FEDERAL COURT OF AUSTRALIA

Swarbrick v Burge [2004] FCA 813

INTELLECTUAL PROPERTY – copyright – designs – applicant (a naval architect and shipwright) prepared freehand drawings of a yacht – those drawings digitised and scanned into a computer – applicant then made, by hand, a “Plug” in the shape of a yacht – Plug substantially different from freehand and digitised drawings – applicant made major changes to dimensions of Plug – applicant fashioned other changes manually and by eye – used Plug to make mould for manufacture of mouldings of fibreglass yacht by vacuum infusion – applicant’s licensee manufactured and sold 32 such yachts in Australia and overseas – respondents obtained an identical yacht from former employee of applicant’s licensee and, by reverse engineering, had prepared a flop mould of the hull and were also involved in various stages of the manufacture of a deck moulding intended for use with that hull – respondents intended to manufacture and sell the yachts – whether applicant author and owner of copyright in the Plug, hull and deck moulds made from that Plug, hull and deck mouldings made from those moulds and the first yacht built – whether applicant author and owner of copyright in certain drawings made during the course of and after construction of the Plug – whether applicant lost copyright protection through industrial application of an unregistered corresponding design – whether the applicant’s Plug, moulds or the yacht were “sculptures” and also works of artistic craftsmanship – whether a sculpture can be a work of artistic craftsmanship for copyright purposes.

Copyright Act 1968 (Cth), ss 10(1), 32, 74, 77

Wham-O Manufacturing Company v Lincoln Industries Ltd [1984] 1 NZLR 641 applied

Breville Europe plc & Ors v Thorn EMI Domestic Appliances Ltd [1995] FSR 77 referred to

Sheldon and Hammond Pty Ltd v Metrokane Inc & Ors [2004] FCA 19 referred to   

George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 applied

Cuisenaire v Reed [1963] VR 719 referred to

Merlet v Mothercare plc (1984) 2 IPR 456 referred to

Commission of Taxation v Murray (1990) 21 FCR 436 referred to

Coogi Australia Pty Ltd v Hysport International Pty Ltd & Ors (1998) 86 FCR 154 applied

NABM of 2001 v Minister for Immigration and Multicultural Affairs [2002] FCA 335 referred to

Grain Elevators Board (Vic) v Dunmunkle Corp (1946) 73 CLR 70 referred to

Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 referred to

Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134 referred to

United Pacific Industries Pty Ltd v Madison Spate Pty Ltd (1998) BC 9802268 referred to

Bonz Group Pty Ltd v Cooke [1994] 3 NZLR 216 referred to

Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120 referred to

NABM of 2001 v Minister for Immigration and Multicultural Affairs [2002] FCA 335 referred to

Grain Elevators Board (Vic) v Dunmunkle Corp (1946) 73 CLR 70 referred to

JOHN HARLEY SWARBRICK v BRENT BURGE, TREVOR ROGERS,

BENJAMIN WARREN, BOLDGOLD INVESTMENTS PTY LTD,

GLEN PETER BOSMAN and SERGIO EDWARD ZAZA

W 195 of 2003

CARR J

24 JUNE 2004

PERTH

THE COURT ORDERS AND DECLARES THAT:

1.         Copyright subsists in, and the applicant is and has been (since the dates variously referred to below) the owner of and entitled to the copyright in each of the items described in paragraph 1 of the application, being the Plug, the Moulds, the hull and deck Mouldings (all since approximately 2001), the first JS 9000 yacht (since approximately December 2001) and the Drawings (since their creation at various dates between 2001 and about March 2002) as those items are defined in the reasons for judgment published today (“the artistic works”).

2.         The fourth respondent has infringed the applicant’s copyright in each of the artistic works other than the deck Mould and the deck Moulding by producing an incomplete flop mould of the hull of JS 9000 yacht (“the Infringement”) and has engaged in a course of conduct which, but for the grant of interlocutory relief, would have resulted in infringement of the applicant’s copyright in the deck Mould and the deck Moulding.

3.         The fifth and sixth respondents directed and procured (and thereby authorised) the Infringement by the fourth respondent and by doing so also infringed the applicant’s copyright to the same extent as the fourth respondent. 

4.         The first, second and third respondents were directly involved in the Infringement by the fourth respondent and were thereby party to those tortious acts of infringement as joint tortfeasors.

5.         (a)        Paragraphs A, C and E of the prayers for relief in the respective cross-claims of the first and third respondents be dismissed. 

(b)       Paragraphs A, B, D and E of the prayers for relief in the respective cross-claims of the second, fifth and sixth respondents be dismissed; and

(c)        Paragraphs A, B and D of the fourth respondent’s cross-claim be dismissed.

6.         The questions

(a)        of the further relief to which the applicant may be entitled as against the respondents, including any further declaratory or injunctive relief, orders for assessment and payment of damages, any account of profits and interest; and

(b)       remaining in the cross-claims

are to be heard and determined by a judge or by such other person as a judge may direct.

7.         The respondents pay the applicant’s costs of the proceedings to date including any reserved costs and the costs of the motions notice of which was filed on 12 September 2003 and 3 October 2003 respectively.

8.         The interlocutory injunction granted on 12 September 2003 shall remain in force until further order.

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

I N D E X

                                                                                                                              Page

Introduction                                                                                                               1

The Facts                                                                                                                   2

The Issues to be Decided                                                                                          10

The Legislative Framework                                                                                       11

The Plug                                                                                                                   13

The Construction Point                                                                                              22

The Hull and Deck Moulds, the Mouldings and the first JS 9000                                27

The Drawings                                                                                                            29

Infringement and Liability                                                                                           30

The Respondents’ Alternative Argument – Section 77(2)                                           35

My Reasoning                                                                                                           37

Conclusion                                                                                                                40

Costs                                                                                                                        40

REASONS FOR JUDGMENT

introduction

1                     The applicant, a naval architect, sues the respondents for breach of copyright which he claims in certain items which relate to a yacht known as the “JS 9000”.  Those items are as follows:

(a)                a plug model (“the Plug”) handcrafted by the applicant;

(b)               a hull mould and a deck mould taken from the Plug (“the Moulds”);

(c)                hull and deck mouldings (“the Mouldings”) made from the Moulds;

(d)               the JS 9000 yacht itself; and

(e)                a number of drawings (“the Drawings”).

2                     The applicant claims that the Drawings are “artistic works”within the meaning of that expression in s 10(1) of the Copyright Act 1968 (Cth) (“the Act”), that the Plug is also an artistic work being both a sculpture and a work of artistic craftsmanship within the meaning of s 10(1) of the Act, that the Moulds are also artistic works (though not works of artistic craftsmanship) being sculptures or engravings within s 10(1) when read with the definition of “sculpture” in s 10(1) and that the Mouldings also are (like the Plug) artistic works being both sculptures and works of artistic craftsmanship. 

3                     On 6 November 2003 I made an order, by consent, that the question of liability be heard and determined separately from questions of relief.  These reasons deal with liability.

the facts

4                     There were only two witnesses for the applicant, namely, the applicant himself and Mr Paul Burnham. The applicant was cross-examined vigorously and extensively.  His credit was placed in issue. 

5                     I am well aware of both the financial and professional interest that the applicant has in the outcome of these proceedings.  I took that into account in weighing his evidence.  I noted that the applicant occasionally volunteered information which he thought to be favourable to his case.  I took that into account (as a negative factor) in assessing his credit.  But I accept his evidence as being truthful.  There was nothing in his demeanour which would point me one way or the other in that regard.  I noted that, as a general rule, the applicant answered the questions which were put to him in a direct and non-evasive manner.  There was nothing in his evidence which I found to be inherently unlikely.  That includes the method, referred to later in these reasons, by which the applicant said he constructed the Plug.  Nor was there anything in the documentary evidence which led me to doubt the applicant’s evidence. 

6                     The respondents impugned the applicant’s credit on the basis that he was late in claiming that visual appeal was a critical part of the process of the design and manufacture of the JS 9000.  The respondents pointed to the fact that it was not until his third affidavit that aesthetic considerations were mentioned. 

7                     I do not think that there is any substance in this point.  The applicant filed two affidavits (one in which confidentiality was sought) with his principal application.  In that application he sought interim injunctive relief on an urgent basis.  I do not think that it was exceptional that the applicant did not raise the issue of artistic craftsmanship until the respondents made it clear that they were going to rely upon s 77(2) of the Act. 

8                     I formed the impression that the applicant was highly intelligent, was well-versed in the field of yacht design and construction, and that he was an honest witness. 

9                     The applicant was born into a family who have built vessels in Western Australia for many years.  He worked in the boatyard of the family firm, Swarbrick Brothers Yachts, as a teenager and young man where he learnt the manual skills of a shipwright. 

10                  The applicant has a diploma in Naval Architecture, Marine Engineering and Yacht Design, (with Honours), from Westlawn Institute of Marine Technology, Stamford, Connecticut. After working for about six years in the family firm, the applicant was employed by a naval architect, Phillip Curran Yacht Design, in relation to various commercial vessels, for about one year.

11                  He then spent about another year (1982-1983) engaged in naval architecture on Sydney Harbour ferries and then in naval architecture and marine engineering on the America’s Cup yacht “Advance”.  That was in the employment of Messrs Alan Payne & Partners. 

12                  From 1983 to the present date the applicant has been self-employed.  During that period he has designed numerous yachts. The applicant says, and (as I have mentioned) I believe him, that he can and does make some of his own models and plugs and because he has the design skills of a naval architect, he can create a shape without the need, in many cases, to prepare or to refer to drawings.  The applicant claims that to shape a plug without reference to drawings involves a high level of manual skill and that the ability to do so is gained from many years of experience and training. 

13                  In his affidavit evidence the applicant describes how he came to design and construct the JS 9000 yacht.  The sequence of events was as follows. 

14                  In the mid 1980s the applicant had in mind designing a two-man day sailing monohull yacht, similar to a popular yacht known as a “Flying 15”.  He did some freehand drawings of the hull geometry of the Flying 15 which were later digitised into a computer. He was thus able to determine the hydrostatic qualities of the Flying 15, in particular its displacement and righting moment.  Initially the applicant wanted a yacht with a similar sail area to the Flying 15, but with a greater righting moment.

