Burge v Swarbrick [2005] FCAFC 257 (8 December 2005)

COPYRIGHT – whether copyright subsists in the plugs, moulds and actual hull and deck of a yacht – whether respondent designer of yacht owns that copyright– interpretation of the definition of ‘artistic work’ –meaning of the term ‘work of artistic craftsmanship’ – whether a sculpture can be a work of artistic craftsmanship within the meaning of that term – whether plug, moulds or yacht were sculptures and/or works of artistic craftsmanship

Copyright Act 1911 (UK) s22
Copyright Act 1912 (Cth)
Copyright Act 1968 (Cth) ss 10, 31, 36, 74, 77, 116
Copyright Amendment Act 1989 (Cth)
Designs Act 1906 (Cth)
Fine Arts Copyright Act 1862 (UK)

Hensher v Restawile Upholstery [1976] AC 65 referred to

Report of the Committee on the Law of Copyright 1909

BRENT BURGE & ORS v JOHN HARLEY SWARBRICK

W150 OF 2004

MOORE, NORTH AND EMMETT JJ
8 DECEMBER 2005
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	W150 OF 2004

BETWEEN:	BRENT BURGE FIRST APPELLANT TREVOR ROGERS SECOND APPELLANT BENJAMIN WARREN THIRD APPELLANT BOLDGOLD INVESTMENTS PTY LTD (ACN 105 065 272) FOURTH APPELLANT GLEN PETER BOSMAN FIFTH APPELLANT SERGIO EDWARD ZAZA SIXTH APPELLANT
AND:	JOHN HARLEY SWARBRICK RESPONDENT
JUDGES:	MOORE, NORTH AND EMMETT JJ
DATE OF ORDER:	8 DECEMBER 2005
WHERE MADE:	SYDNEY

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

I N THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	W150 OF 2004

BETWEEN:	BRENT BURGE FIRST APPELLANT TREVOR ROGERS SECOND APPELLANT BENJAMIN WARREN THIRD APPELLANT BOLDGOLD INVESTMENTS PTY LTD (ACN 105 065 272) FOURTH APPELLANT GLEN PETER BOSMAN FIFTH APPELLANT SERGIO EDWARD ZAZA SIXTH APPELLANT
AND:	JOHN HARLEY SWARBRICK RESPONDENT

JUDGES:	MOORE, NORTH AND EMMETT JJ
DATE:	8 DECEMBER 2005
PLACE:	SYDNEY

1 The respondent, John Harley Swarbrick (‘the Designer’), is a naval architect. He has designed a yacht known as a JS 9000. The first yacht to be built to the design has been named ‘Bateau Rouge’ (‘the Bateau Rouge’). The Bateau Rouge consists of a fibreglass hull and deck, to which the usual accoutrements of a yacht have been attached. The Designer claims ownership of the copyright in, inter alia, the hull and the deck of the Bateau Rouge. He claims that the fourth appellant, Boldgold Investments Pty Ltd (‘Boldgold’), infringed his copyright in respect of the hull moulding and other items, and threatened to infringe his copyright in respect of the deck moulding and other items.

2 A judge of the Court concluded that copyright subsists in several items, including the hull and the deck of the Bateau Rouge, and that the Designer is the owner of that copyright. The primary judge also concluded that Boldgold had infringed the Designer’s copyright in the hull moulding and had engaged in a course of conduct that, but for the grant of interlocutory relief, would have resulted in infringement of the Designer’s copyright in the deck moulding.

3 The primary judge also concluded that the fifth and sixth appellants, Glen Peter Bosman and Sergio Edward Zaza, directed and procured, and thereby authorised, the infringement by Boldgold of the Designer’s copyright and that the first, second and third appellants, Brent Burge, Trevor Rogers and Benjamin Warren, were directly involved in the infringement by Boldgold. His Honour ordered the appellants to pay the Designer’s costs of the proceeding to date and directed that questions as to any further relief to which the Designer may be entitled be heard and determined subsequently.

4 The appellants now seek leave to appeal from the declarations and orders made by the primary judge. The grant of leave to appeal is not opposed by the Designer. The Court has heard full argument on the merits of the appeal, on the assumption that leave to appeal has been already granted.

5 The questions raised on appeal involve the interpretation of provisions of the Copyright Act 1968 (Cth) (‘the Act’). In particular, those questions involve the interpretation of the definition of ‘Artistic Work’ in s 10(1) of the Act and the interpretation of Division 8 of Part III of the Act, which deals with the application of the Act to the embodying of a ‘corresponding design’ in an article. The appeal is concerned specifically with the meaning of the term ‘work of artistic craftsmanship’. That term appears in the definition of artistic work in s 10(1) and in s 77(1)(a) of the Act.

