Ferntree Homes Pty Ltd v Bohan - [2002] FCA 16

FEDERAL COURT OF AUSTRALIA
Ferntree Homes Pty Ltd v Bohan [2002] FCA 16
COPYRIGHT – infringement of copyright in plans for project home – reproduction - whether causal link between allegedly infringing plans and the copyright plans of project home builder
Copyright Act 1968 (Cth)
S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 followed
Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 cited
FERNTREE HOMES PTY LIMITED (ACN 051 610 069) v PATRICK JOSEPH BOHAN & ORS
N 454 OF 2000
LINDGREN J
18 JANUARY 2002
SYDNEY

GENERAL DISTRIBUTION

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 454 OF 2000

BETWEEN:

FERNTREE HOMES PTY LIMITED (ACN 051 610 069)
APPLICANT

AND:

PATRICK JOSEPH BOHAN & ISOBEL BOHAN
FIRST RESPONDENTS

MICHAEL DEAN
SECOND RESPONDENT

JUDGE:

LINDGREN J

DATE OF ORDER:

18 JANUARY 2002

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.        The application be dismissed.
2.        The applicant pay the respondents’ costs.
Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

GENERAL DISTRIBUTION

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 454 OF 2000

BETWEEN:

FERNTREE HOMES PTY LIMITED (ACN 051 610 069)
APPLICANT

AND:

PATRICK JOSEPH BOHAN & ISOBEL BOHAN
FIRST RESPONDENTS

MICHAEL DEAN
SECOND RESPONDENT

JUDGE:

LINDGREN J

DATE:

18 JANUARY 2002

PLACE:

SYDNEY

REASONS FOR JUDGMENT
introduction

The applicant (“Ferntree”) sues for infringement by the respondents of its copyright in building plans for a project home known as the “Golden Fern MK2”. Ferntree alleges that the respondents reproduced those plans in a material form. The case concerns the construction of a home on land then owned by the first respondents (“Mr and Mrs Bohan”, or, the “Bohans”) in accordance with architectural plans produced by the second respondent (“Mr Dean”), an architectural draughtsman. The land has apparently by now been transferred to Mr and Mrs Bohan’s daughter and her husband.
Ferntree seeks a declaration of infringement of copyright, damages pursuant to subs 115(2) of the Copyright Act 1968 (Cth) (“the Act”) and additional damages pursuant to subs 115(4) of the Act. In relation to Mr Dean, Ferntree seeks, in the alternative to damages, an accounting for profits. In addition, Ferntree seeks orders for delivery up and costs.
The respondents concede that the Golden Fern MK2 plans (“Ferntree’s plans”) are an original artistic work for the purposes of the Act, that there is copyright under the Act in them, and that Ferntree was at all relevant times the owner of that copyright. The copyright included the exclusive right to reproduce Ferntree’s plans in a material form. The notion of reproduction includes a reproduction of “a substantial part” of Ferntree’s plans: par 14(1)(b) of the Act. Being an artistic work, Ferntree’s plans are deemed to have been reproduced if a version of them is reproduced in a three-dimensional form: subs 21(3) of the Act. Ferntree alleges that each of the respondents, without…

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: [2002] FCA 16
Decision Date: 18 JANUARY 2002

CaseChat Overview and Summary

In the case of Ferntree Homes Pty Ltd v Bohan, the plaintiff, Ferntree Homes Pty Ltd, sought to establish that the home constructed by the defendants, the Bohans, and their daughter, Ms Putra, at 55B New Street, Auburn, was substantially similar to the plaintiff’s “Golden Fern MK2” display home. The plaintiff argued that the defendants’ home was based on the plaintiff’s plans and that this constituted an infringement of copyright. The defendants denied the allegations and claimed that the home was independently designed by their friend, Mr Dean, and bore no resemblance to the plaintiff’s plans. The case was heard in the Federal Court of Australia.

The central legal issues in this case revolved around the determination of whether the defendants' home, as constructed and designed by Mr Dean, was substantially similar to the plaintiff's "Golden Fern MK2" plans, and if so, whether there was a causal link between the two. This required an analysis of the similarities and differences between the two sets of plans, as well as the process through which the defendants' home was designed. The court had to consider whether the defendants' home was an unauthorised reproduction of the plaintiff’s plans, thereby constituting a copyright infringement.

The Federal Court found that while there were some similarities between the two sets of plans, they were not sufficient to establish that the defendants' home was substantially similar to the plaintiff's "Golden Fern MK2". The court held that the similarities were either coincidental or due to common design features within the building industry. Furthermore, the court found that there was no causal link between the plaintiff’s plans and the defendants' home, as the design process undertaken by Mr Dean was independent of the plaintiff’s work. Consequently, the court concluded that there was no copyright infringement.

