Wildash v Klein [2004] NTSC 17

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Wildash v Klein [2004] NTSC 17






FILE NO: No. 132 of 2001 (20111030)


HEARING DATES: 28, 29, 30 APRIL 2003;
2, 6, 7, 8 MAY 2003




Craftworks - whether "artistic works" - whether "sculptures" - whether "works of artistic craftsmanship" - whether "original" - use of general lead lighting techniques to represent well known animals.

Copyright Act 1968 (Cth), ss 10(1), 35(2)

Wham-O MFG Co v Lincoln Industries Ltd [1984] 1 NZLR 641, distinguished
Hensher v Restawile Upholstery [1976] AC 64, considered
Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 All ER 700, considered
Roland Corporation v Lorenzo and Sons Pty Ltd (1991) 33 FCR 111, considered


Absence of misrepresentation - goods labelled with name of maker - sufficient in circumstances to dispel connection with the other's products.

Montgomery v Thompson [1891] AC 217, distinguished
United Pacific Industries Pty Ltd v Madison Sports Pty Ltd (1998) 41 IPR 546, distinguished


Appellant: Professor E P Aughterson
Respondent: Self-represented

Appellant: De Silva Hebron
Respondent: -

Judgment category classification: B
Judgment ID Number: ang200403
Number of pages: 18

Wildash v Klein [2004] NTSC 17
No. 132 of 2001 (20111030)







(Delivered 6 April 2004)

[1] The plaintiff and the defendant used to be friends. Each creates craft work by hand. Each claims copyright in the products of her handicraft. Each claims the other has infringed that copyright and has passed off her own goods as that of the other. The plaintiff claims and the defendant counter-claims damages for breach of copyright and for passing off.
[2] The plaintiff has set out in her Statement of Claim filed 23 July 2001 and her answers to a request for further and better particulars filed 17 September 2001 the craftworks for which she claims to be the original creator and holder of copyright, as follows:
A. "critters" being Territorian animals, reptiles or insects made by utilising a solder process.

(i) Wire outline:
(a) Gecko
(b) Frog
(c) Frill neck lizard

(ii) Solid 3-dimensional form:
(a) Gecko
(b) Frog
(c) Frill neck lizard

1. Open woven frill
2. Sheet copper frill
3. Solid solder frill

(d) Dragonfly:
1. Stranded Soldered wings
2. Stranded wings
3. Beaded wings

(e) Green ant
(f) Spider
(g) Centipede
(h) Scorpion
(i) Mozzie

B. "flyscreen critters" which are critters designed to hang on household flyscreens.

C. "magic wand", a glass rod with crystal mounted on the top, wire wrapped with bead work.

D. "table mossie coil holders", which is a copper foiled glass circle comprising three pieces with one glass nugget "critter" and glass note.

E. "hanging mossie coil holder", a copper foiled glass circle comprising with three pieces with one glass nugget "critter" hung by a three way chain.

F. "hanging ornament", comprising a "critter" mounted onto triangle pieces of glass.

G. "wall candle", copper foiled glass in double tear drop shape comprising of three pieces with mountain for a tea like candle.

H. "table candle', copper foiled circle comprised of three pieces with centre mounting for candle, circular handle, glass nugget and "critter".

