CONSIDERATION
43 The definitive authority on the meaning of the phrase "a work of artistic craftsmanship" is the decision of the High Court in Burge. In Burge, the respondent, Mr Swarbrick was a naval architect who designed a racing yacht called the JS 9000. In the course of designing the yacht, he created a full scale model (known as the Plug) of the hull and deck of what became the finished yacht. The question was whether the Plug was a work of artistic craftsmanship. The High Court held that it was not.
44 In so holding, the High Court adopted an objective test based substantially on the reasoning of Lord Simon in Hensher. The High Court observed that the phrase "work of artistic craftsmanship" is a composite phrase that must be construed as a whole: Burge at [56].
45 The High Court referred to the evidence given by Mr Swarbrick and made some observations in relation to it that are of particular relevance to this appeal given the reliance placed by the appellant on the evidence given by Ms MacGowan as to her intentions. Their Honours said at [63]-[64]:
[63] The answer to the question whether the Plug is a "work of artistic craftsmanship" cannot be controlled by evidence from Mr Swarbrick of his aspirations or intentions when designing and constructing the Plug. His evidence was admissible. But the operation of the statute does not turn upon the presence or absence of evidence of that nature from the author of the work in question. The matter, like many other issues calling for care and discrimination, is one for objective determination by the court, assisted by admissible evidence and not unduly weighed down by the supposed terrors for judicial assessment of matters involving aesthetics.
[64] The statute does not give to the opinion of the person who claims to be the author of "a work of artistic craftsmanship" the determination of whether that result was obtained; still less, whether it was obtained because he or she intended that result. Given the long period of copyright protection, the author, at the stage when there is litigation, may be unavailable. Indeed, as Pape J noted in Cuisenaire v Reed [1963] VR 719 at 730, the author may be dead. Again, intentions may fail to be realised. Further, just as few alleged inventors are heard to deny the presence of an inventive step on their part, so, it may be expected, will few alleged authors of works of artistic craftsmanship be heard readily to admit the absence of any necessary aesthetic element in their endeavours.
46 The High Court found that speed was the overriding consideration in the design of the JS 9000 and all other design factors were of lesser importance: Burge at [71] and [72]. The Court said at [73]:
Taken as a whole and considered objectively, the evidence, at best, shows that matters of visual and aesthetic appeal were but one of a range of considerations in the design of the Plug. Matters of visual and aesthetic appeal necessarily were subordinated to achievement of the purely functional aspects required for a successfully marketed "sports boat" and thus for the commercial objective in view.
47 The High Court emphasised that the critical point in determining whether a work is "a work of artistic craftsmanship" does not turn on assessing the beauty or aesthetic appeal of the work, or in assessing any harmony between visual appeal and utility, but rather "on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations": Burge at [83].
48 The more that functional considerations dictate the form of the work, the less scope there may be for finding that there exists the substantial artistic effort and expression which characterises a work of artistic craftsmanship. As the High Court noted in Burge at [84], "[q]uestions of fact and degree inevitably arise".
49 As we have mentioned, the appellant says that the primary judge erred in giving improper weight to the evidence of Mr Smith, and that her Honour should have given greater weight to the evidence of Ms Beale and Ms MacGowan.
50 As to Ms MacGowan's evidence, we have referred to what the High Court said in Burge concerning the evidence of the author of what is alleged to be a work of artistic craftsmanship. The author's evidence is admissible, but the weight it may be afforded is often affected by two particular factors. The first is that the question of whether an object is a work of artistic craftsmanship does not depend on the author's aspirations and intentions. This is because the question is to be addressed by reference to the object itself and the extent to which any artistic expression manifested in the object is unconstrained by functional considerations. Secondly, just as few inventors are heard to deny that they made an inventive step, it is to be expected that the views of an author as to the artistic qualities of his or her own work may not be shared by others who have different tastes and preferences.
