work) copied from (copyright work). Secondly, did what had been copied amount to “the whole or a substantial part” of (copyright work]. See also Francis Day and Hunter Ltd v Bon (1963) Ch. 487 per Diplock LJ at p.623.
This judgment of the House of Lords (which I have found to be most helpful) was handed down only on 23 November 2000 and consequently had not come to the knowledge of counsel at the time of making their submissions. It does not raise any conflict with the principles in earlier cases to which I was extensively referred by counsel for both parties.
The questions to be answered in this case are:-
(i) Are there particular similarities which are sufficiently close, numerous or extensive to suggest copying?
(ii) If so, in the circumstance here where the first respondent had prior access, has he satisfied me they did not result from copying?
(iii) Do the features taken into the first respondent’s work constitute a substantial part of the copyright work?
Before turning to the background facts upon which the answers to these questions depend, it is to be noted that the respondent admits that –
(i) the applicant is the author of the relevant original works
(ii) such works are original artistic works
(iii) the applicant is, and was at all material times, the owner of the copyright in the relevant works. [4]
[4]See para 3 of Final Amended Statement of Claim and para 1 of Amended Defence; transcript 596/20
It is admitted also that the respondents are the authors of the alleged infringing works.[5]
[5]paras 7-9 of Final Statement of Claim and para 1 of Amended Defence.
Background
The applicant is an artist of some repute. He commenced producing works of art for sale in the late 1990’s. In 1992 he commenced to paint daisies of the kind depicted in IB(1). Over time he estimates that he has produced more than 150 paintings on this subject, there being slight variations in details of background colour, shape of vase but with the composition of the subject remaining basically the same. In 1993 he commenced to paint irises of the kind depicted in IA(1),(4) and (5). Over time he has produced in excess of 200 such paintings which again are a variation on the same theme. The applicant claims, as he is entitled to do, copyright in each such painting on the basis of it being an original artistic work.
The applicant’s case is that the first respondent copied from one or a number of the paintings of which the paintings identified in paragraph 3 hereof are representative. There is direct evidence in any event that seven of those ten paintings were exhibited at either the Landmark or Reef Galleries between 1998-1999 at various times.[6] The applicant also produced mono-types of selected paintings which increased the number of his own reproductions but the detail of these is not relevant to my deliberations on these questions. As well, the applicant’s works have been on public display and have been illustrated in brochures, books and magazines such as Insight Sydney, Insight Tropical North, Australian Art Collection.
[6]Those paintings are IA(1),4, IB(1), ID(10), (12), (14) IF(1)
In addition to the subject matters of flowers, yachts and abstracts which are the subject of these proceedings, the applicant also paints other subjects e.g. birds, green frogs etc. The applicant’s work generally is characterised by the use of bright primary colours within a limited range applied with an impasto technique. The effect he seeks to achieve is to build the depth dimension of the subject by the application of a large quantity of paint. The painting is done in a naïve style which he has not changed much over the years.
The applicant also owns the Landmark Gallery, situated in the central business district of Cairns. He shows his work through other galleries - the Reef Gallery, located at The Pier Shopping Centre in Cairns, Pages Gallery in Noosa and the Trevor Harvey Gallery in Sydney. At the Landmark Gallery the applicant also has a studio where he works. As well he has a studio at his home in Lark Close, Cairns.
In 1993, the applicant held a successful exhibition at the Reef Gallery in Cairns. The owner of that gallery, Mr. John O’Hara has sold the applciant’s works ever since and they represent some 15% of his turnover.[7] In 1995 the applicant appointed Mr Trevor Harvey as his agent for the sale of his paintings. Since then the applicant has enjoyed an increase in the sales of his works and the prices which he can command. His work has been more widely displayed, including exhibitions in New York, Los Angeles, Sydney, Japan and China.
[7]Affidavit of O’Hara 24.01.00 para 3
Associated with this success is an increase in the promotional hype about his works. This is illustrated by what gallery staff are instructed to say to potential buyers and what is included in the advertising brochures.[8] The use of terms such as “the Vella style” or “signature Vella”, it seems to me are part and parcel of this hype and the consistency of the features of his works and their presentation. Such terms do not suggest any right to ownership of, or copyright in, a ‘style’ by which his paintings may be identified.