15                  He first set about designing the yacht which ultimately became the JS 9000 in the late 1980s.  The applicant prepared a series of freehand drawings through which he worked up the basic shape of the yacht.  Those drawings (since lost or destroyed)were then digitised into a computer, which enabled them to be viewed in either two-dimensional or three-dimensional form, to assist in hydro-dynamic calculations i.e. to determine in broad terms the likely handling characteristics and displacement of the finished yacht.  He then built, by hand, a timber quarter-scale model of the hull and deck structure of the yacht.  He took a mould from the scaled model and from this made a fibreglass scale model which, in 1989 or 1990 he tank-tested in Southampton, England.  The applicant used the results of the tank test to develop further the computer models and his drawings for the yacht. 

16                  In about 2001, following certain discussions with a Mr Paul Burnham (Mr Burnham, an architect, but not a naval architect, was until these proceedings commenced, a director of a company which the applicant has licensed to produce the JS 9000), the applicant decided to build the Plug.   

17                  The Plug is a hand-crafted full-scale model of the finished yacht which is, in all respects,visually identical to the hull and deck of the finished JS 9000 yacht. 

18                  The applicant used a computer to generate a full-sized body plan based on his earlier freehand drawings.  The body plan was printed on mylar and was similar to a dressmaking pattern.

19                  The applicant laid the body plan over medium-density fibrewood (“MDF”)from which each individual section of the hull and deck was then cut out.  The sections were then set out on a building jig to form the skeleton of the Plug. 

20                  The next step the applicant took was to “strip plank” that skeleton.  This involved using more MDF to form, in effect, the skin of the Plug.  He fitted each plank individually by hand.  The applicant’s evidence is that this process involved specialised shipwrighting skills and a lot of experience.  It took about ten days and was particularly difficult around the bow section of the hull and deck.  The applicant fitted small spline battens in between the major strip planks to fill the gaps.  He then caused the outer surface of the Plug to be coated with an epoxy fibreglass skin to ensure that the timber did not move.  He did this by hand with rubber squidges. 

21                  The applicant then carried out a “hand fairing” process to ensure that the surface of the Plug was smooth.  He estimated that this took approximately 500 man hours to complete.  He used an assistant who worked under his direction. 

22                  Initially the process involved using pnenolithic 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.  The applicant marked (or caused to be marked) the highs and lows on the surface which was then handfaired through the rough stages using “torture boards”. 

23                  As the surface of the Plug became fairer (smoother) the applicant used different coloured epoxy paint to mark the highs and lows of the surface of the Plug.  He also used less abrasive grades of sandpaper, eventually using a very fine grade of wet sandpaper to work up a high gloss sheen over the surface of the plug.  The applicant’s evidence is that this 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 fairing battens which only marked the highs and lows. 

24                  The applicant says that the geometrical fairness of the Plug was paramount in maintaining the laminar and boundary layers over the whole surface.  Geometrical fairness enhances the delaying of turbulent boundary layer separation and the laminar (film) layer is promoted by the hull Plug being proofed by a high gloss finish. 

25                  The applicant’s evidence is that while he was crafting the Plug, both at the strip planking and hand fairing stage, he made many adjustments to its appearance based purely on aesthetic grounds.  The yacht depicted in the digitised drawing was to be approximately 6.5 metres long, but the resulting hull Plug was approximately 7.5 metres in length.  The applicant gives the following details of the adjustments which he made to ensure that the Plug was as aesthetically pleasing as he could make it.  They were at:

• The stem in profile and sectional plan;
• The knuckle region (the intersection of the stem and the forefoot);
• The freeboard (the height at which the yacht sits above the water line);
• The transom (hull, deck and cockpit intersections) geometry; and
• The cockpit and cabin geometry, radi coving at intersections. 

26                  The applicant says that the choice of non-skid was also based on aesthetic criteria to maximise the streamlined appearance of the yacht. 

27                  The applicant then built a deck plug (which also became part of the Plug), without the use of any drawing.  Initially the deck Plug had “wings” to be used by the crew to gain leverage.  The applicant later removed the wings to improve the yacht’s visual attraction. 

28                  In his third affidavit the applicant describes how he caused the Plug to be lengthened on at least three occasions, and caused the freeboard to be increased at least twice.  He swears that the length was increased, in part, to create the appearance of a slender yacht.  He did not use any drawings to make the modifications and alterations which he describes.  He says that these alterations were done by hand by himself or under his direction.  This included walking around the Plug and regularly setting up ladders as the Plug developed. 

29                  The Drawings (there are four of them) have been marked for identification “A” to “D”.

30                  The applicant’s evidence is that he drew Drawing A by hand.  He is unsure exactly when he drew it, but believes it was drawn sometime after the hull part of the Plug had been cut in two, but before he increased the freeboard.  The applicant says that Drawing A was prepared to enable him to perform calculations necessary to place the keel.  Drawing A was not otherwise used in the construction of the Plug (i.e. it was only used to determine the keel placement).

31                  The applicant drew Drawing B by hand in about January 2002 (i.e. about one month after the first JS 9000 was launched) for exhibition at the Düsseldorf Boat Show.  It contains a number of changes designed to conceal aspects of the design of the JS 9000 with a view to prevent copying.  

32                  The applicant prepared Drawing C in about March 2002.  He sent it to a dealer in Switzerland to demonstrate how the ropes on the JS 9000 were to run.  The applicant says that he drew Drawing D,but cannot remember when.  He believes that it was prepared before the Plug was finished and reflects his thoughts on proposed sail configuration.

33                  Once the Plug was completed, the applicant made moulds of it.  The moulds comprised an exact copy (although inverted) of the Plug.  He took moulds separately of the hull and deck sections.  The deck mould was made first and then the hull mould.  The process was the same for each.  The process was as follows. 

34                  A split line was put around the hull and deck sections.  All smooth surfaces were compounded to ensure a high gloss sheen on the surface of the Plug.  The Plug was then waxed with a mould release wax with six applications being applied by hand over a two-day period. 

35                  The Plug was then sprayed with a polyvinyl alcohol release agent film followed by a spray of tooling gel coat.  The applicant then applied, by hand, 250 gram chop strand mat (a type of fibreglass) using a derecane resin. 

36                  The Plug was allowed to sit for 48 hours to cure in a heated booth at a temperature over 25 degrees Celsius. 

37                  The applicant then applied bulk laminate, using a special tooling resin, containing 50% aluminium hydroxide.  The Plug was then allowed to cure for a further 48 hours, again at over 25 degrees Celsius. The applicant fitted structural support framing and wheels to aid movement. 

38                  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. 

39                  Six applications of wax were then applied to each Mould over two days.  When that was completed the Moulds were ready for use. 

40                  The next stage was to produce the Mouldings (i.e. parts of the boat itself) from the Moulds.  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. 

41                  The resulting Mouldings were then fitted out with appendages i.e. the keel, rigging and the like, to form the finished yacht. 

42                  The applicant is a director of Swarbrick Yachts International Pty Ltd (“Swarbrick Yachts International”).  He has licensed Swarbrick Yachts International, on a non-exclusive basis, to use the Drawings, certain specifications, and the Plug, to manufacture the JS 9000 yacht.

43                  To date Swarbrick Yachts International has constructed 32 of the JS 9000 yachts, with over half of them having been delivered to customers overseas. 

44                  In or about November or December 2002 the applicant gave a hull and deck moulding of the JS 9000 yacht to one of Swarbrick Yachts International’s employees, a Mr Trevor Rogers. Mr Rogers is the second respondent to these proceedings.  The circumstances under which the applicant handed over possession of the hull and deck moulding to the second respondent are in dispute.  It is not necessary for the purposes of these proceedings to resolve that dispute. 

45                  As at about mid 2003, the three key staff of Swarbrick Yachts International in relation to the construction of the JS 9000 were Mr Rogers, the third respondent (Mr Benjamin Warren), and a Mr Jamie Bell. Messrs Warren and Rogers moulded hulls and decks while Mr Bell built keels, rudders and the like. 

46                  It is common ground that in April 2003, the first respondent Mr Brent Burge contacted the fifth respondent (Mr Glen Peter Bosman), and made him aware of the existence of the yacht known as the JS 9000, being one of the yacht types then being constructed by Swarbrick Yachts International.

47                  Messrs Warren and Rogers left their employment with Swarbrick Yachts International in June 2003 and Mr Bell left about two weeks later.

48                  Subsequently Mr Bosman, in association with the sixth respondent (Mr Sergio Edward Zaza), caused the fourth respondent Boldgold Investments Pty Ltd (“Boldgold”) to be incorporated and, through Mr Zaza, to acquire the hull and deck moulding owned by Mr Rogers for the sum of $7,500. 

49                  As from 28 June 2003 Mr Burge was engaged by Boldgold as operations manager of factory premises leased by that company at Pinjarra.  Mr Burge’s job was to oversee work to be undertaken on that hull and deck moulding and the design and construction of other components which would ultimately form part of a completed yacht.  Boldgold also engaged Messrs Warren and Rogers as employees to work at its Pinjarra factory. 

50                  Mr Burge’s evidence is that until work at the factory ceased on 13 September 2003 (when an interlocutory injunction was served) certain work was being undertaken.  He details that work in his affidavit of 10 December 2003.  

51                  Boldgold, Mr Bosman and Mr Zaza (who are both directors of that company) admit the following claims made in the statement of claim namely:

(a)          that Boldgold purchased the hull and deck moulding from Mr Rogers and used it as the Plug from which a female mould was in the process of being constructed and which would have resulted in a completed flop mould of the hull;

(b)         that they were involved in various stages of production of a flop mould of a JS 9000 yacht hull when the interlocutory injunction was served;

(c)          that if the flop mould of the hull had been completed, that would have been a reproduction of the external features of shape and configuration of the hull and that in its incomplete stage, the female mould was a substantial reproduction of those external features; and

(d)         they were also involved in various stages of manufacture of a deck moulding.

52                  The respondents initially conceded that copyright existed in the Drawingsbut subsequently (without opposition from the applicant) sought and were given leave to withdraw that concession. 

53                  The applicant concedes that, if there is a “corresponding design” within the meaning of s 77 of the Act) of the various works in which he claims copyright, then it has been applied industrially. 

the issues to be decided

54                  Although there were some textual differences between the defences of the respective respondents, the trial of the issue of liability was conducted, by agreement between the parties, on the basis of the fourth respondent’s defence and also on the basis that there was no relevant difference between the defence of the fourth respondent and the defences of the fifth and sixth respondents. 

55                  The first, second and third respondents were employees of the fourth respondent.  They were represented by the same counsel and solicitors as the fourth, fifth and sixth respondents.  As a matter of convenience, I shall generally refer to the respondents as such without differentiating between them. 

