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The copyright and design dilemma

Feature Articles

Cite as: (2009) 83(03) LIJ, p.48

A High Court decision provides guidance on when an unregistered design, applied industrially, will be protected as an artistic work under the Copyright Act.

By Richard McCormack

In Burge & Ors v Swarbrick (Swarbrick),1 the High Court of Australia recognised the importance of the interdependence and working inter-relationship of legal principle as applied to the facts under the shadow of policy considerations. This recognition applied to the High Court’s reversal of previous findings in which two courts found that copyright protection applied in favour of the designer over the JS 9000 racing yacht.2

The High Court’s decision:

  • deals with some of the more difficult issues in relation to the troublesome line that needs to be drawn in the overlap between copyright and design; and
  • reflects the necessary and jurisprudentially important role of the High Court in interpreting the intention of the legislature and applying this by balancing the interests of the public and the copyright owner in relation to an outcome that involves lawful reverse engineering of another’s product.3

The overlap aspect exists in relation to copyright protection under s10(1) of the Copyright Act 1968 (Cth) in an artistic work which also meets the requirements for being a design within the meaning of the Designs Act 1906 (Cth) or its successor, the Designs Act 2003 (Cth).

The legislative regime in ss74-77 of the Copyright Act provides for an exception to the loss of copyright protection where:

  • the artistic work, the subject of copyright, has been reproduced by way of industrial application;4 but
  • the corresponding design is not registered under the Designs Act,

in which case the copyright in the artistic work remains enforceable because it is a work of artistic craftsmanship: s77(1)(a).

The policy imperative reflected in ss74-77 has been said to “seek to provide a solution to the overlap between the bundle of exclusive rights comprising the copyright in an artistic work (and their durations) and the perceived need for limitations upon those rights in respect of a design inherent in the artistic work applied industrially in the manufacture of articles which exhibit, to the eye, those design features”.5

However, the exemption to copyright infringement provided by s77(2) only applies to a particular form of reproduction, namely the application of a corresponding design to an article (product) of manufacture.6

The further defence in s77A7 is narrow. This defence, in principle, provides that no infringement of copyright in an artistic work arises out of its reproduction, as derived from a three-dimensional product that embodies a corresponding design. It does not, apparently,8 extend to plan-to-plan copying.9 Section 77A immunity does, however, apply to a drawing which was made in the course of, or incidental to, the making of the three-dimensional article of manufacture.10

Compounding the issue of copyright protection in relation to mass produced articles, such as the JS 9000, is that the extension of protection to purely functional articles was considerably assisted when the new system under the Copyright Amendment Act 1989 (Cth) came into operation.11 But notwithstanding this legislative change, the possibility of obtaining dual protection for a work, which is both an artistic work for copyright purposes and a design within the meaning of the Designs Act, remains.12

The prospect of being able to reverse-engineer any given product which has been industrially applied, such as the JS 9000 racing yacht, without infringing copyright in the underlying artistic work, has far-reaching commercial implications.

Against this legislative and policy background, Swarbrick squarely raised the question as to what is the proper test for a work of artistic craftsmanship. The High Court’s answer is for an objective assessment into which considerations of aesthetics will also be relevant.

Background facts

In Swarbrick, the respondent, a naval architect, designed and licensed manufacture of the JS 9000. The initial JS 9000 yacht to be manufactured and sold was Bateau Rouge.

Mr Swarbrick, as owner of copyright in the plans and drawings of the JS 9000, claimed copyright protection was available in the physical aspects of the yacht in three-dimensional form, including the hull and deck mouldings, notwithstanding:

  • mass production and sales of the yacht (industrial application); and
  • the fact that although he was aware that he could have applied to register the design under the Designs Act and obtained a statutory monopoly, he did not so apply.

The primary respondent, Boldgold Investments Pty Ltd (Boldgold), had acquired a hull and deck moulding to manufacture a JS 9000 yacht for itself, for purposes of mass production and sale. An Anton Piller order restrained this respondent from reproducing or authorising the reproduction of:

  • the Plug (a hand-crafted, full-scale model of the hull and deck of the JS 9000 yacht); and
  • the hull and deck mouldings of the JS 9000.

Boldgold contended from the outset that as:

  • the Plug and the hull and deck mouldings were corresponding designs within the meaning of s74 of the Copyright Act; and
  • no designs were registered by Mr Swarbrick under the Designs Act,

copyright was not infringed, as a consequence of the immunity arising from the statutory loss of copyright protection, by operation of s77 of the Copyright Act. Mr Swarbrick contended that the copyright remained enforceable because the JS 9000, as well as the hull and deck mouldings, were each works of artistic craftsmanship and thus within the immunity provided by s77(1)(a).

