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.