6 Under s 31(1)(b)(i) of the Act, copyright in relation to an artistic work is the exclusive right to do a number of acts, including to reproduce the work in a material form. The term ‘artistic work’ is defined in s 10(1) as meaning, relevantly, as follows:

7 Under s 36(1), the copyright in an artistic work is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright. However, under s 77(2), copyright in an artistic work will, in certain circumstances not be infringed by the reproduction of the artistic work. Under s 77(1), that exception applies, relevantly, where:

Under s 74 of the Act, as in force at the relevant time, corresponding design in relation to an artistic work means a design that, when applied to an article, results in a reproduction of that work.

8 Section 77(2) provides that it is not an infringement of the copyright in an artistic work to reproduce the work, on or after the day on which articles made to the corresponding design are first sold, let for hire, or offered or exposed for sale or hire, by applying that, or any other, corresponding design to an article.

9 The primary judge made findings of fact in relation to the production of the Bateau Rouge, which were not challenged on appeal. The following reflects those findings.

10 The Designer was born into a family who have built vessels in Western Australia for many years. He learned the skills of a shipwright by working in the boatyard of the family firm as a teenager and young man. He has a diploma in Naval Architecture, Marine Engineering and Yacht Design from the Westlawn Institute of Marine Technology, Stamford, Connecticut and worked as a naval architect in a number of different situations up to 1983. From 1983 to the present time, the Designer has been self-employed and since that time he has designed numerous yachts.

11 In the mid-1980s, the Designer had in mind designing a two-man day sailing monohull yacht, similar to a popular yacht known as a ‘Flying 15.’ He wanted to design a yacht with a similar sail area to the Flying 15, but with a greater ‘righting’ movement. The Designer started to design his proposed yacht in the late 1980s. He prepared free hand drawings through which he worked up the basic shape of the proposed design. Those drawings, which have since been lost or destroyed, were then digitised into a computer (‘the Digitised Drawings’). That enabled the drawings to be viewed in either two or three-dimensional form, to determine in broad terms, the likely handling characteristics and displacement of the proposed yacht.

12 The Designer then built, by hand, a timber quarter-scale model of the hull and deck structures of the proposed yacht. He took a mould from that model and made a fibreglass scale model which, in 1989 or 1990, he tank-tested in Southhampton, England. He used the results of the tank test to develop further computer models and drawings for his proposed yacht.

13 A starting point for the construction of a yacht of the type in question is making a plug. A plug is a handcrafted full-scale model of the hull or deck of the proposed finished yacht, which, in most respects, is visually identical to the hull or deck of the proposed finished yacht. To shape a plug without reference to drawings involves a high level of manual skill, and ability to do so is gained from many years of experience and training. The Designer can, and does, make some of his own plugs, because he has the design skills of a naval architect. He can create a shape without the need, in many cases, to prepare, or refer to, drawings.

14 In about 2001, the Designer began to build a plug for the proposed JS 9000 yacht. He used a computer to generate a full-sized body plan based on his earlier freehand drawings. The body plan, which was similar to a dressmaking pattern, was printed on mylar. He laid the body plan over medium density fibrewood, from which each individual section of the hull and deck were then cut out. The sections were then set out on a building jig to form the skeleton for a plug. Next the Designer used more medium density fibrewood to form the skin of the proposed plug. He fitted planks of medium density fibrewood individually by hand. That process involved special shipwrighting skills and much experience. It took ten days and was particularly difficult around the bow section of the hull and deck. The Designer fitted small spline battens in between the major strip planks to fill the gaps. He then coated the structure with an epoxy fibreglass skin to ensure that the timber did not move. He did this by hand with rubber squidges.

15 The Designer then carried out a ‘hand fairing’ process to ensure that the surface of the plug was smooth. The Designer used an assistant, who worked under his direction. Initially the process involved use of phenolic micro balloons and an epoxy resin. Once this had been applied, the hull and deck were checked for highs and lows over the surface, using a screeding batten and the highs and lows were eliminated as far as possible. As the surface of the plug became smoother, the Designer used successively less abrasive grades of sandpaper to work up a high gloss sheen over the surface of the plug. His Honour accepted the Designer’s evidence that such a high gloss final finish was a very important part of the crafting of the plug, as it gave an account of the fairness of the hull that could not be derived from the fairing battens, which only marked the highs and lows. The Designer also gave evidence, which his Honour accepted, that the geometrical fairness of the plug was paramount in maintaining the laminar and boundary layers over the hull surface. Geometrical fairness enhances the delaying of turbulent boundary layer separation and the laminar layer is promoted by the plug being proofed to a high gloss finish.