[8]Affidavit of O’Hara 24.01.00 para 4
In the end result Mr. Vella has been extremely successful in the sales of his works and he believes this success will be diminished if copies of his work are available in the market place.
The applicant in earlier years experimented with framing, and having found a framing design which particularly suits his work has used it consistently for his floral arrangements.
The first respondent is a plasterer by trade. He claims he has had an interest in artistic efforts for the much of his life. His grandfather owned a design company and was responsible for the design of Dickies Towels during the 1960’s. His mother and her two sisters worked in this company. The first respondent was familiar with the works of famous painters such as Rembrandt, Van Gogh, Picasso and Jackson Pollock through reading about them and their works in books at his home. He claimed to have been influenced also by the works of Australian artists, namely Pro Hart, Kym Hart, Brian Spencer of Noosa, Des Spencer of Cairns, by having casually observed their works during the preceding 15 years.
The first respondent’s trade interest and expertise was in performing the more decorative aspects of plastering such as creating fancy ceiling centres, cornices and friezes. His interest in producing paintings commenced only in late 1998 and his first attempt at selling his works was in March 1999. In cross-examination he revealed that prior to this he had not done any serious art work since his days in high school apart form drawing aboriginal faces in charcoal or water colour.[9] He concedes his interests in art was enlivened by his seeing the works of the applicant on display in the Landmark Gallery where he had been engaged to do plastering work. He claimed that what had engaged his attention was the heavy application of paint without its cracking and the bold and bright colours.
[9]Transcript p443-4
Similarities issue
Expert evidence was given on this issue by both parties. Mr. Andrew Frost who holds the degree of Master of Fine Arts from the University of New South Wales, a post graduate diploma in professional art studies and a Bachelor of Arts (Visual Arts) from City Art Institute, was called on behalf of the applicant. Mr. Vaughan Rees who holds a Diploma of Teaching (Art), Bachelor of Fine Arts, Master of Art (Art Education) and who is the lecturer in both under-graduate, post-graduate courses at the University of New South Wales, College of Fine Arts, was called on behalf of the respondents. Each expert provided a report of their appraisal of all the paintings referred to in the Statement of Claim, although it is of course necessary now only to refer to those relevant paintings set out in paragraph 3 of these reasons.
Each of the experts is well qualified to make an appropriate appraisal of the paintings. Unfortunately, they did not approach the task with the same knowledge of important facts, nor the same understanding of the tests to be applied. Consequently their conclusions differ markedly.
Mr. Frost pointed to a number of factors – subject matter, technique, colours, dimensions and framing of work – came to the conclusion that each of the works to be compared are “so similar as to appear, to the untrained eye, to be the work of the same artist”[10]. Mr. Rees noting that each of the artists expressed themselves with a “very limited visual language” and that generally “they would be considered somewhat naïve and unsophisticated in their use of the visual symbols and techniques of painting”[11] went on to conclude that in isolation the works of each of the parties may appear to be quite similar but that on closer examination “it becomes obvious that Greg Cummins and Dean Vella individually bring their own understanding of visual representation (albeit naïve) and understanding of painting techniques”[12].
[10]Ex. 22 paras 3.1 and 3.2
[11]Ex. 25 Para 7.1
[12]Ibid at para 7.5
Mr. Rees was unaware that the first respondent had no practical experience in painting these types of works prior to November/December 1998. Mr. Rees was not made aware that the first respondent had “closely examined” the applicant’s works which were on display, both at the Landmark and Reef Galleries, and that he had the opportunity to view other of the applicant’s works between February – November 1998. Had Mr. Rees been aware that it was only after the first respondent’s close encounter with the applicant’s works that he set about producing the paintings under review, it would have made a difference to his assessment that there was “a high possibility of incidental, independent creation”[13] of the respondent’s works. In cross-examination the following passage appears:-
[13]Ibid – Objective of Similarity Analysis
“What you’re suggesting there is that it is highly possible that Mr. Cummins could have produced his work without knowing of the existence of Mr. Vella’s work? – There is a possibility.
