Ian D McDonald Homes Pty Ltd v Priestly, David
[1996] FCA 780
•30 Aug 1996
LIMITED DISTRIBUTION
CATCHWORDS
COPYRIGHT - Architects' plans - whether infringement
Copyright Act 1968, s.115
IAN D McDONALD HOMES PTY LIMITED v DAVID PRIESTLEY & ORS.
No. G 016 of 1995
BEAUMONT J.
30 AUGUST 1996
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No. G 016 of 1995
)
GENERAL DIVISION )BETWEEN:IAN D McDONALD HOMES PTY LIMITED
Applicant
ANDDAVID PRIESTLEY and JANICE PRIESTLEY
First respondents
RUSSELL SCOTT
Second respondent
LOWERY HOMES PTY LIMITED
Third respondent
CORAM: Beaumont J.
PLACE: Sydney
DATE: 30 August 1996MINUTES OF ORDER
THE COURT ORDERS:
1.Declare that the respondents' plans of the "Baltimore" design, prepared by the second respondent on the instructions of the third respondent at the request of the first respondents, and described in paras. 8 and 9 of the statement of claim, substantially reproduced the applicant's plans of the "Barrenjoey" design, described in para.3 of the statement of claim.
2.Declare that, accordingly, the second and third respondents have infringed the applicant's copyright, and that the first respondents have authorised that infringement.
3.Order that the second and third respondents be restrained from further printing, copying, publishing, selling, supplying or otherwise disposing of their plans, described in paras. 8 and 9 of the statement of claim, containing the facade of the applicant's "Barrenjoey" design described in para.3 of the statement of claim.
4.Order that the respondents pay the applicant's costs to date.
2.
5.Reserve liberty to the applicant to apply, if so advised, for further relief on giving the respondents' solicitors 28 days' notice in writing.
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 ) No. G 016 of 1995
)
GENERAL DIVISION )BETWEEN:IAN D McDONALD HOMES PTY LIMITED
Applicant
ANDDAVID PRIESTLEY and JANICE PRIESTLEY
First respondents
RUSSELL SCOTT
Second respondent
LOWERY HOMES PTY LIMITED
Third respondent
CORAM: Beaumont J.
DATE: 30 August 1996
REASONS FOR JUDGMENT
INTRODUCTION
This is an action for an alleged infringement of copyright brought pursuant to s.115 of the Copyright Act 1968 ("the Act"). The applicant, Ian D. McDonald Homes Pty. Limited ("McDonald") carries on business as a licensed builder and builds "custom designed" residential buildings. In its statement of claim, McDonald claims, as it is now common ground, that McDonald is the owner of copyright in its plans or drawings ("McDonald's drawings") for a residential building named "Barrenjoey".McDonald claims that its copyright has been infringed in the following circumstances. The first
respondents, David and Janice Priestley, have constructed a residential building on their property, 1A Karloo Street, Turramurra, in accordance with plans ("Lowery's plans") prepared at their request by the second respondent, Russell Scott, an architectural draftsman, on the instructions of the third respondent, Lowery Homes Pty. Limited ("Lowery"), another builder. Lowery's plans purport to reproduce plans of a residential building advertised by Lowery as its "Baltimore" house design, or, alternatively, are an adaptation of such design. It is then said by McDonald that Lowery's plans constitute a substantial reproduction of McDonald's drawings which McDonald has not authorised, and thus, it is claimed, constituted an infringement of copyright.
The claim of infringement is disputed by the respondents.
The parties have agreed that, at this stage of the proceedings, the only issue to be dealt with is liability; so that if liability is found to exist, the question of any consequential relief in the form of damages, or an account of profits, which might be granted will be dealt with at a subsequent hearing.