16 While crafting the plug, both at the strip painting and hand fairing stage, the Designer made many adjustments to its appearance, based purely on aesthetic grounds. The proposed yacht, as depicted in the Digitised Drawings, was to be approximately 6.5 metres long. However, the resulting plug was approximately 7.5 metres in length. The Designer made adjustments to the following parts to ensure that the plug would be as aesthetically pleasing as he could make it:

17 The Designer caused the plug to be lengthened on at least three occasions and caused the freeboard to be increased at least twice. The length was increased, in part, to create the appearance of a slender yacht. The Designer did not use any drawings to make the adjustments that he so described. The adjustments were done by hand by himself or under his direction. That included walking around the plug and regularly setting up ladders as the plug developed.

18 The Designer then built a plug for the deck of the proposed JS 9000 yacht, without the use of any drawings. Initially the deck plug had wings, but the Designer later removed the wings to improve the visual attraction of the proposed yacht.

19 Once the plugs were completed, the Designer made moulds from them. The moulds consisted of an exact inverted copy of the plugs. He made separate moulds for the hull and the deck plugs. The deck mould was made first and then the hull mould. The process was the same for each.

20 The first step in the making of a mould was for a split line to be put around the hull and deck plugs. All smooth surfaces were compounded to ensure a high gloss sheen on the surface of the plug, which was then waxed with a mould release wax. The plug was then sprayed with a polyvinyl alcohol release agent film, followed by a coat tooling gel. The Designer then applied a type of fibreglass by hand. The plug was allowed to sit for 48 hours to cure in a heated booth at a temperature in excess of 25ºC. The Designer then applied bulk laminate, using tooling resin. The plug was then allowed to cure for a further 48 hours at a temperature in excess of 25ºC. The Designer fitted structural support framing and wheels to aid movement.

21 When each mould was finished, it was split apart. The plug was removed and the mould was given a light ‘wet and dry’ to smooth its surfaces and to remove the release agent texture. Six applications of wax were then applied to each mould over two days. When that was completed, the moulds were ready for use.

22 The next stage was to produce mouldings from the moulds, which would comprise parts of the proposed yacht itself. First, a spray gel coat was applied to the moulds. Then a skin layer was hand laid, using derecane resin. The remainder of the laminate, skin and core was applied, using a vacuum infusion process. The resulting mouldings were then removed from the moulds and fitted out with the accoutrements of a yacht, such as keel, rigging and the like, to form the Bateau Rouge as a complete yacht.

23 In addition to the Digitised Drawings, the Designer prepared four further drawings, which were marked for identification ‘A’ to ‘D’ (‘the Finished Drawings’). The Designer prepared Drawing A by hand, probably some time after the hull part of the plug had been cut in two, but before he increased the freeboard. The Designer prepared Drawing A to enable him to perform calculations necessary to place the keel for the proposed JS 9000. Drawing A was not otherwise used in the construction of the plug.

24 The Designer prepared Drawing B by hand in about January 2002, about one month after the Bateau Rouge was launched. He prepared it for exhibition at the Düsseldorf Boat Show but made a number of changes, which were designed to conceal aspects of the design of the JS 9000 with a view to prevent copying.

25 The Designer prepared Drawing C in about March 2002 and sent it to a dealer in Switzerland to demonstrate how the ropes on the Bateau Rouge were to run. The Designer prepared Drawing D, probably before the plug was finished. Drawing D reflects the Designer’s thoughts on proposed sail configuration for the JS 9000 yacht.

26 The Designer is a director of Swarbrick Yachts International Pty Ltd (‘Swarbrick Yachts’). He has licensed Swarbrick Yachts, on a non-exclusive basis, to use the Finished Drawings, certain specifications and the plugs to manufacture JS 9000 yachts. To date, Swarbrick Yachts has constructed 32 JS 9000 yachts, with over half of them having been delivered to customers overseas.

27 In or about November or December 2002, the Designer gave a hull moulding and a deck moulding of a JS 9000 yacht to Mr Rogers. In April 2003, Mr Burge contacted Mr Bosman and made him aware of the existence of JS 9000 yachts being constructed by Swarbrick Yachts. As at mid 2003, the three key employees of Swarbrick Yachts in relation to the construction of JS 9000 yachts were Mr Rogers, Mr Warren and a Mr Jamie Bell. Messrs Warren and Rogers moulded hulls and decks while Mr Bell built keels, rudders and the like. Messrs Warren and Rogers left their employment with Swarbrick Yachts in June 2003 and Mr Bell left about two weeks later.

