CATCHWORDS Trade Practices - misleading conduct - art catalogue - second edition - whether description of applicant as editor misleading - author of catalogue not owner of copyright - whether second edition represented by publisher as unaltered work of author Trade Practices Act 1974, 3.52 Copyright Act 1968, s.191l(a) ANDREW CROCKER v PAPUNYA TULA ARTISTS PTY. LIMITED and ABORIGINAL ARTISTS AGENCY PTY. LIMITED No. G 424 cf 1984 Morling J. Evdney 26 June 1985 ory IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION BETWEEN : AND: AND: ORDER JUDGE MAKING ORDER : Morling J. DATE OF ORDER : 26 June 1985 WHEPE MADE 3 Sydney THE COURT OFDERS AS FOLLOWS: l. Application dismissed. No. Ga24 of 1984 ANDREW CROCKER Applicant PAPUNYA TULA ARTISTS PIY. LIMITED First Respondent ABORIGINAL ARTISTS AGENCY PRY. LIMITED Second Respondent a. Applitant to pay respondents' costs. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY No. G424 of 1984 wee ww GENERAL DIVISION BETWEEN : ANDREW CROCKER Applicant AND: PAPUNYA TULA ARTISTS Pry. LIMITED First Respondent AND: ABORIGINAL ARTISTS AGENCY PTY. LIMITED Second Respondent MORLING J. 26 June 1985 REASONS FOR JUDGMENT The applicant in this case is Mr Andrew Crocker. an Engiishman, who resides at Wasp Cottage, Behind Myrtle Cottage, Kingsbury Episcopi, in the County of Somerset. He has not always resided in such verdant parts. For many years he has had a deep interest ain Aboriginal art. In 1972 he was employed by the Australian Council for the Arts as an assistant project officer in work associated with Aboriginal art. In 1979 he commenced work ain Alice Springs as the manager of Papunya Tula Artists Pty. 'Limited and he remained in that Eositicn until Septenper 1981. He has bean adaeeply invoived The Aboriginal Artists Agency Limited (the second respondent) is a non-profit company which represents Australian Aboriginal and Torres Strait Islander artists. Its functions include licensing and protecting the copyright in art works, music and other works of art and in entering into agreements and joint ventures to promote the work of Aboriginal artists, and generally acting as agent and business adviser to Aboriginal and Torres Strait Islander artists. The evidence does not make clear the precise functions of the first respondent, but its principal object appears to be the purchase of paintings by Aboriginal artists for sale ata profit, presumably to the artists concerned. In 1981 the applicant was employed as art director of the first respondent. Whilst so employed he conceived the idea of producing a small book to be called "Mr Sandman Bring Me a Dream", being a collection of photographs of paintings by Aboriginal artists. He arranged for the production cf this work. The arrangements included the engagement, on pehalf of the first respondent, of a photographer to photograph some of the paintings, the taking of some photographs himself, and the interviewing of the artists whose paintings were to be included zn the work. He also composed a commentary on each of the paintings and on each of the artists whose work was portrayed. He wrote a short note entitled "Contemporary Art of the Western Desert" which was includea 2n the volume. He aycangec ror Mr Rod. Kimber To contribute an articl2 entitled 'Tsntral Australian and Western Desert Art: Some Impressions". This, together with a foreward by Mr Clifton Pugh was included in the work. The applicant himself composed an Introduction. The omission of the Introduction from what 1s, 1n effect, a second edition of "Mr Sandman Bring Me a Dream" is the reason for the applicant bringing these proceedings. The Introduction is about one anda half pages in length. It acknowledges the assistance given by several persons in the preparation of the work, It refers to the applicant's employment by the first respondent and states that all members of the first respondent are Aboriginal artists. It contains a few short observations on the evolution of Aboriginal paintings. Reference is made to some of the difficulties experienced by the applicant in his work as manager of the first respondent. It does not purport to be a commentary or an introduction to the paintinas which are reproduced in the body of the work. "Mr canaman Ering Me a Dream" was published in 1931 by tne respondents. The frontispiece of the work gave the names of the publishers, and under a heading "Photography" gave the names of the applicant and two others. No prominence was given to the name of the applicant as the editor. However I think the evidence establishes that he was its editor and. indeed. I did not understand the respondents to contend otherwise. There isa notation on the frontispiece of the work indicating that, for the cataloguing purpose; of the National Library of Australia, Mr Crocker was segarden as the editor. 