FEDERAL COURT OF AUSTRALIA
Cummins v Vella [2002] FCAFC 218
COPYRIGHT – infringement – paintings of flowers – whether necessary for trial judge to examine all works in issue – whether reproduction – whether more than use of style or technique
APPEAL AND NEW TRIAL – appellants successful – whether application should be dismissed or orders for remitter or new trial made – error caused by respondent’s counsel at trial and maintained on appeal – broad considerations of justice
Copyright Act 1968 (Cth) ss 13(1), 14(1), 31(1), and 36(1)
Federal Court of Australia Act 1976 (Cth) s 28
Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 at 2425 applied
S W Hart & Co Pty Ltd v Edwards Hotwater Systems (1985) 159 CLR 466 at 473 and 484 applied
Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 284 and 286 applied
Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 618 applied
Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at [11] – [18] and [88] applied
Commonwealth Bank of Australia v Quade (1991) 178 CLR 134 applied
GREG CUMMINS v DEAN VELLA
Q253 OF 2001
JOELLE CUMMINS v DEAN VELLA
Q254 OF 2001
HEEREY, MANSFIELD AND HELY JJ
16 JULY 2002
MELBOURNE (HEARD IN BRISBANE)
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IN THE FEDERAL COURT OF AUSTRALIA |
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BETWEEN |
GREG CUMMINS APPELLANT
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AND: |
DEAN VELLA RESPONDENT
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BETWEEN: |
JOELLE CUMMINS APPELLANT
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AND: |
DEAN VELLA RESPONDENT
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DATE OF ORDER: |
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WHERE MADE: |
THE COURT ORDERS THAT:
1. The appeals are allowed.
2. The judgment below is set aside and in lieu thereof it is ordered that the application be dismissed.
3. The respondent pay the appellants’ costs to be taxed of the appeal and in the court below, including reserved costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
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IN THE FEDERAL COURT OF AUSTRALIA |
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BETWEEN: |
GREG CUMMINS APPELLANT
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AND: |
DEAN VELLA RESPONDENT
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BETWEEN: |
APPELLANT
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AND: |
RESPONDENT
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JUDGES: |
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DATE: |
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PLACE: |
REASONS FOR JUDGMENT:
THE COURT:
1 The appellants Mr Greg Cummins and his daughter Ms Joelle Cummins appeal from a decision of a judge of the Supreme Court of Queensland (Jones J) which upheld the claim of the respondent Mr Dean Vella that the appellants had infringed his copyright in certain paintings. The judgment below is now reported at (2001) 53 IPR 538.
2 In his statement of claim Mr Vella asserted copyright in twenty-seven identified works and infringement by thirty-nine identified works of the appellants. However, at the invitation of Mr Vella’s then counsel his Honour confined his consideration to ten works of Mr Vella along with sixteen alleged infringing works of Mr Cummins and four of Joelle Cummins. The correctness of this approach has been one of the issues argued on the appeal.
3 At the trial it was accepted that copyright subsisted in Mr Vella’s works. It was infringement that was in issue. An important feature of the case was that the appellants never suggested that their works were totally independent creations, free of any influence by Mr Vella’s works. In Mr Cummins’ defence he admitted that
“1. he was influenced by the painting style (including choice of colours and subject matter) and application technique utilised by the applicant;
2. he paints in the same style and uses the same application technique utilised by the applicant;
3. he taught his daughter, the fourth respondent, to paint in the same style using the same application technique utilised by the applicant and the first respondent; and
4. because the same painting style (including choice of colours and subject matter) and application technique is utilised by the applicant, the first respondent and the fourth respondent, there are strong similarities between the works of the applicant, the first respondent and the fourth respondent.”
4 On the appeal senior counsel for Mr Vella submitted that even if the evidence reached no higher than those admissions a case of infringement would have been made out. As will hereafter appear, we do not agree.