THE LEGAL FRAMEWORK
By s.31(1)(b) of the Act it is provided that copyright includes the exclusive right, in the case of an
artistic work, to reproduce the work in a material form and to publish the work. Section 14(1)(b) provides that a reference to a reproduction of a work shall include reproduction of "a substantial part". By s.21(3), an artistic work is, in the case of a work in a two-dimensional form, deemed to have been reproduced if a variation is produced in a three-dimensional form.The law relating to the subsistence, and infringement, of copyright in architectural sketch plans and working drawings is now settled in this country.
A convenient starting point for the course of authority is Beck v Montana Constructions Pty. Ltd. [1963] 80 WN (NSW) 1578. Jacobs J. said (at 1579) that "substantial reproduction" was a question of fact and degree to be resolved by considering primarily two things: (a) the two sets of plans compared with one another; and (b) the access of the draftsman of the alleged infringing plans to the original plans. Jacobs J. went on to say (at 1580):
"I agree with what Mr. Handley said when he submitted that there could be no broadly based protection of architectural plans when in fact there are differences. 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.
It is therefore true I think to say that where plans are prepared for different blocks of land it may be very difficult indeed to claim any copyright in the plan. But in the present case it must be borne in mind that the plans were prepared in respect of the same block of land and that the expression therefore is going to have a similarity, if in fact there is a reproduction, which might not exist if the plans were in respect of different blocks of land with different aspects and the like conditions."
In Lend Lease Homes Pty. Ltd. v Warrigal Homes Pty. Ltd. (1970) 3 NSWR 265, Helsham J. cited the observations of Jacobs J. at 1579 in Beck and said (at 269):
"Bearing in mind the care with which one must approach the claim of copyright in such plans by reason of the existence in relation thereto of features that must be common to all such plans, I find nothing in his Honour's decision or any other decisions which would preclude me from holding that copyright in a proper case may exist in a floor plan of a building. It is true that the degree of protection which may flow from the copyright which subsists in any such plan may be limited. But if there is originality in the plan it is entitled to the protection afforded by the Act. It seems to me that there is no reason in principle for denying this protection by reason of the fact that the plan was produced for use in a common form intended to be used in as many different instances as the producer could secure for it. Counsel for the defendants has expressly disclaimed any defence based on an assertion that the floor plan is a design capable of being registered under the Designs Act 1906 as amended (Com.) and hence not capable of being the subject of copyright under the relevant Acts (see Copyright Act 1912-1963, s.9). So that as a plan of a building, if it has originality, it is the subject of copyright in my view, notwithstanding its proposed use."
In Ancher, Mortlock, Murray & Woolley Pty. Ltd. v Hooker Homes Pty. Ltd. [1971] 2 NSWLR 278, Street J. (at 282-3) said that the determination of whether there had been a reproduction of a substantial part involves two aspects: (1) an actual copying; and (2) the production thereby of something closely resembling the original. After referring to Beck, Street J. cited Copinger (10th ed., para.719) as follows (at 283):
"Copyright is infringed by the production of something which to the eye is a copy of the original ... it is naturally more difficult to prove infringement of copyright in a plain building than in one showing marked originality... . 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."
Street J. went on to say (at 284):
"Cases will not always be black or white where the alleged copying is from memory. The borderline area is clouded by a band of grey within which opinions and conclusions may differ. Within this grey band conflicting answers could without error be given to the questions - is that plan or house only a copy of the concept or style of the original and hence legitimate?, or is it a copy of the author's manifestation of that concept or style and hence an infringement?
In this grey band, in answering such questions as these, it can be of critical importance to know how the architect who is said to have infringed went about the preparation and drawing of his plan. It is only after making a finding, either on direct evidence or by inference, of copying, that is to say, of unfair or unconscientious use of the author's plan or building, that significance will attach to the degree of similarity. In a practical sense, of course, the degree of similarity is frequently a most telling element on the question of copying. To some extent the two aspects overlap, but they are distinct in point of principle and they must be considered with this distinction in mind."