Yes. And of course, that possibility would be gravely affected if you knew for example, that Mr. Cummins had seen Mr. Vella’s work, wouldn’t it? – It could be.
Yes. You wouldn’t – you wouldn’t say – make that statement – you wouldn’t refer to “High possibility of incidental independent creation” if you knew for example, in respect of one kind of work, Mr. Cummins had seen Mr. Vella’s previous work? – It depends on the degree of observation of the work.”[14]
[14]Transcript p.325/40-50
In my view, in the light of Mr. Rees’ lack of knowledge of relevant facts as detailed in the cross-examination (Transcript 3 pp.320-321) it would not be possible for Mr. Rees to express an opinion about independent creation of the respondent’s works.
The other basis for Mr. Rees’ opinion was that the works of all the artists were highly derivative of pre-existing works, that they were in effect “visual cliches”[15]. That of course renders the applicant’s works more easy to copy and to justify a claim for independent creation. Nonetheless, the applicant’s works are acknowledged original artistic works in which it is agreed that copyright exists. The applicant’s works themselves have not been copied from any other source. The fact that the works contain features which are common place in the art world does not detract from their originality but is relevant to whether the particular feature was copied or can be disregarded.
[15]Ex. 25 para 4.2
Mr. Rees has approached the objective similarity analysis at a distinct disadvantage because of his lack of information referred to above and his understanding of the test against which the similarities/dissimilarities are to be assessed.
Mr. Frost’s observations were attacked, mainly because of their generality. This related to topics such as the shape of the arrangement, the failure to distinguish the respondent’s use of a generic flower and the proportions of foreground and background. There was an issue about the shape of the first respondent’s vase for which he consistently used a particular model. The shape of the applicant’s vases did vary but in a rather limited way. But in the end result each of the works of floral arrangements under review do have many similarities. Mr. Rees agreed that there were similarities of style, colour, format and subject matter[16]. Further to that Mr. Frost said (using the comparison between the applicant’s IA(1) and (4) (Irises) and the respondent’s IIA(1) ‘Purple flowers’ as illustrative) as follows:-
“Comparative Analysis: With the exception of the inclusion of a pineapple in the lower right hand corner of the Cummins work, the Vella and the Cummins paintings 1A(1) and IIA(1) respectively are remarkably similar. The two works are very similar in the shape of the flowers, the colour of the flowers, the shape and colour of the leaves, the shape and colour of the pot, the overall proportional composition, the restricted colour range, both using red ground and yellow ‘sky’ and the use of impasto paint techniques. In my opinion, the Cummins work is objectively very similar to the Vella painting. In the Vella work 1A(4), we see Vella’s repetition of these elements, and in comparison to Cummins work IIA(1), we again see the striking similarity between the two artists approaches: from the proportional composition of the vase, flowers, two colour background, highlight on the vase, impasto pain application and framing.”[17]
[16]Rees’ letter 31.01.00 – Ex. 29
[17]Ex.22 p.9
Of the same comparison Mr Rees said –
Similar Parts
Dissimilar Parts
Assessment of Degree
Highlight on vase.
Floral still life.
Shape of vase.
Arrangement of flowers.
Application of paint technique.
Other subject matter.
Composition.
Fruit.
Colour/colours and/or tones.
Leaves and foliage.
Degree of colour contrast.
High level of objective similarity between technical treatment of vase. Medium level of objective similarity of rest of work. High possibility of incidental independent creation given the limited visual vocabulary of work. Highly derivative of pre-existing works…
The addition of a pineapple or minor change in the flower structure does not save an act of infringement if the substantial part test is satisfied. In Designer Guild Lord Scott of Foscote said:-
“68. The question, then, where an altered copy has been produced, is what the test should be in order to determine whether the production constitutes a copyright infringement. If the alterations are sufficiently extensive it may be that the copying does not constitute an infringement at all. The test proposed in Laddie Prescott and Victoria, The Modern Law of Copyright and Designs 2nd ed. (pp. 92/93, para 2-108) to determine whether an altered copy constitutes an infringement is:
“has the infringer incorporated a substantial part of the independent skill, labour etc. contributed by the original author in creating the copyright work…?”
