Bureau Proberts Pty Ltd v Cottee Parker Architects Pty Ltd
[2023] FedCFamC2G 409
•19 May 2023
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Bureau Proberts Pty Ltd v Cottee Parker Architects Pty Ltd [2023] FedCFamC2G 409
File number(s): BRG 507 of 2022 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 19 May 2023 Catchwords: INTELLECTUAL PROPERTY – Practice and procedure – application for leave to file amended statement of claim – whether proposed amended statement of claim sufficiently pleads infringement of a substantial part of a work, being architectural drawings – whether it is necessary to plead facts to show that the substantial part of the work that is alleged to have been reproduced was an original work – no need to so plead if facts are pleaded that the work as a whole is an original work – leave to file an amended statement of claim granted. Legislation: Competition and Consumer Act 2010 (Cth) Sch 2, ss 18(1), 232
Copyright Act 1968 (Cth) ss 10(1), 13(1), 14(1), 31(1), 32, 35, 36(1), 115
Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) r 1.06
Federal Court Rules 2011 (Cth) rr 16.02(1), 34.35
Cases cited: Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd (1971) 20 FLR 481
Bartlett v Swan Television and Radio Broadcasters Pty Ltd [1995] FCA 1429; (1997) ATPR 41-434
Bruce v Odhams Press Ltd [1936] 1 KB 697
Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371
Communication, Electrical, Electronic, Energy, Information, Postal, Plumbing and Allied Services Union v Stanwell Corporation Ltd (No 2) [2014] FCA 593
Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19
Construction, Forestry, Mining and Energy Union v BHP Coal Pty Ltd [2017] FCAFC 50
Francis Day & Hunter Ltd v Bron [1963] Ch 587
IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
Letang v Cooper [1965] 1 QB 232
McKellar v Container Terminal Management Services Ltd [1999] FCA 1101; (1999) 165 ALR 409
Optical 88 Limited v Optical 88 Pty Ltd [2011] FCAFC 130
Seafolly Pty Ltd v Fewstone Pty Ltd [2014] FCA 321
SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466
Tamawood Limited v Henley Arch Pty Ltd [2004] FCAFC 78
Williams v Wilcox [1838] EngR 305; (1838) 8 Ad & E 314
Division: General Number of paragraphs: 56 Date of hearing: 2 May 2023 Place: Sydney Counsel for the Applicant: Mr C Curtis, by video Solicitor for the Applicant: HWL Ebsworth Lawyers Solicitor for the Respondent/Cross-Claimant: Ms A Yates of Moray & Agnew, by video Counsel for the Cross-Respondent: Mr M Martin KC, by video Solicitor for the Cross-Respondent: Mills Oakley ORDERS
BRG 507 of 2022 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: BUREAU PROBERTS PTY LTD (ACN 073 087 993)
Applicant
AND: COTTEE PARKER ARCHITECTS PTY LTD (ACN 010 924 106)
Respondent/Cross-Claimant
PCREW PROPERTY PTY LTD (ACN 630 013 035)
Cross-Respondent
order made by:
JUDGE MANOUSARIDIS
DATE OF ORDER:
19 May 2023
THE COURT ORDERS THAT:
1.The applicant have leave to file an amended statement of claim in the form of the proposed amended statement of claim that is item 3 of the index of the material on which the applicant relied at the hearing of its application for leave to file an amended statement of claim.
2.By 26 May 2023 the applicant file and serve the amended statement of claim.
3.The matter be listed for a directions hearing at 9:30 am on 9 June 2023.
4.The costs of the applicant’s application for leave to file the amended statement of claim are reserved.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION
On 17 November 2022 the applicant (BP) filed an application and a statement of claim in which it alleges the respondent (CPA) infringed the copyright BP claims it owns in certain architectural drawings (Final Commercial Concept Plans). BP also alleges that CPA had engaged in misleading or deceptive conduct, contrary to s 18(1) of the Australian Consumer Law (ACL).[1]
[1] Being Schedule 2 to the Competition and Consumer Act 2010 (Cth).
On 2 February 2023 CPA filed a defence in which it admits it received the Final Commercial Concept Plans from a Mr Martin. CPA, however, puts in issue BP’s allegations that copyright subsists in the Final Commercial Concept Plans, that BP is the owner of any copyright that may subsist in the Final Commercial Concept Plans, and that CPA reproduced or substantially reproduced the Final Commercial Concept Plans. CPA also puts in issue all of the alleged facts on which BP relies for claiming that CPA contravened s 18(1) of the ACL.