In S.W. Hart & Co. Pty. Ltd. v Edwards Hot Water Systems (1985) 159 CLR 466, Gibbs C.J., said (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 Francis Day & Hunter Ltd. v Bron... `a sufficient degree of objective similarity between the two works' and `some causal connection between the plaintiffs' and the defendants' work'. Lord Reid said in Ladbroke (Football) Ltd. v William Hill (Football) Ltd. ...:
`Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of which he has taken.'
(See also [1964] 1 W.L.R., at pp. 283, 288 and 293; [1964] 1 All E.R., at pp. 473, 477 and 481.) In the same case, Lord Evershed said..., `that what amounts in any case to substantial reproduction ... cannot be defined in precise terms but must be a matter of fact and degree'."
Wilson J. said (at 484):
"If a case is to succeed where there is no evidence of access to the copyright drawings, the similarity of the impugned product to the drawings will be required to be so strong as to itself sustain, without more, an inference of copying. On the other hand, in a case where there is strong evidence in support of an inference of copying such evidence as there is of similarity may take on added significance. It must, of course, still amount to a sufficient similarity of a substantial part of the copyright work. But such dissimilarities as are apparent may be seen as no more than a deliberate attempt to obscure what has actually taken place, namely, the appropriation of another person's labour."
Wilson J. went on (at 484) to refer, with apparent approval, to the observations of Street J. in Hooker at 284.
See now also, in this Court Dixon Investments Pty. Ltd. v Hall (Lockhart, Spender and Ryan JJ.) 18 IPR 490; LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (Sheppard J.) 30 IPR 447; LED Builders Pty Ltd v Eagle Homes Pty Ltd (Davies J.) 29 July 1996, unreported.
THE APPLICANT'S CASE AS APPEARED FROM ITS EVIDENCE
The following emerged from the affidavit evidence of Mr. McDonald and from documents tendered in the applicant's case.McDonald is the owner of two lots in the "Bella Vista Estate" at Castle Hill upon which are erected two homes, one named "The Barrenjoey", the other "The Warrawee", depicted in extracts from McDonald's brochures being annexures "1" and "2" to these reasons.
The first steps towards the ultimate preparation of the plans for the "Barrenjoey" house design occurred in 1987 when Mr. McDonald "toyed" with the idea of employing, in a residential design, the feature of parapeted gables which Mr. McDonald had observed and photographed in old factories and commercial buildings in Woolloomooloo, North Sydney and Adelaide. He discussed this with Paul Meyer, a design consultant, who was to undertake work in this, and other,
areas for McDonald and for a related corporation, Grangevale Pty. Limited, trading as Grangevale Homes.
In November 1991, Mr. McDonald instructed Mr. Meyer to prepare a "parapet gable" facade for a "speculation" house to be known as the "Hermitage" design, based on the "Grange" being a design used by Grangevale Homes. Mr. McDonald instructed Mr. Meyer to "meld" the "parapet gables" facade into that design. Mr. Meyer prepared several plans in this connection.
In November 1992, Mr. McDonald instructed Mr. Meyer to design a home for Lot 55 Stock Farm Avenue (Bella Vista Estate), Baulkham Hills, accenting the "bold" lines of the "Hermitage" design. Although plans were submitted to the local council for approval on 14 January 1993, amendments were made to the design thereafter. The plans for the design, entitled "Barrenjoey" were reduced to their final form on 17 February 1993. Construction, which commenced in February 1993, was complete by September 1993.
In November 1993, the "Barrenjoey" won a Baulkham Hills Council Building Design Award. According to a newspaper report ("Daily Telegraph" 10 December 1993) "[t]he Barrenjoey appealed to the judges for both its handsome French provincial design and the quality of its construction".
On 31 March 1994, McDonald tendered a design and price to build a variation of the "Barrenjoey" house design to be known as the "Bilgola", at Lot 100 Glenshee Place, Glenhaven. Design adaptations were required in order to meet site constraints.