69. My Lords, I think this is a useful test, based as it is on an underlying principle of copyright law, namely that a copier is not at liberty to appropriate the benefit of another’s skill and labour.”
I do not see the need to burden these reasons with a complete reference to the catalogue of similarities of each of the relevant paintings. There is a high degree of repetition in the competing descriptions of the experts. It will suffice if I give one further comparison from the IC/IIC series (yellow gerbras).
Of the comparison of IC(5) with IIC(3) Mr Frost said –
“Comparative Analysis: The Cummins painting appears to be substantially the same as Vella’s work IC(5). Cummins uses almost identical proportional composition, colour scheme, the edge flower perspective, the impasto application of paint, and the use of the signature scraped-back right hand edge highlight on the pot. The commonality of essential elements between the Cummins painting and the Vella painting leads me to believe that the Cummins work is very similar to the Dean Vella painting. Cummins’ only variations are in the amount of flowers and foliage”.
Mr Rees said –
Similar Parts
Dissimilar Parts
Assessment of Degree
Highlight on vase.
Floral still life.
Shape of vase.
Arrangement of flowers.
Number of flowers.
Application of paint technique.
Other subject matter.
Composition.
Colour/colours and/or tones.
Leaves and foliage.
Degree of colour contrast.
High level of objective similarity between technical treatment of vase. Medium level of objective similarity of rest of work. High possibility of incidental independent creation given the limited visual vocabulary of work. Highly derivative of pre-existing works…
I accept the statement of similarities set out by Mr. Frost in his report and supplementary report.[18] The dissimilarities drawn to his attention in cross-examination are, in the main, instances of altered copying. In Designer Guild Lord Scott expressed a view about altered copying cases (which, however, was not agreed in by other members of the House of Lords). He said (at para 70):-
“But in an altered copying case, particularly where the finding of copying is dependant, in the absence of direct evidence, upon the inferences to be drawn from the extent and nature of the similarities between the two works, the similarities will usually be determinative not only of the issue of copying but also of the issue of substantiality. And even where there is direct evidence of copying, as, for example, where it is admitted that the copier hs produced his ‘copy’ with the original at his elbow, the differences between the original and the ‘copy’ may be so extensive as to bar a finding of infringement. It is not a breach of copyright to borrow an idea, whether of an artistic, literary or musical nature, and to translate that idea into a new work. In ‘altered copying’ cases, the difficulty is the drawing of the line between what is a permissible borrowing of an idea and what is an impermissible piracy of the artistic, literary or musical creation of another. In drawing this line, the extent and nature of the similarities between the altered copy and the original work must, it seems to me, play a critical and often determinative role. In particular, this must be so where there is no direct evidence of copying and the finding of copying is dependant on the inferences to be drawn from the similarities.”
[18]Exs. 22 and 23
Here there is evidence upon which the inference of copying can be drawn and so my decision does not rely on the extent of similarities alone. I have to be guided to some degree by my own (untrained) eye. I have formed the view that in the comparisons to be made there are similarities in subject matter, composition, technique of paint application and ‘scraping back’ of parts and the gestural work. The variations in, for example, the number of flowers or the shape of the petal, do not change the impact of the composition. The arrangement of the flowers and shape of the petals on the flowers gave rise to a great deal of discussion and analysis in the course of cross-examination. The applicant, in the main, painted flowers in a botanically correct likeness. The first respondent made variations for example, the respondent’s painting of what he in evidence preferred to call “purple flowers” differed from the applicant’s irises because it had an extra petal and a slightly different petal shape. Whilst it may be (as was claimed) that the first respondent was influenced by Van Gogh’s paintings of irises in a vase, there is no similarity between the composition of his painting and that of Van Gogh’s. But there is a very close similarity with that of the applicant’s. It is the totality of the impact of the work based principally on the subject matter, composition, primary colours, impasto application and artistic features of scraping back and gestural work that forces me to the conclusion that the similarities are sufficiently extensive not to be coincidental.