I. "hanging gecko", solid solder, wire and three glass nuggets incorporated into the body hanging from the tail.

J. "hanging three drop star", mounting solder around the centre nugget with three glass drops.

K. "glass raindrop" with wire wrapping and mounting critter.

L. "glass leaf" with "critter", copper foiled glass with a "critter" mounted.

M. "floral design", three glass petals with wire scrolls mounted on centre nugget and glass raindrop suspended.

N. "hanging glass stem', wire wrapped with "critter" mounted.

O. "wire lizard', wire framed woven and inter lace with wire and glass bead for eyes.

[3] The defendant claims that she is the original creator and copyright holder in the items A(ii)(a),(b), (c)3, (d)2, (d)3, (e), B, C, D, E, F, G, H, I, J, K, L, M, N & O set out above.
[4] The plaintiff and defendant first met in early 1999 through the Humpty Doo markets which at the time were managed by the plaintiff and where each operated a stall. Both had a crafts background. The plaintiff's market stall at Humpty Doo at this time primarily provided for the sale of crafted coconut heads called "Debs Heads". The defendant had a background particularly in lead lighting and creating stained glass objects. The parties became friends and in mid-1999 entered into a mutual business arrangement pursuant to which each agreed to sell craft work created by the other at different markets. The plaintiff sold the defendant's creations along with her own at the Mindil Beach and Humpty Doo markets. The defendant in turn sold the plaintiff's creations at her stall at the Parap market and at a market at the Window on the Wetlands. The parties considered these arrangements enhanced the sales of both their works. Each had the opportunity to copy the work of the other.
[5] Each party claims that as a consequence of this agreement she became aware that the other was systematically copying her work. Each asserts her reputation and sales were significantly adversely affected as a result of this copying. Each said she had an interstate market for her works. The defendant says she first noticed that the plaintiff was copying her works in June 1999. The defendant however did nothing about this as she was preoccupied at the time with a failing marriage. It was the plaintiff who terminated the joint business arrangement in May 2000, because, she said, she became aware at the Fred's Pass Show that the defendant had copied her "hanging gecko" referred to in paragraph (I) above of the plaintiff's Statement of Claim.
[6] It is perhaps useful to refer at the outset to the statement of Lord Millett in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 All ER 700 at 708, as to the essential difference between the action for breach of copyright and that of passing off:
"The gist of an action for passing off is deceptive resemblance. The defendant is charged with deceiving the public into taking his goods as and for the goods of the plaintiff. A visual comparison of the competing articles is often all that is required. If the overall impression is that 'they just do not look sufficiently similar' then the action will fail.

An action for infringement of artistic copyright, however, is very different. It is not concerned with the appearance of the defendant's work but with its derivation. The copyright owner does not complain that the defendant's work resembles his. His complaint is that the defendant has copied all or a substantial part of the copyright work."

[7] Both the plaintiff and the defendant claim to be authors of "artistic works" as defined in s 10 Copyright Act (Cth). The author of an "artistic work" is the owner of any copyright subsisting in the work: s 35(2) Copyright Act (Cth).
[8] The first issue before the Court is whether copyright inheres in any of the disputed works as being both original and "artistic works", as defined, of the party who contributed the original elements by which copyright may subsist in the work; see generally Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49.
[9] Section 10(1) of the Act provides:
" 'artistic work' means:
(a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality of not;

(b) a building or a model of a building, whether the building or model is of artistic quality or not; or

(c) a work of artistic craftsmanship to which neither of the last two preceding paragraphs applies;

…. ."
[10] It was contended that the works in question were sculptures or alternatively works of artistic craftsmanship.
[11] I am satisfied that the works in question are sculptures. As Pincus J said in Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 95 ALR 275 at 284:
'Although the definition of 'sculpture' is not exhaustive, in so far as the word remains undefined it must be given its ordinary meaning, in accordance with orthodox principles of construction.'

In Wham-O MFG Co v Lincoln Industries Ltd [1984] 1 NZLR 641 at 662 the New Zealand Court of Appeal concluded that 'sculpture should in some way express in three-dimensional form an idea of the sculptor'. Having said that it 'is not possible to say with precision what is and what is not sculpture', Laddie J in Metix (UK) Ltd v G H Maughan (Plastics) Ltd [1997] FSR 718 at 722 concluded that at 'the heart of the issue … a sculpture is a three-dimensional work made by an artist's hand. It appears to me that there is no reason why the word 'sculpture' in the [UK] Act, should be extended far beyond the meaning which that word has to ordinary members of the public'.

