Pila, Justine --- "Works of Artistic Craftsmanship in the High Court of Australia: The Exception as Paradigm Copyright Work" [2008] FedLawRw 15; (2008) 36(3) Federal Law Review 363
[*] University Lecturer in Intellectual Property, University of Oxford Faculty of Law; Fellow and Tutor, St Catherine's College, Oxford; Senior Research Associate (and Interim Director), Oxford Intellectual Property Research Centre. Email: justine.pila@law.ox.ac.uk.
[1] [2007] HCA 17; (2007) 232 CLR 336 ('Burge').
[1] [1976] AC 64 ('Hensher').
[2] Burge [2007] HCA 17; (2007) 232 CLR 336, 353 (quoting from Coogi Australia Pty Ltd v Hysport International Pty Ltd [1998] FCA 10; (1998) 86 FCR 154, 168 (Drummond J) ('Coogi')). See also Burge [2007] HCA 17; (2007) 232 CLR 336, 356 (referring to 'the need for a real or substantial artistic element').
[3] Burge [2007] HCA 17; (2007) 232 CLR 336, 364.
[4] Oxford English Dictionary (defining 'substantial' to mean among other things '[h]aving substance; not imaginary, unreal, or apparent only; true, solid, real'). On this view, the requirement for artistic quality operates equivalently to the requirement for substantiality as expressed through the de minimis principle (on which see Justine Pila, 'Copyright and its Categories of Expressive Works' (2008) Oxford Legal Studies Research Paper 22/2008, <http://papers.ssrn.com/abstract=1160176> at 27 August 2008, text accompanying n 90).
[5] (2002) 119 FCR 491 ('Desktop Marketing Systems'), affirming Telstra Corporation Ltd v Desktop Marketing Systems Pty [2001] FCA 612; (2001) 181 ALR 134.
[6] See also Justine Pila, 'An Intentional View of the Copyright Work' (2008) 71 Modern Law Review 535; Pila, 'Copyright and its Categories of Expressive Works', above n 5.
[7] At the time of the appeal, 32 of the yachts had been constructed and 20 delivered to customers for a price of between AUS$50,000 and AUS$65,000 (Burge [2007] HCA 17; (2007) 232 CLR 336, 336). Images of the yacht can be viewed on the website of the Centre for Intellectual Property & Information Law (CIPIL): <http://www.cipil.law.cam.ac.uk/virtual_museum/burge_v_swarbrick_[2007]_hca_17.php> at 27 August 2008.
[8] Burge [2007] HCA 17; (2007) 232 CLR 336, 344.
[9] Burge [2007] HCA 17; (2007) 232 CLR 336, 364 (stating that '[t]he determination [of that quality] turns on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations').
[10] Ibid 359 (describing the language of the Act, derived from the Copyright Act 1911 (Imp), as needing to 'be understood in the light of what was said in Hensher respecting the Arts and Crafts movement' and as 'apt to carry forward the objects of that movement'). See also at 358–9, 363–4 (discussing the decision of Lord Simon in Hensher [1976] AC 64, including specifically his Lordship's review of the history of the Arts and Crafts movement).
[11] On the antithesis between function and art (and utility and beauty) specifically, and its importance to the Arts and Crafts movement, see Burge [2007] HCA 17; (2007) 232 CLR 336, 359.
[12] Ibid 360–2.
[13] Ibid 361 (noting the brief he followed to that end, and the confirmatory promotional material and business plan, which the Court described as 'not giv[ing] prominence to matters of visual and aesthetic appeal').
[14] The concept of features being 'contra-standard' to a category of work is from Kendall Walton, 'Categories of Art' (1970) 79 The Philosophical Review 344, 349; see also at 357–8 and below, text accompanying n 58.
[15] Burge [2007] HCA 17; (2007) 232 CLR 336, 361–2.
[16] See ibid 364.
[17] The applicable Act was the Copyright Act 1968 (Cth) before its amendment by the Designs (Consequential Amendments) Act 2003 (Cth).
[18] See Copyright Amendment Act 1989 (Cth) s 77(1)(a).
[20] See Burge [2007] HCA 17; (2007) 232 CLR 336, 348.
[21] United Kingdom, Report of the Copyright Committee, Cmd 8662 (1952) [236], quoted in Burge [2007] HCA 17; (2007) 232 CLR 336, 349.
[22] See Burge [2007] HCA 17; (2007) 232 CLR 336, 351 (quoting with approval the statement of Pumfrey J in Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd [1999] RPC 717, 723 that '[i]t was clearly the intention of the framers of [the 1988 UK Act] that copyright protection was no longer to be available to what can be compendiously described as ordinary functional commercial articles'.