I am fortified in this opinion by the evidence of the reactions of those persons who were acquainted with the applicant’s work when they saw the first respondent’s works displayed. Each, without apparent hesitation, formed the view that the relevant works were similar. Those who took this view included Mr Smith, the framer, Ms Leahy, Mr O’Hara and Ms Page.
Did the first respondent copy the applicant’s works?
During 1998 the first respondent had an opportunity to view the applicant’s works. Between February – April of that year he did plastering work at the home of Mr. O’Hara who, in addition to being the owner of the reef Gallery, was also a close friend of the applicant. Mr. O’Hara had hanging in his home a number of the applicant’s paintings.
In Sepember, 1998 the first respondent was engaged to do plastering work at the Lark Close residence of the applicant and between November – December 1998 plastering work at the Landmark Gallery. The first respondent admits in his affidavit of 6 February, 2000 to having seen some of the applicant’s paintings at the Landmark Gallery – purple flowers, multi-coloured works and yachts[19] and on four other occasions, in the company with his daughter, he saw irises, mixed bunch and sunflower paintings. He denies, however, having made copies of those or any other of the applicant’s paintings. But it is notable that it was at this time that he became serious about taking up painting for a living.
[19]First respondent’s affidavit 6.02.00 paras 11, 20 and 21
Between December 1998 and March 1999 the first respondent visited the Reef Gallery on a number of occasions. This was attested to in the affidavits of Marie Leahy and John O’Hara. Mr. O’Hara at that time was carrying out renovation for new gallery premises at the Pier Marketplace. In respect of this Mr. O’Hara said:-
“16…By the end of 1998, Cummins had come into the gallery a number of times to pick up plans and discuss the job. I remember that on many of these occasions he would spend between five and ten minutes in the gallery looking very closely at the paintings, especially at Vella’s works. I recall that he usually had his eldest daughter with him.
17. Even back then, in late 1998, I thought it was unusual that Cummins was so interested in Vella’s works. I thought that I was definitely going to sell him a piece, as such a high level of interest usually indicates that a person in interested in buying. I remember that Cummins would examine the works closely by standing in front of them and looking at them from around six inches away. In hindsight I note that this is unusual for a buyer. It is usually only other artists and photographs that look so closely at a work and appear to be so interested in technique.”[20]
Mr. O’Hara estimates that the first respondent was in the gallery approximately eight times during this period.
[20]Affidavit O’Hara 24.01.00 para 16, 17.
There is no evidence that the first respondent took photos or made sketches of the works. The composition of the relevant works is so basic there would hardly be any need to do so. The subject matter of flowers in a vase requires, in addition to the component vase and flowers, only a table (foreground) on which the vase is to stand and the background. In none of the applicant’s paintings is there any particular distinctive feature in the foreground or background other than the choice of colour. Similarly, the vase in each of the applicant’s paintings is not distinctive either in shape or other feature. This absence of detail meant attention had to be given only to the arrangement of flowers and shape of petals apart from composition and technique.
In February/March 1999, having been encouraged to do so by family and friends the first respondent framed two of his works and placed them in the Earlville Arts & Frames gallery for sale. They did not in fact sell and are still in the respondent’s possession. These paintings bore the pseudonym “Delarati” (or Delari). Whilst these paintings were on display they came to the attention of the applicant who went to that gallery and spoke to an assistant. On the next day the applicant was made aware that paintings similar to some of his works, again under that pseudonym were offered for sale at the Cairns Central Gallery. The applicant inspected the photos of the works that had been offered to the gallery and the first respondent was identified as the person seeking to have the paintings displayed. Works of the first respondent in fact went on display at the Cairns Central Gallery at a later time under the pseudonym “Greg Sommerset”. This is the name that has been used on the first respondent’s paintings since June 1999.
The first respondent explained the use of this pseudonym was to avoid his paintings being seen as the work of Greg Cummins, the plasterer. Because he was so well known in his trade role, he perceived the use of his own name as being a disadvantage for the sale of his artistic works. The change from Delarati to Sommerset was done because the first respondent thought the former name was “too contrived”.
