Dixon Investments Pty Ltd v Hall
[1990] FCA 151
•19 APRIL 1990
Re: DIXON INVESTMENTS PTY LTD
And: KENNETH WAYNE HALL and VICTORIA MADELINE HALL
No. QLD G214 of 1988
FED No. 151
Copyright
(1990) AIPC para 90-668
18 IPR 481
COURT
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.(1)
CATCHWORDS
Copyright - alleged copying of project house design drawings - respondents' design derived originally from applicant's plan - principles governing simple and commonplace drawings - whether respondents' house a reproduction of applicant's house plan or a substantial part of it - what constitutes "substantial part" - whether s.71 defence established.
Copyright Act 1968, ss.31, 36 and 71
HEARING
BRISBANE
#DATE 19:4:1990
Counsel for the applicant: Mr B.D. O'Donnell
Solicitors for the applicant: Power and Power
Counsel for the respondents: Mr N.J. Thompson
Solicitors for the respondents: Clinton Smith and Associates
ORDER
1. The application be dismissed.
2. The applicant pay the respondents' costs of the proceedings, to be taxed.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
The applicant is a large and well-known project house builder and the respondents are a "bobcat" driver and his wife. The applicant produced a design of a house according to a plan called the "Blackwood Games" plan, and an example of such a house was built as a "display home" at Mermaid Waters. Later, the respondents built a similar house at Robina. The applicant was allowed to amend at the hearing to put forward an alternative case, viz. infringement of another design, but that was not pressed, in the end.
The respondent Mr Hall earned his living at relevant times as a site cleaner. He used to clean up building sites for the applicant and one such site was that on which the "Blackwood Games" display home was built. The applicant suspected, but has been unable to prove, that Mr Hall had access to a set of "Blackwood Games" working drawings which were held on that site. The applicant has certainly proved, however, that the respondents had access to a basic plan of the "Blackwood Games" design; the basic plan was advertised in the newspapers and included in an advertising brochure which the applicant handed out, so that the public generally had access to it. I shall use the expression "basic plan" as a reference to the plan in question (Exhibit 1) as it is a fair description of its rudimentary nature.
The basic plan consists of a perspective drawing of a "Blackwood Games" house and in addition (below that) a drawing constituting what architects and engineers call a "plan" as opposed to an "elevation" - i.e. a drawing showing the location and nature of the walls (exterior and interior) viewed from above; it also shows some other points such as the location of movable furniture and of built-in cupboards, bathroom fixtures and the like. It could not be suggested that there was any breach of the applicant's copyright in the perspective drawing, considered by itself, but it contains some information not in the lower drawing, such as an indication of the materials used in the front walls of the house.
Some architectural copyright cases - perhaps most - appear to involve allegations of infringement of rather more elaborate and detailed designs than the basic plan here. If one ignores the drawings of the furniture (other than that which is apparently intended to be built-in), then what is left could be described as a fairly conventional looking arrangement of rooms in a house of roughly rectangular shape. The final plan of the respondents' house (Exhibit 2) certainly looks rather similar to Exhibit 1.
Some aspects of the Hall house which were argued to assist the applicant's case are not shown in the basic plan. For example, window heights in the bathroom area were relied on, although these do not appear in the basic plan. The same may be said of some other aspects of the Mermaid Waters house, such as the location of a prominent beam. There is no allegation, in the pleading, of infringement of copyright in the Mermaid Waters "display home", nor in any other version or embodiment of the "Blackwood Games" design. The bathroom window heights therefore become irrelevant; there cannot be held to be infringement in that respect, nor is it unduly pedantic to confine the applicant to the pleaded case. It appears to me that the applicant's not having made an allegation of infringement in respect of any constructed house of the applicant's is no accident. Running a case on those lines would have enabled the Halls to rely upon numerous differences in detail between their house and, say, the applicant's display house at Mermaid Waters.