56                  The respondents deny that copyright subsists in any of the items in respect of which the applicant claims copyright.  As to the Drawings, their defences contain a formal denial that copyright exists in them and a non-admission that the applicant was the author and owner of any copyright which might exist in the Drawings.  According to their defences, the respondents contend that the Plug, the Moulds and the JS 9000 yacht were copied and reproduced directly or indirectly from the Drawings and are thus not original works in which copyright subsists under s 32 of the Act.  As counsel for the applicant pointed out in written submissions, there is no such plea in relation to the hull and deck mouldings.  But at trial this plea was treated as extending to the hull and deck Mouldings. 

57                  The respondents contend that, in the alternative, i.e. if copyright is found to exist in these four items, this would be because (and only because) they fall within the meaning of a “sculpture”.  The respondents say that none of these items is a work of “artistic craftsmanship” within the meaning of that expression in s 10(1) of the Act, or within the meaning of that expression as it appears in parenthesis in s 77(1)(a).  The respondents, formally, do not admit that the applicant produced the hull and deck of the JS 9000 yacht by using the Moulds,but this was not seriously in issue at trial.  I find that he did so produce them.

58                  The respondents say that if that is the case, i.e. that the hull and deck of the JS 9000 were produced by use of the Moulds,then the Moulds, the Plug and the hull and deck Mouldings of the JS 9000 yacht are “corresponding designs”within the meaning of that term in s 74 of the Act, [and as otherwise applicable for the purposes of s 77(1)(b), (c) and (d)],of the design of the yacht as represented or set out in the Drawings. 

59                  The issues, within the separately-tried question of liability, can be summarised in list form as follows:

(a)        does copyright subsist in the Plug, the Moulds, the Mouldings, the JS 9000 yacht or the Drawings?

(b)        have the respondents made or were they engaged in making a substantial reproduction of any of the above items and, if so, have they [but for the application of s 77(2) of the Act] infringed or were they about to infringe the applicant’s copyright in some or all of those items?

(c)        does s 77(2) of the Act apply?

the legislative framework

60                  Section 10 of the Act relevantly provides as follows:

‘artistic work means:

(a)       a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;

(b)       a building or a model of a building, whether the building or model is of artistic quality or not; or

(c)        a work of artistic craftsmanship to which neither of the last two preceding paragraphs applies; (emphasis added)

but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.  

engraving includes an etching, lithograph, product of photogravure, woodcut, print or similar work, not being a photograph.

sculpture includes a cast or model made for the purposes of sculpture.’  

61                  The respondents say that apart from the other defences which they raise, they have a complete statutory defence under s 77 of the Act.  Section 77 of the Act is in the following terms:

‘Application of artistic works as industrial designs without registration of the designs

77     (1)     [Application]  This section applies where:

  (a)     copyright subsists in an artistic work (other than a building or a model of a building, or a work of artistic craftsmanship) whether made before the commencement of this section or otherwise;

  (b)     a corresponding design is applied industrially, whether in Australia or elsewhere, by or with the licence of the owner of the copyright in the work in the place where the industrial application happens;

  (c)      at any time on or after the commencement of this section, articles to which the corresponding design has been so applied (in this section called “articles made to the corresponding design” are sold, let for hire or offered or exposed for sale or hire, whether in Australia or elsewhere; and

  (d)     at that time, the corresponding design is not registrable under the Designs Act 1906 or has not been registered under that Act. 

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

         (3) [Exclusions]  This section does not apply in relation to any articles in respect of which, at the time when they were sold, let for hire or offered or exposed for sale or hire, the corresponding design concerned was excluded from registration by regulations made under the Designs Act 1906, and, for the purposes of any proceedings under this Act, a design shall be conclusively

presumed to have been so excluded if:

  (a)     before the commencement of the proceedings, an application for the registration of the design under that Act in respect of those articles had been refused;

  (b)     the reason, or one of the reasons, given for the refusal was that the design was excluded from registration under that Act by regulations  made under that Act; and

  (c)      when the proceedings were commenced, no appeal against the refusal had been allowed or was pending.

         (4)   [Applied industrially] The regulations may specify the circumstances in which a design is, for the purposes of this section, to be taken to be applied industrially.’  

62                  Section 74 defines “corresponding design” as follows:

‘“corresponding design”, in relation to an artistic work, means a design that, when applied to an article, results in a reproduction of that work, but does not include a design consisting solely of features of two-dimensional pattern or ornament applicable to a surface of an article.’

the plug

63                  In my opinion, the Plug is a sculpture within the meaning of s 10(1).  I would regard it as being in the same category as the wooden models of the frisbies which were the subject matter of the decision of the New Zealand Court of Appeal in Wham-O Manufacturing Company v Lincoln Industries Ltd [1984] 1 NZLR 641.  Wham-O was followed in England by Falconer J in Breville Europe plc & Ors v Thorn EMI Domestic Appliances Ltd [1995] FSR 77 at 94. 

64                  Is the Plug also a work of artistic craftsmanship?  The authorities both in England and in Australia which deal with the meaning of that expression were recently reviewed by Conti J in Sheldon and Hammond Pty Ltd v Metrokane Inc & Ors [2004] FCA 19. 

65                  His Honour referred at length to the leading English authority, George Hensher Ltd v Restawhile Upholstery (Lancs.) Ltd [1976] AC 64, to the decision of Pape J in the Supreme Court of Victoria in Cuisenaire v Reed [1963] VR 719 which was referred to in Hensher, Merlet v Mothercare plc (1984) 2 IPR 456 where Walton J regarded Lord Simons’ speech in Hensher as reflecting the majority view in the House of Lords, Federal Commission of Taxation v Murray (1990) 21 FCR 436 where a Full Court of this Court considered Cuisenaire and Hensher  in the context of a sales tax case and, finally, the recent review of the authorities conducted by Drummond J, sitting at first instance, in Coogi Australia Pty Ltd v Hysport International Pty Ltd & Ors (1998) 86 FCR 154. 

66                  At 164-169 in Coogi,Drummond J said that he thought current authority supported the following propositions (which I have summarised from his Honour’s reasons, omitting citations) as to what was a work of artistic craftsmanship: 

1.         The phrase “works of artistic craftsmanship” is a composite phrase that must be construed as a whole; there is nothing to suggest that any of the words are used in other than one of its ordinary senses.

2.         A work will qualify as one of artistic craftsmanship only if it has an element of real artistic, that is, aesthetic quality, whether or not it is a utilitarian article.

3.         The article need not have such a high level of aesthetic quality as to make it a work of fine art. 

4.         The level of aesthetic appeal required for a work of artistic craftsmanship is higher than mere visual appeal, being one of the tests for design registrability.  

5.         In determining whether an article has sufficient aesthetic quality to be a work of artistic craftsmanship the Court is determining a question of fact on the evidence before it.  In doing so, the Court must make a judgment whether the work has a sufficient level of aesthetic appeal to be of artistic quality.  

6.         Whether a work has the requisite aesthetic quality must be determined objectively. 

7.         But evidence that the creator of the article intended to make an article possessing aesthetic quality is important, although not essential.  

8.         Expert evidence as to whether a work possesses the requisite aesthetic quality is admissible.  

9.         It is difficult to find any guidance as to the considerations relevant to identifying the existence of the requisite aesthetic quality, but the presence of non-functional features is not the test; the antithesis between function and beauty is a false one. 

10.       Before a work will qualify as a work of craftsmanship it must be a manifestation of pride in sound workmanship and the result of the exercise of skill on the part of its creator in using the materials of which the article is made and the devices by which those materials are turned into the article. 

11.       A mass-produced article can still be a work of artistic craftsmanship, although there is a conflict of judicial opinion on this point. 

12.       There is also a conflict of judicial opinion on whether a work can be one of artistic craftsmanship only if it is the product of a person who combines both artistic and craft skills in making it or whether it is enough that the work meets the two criteria of being a work of craftsmanship and a work of possessing the requisite minimum degree of aesthetic quality. [Drummond J did not find it necessary to form a conclusion about the differing views on this point.]  

67                  At [80] in Sheldon, Conti J decided to follow in principle Drummond J’s approach in Coogi.  I shall do the same because I am in respectful agreement with the views expressed by Drummond J in that case. 

68                  The respondents relied quite heavily on the decision in Sheldon.  I must say that I think much of that reliance was misplaced, not because I disagree with Conti J, but because I do not think Sheldon explains any new principle. 

69                  Part of their argument, as I understood it, was that Sheldon was authority for the proposition that an article could not be a work of artistic craftsmanship if nobody would buy it for its artistic merit on its own i.e. if it did not function as, for example, a very attractive tea cup with a hole in it or, in this case, if the JS 9000 yacht did not sail properly.  I do not think that Sheldon is authority for such a principle, but if it is, I respectfully disagree with it to the requisite extent.  I do not think that the authorities support the proposition that a work cannot be one of artistic craftsmanship simply because, if it lacked functionality, it would not sell. 

70                  As Viscount Dilhorne said in Hensher at 86:

‘I do not think that whether or not a work is to be regarded as artistic depends on whether or not the primary inducement for its acquisition or retention is its functional character.’

71                  To the extent that the respondents relied on Sheldon as emphasising the overriding importance of the object or intention of the author of a work, I think that the respondents are wrong.  The relevant principle is as stated in proposition numbered 7 of the Coogi principles above. 

72                  In Cuisenaire, Pape J (in the passage set out by Conti J at para [70] of his reasons for judgment in Sheldon) made it clear that he was not saying that the sole test of whether the work of a craftsman is a work of artistic craftsmanship is the intention or object of the craftsman at the time he made the work.  His Honour said that, as a general rule, the Court would apply a purely objective test, but when that objective test might be thought to deny that the work was one of artistic craftsmanship, and it was sought to establish the contrary, the object of the creator must play a dominant part in the resolution of the question. 

73                  If Conti J, at paragraph [119], was formulating a different approach, then I would respectfully disagree with him.  Such an approach would be inconsistent with propositions 6 and 7 identified by Drummond J in Coogi and set out above.

74                  The respondents tendered lengthy written submissions asserting that the Plug and the JS 9000 yacht (variously referred to) were not works of artistic craftsmanship. 

75                  In essence, the respondents’ contention was that the applicant had set out to design and manufacture a functional racing yacht (“no more and no less”) to meet the practical demands of a designated market and had never had any intention to create an artistic object.  He had designed a yacht in relation to which visual and aesthetic appeal was at best only one of a number of considerations.  The respondents submitted that the evidence showed that yacht designing was not an art, nor did it involve aesthetic or artistic considerations, and that yacht designers did not produce works of artistic craftsmanship. 