On 3 February 2023 CPA filed a statement of cross-claim against Pcrew Property Pty Ltd (PPL). CPA alleges that PPL had agreed to indemnify CPA against all claims from “the existing architect” in relation to the use of the Final Commercial Concept Plans; and, further, that Mr Martin had represented to CPA that PPL had fully paid BP for its services, and that PPL owned any copyright that subsists in the Final Commercial Concept Plans.
After it was served with the cross-claim, PPL, through its lawyers, entered into correspondence with BP’s lawyers in which PPL claimed the statement of claim was deficient in a number of ways. BP attempted to address the issues PPL identified by drafting and submitting to CPA and PPL proposed amendments to the statement of claim. PPL accepted that the proposed amendments addressed some, but not all of the issues PPL had raised. That led to BP filing an application for leave to file an amended statement of claim.
By the time BP’s application for leave to file an amended statement of claim came on for hearing, BP had provided to PPL a further draft of the proposed amended statement of claim (Proposed ASC). The Proposed ASC is item 3 of the bundle of documents BP prepared for the purpose of its application for leave to file an amended statement of claim.[2] PPL submits that BP should not be granted leave to file the Proposed ASC because paragraphs 35 and 35B of that document, together with annexure A on which those paragraphs rely, do not plead, or do not sufficiently plead, the facts necessary to support BP’s claim that CPA infringed BP’s copyright in the Final Commercial Concept Plans. Although not a question that arises on BP’s application for leave to file the Proposed ASC, PPL also submits that the form of injunction BP claims as a remedy for its claims under the ACL is hopelessly wide.
[2] I did not at the hearing mark BP’s bundle of documents. I have in chambers, however, marked BP’s bundle of documents as “MFI1”.
In these reasons for judgment, therefore, I consider whether paragraphs 35 and 35B of the Proposed ASC sufficiently plead allegations of infringement of the copyright BP claims it has in the Final Commercial Concept Plans. To be in a position to determine that question, it will be necessary to set out the allegations contained in the Proposed ASC.
Before I do so, I should note that CPA has not taken an active role in opposing BP’s application for leave to file the Proposed ASC. The opposition to BP’s filing the Proposed ASC has come from PPL, a party against which the Proposed ASC makes no allegations, and claims no relief. BP has not objected to PPL’s opposing its application because, I assume, BP accepts that, given the claim for indemnity that CPA makes against PPL in its cross-claim, there is a prospect PPL might assume the burden of defending the claims BP makes against CPA; and, for that reason, PPL has a direct interest in whether the Proposed ASC adequately pleads the causes of action on which BP relies.
PROPOSED ASC
Background
BP conducts a business which provides architectural services.
In about late June 2021 Mr Martin of Martin Brothers Pty Ltd (MB) informed Mr Liddy of BP that MB was interested in developing a property located in Fortitude Valley (Project), and that MB was interested in retaining BP to provide architectural services in relation to the Project. By email sent on 22 June 2021, Mr Martin requested BP to provide a fee proposal for architectural services for the Project.
On 1 July 2021 Mr Liddy sent by email to Mr Martin a package detailing an initial concept design for the Project for MB’s review and approval. Also on 1 July 2021 Mr Liddy sent to Mr Martin an initial fee proposal (Proposal) which set out the terms on which BP offered to provide architectural services in relation to the Project. Clause 4.6 of the Proposal provided:
“[C]opyright in all designs, documents and drawings prepared by [BP] …, shall on creation vest in and remain the property of [BP]”;
“[MB] is expressly licensed … to use the design in conjunction with construction of [the Project] on the site for which they were prepared” subject to certain conditions; and
“No other express or implied licence to [MB] or to any other party shall be construed to be granted by this Agreement”.
BP sent the Proposal to MB under cover of a letter addressed to Mr Martin which stated:
Our fee is prepared based on [BP] being retained as the architect for the full scope of the project. Should our services be discontinued throughout the process a license to use the design can be purchased for 20% of the remaining fee value.
On 4 July 2021 Mr Martin, both in a telephone conversation, and in an email, instructed BP to continue work in relation to the Project, and, by so doing, accepted the terms of the Proposal.
Between 4 and 6 July 2021 a number of BP’s employees (Design Team) worked to prepare documents; and by 6 July 2021 created a bundle of documents (Initial Commercial Concept Plans), which included several possible design options. These plans were presented to Mr Martin on 6 July 2021; and, by email sent to Mr Martin on 6 July 2021, Mr Liddy: provided to Mr Martin a Dropbox link to the Initial Commercial Concept Plans that had been discussed at the meeting of 6 July 2021; acknowledged Mr Martin’s instructions that he preferred the “stepped” option; and acknowledged Mr Martin’s instructions to provide the Initial Commercial Concept Plans to “Urbis”.
