Eagle Homes Pty Ltd v Austec Homes Pty Ltd

[1997] FCA 1321

FEDERAL COURT OF AUSTRALIA

COPYRIGHT - Copyright Act 1968 (Cth) - applicant owned copyright in architectural plans for project homes - respondent alleged to have infringed such copyright through the publication of advertisements and the building of homes - whether respondent reproduced a “substantial part” of the applicant’s work - greater weight to be given to quality of what has been copied than to its quantity - difficulties of proof where work in question lacks marked originality.

Copyright Act 1968 (Cth) ss 10, 13, 14, 21, 31, 32, 35, 36, 196

Ladbroke (Football) Ltd v William Hall (Football) Ltd [1964] 1 WLR 273, applied
Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348, cited

S W Hart & Co Proprietary Limited v Edwards Hot Water Systems (1985) 159 CLR 466, applied
Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278, applied
LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447, cited

Beck v Montana Contructions Pty Ltd [1964-5] NSWR 229, cited
Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWR 265, cited
Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666, cited
Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481; on appeal (1990) 18 IPR 490, cited
University of  London Press Limited v University Tutorial Press Limited [1916] 2 Ch 601, cited

EAGLE HOMES PTY LIMITED v
AUSTEC HOMES PTY LIMITED
NG 355 of 1996

BRANSON J
SYDNEY
1 DECEMBER 1997

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 355  of   1996

BETWEEN:	EAGLE HOMES PTY LIMITED APPLICANT
AND:	AUSTEC HOMES PTY LIMITED RESPONDENT
JUDGE(S):		BRANSON J
DATE OF ORDER:		1 DECEMBER 1997
WHERE MADE:		SYDNEY

THE COURT ORDERS THAT:

1. The application be dismissed.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 355 of 1996

BETWEEN:	EAGLE HOMES PTY LIMITED APPLICANT
AND:	AUSTEC HOMES PTY LIMITED RESPONDENT

JUDGE(S):	BRANSON J
DATE:	1 DECEMBER 1997
PLACE:	SYDNEY

REASONS FOR JUDGMENT

INTRODUCTION

This proceeding is brought pursuant to the Copyright Act 1968 (Cth) (“the Act”).   The issue of liability has been heard separately from the issue of damages, if any.

Each of the applicant and the respondent is in the business of building pre-designed houses, commonly known as project homes.  The applicant claims that the floor plans for project homes known respectively as “The Kookaburra” and “Kookaburra Series 2” (“the subject drawings”) are original artistic works in which copyright subsists and that, by assignment, it is now the owner of the copyright in the subject drawings.  The applicant further claims that the respondent has, without its licence, published advertisements which contain reproductions in a material form of a substantial part of the subject drawings, and built homes which reproduce in a material form a substantial part of the subject drawings.  The respondent denies that the subject drawings are original artistic works in which copyright subsists.   The respondent further denies that by causing the advertisements to be published or by building homes it has reproduced in a material form a substantial part of the subject drawings.

SUBSISTENCE OF COPYRIGHT

Section 10 of the Act defines an “artistic work” to include a drawing “whether the work is of artistic quality or not”. It is not in dispute that the subject drawings are drawings within the meaning of s 10 of the Act. It is now well established that architectural plans can attract the protection of the Act (see, for example, Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278; LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447).

Section 32(2) of the Act provides, so far as is here relevant, as follows:

“Subject to this Act, where an original .... artistic work has been published:
           (a)       copyright subsists in the work; ...
           (b)       ...

if, but only if:

(c)       the first publication of the work took place in Australia;

(d)the author of the work was a qualified person at the time when the work was first published;   ...

(e)       ... ”

Beverley Gaye Ord (“Ms Ord”) is an architectural draftsperson employed by Eagle Management Australia Pty Limited (“Eagle Management”), a company associated with the applicant.  Ms Ord gave evidence that in early June 1995 she received instructions in the course of her employment to prepare a preliminary design sketch of a home that would fit on a block with a fifteen metre frontage, and that would have a double garage, four bedrooms, a main bathroom and separate ensuite bathroom, and that would be inexpensive to build.   In completing her first design sketch in response to such instructions, Ms Ord made reference to a brochure, apparently published by the applicant, which depicts the floor plan of a project home known as “Lorikeet Series II”.   In response to certain further instructions, and certain design imperatives, Ms Ord prepared a further sketch.  She then made computer generated modifications to such sketch.  The final such computer generated modification was identified by Ms Ord as the design, or floor plan, of “The Kookaburra”.   In response to a client request for a side rumpus room, Ms Ord made a drawing of “The Kookaburra”, but showing an optional side rumpus room.  This became the “Kookaburra Series 2”.