76                  The respondents further submitted that a yacht such as the JS 9000 was a mass-produced article which was essentially utilitarian in nature and that to characterise it (or the full sized Plug) as a work of artistic craftsmanship was to stretch or add an impermissible and unwarranted gloss on the relevant legislative provisions and to strain the phrase “work of artistic craftsmanship” to what was described as a “hitherto unacceptable width, which ignores the history of the phrase”. 

77                  I do not accept the respondents’ submissions.  I think that I can state my reasons fairly succinctly. 

78                  I think that the respondents’ submissions set the bar too high for the applicant when they say that he “never had any intention to create an artistic object (the Plug) to be evaluated aesthetically per se as a work of artistic craftsmanship”.  The authorities, including Hensher and Coogi, show that that is too stringent a test – see, for example, Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134 (costumes and film set – serious question to be tried); United Pacific Industries Pty Ltd v Madison Spate Pty Ltd (1998) BC 9802268 (knee heat retainer – serious question to be tried); Bonz Group Pty Ltd v Cooke [1994] 3 NZLR 216 (hand-knitted woollen garments); Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120 (sporting helmets – serious question to be tried). 

79                  I reject that part of the respondents’ defence in which they contend that the Plug, the Moulds and the JS 9000 yacht were copied and reproduced directly or indirectly from the Drawings and were thus not original works.  In my view, it is quite clear from the applicant’s evidence that he was the source of the ideas which are reflected in the Plug.  I find that the Plug is an original work for the purposes of the Act. 

80                  I accept the applicant’s evidence that the Drawings came into existence at various times when the Plug was either at an advanced stage of fabrication (Drawing A and Drawing D) or had been completed (Drawing B and Drawing C). 

81                  I find that the applicant did use drawings (but not the Drawings) to assist him in the process of fashioning the Plug.  They were derived from his earlier freehand drawings, prepared in the late 1980s and digitised into a computer, before he made the quarter-scale model which was subsequently tank-tested in Southampton in 1989 and 1990.  The applicant then developed a further set of digitised drawings which were in his computer in 2001.  Copies of those ditigised drawings form Exhibit JHS3 to the applicant’s fourth affidavit and one of them (reproduced at a scale of 1:10) is Exhibit JHS2 to his seventh affidavit.  From the 2001 prints of these digitised drawings the applicant generated a full-sized body plan.  The full-sized body plan (printed on Mylar) was, initially, laid over the MDF like a dressmaking pattern.  But the applicant’s evidence, which I accept, was that he made significant manual changes to the Plug.  This included lengthening it on at least three occasions.  In my view, the use which the applicant made of the full-sized body plan did not preclude the Plug (in its eventual form) from being an original work.  In my opinion, it was an original work, reflecting the applicant’s design ideas.  I find that the applicant became and still is the owner of the copyright in the Plug. 

82                  The next question which I propose to consider is whether [putting aside for the time being the construction point contended for by the respondents that the Plug, Moulds and hull and deck Mouldings are only (at best) artistic works as sculptures within the meaning of s 10(1) and thus do not fall within sub-paragraph (c) of the definition of artistic works in that subsection or for the purposes of the words in parenthesis in s 77(1)(a) of the Act] the Plug is properly to be regarded as a “work of artistic craftsmanship”. 

83                  A convenient distillation of the propositions explained in Coogi is as follows.  The expression “work of artistic craftsmanship” is a composite phrase, to be construed as a whole, in which the words are used in their ordinary senses.  The work must be a work of craftsmanship and it must have a sufficient level of aesthetic appeal to be of artistic quality. 

84                  The respondents called two expert witnesses.  The first was Mr Noel Thomas Riley, a naval architect, who swore an affidavit, presented a document entitled “Substance of Evidence”, and gave oral evidence. 

85                  The substance of Mr Riley’s evidence was that the applicant had followed normal naval architectural practice in the creation and development of drawings and handcrafting the Plug of the JS 9000.  Mr Riley described the modifications made to the design during the manufacture of the Plug (and referred to in the applicant’s affidavits) as being of a minor nature.  He said that the procedure outlined in the applicant’s fourth affidavit was not, in his opinion, indicative of usual naval architectural practice.  Mr Riley then challenged in various respects those portions of the applicant’s evidence in which he claimed to have made modifications in the interests of aesthetics and at the expense of functional qualities. 

86                  Mr Riley was not asked whether he considered the JS 9000 exhibited aesthetic quality, nor did he volunteer any such opinion.  That evidence would have been admissible on the authorities. 

87                  I decided not to place much weight on Mr Riley’s evidence.  His experience with yacht design is extremely limited and he has never, in the context of designing or designing a yacht, considered the design objectives of a sailing yacht.  At p 10 of his affidavit, Mr Riley expressed the view that the whole profile of the JS 9000 was made up of a number of straight lines.  In cross-examination he conceded that there were curves everywhere.

88                  The second expert called by the respondents was Mr Warwick John Hood, another naval architect.  Mr Hood swore two affidavits, also provided a “Substance of Evidence”, and also gave oral evidence. 

89                  In his substance of evidence, Mr Hood expressed doubt that the applicant would have produced the Plug in the manner described in his fourth affidavit. 

90                  In his first affidavit Mr Hood expressed the views, in summary, that there was no creative role in making the Plug, that it could have been built from the Drawings, that the Plug was just a copy of the information contained in the Drawings and that the adjustments made by the applicant were insignificant. 

91                  I paid particular regard to Mr Hood’s evidence because I considered him not only to be an expert in the field but also to have been an appropriately impartial witness.  He agreed that if the JS 9000 had been designed in the manner described in the applicant’s evidence then this would remove the basis for many of his opinions including the ones which I have summarised above.  He also accepted the applicant’s evidence that his “brief to himself” (i.e. Mr Swarbrick to Mr Swarbrick) when embarking upon the design of the JS 9000 was not the overriding search for performance.

92                  Mr Hood also agreed that his opinion that the alterations (described by the applicant) to the freeboard of the JS 9000 had no visual effect, was premised on the belief that the alteration was 30 mm rather than 288 mm.  He also accepted that that difference deprived his opinion of its premise.  Mr Hood also acknowledged that he did not know what adjustments had been made by the applicant during the crafting of the Plug.  [These were detailed in paragraph 23 of the applicant’s third affidavit].  But he still maintained that they were not significant to the aesthetic appearance of the JS 9000. 

93                  I decided to prefer the applicant’s evidence (acknowledging as I do that, although he is also an expert naval architect, he is scarcely a disinterested person) and the objective evidence (including all the photographs and the view) over the evidence adduced by the respondents from Messrs Riley and Hood to the extent that the two bodies of evidence conflicted. 

94                  I accept the applicant’s evidence, in paragraph 3 of his third affidavit, that with the JS 9000 yacht he intended to design and build a yacht that had great aesthetic appeal and, in paragraph 58 of his fourth affidavit, that the JS 9000 yacht had a high level of aesthetic appeal and that that was the outcome which he intended.  The applicant was not cross-examined on those views and neither of the respondents’ experts expressed a contrary opinion.

95                  In relation to Mr Hood, as the foregoing may indicate, the conflict with the applicant’s evidence was far from total.  Mr Hood accepted that the applicant’s design technique for the JS 9000 was similar to some of the yacht designers of the Victorian era.  Mr Hood accepted that there was a substantial body of opinion amongst yacht designers that yacht design was an art and the application of the yacht designer’s skill involved the application, amongst other things, of artistic ability.  He also accepted that if the applicant’s evidence about the fashioning and shaping of the Plug were accepted (and I have accepted it) that the creative role in the events which happened was in the fashioning of the Plug.  He agreed that, on the same assumption, the Plug involved a creative design effort by workers skilled in handicraft, and that the applicant had exhibited a very high level of skill.

96                  In my view, the evidence establishes that the Plug was a work of craftsmanship.  I have summarised the steps taken to make the Plug at paragraphs [18] to [28] above.  In my opinion, and I so find, the applicant’s work on the Plug, comprising skill in planning and construction, ingenuity and dexterity (I am, for the moment, tracking the relevant definition of “craft” in the New Shorter Oxford English Dictionary at p 539) was craftsmanship.  I now turn to the question of aesthetic appeal before, finally, considering both aspects together.

97                  The applicant, and then the respondents, tendered into evidence a large body of extracts from publications in the field which included yacht design and construction. 

98                  I accept that there is a substantial body of opinion expressed in this literature that yacht designing includes both aesthetic and technical aspects – see, by way of examples only, the foreword to the publication which formed Exhibit A15, the introductory note on page 7 of Exhibit A8 and p 35 of Exhibit A7.  See also generally the publications referred to in the applicant’s sixth affidavit but, in particular, the second paragraph on page 51 of Exhibit JHS7 to that affidavit [Exhibit A32] and the annexures to that affidavit.  In my view, those publications, so far as yacht design is concerned, support the statement in paragraph 9 of the principles explained by Drummond J in Coogi i.e. that the antithesis between function and beauty is a false one. 

99                  In my opinion, the Plug has the requisite aesthetic quality to be properly described as artistic.  The level of aesthetic appeal of the Plug is more than a mere visual appeal. 

100               I have accepted Drummond J’s view that it is for the Court, on the evidence before it, to assess whether a work, in this case the Plug, has sufficient aesthetic value to be regarded as artistic in the relevant sense.  I think that it has.

101               The evidence upon which I rely in reaching my conclusion that it does, comprises the photographs of the Plug and the shape of the Plug as reflected in the hull and deck of the JS 9000 yacht.  The hull and deck are shown in six large photographs which are in evidence and in several smaller photographs.  I also conducted a view during which I observed the hull and deck of “Bateau Rouge” the first JS 9000 yacht produced.  A photographic record exists of what I saw in 3-dimensional form during that view. 

102               Taking all of that evidence into account, and also taking into account, as a relevant factor, the applicant’s intention to create a work of considerable aesthetic value, I consider that the resultant sculpture is of sufficient aesthetic value to be of artistic quality and to be a work of artistic craftsmanship. 

103               The respondents contended in their final written submissions that the applicant’s work on the Plug was that of a tradesman not of a craftsman producing a work of artistic quality by his craftsmanship.  I do not accept that submission.  I find that the applicant 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.  In my view, he applied much of that special training, skill and knowledge when he produced the Plug.  The Plug is a manifestation of pride in sound workmanship and the result of the exercise of skill on the part of the applicant in using the wooden materials from which the article was made.  The literature strongly suggests that historically this was the way many shipwrights crafted their yachts.  I do not consider that the limited extent to which some of the work was done by another person under the applicant’s supervision precludes the Plug from being a work of artistic craftsmanship. 