There are necessarily many features of the Halls' Robina house, as built, which cannot be said to reproduce any feature of the basic plan; the window heights just mentioned are an example. The applicant is entitled to succeed if it can show that the house is a reproduction of the basic plan or of a substantial part of it. Nevertheless, the simplicity of the basic plan said to have been infringed creates a difficulty for the applicant. The simpler and more commonplace the copyright drawing, the more closely must the alleged infringer adhere to it, in order for liability to exist: Kenrick and Co. v, Lawrence and Co. (1890) 25 QBD 99 at 102; Ownit Homes Pty Ltd v. D. and F. Mancuso Investments Pty Ltd (1988) AIPC 38,235 at 38,243. This accords with the view that in deciding whether there has been reproduction one must consider not only how close the allegedly infringing material is to the copyright drawing, but the quality of what is said to have been taken: Ladbroke (Football) Limited v. William Hill (Football) Limited (1964) 1 WLR 273 at 293. There are, of course, many houses of about the same size as those in issue here, and with similar facilities: a bathroom for general use and an "en-suite" intended to be used by the occupants of the main bedroom, as well as a family or general-purpose room. If one adheres to the idea of having a roughly rectangular shape with the rooms all on one level, there is only a limited number of ways in which the rooms can sensibly be arranged. Here, the bedrooms and bathrooms are along one long side of the rectangle, and the other rooms along the other. Starting from that basic layout, there are numerous possible variations, but the range of acceptable layouts is not unlimited. For example, as in the layout here in question, the lounge-dining area, rather than the kitchen, is likely to be close to the front door. But it is also possible to differentiate one's basic plan from other such plans by altering the geometry of the perimeter of the house: instead of four straight lines, indentations and protrusions may be created, as has been done with both the designs in question here.
There has to be shown an infringement of the right "to reproduce the work in a material form" (ss.31, 36 of the Copyright Act 1968) and that includes reproducing a two-dimensional work in a three-dimensional form (s.21(3)(a)). The critical point in the case is, I think, whether there has been a reproduction of a "substantial part of the work" (s.14(1)(b)).
The words "substantial part" first came into the copyright legislation on which ours is based, namely that of the United Kingdom, in the Copyright Act 1911; but prior to that references in the legislation to "part", in this context, had been taken to refer to "an essential part" (Bradbury v. Hotten (1872-1873) LR 8 Ex 1) and the House of Lords used the expression "substantial material taking" (Chatterton v. Cave (1878) 3 App Cas 483 at 485). These notions were, in effect, incorporated into the statute of 1911. There has been a number of judicial discussison of the degree of similarity necessary to show an infringement in cases of this sort - i.e. making an object such as a house with the resemblance to some else's design. In Beck v. Montana Constructions Pty Ltd (1963) 80 WN(NSW) 1578 at 1580, Jacobs J. remarked:
"It is clear I think that the degree of protection of an architectural plan must of its nature be very limited and it seems to me that one of the reasons for the severe limitation in the degree of protection under the law of copyright is that in an architectural plan more than any other forms of literary or artistic production there is a greater element which may be described as common to all plans and that the particular portion of the plan which may be regarded as belonging to the owner of the copyright, the particular features of it and of the expression must consequently be more limited."
In the Ownit Homes case (supra), the Full Court said:
"... where as here the copyright material is of a relatively simple rather commonplace kind, the task of establishing infringement is inherently more difficult" (38,243).
In Copinger and Skone James on Copyright, 12th Ed., para.262, one finds a passage to similar effect, which I will quote only in part:
"Slight differences between buildings of no marked originality will prevent them from being able to be copies of each other, which would not be the case if buildings were of an original character."
I refer also to the passage from the same work, para.458, quoted in S.W. Hart and Co. Proprietary Limited v. Edwards Hot Water Systems (1985) 159 CLR 466 at 480 and to Ancher, Mortlock v. Hooker Homes Pty Ltd (1971) 2 NSWLR 278 at 283.