Mr Vella’s works
5 Mr Vella commenced painting pictures for sale in the late 1980s. In 1992 he began to paint daisies and over time has produced more than 150 paintings on this subject, there being slight variations in details of background colour and shape of vase but with the composition of the subject remaining basically the same. In 1993 he started to paint irises and has produced in excess of 200 such paintings, which again are variations on the same theme. His Honour noted that Mr Vella claims, as he is entitled to do, copyright in each such painting on the basis of it being an original artistic work.
6 The present proceeding is concerned with Mr Vella’s paintings of flowers, yachts and abstracts. He also paints other subjects such as birds and frogs. His work generally is characterised by the use of bright primary colours with a limited range applied with an “impasto” technique, that is to say paint is applied directly from the tube. The effect he seeks to achieve is to build the depth dimension of the subject by the application of the paint. It is done in a naïf style which he has not changed much over the years.
7 Mr Vella sells his works through a gallery which he owns in Cairns called the Landmark Gallery. He shows works at other galleries including the Reef Gallery in Cairns, Pages’ Fine Art Gallery in Noosa and the Trevor Harvey Gallery in Sydney. His works have been illustrated in brochures, books and magazines such as Insight Sydney, Insight Tropical North and Australian Art Collection. He has had exhibitions in New York, Los Angeles, Sydney, China and Japan.
Mr Cummins’ works
8 Mr Cummins is a plasterer by trade. His particular expertise is in performing the more decorative aspects of plastering such as creating ornate ceiling centres, cornices and friezes. He has become familiar with the works of famous painters such as Rembrandt, Van Gogh, Picasso and Jackson Pollock through reading about them and their works. He has also been influenced by the art of Brian Spencer of Noosa, Cairns artist Des Spencer and the Hart family of Broken Hill, especially Pro Hart and his son Kym Hart, by having observed their works.
9 In late 1998 he was engaged in plastering work at Mr Vella’s Landmark Gallery. It was these visits, Mr Cummins said, that “inspired (him) to become serious about being an artist”. Soon afterwards he commenced experimenting. He used the impasto technique, not by building up heavy layers of paint, but rather by developing his own quick drying media and using his plastering skills. He first used plaster. This turned out to be far too porous. He then turned to an additive used to thicken fibreglass. Eventually, after six months of experimentation, he developed a medium made up of fibreglass pigment, fibreglass and some acrylic paint.
10 Mr Cummins gave evidence about the origin of some recurring features in his paintings. For example, a blue vase with a brown streak came from a Kari Pottery “Harvest Moon” design which his late wife liked. He used commercially available paints in standard primary colours. His floral arrangements, he said, were based on his experience of seeing arrangements at florists and what appeared to be the shape as affected by gravity. He described a particular way he had evolved of painting the petals of flowers with six direct movements.
Joelle Cummins’ works
11 Ms Joelle Cummins was 15 at the time of trial. Her four paintings were of floral arrangements. She said that she painted three of these in November 1999 from a photograph taken the previous month at the florist shop of Mr Kevin Westcombe in Cairns. The fourth painting was painted during the previous month from a photograph taken at the shop of Mr Vidio Guernieri. Both photographs were taken with the permission of the florist concerned. She did these paintings with some help from her father, particularly in the trowelling of background colour and also with the vase, “mainly to give the more curved effect”.
Judgment of the primary judge
12 At the outset of the judgment (at [3]) his Honour noted that counsel then appearing for Mr Vella had at the conclusion of his address “identified ten works of the applicant along with the alleged infringing work to which reference could be made to determine the issues”. Those works were as follows (the Roman numerals I and II indicate respectively Mr Vella’s or Mr Cummins’ work, the letters A, B etc indicate a particular category of subject matter and the numbers (1), (2) etc indicate pictures within that category).
Original Vella work Allegedly 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)
13 After referring to the fact that experts were not retained until after the action had been commenced, his Honour said:
“[11] … 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 issue should be determined.”