The drawings identified by Ms Ord as having been drawn by her are not identical to the drawings annexed to the amended application, being the drawings in which the applicant claims to own copyright.   The drawings identified by Ms Ord include detail not included in the drawings annexed to the amended application.  However, the actual floor plans in the two sets of drawings appear identical.     I am satisfied that Ms Ord is the author of the subject drawings.

A “qualified person” within the meaning of s 32 of the Act is “an Australian citizen, an Australian protected person or a person resident in Australia”.  There is no admission on the pleadings that Ms Ord is a “qualified person” within the meaning of s 32, and Ms Ord did not give evidence expressly addressed to this issue. Her affidavit describes her as “of 5 Hobler Avenue, Carnes Hill”, without identification of the location of Carnes Hill. Ms Ord agreed in her examination in chief that she lives at 5 Hobler Avenue, Carnes Hill, but again the location of Carnes Hill was not given.  I do not know the location of Carnes Hill and I note that there is no Australian postcode for Carnes Hill.  However, since the case was not fought on the basis that Ms Ord is not a “qualified person” within the meaning of the Act, it seems appropriate for me to draw an assumption from the whole of Ms Ord’s evidence that she is, and was at the time of the first publication of the subject drawings, a resident of Australia.  I do so.

For the same reason, I am prepared to draw an assumption from the whole of the evidence that the first publication of the subject drawings took place in Australia.  John Valeri (“Mr Valeri”), the General Manager of the Eagle Homes group of companies gave evidence concerning a publication, which I am prepared to assume was the first publication of the “Kookaburra” floor plan.  The invoice for the cost of such publication is from a company with a New South Wales address.  This tends to suggest a publication in Australia.

The only remaining issue on the question of whether copyright subsists in the subject drawings relates to the claim of originality.   It is not in dispute that the subject drawings are based on the floor plan of the “Lorikeet Series II”.  Copyright will not subsist in a slavish copy of an earlier work, but an artistic work which derives from an earlier artistic work can nonetheless amount to an original artistic work in which copyright subsists (Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273; Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348). The question for the Court is whether the subject drawings are merely a copy of the “Lorikeet Series II” floor plan, or are a new artistic work or artistic works (see Interlego AG v Croner Trading Pty Limited,  per Gummow J, with whom Black CJ and Lockhart J agreed, at 379).

No expert evidence was called on the question of the visual differences between  “The Kookaburra” floor plan and the “Lorikeet Series II” floor plan.  My own judgment is that there is a visual difference between the two floor plans, although they share many features.  Ms Ord gave evidence, in general terms, of the work that she undertook to produce the “The Kookaburra” floor plan.   Janet Moya Grey (“Ms Grey”), architect, gave evidence that it takes some skill to modify a house design.  I am satisfied that the subject drawings are original artistic works in which copyright subsists.

OWNERSHIP OF COPYRIGHT

Section 35 of the Act is concerned with copyright in original works. So far as is here relevant, s 35 provides as follows:

“(1)     ...

(2)Subject to this section, the author of a ... artistic work is the owner of any copyright subsisting in the work by virtue of this Part.

(3)...

(4)...

(5)...

(6)Where a ... artistic work ... is made by the author in pursuance of the terms of his or her employment by another person under a contract of service ..., that other person is the owner of any copyright subsisting in the work by virtue of this Part.”

The evidence establishes that Ms Ord is the author of the subject drawings.  She prepared them in pursuance of the terms of her employment by Eagle Management. Eagle Management thus became the owner of the copyright in the subject drawings.

Section 196 of the Act allows for the assignment of copyright by an instrument in writing signed by or on behalf of the assignor. By deed dated 22 April 1996, executed under the respective seals of Eagle Management and the applicant, Eagle Management assigned to the applicant “all the copyright which the Assignor owns, or may own, in the Kookaburra drawings...”.