28 Subsequently, Mr Bosman, in association with Mr Zaza, caused Boldgold to be incorporated and to acquire the hull moulding and deck moulding in Mr Rogers’ possession, for the sum of $7,500. As from 28 June 2003, Mr Burge was engaged by Boldgold as operations manager of factory premises leased by Boldgold at Pinjarra, Western Australia. Mr Burge’s job was to oversee work to be undertaken on the hull and deck mouldings and the design and construction of other components that would ultimately form part of a completed yacht. Boldgold also engaged Messrs Warren and Rogers as employees to work at the Pinjarra factory.

29 Boldgold and Messrs Bosman and Zaza admitted for the purposes of the proceeding that:

The trial of the issue of liability was conducted on the basis that there was no relevant difference between the defence of Boldgold and the defences of Messrs Bosman, Zaza, Burge, Rogers and Warren. All appellants were represented by the same solicitors and counsel.

30 The Designer conceded, for the purposes of the proceeding, that, if there is a corresponding design within the meaning of s 77 of the Act of the various works in respect of which he claims copyright, then that corresponding design has been applied industrially.

31 The primary judge found that the Designer intended to design and build a yacht that had great aesthetic appeal and that the Bateau Rouge had a high level of aesthetic appeal; that was the outcome that the Designer intended. The plugs involved a creative design effort by workers skilled in handicraft and the Designer exhibited a very high level of skill. His Honour also found that the Designer had special training, skill and knowledge in both the design skills of a naval architect and the design and manual skills of an experienced shipwright. His Honour considered that the Designer’s work on the plugs, comprising skill in planning and construction, ingenuity and dexterity, was craftsmanship. The Designer applied much of his special training, skill and knowledge when he produced the plugs, which were a manifestation of pride and sound workmanship and the result of the exercise of skill on the part of the Designer in using the wood and materials from which the plugs was made.

32 The primary judge accepted that there is a substantial body of opinion, expressed in publications in the field of yacht design and construction, that yacht designing, includes both aesthetic and technical aspects. His Honour considered that that material supports the proposition that there is no antithesis between function and beauty in relation to yacht design and construction. His Honour concluded that the plugs had the requisite aesthetic quality to be described properly as artistic. His Honour considered that the level of aesthetic appeal of the plugs is more than a mere visual appeal and concluded that the plugs had sufficient aesthetic value to be regarded as artistic in the relevant sense. Since the hull and deck of Bateau Rouge were reproductions of the precise shape of the plugs, it follows that the primary judge also found that that hull and deck had sufficient aesthetic value to be regarded as artistic in the same sense.

33 In reaching his conclusions, the primary judge had regard to photographs of the plugs and their shape as reflected in the hull and deck of the Bateau Rouge. His Honour also conducted a view, during which he observed the hull and deck of the Bateau Rouge and a photographic record was made of what his Honour observed in three-dimensional form during that view. In the light of that evidence, and the Designer’s intention to create a work of considerable aesthetic value, the primary judge concluded that the plug is of sufficient aesthetic value to be of artistic quality and, therefore, to be a work of artistic craftsmanship. His Honour therefore concluded, relevantly, that the hull and deck of the Bateau Rouge were each works of artistic craftsmanship within the meaning of that term when used in s 77(1)(a) of the Act.

34 His Honour also found that each of the plugs and the hull and deck of the Bateau Rouge was a sculpture within the meaning of par (a) of the definition of artistic work in s 10(1) of the Act. His Honour concluded that par (c) of the definition of artistic work in s 10(1) does not operate to narrow the range of works that might qualify as works of artistic craftsmanship. Rather, in his Honour’s view, par (c) operates to expand the scope of the term ‘artistic work’.

35 The appellants did not challenge the conclusion of the primary judge that the plugs and the hull and deck mouldings of the Bateau Rouge are sculptures. However, on the basis of that conclusion, they maintain that, upon the proper construction of s 10, it must follow that none of those works is a work of artistic craftsmanship within the meaning of that term when used in s 77(1)(a). If the primary judge was wrong in his conclusion that the plugs and the hull and deck mouldings were works of artistic craftsmanship, it would not be relevant to enquire whether or not they were sculptures. On that hypothesis, namely that they were not works of artistic craftsmanship, if they were not sculptures, they would not be artistic works at all and therefore no copyright would subsist in them. On the other hand, if they were sculptures, and therefore artistic works pursuant to par (a) of the definition, but were not works of artistic craftsmanship, s 77(2) would apply, assuming a corresponding design has been applied industrially. Accordingly, it does not matter whether the plugs or the hull moulding or deck moulding of the Bateau Rouge were sculptures or not.