[23] Burge [2007] HCA 17; (2007) 232 CLR 336, 351 (quoting Explanatory Memorandum, Copyright Amendment Bill 1988 (Cth) 17).
[24] See Burge [2007] HCA 17; (2007) 232 CLR 336, 352–3 (quoting Explanatory Memorandum, Copyright Amendment Bill 1988 (Cth) 24).
[25] [1998] FCA 10; (1998) 86 FCR 154.
[26] Ibid 168 (quoted in Burge [2007] HCA 17; (2007) 232 CLR 336, 355).
[27] Burge [2007] HCA 17; (2007) 232 CLR 336, 355.
[28] Copyright Act 1968 (Cth) s 10 (before its amendment by the Designs (Consequential Amendments) Act 2003 (Cth).
[29] See Burge [2007] HCA 17; (2007) 232 CLR 336, 354–5.
[30] United Kingdom, Report of the Copyright Committee, Cmd 8662 (1952) [260] (quoted in Burge [2007] HCA 17; (2007) 232 CLR 336, 354).
[31] Burge [2007] HCA 17; (2007) 232 CLR 336, 356 (citations omitted).
[32] Ibid.
[33] Ibid.
[34] Ibid.
[35] Ibid 356–7.
[36] See also Hensher [1976] AC 64, 94 (Lord Simon), stating as follows:
It follows that the artistic merit of the work is irrelevant… Not only is artistic merit irrelevant as a matter of statutory construction, evaluation of artistic merit is not a task for which judges have any training or general aptitude. Words are the tools and subject matter of lawyers; but even in matters of literary copyright the court will not concern itself with literary merit… Since the tribunal will not attempt a personal aesthetic judgment … it follows, again, that whether the subject is or is not a work of artistic craftsmanship is a matter of evidence; and the most cogent evidence is likely to be from those who are either themselves acknowledged artist-craftsmen or concerned with the training of artist-craftsmen — in other words, expert evidence. (citations omitted).
[37] Copinger and Skone James on the Law of Copyright (9th ed, 1958) 65–6 (citations omitted).
[38] Burge [2007] HCA 17; (2007) 232 CLR 336, 354–5 (citations omitted).
[39] Musical and dramatic works have been similarly conceived with reference to their form: see Pila, 'Copyright and its Categories of Expressive Works', above n 5.
[40] Ibid.
[41] See also Burge [2007] HCA 17; (2007) 232 CLR 336, 359 (rejecting the US requirement for separate identification of such features from the utilitarian aspects of the article concerned).
[42] See ibid 358; contra Hensher [1976] AC 64, 77 (Lord Reid, describing 'work of craftsmanship' as suggesting to him 'a durable useful handmade object').
[43] Burge [2007] HCA 17; (2007) 232 CLR 336, 359 (quoting Hensher [1976] AC 64, 91).
[44] Hensher [1976] AC 64, 95.
[45] Burge [2007] HCA 17; (2007) 232 CLR 336, 364 (see below n 48
and accompanying text).
[46] As noted, the Court regarded 'artistic' in the phrase 'work of artistic craftsmanship' as having special linguistic significance in denoting a requirement for artistic quality that distinguished WACs from other works. How to reconcile this with the formalistic understanding of artistic works in general seems to have been a central issue for the Court, and to have been resolved through the definition outlined: a work of artistic craftsmanship in law is a work of craftsmanship having an expressive form sufficiently unconstrained by functional considerations (to be deemed without further enquiry to confer the necessary artistic quality on the work).
[47] Burge [2007] HCA 17; (2007) 232 CLR 336, 364 (footnote omitted).
[48] The insight regarding the importance of categories in perceptions of art is due to Walton, above n 15.
[49] See Burge [2007] HCA 17; (2007) 232 CLR 336, 363–364 (accepting the suggestion of Lord Simon in Hensher [1976] AC 64, 91–92 that works of craftsmanship occupy a spectrum defined at one end by the 'ordinary glazier' ('a craftsman, but … not properly [able to] claim that his craftsmanship is artistic') and at the other by the maker of stained glass windows (who 'could properly make such a claim'), with woodworkers and cabinet-makers in a 'straddling class' ('some of their work would be generally accepted as artistic craftsmanship, most not')).
[50] See above n 46 and accompanying text.