I find that the applicant is the owner of copyright in the subject drawings.

INFRINGEMENT

Section 31(1) of the Act, so far as is here relevant, provides as follows:

“(1)For the purposes of this Act ... copyright, in relation to a work, is the exclusive right:

(a)....

(b)in the case of an artistic work, to do all or any of the following acts:

(i)to reproduce the work in a material form; ....”

Section 36(1) of the Act is in the following terms:

“(1)Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by 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.”

Section 13(1) of the Act provides that a reference in the Act to “any act comprised in the copyright” in a work is to be read as a reference to any act that, under the Act, the owner of the copyright has the exclusive right to do.

Section 14(1) of the Act provides as follows:

“(1)     In this Act, unless the contrary intention appears:

(a)a reference to the doing of an act in relation to a work ... shall be read as including a reference to the doing of that act in relation to a substantial part of the work ....”

An allegation made by the applicant in this case is that the respondent has reproduced the subject drawings by the erection of certain buildings. Reliance is placed on s 21(3) of the Act which provides:

“(3)For the purposes of this Act, an artistic work shall be deemed to have been reproduced:

(a)in the case of a work in a two-dimensional form - if a version of the work is produced in a three-dimensional form;  or

(b)...

and the version of the work so produced shall be deemed to be a reproduction of the work.”

As Gibbs CJ, with whom Mason J agreed and Brennan J agreed on this point, pointed out in S W Hart & Co Proprietary Limited v Edwards Hot Water Systems (1985) 159 CLR 466 at 472:

“The notion of reproduction, for the purposes of copyright law, involves two elements - resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer L J in Frances Day & Hunter Ltd v Bron [[1963] Ch 587 at 614], “a sufficient degree of objective similarity between the two works” and “some causal connection between the plaintiffs’ and the defendants’ work”.”

In determining whether any reproduction is of “a substantial part of the work” (s 14(1)), greater weight is to be given to the quality of that which has been copied than to its quantity (S W Hart & Co Proprietary Limited v Edwards Hot Water Systems per Gibbs CJat 474, Wilson J at 481, Deane J at 503).

It is convenient to consider the issue of copying first.  There is no reproduction, within the meaning of the Act, where two persons produce substantially similar works through independent effort (Ladbroke (Football) Ltd v William Hill (Football) Ltd per Lord Reid at 276, approved in S W Hart & Co Proprietary Limited v Edwards Hot Water Systems per Gibbs CJ at 472).

The further amended statement of claim alleges that the respondent has infringed the applicant’s copyright in the subject drawings by, without the licence of the applicant, procuring the publication of advertisements in a newspaper, which advertisements contain a reproduction of the subject drawings under the name “The Paterson Modern Design”, and by building homes which reproduce in a material form a substantial part of the subject drawings under the names of “The Paterson” and “The Robertson”.  In the first instance, I propose principally to consider the applicant’s case, so far as it is based on the building of homes by the respondent, by reference to the admitted building of a home to the “Paterson” floor plan.  I note that it was conceded by counsel for the applicant that the case for infringement of its copyright is stronger in respect of the “Paterson” than in respect of the “Robertson”. 

The subject drawings and versions of the “Paterson” and “Robertson” floor plans are annexed to these reasons.   Each of the subject drawings and the “Paterson”  and the “Robertson” provides for a double garage with double roll-a-door access at the front and single roll-a-door access at the rear, a patio and entry lobby, a main bedroom with ensuite bathroom and walk-in-wardrobe, living and dining areas opening onto each other, a kitchen with an adjacent family room opening to  a rumpus room, three minor bedrooms and a bathroom and laundry.  The layouts contained in the subject drawings and the “Paterson” are similar and indicate homes of similar dimensions, suitable for erection on a block of land with a fifteen metre frontage.   The “Robertson”, which is a variation of the “Paterson”, has quite different dimensions, being wider towards the rear of the home and of a much shorter length, in terms of the relationship between the front entry and the rear bedrooms.