51 The fact that the primary judge accepted Ms MacGowan's evidence as to her aspirations and intentions did not require that it be given weight in deciding whether the Escape Bag was a work of artistic craftsmanship. There is no inconsistency in her Honour having accepted Ms MacGowan's evidence and holding that the Escape Bag was not a work of artistic craftsmanship. In our opinion, the primary judge's treatment of Ms MacGowan's evidence is not shown to have been affected by any error.
52 The appellant's complaint concerning the primary judge's preference for Mr Smith's evidence is not reflected in any ground of appeal. At times the appellant's submissions on this topic seem to amount to a complaint about the admissibility of Mr Smith's evidence due to what was said to be his lack of expertise in bag design. Ultimately, however, the submission was that the primary judge should have given Mr Smith's evidence no or at least little weight on the basis that he did not have "extensive experience in bag design".
53 The primary judge made findings in relation to both Mr Smith's and Ms Beale's expertise at Reasons [4]. She found that Mr Smith was an expert in the design, development and manufacture of handbags and accessories with more than 30 years' experience. At paras 15 and 16 of Mr Smith's Expert Report, he states:
15. As the matters I have set out above indicate, a good deal of my professional experience relates to the design and manufacture of leathergoods (including handbags). However, I have also worked extensively with other fabrics such as canvas, polyurethane, nylon, PVC and waxed cotton, Including when used for handbags.
16. As a result of my training and experience, I am very familiar with:
(a) the range of handbag styles that are, and have over recent decades been, widely available on the market (three of which were the subject of the RMIT courses referred to above - clutch, tote and gusseted);
(b) the process of designing handbags;
(c) the range of materials that are, and have over recent decades been, commonly used to make handbags and the issues that can arise in connection with the use of those materials;
(d) the types of accessories that are, and have over recent decades been, commonly used on handbags (such zips, press studs, magnetic closures etc);
(e) the development of sample handbags from a design;
(f) the process of moving from the design / sample phase of product development to commercial production of a handbag; and
(g) the manufacturing techniques and processes that are, and have over recent decades been, commonly used in relation to the commercial production of handbags.
54 Mr Smith's evidence was not objected to by the appellant and he participated in an expert conference with Ms Beale at which they considered a number of questions including whether there was "agreement between the experts as to the functional considerations which inform the design and manufacture of tote bags and carry all bags …".
55 The appellant emphasised in its submissions on this topic that Mr Smith did not have professional qualifications in bag design. But there is other evidence which showed that he had taught short courses on bag making, including tote bag making, sponsored by a well-known educational institution (RMIT) which were promoted as suitable for people who were interested in the craft of designing and making bags by hand. Ms Beale, on the other hand, agreed that she was not trained in constructing or making bags, and it appears from her evidence that she had very limited experience in bag design. Although Ms Beale recalled having made a tote bag as a university student, she was not shown to have anywhere near the same degree of involvement in the design and manufacture of bags as Mr Smith.
56 The appellant placed considerable reliance on the following passage of evidence given by Mr Smith and Ms Beale in their concurrent session:
MR CAINE: Yes. And so the overall look of that bag meets Ms MacGowan's design philosophy that you find beauty and style in simplicity?
MR SMITH: I can't say beauty, because I don't find it beautiful, but some people may, but it's simple, elegant, and distinctive, yes, I agree.
MR CAINE Thank you. And that was her design philosophy, and she has achieved that with the State of Escape bag that you can see in that image?
MR SMITH: That's - would be for her to say, not me. I - she was a designer; she knew what she wanted the end look to be like.
MR CAINE: And so you and Ms MacGowan disagree on beauty, but otherwise you accept the matters I've put to you?
MR SMITH: Yes.
MR CAINE: Yes, thank you. Ms Beale, is there anything that you would care to say about the exchange I've just had with Mr Smith?
MS BEALE: Thank you, Mr Caine. Whilst we talk about beauty as a subjective term, it actually has a very strong history in design practice, and one of the overriding principles that has informed design from the arts and crafts movement onwards, was this notion of a quote by William Morris, in a lecture that he made in 1880, which said:
Have nothing in your homes that you do not know to be useful and believe to be beautiful.
