Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No.
1 ARTICLE 37
What is (Art)istic Craftsmanship?
An Australian Copyright Analysis
Tim Golder, Marina Lloyd-Jones and Matt Vitins*
In the explosive period of thought that immediately
followed the First World War, artist Marcel Duchamp
scandalized New York when he exhibited a urinal
(‘Fountain’) in one of the city’s galleries. Duchamp’s
point was to deny the possibility of defining art. Some
years later, in the same city, Andy Warhol repeated the
challenge by seeking to elevate the status of consumer
products such as soup cans.
While it may be fashionable for philosophers and
artists to declare periodically that the definition of art
exists beyond the strictures of language, the concept of
an ‘artistic work’ has been used by legislators to mark
out the territory belonging to copyright law.1 This calls
on judges to make an assessment of what is, and what
is not, properly called an artistic work.
The scope for controversy is limited where the work
is aligned with traditional genres of fine art. Paintings,
sculptures, drawings, and photographs will automati-
cally qualify provided they are original. However, the
Copyright Act 1968 (Cth) also lists ‘works of artistic
craftsmanship’ as a sub-category of artistic work. In
deciding whether a work can be considered one of
artistic craftsmanship, the courts have been forced to
engage with the problem of defining art.
The copyright/design overlap
The question is particularly important when navigating
the technical grey area between copyright and design
law. The Copyright Act is directed at protecting creative
works against reproduction. The Designs Act 2003
(Cth) concerns itself with the visual appearance of
commercial products.2 Ordinarily, these bodies of law
protect different areas of innovation. However, there is
clear scope for overlap. As a simple example, a vase
may be both an artistic work and registrable as a
design. An overlap more commonly occurs, however,
* Partner, Senior Associate, and Law Graduate, respectively at Allens
Arthur Robinson, Australia.
1 Copyright Act 1968 (Cth) §10(1).
2 Australian Law Reform Commission (1995) Designs, Report 74 at 2.20.
3 The Hon Warren Entsch MP, Designs (Consequential Amendments) Bill
Second Reading Speech. This is because a three-dimensional
# The Author (2007). Published by Oxford University Press. All rights reserved.
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Key issues
† Artistic creativity is capable of being appreciated
and commercially exploited in one of two ways:
by the treatment of a designed product as an
object of art, which has as its raison d’etre an aes-
thetic appeal, or as an object of functionality
which, while enhanced by its aesthetic appeal, is
not governed by it.
† This bifurcation of design has produced substan-
tial legal problems in determining the nature and
limits of protection against unauthorized
copying, since aesthetic and functional objects
are generally protected by very different legal
regimes while a design itself may be viewed as
belonging to either category, or simultaneously to
both.
† Taking a sharply analytical view of Australia’s
increasingly complex legal regime as it governs
aesthetically characterized but functional objects,
the author demonstrates in the light of recent
case law how a failure to appreciate the appar-
ently abstruse conceptual subtleties can lead to
serious commercial consequences.
where drawings form the basis of a mass produced
industrial product.3
Policy against dual protection
The body of law which is invoked to protect a work
matters because it has traditionally been considered
inappropriate for functional consumer products to
benefit from the privileged treatment preserved for
representation of a two-dimensional work amounts to reproduction of
that work under the Copyright Act 1968 (Cth) §21(3). The mass
produced item may not even pretend to be an artistic work deserving of
copyright protection, but the drawings that describe it will be
automatically protected by copyright, and this protection will flow
through to the three dimensional version.
38 ARTICLE
works of art by copyright law. Copyright in published
works subsists until the end of the 70th year after the
death of the author and is obtained without the need
to satisfy formalities. The only threshold requirement is
that the work be ‘original’. A design, by way of contrast,
must be registered, must be novel against relevant prior
art, and provides a monopoly right for a period of only
10 years.4
Consequently, both British and Australian parlia-
ments have consistently maintained a general policy
against dual protection.5 However, it has proved diffi-
cult to categorize works as either inherently artistic
(and protected by copyright), or as designs to be pro-
tected under the designs law. One commentator
expressed the dilemma as follows:
Motorcycle parts belong firmly in designs law; a John
Coburn painting belongs firmly in copyright law. . . But
the difficulty is in the middle area—in relation to applied
design which has some sort of artistic integrity, rather than
a merely utilitarian design—where should the legislation
draw the line with a Philip Starck coat-hanger; or a BANG
Design table?6
In Australia, the policy against dual protection, and the
dividing line between art and design, are expressed in
Division 8 of the Copyright Act (the Overlap Scheme).
When activated, the Overlap Scheme seeks to limit a
creator’s capacity to assert copyright.
The Overlap Scheme suggests that design law will
usually be a more appropriate form of protection for
works that are mass produced.7 An available exemption
exists, however, for works of ‘artistic craftsmanship’,
which maintain a special status in copyright law
despite mass production.
Classification of a work as one of ‘artistic craftsman-
ship’ will therefore significantly affect the rights that
may be asserted by an author. However, as indicated by
Duchamp and Warhol, any attempt to set criteria by
which art may be marked off from other types of
endeavour will tend to be difficult.
The High Court of Australia recently attempted to
address this question in Burge v Swarbrick,8 which con-
cerned a racing yacht designed by John Swarbrick, a
highly experienced naval architect. The yacht was
argued to be a functional expression of art in the
manner it balanced speed on the water with aesthetic
4 Australian Law Reform Commission (1995) Designs, Report 74 at 17.5.
5 Burge v Swarbrick [2007] HCA 17 at 10; Revised Explanatory
Memorandum to the Designs (Consequential Amendments) Act 2003
(Cth).