14 This approach was founded on the following exchange between counsel then appearing for Mr Vella and his Honour at the conclusion of counsel’s final submissions:
“Counsel: There are certain of our works which we say are plainly infringed. The most obvious example is perhaps the best way of putting it. An infringement by the respondent’s works – and we have to accept these are the high points of our case, and if your Honour was against us on those your Honour would be probably unlikely to find for us on the other matters. By no means do we say that these are the only alleged infringements, but rather that these are the most obvious cases …Can I tell your Honour what they are? There’s…
His Honour: Yes, certainly. I don’t propose, in my judgment, to deal with however many paintings there are in the statement of claim. I think it is thirty or something?
Counsel: Of course not.
His Honour: So if you can identify the paintings which you say…
Counsel: Yes.
His Honour:. …illustrate your point.”
Counsel then proceeded to identify the works which subsequently appeared in the judgment at [3] and continued:
Mr Archer: I emphasise, they are what we say are the best cases and we say that your Honour would need to look at the essential nature of the works and our original works, in accordance with Joy Music, to ascertain whether the essential nature has been adopted by way of visual representation in the works of the defendants.”
The case referred to is Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 2 QB 60.
15 There was no comment by counsel for the appellants. On one view, counsel for Mr Vella was saying that if he failed to establish infringement of the copyright in any one of the ten paintings he would fail in respect of all other works. At any rate, there is no ground for inferring that the trial was conducted on an agreed basis that if Mr Vella established infringement of all ten selected works the appellants accepted there must be a finding of infringement of Mr Vella’s remaining seventeen works, and by all of the appellants’ works which were before the Court.
16 After summarising the parties’ cases his Honour (at [15]) referred to the approach identified by Lord Millett in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 at 2425. This included the statement that “(t)he court undertakes a visual comparison of the two designs, noting the similarities and the differences”. As will appear, this injunction was not followed.
17 His Honour, under the sub-heading “Similarities Issue” discussed the evidence given by the two competing experts, Mr Andrew Frost for Mr Vella and Mr Vaughan Rees for the appellants. It was not in dispute that both had appropriate professional qualifications in art. His Honour said:
“[30] … 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.”
[31] …
[32] Mr. Frost pointed to a number of factors – subject matter, technique, colours, dimensions and framing of work – [and] 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’. 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’ 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’.
[33] 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’ of the respondent’s works. In cross-examination the following passage appears:-
‘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.’
[34] In my view, in the light of Mr. Rees’ lack of knowledge of relevant facts as detailed in the cross-examination (transcript 3 pp320-321) it would not be possible for Mr. Rees to express an opinion about independent creation of the respondent’s works.
[35] 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’. 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.”
18 His Honour considered (at [36]) that Mr Rees had 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”. His Honour noted that Mr Frost’s observations were attacked mainly because of their generality. Mr Rees had agreed that there were similarities of style, colour, format and subject matter. His Honour quoted (at [37]) the comments of Mr Frost and Mr Rees in relation to Mr Vella’s 1A(1) and (4) (“Irises”) and Mr Cummins’ IIA(1) (“Purple flowers”):
“‘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 paint application and framing.’
[38] Of the same comparison Mr Rees said –
Similar Parts Dissimilar Parts Assessment of Degree
Highlight on vase. Shape of vase High level of objective simil-
Floral still life. Arrangement of flowers arity between technical treat- Application of paint ment of vase. Medium level
technique of objective similarity of
Other subject matter rest of work. High possibil-
Composition ity of incidental independent
Fruit creation given the limited
Colour/colours and/or visual vocabulary of work.
tones Highly derivative of pre-
Leaves and foliage existing works”
Degree of colour
contrast
19 His Honour said (at [39]) that the addition of a pineapple or minor change in the flower structure did not save an act of infringement if the substantial part test was satisfied. His Honour then said:
“[40] 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 and the competing descriptions of the experts. It will suffice if I give one further comparison from the IC/IIC series (yellow gerberas).
[41] 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’.