4. In my opinion the evidence establishes that the applicant was not only the editor of "Mr Sandman Bring Mea Dream" but also its author. He conceived the idea which found expression in the work. and it was he who determined which paintings were to be photographed and included in it. He wrote the Introduction and also the brief commentaries on each painting and its painter which, together with the paintings, make up some 22 pages of the work which contains some 62 pages in all. The only parts that he did not himself prepare were the contributions by Messrs Pugh and Kimber. In my opinion these facts establish that the applicant was the author of "Mr Sandman Bring Me a Dream" although he was not the author of all the several parts of which it is comprised: see Copinger and Skone, James on Copyright, 12th edn, para. 325. This is not to say, of course, that the applicant 15 the owner of the copyright in the work. Since it was produced by him in pursuance of the terms of his employment, his employer, the first respondent, is the owner of the copyright subsisting in 1t: see sub-s.35(6) of tne Ccpyright Act 1368. In the present proceedings the applicant claims that the respondents are qgu1lty7 of conduct proscribed by sub-s.52(1) of the Trade Practices Act 1974 and para. 191(a) of the Copyright Act by reason of the publication and sale by them of a work D r al + fal ra ad "Parunya - Aboriginal Paznting from the Central ul Australian Desert" 'Fapunva'"). Sub- 52¢1) proscribes Lo} uu conduct, in trade or commerce, which is misleading or deceptive or likely to mislead or deceive. Paragraph 191(a) of the Copyright Act provides, inter alia, that where a work in which copyright subsists has been altered by a person other than the author of the work, a person 1s under a duty to the author of the work not to publish or sell the work as so altered, as being the unaltered work of the author if, to his knowledge, it is not the unaltered work of the author. To understand how the dispute between the parties arises 1t is necessary to refer to the circumstances in which "Papunya" came to be published and to the contents of that work. "Papunya" was published by the respondents in 1983. Leaving aside miniscule matters, the only respects in which it differs from "Mr Sandman Bring Me a Dream" are as follows: 'a) the change in title; .b) the omission of Mr Crocker's Introduction from "Papunya"; fs) the inclusion on the frontispiece of "Papunya" of the name of the applicant as editor. T= paintings featured in "Mr Sandman Srinag Ms a Drean" were collected together ana exhipited overseas. The exhibition had been arranged by the first respondent and was held in July 1981. In late 1981 the applicant resigned from his employment and returned to live in England. Thereafter arrangements were made for another touring exhibition. By this time all the paintings included in "Mr Sandman Bring Me a Dream" had been acquired by Mr Robert Holmes a Court for his private collection. The Australia Council agreed to help finance a touring exhibition of the paintings. It was a condition of the Australia Council's grant of financial assistance that a suitable catalogue should be produced to accompany the exhibition. Accordingly, arrangements were made by the second respondent for the publishing of "Papunya". Mr Holmes & Court''s paintings were exhibited over a period from 1982 to 1985 in Bonn, Bayreuth, Paris, Lisbon, Vienna, The Hague and Copenhagen. Foreign language editions of "Papunya" were produced in French, German and Portuguese. The production of "Papunya" Gid not come to the applicant's attention until some time in 1983. Mr Anthony Wallis, who was the managing airector cf the first respondent at the relevant time, gave evidence, which I accept, that the applicant assisted in the production of "Papunya" to the extent that he supplied some photographs which had been lost by the printer. Mr Wallis said that 1% was his decision to delete the Introduction from "Papunya" anc to incluae the applicant's name as the editor cr it. When asied why he had dene that, he said that he thought "it was a po.ite <1 thing todo for somebody who had contributed to the whole project. The editor was the best title I could think of." He also said: "It was just that he had worked with us on both publications and that was the best way I could think of acknowledging his work." It was conceded. correctly in my opinion, that one or other of the respondents is the owner of the copyright in both "Mr Sandman Bring Me a Dream" and "Papunya". It is plain that the two works are substantially similar. In these circumstances the dispute which brings the parties to court might fairly be described as a storm in a teacup. I am not persuaded that the publication of "Papunya" has caused the applicant any damage. Nevertheless, it 215 necessary to consider whether the applicant has established a breach by the respondents of either sub-s.52(1) of the Trade Practices Act or para. 191l(a) of the Copyright Act. Io turn first to consider the claim that the respondents have engaged in deceptive or misleading conduct. The deception is said to arise from the circumstance that the applicant is described in "Papunya" as the editor of that