Reverse engineering

Boldgold intended to reverse engineer the JS 9000. Access was not required to the underlying copyright works in the form of the plans and drawings for the JS 9000, as its features were able to be reproduced in three-dimensional form by a flop moulding from a genuine hull and deck moulding of the JS 9000.

At trial, infringement of copyright was found, on the basis that there was no loss of copyright protection, by reason of the JS 9000 being a work of artistic craftsmanship. Hence, the immunity under s77(2) did not apply. Boldgold appealed.

Although the Full Federal Court upheld the appeal (in part) on the limited basis that it accepted no copyright protection existed in the JS 9000, as a complete yacht, it dismissed the substantive appeal against the findings of Carr J in relation to infringement of copyright in the Plug and the JS 9000 hull and deck mouldings.13

A grant of special leave to appeal was obtained, with a principal ground of appeal being the proper test as to what constituted a work of artistic craftsmanship.

“Work of artistic craftsmanship”

The High Court endorsed (at [66]) the approach of Lord Simon of Glaisdale in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd (Hensher)14 and, in so doing, made it clear that the concepts of craftsmanship and aesthetic appeal are not to be dealt with separately. Rather, the approach requires the phrase “work of artistic craftsmanship” to be construed as a composite one, and as a whole (at [56]).

As every case will involve matters of fact and degree, the approach of the High Court emphasises that evidence is to be considered objectively, including having regard to matters of visual and aesthetic appeal; and also considerd carefully to ensure that these aspects are regarded as no more than one of a range of considerations in the design of an article.

The difficulty of attempting to distill from the five speeches in Hensher any relevant statement of legal principle concerning the construction issue (at [56)] makes the High Court’s conclusion as to the meaning of the phrase “a work of artistic craftsmanship” doctrinally significant.

Evidence – intention

Although Mr Swarbrick’s evidence as to his aspirations and intentions in creating the design of the JS 9000 as a work of particular beauty and timeless elegance, considered in design terms, was admissible, whether the Plug was a work of artistic craftsmanship ultimately involved an objective test. The Court said (at [63]):

“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 . . . 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”.

Whether the aesthetic appeal is ultimately concluded as being:

  • dominant, as a matter of application of copyright protection; or
  • subordinated to functional and commercial aspects of design,

is answered by objective assessment of the evidence (at [73]): “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”.

Although little weight was given at trial to a substantial body of promotional material and a business plan, and the evidence of a well-known yacht designer, Warwick Hood (who designed the America’s Cup challenger Gretel in the 1970s) before the High Court, this evidence was a significant factor in the appeal being allowed. 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”.

Test – “a work of artistic craftsmanship”

The High Court made clear that it was not appropriate for the Court to “attempt any exhaustive and fully predictive identification of what can and cannot amount to ‘a work of artistic craftsmanship’ within the meaning of the Copyright Act as it stood after the 1989 Act” and stated the proper test thus:

[83] “. . . determining whether a work is ‘a work of artistic craftsmanship’ does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between visual appeal and its utility. The determination turns on assessing the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional consideration. To decide the appeal it is sufficient to indicate the following.

[84] “The more substantial the requirements in a design brief to satisfy utilitarian considerations of the kind indicated with the design of the JS 9000, the less the scope for that encouragement of real or substantial artistic effort. It is that encouragement which underpins the favourable treatment of the 1989 Act of certain artistic works which are applied as industrial designs but without design registration. Questions of fact and degree inevitably arise.”

The High Court’s decision (at [85]), which elevated for purposes of Australian law the approach (if not test) enunciated by Lord Simon in Hensher (at [94]), directs inquiry as to whether the work in question, considered as a matter of aim and impact, was that of an artist-craftsman. Mr Swarbrick’s design endeavours in relation to the JS 9000 were not.

The hull and deck mouldings, which were no more than manifestations of the Plug (that is, reproductions within the meaning of s31 of the Copyright Act), did not assist Mr Swarbrick’s claim to copyright. This was because the finding by the High Court that the Plug was not a work of artistic craftsmanship has a necessary corollary that the hull and deck moulds made from it were not works of that character (at [86]). The correct approach was to regard the hull and deck mouldings as not being capable of being supported as independent works of artistic craftsmanship.

