Intellectual Property Law Update – Copyright and Works of “Artistic Craftsmanship”, assessment of evidence, the need for special training, skill and knowledge

Intellectual Property
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M Marcus
C Cunliffe 2

State of Escape Accessories Pty Limited v Schwartz [2022] FCAFC 63


Copyright – artistic works – work of “artistic craftsmanship” – relevance of functionality and aesthetics – whether primary judge’s assessment of evidence was affected by error

Summary

The Full Court of the Federal Court dismissed the appeal agreeing with the primary judge that Sate of Escape’s tote bag was not a work of “artistic craftsmanship” and the bag’s creator, Ms MacGowen, was constrained by functional considerations. The Full Court confirmed that the definitive authority on the meaning of the phrase “a work of artistic craftsmanship” is the decision of the High Court in Burge v Swarbrick (2007) 232 CLR 336.The Full Court did not accept that the primary judge had erred in her evaluation of the evidence, particularly by failing to give more weight to State of Escape’s expert than the expert relied upon by the Respondents, and by not giving more weight to the evidence of Ms MacGowen concerning her design aspirations and intentions. The Court also acknowledged that the primary judge had correctly recognised that the fact that a person does not possess special training, skill and knowledge in the relevant field (in this case bag design) is at the very least a factor that may tend to show that the work that he or she has created is not a work of artistic craftsmanship.

Detail

This was an appeal from the decision of Justice Davies in State of Escape Accessories Pty Limited v Schwartz [2020] FCA 1606. In the case before Justice Davies, State of Escape (SOE) alleged, among other things, that the corporate respondent (Chuchka) was infringing copyright in SOE’s tote bag (the Escape bag), as a work of artistic craftmanship, by importing and selling its own bags. One of the issues on the copyright claim was whether copyright subsists in the Escape bag as “a work of artistic craftsmanship” (within s.10(1) of the Copyright Act 1968 (Cth)?

The Escape bag was not a registered design. The effect of s.77 of the Copyright Act is to extinguish copyright protection for an artistic work, except if it is a work of artistic craftsmanship, where a “corresponding design” of the work has been applied industrially with the licence of the copyright owner. By the operation of ss.32(1) and 77 of the Copyright Act, if the Court found that the Escape bag was a work of artistic craftsmanship then copyright would subsist. If not, SOE would have no protection under the Copyright Act.

Applying the guiding principles settled by Burge v Swarbrick (2007) 232 CLR 336, Justice Davies concluded that the Escape bag was not a work of artistic craftsmanship. Her Honour concluded that the creator of the SOE bag’s creator, Ms MacGowen, was constrained by functional considerations. Moreover, her Honour noted that the experts agreed that the functional issues were overcome using methods that were common practice and that none of the features alone represented a departure from bags known in November 2013. Her Honour accepted that the choice of perforated neoprene for the Escape bag was unconstrained by the function and utility of the Escape bag and was governed by considerations of appearance and aesthetics. However, once the fabric was selected, the design choices embodied within the bag were constrained by functional considerations. Moreover, Ms MacGowen did not approach the design and manufacture of the Escape bag as an artist-craftsperson. She had no special training, skill and knowledge in the design and manufacture of handbags and many of the issues she encountered were purely functional in nature.

On appeal, the Full Court noted that it was not suggested by the appellants that her Honour’s analysis of the relevant legal principles was affected by error. Rather, the criticism was her Honour’s evaluation of the evidence. The Full Court dismissed the appeal, fully affirming the decision of the primary judge and confirming that the definitive authority on the meaning of the phrase “a work of artistic craftsmanship” is the decision of the High Court in Burge.


Of note is the Full Court’s consideration of the appellants arguments that Davies J ought to have given greater weight to the evidence of their expert, Mr Smith, rather than that of the respondent’s expert, Ms Beale, and that her Honour ought to have given more weight to the evidence of Ms MacGowan, particularly her evidence about as to her design aspirations and intentions.

Referring to Burge, the Full Court noted that the author’s evidence is admissible, but the weight it may be afforded is often affected by two particular factors. First, the question of whether an object is a work of artistic craftsmanship does not depend on the author’s aspirations and intentions. Rather, the question is to be addressed by reference to the object itself and the extent to which any artistic expression manifested in the object is unconstrained by functional considerations. Secondly, “just as few inventors are heard to deny that they made an inventive step, it is to be expected that the views of an author as to the artistic qualities of his or her own work may not be shared by others who have different tastes and preferences”. The Court found that there was no inconsistency in Justice Davies having accepted Ms MacGowan’s evidence as to her aspirations and intentions and holding that the Escape bag was not a work of artistic craftsmanship.

In relation to the appellant’s complaint that Justice Davies preferred Mr Smith’s evidence over that of Ms Beale, the Full Court noted that this was not reflected in any ground of appeal, but that ultimately, the submission was that Mr Smith’s evidence ought to have been given no or at least little weight on the basis that he did not have “extensive experience in bag design”. The Full Court noted that Mr Smith’s evidence was not objected to by the appellant at trial and he participated in an expert conference with Ms Beale at which they considered a number of questions including whether there was “agreement between the experts as to the functional considerations which inform the design and manufacture of tote bags and carry all bags…”. The Full Court did not express an opinion one way or the other as to whether Mr Smith was as qualified as Ms Beale to express opinions on the aesthetics of bags or bag designs, noting that whether a work is a work of artistic craftsmanship does not turn on an assessment of the beauty or aesthetic appeal of a work (citing Burge). The Full Court was satisfied that by his training and experience, Mr Smith was well qualified to give an expert opinion on matters addressed in his evidence including the functional considerations which inform the design and manufacture of tote bags and carry all bags and it was open to Justice Davies to give his evidence considerable weight.

A second matter of note is that the Full Court also considered the challenge to Justice Davies’ findings that Ms MacGowan did not approach the design and manufacture of the Escape bag as an artist-craftsperson, that is that she had no special training, skill and knowledge relating to the design and manufacture of handbags. The appellant submitted that to require specialist training and knowledge in the design and manufacture of handbags would unduly limit the scope for original contribution by a person whose skill and experience was acquired outside the relevant filed. The Full Court stated however that they did not understand her Honour to have held that it was essential that to be an artist-craftsperson a person must have specialist training and knowledge in a particular field. The Court stated that her Honour had correctly recognised that the fact that a person does not possess special training, skill and knowledge in the relevant field (in this case bag design) is at the very least a factor that may tend to show that the work that he or she has created is not a work of artistic craftsmanship.

Tom Cordiner Headshot

Tom Cordiner QC holds the dual qualification of barrister and registered patents and trade mark attorney

M Marcus

Melissa Marcus practises in defamation law and all aspects of intellectual property

C Cunliffe 2

Clare Cunliffe practises in intellectual property and general commercial litigation

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