6 Ian McDonald, The Overlap Between Design and Copyright Law, http://
www.lapres.net/deslaw.html.
7 Or ‘industrially applied’ in the language of the Copyright Act §77.
Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No. 1
elegance.9 The case presented a vehicle for the court to
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air its views on the meaning of ‘a work of artistic
craftsmanship,’ which was twice relevant: first as a cat-
egory of artistic work and secondly as a ticket out of
the Overlap Scheme.
Burge v Swarbrick dissected
This piece is primarily a case note on Burge v
Swarbrick. However, to understand the role played by
the phrase ‘a work of artistic craftsmanship’ it is worth
running through a full outline of the Overlap Scheme.
The current law is best understood if the evolution of
the Overlap Scheme, and the legislative terms that
structure it, are traced through their history up to the
most recent revisions taking effect in 2004. With these
foundations in place, the article then discusses the pro-
gress of Burge v Swarbrick through the Federal Court,
the Full Federal Court, and the High Court before con-
sidering some of the practical implications of the
decision.
Mr Swarbrick’s story, however, is the springboard
into these issues.
Mr Swarbrick’s story10
John Swarbrick was born into a family of shipbuilders.
He learnt the manual skills of a shipwright in the boat-
yard of Swarbrick Brothers Yachts, where he worked as
a teenager and a young man before he studied Naval
Architecture, Marine Engineering and Yacht Design. In
the mid-1980s Mr Swarbrick set about designing a
yacht that would later become known as the JS 9000.11
He prepared a series of freehand drawings, then built,
by hand, a timber, quarter-scale model of the hull and
deck structure. In 2001 Mr Swarbrick went on to hand-
craft a full scale model (known as ‘the Plug’ in ship-
building circles) of the finished yacht. Once the Plug
was completed the applicant made moulds of the hull
and deck sections, which were exact, inverted, copies of
those sections. The applicant then set about producing
the mouldings (parts of the boat itself) from the
moulds. The resulting mouldings were then fitted out
with the keel, rigging and other appendages to form
the finished piece. The first JS 9000 was named the
Bateau Rouge and was well-received.
8 Burge v Swarbrick [2007] HCA 17; Burge v Swarbrick [2005] FCAFC 257;
Swarbrick v Burge [2004] FCA 813.
9 Burge v Swarbrick [2007] HCA 17 at 5.
10 The summary of facts is drawn from Swarbrick v Burge [2004] FCA 813
at 7 –41; Burge v Swarbrick [2005] FCAFC 257 at 1– 39.
11 Photographs of the JS 9000 can be found at www.jsyachts.com.
Tim Golder et al. . What is (Art)istic Craftsmanship?
Infringement
In late 2002, Mr Swarbrick gave one of the employees
of Swarbrick Yachts International (SYI) hull and deck
mouldings of the JS 9000. The circumstances in
which the mouldings swapped hands remain unclear.
About 6 months later though, the three key SYI staff
who were involved in the construction of the JS 9000
left their employment. Two of the three were engaged
by one of the respondents, Boldgold Investments
Pty Ltd, who also managed to acquire the JS 9000
mouldings.
Mr Burge was the operations manager of Boldgold’s
factory in Pinjarra, where he oversaw work to replicate
Mr Swarbrick’s yacht. He used the mouldings as a Plug
and proceeded to step through the manufacturing
process described above to create a faithful reproduc-
tion. Boldgold was some way towards having made a
complete mould of the hull, and were involved in
various stages of manufacture of a deck moulding,
when interlocutory injunctions were ordered.
The dispute
There was no real argument over whether this activity
would have amounted to a reproduction of a substan-
tial part of the JS 9000. The issue was that Mr Swar-
brick had not registered a design and so had no
remedy available under the Designs Act. In the absence
of a design registration, Mr Swarbrick had to rely on
copyright.
Mr Swarbrick asserted that copyright subsisted in a
number of different works created in the course of
making the JS 9000. At first instance, he insisted (in
order of production) that the freehand drawings, the
Plug, the mouldings, and the Bateau Rouge itself were
all artistic works protected by copyright—and these
rights had been infringed by the respondents.
Through three successive Australian courts, Mr
Swarbrick’s claim was distilled into the simple pro-
position that his boat was a work of artistic craftsman-
ship and should receive treatment appropriate to its
status in law. If it was such a work, copyright could be
established and he would also escape the provisions
of the Overlap Scheme that threatened to limit its
assertion.
If not, the reproduction of Mr Swarbrick’s boat was
legitimate.
12 This statement must be qualified following the Designs (Consequential
Amendments) Act 2003 (Cth), which modified the definition of
‘corresponding design’ so that objects which were not registrable under
the Designs Act, may nonetheless amount to a ‘corresponding design’ for
the purposes of the Overlap Scheme. This issue is discussed further in the
ARTICLE 39
A roadmap to the copyright/design
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overlap
The Overlap Scheme is complicated in its detail, but
not in its overall structure.
Step 1: establish an overlap
The Overlap Scheme is only relevant where both copy-
right subsists in an ‘artistic work’ (as defined) and a
‘corresponding design’ is also in existence—that is,
where there is subject matter that could come within
the scope of both the Copyright Act and the Designs
Act.12
To draw this out of the abstract, consider the typical
example where drawings are used to plan the visual
appearance of a mass-produced consumer product. The
drawings themselves will be artistic works. The product
will incorporate a design that corresponds to these
drawings. The author could turn to either copyright or
designs law to protect their work. In short, we have an
overlap and the Overlap Scheme may be relevant.