Works of sculpture

The difficulty with distinguishing between a work of artistic craftsmanship, within the sense of s77(1), and the reference in paragraph (a) of the definition of artistic work in s10(1) of the Copyright Act which, relevantly, includes “sculpture”, has effectively been resolved by amendments to the Copyright Act. These amendments occurred during the course of the litigation, with effect from 17 June 2004, by the 2003 Act.

The amendments accommodated changes made by the Designs Act 2003 and also with respect to various aspects of the design-copyright overlap issue.15 The High Court’s primary concern was not with matters of evidence; rather it was with the proper construction and approach to the definition of the phrase “artistic craftsmanship”. This was particularly pertinent because recommendation 172 of the Australian Law Reform Commission’s Report No 74 Designs, where it sought to provide for a definition of artistic craftsmanship, was not implemented.16


Thus, the critical issue to be answered is whether the artistic work under consideration is properly to be regarded as a work of artistic craftsmanship. If so, then by application of s77(1)(a) of the Copyright Act, copyright protection remains available regardless of whether industrial application of the subject artistic work has occurred.

In Swarbrick, the High Court dealt with the overlap of copyright and design where the exemption to the immunity against copyright infringement under s77(2) is relied on, in relation to a work of artistic craftsmanship.

The Court did so in a fundamental manner which has resulted in the imprimatur of the law being unequivocally given, on the facts

of that case, to:

  • not merely copying the product (JS 9000);17 but also
  • indirectly, the commercially potent benefit of reverse engineering of a product which corresponds in design to a design reflected in the underlying artistic work.18

The proviso is that the essentially objective test articulated by Lord Simon in Hensher and adopted by the High Court must be implemented.

RICHARD McCORMACK is special counsel – intellectual property with Blake Dawson, Melbourne.

The numbers in square brackets in the text refer to the paragraph numbers in the judgment.

1. [2007] HCA 17.

2. Swarbrick v Burge (2004) 61 IPR 543 (Carr J); Burge v Swarbrick (2005) 68 IPR 114 (FCAFC).

3. The new s77(2) of the Copyright Act provides an immunity from infringement of the copyright in an artistic work by reproduction embodying a corresponding design in a product: s6(1) Designs Act 2003, s77(1)(c) as to products made to the corresponding design. The notion of application of a corresponding design to an article has been jettisoned.

4. Reg 17, Copyright Regulations 1969 (Cth).

5. Norm Engineering v Digga Australia [2007] FCA 761 at [220] per Greenwood J.

6. Digga Australia v Norm Engineering [2008] FCAFC 33 at [114] per Lindgren J (with whom Bennett and Logan JJ agreed), and see note 3 above.

7. Introduced by s14 of the Designs (Copyright Amendment) Act 2003.

8. The writer’s view, based on construction of s77A.

9. Digga Australia v Norm Engineering, note 6 above, at [119].

10. Section 77A(1)(b); Digga Australia v Norm Engineering, note 6 above, at [117-119].

11. 1 October 1990; Lahore, Copyright and Designs, Butterworths, vol 1A, [64,005-64,010].

12. The principal legislation is embodied in ss74-74A of the Copyright Act, as amended, initially, by the Copyright Amendment (Re-Enactment) Act 1993, and subsequently by the Designs (Consequential Amendments) Act 2003 (Cth).

13. Burge & Ors v Swarbrick (2005) 68 IPR 114 (FCAFC).

14. (1976) AC 64 at 94.

15. Refer to the Explanatory Memorandum to the Bill which became the Designs Act 2003, as set out in Swarbrick at [95], to the Explanatory Memorandum for the Designs (Consequential Amendments) Bill 2002 (Cth), House of Representatives, p1, and to recommendations 170-181 by the Australian Law Reform Commission, Report No 74 Designs.

16. Swarbrick at [97] and recommendation 172: “Works of artistic craftsmanship produced in multiple quantities should continue to be protected by copyright. ‘Artistic craftsmanship’ should be defined in the Copyright Act. The Copyright Act should make clear that a work can be both a work of ‘artistic craftsmanship’ and an artistic work under s10(1)(a) and (b)”.

17. Subject, of course, to the resulting product (article) not being exploited in the course of trade in a manner which would be precluded under Part VI or V of the Trade Practices Act 1974 (Cth), or passing off – see Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1981-1982) 149 CLR 191 at 221-222, or by reason of some other lawful constraint, such as in contract.

18. Within s10(1) of the Copyright Act.


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