In early April 1999 the then solicitor for the first respondent, made contact with the applicant, identifying his client as Delarati. This introduction embarrassed the first respondent who later that day, or on the next day, made a personal call to the applicant with the view to reaching some resolution of the dispute which had arisen. Before any meeting could take place another telephone conversation occurred between the parties, the terms of which are in dispute. The applicant recalls its terms as being an offer by the first respondent to change his technique – which offer was accepted. The first respondent alleges that the conversation concluded with a threat by the applicant that harm would befall the first respondent by the action of his “southern colleagues”. This gave rise to a number of credit issues.
The first respondent said this prompted him to compose a letter to the applicant which, after vetting by his then solicitor, was sent on 14 July 1999[21]. This letter, the first respondent agreed, was written three months after the threat. It contained a number of allegations which were false. Firstly, no complaint was ever made to the CIB Cairns as was alleged. Secondly, a video said to have been placed in a safety deposit box had, according to the respondent’s solicitor’s comment, “never existed”. The first respondent says that it did exist at one time but was not in existence at the time of the solicitor’s letter. Thirdly, the first respondent had never told the applicant of the ingredients used in his painting as was alleged in the letter.
[21]Ex. “DLV2” the affidavit of Vella 27.01.00
In late June 1999 the first respondent approached Mr. Graham Smith, picture framer, who was the regular framer for the applicant’s works and was therefore very familiar with his style and technique. The first respondent asked to look at frame mouldings of a heavier kind. The first respondent returned to Mr. Smith’s shop about a week later and Mr. Smith alleges the following conversation took place:-
“Cummins: I do paintings very similar to Dean Vella’s work. I know that you frame Vella’s work and I would like to have my work framed in the same way.
Smith: No problem. Just bring them in and we will have a look at them.
Cummins then left the shop.”[22]
[22]Affidavit of Smith 21.01.00 para 6
About a week later the first respondent returned to Smith’s shop with his paintings and the following passage of conversation occurred:-
“Cummins: This is my work.
Smith: It looks a lot like Dean Vella’s work.
Cummins: It is a lot like it, but I have put a pineapple in the corner. Can you do it today?
Smith: No, it will take a few days at least. You’ll have to leave it here.
Cummins: Alright. But I don’t want Dean to see it. If he comes in, I would prefer it if the painting was facing the wall.
Smith: Well, Dean is away on holidays and I don’t think he will be in here anyway.
Cummins: Okay.”[23]
[23]Ibid at para 7
The first respondent challenged the allegation that he used the words “very similar” to Dean Vella’s works, rather his words were “ a similar style”. It was put to Mr. Smith also that the first respondent did not say “I don’t want Dean to see it”, but Mr. Smith recalled the respondent making this or a similar remark. Of some importance also is the judgment made by Mr. Smith of the similarity between the first respondent’s paintings and the works of the applicant.
From July 1999 there was an increase in the first respondent’s efforts to display paintings now under the pseudonym “Greg Sommerset”. His paintings were on display for sale at the Cairns Central Gallery and the Earlville Art & Frames as well as at the Marina Gallery at Port Douglas. A request was also made about this time by the respondent’s father to Ms Joan Page of the Noosa galleries, to handle the first respondent’s works.
Each of these displays came to the attention of the applicant. On 12 August 1999 a friend of the applicant purchased from Cairns Central Gallery the first respondent’s painting of daisies (IIB(1)) for the purpose of comparisons. These proceedings were instituted a short time later.
Turning then to the facts which might allow the drawing of the inference of copying, the starting point for me is the fact that the first respondent can point to no relevant artistic experience prior to November/December 1998. By March 1999 the first respondent is offering paintings for sale. He had by that time painted quite a number of works which he described as “experimental”. Virtually all of the first respondent’s works captured in the photographs which are included in the booklet “KAH1”[24] taken more than 12 months later show the same or similar subject matter, style, colour, format and technique as the applicant’s paintings. There appears to have been, even in that lapse of time, no successful experimentation with other types of flowers, other formats, or even other receptacles in which the flowers are placed.