And so my feeling when I was reading the notes on this case, in terms of the information presented to me, was that the designer was following in a tradition of design practice that is getting back to my earlier evidence around what is good design, and I believe that if you think about that concept of simplicity, elegance, a lack of extraneous material, that is a term that is how a designer would refer to an object as beautiful.
57 In this evidence Ms Beale suggested, albeit in a slightly round-about-way, that the Escape Bag was "beautiful". Mr Smith, on the other hand, stopped short of accepting that it was beautiful, but did acknowledge that it was simple, elegant and distinctive, terms which Ms Beale also used when describing the design.
58 The appellant submitted that Mr Smith was not as qualified as Ms Beale to express opinions on the aesthetics of bags or bag designs. Even if that were true (we express no view one way or the other) as the High Court noted in Burge at [83], whether a work is a work of artistic craftsmanship does not turn on an assessment of the beauty or aesthetic appeal of the work.
59 Mr Smith was by his training and experience well qualified to give an expert opinion on matters addressed in this evidence including the functional considerations which inform the design and manufacture of tote bags and carry all bags and it was open to the primary judge to give his evidence considerable weight. In our opinion the appellant's complaint that the primary judge gave Mr Smith's evidence improper or excessive weight is without merit.
60 The next matter to be considered concerns the challenge to the primary judge's finding that Ms MacGowan did not approach the design and manufacture of the Escape Bag as an artist-craftsperson. That conclusion rested on the finding that Ms MacGowan "… had no special training, skill and knowledge relating to the design and manufacture of handbags and many of the issues encountered were purely functional in nature".
61 In a passage approved by the High Court in Burge at [61], Lord Simon said of the phrase "work of artistic craftsmanship" in Hensher at 91:
"A work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production … 'Craftsmanship', particularly when considered in its historical context, implies a manifestation of pride in sound workmanship - a rejection of the shoddy, the meretricious, the facile.
62 The evidence indicated that Ms MacGowan had no background in bag design. She had trained and worked as a graphic designer before working in her husband's wine making company. Before designing the Escape Bag, she had contemplated making shoes out of neoprene. But there was no evidence that she had ever designed or made any form of bag before she started work on the Escape Bag.
63 Although the appellant pointed to evidence of Ms Beale suggesting that there was an exercise of skill on the part of Ms MacGowan in designing and making the Escape Bag, that evidence is not inconsistent with the primary judge's finding that Ms MacGowan did not approach the design and manufacture of the Escape Bag as an artist-craftsperson.
64 The appellant submitted that to require specialist training and knowledge in the design and manufacture of handbags would unduly limit the scope for original contribution by a person whose skill and experience was acquired outside the relevant field. However, we do not understand her Honour to have held that it was essential that to be an artist-craftsperson a person must have specialist training and knowledge in a particular field. Her Honour correctly recognised that the fact that a person does not possess special training, skill and knowledge in the relevant field (in this case bag design) is at the very least a factor that may tend to show that the work that he or she has created is not a work of artistic craftsmanship.
65 One of the specific challenges raised by the appellant concerns what it referred to as the primary judge's finding that the selection and use of perforated neoprene, or its use in combination with sailing rope, in the Escape Bag did not involve an act of artistic craftsmanship. The appellant submitted that the primary judge erred in finding that the Escape Bag was not a work of artistic craftsmanship for the reason that (or for reasons including that) neoprene and sailing rope were materials that were readily available that could be used without any particular training, skill or knowledge.
66 If the appellant is to be understood as suggesting that these considerations were treated by her Honour as determinative, then that reflects a misunderstanding of her Honour's reasons. If, on the other hand, the appellant is contending that these considerations were irrelevant to the question which her Honour was required to decide, then we think the appellant's contention is legally incorrect. What the primary judge found was that (contrary to the appellant's submissions to her Honour) there was no act of artistic craftsmanship involved in the selection of perforated neoprene and sailing rope as materials for use in the manufacture of a carry bag.