By the end of 15 July 2021 the Design Team had completed the drawings and plans (these being the “Final Commercial Concept Plans” I defined at the beginning of these reasons) for a pre-lodgement meeting with Brisbane City Council (Council); and, on the same day, Mr Liddy sent these plans to Mr Martin by email. On 19 July 2021 Mr Proberts and Mr Gibbons, on behalf of BP, attended a pre-lodgement meeting with Mr Martin, representatives of the Council, and other consultants MB had engaged in relation to the Project, at which the Final Commercial Concept Plans were presented to the Council representatives.
On 31 July 2021 BP issued an invoice to MB claiming the amount of $15,000 plus GST for the work BP had performed. Between 6 August 2021 and approximately 3 September 2021 Mr Liddy and Mr Martin engaged in discussions, and communicated by email and telephone in which Mr Martin sought to renegotiate the terms of the Proposal. On 7 September 2021 Mr Martin informed Mr Liddy by telephone that MB had engaged another firm of architects for the Project.
Subsistence of copyright
Each of the Final Commercial Concept Plans (as a bundle), and the individual images or drawings within the Final Commercial Concept Plans, is an artistic work in which, pursuant to s 32 of the Copyright Act 1968 (Cth) (Copyright Act) copyright subsists (Copyright Works); and BP is the owner of each of the Copyright Works pursuant to s 35(6) of the Copyright Act.
Unauthorised reproduction of the Copyright Works
On 3 September 2021, CPA provided to Mr Martin a fee proposal (CPA Proposal) in relation to the provision of architectural services for the Project. The CPA Proposal contained a term that CPA would be fully indemnified against all claims by MB “from the existing architect in regards to use of design and CAD drawings provided to” CPA. On 7 September 2021 Mr Martin sent by email the Final Commercial Concept Plans to CPA.
On a date unknown to BP, but before 6 December 2021, CPA produced a bundle of images and drawings which, on 6 December 2021, were lodged with the Council as part of a development application for the Project (DA Plans). CPA had access to, and relied on, the Copyright Works when preparing the DA Plans. The DA Plans “reproduced a substantial part of one or more of the Copyright Works” set out in annexure A to the Proposed ASC. (I will set out later the contents of annexure A.)
In the period up to about 18 February 2023 CPA prepared an amended version of the DA Plans (Amended DA Plans) that incorporated a bundle of drawings, and the Amended DA Plans were lodged with the Council on about 18 February 2023. The Amended DA Plans reproduce a substantial part of one or more of the Final Commercial Concept Plans.
Annexure A
BP contends that the infringing acts on which it relies are set out in annexure A to the Proposed ASC. It will be necessary to describe in a little detail the contents of annexure A.
Annexure A is titled “Schedule of reproduced parts of drawings”; and it describes what it purports to convey as follows:
The Applicant relies on the following schedule to identify the visual elements or features in the Copyright Works that are reproduced in the DA Plans and Amended DA Plans. Where the rows identify groups of drawings, the matters stated in relation to reproduction are applicable to each drawing and the Applicant relies on the matters as being common to the drawings.
A copy of the drawings referred to in Annexure A are contained in Annexure B to this pleading, which incorporate extracts of the drawings contained in the Copyright Works, DA Plans and Amended DA Plans in the order set out in Annexure A for comparison purposes.
There then follows a table with six columns, and ten rows.
(a)The first column is headed “Category”, under which appear descriptions of two classes of things. The first class is described as “3D views, elevations and sections”; and the second class of things are “Floor plans” which, in turn, comprise seven sections of the building depicted by plans.
(b)The second column is headed “Row No.”, and contains 10 consecutive numbers. Each of the first three numbers identify pages from each of the Final Commercial Concept Plans, DA Plans, and Amended DA Plans that answer the description “3D views, elevations and sections”. Each of the remaining numbers identifies a separate floor plan described in the first column.
(c)The third, fourth, and, fifth columns are respectively headed “Final Commercial Concept Plans”, “DA Plans”, and “Amended DA Plans”, under which appear references to the page numbers of each of the three documents. A copy of each of the pages identified in these columns forms annexure B to the Proposed ASC.