Step 2: defences
The Overlap Scheme supplies copyright infringers with
two possible defences. The first denies protection to
copyright owners where a ‘corresponding design’ has
been registered under the Designs Act.13 The second
defence is available where a ‘corresponding design’ has
been ‘industrially applied’,14 but as noted, the defence will
not apply if the work is one of artistic craftsmanship.15
Step 3: incidental infringement
As part of the most recent amendments to the Overlap
Scheme, the Designs (Consequential Amendments) Act
2003 (Cth), which came into effect on 17 June 2004,
sections of this article that deal with the definition of ‘corresponding
design’.
13 Copyright Act 1968 (Cth) §77.
14 Explanatory Memorandum to the Copyright Amendment Bill 1988 at 22.
15 Copyright Act 1968 (Cth) §77(1).
40 ARTICLE
inserted a new section 77A into the Copyright Act.
This section performs a housekeeping role. The section
provides that reproduction which is incidental to the
process of making a legitimate reproduction will not be
actionable.
The following sections explain these three steps in
further detail.
Establishing an overlap
The two legislative definitions that establish an overlap
are ‘artistic work’ in section 10(1) of the Copyright
Act, and ‘corresponding design’, which is defined in
section 74. The devil of the Overlap Scheme is in these
two definitions.
Artistic work
According to the Copyright Act, ‘artistic work’ (exclud-
ing irrelevant exceptions) means
(a) a painting, sculpture, drawing, engraving, or
photograph, whether the work is of artistic quality
or not;
(b) a building or model of a building, whether the
building or model is of artistic quality or
(c) a work of artistic craftsmanship whether or not
mentioned in paragraph (a) or (b).16
The history of ‘artistic craftsmanship’
The phrase ‘artistic craftsmanship’ makes two appear-
ances in the Overlap Scheme and the first is in the defi-
nition of ‘artistic work’. The wording is a direct
product of the historical and social context behind its
drafting. Prior to 1911, the only works which received
copyright protection were works of fine art [paragraph
(a) in the definition above].17 However, the Arts and
Crafts Movement, an aesthetic movement which
became prominent in England early in the 20th
century and which emphasized the importance of pro-
moting artistic work in all branches of handicraft,
insisted that equating ‘art’ with ‘fine art’ was too
restrictive.18 The movement made its point well. In
Hensher v Restawhile Upholstery 19 Lord Simon stated:
16 Copyright Act 1968 (Cth) §10(1).
17 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Simon at 80.
18 Burge v Swarbrick [2007] FCAFC 257 at 55.
19 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64.
20 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Simon at 90.
21 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Simon at 89. Also see Coogi Australia Pty Ltd v Hysport
International Pty Ltd (1998) 86 FCR 154 at 167.
Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No. 1
There can be no doubt that when parliament gave
copyright protection to ‘works of artistic craftsmanship’ it
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was extending to works of applied art the protection
formerly restricted to works of the fine arts, and was
doing so under the influence of the Arts and Crafts
movement.20
Authorities on artistic craftsmanship
The phrase ‘artistic craftsmanship’ has no statutory
definition in copyright legislation. Accordingly, the
House of Lords took the opportunity to explore its
meaning in Hensher—which remains a leading authority.
The decision went deep into legal history to find
support for the argument that industrial designs, and
not just handicrafts, may be works of artistic craftsman-
ship.21 More importantly, although the first two cat-
egories of artistic work specifically exclude any
qualitative assessment, Hensher establishes that the third
category is restricted by an assessment of whether the
craftsmanship is artistic.22
It is at this point that the question ‘what is art?’
enters copyright law. Any inquiry had previously been
denied, as a painting, sculpture, drawing or photo-
graph will qualify as an artistic work no matter what
aesthetic criticism might reasonably be levelled at it.
However, once the categories of what could be art
were expanded, the limitation of genre was lost. If
any object could theoretically be art, and qualitative
assessment was inappropriate, what marked the per-
imeters of copyright law? The concern to find some
other check on these new types of work meant an
appraisal of whether the work was of ‘artistic
quality’—that is, whether it was in fact art—could
not be avoided.
In Hensher, the House of Lords repeated the under-
lying common wisdom that courts are not well posi-
tioned to make ‘aesthetic appreciations’.23 However,
while the Law Lords sought to escape any evaluation of
artistic merit,24 those Law Lords who attempted
to devise a method of distinguishing craftsmanship
from artistic craftsmanship without reference to aes-
thetic criteria struggled to do so. There was a vague
consensus that aesthetics should be a matter for expert
22 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Reid at 78.
23 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Kilbrandon at 96; Sheldon v Metrokane [2004] FCA 19 at 68.
24 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64;
Lord Reid protested that ‘Judges have to be experts in the use of the
English language, but they are not experts in art.’ (at 78) and further
expressed a concern to ‘avoid philosophic or metaphysical argument
about the nature of beauty. . .’ (also at 78). Lord Simon felt ‘parliament
could not have intended that the construction of its statutory phrase
should turn on some recondite theory of aesthetics’. (at 95).