If the similarity between the design of the Halls' house and that depicted in the basic plan were a mere coincidence, then there would be no need to go on to discuss the similarities and dissimilarities between the two. But since, as I find, the respondents (and in particular Mrs Hall) designed their house having, at the outset, close regard to the basic plan, it is necessary to move to the question of comparison; it is also convenient to do so at this stage and to leave to later discussion the precise process whereby the respondents' design evolved. The first question is whether the respondents' house is "properly described, not necessarily as identical with but as a reproduction or adaptation of" the applicant's plan: Francis Day and Hunter Ltd v. Bron (1963) Ch 587 at 623 per Diplock L.J.
The process of comparison of the Hall house with the basic plan was assisted by the expert evidence of two architects, one from each side. I thought the applicant's architect, although well qualified, was rather inclined to overstate the "unique" character of the basic design. Further, his evidence placed some reliance upon matters which cannot be derived from the basic plan, such as sill heights, bathroom tiles, colour of bricks and so forth. The applicant's architect appears to have used, as a basis of comparison, the respondents' display home referred to above, as well as the working drawings for the "Blackwood Games" house. As I have explained, the former is irrelevant on the pleading and the latter irrelevant on the evidence. I found the evidence of the respondents' architect to be more convincing. However, one expression used by the applicant's architect in his evidence seemed to me striking. He noted that the respondents' display home "looks different than that on the leaflets", by which he meant that it looked different from the basic plan. He pointed out that, but for a difference in the front appearance, "the two houses would be strikingly similar". The implication is that even the applicant's display home does not, to the casual observer, seem very like the design said to be infringed; that appears to me probably to be so.
The most important comparisons between the basic plan and the Hall house are, in my opinion, as follows.
1. Layout
As I have explained, the Hall house, like the basic plan, has bedrooms and bathrooms on one long side and the living area and the kitchen on the other; a wall interrupted by doorways separates the two sides. Obviously, there cannot be copyright in such a layout and Mr O'Donnell, who conducted the applicant's case with conspicuous ability, did not say that the layout alone could justify a finding of infringement; nor is the general arrangement of rooms at all distinctive. On one side, there is simply a row of small bedrooms with a bathroom and laundry interpolated. There is, in my opinion, a little more distinctiveness about the layout on the other side.
Indented Glass Walls and Living Area
Mr Ferrier emphasised the importance of this aspect. I do not accept that having a substantial area of full length windows (glass walls and sliding doors) was unusual or original in 1987, nor that it was a novel idea to have them indented. I am of the opinion, however, that the particular arrangement of the glass wall in the basic plan is quite distinctive. Mr Ferrier suggested that the glazed recesses along the side of the house provided a strongly individual character to the living areas and that that feature was the most significant component of the "Blackwood Games" design.
Front Walls - Exteriors
Here the comparison is in favour of the respondents. Mr Ferrier included among the "salient features" of the "Blackwood Games" design, the "recessed front entrance" and the "two part front elevation". I do not accept that evidence. It is true that the basic plan has the front door towards the middle, leading to an entrance hall, but innumerable Australian houses have that also. Apart from that aspect, the side of the respondent's house in which the front door is located is, and looks, quite different from that shown on the "Blackwood Games" brochure:
(i) The basic plan has a large protecting verandah; the front door is at the very end of this verandah. The Halls' house has no verandah, making the roof over the main bedroom much smaller.
(ii) The bedroom side on the basic plan projects out much
further from the other side of the house than does the bedroom side of the respondents' house.
(iii) The exterior timber in the basic plan is horizontally
attached, whereas that in the respondents' house is at a 45 degree angle.
(iv) The basic plan has a window at a 45 degree angle in lounge
room, which is not present in the Halls' residence.
