Collier Constructions Pty Ltd v Foskett Pty Ltd

[1991] FCA 130

Re: COLLIER CONSTRUCTIONS PTY LTD
And: FOSKETT PTY LTD
No. WA G123 of 1990
FED No. 130
Copyright
(1991) AIPC 90-803
20 IPR 666

COURT

IN THE FEDERAL COURT OF AUSTRALIA

WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Lochart(1), French(1) and Hill(1) JJ.

CATCHWORDS

Copyright - Infringement - Whether substantial part taken - Plans for project houses.

Copyright Act 1968

HEARING

PERTH

#DATE 5:4:1991

Counsel for the Appellant: Mr A.C. Archibald Q.C. and Mr R.J.L. McCormack

Solicitors for the Appellant: Parker and Parker

Counsel for the Respondent: Mr M.L. Bennett

Solicitors for the Respondent: Bennett and Co.

ORDER

The appeal be dismissed.

The appellant pay the costs of the respondent of the appeal.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This appeal from the judgment of a single Judge of the Court (Gummow J.) concerns copyright in plans for project houses. At the trial the issues were in a larger compass than on the appeal, relating to questions of contravention of s.52 of the Trade Practices Act 1974 and breach of contract, in addition to infringement of copyright in the plans.

1. The learned trial Judge found that the respondent, Foskett Pty Limited, had contravened s. 52 of the Trade Practices Act in causing the publication of certain advertisements and that it had broken its contract with the appellant, Collier Constructions Pty Ltd; but his Honour found that the respondent had not infringed the appellant's copyright in the plans. The appeal to this Full Court was confined to the copyright issue.

2. The relevant facts are stated fully by Gummow J. in his reasons for judgment and it is only the essential facts relating to the copyright issue that need to be mentioned.

3. The appellant carries on the business of building project houses in Western Australia under the business name "Collier Homes". Collier Homes markets a range of project houses including two houses known as the "Price Fighter 201" and its "Price Fighter 210". The respondent also builds project houses, carries on business as "Champion Homes" and is a competitor of the appellant. The copyright dispute concerns the use made by the respondent of the appellant's plans for the Price Fighter 201 and the Price Fighter 210 in the advertising for the respondent's "Venus" and "Thor" houses respectively. It was conceded by the respondent at the trial that copyright subsisted in the floor plans and electrical plans for the "Price Fighter 201 and 210 houses" and that the title to the copyright was vested in the appellant. The copyright dispute was confined at the trial and on appeal to the question of infringement.

4. The case arose out of the publication on 4 August 1990 in the "New Homes Liftout" section of "The West Australian" newspaper, of an advertisement placed by the respondent ("the first advertisement") which compares the Price Fighter 201 and the "Venus" in price and size.

5. On 11 August 1990 the respondent caused to be published in the "New Homes Liftout" section of The West Australian an advertisement which followed the same format as that of the first advertisement but compared the Price Fighter 210 and the "Thor" ("the second advertisement").

6. In both advertisements the words "BIGGER HOMES LESS COST" are prominently displayed together with the heading "CHAMPION WIN SIZE WAR". The words "AND PRICE" appear in smaller print across one corner of the word "SIZE". A copy of each advertisement is attached to these reasons for judgment; but the shaded area, to which reference shall be made later, is depicted more clearly and sharply in the actual publication than in the attachment.

7. On 4 and 11 August 1990 the respondent caused to be printed, published and distributed promotional pamphlets which reproduced with no material variation the first and the second advertisements.

8. In the first advertisement there appears a floor plan for the respondent's "Venus" house which it claims to be "up to 30% bigger" than the Collier's "Price Fighter 201". Giving the appearance of super-imposition upon the plan of the "Venus" house is what the advertisement describes as a "grey area" representing the area of the Price Fighter "201" on the same scale as the "Venus". The comparison is said to offer "proof that you get more area for your money from Champion". A "grey area" is also used in the second advertisement for the comparison between the "Price Fighter 210" and the "Thor". The grey area used in the first advertisement is basically a rectangular shape with a small excision from the bottom right-hand corner cut at an angle of 90 degrees. The grey area as depicted in the second advertisement shows what is basically an L-shaped house with certain differences which appear from the advertisements themselves and can be seen by looking at the copies of them annexed to these reasons. It is common ground that in so far as the advertisements depict a grey area representing the "Price Fighter 201" and the "Price Fighter 210" they were derived from the appellant's floor plans and electrical plans in which copyright subsists and is vested in the appellant.

9. The floor plan for the "Price Fighter 201" shows a three bedroom house with a combined living room and "country kitchen". An area for a front porch is excised from the front right-hand corner of the plan. The plan indicates that the porch would be supported probably by a brick pillar. There is provision for eight windows and a back entrance as well as an entrance from the front porch. From the kitchen sink there is a view out the front window nearest the porch.