For the purpose of analysing in more detail the two sets of designs, I propose to adopt the approach taken by Alexander Smith (“Mr Smith”), an architect who gave evidence on behalf of the applicant, and to use his nomenclature.   I shall principally compare “The Kookaburra” floor plan with the “Paterson” floor plan making reference to the “Kookaburra Series 2” floor plan only where it differs from “The Kookaburra” floor plan, and to the “Robertson” where it differs from the “Paterson”.

Zone 1 - Bedroom 1/Entry/Garage

Each of the floor plans has these three rooms across the front of the house, with the main bedroom projecting further forward than the double garage.  In the “Paterson” the main bedroom has a bay window;  the main bedroom in “The Kookaburra” does not have a bay window, although the “Kookaburra Series 2” does have such a window.  The positioning of the ensuite bathroom and walk-in-wardrobe in each case is the same, although the lay-out of the two ensuite bathrooms is different.  In the “Paterson”  the garage is set laterally further into the body of the house than in “The Kookaburra” and the garage has four right angled corners.  In “The Kookaburra”, the corner of the garage immediately adjacent to the entry and the living room is splayed.  In the “Paterson”, the width of the ensuite bathroom together with the walk-in-robe is greater than the width of these two rooms in “The Kookaburra”.  The entry in the “Paterson” is narrower than the entry in “The Kookaburra” and the planter boxes in the two entries are of a different shape.  The two patios are also of a different shape.

Zone 2 - Living/Dining/Bedroom 2.

In each of the floor plans these three rooms are immediately behind the main bedroom, entry and a portion of the garage.  In “The Kookaburra”, the second bedroom is immediately behind the ensuite bathroom and walk-in-wardrobe and the same width as those two rooms combined.   In the “Paterson”, the dining area is immediately behind the ensuite bathroom and walk-in-wardrobe with the second bedroom immediately adjacent to the main bathroom and with passage access to that bathroom.  The dining area is thus a greater distance from the kitchen in the “Paterson” than in “The Kookaburra”.   “The Kookaburra”  living room has a splayed corner immediately adjacent to the garage.

Zone 3 - Kitchen/Family/Rumpus

The relationship between these three rooms is virtually identical in the case of the “Paterson” and “The Kookaburra”.  The “Paterson” rumpus room is wider than the living room;  in this regard it is similar to the “Kookaburra Series 2” but not to “The Kookaburra”.  There is some difference between the placement of windows and a sliding door when the “Kookaburra Series 2” and the “Paterson” are compared.  The kitchen layouts are in each case virtually identical although the kitchen bench in “The Kookaburra” plans has bevelled corners which do not appear on the “Paterson” floor plan.

In the case of the “Robertson”, the family room has been placed laterally alongside the kitchen, with the effect that the kitchen is “landlocked”, that is, it is surrounded by the family room, living room, the smaller bedrooms and the bathroom.

Zone 4 - Bedroom 3/Bedroom 4/Bathroom/Laundry

There is substantial similarity between the bedroom 3, bathroom, laundry and bedroom 4 area of “The Kookaburra” and the bedroom 2, bathroom, laundry and bedroom 3 area of the “Paterson”.   The differences relate to the placement of wardrobes, the layout of the laundry and bathroom and the splayed corner of bedroom 2 in the “Paterson”.  Bedroom 4 in the “Paterson”, which is adjacent to bedroom 3, opens into the rumpus room, which is not the case in “The Kookaburra”.   Bedroom 4 in the “Robertson” is also next to bedroom 3, but it encroaches into what is the rumpus room in the “Paterson”, with the result that the rumpus room in the “Robertson” is smaller in size than in the other plans which have a rumpus room side extension.

The “Paterson” Floor Plan

Evidence concerning the preparation of the “Paterson” floor plan was given by Salvatore Joseph Panetta (“Mr Panetta”), a director of the respondent, and by Carmelo Anthony Zappia (“Mr Zappia”), a director of Algorry Zappia & Associates Pty Ltd, consulting civil instructional engineers and architectural designers.