67 It is worth noting that Ms MacGowan observed in an email she wrote to her co-director, Ms Maidment, on 27 November 2012 that "[i]t looks like all the top designers have a neoprene bag in their collections …". And it was not disputed by the appellant that rope had also been used to make handles for carry bags. Ms MacGowan said she used sailing rope for its structural quality, which she considered important. The fact that Ms MacGowan used "perforated neoprene" and "sailing rope" in her design reflects minor variations in design detail that is consistent with the primary judge's conclusion that the use of such materials to make an everyday carry bag was, at its highest, an evolution in styling rather than an act of artistic craftsmanship.
68 The appellant submitted that the primary judge did not consider the Escape Bag as a whole in deciding whether or not it was a work of artistic craftsmanship. Her Honour's detailed recitation and analysis of the evidence shows that she understood that the question for determination was whether the Escape Bag was a work of artistic craftsmanship and her ultimate conclusion was that it was not. The detailed attention given in her Honour's reasons to particular design elements reflected the evidence and submissions relied upon by the parties. For example, the experts were asked by the parties to comment on a range of specific features at least some of which were relied upon by the appellant in support of submissions made to the primary judge as to why it was that the Escape Bag is a work of artistic craftsmanship and not just a different style of tote bag. In our opinion there is no substance to this criticism of the primary judge's overall approach.
69 With regard to the appellant's challenge to the primary judge's findings in Reasons [118], it is important to note the primary judge's use of the word "alone". Her Honour was not saying there that the combination of design features that make up the Escape Bag did not represent a departure from bags known as at November 2013. Rather, her Honour is to be understood as saying that the Escape Bag embodied common design features and methods each of which was known and used at that time. This is consistent with, and tends to reinforce, the primary judge's conclusion that the Escape Bag represented an evolution in styling rather than a work of artistic craftsmanship.
70 Further, whether or not each of the design methods was "common practice" is not a matter which we consider to be of particular significance. In any event, we think the primary judge's finding that such methods reflected common practice finds broad support in Mr Smith's evidence. Mr Smith accepted that there were a few design features that were unfamiliar to him as finishes for a handbag: see Reasons [101] and [103]. However, it is clear that each of these performed a predominately functional role.
71 The appellant also submitted that the primary judge failed to give proper weight to the beauty or aesthetic appeal of the bag, its artistic quality, and the artistic effort that went into designing it. It submitted that the primary judge should have found that the Escape Bag manifested a real and substantial artistic element. We have dealt with these criticisms in the context of our discussion of the expert evidence and the passage in the High Court's judgment in Burge at [83]. In any event, what weight should be given to any evidence relied upon by the appellant as to the "beauty or aesthetic appeal" or the "artistic quality" of the Escape Bag was a matter for her Honour. We are not persuaded that her Honour made any error in assessing what weight should be given to the evidence directed to those matters. The same is true, in our opinion, of the primary judge's assessment of the evidence relating to the functional considerations relevant to the design of the Escape Bag and, in particular, the extent to which its design was unconstrained by functional considerations.
72 The primary judge found at Reasons [120] that the choice of perforated neoprene as the fabric for the Escape Bag was unconstrained by function. Although the respondents did not challenge that finding, we have difficulty accepting it. It seems to us that perforated neoprene would not have been selected by Ms MacGowan had it not possessed the strength and durability necessary for use in a useful and practical carry bag. As Mr Smith noted in his evidence, a functional element of a tote or carry-all bag is that it have a durable base and sides. Of course, many other materials might have been used in place of perforated neoprene, but we do not think it is correct to say that the selection of material from which to make the body of the bag was "unconstrained by function".
73 In any event, the primary judge's careful analysis of the evidence at Reasons [110]-[117] shows that the design of the Escape Bag was substantially constrained by function. In our view functional considerations substantially outweighed other considerations pertaining to its visual and aesthetic appeal in the determination of the shape, configuration and finish of the Escape Bag.
74 The appellant submitted that this was a clear case in which the primary judge's conclusion was wrong and that her Honour's decision should on that basis be overturned. For the reasons given we reject that submission. In our opinion the primary judge's conclusion that the Escape Bag is not a work of artistic craftsmanship was correct.