[42] Mr Rees said –
Similar Parts Dissimilar Parts Assessment of Degree
Highlight on vase. Shape of vase High level of objective
Floral Still life. Arrangement of flowers similarity between
Number of flowers technical treatment of
Application of paint vase. Medium level of
technique Objective similarity of
Other subject matter rest of work. High
Composition possibility of incidental
Colour/colours/and/or independent creation
tones given the limited visual
Leaves and foliage vocabulary of work.
Degree of colour Highly derivative of pre-
contrast existing works…”
20 His Honour said (at [43]) that he accepted the statements of similarities set out by Mr Frost and thought that the similarities were “in the main, instances of altered copying”. After referring to what was said by Lord Scott in Designers Guild at 2431H his Honour then said:
“[44] 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.
[45] 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.”
21 Under the heading “Did the first respondent copy the applicant’s works?” his Honour noted evidence that Mr Cummins in February and April 1988 had done plastering work at the home of Mr John O’Hara, a friend of Mr Vella and the owner of the Reef Gallery. Mr O’Hara had a number of Mr Vella’s paintings in his house. In September 1998 Mr Cummins carried out plastering work at the Landmark Gallery. Mr Cummins had admitted seeing some of Mr Vella’s paintings of purple flowers, multi-coloured works and yachts. His Honour considered it “notable that it was at this time that he became serious about taking up painting for a living”. His Honour cited evidence of Mr Cummins’ visit to the Reef Gallery on a number of occasions between December 1998 and March 1999 and observations of him looking very closely at the paintings, especially Mr Vella’s work, at a distance of about six inches. This occurred about eight times. His Honour said:
“[49] There is no evidence that (Mr Cummins) 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 (Mr Vella’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.”
22 His Honour referred to evidence that in February/March 1999 Mr Cummins framed two of his works and placed them for sale in a gallery in Cairns. They bore the pseudonym “Delarati”. Later he displayed works under the pseudonym “Greg Sommerset”, the name that has been used on his paintings since June 1999. Mr Cummins’ explanation of this was that he used a pseudonym to avoid his paintings “being seen as the work of Greg Cummins, the plasterer”. The change from Delarati to Sommerset was made because he thought the former name was “too contrived”.
23 By March or early April 1999 Mr Cummins’ works had come to the notice of Mr Vella. According to Mr Cummins, Mr Vella made some threats which prompted a letter dated 14 July 1999 from Mr Cummins, that is some three months later. His Honour found it made a number of allegations which were false.
24 In late June 1999 Mr Cummins approached Mr Graham Smith, a picture framer who was the regular framer of Mr Vella’s works, and asked to have his works framed in the same way as Mr Vella. He delivered his works and said that he did not want Mr Vella to see them. If Mr Vella came in to Mr Smith’s shop, Mr Cummins would prefer it if his paintings were facing to the wall. According to Mr Smith’s evidence, which his Honour accepted, Mr Cummins said, “I do paintings very similar to Dean Vella’s work”.
25 Turning to the facts which might allow the drawing of an inference of copying, his Honour said (at [59]) that the starting point was the fact that Mr Cummins could point to no relevant artistic experience prior to November/December 1998 but by March the following year he was offering paintings for sale. The paintings showed “the same or similar subject matter, style, colour, format and technique” as Mr Vella’s paintings. There appeared to have been even at that time no successful experimentation by Mr Cummins with other types of flowers, other formats or even other receptacles in which the flowers are placed.
26 His Honour considered Mr Cummins’ credibility was “very much in issue” and that he was unreliable in his testimony. He found that Mr Cummins engaged the services of the framer Mr Smith “simply to make the presentation of his works more Vella like than his own efforts had been able to achieve”. With respect to the use of pseudonyms, his Honour found (at [63]) that while Mr Cummins had given a plausible explanation for the use of those names,
“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.”
27 His Honour concluded:
“[64] These actions on the part of (Mr Cummins), together with what I find to be the marked similarities and contrived dissimilarities in his works when compared with (Mr Vella’s) works, leads me to the conclusion that he has in fact copied (Mr Vella’s) works of floral arrangements.”