36 The primary judge ultimately made declarations that copyright subsists in, and the Designer is and has been the owner of and entitled to the copyright in, each of the following:

37 Each of the appellants filed a cross-claim. For the most part, the cross-claims raised issues that mirrored the issues formulated by the Designer’s statement of claim. His Honour ordered that the claims for relief that mirrored those issues be dismissed. The issues that remained after dismissing those claims for relief related to a claim for defamation by Messrs Burge and Warren and claims for relief under s 116(2) of the Act by the other individual appellants. Section 116(2) provides that a plaintiff is not entitled to any damages or any other pecuniary remedy, other than costs, for conversion or detention of an infringing copy or a device used or intended to be used for making infringing copies, if it is established that, at the time of the conversion or detention that the defendant was not aware and had no reasonable grounds for suspecting that copyright subsisted in the works to which the action relates.

38 The primary judge also found that copyright subsists in the Finished Drawings. The appellants made no submission that the Finished Drawings were not artistic works. His Honour found that the Designer had applied sufficient skill and effort in the creation of each of the Finished Drawings to give them the requisite degree of originality. His Honour therefore concluded that each of the Finished Drawings is an artistic work within the meaning of par (a) of the definition of ‘artistic work’ in s 10(1) and that the Designer is the author of them and the owner of the copyright that subsists in them.

39 The hull plug and the hull mould of the Bateau Rouge have been substantially reproduced by a partially completed flop mould manufactured by Boldgold. That substantial reproduction represents a substantial part of the copyright in the plug and the hull moulding of the Bateau Rouge and the Finished Drawings. The primary judge found that, by making the flop mould of the hull of a JS 9000 yacht, Boldgold infringed the Designer’s copyright in the hull plug and the hull of the Bateau Rouge. His Honour concluded that Boldgold’s deliberate copying of the hull constituted a reproduction of a material part of the plug, the hull and the Finished Drawings.

40 Substantially as posed by the appellants, the issues for decision on the appeal are as follows:

41 In the course of the hearing of the appeal, doubts arose as to the precise issues that were raised by the appeal. Questions were also raised as to the forensic and commercial point of the appeal. The possibility of mediation of the appeal was then suggested and the parties subsequently engaged in a mediation process that was, ultimately, fruitless. That process, however, has resulted in some delay in the disposition of the appeal. The Court did not receive final submissions until 17 August 2005, some time after the mediation process had taken its course. While the Designer did not adopt the appellants’ formulation of the issues in precisely the terms stated above, it is convenient to deal with the appeal on the basis of that formulation of the issues.

42 The appellants contend that the phrase ‘work of artistic craftsmanship’ in s 77(1)(a) should be construed as meaning a work of artistic craftsmanship to which neither par (a) nor par (b) of the definition of ‘artistic work’ in s 10(1) applies. Thus, if, as the primary judge held, the plugs and the hull and deck of the Bateau Rogue are sculptures, while they are artistic works by reason of the operation of par (a) of the definition, they are not artistic works by the operation of par (c). Accordingly, they are not works of artistic craftsmanship within the meaning of that term when used in s 77(1)(a). That is to say, according to the appellant’s construction, the term ‘work of artistic craftsmanship’ in s 77(1)(a) means only a work of artistic craftsmanship that falls within par (c) of the definition of artistic work.

43 The qualification in par (c) of the definition does not change the meaning of ‘a work of artistic craftsmanship’. The qualification in par (c) has the effect that there is no overlap between pars (a), (b) and (c). That is to say, no work will fall within more than one of those paragraphs. Thus, a sculpture will be an artistic work by the operation of par (a), whether or not it is a work of artistic craftsmanship. Such a work will not be an artistic work by reason of the operation of par (c). It follows that all works of artistic craftsmanship will be artistic works within the meaning of the definition. However, some works of artistic craftsmanship will fall within the definition by reason of par (c) whereas others will fall within the definition by reason of the operation of pars (a) or (b).

44 The words in parenthesis in s 77(1)(a) refer to artistic works that fall within pars (b) and (c) of the definition. All artistic works that fall within par (b) are within the exception contained in parenthesis. The question is whether there is any rationale for limiting the phrase ‘a work of artistic craftsmanship’, as contained in the parenthesis, to ‘works of artistic craftsmanship’ to which par (a) does not apply.

45 If the phrase is construed as meaning any work of artistic craftsmanship, whether or not par (a) or par (b) applies to it, there is an overlap between the two phrases contained within the parenthesis. That is to say, a building or a model of a building could, at least in theory, be a work of artistic craftsmanship. The definition of artistic work assumes that it could be so. Thus, on the view adopted by the primary judge, a model of a building that is a work of artistic craftsmanship would be excluded by both limbs of the exclusion in the parenthesis. On the other hand, if the phrase ‘a work of artistic craftsmanship’ is construed as meaning a work of artistic craftsmanship to which neither par (a) nor par (b) applies, there will be no such overlap. If that construction is adopted, an artistic work that is a sculpture would not be within the exclusion in s 77(2).