[51] See Burge [2007] HCA 17; (2007) 232 CLR 336, 357. Note the parallel that exists between the Court's reasoning here and the reasoning in Exxon v Exxon Insurance Corp [1982] Ch 119 (CA), where the Court of Appeal also emphasised the composite nature of the expression 'literary work' to support a similarly non-formalistic conception of that work (as a subject matter 'intended to afford instruction, or information, or pleasure in the form of literary enjoyment' (Stephenson LJ, others agreeing, quoting from Hollinrake v Truswell (1894) 3 Ch 420, 428 (Davey LJ)).
[52] See Walton, above n 15. For an analysis of the significance of Walton's theory for Anglo-Australian copyright law see Pila, 'Copyright and its Categories of Expressive Works', above n 5.
[53] Walton, above n 15, 340.
[54] See Burge [2007] HCA 17; (2007) 232 CLR 336, 358 (emphasising that the 'the statutory expression is "artistic craftsmanship", not "artistic handicraft", notwithstanding that the aesthetic of the Arts and Crafts movement may have been that of the living artisan in his workshop').
[55] Walton, above n 15, 337.
[56] An alternative way of expressing this might be by asking whether artistic effort is standard, variable or contra-standard to the relevant category (see Walton, above n 15, 339 and accompanying text).
[57] Walton, above n 15, 357–8.
[58] See also Pila, 'Copyright and its Categories of Expressive Works', above n 5.
[59] See above nn 32, 34, 35 and accompanying text.
[60] Burge [2007] HCA 17; (2007) 232 CLR 336, 360 (citations omitted).
[61] See also ibid 364 ('In the present case, notwithstanding what Mr Swarbrick later said on the matter after litigation was on foot, the earlier statements in the promotional material and in the business plan, with the evidence of Mr Hood, should have led the primary judge to conclude that the Plug was not "a work of artistic craftsmanship" because the work of Mr Swarbrick in designing it was not that of an artist-craftsman').
[62] In this respect the Court's view may be closest to that of Viscount Dilhorne in Hensher. See Hensher [1976] AC 64, 87:
So, in my view, it is simply a question of fact whether a work is one of artistic craftsmanship. Questions of fact are often difficult to decide but juries have to decide them. … This question of fact in relation to copyright is decided not by a jury but by a judge sitting alone. Evidence may be called with regard to it. Expert witnesses may testify. At the end of the day, it will be for the judge to decide whether it is established that the work is one of artistic craftsmanship. If that is not established, the claim to copyright on that ground will fail. I do not think that it suffices to show that some section of the public considers the work to be artistic, though that fact will be one for the judge to take into account, for the decision has to be made by the judge and cannot be delegated.
[63] Compare also the view of Lord Reid, that a work of artistic craftsmanship in law is a durable, useful handmade object valued by its owner for its artistic character (Hensher [1976] AC 64, 77).
[64] Hensher [1976] AC 64, 96–97.
[65] See above n 22 and accompanying text. This is consistent with the preparedness of other courts to consider the subjective intent of the author in conjunction with expert opinion as to the success or otherwise of that intent. See, eg, Merlet v Mothercare plc [1984] 10 FSR 358 (requiring an intent to produce a work of art, and a judgment that the author had not manifestly failed in that intent; and suggesting that the former will be easier to show for an artist-craftsman with an established reputation as such); Vermaat & Powell v Boncrest Ltd [2001] FSR 43 (approving the view of Tipping J in Bonz Group Pty Ltd v Cooke [1994] NZHC 1004; [1994] 3 NZLR 216 ('Bonz Group') that an author may intend to produce a work of artistic craftsmanship but fail, in which case the resultant work will not be a work of artistic craftsmanship on the basis merely of the author's intent); Lucasfilm Ltd v Ainsworth [2008] EWHC 1878, [131] (implying some support for the approach of Tipping J in Bonz Group).
[66] Compare in this context the role of intent — or rather, consent — in the law of contract, the objective conception of which creates a similar tension between ensuring respect for personal autonomy and ensuring that ascriptions of legal liability are reasonable in the circumstances; on which see Hugh Collins, The Law of Contract (1st ed, 1986), especially chapters 4 & 5.
[67] For a detailed discussion of the inadequacy of the formalistic definitions of works see Pila, 'Copyright and its Categories of Expressive Works', above n 5.