Tim Golder et al. . What is (Art)istic Craftsmanship?
evidence25—a sidestep that supports the position that
defining art is impossible. In acknowledgment, Lord
Killbrandon wrote:
In the result I have failed, perhaps inevitably, to find a sub-
stitute formula which will replace the word ‘artistic,’ and
be one which will serve to qualify as artistic or non-artistic
any given piece of craftsmanship.26
Subsequent attempts have not necessarily been any
more successful.
Coogi
Prior to Swarbrick, the most comprehensive Australian
decision on the meaning of ‘artistic craftsmanship’, was
Drummond J’s judgment in Coogi v Hysport.27 The
facts of Coogi involved a machine knitted fabric which
embodied a complicated stitch structure as part of its
look. The applicant (Coogi Australia) sought to estab-
lish that each garment was a unique piece of wearable
art, and was protected as a work of artistic craftsman-
ship.28 In reaching his decision, Drummond J com-
mented ‘the law as to what is a work of artistic
craftsmanship is not in a very satisfactory state’, then
proceeded to address the problem by listing a series of
principles that could be discerned from existing auth-
orities.29 Drummond J stressed that a work could only
be one of artistic craftsmanship if it had an ‘element of
real artistic, that is, aesthetic quality’ and that the aes-
thetic appeal must be ‘higher than mere visual appeal’.
The intention of the author, and expert evidence on
whether the piece possessed the requisite level of aes-
thetic quality, would also be relevant.
Drummond J took an important step away from
Hensher, suggesting that a court could not avoid the task
of making an aesthetic judgment in determining whether
a work was one of artistic craftsmanship.30 Drummond J
ultimately found Coogi knitwear to be artistic work—
which highlights the subjective nature of aesthetics.
Metrokane
The statement of principles outlined in Coogi was fol-
lowed closely in Sheldon v Metrokane,31 which dealt
25 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Reid at 78; per Lord Morris at 82; per Lord Simon at 95; per Lord
Kilbrandon at 98.
26 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 per
Lord Kilbrandon at 98.
27 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) FCR 154.
28 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) FCR 154 at
157.
29 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) FCR 154 at
164 –166.
30 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) FCR 154 at
165.
ARTICLE 41
with a bunny-shaped bottle opener which won a series
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of design awards. Conti J concurred that the area
was one of ‘formidable complexity’ and ‘conceptual
enigmas’.32 In contrast to Coogi, he held that the level
of supervision the designer had imposed over the man-
ufacturing process was insufficient to establish that he
was an artist craftsman.33 Further, the expert evidence
given at trial did not establish that the work could be
reasonably described as one of artistic craftsmanship.
On the question of aesthetics, Conti J asserted that
the emphasis of Australian authorities was on the
intention of the author in purportedly creating a work
of artistic craftsmanship, rather than on the reaction of
the viewer to the completed work. Like Hensher, Conti
J confirmed the inappropriateness of the courts making
aesthetic judgments.34
It was not until Burge v Swarbrick that the next
instalment in the ‘artistic craftsmanship’ narrative and
the quest for clarity arrived.
Corresponding design
The definition of ‘corresponding design’ is equally
central and about as difficult as the definition of ‘artis-
tic craftsmanship’. Again, it is important to review the
history behind the term.35
The earliest attempt to deal with the overlap
between copyright and design came in section 22 of the
British Copyright Act 1911,36 which remained in force
in Australia as imperial law until the current Copyright
Act took effect in 1968.37 Section 22 denied copyright
protection where it was possible to register a design.
There was an exception to this rule, however, whereby
copyright could be maintained if the artist had no
intention to ‘multiply (the work) by any industrial
process.’38 Ultimately, it was considered inappropriate
to determine which objects deserved copyright protec-
tion by focussing on the author’s intention. A Report of
the Copyright Committee from 1952, argued the pro-
vision ‘encourages subterfuge on the part of the artist
or others as to his original intention.’39 It was this
31 [2004] FCA 19.
32 Sheldon v Metrokane [2004] FCA 19 at 118.
33 Sheldon v Metrokane [2004] FCA 19 at 94.
34 Sheldon v Metrokane [2004] FCA 19 at 119.
35 The High Court helpfully provided a review of some depth. See Burge v
Swarbrick [2007] HCA 17 at 21 –39.
36 Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77 at 91.
37 Burge v Swarbrick [2007] HCA 17 at 21.
38 As cited in Burge v Swarbrick [2007] HCA 17 at 27.
39 Burge v Swarbrick [2007] HCA 17 at 29.
42 ARTICLE
acknowledgment that saw the introduction of the
concept of a ‘corresponding design’.
Copyright Act 1968
When the Copyright Act 1968 (Cth) first came into
force, section 74(1) offered:
‘corresponding design’ in relation to an artistic work,
means a design that, when applied to an article, results in
a reproduction of that work.
Case law on this section held that ‘design’ in the
context of this definition could be equated with the
meaning given to it in the Designs Act 1906 (Cth),40
that is:
features of shape, configuration, pattern or ornamentation
applicable to an article, being features that, in the finished
article, can be judged by the eye, but does not include a
method or principle of construction.41
This wording appeared to be relatively straightforward,
but proved to ignore a number of complexities. Two-
dimensional designs that were inherently artistic were
denied copyright protection.42 For instance, a drawing
reproduced on a T-shirt, or a purely decorative pattern
on a three-dimensional object aligned with artistic
endeavour, would have fallen within the meaning of
‘corresponding design’ and would have lost their copy-
right protection through the operation of the Overlap
Scheme.