46 The concept of a work of artistic craftsmanship was first introduced into copyright legislation by the Copyright Act 1912 (Cth), adopting the Copyright Act 1911 (UK) (‘the 1911 Act’). The 1911 Act was enacted following the Report of the Committee on the Law of Copyright 1909 under the chairmanship of Lord Gorrell (‘the Gorrell Report’). The terms of reference of that Committee were to ascertain what changes to the law of copyright were necessary to enable the United Kingdom to meet its obligations under the Revised International Copyright Convention, to which the United Kingdom acceded in 1908.

47 While the Gorrell Report did not refer to the concept of work of artistic craftsmanship, it dealt with the overlap of copyright and designs. The Gorrell Report said, inter alia:

48 That comment was made in relation to Article 2 of the Convention which relevantly provided as follows:

50 Until the commencement of the Copyright Amendment Act 1989 (Cth), the defence afforded by s 77(2) of the Act applied, notwithstanding that an artistic work was a work of artistic craftsmanship. However, the amendments to the Act made by the Copyright Amendment Act, with effect from 1 October 1990, excluded, from the limited defence, infringement of copyright in, relevantly, works of artistic craftsmanship. From that point, protection under either the Designs Act or the Act became available to works of artistic craftsmanship, notwithstanding the multiplication of the work by industrial process.

51 There is nothing in s 77(1)(a) itself to indicate that the term ‘a work of artistic craftsmanship’ should be construed as being limited to a work of artistic craftsmanship to which neither par (a) or par (b) of the definition applies. There is no particular rationale for adopting such a construction. On the other hand, there could be a rationale for excluding from the operation of Division 8 of Part III any artistic work that is a work of artistic craftsmanship, whether or not it is a work to which par (a) of the definition applies. Of course, if it is a work to which par (b) applies, it is excluded in any event, by the first limb of the words in parenthesis. The preferable view is that the term ‘work of artistic craftsmanship’, when used in s 77(1)(a), means any such work, whether or not it is work to which either paragraph (a) or paragraph (b) of the definition of artistic work in s 10(1) applies. The primary judge was correct in the conclusion that he reached in that regard.

52 Craftsmanship might be described as the skill or expertise of an artisan or of a person who practises a manual skill or a manual art. An artisan is essentially a skilled manual worker. The adjective artistic denotes something pertaining to, or befitting a person who cultivates, one of the fine arts. There is thus an overlap between the concept involved in artistic and the concept of craftsmanship. Artistic craftsmanship, however, is something narrower than craftsmanship simpliciter. The adjective artistic leads away from mere manual skill or expertise of an artisan.

53 It is the craftsmanship that produces a work that must be characterised as artistic and not the work itself. That is to say, the adjective artistic denotes something about the nature of the skill applied in producing the work. It does not necessarily say anything about the finished work itself. On the other hand, it must be possible to demonstrate that the work is the result of the application of craftsmanship that can be characterised as artistic. That calls for an examination of not only the skill that produced the work but the work itself. It must be possible to say about the work that it would not have been produced but for the application of the relevant skill of the creator.

54 A work of artistic craftsmanship is not necessarily a work of art, which is generally associated with the fine arts rather than with craftsmanship. There may be an element of utility or functionality in the concept of craftsmanship, such that a work of artistic craftsmanship would ordinarily be expected to be both useful and artistic. On the other hand, a work of art will ordinarily have no function.

55 By the 1911 Act, the United Kingdom parliament extended copyright protection to works of applied art, and did so under the influence of the arts and crafts movement. Before 1911, the only artistic works that were given copyright protection were works of fine art. A work of art was a product of the fine arts, primarily a painting. That protection was afforded by the Fine Arts Copyright Act 1862 (UK). However, the arts and crafts movement, with its emphasis on the applied or decorative arts, prompted Parliament in 1911 to give copyright protection to works of artistic craftsmanship. The essence of the ideology of the arts and crafts movement was that art did not mean merely, or even primarily, the fine arts. Nevertheless, the language chosen by Parliament was ‘artistic craftsmanship’ and not ‘artistic handicraft’. Craftsmanship should not be limited to handicraft: the word ‘artistic’ is not incompatible with machine production. Nevertheless, a work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production. Craftsmanship implies a manifestation of pride in sound workmanship and a rejection of the shoddy, the meretricious and the facile (Hensher v Restawile Upholstery [1976] AC 65, at pp 89-91).