Mr Panetta gave evidence of perceiving, in about 1994 or 1995, a demand in the West Hoxton area for project homes suitable for erection on blocks of land with a fifteen metre frontage.  He decided to prepare a low budget house design suitable for such narrow blocks of land.   In early February 1996, Mr Panetta prepared a rough sketch of a five bedroom house suitable for erection on a block of land with a fifteen metre frontage.    Mr Panetta gave oral evidence that he prepared this rough sketch from a “cut and tape plan” that he created by cutting up existing master floor design plans of the respondent, and piecing together various rooms from them.   I do not accept this evidence. No mention of such a process is contained in Mr Panetta’s affidavit evidence, nor was discovery made of the “cut and tape plan”.   The respondent did discover a copy of the “Paterson” floor plan in which various areas of the plan had been hatched in different colours so as to indicate a provenance in earlier floor plan designs of the respondent.   Mr Panetta’s evidence as to the design origin of the various components of his rough sketch in fact fits more comfortably with the “Paterson” floor plan than with his original rough sketch for a five bedroom home.

Mr Panetta agreed that, at the time that he prepared his rough sketch of the five bedroom home, he had seen  “The Kookaburra” floor plan in published advertisements.  He denied that he had seen the floor plan of the “Kookaburra Series 2”.  I accept this denial. 

Mr Panetta agreed in cross-examination that the dimensions of the double garage shown on his rough sketch were larger than usual.  The dimensions of the double garage shown by Mr Panetta in his rough sketch are exactly those of “The Kookaburra” double garage although I note that none of the floor plans identified by Mr Panetta as the design source of his rough sketch has a garage of precisely those dimensions.  Nor does the “Paterson” floor plan show a garage with those dimensions.  The general design of a planter box forming a division between the entry and the living room in Mr Panetta’s rough sketch is also the same as that which appears in “The Kookaburra” floor plan although none of the floor plans identified by Mr Panetta as the design source of his rough sketch shows a planter box of this design.   I note, but place less weight on the fact, that Mr Panetta’s rough sketch includes a kitchen bench with the same chamfered, or bevelled, corners as are shown on “The Kookaburra” floor plan and a patio in the same position with roughly the same dimensions.

I am satisfied that in making his rough sketch of the five bedroom home, Mr Panetta did copy certain aspects of “The Kookaburra” floor plan.

Mr Panetta sent his rough sketch to Mr Zappia and asked him to prepare a drawing based on the rough sketch but excluding the fifth bedroom.  Mr Zappia gave instructions for the preparation of a “concept sketch” based on Mr Panetta’s rough sketch, and when it was completed, provided such sketch to Mr Panetta. 

Mr Panetta gave evidence that at the time that he received the “concept sketch” from Mr Zappia, he asked Mr Zappia whether “there are any houses out there which are going to be similar” and that he mentioned “The Kookaburra”.  Mr Zappia did not recall Mr Panetta saying anything to him about the similarity between his drawing and “The Kookaburra”.   I find that Mr Panetta did raise this issue of similarity with Mr Zappia and that his concern arose by reason of his own rough sketch having been derived from “The Kookaburra”.   Mr Zappia acknowledged that he had a copy of “The Kookaburra” floor plan at his place of business at the time that the “Paterson” drawings were being developed.   Mr Zappia said that he faxed to Mr Panetta “The Kookaburra” floor plan to show him that a similar house was on the market.   I consider it more likely that Mr Zappia faxed “The Kookaburra” floor plan to Mr Panetta as a result of Mr Panetta having raised with him the issue of similarity between the “concept sketch” and “The Kookaburra”.

After receiving further instructions from Mr Panetta, Mr Zappia caused to be prepared a floor plan plus elevations and other structural information.   Mr Panetta also required certain changes to this design.  Such changes were made by Mr Zappia, and then, after “minor touch-ups”, the “Paterson” drawing was created by an employee of Mr Zappia’s company.   As is mentioned above, the “Robertson” drawing is accepted to be derived from the “Paterson” drawing.

I am not satisfied that Mr Zappia, or any employee of his company, copied from “The Kookaburra” in preparing the “Paterson” drawing.  However, I am satisfied that Mr Zappia was conscious of the similarities between “The Kookaburra” and Mr Panetta’s rough sketch. I consider it likely that Mr Zappia sought to minimise the visual similarities between “The Kookaburra” and the drawings that his company produced on Mr Panetta’s instructions.  Nonetheless, in my view, the “Paterson” drawing, having been derived from a rough sketch which was itself derived from “The Kookaburra”, is to be seen as having been derived, in part, from “The Kookaburra”.