[24]Ex. To affidavit of Karen Hayne sworn 06.02.00
The first respondent’s credibility was very much in issue. I found the first respondent to be unreliable in his testimony. He swore a number of affidavits, some of which expressed facts which he needed to correct before relying upon them. In respect to other statements which, when tested in cross-examination, caused him embarrassment he blamed his solicitor. A notable example of this was related to the alleged threats by the applicant about ‘southern colleagues’ leading to the letter of 14 July 1999 some three months after that threat. In connection with that letter and with respect to whether the video recording referred to ever existed I regard the solicitor’s statement that it did not as being more likely to be correct. Consequently I do not accept the first respondent’s suggestion that the solicitor was in error on this point.
I accept the evidence of the applicant about the terms of their two conversations in March/April, 1999 following the applicant first being made aware of the first respondent’s paintings. The applicant was established in the art world and a large proportion of his paintings was sold outside Cairns. The respondent was not likely to be a serious competitor to him either in the markets in which he exhibited or even in the Cairns market. The applicant’s request was simply to have the first respondent stop reproducing paintings in the applicant’s style. If this were achieved (as the applicant thought it was) there was no need for threats. When the first respondent continued to produce paintings over the applicant’s objection, the applicant quickly went to court. The writing of the letter of 14 July 1999 coincided also with a stepping up in the first respondent’s activities in offering paintings for sale. In my view it was no more than an ill-conceived subterfuge to put pressure on the applicant.
I accept the evidence of Mr. Smith that the first respondent did say that he did not want the applicant to see his paintings. I find that the first respondent engaged the services of Mr. Smith simply to make the presentation of his works more Vella like than his own efforts had been able to achieve. No reason was given by the first respondent for his changing of framer at that time, which as I indicated occurred about the time of the increase in the first respondent’s marketing activities.
With respect to the use of pseudonyms, whilst the first respondent has given a plausible explanation for the use of those names, I find that this too was part of a general pattern of deception to place himself in a position to derive high profit from his art works which he produced without prior artistic experience. His brochure explaining his experience,[25] is illustrative of this intent.
[25]Ex. “DLV7” to the affidavit of applicant 27.01.00
These actions on the part of the first respondent, together with what I find to be marked similarities and contrived dissimilarities in his works when compared with the applicant’s works, leads me to the conclusion that he has in fact copied the applicant’s works of floral arrangements.
In relation to the abstract paintings (IF(1) and IIF(1)), neither expert has made any specific comparison between these two works nor did they feature specifically in the addresses made by counsel for the respective parties. Little interest has been show in these works in terms of the evidence before me save for a testing of the first respondent’s claim that one of his abstract paintings was only a waste-board for the removal of paint from his palette knife and similar implements.
In these circumstances, I am not prepared to make any determination as to similarities or dissimilarities and therefore to make any finding that there has been infringement of the applicant’s copyright in his work.
Has there been a breach of copyright?
Having made the finding that the first respondent copied the applicant’s works, the determination of whether his reproduction was in a substantial part requires namely “whether what has been taken constitutes all or a substantial part of the copyright work”. Designer Guild per Lord Millett (para 43).
In making this determination, one must give greater weight to the quality of that which was being reproduced than to its quantity. See S.W. Hart & Co Pty Ltd –v- Edwards Hotwater Systems[26]. That case involved an alleged infringement by one manufacturer of hot water systems by using another’s engineering drawings relating to produce, in three-dimensional form, collector units and storage tanks. In dealing with the substantiality test to be applied once copying had been accepted, Gibbs CJ said –
“However, once it is accepted that the respondent did copy the appellant’s drawings it is immaterial, even if it were true, that the respondent might have reached the same result if it had used the commonly available knowledge as the foundation of its own research and experiments”.[27]
[26] (1985) 159 CLR 466
[27]ibid p.473
Wilson J said –
“If a case is to succeed where there is no evidence of access to the copyright drawings, the similarity of the impugned product to the drawings will be required to be so strong as to itself sustain, without more, an inference of copying. On the other hand, in a case where there is strong evidence in support of an inference of copying such evidence as there is of similarity may take on added significance. It must, of course, still amount to a sufficient similarity of a substantial part of the copyright work. But such dissimilarities as are apparent may be seen as no more than a deliberate attempt to obscure what has actually taken place, namely, the appropriation of another person’s labour”[28].
