Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd

Link copied
Case Copied 84 min read

HIGH COURT OF AUSTRALIA

GUMMOW ACJ
KIRBY, HAYNE, CALLINAN AND CRENNAN JJ

CONCRETE PTY LIMITED    APPELLANT

AND

PARRAMATTA DESIGN & DEVELOPMENTS
PTY LIMITED & ANOR  RESPONDENTS

Concrete Pty Limited v Parramatta Design & Developments Pty Ltd
[2006] HCA 55
6 December 2006
S54/2006

ORDER

1.Appeal allowed with costs.

2.Set aside the orders made by the Full Court of the Federal Court of Australia on 29 July 2005 and 22 August 2005 and in their place order that the appeal to that Court be dismissed with costs.

3.Remit to the Federal Court of Australia for determination the inquiry into the quantum of damages referred to in Order 3 made by Conti J on 13 October 2004.

4.Grant leave out of time to the respondents to file a notice of cross-appeal in the form of Annexure A to the affidavit of Gordon Scurr sworn on 29 June 2006.

5.The cross-appeal be treated as having been instituted and heard instanter and be dismissed with costs. 

On appeal from the Federal Court of Australia

Representation

B W Rayment QC with A J Sullivan QC and D T Kell for the appellant (instructed by Costa & Associates)

C R Birch SC with J-J T Loofs for the respondents (instructed by Hal Lawyers)

Notice:  This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

  1. GUMMOW ACJ.   The Full Court of the Federal Court (Branson, Kiefel and Finkelstein JJ)[1] dealt first with what appears to have been argued as the main issue before the Full Court. This concerned the freedom of Concrete Pty Limited ("Concrete") to use the architectural plans and drawings in question without infringing copyright subsisting in them as original artistic works, within the meaning of ss 31 and 32 of the Copyright Act 1968 (Cth) ("the Act"). Having decided that issue adversely to Concrete and disagreeing with the outcome at the trial, the Full Court went on to consider the challenge to the conduct of the trial which had been put on a quite different footing, namely, the alleged apparent bias of the primary judge. The Full Court upheld that challenge.

  2. In proceeding in this way, the Full Court itself fell into error.  The present respondents, Parramatta Design & Developments Pty Limited ("Parramatta") and Mr Fares, were permitted to present their arguments to the Full Court on inconsistent bases.  If the bias submissions were to succeed, the remedy would be a retrial.  If the copyright submissions were to succeed, the Full Court would itself provide the orders which should have been made and there would be no occasion to order a retrial.

  3. The Full Court so disposed of the appeal as to accept the bias submissions but without consequential relief.  If allowed to stand uncorrected, this outcome would have the adverse consequences for the administration of justice to which Kirby and Crennan JJ refer in their reasons…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2006] HCA 55
Decision Date

CaseChat Overview and Summary

The High Court of Australia considered an appeal concerning copyright infringement and apprehended bias. The dispute arose between Concrete Pty Ltd ("Concrete"), the purchaser of a development site, and Parramatta Design & Developments Pty Ltd ("Parramatta Design"), the architectural firm that had prepared drawings for the site. Parramatta Design, through its sole director and shareholder Mr Ghassan Fares, had formed a joint venture with Landmark Building Developments Pty Ltd ("Landmark"), also directed by Mr Fares, and Toyama Pty Ltd ("Toyama") to purchase and develop the site. Parramatta Design had prepared architectural plans for the development, for which Landmark and Toyama paid $27,000. Subsequently, a dispute arose between the joint venturers, leading to the sale of the site by trustees for sale to Concrete. Concrete alleged it had an implied licence to use the architectural plans, while Parramatta Design asserted copyright infringement.

The primary legal issues before the High Court were whether Concrete possessed an implied licence to use the architectural plans and drawings prepared by Parramatta Design for the development of the Nelson Bay site, and whether the conduct of the primary judge gave rise to a case of apprehended bias, thereby causing the trial to miscarry. Concrete also sought relief under section 202 of the Copyright Act 1968 (Cth) for alleged unjustifiable threats of copyright infringement proceedings made by Parramatta Design. Parramatta Design, in turn, cross-claimed for copyright infringement, arguing that no payment had been made for the drawings, thus precluding their use without infringement.

The High Court allowed the appeal, setting aside the orders of the Full Court of the Federal Court of Australia. The Court found that the Full Court had erred in its determination. While the specific reasoning regarding the implied licence and apprehended bias is not detailed in the provided text, the outcome indicates that the High Court determined that the appeal to the Federal Court should have been dismissed. The matter was remitted to the Federal Court for determination of the quantum of damages, and leave was granted to the respondents to file a cross-appeal, which was subsequently dismissed.

Orders

Orders of the court

1. Appeal allowed with costs. 2. Set aside the orders made by the Full Court of the Federal Court of Australia on 29 July 2005 and 22 August 2005 and in their place order that the appeal to that Court be dismissed with costs. 3. Remit to the Federal Court of Australia for determination the inquiry into the quantum of damages referred to in Order 3 made by Conti J on 13 October 2004. 4. Grant leave out of time to the respondents to file a notice of cross-appeal in the form of Annexure A to the affidavit of Gordon Scurr sworn on 29 June 2006. 5. The cross-appeal be treated as having been instituted and heard instanter and be dismissed with costs.

