Henley Arch Pty Ltd v Del Monaco - [2019] FCCA 3848

FEDERAL CIRCUIT COURT OF AUSTRALIA

HENLEY ARCH PTY LTD v DEL MONACO

[2019] FCCA 3848

Catchwords:

COPYRIGHT – Infringement – artistic work – project home floorplan – whether alleged infringing work objectively similar – whether alleged infringing work reproduced a substantial part – Respondent claims a friend did not inform him of where the design came from – Respondent largely uncooperative – Copyright Act 1968 (Cth) s.115(3) – loss of opportunity damages – loss of profits – additional damages – Copyright Act 1968 (Cth) s.115(4) – claims upheld.

Legislation:

Copyright Act 1968 (Cth), ss.21(3)(a), 31(1), 32, 35(2), 35(6), 36(1), 115(2), 115(4)
Federal Circuit Court of Australia Act 1999 (Cth), ss.76(2), 76(3)(c)
Federal Circuit Court Rules 2001 (Cth), r.15.03

Cases cited:

Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309; [1999] FCA 1371

Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415

Facton Ltd v Rifai Fashions Pty Ltd (2012) 287 ALR 199; [2012] FCAFC 9

Geneva Laboratories Limited & Anor v Prestige Premium Deals Pty Limited & Others (No. 5) [2017] FCA 63;(2017) 122 IPR 279

Halal Certification Authority v Scadilone Pty Limited [2014] FCA 614; (2014) 107 IPR 23

Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217
Ron Englehart Pty Limited v Enterprise Constructions (Aust) Pty Limited (2012) 95 IPR 64; [2012] FCAFC 4
SW Hart & Co v Edwards Hot Water Systems [1985] HCA 69; (1985) 159 CLR 466
Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) [2015] FCAFC 65; (2015) 112 IPR 439

Truong Giang Corporation v Quach [2016] FCA 50

Applicant:

HENLEY ARCH PTY LTD

Respondent:

DORIANO MICHAEL DEL MONACO

File Number:

MLG 3588 of 2018

Judgment of:

Judge Baird

Hearing dates:

11, 12, and 13 November 2019

Date of Last Submission:

13 November 2019

Delivered at:

Melbourne

Delivered on:

13 November 2019

REPRESENTATION

Counsel for the Applicant:

Mr T Cordiner QC and Mr M Fleming

Solicitors for the Applicant:

Kellech Smith, Ashurst

The Respondent appeared in person

ORDERS

THE COURT NOTES THAT:

These orders have been amended pursuant to r.16.05(2)(g) of the Federal Circuit Court Rules 2001 (Cth), as marked, and adding italics and boldening.

THE COURT DECLARES THAT:

The Respondent has infringed the Applicant’s copyright in the residential house plan known as the “Colorado 37” (the Colorado Design) (as depicted at Schedule A of these orders) by:
(a)taking a photograph of a reproduction of the Colorado Design as it appeared in the brochure known as “Colorado Q1” (reproduced at Schedule B to these orders), without any identifying marks or title block, such photograph depicted in Schedule C to these orders (the Colorado Photograph);
(b)sending an email to Elite Building Services (Vic) Pty Ltd on 28 April 2016 containing the Colorado Photograph;
(c)authorising Elite to prepare plans for a home to be built at 21B Meeking Drive, Pakenham, Victoria, by reference to the…

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: [2019] FCCA 3848
Decision Date: 13 November 2019

CaseChat Overview and Summary

Henley Arch Pty Ltd (Henley Arch) brought proceedings against Del Monaco for copyright infringement of an artistic work, specifically a project home floorplan. The dispute concerned whether Del Monaco's floorplan was substantially similar to Henley Arch's copyrighted design, constituting an infringement under the *Copyright Act 1968* (Cth). The matter was heard before Judge Baird in the Federal Court of Australia.

The court was required to determine whether Del Monaco's floorplan infringed Henley Arch's copyright in its artistic work. This involved assessing the objective similarity between the two floorplans and whether Del Monaco had reproduced a substantial part of Henley Arch's design. The court also considered Del Monaco's defence that he was unaware of the origin of the design and his general lack of cooperation during the proceedings.

Judge Baird found that Del Monaco's floorplan was substantially similar to Henley Arch's copyrighted design, constituting an infringement. The court rejected Del Monaco's defence, noting his uncooperative behaviour. Applying s 115(3) of the *Copyright Act 1968* (Cth), the court found that Del Monaco had infringed Henley Arch's copyright. The court further considered the availability of additional damages under s 115(4) of the Act, assessing loss of opportunity and loss of profits.

Henley Arch's claims were upheld. The court ordered that Del Monaco pay damages to Henley Arch, reflecting the infringement of copyright.

Orders