Works of Artistic Craftsmanship in the High Court of Australia: The Exception as Paradigm Copyright Work

Published date01 September 2008
AuthorJustine Pila
DOI10.22145/flr.36.3.4
Date01 September 2008
Subject MatterArticle
WORKS OF ARTISTIC CRAFTSMANSHIP IN THE HIGH
COURT OF AUSTRALIA:
THE EXCEPTION AS PARADIGM COPYRIGHT WORK
Justine Pila*
In Burge v Swarbrick,1 the High Court of Australia delivered an important decision on
the most elusive of works protected by copyright: the work of artistic craftsmanship
('WAC'). Drawing on the history and reasons for that protection, and adopting the
analysis of Lord Simon in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd,2 the
Court affirmed the orthodox view that such works have 'special status' in law on
account of their 'real artistic quality'.3 In its judgment, whether a work has that quality
depends on whether it is a work of craftsmanship the artistic form of expression of
which is sufficiently 'unconstrained by functional considerations'.4
In the discussion below I consider that view, and other aspects of the Court's
decision. I suggest the requirement for artistic quality is simply a requirement for a
WAC 'not imaginary, unreal or apparent only'.5 Further, the properties of this type of
work are better conceived in historical terms than the formal aesthetic terms of the
Court. On this view, whether an object is a WAC depends on both its properties of
form and the history of its individual production, meaning the (subjective) intent of its
individual author and view of society with respect to its nature. The same view finds
support in the reasoning in Burge, and is consistent, too, with the judgment in Hensher,
as well as more recent United Kingdom ('UK') cases. As those cases reflect, even
conceived in historical terms, WACs are not exceptional works but rather paradigmatic
works, contrary to the orthodox view above. The fact that they are functional too does
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* 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) 232 CLR 336 ('Burge').
2 [1976] AC 64 ('Hensher').
3 Burge (2007) 232 CLR 336, 353 (quoting from Coogi Australia Pty Ltd v Hysport International
Pty Ltd (1998) 86 FCR 154, 168 (Drummond J) ('Coogi')). See also Burge (2007) 232 CLR 336,
356 (referring to 'the need for a real or substantial artistic element').
4 Burge (2007) 232 CLR 336, 364.
5 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,
act=1160176> at 27 August 2008, text accompanying n 90).
364 Federal Law Review Volume 36
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not lessen their need for artistic quality, undermining the support of previous cases,
including Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd,6 for extending the
statutory categories of works to ensure that functional considerations do not constrain
the scope for legal protection.
Running through this discussion are general themes, also explored in other
papers,7 of the role of history (including intent) and categories of works in copyright
law. My suggestion has been that categories matter, not only on account of their
statutory use, but also their impact on judicial perceptions (and sometimes
conceptions) of individual works. Similarly with respect to history itself: the specific
origins of an expressive object are part of what constitutes the object qua work, while
that which the statutory categories denote are different authorial (expressive)
traditions. The same view, it is submitted, is central to Hensher, and also to the High
Court's decision in Burge.
I THE DECISION IN BURGE AND REASONS FOR IT
The respondent in Burge, Mr Swarbrick, was the designer of the 'JS 9000' yacht, and
principal of a company that manufactured the yacht for sale in Australia and
elsewhere.8 The litigation concerned an allegation of copyright infringement arising
from the unauthorised copying by the appellants of 'a hand-crafted full scale model' of
the hull and deck sections of the yacht ('the Plug'), and inverted copies of the Plug in
the form of hull and deck moulds.9 According to the respondent, the Plug and moulds
were works of artistic craftsmanship and sculptures in which copyright subsisted
under the Copyright Act 1968 (Cth) ('the Act'). The appellants denied this, and further
defended the claim with reference to the copyright/design overlap provisions
contained in s 77 of the Act. According to that section, copyright in an artistic work
other than a building, model of a building, or work of artistic craftsmanship, is not
infringed where a corresponding design of the work is or has been applied industrially
by or with the licence of the copyright owner in the place of industrial application, and
products to which that design has been applied are sold, let for hire, offered or exposed
for sale or hire in Australia or elsewhere, at a time at which the corresponding design
is not itself registrable under the Designs Act 2003 (Cth) or has not been registered
under that or its predecessor (1906) legislation.
At first instance Carr J rejected the appellants' s 77 defence and found them to have
infringed the respondent's copyright. An appeal to the Full Federal Court was
unsuccessful, resulting in a further appeal to the High Court. That appeal was allowed,
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6 (2002) 119 FCR 491 ('Desktop Marketing Systems'), affirming Telstra Corporation Ltd v Desktop
Marketing Systems Pty (2001) 181 ALR 134.
7 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.
8 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) 232 CLR 336,
336). Images of the yacht can be viewed on the website of the Centre for Intellectual
Property & Information Law (CIPIL):
museum/burge_v_swarbrick_[2007]_hca_17.ph
p> at 27 August 2008.
9 Burge (2007) 232 CLR 336, 344.

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