The Copyright Amendment Act 1989
The Copyright Amendment Act 1989 (Cth) took effect
from 1 October 1990, and suggested a distinction
between visual features that were two-dimensional (art)
and those that were three-dimensional (designs). The
definition of ‘corresponding design’ was amended to
exclude:
a design consisting solely of features of two-dimensional
pattern or ornament applicable to a surface of an article.
The effect of this new definition was that dual protec-
tion became available for two-dimensional works. A
work could be registered and protected as a design and
having been exempted from the Overlap Scheme, sim-
ultaneously be protected by copyright.
40 See Hosokawa Micron Inc v Fortune (1990) 26 FCR 393.
41 Designs Act 1906 (Cth) §4(1).
42 Explanatory Memorandum to the Copyright Amendment Bill 1988 (Cth)
at 19.
43 Revised Explanatory Memorandum to the Designs (Consequential
Amendments) Act 2003 (Cth) at 13. Also see Golvan C. ‘The Copyright/
Design Overlap—An Appropriate Balance Under the New Designs
Legislation’ (2004) 59 Intellectual Property Forum 36; Pascarl I and
Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No. 1
However, this new definition had its own issues: in
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particular, how to ascertain when a design had been
applied to the surface of an article, and how to draw a
line between two- and three-dimensional designs.43
Instances where a design was not strictly applied to the
surface, but was better described as part of the article,
highlighted these issues.44 Engravings, woven patterns,
embroidery, or embossed text had an unclear status.
Designs (Consequential Amendments)
Act 2003
Burge v Swarbrick was decided on the law as it stood
prior to the amendments effected by the Designs
(Consequential Amendments) Act 2003 (Cth).
However, as the case did not concern any two-dimen-
sional commercial reproduction of an artistic work, the
change in the definition of ‘corresponding design’
effected by those amendments was not of any particular
consequence to the case. In any event, the current
meaning of ‘corresponding design’ is:
visual features of shape or configuration which, when
embodied in a product, result in a reproduction of that
work, whether or not the visual features constitute a
design that is capable of being registered under the
Designs Act 2003.45
Section 74 of the Copyright Act offers further clarifica-
tion:
embodied in, in relation to a product, includes woven
into, impressed on or worked into the product.
The new definition of corresponding design was expli-
citly directed at the two-dimensional design problem
outlined above.46 Two-dimensional designs continue
to be exempted where they are exploited as surface
designs, but now by omission rather than any explicit
carve out.
However, the new definition does not clarify the
matter entirely. The question of embodiment is only
considered after establishing that the relevant feature is
one of shape or configuration, and how features of
pattern and ornamentation are distinguished from
those of shape or configuration still raises some areas
for debate.
Bradshaw K. ‘The Copyright/Design Overlap’ (1999) 73(9) Law Institute
Journal 50.
44 Revised Explanatory Memorandum to the Designs (Consequential
Amendments) Act 2003 (Cth) at 13.
45 Copyright Act 1968 (Cth) §74.
46 Revised Explanatory Memorandum to the Designs (Consequential
Amendments) Act 2003 (Cth) at 8 –14.
Tim Golder et al. . What is (Art)istic Craftsmanship?
The two defences
Registration
The first defence provided by the Overlap Scheme is
contained in section 75 of the Copyright Act. Under
that section, if a corresponding design has been regis-
tered under the Designs Act, the reproduction of the
work by embodying a corresponding design in a
product will not amount to copyright infringement. In
other words, copyright owners who protect their work
under designs law lose some of the copyright protec-
tion they might otherwise have had. This provision is
the least controversial element of the Overlap
Scheme and a clear enactment of the policy against
dual protection. It is also the only way a work of artis-
tic craftsmanship will be denied copyright protection.
Industrial application
The second defence is found in section 77 of the
Copyright Act. As a starting point, this requires
copyright in an artistic work, and an unregistered,
three-dimensional object that reproduces the visual
features of this artistic work in its shape or configu-
ration—for instance, in a typical case, drawn plans on
the one hand, and an object made to those plans on
the other.
From this point, at least three boxes must be
checked before coming within the scope of the second
defence. First, the corresponding design must have
been industrially applied. Secondly, it must have been
commercially exploited. Finally, the work reproduced
may not be one of artistic craftsmanship. If these cri-
teria are met, copyright in the artistic work is partially
lost, in that embodying the corresponding design in a
product will not amount to copyright infringement.
Industrial application
Where an artistic work is industrially applied, it begins
to take on the nature of a mass-produced commercial
product. In doing so the work takes a step towards
designs law. The Copyright Regulations 1969 establishes
that a design is taken to be applied industrially where it
is applied to more than 50 articles.47 However, this is
only a deeming provision: where less than 50 articles
have been manufactured, industrial application is a
question of fact.48 In Swarbrick, while fewer than 50 of
47 Copyright Regulations 1969 r17.
48 Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77 at 89.
49 Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 11 IPR 77 at 86.
50 EM to Copyright Amendment Bill 1988 at 24.
51 Burge v Swarbrick [2007] HCA 17 at 11.
52 Burge v Swarbrick [2007] HCA 17 at 20.
ARTICLE 43
the JS 9000 had been manufactured, it was conceded
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that the design had been applied industrially.
Commercial exploitation
The corresponding design must also have been ‘sold,
let for hire, or offered or exposed for sale or hire’. This
can be relevant where, for example, the pirated items
are moulds, or mouldings or other such items inciden-
tal to manufacture.49 Since the introduction of section
77A into the Overlap Scheme the point is of less rel-
evance (discussed below).