[12] I am satisfied that the works in question are 'sculptures'. They are three dimensional craft pieces hand made with a degree of skill in the medium employed which are designed to have aesthetic appeal to potential purchasers. That some of the works in this case are also functional, such as the wall and table candle holders and "mozzie coil" holders, does not prevent them being 'sculptures' within the meaning of that term in the Act. Although in Wham-O MFG Co, the New Zealand Court of Appeal concluded that it was "inappropriate to regard utilitarian objects such as plastic flying discs, manufactured as toys, by an injection moulding process, as items of sculpture for the purposes of the Copyright Act", this was so because "[t]hey lack[ed] any expressive form of the creator and any idea which the creator seeks to convey" (at 662). The works in question here demonstrate the expression of such ideas.
[13] I am also satisfied that they are in any event 'works of artistic craftsmanship'. In Hensher v Restawile Upholstery [1976] AC 64 at 90-91, Lord Simon of Glaisdale, after noting that it was the influence of the Arts and Crafts movement that led to the 1911 extension of copyright protection from the confines of the fine arts to cover the applied arts also, said:
"But 'works of artistic craftsmanship' is a composite phrase which must be construed as a whole. There is nothing to suggest that any of the words is used in other than one of its ordinary senses. A work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production: see Cuisenaire v Reed [1963] VLR 719; Cuisenaire v South West Imports Ltd [1968] 1 Ex CR 493, 514. 'Craftsmanship,' particularly when considered in its historical context, implies a manifestation of pride in sound workmanship - a rejection of the shoddy, the meretricious, the facile. But the craftsmanship - not the work itself - must, in addition, be artistic. Before turning to the various criteria which have been propounded it may be helpful to consider some examples. A cobbler is a craftsman, and those in the Arts and Crafts movement would have valued his vocation as such. But neither they, nor anyone else using the words in their common acceptation, would describe his craftsmanship as artistic, or his products as 'works of artistic craftsmanship.' A dental mechanic is a similar example; so is a pattern-maker, a boiler-maker, a plumber, a wheelwright, a thatcher. At the other extreme is the maker of hand-painted tiles. He too is a craftsman; but his craftsmanship would properly be described as artistic and his products as 'works of artistic craftsmanship.' In between lie a host of crafts some of whose practitioners can claim artistic craftsmanship, some not - or whose practitioners sometimes exercise artistic craftsmanship, sometimes not. In the former class, for example, are glaziers. The ordinary glazier is a craftsman, but he could not properly claim that his craftsmanship is artistic in the common acceptation. But the maker of stained glass windows could properly make such a claim; and, indeed, the revival of stained glass work was one of the high achievements of the Arts and Crafts movement."

The present handicraft works in issue are "works of artistic craftsmanship". They demonstrate the requisite artistic quality and are the product of the requisite craftsmanship. Each is made by hand and has artistic character that is likely to be valued or appreciated by its owner.

[14] Copyright protection only arises with respect to works that are original. Insofar as the items in dispute are individual hand crafted creations, each item can be said to be unique. Providing it is not merely copied from another work, it will be original. As Kearney J said in Ogden Industries Pty Ltd v Kis (Australia) Pty Ltd (1982) 62 FLR 241 at 247:
"Hence, if the work originates from the author in the sense that it is the result of his skill, labour or experience, and is not copied from another, then it will be an original work for copyright purposes."

The skill, labour or experience required to make a work original is a matter of degree in each particular case:

"What is the precise amount of the knowledge, labour, judgment or literary skill or taste which the author of any book or other compilation must bestow upon its composition … cannot be defined in precise terms. In every case it must depend largely on the special facts of that case, and must in each case be very much a question of degree …". (MacMillan and Co Ltd v K and J Cooper (1924) 93 LJ PC 113 at 121)

[15] It is well settled that the requirement for copyright protection is originality of the artistic work not the novelty of the artistic work. It is also well settled that the mere choice of the subject rarely if ever confers upon the author the exclusive right to represent that subject: Kenrick & Co v Laurence & Co (1890) 25 QBD 99 at 100-104. Infringement of copyright occurs by copying which does not include cases where the author produces a substantially similar result by independent work without copying: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 276, per Lord Reid.
[16] As Lord Hoffman emphasised in Designers Guild v Williams (supra) at 705, it is important to identify the protected elements of the work and to focus on what the defendant is alleged to have copied or divested from the plaintiff's work and whether that formed a substantial part.

He continued at 706:

"Plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work. But the distinction between ideas and expression cannot mean anything so trivial as that. On the other hand, every element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author…. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a 'substantial part' of the work. Although the term 'substantial part' might suggest a quantitative test, or at least the ability to identify some discrete part which, on quantitative or qualitative grounds, can be regarded as substantial, it is clear upon the authorities that neither is the correct test. Ladbroke (Football) Ltd v William Hill (Football) UK Ltd [1964] 1 All ER 465, [1964] 1 WLR 273 establishes that substantiality depends upon quality rather than quantity ([1964] 1 All ER 465 at 469, 473, 477, 481, [1964] 1 WLR 273 at 276, 283, 288, 293 per Lord Reid, Lord Evershed, Lord Hodson and Lord Pearce respectively). And there are numerous authorities which show that the 'part' which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part…. Or to take another example, the original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original. If one asks what is being protected in such a case, it is difficult to give any answer except that it is an idea expressed in the copyright work.