(d)The sixth column is headed “Reproduced elements or features”. The information under this heading purports to identify the part or parts of the pages of the Final Commercial Concept Plans identified in the third column that are alleged to have been reproduced (alleged original material), and the part or parts of the pages of the DA Plans and the Amended DA Plans identified in the fourth and fifth columns respectively which contain what are alleged reproductions of the alleged original material.
It would be useful to set out two entries that appear in column 6 of annexure A. The first relates to the documents identified in rows 1, 2, and 3, being “3D views, elevations and sections”:
Reproduction of the visual features or elements in the Final Commercial Concept Plans of the stepped façade and planter box arrangement, degree of façade setback, proportion of planter boxes across building faces, expression of multi-storey void space, configuration of planters providing for installation of trees, and expression of grass and planting in drawings.
Reproduced in the parts of the 3D views and elevation drawings depicting the third to ninth floor of building.
Reproduced in the “Sections” drawings in relation to the tower levels (third floor and above, not including roof).
The second example relates to the floor plans identified in row 9, being the “Tower mid-level – Level 3 to Tower mid-level – Level 9”:
Reproduction of visual features or elements of consistent stepping façade between floors and arrangement of planters and glazing lines varying up the building face comprising central design element of tower.
Reproduced in the corresponding drawings in the layout depicted with minor variations not altering overall visual effect.
Breach of s 18 of the ACL
After alleging matters consequential to the allegations that CPA has infringed its copyright, BP alleges that CPA has engaged in misleading or deceptive conduct, contrary to s 18 of the ACL. The elements of that claim are as follows:
(a)The DA Plans and the Amended DA Plans are marked “COTTEEPARKER” in large font on the top left of the first page, and at the bottom left of each subsequent page; and the DA Plans carry the endorsement “© Cottee Parker 2021”.
(b)The statements referred to in (a) amount to representations (Representations) that:
(i)CPA is the sole author of the DA Plans, or that employees of CPA are the sole authors of the DA Plans and the Amended DA Plans; and
(ii)CPA is the sole owner of the copyright subsisting in the DA Plans.
(c)Both Representations are false, and misleading or deceptive, or likely to mislead or deceive because the designs shown in the DA Plans and the Amended DA Plans reproduce substantial parts of drawings authored by BP’s employees.
(d)The Representations were made in trade or commerce to the Council and the public at large.
On the basis of these allegations, BP claims in its originating application an “injunction, pursuant to s 232 of the ACL restraining [CPA] from continuing to make the Representations”.
PARTIES’ SUBMISSIONS
PPL’s submissions
In relation to paragraphs 35 and 35B of the Proposed ASC, PPL submits as follows:
(a)BP’s relying on the matters stated in annexure A to the Proposed ASC does not comply with r 16.02(1)(a) of the Federal Court Rules 2011 (Cth) (FC Rules), which requires that a pleading be divided into consecutively numbered paragraphs, each dealing with a separate matter.[3]
(b)In any event, annexure A is “plainly insufficient”. BP is required, but fails, to plead with respect to each alleged infringement:
(i)the particular act or acts on which BP relies to make good the infringement, and the manner in which each copyright work on which BP relies is alleged to have been infringed;[4] and
(ii)the material facts to establish the originality of the part that is said to have been reproduced, and how that part is an essential or material feature of the alleged copyright works because to copy an unoriginal part of a copyright whole is not an infringement.[5]
(c)Each of the elements BP describes in each of the rows that appear in column 6 of annexure A must be pleaded separately, together with sufficient material facts to establish that such features are “essential or material” features of the work.[6]
(d)Many of the expressions contained in annexure A lack the requisite degree of precision or are hopelessly wide, with the consequence that it begs the question of how copyright may exist in the matter described.[7]
(e)Many of the features of the Final Commercial Concept Plans BP alleges CPA copied are commonplace; but CPA using a commonplace component of a work would not infringe copyright.[8]
[3] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [9]
[4] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [10], relying on BCI Media Pty Ltd v Corelogic Australia Pty Ltd [2022] FCA 1128, at [58] (Yates J)
[5] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [12], relying on BCI Media Pty Ltd v Corelogic Australia Pty Ltd [2022] FCA 1128, at [40] (Yates J)
[6] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [14]
[7] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [15], [16]
[8] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [17]
In relation to the injunction BP claims under s 232 of the ACL, PPL submits the Amended DA Plans which are said to have reproduced copyright material have already been lodged with the Council, and BP’s application for an injunction begs the question how CPA’s name can now be removed. Further, the injunction does no more than order CPA not to breach the ACL.[9]
[9] Cross-respondent’s Submissions on Leave to Amend the Statement of Claim, [20]
BP’s submissions
BP submits it is not necessary to plead in relation to each portion of the Final Commercial Concept Plans annexure A identifies as having been reproduced in the DA Plans and the Amended DA Plans that that portion is an original element. BP submits that, whether CPA infringed the copyright it alleges subsists in the Final Commercial Concept Plans, turns on comparing, on the one hand, the cumulative effect of each of the portions of the DA Plans and the Amended DA Plans BP alleges reproduces elements of the Final Commercial Concept Plans, and the cumulative effect of each of the elements of the Final Commercial Concept Plans BP alleges CPA reproduced in the DA Plans and the Amended DA Plans. BP particularly relies on the following passage which the Full Federal Court quoted with approval in Optical 88 Limited v Optical 88 Pty Ltd:[10]
At the end of the day, the only question that arises is whether the first respondent’s logo is a reproduction of the applicant’s logo or of a substantial part of it: ss 14(1), 31(1)(a) and 36 of the Copyright Act. This involves a comparison of the two works and the formation of a judgment based on the eye as to the degree of resemblance between the two. The degree of resemblance must be such that, to the eye, the first respondent’s logo reproduces, or reproduces a substantial part of, the applicant’s logo.