Artistic craftsmanship
Having conceded industrial application, Mr Swarbrick’s
answer to the section 77 defence was to repeat that the
JS 9000 was a work of artistic craftsmanship. When the
Overlap Scheme was enacted, the view was taken that
works of artistic craftsmanship should remain pro-
tected under copyright law whether industrially applied
or not.50 As parliament specifically excluded works of
artistic craftsmanship from the scope of section 77,51
the concept of artistic craftsmanship was twice relevant
to Mr Swarbrick’s case: first to establish copyright sub-
sisted in the various works associated with the JS 9000,
and secondly to deny the respondents any opportunity
to hide behind the section 77 defence.52
Incidental infringement
Where they apply, the two defences outlined in the
Overlap Scheme provide that a three-dimensional
reproduction will not infringe underlying copyright.
The defences allow the embodiment of a corresponding
design in a product. However, while the product itself
may be deemed not to infringe copyright, the two
defences say nothing about associated plans, drawings,
moulds, or advertising materials. As these items may
amount to infringing reproductions of their original
versions, as a practical matter respondents may find
themselves unable to manufacture a legitimate three-
dimensional copy. Ordinarily, it will not be easy to
replicate a design without taking an intermediate step of
drawing plans. This has been referred to in the case law
as ‘plan-to-plan copying’.53
The purpose of section 77A was to address this
problem.54 In essence, the section provides that
incidental reproduction of an artistic work in the
53 See Amalgamated Mining Services Pty Ltd v Warman International Ltd
(1992) 24 IPR 461; Shaklady v Atkins (1994) 30 IPR 387 at 393; Norm
Engineering v Digga Australia [2007] FCA 761 at 238.
54 Revised Explanatory Memorandum to the Designs (Consequential
Amendments) Act 2003 (Cth) at Item 14.
44 ARTICLE
process of making a legitimate product will not
amount to infringement. This is another area of the
copyright design overlap that has recently been
explored by the Australian courts. Norm Engineering v
Digga Australia55 concerned the reproduction of a
scoop that attached to the front of a tractor known by
the trade mark ‘Bobcat’ (or to similar generic construc-
tion equipment). The respondents were largely able to
establish a defence to infringement under section 77(2)
of the Overlap Scheme. However, section 77A was held
to have created new law, rather than clarifying pre-
existing law.56 As such, the incidental infringement
provisions are only available to defend plan-to-plan
copying that occurred after 17 June 2004 [when the
Designs (Consequential Amendments) Act 2003 took
effect]. The respondents were found to have infringed
copyright by creating two-dimensional plans of the
scoop which substantially reproduced the Applicant’s
original plans.
Plan-to-plan copying in Swarbrick
Swarbrick involved a rare example of a design being
effected in three-dimensions without significant two-
dimensional planning. As Boldgold had possession of
the hull and deck mouldings, they did not require any
paper plans. Although Mr Swarbrick initially claimed
copyright in four drawings, this claim was abandoned
by the time the matter reached the High Court because
they did not disclose the visual features of the JS
9000.57 For example, two of the drawings related to the
sail and rope configurations.58 It may have been open
to run a variation of the plan-to-plan argument, based
on the incidental infringement involved in reproducing
the JS 9000 moulds. However, it would have been
necessary to establish that the original moulds were
artistic works. While this could have been maintained
on the grounds that they were sculptures,59 the point
appears not to have been pressed in the litigation.
In review
Despite attempts to develop and refine the Overlap
Scheme, the current version remains complex. One
source of complexity is that the term ‘artistic crafts-
manship’ is both central and vague. A decade ago, the
Australian Law Reform Commission recommended
55 [2007] FCA 761.
56 Norm Engineering v Digga Australia [2007] FCA 761 at 241.
57 Burge v Swarbrick [2007] HCA 17 at 19.
58 Swarbrick v Burge [2004] FCA 813 at 30 – 32.
59 Swarbrick v Burge [2004] FCA 813 at 128.
60 Australian Law Reform Commission (1995) Designs, Report 74 at 17.22,
and Recommendation 172.
Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No. 1
that ‘artistic craftsmanship’ be defined in the Copyright
Act.60 In the continued absence of assistance from Par-
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liament, it has fallen to the courts to clarify the
meaning of the phrase.
The Courts have struggled with the close to imposs-
ible task of defining art. However, the facts of Swarbrick
allowed a clear focus on the meaning of ‘artistic crafts-
manship’.
Round 1: Swarbrick in the Federal Court
Mr Swarbrick’s copyright infringement claim was first
heard before Justice Carr in the Federal Court. Justice
Carr held that the Plug, mouldings, and the JS 9000
yacht itself were works of artistic craftsmanship, and
that consequently the defence under section 77 of the
Act was not available to the respondents.
In offering some general principles on construction,
Carr J summarized the effect of prior authority as
follows:
the expression ‘work of artistic craftsmanship’ is a compo-
site 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 quality to be of artistic quality.61
Carr J then embarked on a process of analysing, first,
whether the Plug was a work of craftsmanship, and sec-
ondly whether it met the requisite aesthetic standard.
This approach was later criticized as an error by the
High Court.62 He concluded that the evidence estab-
lished that the Plug was a work of craftsmanship as its
construction involved the application of creative design
effort and a very high level of skill.63 He also considered
it to be artistic in that it satisfied a test of having ‘a level
of aesthetic appeal . . . more than a mere visual appeal’.64
Indeed, Carr J felt that the Plug could be considered a
sculpture, and drew an analogy between Mr Swarbrick’s
method and that of Auguste Rodin.65
In arriving at these conclusions, Carr J was heavily
influenced by Mr Swarbrick’s evidence that he had
intended to design and built a yacht of great aesthetic
appeal and that the JS 9000 realized this intention.