104               Accordingly, assessing the nature of the applicant’s work and its product (this time together) and subject to the construction point referred to at paragraph [82] above, I find that the Plug is a work of artistic craftsmanship.  I have also found that the Plug is a sculpture.  Accordingly, I find that it is an artistic work.  It qualifies as an artistic work on both bases. 

The Construction Point

105               I now consider the first part of what the respondents submitted was a complete statutory defence under s 77 of the Act. 

106               As can be seen from the words in parenthesis in s 77(1)(a), s 77 does not apply where the artistic work is “a work of artistic craftsmanship”. 

107               The nub of the respondents’ point is that the Plug has the status of an artistic work because it is a sculpture.  It thus falls within sub-paragraph (a) of the definition of “artistic work”.  Accordingly, so the argument runs, the Plug cannot be a work of artistic craftsmanship “to which neither of the last two preceding paragraphs applies” within the meaning of sub-paragraph (c) of that definition.  At one stage, the respondents seemed to suggest that the term “artistic craftsmanship” in s 10(1) may have a different meaning to the same term in s 77(1) – see paragraphs 1(e) and 2(B) of the Defence.  Later, they expressly disowned that proposition. 

108               There has been some debate about the meaning of the words “a work of artistic craftsmanship” as they appear in s 77.  In December 1988 a submission to the Attorney-General, prepared by the Intellectual Property Committee of the Business Law Section of the Law Council of Australia in relation to the Copyright Amendment Bill 1988, stated that it was not clear to what the words “a work of artistic craftsmanship” in what became the new s 77 (at that time a proposed new s 77) referred.  The submission noted that that term was not defined in the Act, but appeared in the definition of “artistic work” in s 10.  The submission continued as follows:

‘Two interpretations of the words “a work of artistic craftsmanship” as appearing in the new section 77 are possible.  The first is that the words refer only to that matter falling within paragraph (c) of the definition of artistic work.  The second interpretation, and we believe the correct interpretation, is that not only is matter falling within paragraph (c) included but also any matter set out in paragraphs (a) and (b) of the definition of artistic work and satisfying the tests developed by the courts for qualifying as a work of artistic craftsmanship.  The second interpretation is supported by the presence in paragraph (c) of the words “to which neither of the last two preceding paragraphs applies”.’

109               In a further submission, forwarded by the Law Council of Australia to the Attorney-General on 1 March 1989, the Law Council referred to the view, expressed by the Australian  Copyright Council in its bulletin of 15 November 1988, that any work qualifying as an artistic work within paragraphs (a) or (b) of the definition of “artistic work” in s 10(1) would be excluded from the definition of “work of artistic craftsmanship”.  The Law Council noted that this was “far from clear and will create immediate problems”. 

110               In the Australian Law Reform Commission’s Report 74 “Designs”, Chapter 17, the Commission considered and recommended reform in the area of overlap between designs and copyright protection.  At paragraph 17.25 it said this: 

‘17.25  Clarification of Copyright Legislation

The Copyright Act should clarify that a work can be both a work of ‘artistic craftsmanship’ and an artistic work under s 10(1)(a) and (b).  For example, a sculpture is both an artistic work and arguably a work of artistic craftsmanship and so should be entitled to retain copyright after industrial production in the same way as pottery.  Watermark submitted that there is no rational distinction between sculpture, to which the overlap provisions do apply, and works of artistic craftsmanship, which are exempt.  However, the LCA submitted that there is no justification for distinguishing between artistic works which qualify under judicial criteria as ‘works of artistic craftsmanship’ simply on the basis that the artistic work is also included in s 10(1)(a) of the definition of ‘artistic work’.’ 

111               The Commission then made Recommendation 172 which read as follows:

‘Works of artistic craftsmanship produced in multiple quantities should continue to be protected by copyright.  ‘Artistic craftsmanship’ should be defined in the Copyright Act.  The Copyright Act should make clear that a work can be both a work of ‘artistic craftsmanship’ and an artistic work under s 10(1)(a) and (b).’ 

112               That Recommendation has been reflected in the Designs/Consequential Amendments Act 2003 which (see Item 1 in Part 1 of Schedule 1) omits from sub-paragraph (c) of the definition of “artistic work” the words “to which neither of the last two preceding paragraphs applies” and substitute “whether or not mentioned in paragraph (a) or (b)”.  That Act received the Royal Assent on 17 December 2003 to come into force on 17 June 2004, or earlier by proclamation. 

113               The Explanatory Memorandum to the Bill for that Act makes it clear that this amendment was to give effect to the Government’s response to the Australian  Law Reform Commission’s recommendations including Recommendation 172 in its Report No. 74.  In referring to this particular amendment the Explanatory Memorandum says this:

‘6.        This amendment clarifies that a work can be both a work of artistic craftsmanship and an artistic work under paragraph (a) or (b) of the definition of “artistic work”.  For example, a sculpture can be a work of artistic craftsmanship notwithstanding that it is also an artistic work under paragraph (a). 

 7.        This amendment is intended to remove uncertainty as to the meaning of the term ‘work of artistic craftsmanship’ for the purposes of section 77.  Section 77 provides a defence to copyright infringement where a corresponding design is applied industrially and the design is not registered or is not registrable under the Designs Act.  Section 77 does not operate where the artistic work that relates to the corresponding design is a work of artistic craftsmanship.  If a sculpture is a work of artistic craftsmanship, it will retain copyright protection after being applied industrially (but copyright protection is lost if a corresponding design is registered as a design).’

114               The applicant relies upon the Amending Act as an aid to interpretation i.e. as an aid to discerning Parliament’s intention as expressed in the Act in its present form: NABM of 2001 v Minister for Immigration and Multicultural Affairs [2002] FCA 335 at [61] and [62] where Beaumont J cited Grain Elevators Board (Vic) v Dunmunkle Corp (1946) 73 CLR 70. 

115               The respondents say, in effect, that the need for this amendment supports their argument about the proper construction of the Act as it presently stands. 

116               In my opinion, the explanatory memorandum is helpful as indicating an intention not to change the previous law, but to clarify its meaning i.e. that a work can be both a work of artistic craftsmanship and an artistic work of the type referred to in paragraphs (a) or (b) of the definition of “artistic work”. 

117               The respondents raised what might be described as a “floodgates” argument.  They relied upon three affidavits sworn by their solicitor to which were exhibited the results of searches of the register maintained under the Designs Act 1906 (Cth).  Those searches showed many registrations of the designs of boats and motor cars.  The respondents’ submission was that if I were to find, in favour of the applicant, that the various works in relation to the JS 9000 yacht were works of artistic craftsmanship, then there would be a substantial encroachment on and derogation from the integrity of the legislative scheme for design protection.  Articles such as cars or boats with a distinctive shape which, so it was put, previously required to be registered under the Designs Act to achieve protection would, despite the “rasison (sic) d’etre” of their functionality, become artistic works exempt from the need for registration. 

118               I do not accept that submission.  To start with, the authorities show that the level of aesthetic appeal required for a work of artistic craftsmanship is higher than mere visual appeal, that being one of the tests for design registrability – see proposition 4 from Coogi set out above.  Parliament can be seen to have intended to give better protection to works of artistic craftsmanship than to designs.  Whether any particular model of motor car or boat is a work of artistic craftsmanship will depend very much on the manner of its creation and the level of its aesthetic appeal. 

119               In any event, my task is, of course, to give effect to what I see as being the legislative purpose expressed in the various provisions of the Act which have been under debate in this matter.  In my opinion that purpose can be discerned from reading the second paragraph from the extract from Coogi which I set out at paragraph [126] below.

120               In my view, the Plug is a work of artistic craftsmanship within the meaning of that expression in parenthesis in s 77(1).  I would construe the definition of artistic work in s 10(1) as operating in the following manner.  Any of the items described in sub-paragraphs (a) and (b) are artistic works whether they are of artistic quality or not.  However, should a work not fall within either of those sub-paragraphs but qualifies as a work of artistic craftsmanship, then it is to be included in the meaning of the term “artistic work”.  If that work falls within sub-paragraph (a) and is also a work of artistic craftsmanship I can see no reason why Parliament would have intended to treat it less benevolently and exclude it from the exception in s 77(1). 

121               A work may be a work of artistic craftsmanship which is not a painting, sculpture, drawing, engraving, photograph, building or a model of a building.  That is, it would not fall within paragraph (a) or (b) of the definition of “artistic work”.  The function of paragraph (c) of that definition is to bring that sort of work of artistic craftsmanship into (i.e. within) the definition of “artistic work”.  The question of what is a work of artistic craftsmanship is not answered by any definition in the Act.  Still less, in my view, does paragraph (c) define the term “a work of artistic craftsmanship” for the purposes of s 77(1)(a).  In my opinion, one is left to the common law for the answer to the question of what defines a work of artistic craftsmanship.

122               I do not see the definition of “artistic work” as being intended somehow to limit the copyright protection extended to works of artistic craftsmanship.  Nor do I see that definition as being intended to cut down the meaning of the expression “a work of artistic craftsmanship”. 

123               I would read s 10(1) in its application to the Plug quite simply in the following terms.  The Plug is a work of artistic craftsmanship.  It falls within sub-paragraph (a) because it is a sculpture.  Sub-paragraph (c), properly construed, does not operate to narrow the range of works which may qualify as works of artistic craftsmanship, but to expand the scope of the term “artistic work”.  It does not prevent the Plug from being a work of artistic craftsmanship. 

124               This view is supported, to some extent, by the authors of Lahore “Copyright and Designs” (2003) at [6125] where they say:

‘… It is not clear whether a work such as a sculpture, included in category (a) of the definition [the definition of “artistic work”], may not alsobe a work of artistic craftsmanship.  Category (c) does not exclude this possibility.  On the contrary, the definition suggests that categories (a) and (b) may apply to a work of artistic craftsmanship.’

125               In my view, such construction and application are consistent with the long-standing policy and history of the protection extended by copyright law to artistic craftsmanship.  That history is referred to and described in Hensher (by Lord Simon at 89 onwards) and also by Drummond J in Coogi.  Before the Copyright Act 1911 (UK), as Lord Simon explained, artistic works given copyright protection were works of fine art.  But, starting in 1862, there was a reaction which came to be known as the Arts and Craft movement.  Lord Simon describes the evolution of that movement as putting beyond doubt what prompted the United Kingdom Parliament in 1911 to give copyright protection to “works of artistic craftsmanship”. 