Substantial Part

Plainly, the “Paterson” drawing does not reproduce the whole of the subject drawings.  Nonetheless, the applicant’s claim of infringement of copyright will be made out if it can demonstrate that the “Paterson” drawing reproduces a substantial part of the subject drawings (s 14(1)).

A number of authorities has considered claims of alleged breach of copyright in architectural drawings.   In Beck v Montana Constructions Pty Ltd [1964-5] NSWR 229, Jacobs J, at 232, after recognising that copyright does not exist in an idea, but only in the expression of the idea, said:

“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 any 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 a 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 Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWR 265 at 269, Helsham J, after referring to Beck v Montana Constructions Pty Ltd, spoke of the care with which one must approach a claim of copyright in architectural plans “by reason of the existence in relation thereto of features that must be common to all such plans”.  Street J, as he then was, expressed a similar sentiment in Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd at 283. In Copinger and Skone James on Copyright, 10th Ed. at p272, in a chapter headed “Works of Architecture”, the learned authors assert:

“....it is naturally more difficult to prove infringement of copyright in a plain building than in one showing marked originality.  An architect who has erected a facade showing six windows and a door clearly could not complain of another building showing the like number of windows and doors, for each architect may have drawn from common sources;  but if his plain building has been servilely copied down to the smallest detail, there seems no good reason for depriving him of the right to complain.   Slight differences between buildings of no marked originality will prevent them from being held to be copies of each other, which would not be the case if the buildings were of an original character.”

In my view, nothing in the authorities, when they are carefully considered, lends any support to the notion that different principles are to be applied in cases in which infringement of copyright in architectural drawings is alleged, as compared with cases in which infringement of copyright in other classes of artistic work is alleged.  The difficulties of which the authorities speak in cases concerning architectural drawings are, in my view, difficulties of proof (ie evidentiary difficulties).   Even the statement in Copinger and Skone James on Copyright that “[s]light differences between buildings of no marked originality will prevent them from being held to be copies of each other” is, read in the light of the preceding sentence, to be understood as directed to the question of proof and not as a statement of legal principle.

Nonetheless, once one moves from consideration of the issue of copying to consideration of the issue of whether what has been reproduced is a substantial part of the copyright work, it is necessary for consideration to be given to the quality of that portion of the copyright work which has been reproduced (Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666 at 669). In that context, it is plain that, in the case of an architectural drawing of no marked originality, as in the case of any other artistic work of no marked originality, its simplicity or commonplaceness will be of significance. As Pincus J pointed out in Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 at 483:

“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 & F Mancuso Investments Pty Ltd (1988) AIPC 90-488 at 38, 243.”  

See also the comments of the Full Court in upholding Pincus J’s approach:  Dixon Investments v Hall (1990) 18 IPR 490.

So, in the case of a copyright architectural drawing which includes a feature of marked originality, a finding that that feature has been reproduced is more likely to lead to a finding of infringement of copyright than a finding of a reproduction of a commonplace feature:  the reproduction of a markedly original feature will, by reason of its quality, amount to a reproduction of a substantial part of the copyright work - even where the feature comprises a relatively small part of the total copyright work.  In contrast, in the case of a copyright architectural drawing which is without unusual features, the reproduction of a quantitatively greater proportion of the copyright work will be necessary to establish that a substantial part of the work has been reproduced.

The subject drawings do not exhibit, in my view, any feature of marked originality.  Whilst copyright subsists in such drawings, in practical terms, the protection afforded by such copyright will be less comprehensive than that afforded to drawings showing marked originality.

The question of whether the “Paterson” advertisement and the homes which have been admitted to have been built by the respondent in accordance with the “Paterson” drawing and the “Robertson” drawing are sufficiently similar to the subject drawings to amount to a reproduction of a substantial part of the subject drawings is one to be determined by the Court itself.  In answering the question, however, the Court will be assisted by expert evidence which, to adopt the words of Street J in Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd at 286, “is of value in exposing the facets of the ultimate question to which the expert opinion is directed.”