[10] Optical 88 Limited v Optical 88 Pty Ltd [2011] FCAFC 130, at [111] (Cowdroy, Middleton, and Jagot JJ). BP relies on Seafolly Pty Ltd v Fewstone Pty Ltd [2014] FCA 321, particularly at [278]-[279].
BP also submits that PPL’s objections to BP’s setting out material facts in annexure A is an objection as to form which may be overcome by the Court ordering that r 16.02(1)(a) of the FC Rules not apply to annexure A.
As for PPL’s objection to BP’s claiming an injunction under s 232 of the ACL, BP submits the injunction it seeks extends beyond the lodgement of the Amended DA Plans, and is not unnecessarily wide.
Determination
The determination of the parties’ competing submissions turns on, first, identifying the elements of a cause of action for infringement of copyright based on reproducing a substantial part of a work; second, identifying the relevant rules of pleading, and, third, determining whether BP has sufficiently pleaded such facts.
ELEMENTS OF A CAUSE OF ACTION FOR INFRINGEMENT OF COPYRIGHT
Copyright is a set of exclusive rights created by the Copyright Act in relation to different types of subject matter. The subject matter that is relevant to the application before me is original literary, dramatic, musical, or artistic works (works).
The Copyright Act identifies what constitutes a work,[11] the rights (copyright) that are capable of subsisting in a work,[12] the circumstances in which copyright first subsists in a work,[13] the person who is the owner of the copyright when the copyright first subsists,[14] and the circumstances in which a person infringes the copyright in a work.[15]
[11] Copyright Act, s 10(1)
[12] Copyright Act, s 31(1)
[13] Copyright Act, s 32
[14] Copyright Act, s 35
[15] Copyright Act, s 115(1); s 36(1)
Relevant to the application before me is the right created by s 31(1)(a) of the Copyright Act, namely, the exclusive right “to reproduce the work in a material form” (reproduction right). The notion of “reproduction” for the purposes of the Copyright Act “means copying”; it “does not include cases where an author . . . produces a substantially similar result by independent work without copying”.[16]
[16] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, at page 276 (Lord Reid), referred to with approval by Gibbs CJ in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, at page 472.
The notion of “reproduction” has been described in a slightly more elaborate way: it “involves two elements – resemblance to, and actual use of, the copyright work”.[17] It has also been said that “reproduction” requires “a sufficient degree of objective similarity between the two works”, and “some causal connection between the plaintiffs’ and the defendants’ work”.[18] These explanations of the meaning of “reproduction” imply that the “reproduction” of a work does not require proof that an exact copy of the work has been made:[19]
The decision upon the issue of similarity is an original decision for the court itself. It is to be reached upon an assessment of such similarities and dissimilarities as appear to the court between the plans or buildings under consideration.
[17] SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, at page 472
[18] Francis Day & Hunter Ltd v Bron [1963] Ch 587, a page 614 (Willmer LJ), referred to with approval by Gibbs CJ in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, at page 472.