126               As Drummond J pointed out in Coogi, at 167, the Australian Copyright Act treats works of artistic craftsmanship differently from other artistic works.  His Honour made the following observations which I respectfully adopt as reflecting the relevant law:

‘Unlike the position reflected in s 22 of the 1911 UK Act and that which obtained under Div 8 of Pt III of the Copyright Act 1968 (Cth) prior to the 1989 amendments, protection under both the Copyright Act and the Designs Act 1906 (Cth) is now available to works of artistic craftsmanship.  It matters not whether such a work is intended to be the subject of or used in mass production.  Copyright protection is only lost for a work of artistic craftsmanship if the owner chooses to obtain design registration for that work.  Otherwise, he could enforce his intellectual property rights in such a work by relying only on the Copyright Act, even though it was always his intention that the work would be industrially exploited: see ss 75 and 77 of the Act. 

The Explanatory Memorandum to the Bill which became the 1989 Amending Act suggests that the reason why works of artistic craftsmanship were exempted from the general rule in Div 8 that copyright should not be available to protect artistic works capable of industrial application was that, even though such works can embrace a wide range of works well capable of industrial application, they are a special case: “It is considered these articles are more appropriately protected under the [Copyright] Act whether industrially applied or not” (par 24).  What may justify the special status conferred on works of artistic craftsmanship by ss 74-77 is recognition that the real artistic quality that is an essential feature of such works and the desirability of encouraging real artistic effort directed to industrial design is sufficient to warrant the greater protection and the accompanying stifling effect on manufacturing development that long copyright gives, in contrast to relatively short design-protection. Division 8 therefore provides no foundation for arguing that an expression “a work of artistic craftsmanship” should be narrowly construed.’ 

127               For the foregoing reasons I hold that the Plug falls within the exception contained in parenthesis in s 77(1) of the Act. 

the hull and deck moulds, the mouldings and the first js 9000

128               In my view, and I so find, the (hull and deck) Moulds are sculptures.  They are casts made for the purposes of making the (hull and deck) Mouldings.  The term “sculpture” is defined in s 10 of the Act as including a cast or model made for the purposes of sculpture.  They are thus artistic works within sub-paragraph (a) of the definition of the term “artistic work” in s 10.  I find on the evidence that copyright exists in the (hull and deck) Moulds and that the applicant is the author and owner of that copyright.  The applicant did not contend that the Moulds were works of artistic craftsmanship, so it is not necessary to decide that question. 

129               In my opinion, and I so find, the (hull and deck) Mouldings are also sculptures.  Furthermore, I find that the Mouldings are also works of artistic craftsmanship as is the first JS 9000 yacht built (“Bateau Rouge” which was the subject of the view and includes its mast, sails, rigging and keel) a work of artistic craftsmanship.  It is also, in my opinion, a sculpture according to the authorities which I have earlier cited. 

130               My reasoning for this conclusion is substantially the same as the reasoning which led to my conclusion that the Plug was a work of artistic craftsmanship. 

131               I do not think that it is necessary for present purposes to categorise the hull and deck Mouldings and the first JS 9000 yacht separately from the Plug.  They are all substantially identical manifestations of the same object.  Furthermore, as Mr Riley acknowledged, their creation at each step required additional skill and, in my view craftsmanship. 

132               The creation of the JS 9000 has some similarity to the modus operandi of Auguste Rodin.  I think that it is reasonably well known in artistic circles that many of Rodin’s sculptures were made from foundry plasters into bronze casts.  Few would doubt that the resulting sculptures are works of artistic craftsmanship.  When I put this analogy to Mr J  Garnsey QC, senior counsel for the respondents, he referred me to Coogi and the significance of the question whether the first work was a work of artistic craftsmanship.  I did not regard that as an answer to my Rodin analogy. 

133               It became clear, later, that the respondents depended very heavily on the distinction between an object produced for display which they asserted might be a work of artistic craftsmanship, and an object which although aesthetic was useful, and which thereby was unlikely to be such a work.   

134               I put another Rodin analogy to Mr Garnsey in his final address.  I suggested that if Rodin were to have sculpted (on commission) a park seat in a very aesthetic way such that anybody would have admired it as being artistic, that work would fall outside the test which he was proposing for a work of artistic craftsmanship, because it had been bought for a utilitarian purpose, not to be appreciated for its aesthetics alone. 

135               The essence of Mr Garnsey’s answer was that such a park seat would not be a work of artistic craftsmanship, but he conceded that if a council had commissioned Rodin to produce a “wonderful” bronze seat to put in a special alcove in a refurbished town hall somewhere, then that would be quite a different story.  I do not accept the distinction. 

136               Furthermore, and more importantly, the authorities discussed and referred to earlier in these reasons show that utility does not disqualify a work from being a work of artistic craftsmanship, given the requisite level of aesthetic quality.  That is quite consistent with the statutorily-accepted policy of extending protection to the works of the arts and crafts movement. 

137               Accordingly, as, in my view, the Plug and the hull and deck Moulds and the JS 9000 yacht itself are all inextricably bound up together in the manner of their design and fabrication and the degree of aesthetic quality which they possess, I find that the (hull and deck) Mouldings and the first JS 9000 yacht are sculptures and works of artistic craftsmanship.  The evidence establishes that the applicant is the author and owner of the copyright in those works and in the Moulds, and I so find.

the drawings

138               In their defences the respondents denied that copyright subsisted in the Drawings.

139               As I have mentioned earlier, the respondents do not admit that the applicant is the author and owner of the copyright in the Drawings.  At trial there was no real challenge to authorship and it was admitted in final address.  There was, initially, some cross-examination which, so I inferred, was intended by the respondents to be directed to the question of ownership of the copyright in all of the items.  Later, the respondents, through their counsel, made it clear that they no longer put in issue the ownership which the applicant claimed in the five items referred to at paragraph [1] above.    

140               The respondents submitted that copyright in the Drawings did not subsist because of lack of originality.  They maintained that the Drawings were merely copies of either the Plug or previous Mylar plans and digitised drawings.  In later submissions they went so far as to complain that the Drawings (and other items) lacked novelty. 

141               I reject those submissions.  In my view, the evidence shows that the applicant has applied sufficient skill and effort in the creation of each of the works in respect of which he claims copyright, including the Drawings, thereby giving them the requisite degree of originality for that copyright to be created: Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 379. 

142               There was no submission that the Drawings were not artistic works.  In my opinion, each of the drawings is an artistic work within the meaning of the first sub-paragraph  of the definition of “artistic work” in s 10(1) as a “drawing”.  I find formally that the applicant is the author and owner of copyright which I find exists in the Drawings.  That leaves for decision whether the respondents have infringed that copyright and the copyright which I have found the applicant owns in the Plug, the Moulds, the Mouldings and the first JS 9000 yacht. 

infringement and liability

143               The authorities show that infringement, relevant to this case, depends upon whether a substantial part (assessed both qualitatively and quantitatively) of the copyright work has been reproduced by copying.  In this matter the requisite causal connection between the applicant’s works and the fourth respondent’s works is not really in issue, if at all.  The respondents admit that the fourth respondent purchased the hull and deck mouldings of a JS 9000 yacht and, until served with an interlocutory injunction, were in the course of using those mouldings for the eventual production of yachts.

144               The respondents made no submissions about the degree of objective similarity between the two sets of works.  The respondents’ submission about infringement was simply that the applicant’s works were not proved with sufficient definition to enable a finding of infringement.  There was some evidence, both on affidavit and oral, from the first respondent about some changes and further proposed changes to the deck moulding on which the respondents were working.  There were also formal denials in the defences that the respondents had reproduced a substantial part of the applicant’s works. 

145               Accordingly, I shall proceed to assess whether what has been reproduced or copied is an essential or material part of the applicant’s works. 

146               The authorities show that infringement is essentially a question of fact to be decided by considering the similarities between the two works and assessing the nature and extent of those similarities. 

147               In their defences the respondents made the following admissions, namely, that

• they were involved in various stages of production of a flop mould of a JS 9000 yacht hull;

• they were also involved in various stages of the manufacture of a certain deck moulding intended for use with a yacht hull but which, when the interlocutory injunction was granted on 12 September 2003, was incomplete and remains in such state;

• the fourth respondent had purchased a JS 9000 yacht (“the existing vessel”) and was using it as the Plug from which a female mould was in the process of being constructed and which, but for the injunction granted on 12 September 2003, would have resulted in a completed flop mould of the hull of that vessel;

• admits that the flop mould of the JS 9000 yacht hull would, if completed, have been a reproduction of the external features of shape and configuration of the hull of the existing vessel and at that stage the incomplete flop mould was a substantial reproduction of the external features of the hull of the existing vessel. 

148               In relation to the deck moulding, the respondents’ defences contained denials that they had made a flop mould of a deck moulding from a JS 9000 yacht hull.  They asserted that they had engaged in various stages of production of a deck moulding intended to be used in conjunction with the yacht intended to be produced by the (hull) flop mould, but the design of which deck moulding was said to be different as a matter of substance from the deck moulding of the existing vessel and was not a reproduction of a substantial part of the design of the deck moulding of a JS 9000 yacht. 

149               As the applicant submits, the only inference from the defences as pleaded is that the respondents have deliberately copied the JS 9000 yacht hull which the fourth respondent purchased from the second respondent.

150               As to the flop mould, I consider that the respondents’ admission that the incomplete flop mould which it made from the JS 9000 yacht hull was a substantial reproduction of the external features of the hull of that yacht, establishes infringement on their part of the applicant’s copyright in each of the five artistic works (which I have identified above) other than the deck Mould and deck Moulding and which reflect the hull shape and configuration of the first JS 9000 yacht.  In my opinion, the evidence establishes that the incomplete flop mould of the hull on its own constitutes reproduction of an essential and material part of the applicant’s works.  That includes, in my view, the JS 9000 yacht of which the hull is an essential and material part. 

151               The pleadings and the evidence show that the respondents’ flop mould of the hull is a replication of the JS 9000 hull (that is where they took it from).  The JS 9000 hull is itself a replication of the Moulds, the hull Moulding and of the Plug.  I do not think that there is any doubt that the fourth respondent has infringed the applicant’s copyright in the Plug of the hull (and hence the JS 9000 yacht) and any other manifestations of the hull (and the JS 9000 yacht) whether in the Moulds, the hull Moulding, the first JS 9000 yacht itself or the Drawings.  