10. The floor plan for the "Price Fighter 210" shows a larger and more expensive house than the 201. It depicts a four bedroom house with a living area separate from the kitchen and dining areas. The kitchen is at the back of the house and the laundry opens off the kitchen. The plan provides for ten windows and front and back doors. The front of the house presents a "stepped" appearance which some of the experts who gave evidence described as a variant of an L-shape. There are protrusions at the side and rear of the house for the laundry and kitchen areas.

11. The issue on copyright infringement before his Honour was whether the respondent reproduced the artistic works (that is the plans of the "Price Fighter 201" and "Price Fighter 210") in a material form: Copyright Act 1968: s. 31(1)(b)(i). The trial judge correctly said that the reference to reproduction is to be read as including a reproduction of a substantial part of the artistic work: s.14(1)(b).

12. His Honour noted that the central issue on the copyright branch of the case was whether the respondent, by using the "grey areas" in the two advertisements, had reproduced in a material form a substantial part of the appellant's plans.

13. His Honour reviewed the relevant principles governing reproduction in a material form of a substantial part of an artistic work and referred to the leading authorities on the question including Ladbroke (Football) Limited v William Hill (Football) Limited (1964) 1 WLR 273; S.W. Hart and Co. Proprietary Limited v Edwards Hot Water Systems (1985) 159 CLR 466; and Dixon Investments Pty Limited v Hall (1990) 18 IPR 490.

14. Evidence was given at the trial by experts called by each party and was led relevantly without objection. It is unnecessary for us to refer to this evidence. Certain of it was referred to by his Honour in his reasons for judgment, though it is plain that, as the plans were not in his opinion (an opinion which we share) of any real complexity, assistance afforded to the Court by evidence of this kind by persons versed in the reading of plans, in looking for similarities and dissimilarities, is limited.

15. His Honour compared the "grey areas" appearing in the two advertisements with the plans of the appellant and concluded that in his view there had been no reproduction in either advertisement of a substantial part of the appellant's artistic works for the "Price Fighter 201" and "Price Fighter 210".

16. His Honour dealt with certain defences proffered by the respondent on the assumption that the appellant had made out its case of infringement because the matter was fully argued before him. One of those defences contended that if the publication of the two advertisements infringed the appellant's copyright, the infringement was excused at law as a matter of "public interest". A defence of "public interest" in copyright infringement cases has been considered by Australian and English courts as well as the courts of other countries. His Honour considered certain of these decisions and concluded that there was no warrant for the introduction of such a concept into the law of Australia. The question of "public interest" as a defence was not in issue or raised before us in argument. We shall therefore say nothing about it except that we must not be taken as agreeing or disagreeing with the reasons and conclusions of Gummow J. on this point. The critical question is whether the respondent reproduced in material form a substantial part of the two plans of the appellant.

17. In determining whether what is taken is a substantial part of the copyright work various circumstances are relevant. The importance which the alleged substantial part bears in relation to the work as a whole is a significant matter. If it is a material part, even though it may be only a small part of it in quantity, it may nevertheless be substantial: Blackie and Sons Limited v The Lothian Book Publishing Company Proprietary Limited (1921) 29 CLR 396. It is well established that the phrase "substantial part" refers essentially to the quality, rather than the quantity, of what is taken by the infringer: see Ladbroke, per Lord Reid at 276; Hart per Gibbs C.J. at 472 and the other cases collected in the judgment of the Full Court of this Court in Dixon Investments at 494. It is always a question of judgment in each case whether the part taken from the work in which copyright subsists is a substantial part of the work: Hart. It is plain that the question of what is a substantial part of a work may involve fine questions of fact and degree.

18. As was pointed out by the Full Court of this Court in Dixon at 496:
    

"The Courts are less ready to find infringement when the subject matter of the work in which copyright subsists and its representation are of a simple and straightforward nature. This is well illustrated by Kenrick and Co. v Lawrence and Co. (1890) 25 QBD 99."

Kenrick was a case where the plaintiff claimed copyright in a card depicting a representation of a hand holding a pencil in the act of completing a cross within a square for the purpose of guiding illiterate voters in the marking of ballot papers.

1. In the present case the claim for copyright subsists in the case of the "Price Fighter 201" in what is substantially a rectangle and in the case of the "Price Fighter 210" what is largely an L-shape. It is also important to note that the "grey areas" appearing in the two advertisements reveal the perimeter of each floor plan, but nothing about the particular arrangement of windows and doors and the division of internal areas between various rooms. The super-imposition of the "grey areas" over the "Venus" and "Thor" houses of the respondent is over the respondent's plans of those houses, not the appellant's plans of its houses.