[28]ibid p.484
Mr Morzone of counsel for the respondents, submitting on the premise that his client did not copy from the applicant’s work, sought to put the first respondent in the position of merely following ideas and concepts rather than infringing copyright. He referred me to the well known statement in Anchor, Mortlock, Murray & Woolley Pty Ltd –v- Hooker Homes Pty Ltd[29] wherein Street J (as he then was) said (at p.284) –
“There is undoubted force in the contention that the field of architecture is traditionally one in which new ideas are constantly evolving and being developed. Applications of new architectural ideas and concepts by those who follow the leaders in that profession are legitimate, and will not be restrained by the copyright laws. There is a clear distinction between the protection which the law will afford to an architects plans on the one hand, and on the other hand, the absence of any protection to the architectural ideal or concept which may happen to be expressed in a given set of plans”.
[29] [1971] 2 NSWLR 278
As with architecture, trends and fashions in artistic works come and go and are sometimes later revived. It is also said that all works of art are derivative to some degree. But debate in these matters becomes futile once there is a finding of copying. This point was picked up by Street J when he spoke of the “dividing line separating such a legitimate process from an inspection followed by a later copying” and actual copying. He went on to say –
“it can be of critical importance to know how the architect who is said to have infringed went about the preparation and or drawing of his plan. It is only after making a finding, either on direct evidence or by inference, of copying, that is to say, of unfair or unconscientious use of another’s plan or building, that significance will attach to the degree of similarity. In a practical sense, of course, the degree of similarity is frequently a most telling element on the question of copying”.
Having made the findings of a high degree of similarity in the compared works and the finding that the first respondent copied the applicant’s works, the resolution of the issue of substantiality is an easier task. As has already been observed both in Designer Guild (supra) and S.W. Hart (supra) this is to be determined by quality rather than quantity. I have already expressed my impressions on viewing the paintings and have commented on the reaction of others. The parts taken by the first respondent were the important features of the copyright work of the applicants. These features were described in a collective way as the applicant’s “signature style”. Whilst I do not regard this as an appropriate term upon which to claim copyright, I am satisfied that the features which I have found were taken to be used by the first respondent were both in quality and in quantity a substantial part of the applicant’s works.
Claim against the fourth respondent
The fourth respondent is a fifteen year old high school student and daughter of the first respondent. Like him, she had no relevant experience of painting works of art of the kind compared in this case prior to November 1998. Her efforts in producing works has been to imitate the works of the first respondent under his tutelage and with his assistance. The degree of assistance which the first respondent provided to his daughter was a topic of cross-examination. This was done, I suspect, to determine whether the fourth respondent actually did the painting or whether the claim that she did so was a further subterfuge on the part of the first respondent.
No specific submissions were made by either counsel either in their written or oral presentations. There are, I believe, only four paintings of the first respondent challenged. I am satisfied that the fourth respondent with assistance from the first respondent did in fact reproduce those four works. I find the fourth respondent did, in the company of the first respondent, at various times inspect works of the applicant. I find these paintings infringed the applicant’s copyright for same reasons that applied to the first respondent’s works.
I am grateful to all counsel for the quality of the detailed submissions that they made and their references to all of the significant authorities relating to these points in issue. The fact that I have not referred to each of these cases, is not to suggest that they were not of relevance, nor of assistance but simply because the principles involved have, I believe, been encapsulated in the remarks of their Lordships in Designer Guild (supra).
Orders
1. I declare that the applicant is the owner of a copyright subsisting in the artistic works set out in Schedule 1 to the Statement of Claim.
2. I declare that the first and fourth respondents have infringed the applicant’s copyright in the said works other than the abstract paintings.
3. I order that the first and fourth respondents whether by themselves, their servants, agents or otherwise be restrained from reproducing or authorising the reproduction of works which infringe the applicant’s copyright in the said works without the licence of the applicant.
4. I order that the first and fourth respondents deliver up to the applicant for destruction such of the works made in breach of the applicant’s copyright as remain in their respective possession, custody or control.
5. I adjourn the further hearing of other applications including the question of costs to a date to be fixed.
6. The further hearing may be brought on by any party giving 7 days notice to the other parties.
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