Copyright/Designs Overlap

The copyright/design overlap has caused headaches for many in Australia.

The High Court of Australia has just ruled on the issue. Commentators see it as a major decision which will cast welcome light on the debate.

The yacht at the centre of the dispute is the JS 9000

It is described as a simple, narrow, 30 foot sport yacht. See

The following case summary (see below) from the High Court does little to identify the nature of the dilemma. Commentators have said that the decision provides useful guidance and draws a distinction between a ‘a work of artistic craftsmanship’ which needs a ‘real and substantial artistic effort’ which is not constrained by ‘utilitarian considerations’ and something that is essentially functional. That is, by looking at the extent that the artist had wide freedom for expression and where artistic expression is subordinate to the functional requirements, in this case (a yacht) of speed and smooth handling.

Unfortunately, cases like Sheldon v Metrokane, focusing as they do on relatively commonplace, mass produced industrial articles like corkscrews have cast doubt on the appropriateness of the description artistic craftsmanship. The fact that often these items have been intended for sale to members of the public for frequent or everyday use has not helped either.

This has created conceptual difficulties for the courts.  Perhaps this is why the High Court drew a distinction between a stained glass window and a boat. That is, indicating that while a stained glass window might perform a certain function as a window, it also gave the artist a wide freedom in terms of expression. In turn, this could be contrasted to an item such as a boat where any artistic expression was essentially secondary and subordinate to functional requirements e.g. speed and good handling.

However, perhaps it could be argued that this analogy is conclusory and to make the comparison is almost to determine the outcome.  A stained glass window brings to mind the great mediaeval cathedrals of Europe and magnificent stained-glass windows made by craftsmen of undoubted ability. Artistic excellence and craftsmanship come to mind. On the other hand the relatively more mundane sailing vessel designed for the recreational needs of the masses hardly meets the same lofty ideals.

However, I wonder whether that is the point. What of a one off yacht with a hull lovingly shaped by a master “craftsman” with the intention of looking superb and exhibiting his/her artistry of both form and function, but with the overriding goal of creating a superb sailing vessel regardless of whether it had the attributes of speed and a good handling? In that situation, why should the mediaeval glass smith take precedence over the modern day hull shaper?

The question would probably not have arisen in New Zealand where the distinction between artistic merit and craftsmanship and mundane but original industrial design is less important.

Anyway, this decision will no doubt be debated for some time to come. Here is the initial summary:


26 April 2007



Moulds used in the reproduction of a high-speed yacht did not attract copyright protection as works

of artistic craftsmanship, the High Court of Australia held today.

Mr Swarbrick is a naval architect whose Perth company Swarbrick Yachts International Pty Ltd

manufactures fibreglass yachts called the JS 9000, sold in Australia and around the world for up to

$65,000. He designed the JS 9000 as a fast boat sailed easily by two or three people. Mr Swarbrick

has also designed America’s Cup and Whitbread racing yachts. Mr Rogers and Mr Warren were

employed by Swarbrick Yachts in the moulding of hulls and decks but left to work for Bold Gold

to build a JS 9000 yacht using a hull and deck moulding which Bold Gold bought from Mr Rogers

for $7,500. In late 2002, Mr Swarbrick gave Mr Rogers the moulding in disputed circumstances

which have not been resolved. Mr Bosman and Mr Zaza formed Bold Gold Investments for the

purpose of acquiring the moulding from Mr Rogers. Mr Burge was engaged as factory operation

manager. Work at Bold Gold’s factory ceased in September 2003 after Justice Christopher Carr in

the Federal Court of Australia granted Mr Swarbrick an interim injunction. The injunction prevents

the manufacture of any mould using the JS 9000 hull and deck mouldings and the reproduction of

the object called “the plug”, a hand-crafted full-scale model of the hull and deck sections of a

finished JS 9000. The moulds are exact, although inverted, copies of the plug.

Section 77 of the Copyright Act provides for the limitation of copyright protection resulting from

use of a corresponding but unregistered design but an exception is provided for “a work of artistic

craftsmanship”. Justice Carr held that Bold Gold had infringed Mr Swarbrick’s copyright in the

plug, the hull mould and the hull moulding, being artistic works, and had engaged in conduct

which, but for the interim injunction, would have resulted in infringement of his copyright in

artistic works being the deck mould and deck moulding. The Full Court dismissed an appeal. Bold

Gold and its personnel then appealed to the High Court.

The Court unanimously allowed the appeal. It held that determining whether a work is “a work of

artistic craftsmanship” does not turn on assessing the work’s beauty or aesthetic appeal or on

assessing any harmony between its visual appeal and its utility. The determination turns on the

extent to which the work’s artistic expression is unconstrained by functional considerations.

Whether the plug was a work of artistic craftsmanship did not depend on Mr Swarbrick’s intention

to design and build a yacht of great aesthetic appeal or on his belief that the JS 9000 had a high

level of aesthetic appeal. The visual appeal was secondary to the functional aspects of a sports boat

of high speed. The Court held that Justice Carr should have concluded that the plug was not a work

of artistic craftsmanship because Mr Swarbrick’s work in designing it was not that of an artist-

craftsman. It held that Justice Carr was however correct to describe the hull and deck mouldings as

manifestations of the plug. The Court rejected a claim that the mouldings are independently works

of artistic craftsmanship. It set aside all orders, including the injunction, made by Justice Carr and

held that remaining cross-claims be stood over for determination by the Federal Court.

This statement is not intended to be a substitute for the reasons of the High Court or to be used in any later

consideration of the Court’s reasons.


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