[68] In the UK context see, eg, Exxon v Exxon Insurance Corp [1982] Ch 119 (CA) (deciding that a work might be presented in literary form but not be a literary work for the purpose of copyright, and deciding that 'exxon' was not a literary work, despite possessing the formal properties of one); Metix (UK) Ltd v G H Maugham (Plastics) Ltd [1977] FSR 718 (Ch) ('Metix') (rationalising the Court's refusal in Davis (Holdings) Ltd v Wright Health Group Ltd [1998] RPC 403 (Ch) to treat dental impression trays as sculptures for copyright purposes with reference to the nature of sculptures as objects created 'by an artist's hand with a view in part to non-functional aspects of shape or appearance'; affirming that three-dimensional objects created to serve as the step in a commercial production process and having no significance independent of that process are not sculptures); Sawkins v Hyperion Records Ltd [2005] EWCA Civ 563; [2005] RPC 32 (CA) (distinguishing music from noise as 'intended to produce effects of some kind on the listener's emotions and intellect'). For a more recent example see Lucasfilm Ltd v Ainsworth [2008] EWHC 1878, delivered on 31 July 2008. In that case Mr Justice Mann at [118] affirmed Laddie J's view in Metix that 'not every three dimensional representation of a concept can be regarded as a sculpture', and that for a work to be a 'sculpture' 'it should have, as part of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well'. The Judge also affirmed that the decisions in Breville Europe Plc v Thorn EMI Domestic Appliance Ltd [1995] FSR 77 (Ch) (that plaster shapes made for the production of die-casting moulds for toasters were 'sculptures', despite their purely mechanical or functional nature) and Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 (NZ CA) (that a model of a mass-produced Frisbee was a 'sculpture') were wrong in UK law. He stated at [118]:
The purpose [of a sculpture] is that of the creator. This reflects the reference to 'artist's hand' in the judgment of Laddie J in Metix, with which I respectfully agree. An artist (in the realm of the visual arts) creates something because it has visual appeal which he wishes to be enjoyed as such. He may fail, but that does not matter (no judgments are to be made about artistic merit). It is the underlying purpose that is important.
[69] See cases cited ibid.
[70] [1983] FSR 32 (CA) ('Harpbond').
[71] Or, to use the example offered in Lucasfilm Ltd v Ainsworth [2008] EWHC 1878, [118], any such exegesis must explain why a pile of bricks on temporary display at the Tate Modern is capable of being a sculpture, but the identical pile of bricks dumped temporarily at the end of a driveway is not.
[72] See also Pila, 'An Intentional View of the Copyright Work', above n 7, 558; Pila, 'Copyright and its Categories of Expressive Works', above n 5, text accompanying n 97.
[73] On the idea of works as products of autonomous expression see Jane Ginsburg, 'The Concept of Authorship in Comparative Copyright Law' (2003) 52 DePaul Law Review 1063, 1092 (suggesting that 'in copyright law, an author is (or should be) a human creator who, notwithstanding the constraints of her task, succeeds in exercising minimal personal autonomy in her fashioning of the work'). Justifications of copyright with reference to personal autonomy strengthen the analogy with contract law (see above n 67). Note however with respect to Ginsburg's definition, that if it is accepted that works are authorial objects, then any definition of authorship needs to stand independent of the concept of 'the work' to avoid circularity.
[74] It also motivates recent UK cases; a notable example being LucasFilm Ltd v Ainsworth [2008] EWHC 1878 (see above nn 66, 69, 72; [2008] EWHC 1878, [118]–[121] (regarding sculpture), [133]–[135] (regarding works of artistic craftsmanship)).
[75] (2002) 119 FCR 491, affirming Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612.
[76] For a detailed analysis of Desktop Marketing Systems see Justine Pila, 'Compilation Copyright: A matter calling for "a certain … sobriety"' (2008) Oxford Legal Studies Research Paper 45/2008, <http://papers.ssrn.com/abstract=1299012> at 10 November 2008; (2008) 19 Australian Intellectual Property Journal 231.
[77] [1991] USSC 50; 499 US 340 (1991) ('Feist').
[78] Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612, [74].
[79] Burge [2007] HCA 17; (2007) 232 CLR 336, 356.
[80] Notable examples from UK law include Walter v Lane [1900] AC 539 (HL) (where the House of Lords extended the category of 'book' to ensure protection for the literary record of unwritten speeches) and Norowzian v Arks Ltd (No 2) [1999] EWCA Civ 3018; [2000] FSR 363 (CA) (where the Court of Appeal extended the category of 'dramatic work' to ensure protection for a cinematographic work). Examples of courts contracting the boundaries of a category of work to deny a subject matter protection also exist; one being Interlego AG v Tyco Industries Inc [1988] UKPC 3; [1989] AC 217 (PC) (where the Privy Council restricted the sub-category of 'graphic work' to deny protection for drawings adapted around new technical specifications in order to prevent the plaintiff from obtaining extended intellectual property rights in its lego blocks).
[81] Feist, [1991] USSC 50; 499 US 340, 346–350 (1991) (O'Connor J).