28 His Honour said (at [65]) he was not prepared to make any finding in relation to the abstract paintings. His Honour did not refer to the yacht paintings.
29 Under the sub-heading “Has there been a breach of copyright?” his Honour first noted that what has been taken must be all or a substantial part of the copyright work. His Honour referred to Designers Guild, S W Hart & Co Pty Ltd v Edwards Hotwater Systems (1985) 159 CLR 466 at 473 and 484 and Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278. His Honour (at [71]) accepted that fashions in artistic works come and go and are sometimes later revived and that all works of art are “derivative to some degree” but, his Honour said, debate in these matters becomes “futile once there is a finding of copying”. His Honour continued:
“[72] 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 SW 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 (Mr Cummins) were both in quality and in quantity a substantial part of Mr Vella’s works.”
30 We take it that “the features” referred to by his Honour were the factors identified by Mr Frost and referred to by his Honour at [32] quoted above, that is “subject matter, technique, colours, dimensions and framing of work”. His Honour (at [43]) had accepted the “statement of similarities” set out by Mr Frost.
31 As to the claim against Joelle, his Honour noted that she had had no experience prior to November 1998 and that he was satisfied that she “with assistance from Mr Cummins did in fact reproduce the four works in question”. He found that Joelle in the company of Mr Cummins at various times inspected works of Mr Vella. His Honour found that the paintings infringed Mr Vella’s copyright, “for the same reasons that applied to the first respondent’s works”.
32 His Honour made the following 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.”
Failure to consider all works in issue
33 The contest at this trial was whether Mr Vella’s copyright in twenty-seven paintings, or some of them, had been infringed by the appellants’ thirty-nine paintings, or some of them. Mr Vella asserted (and the appellants did not dispute) the ownership of copyright in each of his paintings, as an individual artistic work in its own right. The appellants’ paintings also were individual works, even though Mr Vella alleged that in some instances the copyright in one of his paintings was infringed by more than one of the appellants’ paintings.
34 In respect of each instance of alleged infringement of a Vella painting by a Cummins painting the Court had to decide whether (a) the latter was a copy of the former, that is to say there was (i) sufficient objective similarity to amount to the latter being a reproduction or adaptation of the former and (ii) the former was in fact the source of the latter and, if so, (b) whether the copy was of a substantial part of the Vella work: Copyright Act 1968 (Cth) ss 13(1), 14(1), 31(1), and 36(1), Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 618, S W Hart at 472, Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at [11] – [18].
35 The identification of any particular number of paintings in the statement of claim could not be, as his Honour said (at [11]), “unnecessarily large”. Mr Vella’s paintings were individual works. It was up to him to allege and prove how many were the subject of copyright infringement and, in respect of each, which of the appellants’ works infringed. The number of works identified would only be “unnecessarily large” if it were sufficient to identify a common style, technique and subject matter. But the law did not give Mr Vella a monopoly in those features.
36 Neither in law nor in forensic reality did it follow that a finding of infringement by sixteen (or one, or twenty) Cummins paintings of the copyright in ten (or one, or twenty) Vella paintings would inevitably result in the same conclusion in respect of the pleaded works not the subject of such a finding. What Mr Vella’s counsel said implicitly recognised this truism. The instances he selected were “the high points of our case” and “the most obvious cases”. So there must have been other instances in which Mr Vella’s case was less strong, and perhaps to the point of not making out a case at all. Tedious though it might have seemed, there was no alternative to working through the allegations in respect of all the alleged infringements. This was a task of judgment for the trial judge and could not be discharged by a global delegation to an expert. In Ancher, Mortlock at 286 Street J said:
“The decision upon the issue of similarity is an original decision for the court itself. It is to be reached upon an assessment of such similarities and dissimilarities as appear to the court between the plans or buildings under consideration. The fact that one particular expert of the highest authority and of unimpeachable credit is permitted to swear to an opinion on similarity does not relieve the court of the responsibility of forming its own opinion on this issue. … But the important point is that, in distinction from the judicial process in relation to expert evidence such as is normally encountered in litigation, a court in the present type of litigation is entitled, and, indeed, bound, to form and act on its own original opinion.”