Therefore, I conclude that to one looking from the outside at the front of the house (which is an important aspect) the respondents' house would look completely different from one built in accordance with the basic plan. 4. Entrance Area and Main Bedroom of House
These are different in design. The front doors are in different locations. There are different numbers of doors coming off the entrance hall. The door to the lounge room is differently located. The entrance into the main bedroom is differently designed. The en-suite, in relation to the entrance, is in a different position. The main bedroom is of a similar shape, but of a different size. The shape is merely rectangular, with a cupboard on one side and there is nothing particularly noteworthy about that. The en-suite is of a different shape, and the built-in basin is in a different position. The Halls' bedroom window is significantly larger than the other.
Looking at the entrance area, the main bedroom and the en-suite of the two houses, there is no impression of substantial similarity.
The Three Smaller Bedrooms
One bedroom is similar, and two are not.
Bedroom 2, although not identical, appears to me quite similar, in the two designs. Bedroom 3 is different, mainly in that there is a much bigger wardrobe in the respondents' house; bedroom 4 is quite different.
If one takes the bedrooms as a group, then it is fair to say that they look quite similar. I do not find that the shape or arrangement of the bedrooms is original; there is no essential feature or distinctive quality involved, so as to amount to a substantial part of the plan. The design of the bedrooms is relatively simple and rather commonplace. All three of these bedrooms are small and conventional-looking rooms.
Bathroom and Laundry
Although I find these rooms had a common origin, in the basic plan, the rooms look and are quite different; one is in no way reminded, when examining the "wet areas" in the one house, of those in the other. There are virtually no noticeable similarities between them, except for the fact that they both have a sliding door to the outside.
Kitchen
The kitchen plan in the basic plan shows an L-shaped wall along which is placed a refrigerator, then a wall-oven, and some bench space with hotplates at a 45 degree angle to the corner of the "L", then more bench space and a pantry at the far end. There is also an island bench, with what appears to be a sink in the middle of it. The Halls' kitchen has been constructed according to the same general layout, but the island bench is of a different shape. Even if the kitchens were identically laid out, the applicant's difficulty is that kitchens built in accordance with this layout, may, as built, be quite different in appearance. There are no such details in the basic plan as would enable one builder of a kitchen of that layout to achieve a kitchen of a very similar appearance (or function) to another builder's version.
It is erroneous to suggest that the applicant has the exclusive right to build a kitchen with an island bench, a refrigerator nest to a wall oven, and hotplates at 45 degrees to a pantry. Such features would no doubt be common to many plans of kitchens. The kitchen design in the basic plan is of no marked originality and the Halls' kitchen is not a reproduction of the kitchen in the basic plan; as built, it has of course features and details not shown in that plan.
Games Area
The similarities that exist between the two games areas are that they both have windows and sliding doors in the same position and each has a substantial blank wall at one end. I do not find that such a design is very novel or original, so as to amount to a substantial part of the "Blackwood Games" design, nor do I find that the two plans look very similar to each other in this area.
A lesser point of comparison should be mentioned. The short wall of each house at the end opposite to the entrance has no windows. That, as I find, is a coincidence - not of course a very remarkable one. The respondents' original design had a window in that wall, but it was deleted in later versions, not to make the design like that of the applicant, but simply because the house was swung around to make that wall face west. I do not find that an end blank wall is a substantial part of the basic plan.
Again, it was said the roof area of each house is quite similar. The two roofs are, it seems to me, similar in pitch because each is about the minimum pitch. But the roof of the "Blackwood Games" house is shown only in a general way, without detail, in the artist's sketch on the brochure. The applicant also claims that the use of a two-part front elevation and the use of a mixture of brick and timber in the external walls of the house is a distinctive feature of the basic plan. It is my opinion that it is impossible to say that such features represent a substantial part of the basic plan.
Section 71 of the Copyright Act has the effect that copyright in the basic plan is not infringed by the Halls' house if that house "would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of" the basic plan.