work. It was asserted that he was not the editor of it and that the statement on the frontispiece of the catalogue that he was the editor was conduct proscribed by sub-s.52(1). In my opinion there 15 no substance in this claim. The applicant was plainly responsible for the compilation of "Mr Sandman Ering Me a Dream" and can fairly be described as its editor. Because there is such a close correspondence between the contents of the two cataloques "Papunya" can fairly be described as a second edition of its predecessor. I do not think the omission of the Introduction from ""Papunya" is of such significance as to make it misleading or deceptive to describe @f the applicant as the editor of it. He remained the person whose ideas and efforts had led to the selection of virtually all the material which appeared in it. It is true that "Papunya"" was published after the applicant had left his employment with the first respondent. But it was the work which he performed during the course of his employment which virtually determined the form and contents of "Papunya". A person who was fully unformed of all the circumstances which led up to the compilation of the cataloques would reqard the applicant as the editor of both. It is plain from the frontispiece of both works that they were published by the respondents. Ido not think that a reader of ""Papunya" would necessarily assume that 1ts editor had selected ita title. If he directed his mind at all to the question whether the title had been selected by the publishers or the editor, he would probably conclude that the title was chosen by the publishers. It was therefore not misleading or deceptive of the respenaents to state cn the frantisprecs of "Papunya That the applicant was the editor of it, notwithstanding that he had not chosen the title. Moreover, I do not think it was misleading or deceptive of the respondents to delete the Introduction from "Papunya". It is true that the applicant was not responsible for. and did not approve of, the omission of the Introduction. However, I do not think that a person reading the catalogue and seeing the name of the applicant as its editor would believe that he had determined every detail of its contents. In the case of a newspaper, the mere fact that a person is appointed its editor does not give him control over 1ts name or the material to be inserted in it: Halsbury, Laws of England, (4th edn) 1058. I can see no valid reason why a different rule should apply to an art catalogue prepared by an emplovee for his employer. With hindsight, it might have been more accurate for a note to have been placed on the frontispiece of "Papunya" stating that it was based on "Mr Sandman Bring Me a Dream", of which the applicant was the editor. The failure to make such a notation in "Papunya" was no doubt due to the belief, correctly held, that the publishers owned the copyright in both works. However. I do not think the failure to identify with exactitude the precis2 nature of the work performec by the applicant in the compilation of 'Papunya" made the description of him as 1°38 10. editor false or misleading. Under all the circumstances, the applicant was fairly déscribed as its editor. For these reasons I am of the opinion that the claim under the Trade Practices Act fails. I tuyn now to consider the claim under para. 191(a) of the Copvright Act. Section 191 provides as follows: "191 Where a work in which copyright subsists has been altered by a person other than the author of the work, a person is, by virtue of this section, under a duty to the author of the work not to - (a) publish, sell or let for hire, or by way of trade offer or expose for sale or hire, the work as so altered, as being the unaltered work of the author; or (b) publish, sell or let for hire, or by way of trade offsr or expose for sale or hire, a reproduction of the work as so altered, as being a reproduction of the unaltered work of the author, to his knowledge, it 1s not the unaltered work if. or a reproduction of the unaltered vsrk. as the case may Be, of the author." In my opinion para. 19(a) is not infringed unless an alteration is a material alteration having regard to the object wath which the enactment was passed. In Carlton Illustrators v Coleman & Co. Ltd. (1911) 1 K.B. 771 Channel J. considered the meaning of sub-s.7(4) of the Fine Arts Copyright Act, 1962 (Imp.