For this purpose, in late February 1994, Mr. McDonald engaged Mr. Scott as the draughtsman, explaining to Mr. Scott that the work involved "adaptations to some of [McDonald's] standard designs". Mr. McDonald requested, and Mr. Scott agreed, that McDonald's plans be treated as confidential, since Mr. Scott also did work for McDonald's competitors. Mr. McDonald provided Mr. Scott with a master set of working drawings for "Barrenjoey" and for other house designs. They discussed the adaptations required. Mr. Scott carried out the design work, rendering an invoice dated 24 March 1994.
On 27 March 1994, Mr. and Mrs. Priestley made an inquiry of McDonald at the Bella Vista Estate, indicating an interest in one of the McDonald home designs (described in McDonald's "Client Inquiry Form" as a "Wahroonga") to be erected on their vacant lot at 1A Karloo Street, Turramurra.
In June 1994, Mr. and Mrs. Priestley informed McDonald that they were not going to accept its tender; and that Lowery was to build for them.
In September 1994, Mr. McDonald noticed that a "Spring 1994 Project Home Buyers Guide" published at about that time, carried an advertisement by Lowery of the "Baltimore" design, which is annexure "3" to these reasons.
In September 1994, Mr. McDonald learnt that Lowery was building a "Baltimore" design home for Mr. and Mrs. Priestley at Turramurra in accordance with plans prepared by Mr. Scott.
By letters dated 16 September 1994, McDonald's solicitors wrote to Mr. and Mrs. Priestley, Mr. Scott and Lowery, claiming that the erection of the "Baltimore" design breached McDonald's copyright in the "Barrenjoey" design.
The solicitors for Lowery replied by letter dated 21 September 1994, denying any "adaptation" of the "Barrenjoey" design, which, they said, was "very different". They went on to say:
"We understand that your client's plan includes parapet walls of approximately 2' on the frontage of the property and that the home is either rendered or treated with a finish known as `Granisite'. We would point out that the home being constructed by our client Company does not have parapet walls and that the same is finished in `selected brickwork'. Our client Company's contract with Mr and Mrs Priestley does not provide for the brickwork to be rendered, nor finished in a `Granisite' finish."
The solicitors for Mr. Scott replied, inter alia, by letter dated 27 October 1994 as follows:
"We have carefully considered your clients claim that our client's house known as the `Baltimore' and being constructed at 1A Karloo Street, Turramurra is an adaptation of a design owned by your client the `Barrenjoey' home. Our client does not concede that your client has any copyright in the `Barrenjoey' home, but even if that were not so, we have advised our client that the `Baltimore' is so substantially different to the `Barrenjoey' home that no claim for alleged breach of Copyright can be sustained.
In respect to the allegation that our client has been provided [with] a working drawing of the `Barrenjoey' we are instructed by our client no such working drawing has ever been provided. Further in so far as working drawings of other homes have been provided, it is our instruction that they have been provided in circumstances where they have become the property of our client and no longer remain the property of your client.
Although Mr. McDonald was cross-examined, none of the history of the events outlined in the foregoing summary of his evidence was seriously challenged, except Mr. McDonald's evidence that he and Mr. Scott discussed the need to keep McDonald's plans confidential.
In its case in chief, McDonald called expert opinion from Dr. Paul-Alan Johnson. I will discuss that evidence later, when considering the expert opinion evidence of Dr. John Richard Cooke, called on behalf of the respondents.
THE RESPONDENTS' CASE AS APPEARS FROM THEIR EVIDENCE
Affidavit evidence was filed by, or on behalf of, each of the respondents.(a)Mr. Scott's affidavit sworn 27 September 1995 and his further evidence in cross-examination
In his affidavit, Mr. Scott denied that, in his discussion with Mr. McDonald in February 1994, any reference was made to the need to keep Mr. Priestley's plans confidential. He also said that Mr. McDonald gave him a copy of the "Bilgola" design, and not a master set of the "Barrenjoey" plans; and that because the Glenshee site was steep, he had to make several significant changes to the "Bilgola" design, and also make adaptations to the "Wahroonga" design.