56 Whether a work is a work of artistic craftsmanship is a matter of evidence. Those who are either acknowledged artist-craftsmen, or are concerned with the training of artist-craftsmen, are likely to be able to give the most cogent evidence. Further, the intent of the creator, as well as the particular skill of the creator, will also be relevant in determining whether the result is a work of artistic craftsmanship (Hensher v Restawile Upholstery at 94-95).

57 The primary judge made a finding of fact that the plugs and the hull and deck of the Bateau Rouge are works of artistic craftsmanship. That is a finding of fact based, at least in part, upon the evidence of the Designer, which the primary judge accepted. His Honour also had regard to other expert evidence as to the skill of the Designer as a shipwright.

58 There may be some doubt as to whether an object that, however artistic it might appear to be, is intended to be used only as a step in a commercial operation and has no value in itself, could be a work of artistic craftsmanship (see Hensher v Restawile Upholstery at 77). The plugs no longer exist. It is clear enough that they were brought into existence for the purpose of creating moulds from which mouldings could be made. They were, to that extent, a means to an end. The plugs were not created for their own sake, or with a view to being works in themselves. Similarly, the moulds were created as a means to the same end, the end being to manufacture hull and deck mouldings that were used to create the Bateau Rouge.

59 The production of the hull and deck of the Bateau Rouge was a process that began with the creation of the plugs; it continued with the making of the moulds and the production from the moulds of the mouldings that became the hull and deck of the Bateau Rouge. While the shape of the ultimate hull and deck of the Bateau Rouge is a reflection of the moulds and of the plugs, the moulds and the plugs were not more than the means of producing the hull and deck for the Bateau Rouge and, of course, the subsequent JS 9000 yachts. However, the fact that the hull and deck had been multiplied numerous times does not, in the absence of the application of s 77 of the Act, detract from the conclusion that the hull and deck of the Bateau Rouge were works that were capable of constituting works of artistic craftsmanship.

60 There is no reason, in principle, why the hull and deck of a yacht could not be considered as an artistic work: as sculptures they would be, and the appellants do not quarrel with the conclusion of the primary judge that they did constitute sculptures. Once it is accepted that such things as buildings and models of buildings can be artistic works, there is no reason to doubt the correctness of the conclusion that the hull and deck of a yacht might be an artistic work and may be a work of artistic craftsmanship. The primary judge did not err in reaching that conclusion in relation to the hull and deck of the Bateau Rouge.

61 The fact that the hull and deck of the Bateau Rouge were to be multiplied does not bear on the question of whether the hull and deck were works of artistic craftsmanship. That is relevant to whether any corresponding design has been applied industrially: it is relevant ultimately only to the question of whether a defence under s 77(2) is available.

62 The position of the plug and the moulds is not entirely clear. The primary judge made findings that the plug was a work of artistic craftsmanship and also a sculpture. His Honour appears to have concluded that the plug fell within the exception in the parenthesis in s 77(1), because it was a work of artistic craftsmanship. His Honour also decided that the moulds were sculptures and, therefore, artistic works within the meaning of s 10. However, his Honour expressly refrained from determining whether the moulds were works of artistic craftsmanship.

63 On one view, while the plug and the moulds were part of the process of creating the works that are the hull and the deck of the Bateau Rouge, they could not fairly be regarded as works of artistic craftsmanship in their own right. They were no more than the means to the end of creating the mouldings that were to constitute the hull and deck of the Bateau Rouge. In so far as the primary judge concluded that the plug was a work of artistic craftsmanship, his Honour may have erred. However, any such error does not appear to be of significance in the ultimate result. The Designer is the owner of the copyright in the deck and the hull of the Bateau Rouge. It is that copyright that the Designer seeks to vindicate and the infringement of which that he seeks to restrain.

64 Boldgold did not contend that either the plugs or the moulds were not sculptures. Rather, its contention was that they are not works of artistic craftsmanship or, on the assumption that they are sculptures, there was no infringement by reason of the operation of ss 74 and 77. In the circumstances, it is unnecessary to express a conclusion as to whether the moulds were works of artistic craftsmanship, since his Honour did not address that issue. Nor is it necessary to decide whether, assuming the hull and deck of the Bateau Rouge are works of artistic craftsmanship, the plug is a work of artistic craftsmanship.

65 The primary judge found that the Finished Drawings were prepared, either at the time when the sculpting of the plugs was well advanced, or after it was finished. However, his Honour made no express findings as to whether the design in the Finished Drawings was the design of the plugs and the design of the hull and deck of the Bateau Rouge.