152               The respondents submitted that the applicant had failed to prove the content or form of the various items in respect of which the applicant claimed copyright.  Their short point was that the works were not proved with sufficient definition for there to be a finding of infringement.  The respondents cited Sheldon, at para [84]-[86]as authority for the proposition that the onus was on the applicant to produce sufficient evidence of the content of the alleged copyright work.

153               In my view, the applicant has discharged his onus.  As to the Plug there are photographs of it in evidence.  One such photograph, exhibited to the applicant’s first affidavit, shows him hand-crafting the Plug.  Two further photographs of the Plug were annexed to the applicant’s fourth affidavit.  Also it is worth repeating that the Plug is substantially a reproduction of the first JS 9000 yacht itself.  There were, as I have mentioned, numerous photographs (of varying sizes) of the first JS 9000 yacht together with the evidence constituted by the view of Bateau Rouge, all of which, in my opinion, sufficiently show the content of the Plug.  For similar reasons, given that the Moulds and the Mouldings are manifestations of the same object, I consider that there is sufficient evidence of their content.  The same applies to the Drawings which were in evidence on a confidential basis.  That leaves the JS 9000 yacht itself.  In my opinion, the photographs and the view of Bateau Rouge provide sufficient evidence of the copyright work in the JS 9000 yacht.  That includes the cockpit, keel and rigging, as to which the applicant gave evidence (see paragraph [41] above). 

154               As may be apparent from the above, I accept the applicant’s submission that by making a flop mould of the hull of the JS 9000 the respondents necessarily infringed his copyright (other than in the deck Mould and deck Moulding) by copying.  I find that the hull of the JS 9000 yacht has been substantially reproduced by the partially-completed flop mould, and that that extent of reproduction represents a substantial part of the copyright in the JS 9000 yacht.  It is also a substantial reproduction of the Plug, hull Mould, hull Moulding and the Drawings. 

155               So far as the deck is concerned, the only alterations which the respondents have so far attempted on the deck moulding which the fourth respondent bought from the second respondent are to that portion of the deck which is aft of the mast.  That is, the evidence (including the first respondent’s evidence in cross-examination and the photographs to which I refer immediately below) shows that the respondents were in the course of making some physical alterations to that deck moulding.  These alterations were preparatory to taking a female flop mould of the deck. 

156               Exhibit R25 is a series of some eleven photographs including the partially completed flop mould of the hull, (two fibreglass layers or laminates having been applied to the hull moulding of the JS 9000 yacht) and the actual deck on which the respondents were working, taken in the fourth respondent’s factory.  I accept the applicant’s submissions to the following effect, that

• forward of the mast the fourth respondent’s deck moulding (partly manufactured) has the same curved shape in both profile and plan; [the first respondent admitted in cross-examination that no modifications had been made forward of the mast];

• the design of the deck and cockpit aft of the mast is essentially the same of the JS 9000;

• the curved peripheral shape has not altered;

• the cut-away stern section of the deck has not altered, nor has the cabin shape; and

• the deck configuration is essentially the same, but certain of the dimensions, primarily the width of the cockpit, have been altered. 

157               I find that the respondents had, at the time when the interlocutory injunction was served upon them, embarked on the process of manufacturing a deck moulding of a substantial part of the deck of the JS 9000.  In my view, the respondents had thereby embarked upon a course of conduct which would have resulted in a reproduction of substantial and material parts of the deck of the JS 9000 yacht. 

158               I have considered the oral and affidavit evidence of the first respondent, Mr Brent Burge, about the modifications made to the deck moulding of the JS 9000 yacht and the proposed changes to both the hull and the deck.  I do not accept Mr Burge’s oral evidence about the proposed changes in so far as they extend beyond the changes described in his affidavit sworn on 10 December 2003.  I reject his evidence about proposed changes to the hull for the following reasons.  First, it is inconsistent with the defences as pleaded.  Secondly, I would have expected them to have been mentioned in his affidavit.  Thirdly, the flop mould of the hull had already been substantially made by way of a complete copy of the JS 9000 hull moulding. 

159               I reject his evidence in relation to the further proposed changes to the deck moulding because they were not mentioned in his affidavit and his attempt to explain that omission was unpersuasive.  I take into account the rough sketch which Mr Burge drew and which showed certain alterations to the deck.  But the respondents did not produce any design drawings in relation to the deck. 

160               Even after taking into account the alterations and proposed alterations to the deck described by Mr Burge in his affidavit, my assessment is that those changes and proposed changes would still result in the reproduction of an essential and material part of the JS 9000 deck which on its own would be a reproduction of an essential and material part of the JS 9000 yacht.  And that reproduction, when taken in conjunction with the reproduction of the JS 9000 hull, would constitute even more clearly and emphatically a reproduction of the essential and material parts of the JS 9000 yacht itself. 

161               In summary, I find that the fourth respondent’s deliberate copying of the JS 9000 hull constitutes a reproduction of an essential and material part of the Plug, hull Mould, hull Moulding, the JS 9000 yacht and the Drawings.  It has thereby infringed the applicant’s copyright in those items.  It has also acted in such a manner in relation to the deck of the JS 9000 as to evidence an intent, unless restrained, to infringe the same copyright in those items, by copying that deck.  I am satisfied that were it not for the interlocutory injunction granted on 12 September 2003, that further infringement would by now have occurred.

162               The evidence shows that Mr Burge, the first respondent, has been directly involved in the infringement by the fourth respondent.  As I have mentioned, he was the operations manager of the fourth respondent at its Pinjarra factory overseeing the work of making flop moulds from the hull and deck mouldings which the fourth respondent had purchased from the second respondent and what was to be the eventual fabrication of hull and deck mouldings for complete yachts.  Mr Rogers and Mr Warren, the second respondent and the third respondent respectively admit, in their respective defences, that they were involved in the production of the flop mould and the manufacture of the deck moulding.  Neither of them gave evidence at the hearing.  Mr Rogers sold his hull and deck mouldings to the fourth respondent.  If he was not aware of its intended use at the time of sale, his admitted work as a fibreglass and resin applicator on the JS 9000 hull in the fourth respondent’s factory must have made him aware, and I so find, of the reproduction of the hull moulding.  Mr Warren was similarly employed.  I find that they were directly involved in the infringement by the fourth respondent of the various rights of copyright owned by the applicant which I have identified earlier in these reasons.  That leaves the fifth and sixth respondents, Mr Bosman and Mr Zaza.  They are directors of the fourth respondent and admit that any infringement by the fourth respondent was at their direction.  There is no issue as to their knowledge.  Mr Bosman and Mr Zaza have infringed the applicant’s copyright to the same extent as the fourth respondent has infringed that copyright. 

THE respondents’ alternative argument – section 77(2)

163               The respondents’ alternative argument was that they were protected by s 77(2) of the Act against infringement of copyright because they had applied a corresponding design (reproducing the design in the Drawings) to an article, namely a yacht or hull and that the applicant had not registered the corresponding design of the Drawings under the Designs Act.  The respondents argued that they were protected in respect of the application of the corresponding design of the Drawings and in respect of the application of the “other” corresponding design being that of the Plug.  It was common ground that the Drawings were not works of artistic craftsmanship.  The respondents argued that the applicant had lost copyright protection against infringement of copyright in the Drawings by reason of the respondents having reproduced in three dimensions the corresponding design shown in the Drawings in two dimensions and also by the respondents having reproduced another corresponding design being the same corresponding design for the Plug.  This was said to be consistent with the policy of the legislation and the loss of copyright for the industrial application of unregistered designs for all articles to which any corresponding design can be applied once an unregistered design is applied to one article or class of articles. 

164               The respondents, in later submissions, put a further argument which ran as follows.  The Drawings showed both the design of the JS 9000 and the design of a mould for the design of the yacht.  The Plug was produced from the Drawings.  The Moulds were produced from the Plug as part of a process of industrial application.  Consequently, so it was put, by using the Mould as part of a process of industrial application of the design of the JS 9000 shown in the Drawings, the corresponding design to that conveyed by the Mould and the Drawings “can be said to have been” industrially applied by the applicant.  Inherent in this reasoning was the concept that there was only one design conveyed by the Moulds, the Drawings and the Plug. 

165               The respondents submitted that the fact that the Moulds convey an obverse of the design, intended to enable industrial application of the design, “did not prevent it being held” that there had been an industrial application of the corresponding design of that of the Moulds.  In other words “so the argument would go”, (again I quote from the respondents’ later submissions) by the use of the Moulds, the design of the Moulds was industrially applied to an article at the same time as the design of the JS 9000 yacht, there being no material difference. 

166               In even later submissions [filed 7 May 2004] the respondents contended that the applicant’s original freehand drawings (no longer in existence) and the digitised drawings referred to in the applicant’s third affidavit contained the corresponding design to which the Plug, the Moulds and the JS 9000 yacht were made.

my reasoning

167               I reject the respondents’ submissions because, so it seems to me, the applicant’s submissions have far greater merit.  The applicant conceded that the Drawings were not works of artistic craftsmanship.  As I have mentioned, the applicant submitted that the reproduction by the fourth respondent of the Plug was a reproduction of a work of artistic craftsmanship and thus s 77(2) has no application.  The same, so the applicant contended, was true of the Mouldings and the JS 9000 yacht which followed the Plug in point of time.  I agree. 

168               Next the applicant said that the only potential application of s 77(2) would be a reproduction of a relevant artistic work which is not a work of artistic craftsmanship i.e. the Drawings.  The applicant submitted that Parliament could not have intended that copyright protection afforded to a work of artistic craftsmanship [by its exclusion from the operation of s 77(2)] is lost because the artist/craftsman made sketches (from which he has departed) during the course of, or after, crafting his work.  That would be contrary to the whole purpose reflected in the exclusion contained in the parenthesis in s 77(1)(a).  I accept that submission. 

169               In my opinion, to apply s 77 to the facts of this case, one starts by excluding from its operation any work of artistic craftsmanship.  The words in parenthesis in s 77(1)(a) do this expressly.  That is, on my reasoning above, one excludes the Plug, the Mouldings and the JS 9000 yacht from the operation of s 77 as a whole. 

170               When one does this, it can be seen that whether a corresponding design is applied industrially and articles made to the corresponding design are sold, let for hire or the like is irrelevant. 

171               Section 74 defines “corresponding design” as follows:

‘“corresponding design”, in relation to an artistic work, means a design that, when applied to an article, results in a reproduction of that work, but does not include a design consisting solely of features of two-dimensional pattern or ornament applicable to a surface of an article.’