The court dismissed the plaintiff's application and ordered that the plaintiff pay the respondents' costs. This decision underscores the importance of establishing both substantial similarity and a causal link between the original work and the allegedly infringing work in copyright cases.

Orders

Orders of the court

1. The application be dismissed.

2. The applicant pay the respondents’ costs.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

In the present case the questions arise: whether Mr Dean’s plans and the home constructed for the Bohans in accordance with them sufficiently resemble the plans for Ferntree’s Golden Fern MK2 or a substantial part of those plans, and, if so, whether there is the required causal link between Ferntree’s plans on the one hand and Mr Dean’s plans and the home erected for the Bohans on the other hand.introduction to the evidence In August 1995 John Kasbarian, the Managing Director of Ferntree, in association with Carmello Corrente of Corrente & Associates, an architectural draughtsman retained by Ferntree, designed a project home called the “Golden Fern”. Following this, Ferntree constructed a display version of the Golden Fern at Mt Annan. The Golden Fern at Mt Annan was advertised in Trends magazine in 1996. Ferntree was invited to display a home in a “display village” at Windsor Road, Kellyville, which, according to Mr Kasbarian, was variously called “New Homeworld” and “Homeworld Three”, and which, he said, was “the largest display village in the southern hemisphere”. (I will call that display village simply “Homeworld”.) To that end Mr Kasbarian and Mr Corrente made some amendments to the plans for the Golden Fern to produce the Golden Fern MK2. In 1997 the first Golden Fern MK2 was constructed and since that time has been on display at Homeworld. Mr and Mrs Bohan live at No 53 New Street, Auburn. Mr Bohan is a retired 72-year old man who had worked in the building industry for more than 35 years. The Bohans owned the house next door, No 55 New Street, Auburn. Number 55 was erected on the front of Lot 7 DP 30950. There was a capacity to subdivide Lot 7 so as to create a battleaxe allotment at the rear which would accommodate a second residence. Mr and Mrs Bohan have a daughter Jenny Maree Putra who is married to Agung Putra. In 1998 Mr Bohan told Ms Putra that he and his wife wanted to subdivide Lot 7 and to give the battleaxe block to Ms Putra and her husband so that they could build a house on it for themselves and their children, and also so that, in due course, Mr and Mrs Bohan might come to live with Mr and Ms Putra. In 1998 Ms Putra received an employment “redundancy package”. In about August or September of that year, she visited Henley Homes and paid $500 “deposit” on one of their project homes to be built on the battleaxe block and took away one of their brochures. She and her husband were to depart for Indonesia virtually immediately and did not have time to take advice from Mr Bohan. After receiving her father’s advice, she telephoned Henley Homes from Indonesia cancelling the order. By November 1998, Ms Putra was speaking to Joe Rodi, an architect, of Pro Arch Designs Pty Ltd, about the construction of a home for the Putras on the battleaxe block. In late November 1998 she instructed Mr Rodi to prepare drawings for their home and told him what her and her husband’s requirements were. The Putras were not satisfied with what Mr Rodi produced. In late February or early March 1999 Ms Putra told her father of this and he suggested they retain Mr Dean. Mr Dean was a friend of the Putras, and through them, of the Bohans as well.

Decision

Reasons for decision

LINDGREN J

As stated above, I do not think it necessary to discuss the many other items of similarity and difference which appear in annexure “D” to these reasons for judgment. I have discussed the most significant ones. Such similarities as exist do not persuade me that there was a causal link with Ferntree’s plans.conclusion All in all, I do not think that the Putras’ home at 55B New Street, Auburn, or the plans prepared by Mr Dean for the construction of that home, reproduce Ferntree’s plans for its Golden Fern MK2. For the above reasons the application will be dismissed with costs.

Ratio Decidendi

Legal Principle Established

Established by: LINDGREN J

Full text does not contain this section.

GENERAL DISTRIBUTION
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 454 OF 2000

BETWEEN:	FERNTREE HOMES PTY LIMITED (ACN 051 610 069) APPLICANT
AND:	PATRICK JOSEPH BOHAN & ISOBEL BOHAN FIRST RESPONDENTS MICHAEL DEAN SECOND RESPONDENT
JUDGE:	LINDGREN J
DATE OF ORDER:	18 JANUARY 2002
WHERE MADE:	SYDNEY

JUDGE:	LINDGREN J
DATE:	18 JANUARY 2002
PLACE:	SYDNEY