37 But his Honour did not even do this. His Honour said, in the exchange with counsel quoted above, that he did not propose in the judgment to “deal with however many paintings there are in the statement of claim”. A fair reading of the judgment indicates that this was the course he in fact adopted. In the passage already quoted (at [30] in the judgment below) his Honour said that it was “of course necessary now only to refer to those relevant paintings set out in paragraph 3 of these reasons”. And of those selected paintings his Honour only analysed in any detail at all IA(1) and (4) against IIA(1) and IC(5) against IIC(3). It is only in respect of these paintings (which we shall refer to as category (i), as distinct from category (ii), the remainder of the paintings in [3], and category (iii), the other paintings in the statement of claim) that his Honour discharged the obligation of personal, physical inspection and the formation of opinion. At [44] his Honour speaks of his own examination of paintings, but the context and subject matter indicates that his Honour was referring only to the paintings in respect of which he had quoted extracts from the reports of Mr Frost and Mr Rees. Moreover, at [40] his Honour states that he did “not see the need to burden these reasons with a complete reference to the catalogue of similarities of each of the relevant paintings”. By “relevant paintings” his Honour must have had in mind the paintings identified at [3] of his reasons, which he there referred to as “(t)he relevant works”. His Honour continues (at [40]) to speak of the “high degree of repetition in the competing descriptions of the experts”. So the conclusion to be drawn is that in respect of the remainder of the paintings in [3] (category (ii)) his Honour was relying solely on the expert Mr Frost and not on his own examination.
38 On the hearing of the appeal, the case for Mr Vella was a denial that the trial judge “confined his reasons and consideration to 10 works only” (submissions par 4.1). It was said that his Honour “was able to accept Mr Frost’s Reports in toto without going through each item in them” (ibid). For the reasons already mentioned, those arguments must be rejected. However, senior counsel did not put an alternative case in which we were taken to the paintings in categories (ii) and (iii) and invited to form our own opinion on the basis of arguments addressed to us. We do not think it would be right for us to undertake that exercise unassisted, and in the absence of argument from senior counsel for the appellants. In any case, senior counsel for Mr Vella expressly submitted that we should not undertake an examination of the works ourselves. His alternative case was a remitter or new trial.
39 Thus we consider that the appeal should succeed in relation to the works in categories (ii) and (iii). The question remains as to whether a case of error has been made out in relation to category (i).
Copying style or technique
40 Not all use of a copyright work will constitute copying amounting to infringement. In Ancher, Mortlock at 284 Street J said:
“An architect may legitimately inspect an original plan or house and then, having absorbed the architectural concept and appreciated the architectural style represented therein, return to his own drawing board and apply that concept and style to an original plan prepared by him and in due course to a house built to such plan. There is a dividing line separating such a legitimate process from an inspection followed by a later copying of a substantial part of the physical object inspected, even though the copying be from memory; the latter exercise does infringe. In many instances it will be difficult to state categorically whether the dividing line has been crossed.”
The distinction between legitimate use of style and technique and illegitimate copying of form may be affected by the nature of the subject matter. In Eagle Home, also a case concerning architectural plans, Lindgren J, with whom Finkelstein J agreed, said (at [88]):
“A drawing of a proposed home, that is, a diagramatic representation of something that has no existence except as an idea or concept, is different from a drawing that purports to represent an object that already exists, such as the
Sydney Harbour Bridge, a particular mountain or the human hand mentioned [in Kenrick & Co v Lawrence & Co (1890) 25 QBD 99].”
