Escaping the provisions
of artistic craftsmanship
Inspire July 2022
The Full Court has
unanimously dismissed
the appeal in State of
Escape Accessories v
Schwartz 1 , rejecting the
claims against Stefanie
Schwartz and Chuchka
Pty Ltd for copyright
infringement in respect
of State of Escape’s
well-known perforated
neoprene tote bag (the
Escape Bag) on the basis
4 that it was not a “work of
artistic craftsmanship”
under the Copyright Act.

State of Escape Accessories Pty
Limited v Schwartz [2022] FCAFC 63
1
At first instance Justice Davies
a “corresponding design” has been
decided that the Escape Bag, while
“embodied in a product” and applied
undoubtedly a work of craftsmanship, “ industrially”.

was not a work of artistic
Sections 75 and 77 of the Copyright
craftsmanship notwithstanding
Act provide a defence to copyright
its aesthetic and design qualities.

infringement in an artistic work
This conclusion was reached after
where a corresponding design is, or
a detailed consideration of the
has been, registered as a design or
design features and evidence of the
otherwise applied industrially. The
creator, Ms MacGowan, along with
purpose of the overlap provisions is
independent experts. On appeal,
to ensure functional works intended
State of Escape sought to challenge
for mass production in three-
her Honours analysis of the evidence
dimensional form are not be afforded
in reaching her decision.

the long term protection provided
The Escape Bag is a soft, oversized
under the Copyright Act.

tote bag designed and created by Ms However, these overlap provisions
MacGowan, a co-founder of State of
and defences do not apply to works
Escape. Products such as the Escape of artistic craftsmanship. A work of
Bag may be artistic works as defined
artistic craftsmanship may still be
by s 10(1) of the Copyright Act and
afforded copyright protection, even if
can also be registered as designs
it is capable of protection under the
and protected under the Designs Act. Designs Act and a corresponding
However, design/copyright overlap
design has been industrially applied.

provisions exist in Australia meaning
Works of artistic craftsmanship
that an artistic work cannot be
are considered to have real artistic
protected under both the Copyright
quality such that they warrant the
Act and the Designs Act at the
greater protection provided under
same time. Copyright protection
the Copyright Act rather than the
for an artistic work is denied where
comparatively short design protection.




In rejecting State of
Escape’s criticism, their
Honours agreed that
the evidence showed the
design of the Escape
Bag was substantially
constrained by
function. gave proper weight to the evidence
of the experts and the bag creator
Ms MacGowan. This evidence went
to the aesthetic appeal of the bag, its
artistic quality, the artistic effort that
went into designing it, and that the
choice of materials being neoprene
and sailing rope was unique. However,
a major difficulty for State of Escape
was the fact that the evidence
before the primary judge also
established that Ms MacGowan’s
design approach was constrained
by functional considerations. While
setting out to create a stylish carry
all bag incorporating elements of
a conventional tote in terms of its
dimensions and external shape,
Ms MacGowan acknowledged, due
to the soft nature of the perforated
neoprene fabric, the structure of the
bag was fundamental to its success
and that she wanted the bag to be
both useful and practical.

In rejecting State of Escape’s
criticism, their Honours agreed that
the evidence showed the design of
the Escape Bag was substantially
constrained by function. The Full
Court also agreed that perforated
neoprene and sailing rope were
readily available commercial
materials capable of being used to
manufacture a carry all bag without
some particular training, skill, or
knowledge, and that there was no
act of artistic craftsmanship involved
in the selection of materials. Their
Honours agreed that at its highest,
the design decision to utilise those
materials in an everyday bag was an
evolution in styling.

The Full Court also rejected State
of Escape’s challenge to the finding
that Ms MacGowan did not approach
the design and manufacture
of the Escape Bag as an artist-
craftsperson. While not essential
that a person have specialist training
and knowledge in a particular field,
it was at least a relevant factor that
Ms MacGowan did not have special
training, skill and knowledge in bag
design which tended to show that
the work she created was not a work
of artistic craftsmanship.

Ultimately, their Honours agreed
with the decision of Justice Davies,
finding that functional considerations
substantially outweighed other
considerations pertaining to the
Escape Bag’s visual and aesthetic
appeal in the determination of its
shape, configuration, and finish.

Consequently, the primary judge’s
conclusion that the Escape Bag was
not a work of artistic craftsmanship
was correct and the Full Court
rejected the appeal.

The decision of the Full Court
serves to confirm the importance
of obtaining registered design
rights under the Designs Act to
protect the visual features of a
product. A registered design would
have enabled State of Escape to
prevent third parties from dealing in
products embodying the design of
the Escape Bag.

Obtaining protection as a registered
design is relatively inexpensive and
rapid in Australia. Importantly, while
registrable designs must be new and
distinctive (i.e. unpublished or sold),
recent changes to the Designs Act in
Australia have introduced a 12 month
grace period for new design filings
in Australia. These changes greatly
extend the potential application of
the registered design system and
mean that designers may still seek
protection for successful products
even after launch provided an
application is filed within 12 months.

More information on the recent
changes to the Designs Act can be
found here and anyone wishing to
enquire about designs registrations
should contact Davin Merritt.

5 David Longmuir | Principal
BSc(Hons) LLB(Hons) LLM FIPTA
2 Burge v Swarbrick (2007) 232 CLR 336
3 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64
Inspire July 2022
As State of Escape did not protect
the Escape Bag as a registered
design, it need to show that the
Escape Bag was a work of artistic
craftsmanship, in order to enforce
its copyright in the artistic work.

In considering the meaning of
the phrase “a work of artistic
craftsmanship”, their Honours
confirmed that the definitive authority
was the decision of the High Court in
Burge v Swarbrick 2 , which found that
a full-scale model of the hull and deck
of a what became a finished racing
yacht was not a work of artistic
craftsmanship. The High Court in
Burge adopted an objective test and
emphasised that the question does
not turn on assessing the beauty or
aesthetic appeal of the work, or in
assessing any harmony between
visual appeal and utility, but rather
on assessing the extent to which the
particular work’s artistic expression,
in its form, is unconstrained by
functional considerations. That is,
the more that functional
considerations dictate the form
of the work, the less scope there
may be for finding that there exists
the substantial artistic effort and
expression which characterises
a work of artistic craftsmanship.

The decision in Burge makes
clear that to be a work of artistic
craftsmanship, the work must have
a real or substantial artistic element
and, although not incompatible
with machine production, a work of
craftsmanship at least presupposes
special training, skill and knowledge
for its production. The High Court,
citing George Hensher v Restawile
Upholstery 3 noted ‘Craftsmanship’
implies a manifestation of pride and
sound workmanship – a rejection
of the shoddy, the meretricious,
the facile.

The High Court in Burge confirmed
that evidence of the creator’s
aspirations or intentions when
designing and constructing the
work while admissible, it is neither
determinative nor necessary. In
determining whether the creator
intended to, and did, create a work
possessing the requisite aesthetic
quality and requisite degree of
craftsmanship, the Court should
weigh the creator’s evidence together
with any expert evidence.

The fundamental consideration in the
appeal was whether Justice Davies
david.longmuir@pof.com.au