In S.W. Hart and Co. Pty Ltd v. Edwards Hot Water Systems (above), Gibbs C.J. said the defendant must prove the matters mentioned in the section (476) and Mason J. (as his Honour then was) agreed with the reasons of Gibbs C.J. (478); Wilson J. took the same view (487). I have had the advantage of an inspection of the Hall residence. In the S.W. Hart case, the drawings were apparently fairly complex. Here, the basic plan is not complex but simple. That enhances the strength of the s.71 defence, as there are of course many features of the Hall house as built which, by the very nature of the basic plan, have no counterpart in the latter. The person (whether or not armed with a suitable measuring device) comparing the Halls' house as built with the basic plan would be unlikely to conclude that the house is a reproduction of the basic plan. The non-expert would, in my opinion, notice immediately the similarity in layout and size of the rooms, but he would also notice many differences of significance. His conclusion would, I find, be that despite the similarities the Hall house is not a reproduction of the basic plan. Although s.71 was not argued, I think it has to be considered - but the result of the case would be the same whether or not I considered it.
There remains to be considered, as foreshadowed above, the question of the history of the development of the Hall design, although that is not in the end of central importance. I have already explained that I am not satisfied that the respondents had access to any of the applicant's working drawings; it is admitted that they had the basic plan.
In approaching this question, I have not overlooked that, as pointed out on behalf of the respondents, both houses are built using some components of standard size (such as windows) and that they are standard or commonplace in other respects; for example, the ceiling heights are the legal minimum. Nevertheless, I am satisfied that the design of the Hall house derived originally from the basic plan; I think Mrs Hall also took advantage of her inspection of the Mermaid Waters "display home", but it has to be kept in mind that copying of that is not alleged. I infer that Mrs Hall produced to the draftsman a plan which included certain features of the basic plan, which he then turned into Exhibit 11, which was then turned into Exhibit 14 and finally into Exhibit 2, which was submitted for Council approval. The first of these, Exhibit 11, differed from the basic plan in that (amongst other respects) the long wall on the bedroom side had only one projection and not two. In the final version of the Hall design (Exhibit 2), there is a projection in the same general area as in the basic plan. The draftsman's explanation of that circumstance had to do with the fact that the axis of the house was swung around in a way which necessitated some narrowing, and that was compensated for by the projection of bedroom 4, plus the adjoining laundry and bathroom. I accept this explanation and think that, in this respect, a feature which seems on the face of it to have been copied was in fact independently arrived at. It should be made clear, however, that the direct inspiration of the Hall design was the basic plan, and if this were sufficient in law to enable the applicant to succeed, then judgment must go in its favour. However, that is not enough, as the Ownit Homes case (above) illustrates. There the trial judge apparently thought "that the respondent had copied or 'produced by a direct or indirect use of' the plans of the appellants", but there was held to be no substantial reproduction ((1988) AIPC 38,239). The Hall house as constructed has sufficient differences, of a genuine character, from the basic plan, not to constitute an infringement.
I have decided, in accordance with the usual practice, to assess damages, in case the view I have taken of the facts is held to be wrong. Some of the more recent cases are usefully collected in Manfal Pty Ltd v. Longuet (1987) AIPC 37,766 to 37,774. If I had been of opinion (as I am not) that the respondents' house or its plans constitute an infringement of the applicant's copyright, I would not have assessed damages on the basis of the licence fee likely to be charged. There was some evidence designed to provide a foundation for an assessment on that basis, but it was quite unsatisfactory. Nor would I award damages on the basis that there was a flagrant infringement, as Thomas J. did in Manfal. I do not think it ever occurred to Mrs Hall that what she did was unlawful.
Further, there is no rational foundation for finding (if I had held infringement) that the value of the applicant's copyright was diminished by the respondents' actions. It seems to me likely that this suit was brought, not because any loss was suffered, but because the applicant wishes (quite reasonably, from its own point of view) to discourage any unauthorised imitation of its houses or ideas that its houses embody. Keeping that in mind, had I found infringement constituted by either the respondents' house or its plans (as I have not), I would have awarded $50 damages.
The application will be dismissed with costs.
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