172               The relevant corresponding design in this matter, in my opinion, is that of the JS 9000 yacht i.e. the external features of its shape and configuration.  That is the essence of it as both an artistic work and a work of artistic craftsmanship (although the Plug and the Mouldings are material parts of it) to which there may be correspondence in a reproduction of that article.  But precisely because the design of the JS 9000 yacht is a work of artistic craftsmanship, whether a person has used a drawing, a mould or a model of it to make an article, s 77 does not apply.  That is how the section works. 

173               In my view, the respondents seek to apply s 77(2) as if it were a free-standing provision.  But s 77(1) makes it perfectly clear that the whole section only applies where the conditions set out in sub-paragraphs (a), (b), (c) and (d), read cumulatively, are satisfied.

174               In my opinion, the respondents’ arguments fall at the first hurdle when it is recognised that copyright subsists in the abovementioned works of artistic craftsmanship.  The Drawings might well reflect a corresponding design, but that is not to the point, because they reflect a corresponding design embodied in a work of artistic craftsmanship. 

175               Furthermore, the respondents’ “bootstrap” initial submissions (based on their own application of a corresponding design) cannot be correct.  If one traces through the conditions in s 77 it can be seen that the relevant application is application by or with the licence of the owner of the copyright – see s 77(1)(b).  The reference to sale in sub-paragraph 77(1)(c) is to articles to which the corresponding design has been “so applied”.  This must mean applied “by or with the licence of the owner” as referred to in the immediately preceding sub-paragraph.  I do not suggest that sub-paragraph (c) requires the selling, letting for hire and the like to be by or with the licence of the owner of the copyright.  That is not what the sub-paragraph says.  But the requirement that any article so sold be the result of the application industrially of a corresponding design by or with the licence of the owner flows through, by the use of the words “so sold” in s 77(2) upon which the respondents rely.  It may be useful to set out s 77(2) again.  It reads as follows:

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

176               In any event, the respondents’ actions in making a flop mould of the JS 9000 hull did not constitute the application of a corresponding design shown in the Drawings.  What the respondents did was to apply the corresponding design of the Plug, hull Mould, hull Moulding and the JS 9000 yacht (i.e. works of artistic craftsmanship), all of which the respondents admit, in their later submissions, is the one design. 

177               As I have mentioned earlier, I accept the applicant’s evidence that the Drawings were prepared either at a time when the sculpting of the Plug was well advanced or after it was finished. 

178               The evidence also shows that the Plug and subsequent works were substantially different from the sketch drawings (referred to by the respondents in their final set of submissions as “the freehand drawings and the first set of digitised drawings”) which preceded it (and in which drawings the applicant claims no copyright in these proceedings).  The comparisons and the evidence are described in the applicant’s supplemental submissions filed on 14 May 2004, which I accept.  That is, I accept the evidence to which the applicant refers and I agree with the conclusions expressed in those submissions.  Amongst other things, the evidence shows the following:

• the digitised drawings show more of a V-shape than the shape shown “as built” drawings;

• the hull of the JS 9000 yacht is significantly larger than that shown in the digitised drawings;

• the depth of the stern on the JS 9000 yacht is 940 mm, its length is 9.125 metres and the beam is 1.73 metres.  The equivalent dimensions on the digitised drawing are 578 mm, slightly in excess in 7 metres and 1.25 metres;

• the digitised drawings do not demonstrate the cockpit and cabin geometry.  They show the hull lines only i.e. only the hull definition; and

• the digitised drawings do not demonstrate the geometry of the transom because there is no transom geometry in them.  Nor is there any geometry of the knuckle region of the stern in profile and section or plan, although the freeboard of the vessel is shown.

179               This evidence strongly corroborates (had corroboration been needed) the applicant’s evidence about how he crafted the Plug. 

Conclusion

180               For the foregoing reasons there will be declarations that copyright exists in each of the items referred to in paragraph 1 of the application, that the applicant is the author and owner of the copyright in those items and that the respondents have infringed the copyright in each of those items, other than (as yet) those which depict the deck. 

costs

181               The respondents submitted that even if the applicant succeeded (as he has) on the question of liability they are nevertheless entitled in any event to all their costs up to the filing and service of the applicant’s fourth affidavit on or about 22 January 2004 on an indemnity basis and that the applicant should be deprived of any order for any costs. 

182               The respondents’ reasons for those claims (and I summarise their written submissions) are as follows:

• the Court was misled on the original ex parte interlocutory application (and all material matters were said not to have been disclosed) as to the creation of the works in which copyright was claimed.  The respondents point to the misrepresentation that the Drawings preceded the creation of the Plug;

• at all material times thereafter the respondents would normally have been entitled to an automatic discharge of the interim injunctive relief; 

• the applicant did not correct the evidence in his first two affidavits in his third affidavit sworn on 15 October 2003; and

• the respondents obtained evidence from Mr Riley and Mr Hood on the basis of the applicant’s first three affidavits. 

183               The applicant was cross-examined about these matters.  I accept his evidence that the application and his supporting affidavits were put together in great haste.  The haste was occasioned by the fact that there was a real risk that the respondents would export a prototype of the JS 9000 yacht which they were surreptitiously copying in their factory at Pinjarra. 

184               The applicant swore his third affidavit in support of the continuation of interlocutory relief.  In my view, the contents of that affidavit clarified, to a very considerable extent, the process in which the applicant engaged, and identified the drawings which ultimately culminated in the Drawings at annexure JHS1 to his second affidavit.  As senior counsel for the respondents acknowledged, (during final cross-examination of the applicant on the last day of the hearing), it had emerged from both the applicant’s third and fourth affidavits that the Drawings were produced during or after the Plug was completed.

185               On 6 November 2003 I made an order that the questions of liability and relief in this application be heard and determined separately.  I expedited the hearing of the question of liability by listing it for 3, 4 and 5 February 2004.  I made directions for the remaining interlocutory steps to be taken leading up to that hearing.  The intervening period included, of course, the Christmas “vacation”.  It is true that it was not until the filing of the applicant’s fourth affidavit, that the picture became much clearer. 

186               But there are two further relevant factors.  The first is that I consider that the emergence of the evidence on both sides, unfolding as it did, was part and parcel of what might be expected to happen during the course of expedited interlocutory procedures leading to an early hearing. 

187               The second is that the respondents, even after being served with the applicant’s fourth affidavit, maintained their defence most vigorously, filing a substance of evidence of Mr Riley, three affidavits from Mr Scott, a substance of evidence from Mr Hood, two further affidavits from Mr Hood and a supplementary statement from him. 

188               Given the circumstances of expedition to which I have referred above, I do not consider that the applicant’s conduct of the matter warrants any departure from the usual rule that costs should follow the event.  I certainly do not think that it would be appropriate to order the applicant to pay any costs, let alone costs on the indemnity basis which the respondents seek. 

Postscript

189               After I had published the foregoing reasons this morning (with a minute of proposed orders), counsel for the respondents (Mr S G Scott) told me that he considered that the proposed orders went beyond the issues which the parties had agreed I was to decide.  I referred him to the orders made by consent on 6 November 2003 that the issues of liability and relief be heard separately and that the hearing of the issue of liability take place on 3, 4 and 5 February 2004.  Mr Scott informed me that there had been correspondence between the parties which limited the matters which would be litigated and the evidence to be adduced at the initial hearing.  That included matters raised in the cross-claims. 

190               Accordingly, I did not pronounce any of the proposed orders this morning and stood the matter over until this afternoon so that counsel could address me on the appropriate orders to be made.

191               When the matter was called on this afternoon I was told that the parties were in agreement that paragraphs 1, 2, 3 and 4 of the proposed orders were appropriate.  There will be orders in terms of those paragraphs of the minute, save that the last word in paragraph 2 “Mouldings” will be expressed in the singular “Moulding”.

192               The parties were also agreed on the form of orders to be made in relation to the cross-claims.  Accordingly, orders 5 and 6 will read as follows:

5.         (a)        Paragraphs A, C and E of the prayers for relief in the respective cross-claims of the first and third respondents be dismissed. 

            (b)        Paragraphs A, B, D and E of the prayers for relief in the respective cross-claims of the second, fifth and sixth respondents be dismissed; and

            (c)        Paragraphs A, B and D of the fourth respondent’s cross-claim be dismissed.

6.         The questions

            (a)        of the further relief to which the applicant may be entitled as against the respondents, including any further declaratory or injunctive relief, orders for assessment and payment of damages, any account of profits and interest; and

            (b)        remaining in the cross-claims

            are to be heard and determined by a judge or by such other person as a judge may direct.

193               That left the matter of the costs order.  Mr Scott submitted that the question of costs of the proceedings to date should not be decided now because there were other issues to be determined in this matter, for example the defamation claims and the relief based on claims of innocent infringement.  To make the order which I proposed this morning i.e. that the respondents pay all of the applicant’s costs to date (save for those in the motions to whch I shall refer in a moment) would, so it was put, fetter that judge’s discretion.  When I suggested in the course of Mr Scott’s submissions that I could make my costs order subject to that judge’s discretion to vary it, Mr Scott accepted the proposition.

194               But Mr D M Stone, counsel for the applicant, submitted that there should be an order for costs of the proceedings to date in favour of his client.  The applicant had been successful in the three issues which I had identified in paragraph [59] of my reasons for judgment published today after 7 days of hearing of those issues.  The judge who hears the remaining issues would have full discretion in relation to the costs of those issues. 

195               I accept Mr Stone’s submissions.  Furthermore, my impression is that the remaining issues in the applicant’s claim and the cross-claims are not such that, if the respondents are successful, it is likely there will need to be any adjustment of the costs of the issues decided to date in order to do justice to the parties.  I think that it is very likely that in the context of the case overall, the subsequent judge will be able, in the exercise of his or her discretion, to do justice on the matter of the costs of those issues without revisiting my costs order. 

196               There remains the costs of the motion whereby the applicant obtained an interlocutory injunction and the motion by the respondents to discharge that injunction, a motion which was dismissed. 

197               Mr Scott submitted that for reasons essentially the same as those summarised in paras [181 and [182] of my reasons for judgment the applicant should not have those costs.

198               For the reasons set out in paragraph [183] and [184] of my reasons for judgment I do not accept that submission.  I think that the applicant should have his costs of those motions.  Paragraph 7 of the orders will be in these terms:

7.         The respondents pay the applicant’s costs of the proceedings to date including any reserved costs and the costs of the motions notice of which was filed on 12 September 2003 and 3 October 2003 respectively.

I will add the following paragraph to the orders:

8.         The interlocutory injunction granted on 12 September 2003 shall remain in force until further order.

Associate:

Dated:              25 June 2004