My Lords, if one examines the cases in which the distinction between ideas and the expression of ideas has been given effect, I think it will be found that they support two quite distinct propositions. The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such. The same is true of an inventive concept expressed in an artistic work. However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own (see Kleeneze Ltd v DRG (UK) Ltd [1984] FSR 399). The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work. Kenrick & Co v Lawrence & Co(1890) 25 QBD 99 is a well-known example. It is on this ground that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff's work. At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author's skill and labour as to attract copyright protection.

Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author's skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better that hedgehogs."

His Lordship's reference to foxes and hedgehogs is an allusion to the celebrated 1953 essay of Sir Isaiah Berlin "The Hedgehog and the Fox", reprinted in The Proper Study of Mankind (1998) Pimlico, at 436-498 where the distinction is made between those thinkers who relate everything to a single central vision (hedgehogs) and those who pursue many ends, often unrelated and even contradictory (foxes).

[17] Where there is only one way of expressing an idea that expression is not protected by copyright, it is part of the public domain. Whilst, as Lord Oliver of Aylmerton said in Interlago AG v Tyco Industries Inc [1989] AC 217 at 262-263, "Skill, labour or judgment merely in the process of copying cannot confer originality", nevertheless, as Lord Hoffman said in Designers Guild v Williams (supra) an inventive concept expressed in an artistic work may be expressed by others in works of their own. The piracy of a "good idea" is not an infringement of copyright. Although Courts are slow to deny protection on the ground of simplicity of subject matter or on the basis the work is elementary or commonplace; see British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 at 68, nevertheless the more commonplace and simple the work the more closely must it be copied for any infringement to occur: see generally Halsbury Laws of Australia Vol 15 para 240.1577 footnote 11 and cases cited. As Pincus J said in Roland Corporation v Lorenzo and Sons Pty Ltd (1991) 33 FCR 111 at 114, in so far as works:
"… are relatively simple … their simplicity will produce the result that only an exact or fairly exact copy will infringe".

[18] In the present case each party has used general lead lighting techniques to represent well known Northern Territory animals such as green ants, frogs, geckos, frill neck lizards and dragonflies. The expression of these ideas using these techniques are necessarily limited. Each piece is hand crafted and in that sense is therefore unique. However the idea and the expression of the idea in the present case, given the confines of the medium and technique employed, have merged or nearly merged with the consequence that copyright protection, if available at all, is very limited. If one asks what features of the plaintiff's products are evident in the defendant's products and what features of the defendant's products are evident in the plaintiff's products they have much in common. But leadlight ie solder and glass constructed ants, geckos, lizards, dragonflies and so forth will inevitably have common features. The plaintiff and the defendant are each free to express the idea of a green ant or gecko, for example, employing for that purpose the common technique and medium of lead lighting. The common features of the works of the plaintiff and the defendant are more evidence of the individual expression of a concept taken from the other than copying a protected element of the other's work.
[19] The question is whether either party in creating her works has by copying the other not only lost the originality which would otherwise have characterised that work and in respect of which it would have been the subject of copyright itself, but infringed the other party's copyright in the copied work.
[20] On balance I am not satisfied that there has been copying of at least a substantial part of the copyright elements of the works of either the plaintiff or the defendant. Looking at the features and quality of the craft pieces of each party, including the originality of those elements and their complexity, I do not consider that if there has been copying it would represent a substantial part of the other party's copyright work in question. Indeed, in all but three cases there is no evidence from the physical makeup of the work itself of copying at all, and in the others, any copying could only have been in relation to non-copyright aspects of the subject matter. Any resemblance between the works of the plaintiff and the works of the defendant is, I think, due to common subject matter and medium rather than having been derived from the copyright existing in the other's work. It is far from evident that anything significant has been taken or that there is any causal connection between any copyright and the work claimed to have infringed such copyright. My conclusion is that neither party succeeds upon her claim for breach of copyright. I have reached this conclusion independently of deciding which of the plaintiff or the defendant first conceived the ideas expressed in the works. Each accuses the other of dishonesty. I have not found it necessary to resolve that difference.
[21] I have reached the following conclusions:-
(a) Both the products of the plaintiff and of the defendant qualify for copyright but the protection is very limited in extent. Being individual hand crafted items each is unique and copyright in each only extends to such original aesthetic quality the item has beyond the commonplace medium and subject matter itself. Given the medium, subject matter and simplicity which the works of the plaintiff and the defendant have in common the copyright is very confined.

