High Court Clarifies Overlap

This article first appeared in The Watermark Journal Vol 24 No 2 (June 2007)

On 26 April 2007, the High Court of Australia delivered its long awaited judgement in Burge v Swarbrick ([2005] FCAFC 257). The judgement has clarified the “overlap” between copyright protection and design protection, and laid down important guidelines for the coverage of each form of intellectual property protection.

The Copyright Act 1968 (Cth) has provisions defining the copyright protection available to articles which could potentially be registered as designs under the provisions of The Designs Act 2003 (Cth). In general, the Act provides that copyright is lost when such a design is “industrially applied”, that is, when it enters into mass production. The exception to this is for a work of “artistic craftsmanship”. It was this term which was under scrutiny in the High Court.

Swarbrick was a naval architect, and the designer of a racing yacht known as the JS 9000. The JS 9000 was a well-designed yacht, with excellent waterhandling abilities, easy operation and a great deal of speed. It was also an elegant craft and, it might be said, a thing of beauty. Burge copied the JS 9000, using one of the original hull moulds. Swarbrick sued Burge for copyright infringement, alleging that despite the yacht having gone into production it retained copyright protection as “a work of artistic craftsmanship”.

In a unanimous decision, the High Court has rejected this assertion. Whilst indicating that a definition of the term was not available, and perhaps not possible, the Court found that for an object to be “a work of artistic craftsmanship” there must be “real and substantial artistic effort” which is not constrained by “utilitarian considerations”. The contrast was made between a stained glass window which, although performing its function as a window, gave an artist wide freedom for expression, and a boat in which artistic expression was subordinate to the functional requirements of speed and smooth handling.

The decision, it may be argued, gives effect to the intention of the legislative overlap - drawing a distinction between works of art and industrial designs. To borrow a phrase from another area of law, it draws a line between fine arts and useful arts.


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