Mr Smith, who was called on behalf of the applicant, gave evidence in chief directed to the issue of copying.  His instructions had been to determine whether the “Paterson” had been copied or derived from “The Kookaburra”, and further to determine whether the “Robertson” had been derived from the “Paterson”.  I have found his evidence of limited assistance on the issue of whether either the “Paterson” advertisement and the “Paterson” or “Robertson” homes are sufficiently similar to the subject drawings to amount to a reproduction of a substantial part of them.

Ms Grey was called to give evidence on behalf of the respondent.  Ms Grey has considerable experience with respect to project and “kit” homes.   Ms Grey made a comparison between the two “Kookaburra” plans and the “Paterson” and “Robertson” plans.   I do not mention every aspect of her evidence.  She drew attention to significant differences in layout between the two “Kookaburra” plans, on the one hand, and the “Paterson” and “Robertson” plans on the other.   First, she referred to a difference in layout concerning the placement of the minor bedrooms with respect to the bathroom and laundry.  She concluded that “(i)n effect, the Paterson and Robertson Plans are plans for a four bedroom house and the Kookaburra Plans are plans for a three bedroom house with a study”.   Ms Grey referred also to a difference between the “Paterson” plan and the two “Kookaburra” plans in the placement of the entry to bedroom 4.  In addition, Ms Grey noted the different shapes, and thus different functions, of the planter boxes in the two “Kookaburra” plans on the one hand and the “Paterson” and “Robertson” plans on the other, and the greater distance between the bathroom, laundry and kitchen in the two “Kookaburra” plans when compared with the “Paterson” and “Robertson” plans.   The practical significance of this latter feature relates to convenience for plumbing purposes.  Ms Grey further noted significant differences in the dimensions shown by the two “Kookaburra” plans, on the one hand, and the “Paterson” and “Robertson” on the other.  These differences of dimension relate not only to individual room size, and thus to the overall design and the relationship of the rooms one to the other, but also to the external dimension of the homes shown by the plans.

Ms Grey went on to notice a number of similarities between the two “Kookaburra” plans on the one hand, and the “Paterson” and “Robertson” plans on the other.  She stated:

“In my opinion and based on my experience, the similarities are not unusual in project home design where the layout and design are determined largely by the market place.  As the specific end user of the home is unknown, the common requirements of the market become the determinants of the Plan in project home building.  Some of the considerations that may affect the design of a project home and produce many common characteristics among project homes in the low cost price bracket are:

(a)legal requirements (for example, minimum room size and height as provided by building ordinances and codes);

(b)economic;

(c)urban planing ( for example, typical block sizes for land);

(d)ergonomic and functional;  and

(e)family and social considerations.”

Ms Grey noted that:

“The narrow rectangular geometry of the perimeter and layout of the rooms in the Paterson plan and the Kookaburra plan are comparable.  Each has two rows of rooms side by side with the bedrooms and bathrooms in one row and the common living areas in the other.  This particular layout is an extremely common feature in project homes of this type and is a product of both family and social considerations namely, to keep the private areas of the home distinct from the public areas.”

Ms Grey further noted many other design features which, whilst shared by the two “Kookaburra” plans and the “Paterson”  and “Robertson” plans, are also common features of project homes.

Notwithstanding that there is, no doubt, much to be said for “the rough practical test that what is worth copying is prima facie worth protecting”(University of  London Press Limited v University Tutorial Press Limited [1916] 2 Ch 601 at 610), after careful consideration of the subject drawings, on the one hand, and the “Paterson” and “Robertson” plans on the other, I am not satisfied that either of the “Paterson” or the “Robertson” plans is sufficiently similar to the subject drawings to amount to a reproduction of a substantial part of such drawings.  For this reason I conclude that neither the publications of advertisements for the “Paterson” of which complaint is made, nor the admitted building of a “Paterson” home and a “Robertson” home, amounts to a reproduction of a substantial part of the subject drawings.

The application must be dismissed.

I certify that this and the preceding fifteen (15) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson J.

Associate:

Dated:            

Counsel for the Applicant:	Mr D K Catterns QC, with Mr D Yates
Solicitor for the Applicant:	Castrission & Co.
Counsel for the Respondent:	Ms S Goddard
Solicitor for the Respondent:	Sprusons
Dates of Hearing:	13, 14, 15 October 1997
Date of Judgment:	1 December 1997