(b) As to the question of breach there is no copying evident upon a physical comparison of the works of the plaintiff and the defendant in any but three cases. The three exceptions are Item 1 E (exhibit P3) the hanging glass mozzie coil holder, Item 1 G (exhibit P4) the wall candle holder and Item 1 K (exhibit P5) the glass raindrop with attached dragonfly. Those limited items which do give rise to a suspicion of copying are items where any copying is in relation to non-copyright aspects of the subject matter. Such resemblance as there is, is as attributable to commonality of medium and subject matter as reproduction. Being hand made there are obvious differences. The works materially differ in colour and detail. I refer, generally, to Artifakts Design Group Ltd v N P Rigg Ltd [1993] 1 NZLR 196 at 217-218.

(c) In the three cases where there is some suggestion of copying of the aesthetic elements of the work it can not be said to be a substantial reproduction of the copyright aspect of the work, that is, the work is not identical or sufficiently near to identical to constitute reproduction. The works are similar but materially different.

(d) No physical or aesthetic feature of a work (other than such as is commonplace) originating in either party has been demonstrated to have been filched by the other.

[22] The plaintiff claims that the defendant has passed off the plaintiff's craftworks as the defendant's own. The plaintiff's claim centres on her marketing of her craftworks under the name "flyscreen critters", which she claims has acquired valuable goodwill. She claims that the term "flyscreen critters" is distinctive of her work and it is a term under which she has sold items for many years. The plaintiff asserts that the defendant has also used this name and with the deliberate object of causing deception and confusion with the plaintiff's craftworks. The defendant admits to commencing to use the name "flyscreen critter" but she says the plaintiff gave her permission to use the term. The plaintiff says she gave no such authorisation or permission and in any event that any such authorisation was subsequently revoked.
[23] The defendant makes the same claim of passing off in respect of the plaintiff's sale of Territory animals of a similar description to those sold by the defendant. She asserts that the plaintiff attached the plaintiff's own labelling in replacement of the defendant's labelling evidencing her intention to deceive.
[24] In my view the parties' respective actions for passing off fail. Each party sold their respective wares duly labelled specifying the origin of the work. In order to succeed with an action for passing off a plaintiff must establish, inter alia, that the defendant has misrepresented the defendant's goods as those of the plaintiff. The present claim and counter-claim for passing off fail in that all the goods in question were sold whilst labelled with the name of the maker thereof. This is not a case like the celebrated Stone Ales case. There the defendant's label on the beer was no answer because "Thirsty folk want beer, not explanations": Montgomery v Thompson [1891] AC 217 at 225, per Lord Macnaughten. The present case involves individual hand made craft works in respect of which purchasers might well be expected to act following a consideration of the work and its origin.
[25] In the present case, whatever formulation of the tort of passing off is adopted, whether that of Lord Oliver of Aylmerton, with whom Lords Bridge of Harwich, Brandon of Oakbrook and Goff of Chieveley agreed, in Reckitt & Colman Properties Ltd v Borden Inc [1990] 1 WLR 491 at 499, or that of Lord Diplock in Erven Warnink Besloten Vennootschap v J. Townend & Sons (Hull) Ltd (1979) AC 731 at 742, neither the plaintiff nor the defendant has established the necessary misrepresentation, that the other is passing off her goods as that of the other. Neither the plaintiff nor the defendant when selling her wares and labelled as such was suggesting that the article that she was selling was that of the other. Each party's labelling was such as to dispel any notion that there had been any such misrepresentation, cf Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.
[26] This is not a case where it has been established that members of the public are familiar with either the plaintiff's work or the defendant's works by reason of their distinctive get-up though unaware of their actual source, that is, a case such as United Pacific Industries Pty Ltd v Madison Sports Pty Ltd (1998) 41 IPR 546 at 556 where people were familiar with the plaintiff's products through an extensive advertising campaign involving Olympic athletes. There the public, as a result of such promotion, were familiar with the applicant's products by reason of their distinctive get-up whilst unaware of their actual source. The labelling by each party in the present case was quite sufficient to dispel any connection with the other's products.
[27] During 1999 both the plaintiff and the defendant developed and sold the disputed items. Neither established a reputation for being the sole author of these or like items available to the public. The plaintiff and the defendant each developed her own market for her wares. Prior to these proceedings being commenced each was vying in the market for sales of similar items of craftware marketed under her own label. Neither is now entitled to the field to the exclusion of the other.
[28] The plaintiff's claims and the defendant's counter-claims are dismissed. In the circumstances there will be no order as to costs.