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Devefi Pty Ltd v Mateffy Perl Nagy Pty Ltd

Devefi Pty Ltd v Mateffy Perl Nagy Pty Ltd

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Case Copied 28 April 1993 43 min read

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DEVEFI PTY LIMITED v. MATEFFY PERL NAGY PTY LIMITED
No. G707 of 1992
FED No. 252
Number of pages - 13
Copyright - Assignments

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Northrop(1), Gummow(1) and Hill(1) JJ

CATCHWORDS

Copyright - artistic works - architects' plans - construction of express contractual licence - whether licence should be implied in favour of third party using plans to complete building - whether architect estopped from denying infringement by third party.

Assignments - contracts involving personal skill and confidence - architect and builder - whether right to performance assignable - use of architects' drawings - effect of prohibition upon assignment.

Copyright Act 1968

Beck v Montana Constructions Pty Ltd (1963) 5 FLR 298,

Helstan Securities Ltd v Hertfordshire County Council (1978) 3 All ER 262,

Blair v Osborne and Tomkins (1971) 2 QB 78,

Castlemaine Tooheys v Carlton and United Breweries Ltd (1987) 10 NSWLR 468, considered.

HEARING

SYDNEY, 26 February 1993 #DATE 8:4:1993

Counsel and solicitors Mr Ronald Sackville QC and
for the appellant: Mr S.M. Reeves

Solicitors for the Appellant: Lakos and Company.

Counsel for the Respondent: Mr D.K. Catterns QC

Solicitors for the Respondent: Swaab and Associates

ORDER

THE COURT ORDERS THAT:

(1) The appeal be dismissed.

(2) The appellant pay the costs of the respondent.

Note: Settlement and entry of orders is dealt with by Rule 36 of the Federal Court Rules.

JUDGE1

Introduction

NORTHROP, GUMMOW AND HILL JJ The appellant ("Devefi") appeals against a judgment against it for $68,000 in a copyright infringement suit. The respondent ("Mateffy") is the owner of the copyright, pursuant to the Copyright Act 1968 ("the Act"), in 27 artistic works ("the Drawings") being plans and drawings prepared for use in the construction of a building erected upon a commercial development site at 346 Pacific Highway, Lindfield, a suburb of Sydney ("the site").

Mateffy carries on business as consulting engineers and produces structural work drawings to assist building contractors to erect buildings, in particular reinforced and pre-stressed framed buildings. There was no dispute at the trial as to the subsistence and ownership of copyright, as artistic works, in the Drawings. It followed that Mateffy had the exclusive right to reproduce the drawings in a material form, in particular in a three dimensional form, and the exclusive right to authorise other persons to effect such reproductions. This is the result of the application of ss. 31, 21 and 13 of the Act. Copyright in the drawings was infringed by any person who, without the licence of Mateffy, did in Australia or authorised the doing in this country of "any act comprised in the copyright" in the Drawings. Section 36 of the Act so provided.
Devefi accepted that the construction of the building at Lindfield constituted a reproduction of the Drawings and that it authorised the construction of that building in conformity with those plans. However, the onus was upon Mateffy to establish the absence of a licence, it…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1993] FCA 252
Decision Date: 28 APRIL 1993

CaseChat Overview and Summary

Devefi Pty Ltd sought to appeal against a decision of the primary judge, who found that Mateffy Perl Nagy Pty Ltd did not infringe copyright in plans prepared by Devefi's employee. The primary judge also found that Mateffy was not liable for contributory infringement of copyright. The dispute centred around whether a licence to use the plans should be implied in favour of Mateffy, or whether the architect could be estopped from denying that Mateffy had the authority to use the plans. The Federal Court was tasked with resolving these issues.

The legal issues before the court were whether the primary judge was correct in finding that there was no implied licence in favour of Mateffy, and whether the architect was estopped from denying that Mateffy had the authority to use the plans. The court was required to consider the nature of the plans, the terms of the contractual licence, and whether an estoppel could apply in these circumstances. The court also needed to examine the relationship between the parties and the context in which the plans were used.

The court held that the primary judge was correct in finding that there was no implied licence in favour of Mateffy. The court found that the plans were not intended to be used by Mateffy and that the contractual licence did not extend to Mateffy. The court also found that the architect was not estopped from denying that Mateffy had the authority to use the plans. The court held that the architect's conduct did not give rise to an estoppel as there was no representation that Mateffy had the authority to use the plans. The court found that the architect's conduct was consistent with the intention to restrict the use of the plans to the original licensee.

The court dismissed the appeal and ordered that the appellant pay the costs of the respondent. The court held that the primary judge's findings were supported by the evidence and that there were no errors of law or fact. The court found that the appeal had no reasonable prospect of success and that the respondent was entitled to costs. The court held that the appeal should be dismissed and that the respondent was entitled to costs on the standard basis.

Orders

Orders of the court

THE COURT ORDERS THAT:

(1) The appeal be dismissed.

(2) The appellant pay the costs of the respondent.

Note: Settlement and entry of orders is dealt with by Rule 36 of the Federal Court Rules.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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