Background

Background to the litigation

The appeal to this Court raises two main issues. The first is whether the appellant has an implied licence to use architectural plans and drawings prepared by the first respondent, Parramatta Design & Developments Pty Limited ("Parramatta Design"), for the purpose of undertaking the development of 14 units at a site in Nelson Bay, New South Wales. The second issue is whether a case of apprehended bias could properly be established in regard to the conduct of the primary judge.The facts Parramatta Design is a company which provides architectural design services. The second respondent, Mr Ghassan Fares, is a qualified architect and is the sole director and shareholder of Parramatta Design. Mr Benjamin Barrak, a solicitor, conducts a legal practice under the name of Barrak Lawyers. Together Mr Fares and Mr Barrak established Landmark Building Developments Pty Ltd ("Landmark") as a property development company. Mr Fares is a director and shareholder of Landmark and he recognised at trial that Parramatta Design and Landmark are related companies. The Nelson Bay site came up for sale in 1998. Mr Fares and Mr Barrak decided to seek a joint venture partner to help purchase and develop the site. Mr Barrak was acquainted with Ms Jeanette Haviland, a sole practitioner. He asked Ms Haviland and her former husband, Mr Kevin Rix, if they would like to be involved in the project presented to them as a joint venture arrangement. They agreed to take a one-third interest in the development through their company, Toyama Pty Ltd ("Toyama"). Accordingly, Landmark contributed two-thirds of the necessary funds for purchase of the site, while Toyama contributed one‑third. No written agreement recording the terms of the joint venture was ever made. The site was purchased by the joint venturers on 2 October 1998 for $560,000. Landmark and Toyama became the registered proprietors of the land as tenants in common, with a respective two-thirds and one-third interest. It was agreed between the parties that Mr Fares and/or Parramatta Design would perform the architectural services for the joint venture. No written agreement for the provision of these services was drawn up. In any event, Parramatta Design prepared plans and drawings for an eight unit development on the site. Landmark and Toyama paid $27,000 for the plans and drawings[17]. Planning approval for the eight unit development was sought on 7 March 1999, and granted by Port Stephens Council on 24 September 1999. [17]At trial it was common ground that the payment of $27,000.00 related to work undertaken prior to the decision to seek a 14 unit development approval. There was some dispute about whether this payment was a fee for services or to cover Parramatta Design's out-of-pocket expenses, which need not be resolved here because it does not affect the issues in the present appeal. Some time after the eight unit development had been approved Mr Fares and Mr Barrak became aware that a neighbouring property had been granted approval to build a 16 unit development. They decided that it would be preferable, inferentially because it would be more profitable, to construct a 14 unit development on the site instead. In order to persuade Ms Haviland and Mr Rix to agree to the increased development, despite the additional costs and delay involved, Mr Fares offered to prepare the plans and drawings for the larger development at no additional cost beyond the $27,000 already paid[18]. It was agreed between the joint venturers (one of whom was, of course, the architect) that the architect's offer to prepare the plans and drawings for the joint venture, free of charge, should be accepted. [18]Evidence was led at trial that a reasonable fee for the preparation of the plans for a 14 unit development would be in the range of $28,000 to $30,000.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

GUMMOW ACJ KIRBY AND CRENNAN JJ
This led to a dispute between the parties, which resulted in Concrete commencing proceedings in the Federal Court on 7 October 2003. Following commencement of the proceedings, without admission of liability, Concrete offered to pay Parramatta Design $33,000 plus costs for permission to use "any or all of the plans and drawings the subject of your clients' claim for copyright for the purpose of development in accordance with the development consent attached to the land ...". Parramatta Design responded by asking for $5 million to license any use of its copyright material. The Federal Court decision At trial, Concrete asserted that it was permitted to use the plans and drawings in the relevant development application which were the same as the plans and drawings in the development consent. It averred it could do so without infringing Parramatta Design's copyright in the plans and drawings by virtue of an implied licence, and brought an action pursuant to s 202 of the Copyright Act 1968 (Cth) ("the Act") alleging the respondents had made unjustifiable threats to bring proceedings for copyright infringement. Section 202 of the Act relevantly provides:"(1)Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of copyright, then, whether the person making the threats is or is not the owner of the copyright or an exclusive licensee, a person aggrieved may bring an action against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he or she has sustained, unless the first-mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would constitute, an infringement of copyright.(2)The mere notification of the existence of a copyright does not constitute a threat of an action or proceeding within the meaning of this section." Concrete's claims under s 202 were based primarily on two letters sent by the respondents' solicitors, Barrak Lawyers, to Concrete's solicitors, Costa & Associates. The first letter was dated 9 September 2003 and the most contentious sentence provided that "[i]f your client proceeds to build in breach of our copyright, it does so at its own risk". The second letter was dated 1 October 2003 and its final sentence stated "we again put you on notice that if your client breaches our client's copyright, it does so at its own risk". The respondents denied that these letters constituted a threat of action within s 202(1), submitting instead that they were "mere notifications" of the existence of copyright within the meaning of s 202(2). The respondents also cross‑claimed, alleging that Concrete could not use the plans and drawings without infringing their copyright in them, essentially because no payment had been made for the preparation of the drawings[20]. [20][2004] FCA 1312 at [3].

Ratio Decidendi

Legal Principle Established

Established by: GUMMOW ACJ, KIRBY AND CRENNAN JJ

Full text does not contain this section.