The judge specifically noted that one of the experts
called by the respondents was not asked whether he
considered the JS 9000 exhibited aesthetic quality—but
61 Swarbrick v Burge [2004] FCA 813 at 83.
62 Burge v Swarbrick [2007] HCA 17 at 66.
63 Swarbrick v Burge [2004] FCA 813 at 95, 96.
64 Swarbrick v Burge [2004] FCA 813 at 99.
65 Swarbrick v Burge [2004] FCA 813 at 132.
Tim Golder et al. . What is (Art)istic Craftsmanship?
that such evidence would have been admissible.66 The
respondents’ contention was that Mr Swarbrick had set
out to design a functional racing yacht to meet the
practical demands of a specific market, and that visual
and aesthetic appeal was at best only one of a number
of considerations.67 Although acknowledging Mr Swar-
brick was ‘scarcely a disinterested person’, Carr J pre-
ferred his evidence to that of the experts the
respondents had called.68
Round 2: Swarbrick in the Full Federal Court
On appeal, the respondents’ fundamental contention
remained that these were not works of artistic crafts-
manship. There was some narrowing of the scope of the
litigation, however, in that it was pointed out the inquiry
over whether the works were sculptures was largely irrele-
vant. Even if they were sculptures, the respondents would
have an available defence to infringement under section
77 provided they were not also works of artistic crafts-
manship. If they were works of artistic craftsmanship,
copyright was established independently.69
The Full Federal Court felt the trial judge may have
erred in finding the Plug and moulds fit the ‘works of
artistic craftsmanship’ description since they were
merely part of the process of constructing the final
object. The Plug, having performed its function, had
been destroyed. It was obviously not created for its
own sake, or with a view to being a work in itself.70
Not much turned on this departure from the first
instance judgment, however, as the Court was content
to find that the hull and deck of the first JS 9000 were
works of artistic craftsmanship.
The Court based a large part of its reasoning on
Hensher. In particular, it agreed that ‘craftsmanship
implies a manifestation of pride in sound workmanship
and a rejection of the shoddy, the meretricious and the
facile’.71 Further:
Whether a work is a work of artistic craftsmanship is a
matter for evidence . . . the intention of the creator as well
as the particular skill of the creator, will also be relevant in
determining whether the result is a work of artistic
craftsmanship.72
On this basis, the Full Federal Court left the primary
judge’s findings largely undisturbed. They answered the
66 Swarbrick v Burge [2004] FCA 813 at 86.
67 Swarbrick v Burge [2004] FCA 813 at 75.
68 Swarbrick v Burge [2004] FCA 813 at 93.
69 Burge v Swarbrick [2005] FCAFC 257 at 35.
70 Burge v Swarbrick [2005] FCAFC 257 at 58.
71 Burge v Swarbrick [2005] FCAFC 257 at 55.
ARTICLE 45
question of artistic craftsmanship, as a finding of fact
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based on Mr Swarbrick’s evidence, and after having had
regard to expert evidence on his skill as a shipwright.
Round 3: Swarbrick in the High Court
By the time Swarbrick reached the High Court, the
scope of the litigation was focused on whether the Plug
and the final hull and deck mouldings that made up
the Bateau Rouge, were works of artistic craftsmanship.
The High Court judgment confirmed beyond
question that the phrase ‘artistic craftsmanship’ should
be consistently read across both occurrences in the
Copyright Act.73 The court suggested that it was used
in section 10(1), to extend the scope of copyright pro-
tection, whereas it was used in the Overlap Scheme to
supply ‘the discrimen to mark the “overlap” between
copyright and registered designs law.’74 In both uses,
the Court stressed the importance of the work invol-
ving ‘a real or substantial artistic element’ in order to
justify its special status.75 That is, the phrase imports a
qualitative limitation.
One of the strengths of the High Court decision is
its endorsement of a break from the tradition of timid-
ity that characterized Hensher. The unanimous judg-
ment suggests courts should not be
unduly weighed down by the supposed terrors for judicial
assessment of matters involving aesthetics.
However, the Court also sought to restrict the role that
any aesthetic judgment might play. It agreed with a
statement in Coogi that encouraging real artistic effort
in industrial design was the justification for giving
works of artistic craftsmanship greater protection than
the relatively short registered design monopoly.76
The consequence of this analysis was that there is
less justification for protecting a work where artistic
efforts have been constrained by functional consider-
ations, or other practical imperatives. The critical
passage in the High Court’s judgment comes at para-
graphs 83 and 84:
It may be impossible, and certainly would be unwise, to
attempt any exhaustive and fully predictive identification
of what can and cannot amount to ‘a work of artistic
craftsmanship’. . . However, determining whether a work is
‘a work of artistic craftsmanship’ does not turn on asses-
sing the beauty or aesthetic appeal of work or on assessing
72 Burge v Swarbrick [2005] FCAFC 257 at 56.
73 Burge v Swarbrick [2007] HCA 17 at 50.
74 Burge v Swarbrick [2007] HCA 17 at 20.
75 Burge v Swarbrick [2007] HCA 17 at 43; Coogi at 168.
76 Burge v Swarbrick [2007] HCA 17 at 43.
46 ARTICLE
any harmony between its visual appeal and its utility. The
determination turns on assessing the extent to which the
particular work’s artistic expression, in its form, is uncon-
strained by functional considerations. . .