41 In the present case, as the passage already quoted from Mr Cummins’ defence demonstrates, there was an issue as to whether the influence (to use a neutral word) of the Vella works on the Cummins works went beyond matters of style, concept and technique. This was in a context where Mr Vella produced very many works of similar style and subject matter. Each of these works would presumably be the subject of copyright which would pass to purchasers, thus entitling them to reproduce copies and restrain others (including Mr Vella himself) from doing so. There would be more than 150 similar copyright Vella paintings of daisies and more than 200 copyright Vella paintings of irises. One would not expect to find very great differences sufficient to show non-reproduction and thus non-infringement. Unless that were so, there would be a statutory monopoly in naïf impasto style paintings of daisies and irises for Mr Vella’s lifetime and 50 years thereafter.
42 There are clear indications in the judgment that the distinction between form and expression on the one hand and style and technique on the other hand was not applied. The reliance on the factors identified by Mr Frost (“subject matter, technique, colours, dimensions and framing of work”) suggests that an incorrect, or at the very least potentially misleading, approach was adopted. Two paintings might have all these factors in common and yet be clearly so different in appearance that one could not possibly be said to be a reproduction of another. It would therefore not be to the point that the works might appear to the untrained eye (or the trained eye) to be the work of the same artist.
43 Similarly, his Honour speaks (at [44]) of 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” as forcing him to the conclusion that “the similarities are sufficiently extensive not to be coincidental”. But it was never suggested that such similarities as existed were “coincidental”. And if those similarities did not go beyond style, colours, subject matter and technique, Mr Vella’s case of infringement would not be made out.
44 The very fact that his Honour considered only the works designated in paragraph [3] of his judgment, and of those works analysed only two allegations of infringement, in itself points to a conclusion that his basic approach was misconceived. If it were sufficient for the purposes of finding copyright infringement in works of the kind presently under consideration to show that the alleged infringer had used very similar style, colours, subject matter and technique to those of the copyright owner, then one could legitimately use a few examples as samples of such similarities and extrapolate the result. But that is not the law.
45 We have examined the paintings in category (i). While there could be said to be some similarity in the first of the comparisons (irises), those in the second (yellow gerberas) bear nothing like a close resemblance to each other. The number of flowers is different. The flowers themselves look quite different, with the size of the stamen proportionately very different to the size of the petals. This comparison confirms a conclusion from the text of the judgment that an inappropriate test has been applied.
Orders
46 Having found error, the alternatives available under s 28 of the Federal Court of Australia Act 1976 (Cth) are to set aside the judgment and enter judgment for the appellants, or to give some other judgment, or to remit the proceeding to the trial judge, or order a new trial.
47 The present case differs from the more usual one where an appellant has made out a case of “misdirection, misreception of evidence, wrongful rejection of evidence or other evidence” and, against the opposition of the respondent, is seeking a new trial, or remitter: Commonwealth Bank of Australia v Quade (1991) 178 CLR 134 at 140. Rather, it is the case of a respondent seeking a new trial or remitter as an alternative to a primary submission that the appeal should be dismissed. Nevertheless, the ultimate touchstone is “broad considerations of justice”: Quade at 143.
48 In our opinion, the basic flaw in this proceeding was the result of Mr Vella, by his counsel, leading his Honour to abdicate jurisdiction. This put the appellants in the position of either accepting a judgment wrongly obtained or embarking on the risky and expensive course of a substantial appeal. It would not be fair or reasonable in our opinion to let Mr Vella have in effect a second chance to run his case differently. Moreover, there were other errors of law, as identified above.
49 The appeals will be allowed, the judgment below set aside and in lieu thereof it is ordered that the application be dismissed. There will be an order that Mr Vella pay the costs of the appellants of the appeal and in the court below, including reserved costs.
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I certify that the preceding forty-nine (49) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Heerey, Mansfield and Hely . |
Associate:
Dated: 16 July 2002
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Counsel for the Appellants: |
M J Colbran QC and D P Murzone |
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Solicitor for the Appellants: |
Thomas Stevens & Company |
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Counsel for the Respondent: |
J J Garnsey QC and S Dowling |
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Solicitor for the Respondent: |
Coudert Brothers |
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Dates of Hearing: |
14, 15 May 2002 |
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Date of Judgment: |
16 July 2002 |