66 His Honour expressly found that the plugs and the hull and deck of the Bateau Rouge were substantially different from the Digitised Drawings in the following respects:

67 The appellants also contend that, notwithstanding the differences identified by the primary judge between the design of the Digitised Drawings, on the one hand, and the hull and deck of the Bateau Rouge, on the other hand, the design is essentially the same design. They say that the essential features of the design of the hull and deck of the Bateau Rouge did not change in any material sense from the conception disclosed in the Digitised Drawings.

68 His Honour found that the flop mould of the hull moulding manufactured by Boldgold and the flop mould of the deck moulding that it was threatening to manufacture were not articles to which the design of the Digitised Drawings was applied. Accordingly, s 77(2) has no application. The Digitised Drawings can therefore be ignored for the purposes of considering the possible application of s 77.

69 The appellants say, in essence, that they are reproducing the hull and deck of the Bateau Rouge, by applying to an article the design that, when applied to that article, results in a reproduction of the hull and deck of the Bateau Range. The appellants’ contention appears to involve the following reasoning:

70 That reasoning appears to depend upon the purely fortuitous chance that, notwithstanding that the Finished Drawings were prepared either at a time when the sculpting of the plugs and the construction of the hull and deck of the Bateau Rouge were well advanced or after the construction was finished, they happen to contain a representation of the design of the hull and deck of the Bateau Rouge. That is to say, the contention appears to be that, if the Finished Drawings had not been prepared, s 77 would have had no operation, in the events that happened: by reason of the fortuitous fact that the Finished Drawings were brought into existence, s 77(2) operates to excuse the conduct of Boldgold from constituting infringement of the Designer’s copyright in the deck and hull of the Bateau Rouge.

71 That contention involves a misconception of the exception contained in s 77(2). The Designer’s complaint is of infringement of copyright in the hull and deck of the Bateau Rouge. He makes no complaint about infringement of copyright in the Finished Drawings or, for that matter, the Digitised Drawings. Whether or not the flop moulds produced, or threatened to be produced by Boldgold, constitute an infringement of any copyright in the Digitised Drawings or the Finished Drawings is irrelevant. The question is whether reproducing the hull and deck of the Bateau Rouge is an infringement of copyright in the hull and deck. It is, unless s 77(2) applies. Section 77(2) will not apply in respect of an artistic work in which copyright subsists, that is a work of artistic craftsmanship. The hull and the deck of the Bateau Rouge constitute an artistic work, which is a work of artistic craftsmanship. Once it is accepted that the hull and deck of the Bateau Rouge constitute a work of artistic craftsmanship, s 77(2) has no application, and the reproduction of that work will be an infringement of the Designer’s copyright in it.

72 It was common ground that no rights under the Act extend, as the declarations made by the primary judge suggest, to the mast, keel and other accoutrements of the Bateau Rouge.

73 The appeal should be allowed in part. However, the orders of the primary judge should be varied only so as to reflect the conclusion that copyright subsists in the hull and deck of the Bateau Rouge and in the Finished Drawings, which copyright is owned by the Designer, and that Boldgold has infringed the Designer’s copyright in the hull of the Bateau Rouge and has threatened to infringe the Designer’s copyright in the deck of the Bateau Rouge. No separate argument has been addressed to the question of whether the plug and the moulds are the subject of copyright that has been infringed.

74 Since the Designer has been substantially successful in resisting the attack on the finding by the primary judge that copyright in the hull and deck of the Bateau Rouge was infringed, the appellants should pay the costs of the appeal.

I certify that the preceding seventy-four (74) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Moore, North and Emmett.

Counsel for the Appellants:	Mr J J Garnsey QC and Mr R McCormack

Solicitor for the Appellants:	Stables Scott

Counsel for the Respondent:	Mr D Stone and Mr T Carmady

Solicitor for the Respondent:	Williams & Hughes

Dates of Hearing:	22, 23 and 24 February 2005

Date of Judgment:	8 December 2005

1.	The appeal be allowed in part.
2.	Order 1 made on 24 June 2004 be set aside and the following order be substituted in lieu of that order:

•	if there is a corresponding design in relation to the plugs and the hull and deck of the Bateau Rouge and the Finished Drawings, that corresponding design has been applied industrially; and
•	the plugs and the hull and deck of the Bateau Rouge are sculptures within the meaning of par (a) of the definition of artistic work in s 10(1),

•	the Digitised Drawings;
•	the Finished Drawings;
•	the plugs;
•	the hull and the deck of the Bateau Rouge?

Federal Court of Australia - Full Court Decisions

Burge v Swarbrick [2005] FCAFC 257 (8 December 2005)