[19] Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd (1971) 20 FLR 481, at page 490
The owner of copyright may bring an action for the infringement of copyright against a “person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright”.[20] The expression “act comprised in the copyright in a work or other subject-matter” is to be read “as a reference to any act that, under this Act, the owner of the copyright has the exclusive right to do”.[21] The act comprised in the reproduction right is the reproduction of the work in a material form. This also includes the reproduction “of a substantial part of the work”. That follows from s 14(1) of the Copyright Act, which provides that a reference to “a reproduction . . . of a work shall be read as including a reference to a reproduction . . . of a substantial part of the work”.[22] Thus, a person will infringe the copyright in a work if the person, not being the owner and without the licence of the owner, reproduces, or authorises another person to reproduce, a “substantial part” of the work.
[20] Copyright Act, s 115(1); s 36(1)
[21] Copyright Act, s 13(1)
[22] Copyright Act, s 14(1)
What amounts to the reproduction of a “substantial part” of a work in any case “cannot be defined in precise terms but must be a matter of fact and degree”.[23] There is, however, an overarching criterion that is applied to determining whether a substantial part of a work has been reproduced; and that criterion has often been described by the word “quality”. It is “necessary to consider not only the extent of what is copied: the quality of what is copied is critical”.[24] Here, “quality” has been used to direct attention to at least two overlapping questions. The first is whether that which has been reproduced is “an important or material part of the [copyright owner’s] work”.[25] The second is whether that which has been reproduced is “original” within the meaning of s 32 of the Copyright Act. The following is an authoritative statement of the meaning of “original” for the purposes of s 32 of the Copyright Act:[26]
The expression “original” in that section does not mean that the work must be the expression of original or inventive thought. “The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author”: University of London Press, Limited v. University Tutorial Press, Limited, at pp.608-609 and see Sands & McDougall Proprietary Ltd. v. Robinson [1917] HCA 14; (1917) 23 C.L.R. 49 and Victoria Park Racing and Recreation Ground Co. Ltd. v. Taylor, at p.511. Originality is a matter of degree, depending on the amount of skill, judgment or labour that has been involved in making the work: see Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., at pp.277-278, 282, 285; pp.469, 473, 475 of All E.R.
[23] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, at page 283 (Lord Evershed), referred to with approval by Gibbs CJ in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, at page 472.
[24] IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, at [30] (French CJ, Crennan and Kiefel JJ)
[25] Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371, at [37] (Heerey, Sundberg and Finkelstein JJ)
[26] Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19, at [11] (Gibbs CJ)
The relevance of the originality of the work that has been reproduced to whether a substantial part of the work has been reproduced was explained by Lord Pearce in Ladbroke (Football) Ltd v William Hill (Football) Ltd:[27]
Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that “there is no copyright” in some unoriginal part of a whole that is copyright.
[27] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, at page 293
In Tamawood Limited v Henley Arch Pty Ltd Wilcox and Lindgren JJ, after quoting this passage, noted that “Lord Pearce’s dictum identifies only that which is not a substantial part, but it suggests that in order to be a substantial part, a part must be at least ‘original’”.[28] The fact, however, that the part of the work that is reproduced “originates from the author . . . does not, of itself, mean that it is necessarily a substantial part of the whole work”.[29]
WHAT MUST BE PLEADED
[28] Tamawood Limited v Henley Arch Pty Ltd [2004] FCAFC 78, at [51] (emphasis in original)
[29] IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, at [38]
General principles
A statement of claim filed in this Court must comply with the rules of pleading provided for by the FC Rules.[30] The principal rule is r 16.02(1)(d) of the FC Rules, which provides that a pleading:
state the material facts on which a party relies that are necessary to give the opposing party fair notice of the case to be made against that party at trial, but not the evidence by which the material facts are to be proved . . .
[30] Under r 1.06 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth), most of the rules of pleading contained in Part 16 of the FC Rules apply to “general federal law proceedings” in the Federal Circuit and Family Court of Australia (Division 2).
The expression “material facts”, when used in relation to a statement of claim, are facts whose existence is “necessary for the purpose of formulating a complete cause of action”.[31] A “cause of action”, in turn, has been defined as “a factual situation the existence of which entitles one person to obtain from the court a remedy against another person”.[32]
[31] Bruce v Odhams Press Ltd [1936] 1 KB 697, at page 712 quoted with approval by the Full Federal Court in Construction, Forestry, Mining and Energy Union v BHP Coal Pty Ltd [2017] FCAFC 50, at [53].