} vhich provided, in part, as follows: il. "(4.) Where the author or maker of anv painting, drawing, or photograph... . shall have sold or otherwise parted with the possession of such work. 1f any alteration shall afterwards be mace therein by any other person, by addition or other- wise. no person shall be at liberty during the life of the author or maker of such work. without his consent. to make or knowingly to sell or publish, or offer for sale, such work or any copies of such work 50 altered as aforesaid. or of any part thereof, as or for the unaltered work of such author or maker." It will be seen that there is a broad correspondence between this provision and para. 191(a) of the Copyright Act. At p.780 Channel J. said: "To come within the enactment an alteration must be a material alteration having regard to the object with which the enactment was passed; and that which would be material in that sense would be an alteration which might affect the credit and reputation of the artist. To my mind that is what is prohibited. I do not think that it would be necessary to find in.any particular case that the alteration had affected the character and reputation of the artist; it 1s sufficient 1f the alteration is of such a character that it might affect his character and reputation." Since tne respondents (or one of them) were tne owners £ of the copvright of "Mr Sandman Bring Me a Dream" they were entitled, without the consent of the applicant, to publish later editions of it. making such omissions and changes in the original work as would not iniure the applicant's reputation. fee Copinger & Skone James on Copyright, 12th ed., para. 1158 and Caritcn Illustrators (supra) at p. 780. 12, The aravamen of the applicant's case under para.191(a) 1s that by publishing "Papunya" with his name as the editor on the frontispiece the respondents represented that it was his unaltered work, whereas the deletion of the Introduction and the change in the title were material alterations not made by hin. Counsel for the respondents argued that para. 191l(a) of the Copvright Act had no application to the present case because the facts did not establish that the respondents had published "Papunya" as being the unaltered work of the applicant. It was argued that all the respondents did was to put forward the name of the applicant as the editor of the catalogue and that to do this was not to represent that it was his unaltered work. I have not found this part of the case easy to decide but I have come to the view that the claim under para. 191(a) of the Copyright Act also fails. In my opinion the action of the respondents in publishing and selling "Papunya" with the name of the applicant as its editor did not amount to a representation that it had not been altered. It 138 a compilation of the work of several contributors and many artists. Whilst the applicant was 1ts editor, the publishers owned the copyright in it. I do not think that a person who sells such a work is to be taken as s2lling it as the unaltered work of its editor. There are often sound reasons why the weublisher of a book may alter the work of the esrson who has compiled it. For example, considerations of coat may leaaq a publisher to reduce the size of a bock by liwinating 2o0me material which the editozs would prefer to be 13. In Preston v Raphael Tuck & Sons. Limited (1926) 1 Ch. 667 at 674 Tomlin J. said of sub-s. 7(4) of the Fine Arts Copyright Act (the terms of which are set out above): "I think that to satisfy the words 'knowingly to sell or publish any copies of such works 30 altered as aforesaid as or for the unaltered work of such author or maker.' there must be found a selling or publishing in conditions in which, to the knowledge of the seller or publisher, there is made, either expressly or by necessary implic- ation, a representation that the author is the author of the work sold or published in the form in which it is sold or published." Ido not think that by publishing and selling "Papunya" the respondents expressly or by implication represented that the applicant was its author in the form in which it was published and sold. "Papunva" was, after all, a cataloque consisting for the most part of reproductions of paintings. It was not a treatise on Aboriginal art or paintings. The reader of such a treatise might well assume that it 15 the author's unaltered WOrK, In the ansence of an indication to the contrary. But he would make no such assumption in respect of an art cataloque which does not contain the name of its author but merely states that it was edited by some person. The fact that a reader of "Papunya" would not regard it as being nécessarily the unaltered work of its editor is not conclusive on the question whether wara. 191(a) has been infringed since the purpose of the provision is to protect authors, not readers. Neverthéelesz 1t Torctiries my crinion that on the facts of the present cat nz breacn or para. 191(a) nas bean establisnead. 14, Moreover, I am not satisfied that the omission of the Introduction could in any way affect the applicant's reputation. Its omission does not diminish the quality of the work. It is true that "Papunya" without the Introduction is a minimally different work from "Mr Sandman Bring Me a Dream". But neither that circumstance, nor the alteration in the name of the work, would have a tendency to affect the applicant's reputation. For these reasons the application must be dismissed. The applicant must pay the respondents' costs. ENON CC (vs) I certify that this and the -- 'es are a Lrue cozy of the proced_nz } Keesar c hr. OUStICS 1L0741Ng. A at / he bees yee th, Associate Dated: Lb/ 617