2. The particular passage from Gummow J.'s judgment which was at the heart of the submissions of counsel for the appellant is as follows:
   

"I have compared the grey shapes appearing in the first advertisement and the second advertisement with the respective plans of the applicant. I give weight to the consideration that the perimeter is a significant element in each plan, but I also give weight to the consideration that the perimeter is disclosed in the plans in relation to the floor plans as a whole. The plans as a whole include, in particular, the arrangements of windows and doors and the division of the internal area between various rooms, with spaces indicated, and the locations of sinks and tubs, the bath, and various cupboards and domestic appliances. From the grey shapes, none of these important features are disclosed. I am satisfied that, even with the information from each advertisement that one would be aiming at designing a three or four bedroom house comparable with the relevant Champion house shown in the advertisement, nevertheless in each case one might devise various arrangements of the features of internal configuration. There is no indication in the first advertisement of the pillar to hold up the porch for the Price Fighter 201, or, indeed, that the excised portion of the rectangular shape represents a porch. In my view, there has been no reproduction in either advertisement of a substantial part of the applicant's artistic works for the Price Fighter 201 and the Price Fighter 210. I would decide issue (1) (i.e. infringement of copyright) against the applicant."

1. It was submitted on behalf of the appellant that the trial Judge erred by considering whether there was "substantial similarity overall", by comparing the whole of the 'grey area' with the whole of the copyright work and treating as relevant "the existence of dissimilarities (the non-disclosure in the "grey areas" of various features in the overall copyright work such as the internal configuration)."

2. It was also submitted on behalf of the appellant that the trial Judge "wrongly combined the separate question of reproduction with the question of substantiality" and that, having correctly found that the perimeter is "a significant element in each plan", he should have held that the perimeter was a substantial part of the copyright work and accordingly that there was infringement.

3. It was also argued by counsel for the appellant that the reasons why the perimeter lines constitute a substantial part of the two plans include the following:
   

"(a) there was a critical inter-relationship and inter-dependence between the configuration of the peripheral lines and the internal configuration;

(b) the perimeter lines effect a sophisticated design solution, accommodating competing requirements and imparting individuality, proportion and 'street appeal' to the house design;

(c) the perimeter lines were novel and important qualitatively from a design viewpoint;

(d) the perimeter lines are like a fingerprint of the particular plan;

(e) to the extent that quantitative considerations bear upon the question, the perimeter lines were significant in relation to the total length of the walls shown in the plan; and

(f) perimeter lines are, in any event, an essential component of a house design."

1. In our opinion there is no substance in these arguments. The relevant comparison to be made is between the "grey areas" appearing in the two advertisements with the two plans of the appellant. The perimeter of the plan of a house is doubtless always an element of some importance; and probably the more complicated the perimeter the more significant is the role of that element in the plan. In the present case the perimeters are rather simple, but nevertheless of some significance. However, the absence from the "grey areas" of the internal configuration of each house, the arrangement of windows and doors, with a vision of internal areas between various rooms and the indication of spaces, fully supported, in our view, the conclusion of the trial Judge that there was no reproduction in either advertisement of a substantial part of either plan of the appellant.

2. His Honour reached his conclusion also by taking into account that, with the information from each advertisement, one would be aiming at designing a three or four bedroomed house comparable with the relevant house of the respondent shown in the advertisement; and his Honour noted that nevertheless in each case one might devise various arrangements of the features of the internal configuration.

3. In the passage which we quoted above from his Honour's reasons for judgment we do not attribute to him the view that the perimeter is so significant an element in each of the two plans that the "grey areas" in the advertisements necessarily reflect the taking of a substantial part of the appellant's plans within the meaning of the authorities. Nor do we think that his Honour approached the question of reproduction by looking to the existence of dissimilarities between the "grey areas" and the plans themselves and ignoring the similarities between the part of the copyright work that was taken in relation to the work as a whole. What his Honour did, correctly in our view, in order to determine the significance of the "grey area" in relation to each plan, was to discern what appears from the depiction of the "grey area" and view it in the light of the plan as a whole with all its details including the features of internal configuration. Indeed, it is impossible to approach the task of determining reproduction of plans such as those in suit on any other basis. We discern no error in the approach taken by his Honour.

4. It is true that there is an important relation between the perimeter of the plan of a house and the internal configuration. That must be true of any house or indeed other buildings. It is also true that the perimeter lines are like a fingerprint or thumbprint of the particular plan. We also accept that quantitative considerations are not irrelevant to the questions of whether a substantial part of the work is reproduced, but it is always the quality rather than the quantity of what has been taken that is the essential test. Also, when speaking of copyright subsisting in the plans of a house, the essential integers are the depiction of its internal configuration (the arrangement of rooms, windows and doors and the indication of spaces) in relation to the periphery. The boundary or perimeter on its own will, in a case such as the present, be of secondary significance.

5. We would dismiss the appeal with costs.