[32] Letang v Cooper [1965] 1 QB 232, at pages 242-243
Material facts are distinguished from a number of other things. One is the evidence by which material facts are to be proved. Paragraph (d) of r 16.02(1) of the FC Rules requires that a pleading state the “material facts”, not the evidence by which the material facts are to be proved. This repeats a very old rule of common law pleading. Speaking of an allegation made in a declaration, Lord Denman CJ said “[i]t is an elementary rule in pleading, that, when a state of facts is relied on, it is enough to allege it simply, without setting out the subordinate facts which are the means of producing it, or the evidence sustaining the allegation”.[33]
[33] Williams v Wilcox [1838] EngR 305; (1838) 8 Ad & E 314, at page 863
The second thing from which material facts are distinguished are “conclusions drawn from unstated facts”.[34] That expression denotes two classes of conclusion. One is a conclusion that alleges the legal rule or an element of the legal rule on which the applicant relies applies to a given set of facts without identifying some or all of the facts on which such conclusion is said to be based. It is not permissible to allege such conclusions without alleging the facts on which such conclusions are based.[35]
[34] Communication, Electrical, Electronic, Energy, Information, Postal, Plumbing and Allied Services Union v Stanwell Corporation Ltd (No 2) [2014] FCA 593, at [12]
[35] McKellar v Container Terminal Management Services Ltd [1999] FCA 1101; (1999) 165 ALR 409, at [23]
The second class of conclusions it is impermissible to allege without also identifying the facts on which they are based are often referred to as “conclusory” words or statements. These are statements or facts whose meaning depends on a word or words that denote other facts that support the conclusion. The meaning of conclusory words, therefore, cannot be ascertained, or ascertained with sufficient certainty, without the facts that support the conclusion also being stated. Examples of conclusory words include “false”, “sham”, “purported”, “sufficient”, “reasonable”, “agree”, and “representation”. By pleading conclusory words without stating the underlying facts, a respondent will not be alerted, or sufficiently alerted, to the case the respondent has to meet. For that reason, such pleading is likely to “cause prejudice, embarrassment or delay in the proceeding”,[36] where “embarrassment”:[37]
carries the connotation of a pleading which is susceptible to various meanings, or contains inconsistent allegations or in which alternatives are confusingly intermixed or in which irrelevant allegations are made tending to increase expense.
[36] FC Rules, r 16.02(2)(d)
[37] Bartlett v Swan Television and Radio Broadcasters Pty Ltd [1995] FCA 1429; (1997) ATPR 41-434, at [25]
In addition to these general principles there is r 34.35 of the FC Rules, which provides:
A person who wants relief for an infringement of copyright under the Copyright Act must file an originating application that includes particulars of the infringement:
(a) specifying the manner in which the copyright is alleged to be infringed; and
(b) giving at least one instance of each type of infringement alleged.
Material facts in an action for copyright infringement based on reproduction of substantial part
The material facts that must be pleaded in relation to an action for infringement of copyright based on the reproduction of a substantial part of a work may now be stated. First, the applicant must state facts that identify the work and the author or authors of the work, and facts on which the applicant relies for alleging that the work is an original work. These requirements will ordinarily be satisfied by the applicant stating facts that specify when, where, and the circumstances in which what is alleged to be a work came into being.
Second, the applicant must identify each part of the work (part work) it is alleged constitutes a substantial part of the work, and which it is alleged has been reproduced in a material form by the respondent. Contrary to PPL’s submission, it is not necessary to allege, in relation to the part work, facts relevant to show that the part work is original. Under s 32(1) of the Copyright Act copyright subsists “in an original . . . work”, not in part of a work. Originality, therefore, is an element of the creation of a work, viewed as a whole; it is not an element of the creation of a part of a work. A statement of claim need only state facts on which the applicant relies for alleging the work is an original work.
Where, then, an applicant has sufficiently pleaded facts that a work is an original work, and has identified the part work the applicant alleges the respondent has reproduced and which the applicant alleges constitutes a substantial part of the work, the respondent has sufficient notice that the applicant alleges that the part work is original. The position may be different if the applicant intends to rely on matters in addition to originality for alleging that the part work is a substantial part of the work. If, for example, the applicant intends to rely on the allegation that the part work is an important or material part of the work, the applicant may need to state a fact to that effect, and identify the facts on which the applicant relies for claiming that the part work is an important or material part of the work and, for that reason, constitutes a substantial part of the work.