The more substantial the requirements in a design brief
to satisfy utilitarian considerations . . . the less the scope for
that encouragement of real or substantial artistic effort. It
is that encouragement which underpins the favourable
treatment by the (Copyright Amendment Act 1989 (Cth))
of certain artistic works which are applied as industrial
designs but without design registration. Questions of fact
and degree inevitably arise.
At one extreme, the shape and configuration of a race-
car is almost entirely dictated by function. Irrespective
of whether the car is aesthetically stunning, there is no
scope for encouraging artistic effort and thus no justifi-
cation for extending copyright protection to the work.
At the other extreme, the High Court suggested wall-
paper, tapestries, stained glass windows, and jewellery
involved considerable freedom of design choice.77
The High Court further stressed a point made by
Lord Simon in Hensher, that the type of craftsmanship
involved is not as significant as the particular work
created, observing:
A horseshoe is one task; the Tijou gates, screens and grilles
wrought for St Paul’s Cathedral, Hampton Court and
Chatsworth by the French Huguenot ironmaster were in a
very different category.78
On this analysis, the JS 9000 was found not to be a
work of artistic craftsmanship. In part, the decision can
be attributed to a different theoretical emphasis.
However, the High Court also placed a different
interpretation on the effect of the evidence given at
trial.
The court felt that Mr Swarbrick’s evidence on his
aspirations and intentions when designing the Plug
were admissible but should not have a controlling
influence over whether the work was one of artistic
craftsmanship.79 On the point of intention generally, it
was thought that few authors would be ‘heard readily
to admit the absence of any necessary aesthetic element
in their endeavours’.80 The court further considered
that the expert evidence given by Mr Hood, one of the
naval architects called by the respondents, was not
given sufficient attention. Mr Hood said that boats
such as the JS 9000 were built for speed, and that
designs for this type of boat were not substantially or
77 Burge v Swarbrick [2007] HCA 17 at 75.
78 Burge v Swarbrick [2007] HCA 17 at 81.
79 Burge v Swarbrick [2007] HCA 17 at 63.
Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No. 1
mainly governed by appearance or pleasing aesthetics.81
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The Court noted that Mr Swarbrick’s design brief, pro-
motional materials, and business plan gave prominence
to functional aspects over visual and aesthetic appeal.
The design brief, set out in the applicant’s affidavit,
stated that the market for the JS 9000 comprised
persons who wanted a yacht of good performance,
capable of racing, but for typical use in daily sailing,
relatively simple to sail and visually attractive. The
High Court concluded that the earlier statements in
the promotional material and business plan, with
the evidence of Mr Hood, should have led the primary
judge to conclude that the items were not works of
artistic craftsmanship. At paragraph 73 the court held:
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 the achievement of the purely func-
tional aspects required for a successfully marketed ‘sports
boat’. . .
In the result, Mr Swarbrick was not able to defend his
design.
Practical implications
The artistic craftsmanship exemption is significant for
designers. If they can bring their work within its scope,
they will be able to mass produce objects correspond-
ing to the design while still being entitled to enforce
their copyright against infringers. Once a copyright
owner has registered an artistic work as a design under
the Designs Act, the artistic craftsmanship exemption
will not apply. The exemption only applies to mass-
produced but unregistered designs. Before commencing
the manufacture and sale of goods, and losing the
novelty (and therefore registrability) of any underlying
designs, designers should consciously elect whether to
register a design in relation to an artistic work.
There are advantages to both design and copyright
protection. Under the Designs Act, an infringer will be
liable for design infringement even if it has indepen-
dently arrived at the same design, and there is the
certainty of registration. On the other hand, copyright
protection does not require the formalities of regis-
tration, and offers a much longer period of protection.
The question then, at its most distilled, is how
confident can the designer be that their work is one of
80 Burge v Swarbrick [2007] HCA 17 at 64.
81 Burge v Swarbrick [2007] HCA 17 at 72.
Tim Golder et al. . What is (Art)istic Craftsmanship?
artistic craftsmanship. More accurately, can the
designer convince the court that they were free to
express their skill and sense of aesthetics within the
parameters of practical constraints?
Ephemera and ambiguity
At its highest level of abstraction, the Swarbrick decision
was about the parameters of what should properly be
called, and protected as, art. Accordingly, it was always
going to be a difficult decision. While it is an easy criti-
cism to say that this is an area of the law that is intoler-
ably unclear, this may be inevitable given the ephemeral
language making up its foundations. The problem of
defining art is further compounded in the legal context
due to a necessary aversion to subjective aesthetic
judgments—a handicap which is not imposed on
philosophers, critics, or artists. Appropriately, then, the
ARTICLE 47
course taken by the High Court has been to attempt to
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limit the role played by aesthetic taste by structuring
any assessment within an objectively discernable struc-
ture—emphasizing the scope for artistic endeavour has
allowed the court to focus on matters such as design
briefs and marketing imperatives.
The question to be asked going forward is whether
the definitions of ‘an artistic work’ and ‘artistic crafts-
manship’ are necessarily the only ones that will usefully
distinguish between materials that should be protected
by the Copyright Act as opposed to the Designs Act. If
so, legal practitioners, artists and designers will have to
acclimatize to a consistent ambiguity in the overlap
between the two bodies of law.
doi:10.1093/jiplp/jpm210
Advance Access Publication 18 December 2007