Third, the applicant should identify the work (copy work) the applicant alleges constitutes the reproduction in a material form of the part work, and the acts by which the respondent so reproduced, or the respondent authorised another person to reproduce, the part work. Where the applicant intends to allege that the copy work contains an exact copy of the part work, the applicant should identify that part of the copy work it is alleged constitutes an exact copy of the part work. Where, however, the applicant intends to allege the copy work possesses a sufficient degree of objective similarity with the part work, the applicant will usually be required to do no more than identify those parts of the copy work the applicant alleges possess a sufficient degree of objective similarity with the part work.
DOES THE PROPOSED ASC SUFFICIENTLY PLEAD INFRINGEMENT?
BP does not, in annexure A to the Proposed ASC, allege that any part of the DA Plans or the Amended DA Plans constitute an exact copy of any part of the Final Commercial Concept Plans. BP instead identifies in annexure A, on the one hand, the parts of the Final Commercial Concept Plans BP alleges constitute a substantial part of those plans; and, on the other hand, the parts of the DA Plans and the Amended DA Plans BP alleges possess a sufficient degree of objective similarity with the parts of the Final Commercial Concept Plans BP has already described. In particular, annexure A:
(a)describes in each of the rows under the column headed “Final Commercial Concept Plans” those parts of the Final Commercial Concept Plans BP alleges constitute a substantial part of the Final Commercial Concept Plans; and
(b)describes in each of the rows in the fourth and fifth columns respectively those parts of the DA Plans and the Amended DA Plans BP alleges possess a sufficient degree of objective similarity with the parts of the Final Commercial Concept Plans annexure A describes in the corresponding rows under the column headed “Final Commercial Concept Plans”.
The descriptions contained in annexure A of the relevant parts of the Final Commercial Concept Plans, the DA Plans, and the Amended DA Plans give sufficient notice to CPA of the matters on which BP relies in support of its allegation that CPA reproduced a substantial part of the Final Commercial Concept Plans. It may be that CPA and PPL may be entitled to require BP to describe with greater precision the relevant parts of the Final Commercial Concept Plans, the DA Plans, and the Amended DA Plans. If CPA or PPL require BP to describe with greater precision the parts of the Final Commercial Concept Plans, DA Plans, and Amended DA Plans annexure A describes, CPA and PPL could seek such precision by requesting further particulars. It is likely, however, that any uncertainty about the precise scope of the descriptions contained in annexure A could more easily, and with greater efficacy, be addressed by representatives of the parties meeting in a room or virtually with a view to marking on a copy of the Final Commercial Concept Plans, DA Plans, and Amended DA Plans each portion of the plans BP contends is denoted by each description contained in annexure A.
I next turn to PPL’s submissions that BP has failed to comply with r 16.02(1)(a) of the FC Rules, which requires that a pleading be divided into consecutively numbered paragraphs, each dealing with a separate matter. PPL’s submission assumes that the matters stated in annexure A constitute distinct matters. I am not prepared to accept that assumption. It is arguable that the matters stated in annexure A form part of the matters covered by each of paragraphs 35 and 35B of the Proposed ASC. It is not necessary, however, to reach a conclusion on that question. Even if annexure A does not comply with r 16.02(1)(a) of the FC Rules, it is a more convenient, and clearer, way for BP to identify: the parts of the Final Commercial Concept Plans it alleges constitutes a substantial part of the plans which it alleges CPA had reproduced; the parts of the DA Plans, and the parts of the Amended DA Plans it alleges possess objective similarities with the parts of the Final Commercial Concept Plans it identifies; and, therefore, the facts on which BP relies for alleging that the DA Plans and the Amended DA Plans reproduce a substantial part of the Final Commercial Concept Plans.
I am satisfied that paragraphs 35 and 35B of the Proposed ASC, together with annexure A on which these paragraphs rely, sufficiently plead the facts on which BP relies for alleging that CPA has infringed a substantial part of the Final Commercial Concept Plans.
INJUNCTION
There may be some merit in PPL’s submissions in relation to the appropriateness of the form of injunction BP claims in support of its causes of action based on s 18(1) of the ACL. It is not suggested, however, that my determining now the appropriateness of the injunctive relief BP claims will have any bearing to the issues that will be litigated in this case. For that reason, there would be no utility in considering at this stage of the proceeding the appropriateness of the injunctive relief BP will be seeking, if it succeeds on its causes of action based on s 18(1) of the ACL.
DISPOSITION
I propose to order that BP have leave to file an amended statement of claim in the form of the Proposed ASC, that it do so within seven days from the day on which I pronounce my orders, and that the matter be listed for directions three weeks after the day on which I pronounce my orders. I will reserve the question of costs.
I certify that the preceding fifty-six (56) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 19 May 2023
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