Mr. Scott had designed houses for Lowery for 10 years, including the "Kensington" design, which Mr. Scott prepared in about 1991-2. The "Kensington" design is annexure "4" to these reasons.
Mr. Scott's version of his initial discussion with Mr. Lowery in the present connection was as follows:
"In the beginning of 1994 Fred approached me and we had a conversation in which he said words to this effect:-
`Russell, I need a floor plan about the size of the `Kensington' but a house which has a much softer approach.'
I said:-
`You don't want that ornate gingerbread house look. The trend is going towards granasite or bagged and painted.'
Fred said:-
`Let's try to keep it to a 20 metre block.'"
In his affidavit, Mr. Scott then said:
"Following my conversation with Mr Lowery I decided that it would be advantageous for his company to produce a house with a much simpler and softer appearance. I prepared a floor plan based upon the existing `Kensington' and made some changes to the front facade. When preparing these drawings, I had no reference to the `Barrenjoey' plans or design of the Applicant. I did not even have those plans or designs in my possession at that time. When I completed the floor plan and facade design I provided to Fred a copy of my sketches. Annexed herewith and marked with the letter `B' is a copy of the sketch drawings that I gave to him. For many years I was an in-house draftsman for P G Binet Pty Ltd. In early 1990 this company was involved in the construction of various homes in a community title subdivision at Balmain. The development approval for this subdivision provided that the homes to be built on the separate lots were to have the following features:-
a.bagged and painted;
b.cement rendered heads over the windows;
c.long slotty tall windows;
d.parapeted gables;
e.lots of corbels for shadow lines on chimneys.
I decided to design the house for Fred with these features. I had previously designed similar houses for P G Binet Pty Limited and annexed and marked `B1' are copies of designs in this style that I had previously drawn."
Annexure "B" is annexure "5" to these reasons.
Annexure "B1" is annexure "6" to these reasons.
Mr. Scott's affidavit went on:
"5.A short time later I recall Fred Lowery contacted me and said words to this effect:-
`Russell we have a client that likes your sketch. Can you do a master plan immediately.'
I replied:-
`No problems Fred.'
I then provided Fred Lowery a working drawing for the design which I had previously given to him.
6.I recall in or about the middle of June 1994 I was again contacted by Fred Lowery who said to me words to this effect:-
`Russell the client likes your sketch however he has requested some changes could you please amend the working drawing incorporating those changes.'
Annexed herewith and marked with the letter `C' is a copy of the drawings that I gave to Fred Lowery. Those drawings are dated 27 June 1994. At that time the design for the house did not have a name. I was not aware as to the name of the client. I was only informed as to the location for the house to be constructed. When preparing the final drawings I did not refer to the `Barrenjoey' plans or any other plans in my possession, except for the original sketch plans that I had prepared for Fred Lowery which is annexure `B' herein."
Annexure "C" is annexure "7" to these reasons.
In cross-examination by Mr. Bannon, appearing for McDonald, Mr. Scott was asked about a series of plans he had prepared in March 1994 on Mr. McDonald's instructions, for three sites at Glenshee Road. Mr. Scott gave this evidence:
"MR BANNON: The last plan produced by you could you identify that for me?---That is the top block in the Glenshee three block situation.
This one you have in front of you now that was one of the plans you did for one of the Glenshee Road sites under instructions from Mr McDonald's company?---That's right.
That was again done in March 1994 I take it?---It was done in March with some variations for again the difficulty of the site.
And that is based on the Barrenjoey plans?---It's been traced back to front. I would've traced one of the A3s that were supplied in reverse and then you put the writing on the other side.
But in essence it is based on the Barrenjoey?---For sure.
I tender the Glenshee Road plan prepared in March 1994 by Mr Scott based on the Barrenjoey plans.
EXHIBIT Q - GLENSHEE ROAD PLAN BASED ON BARRENJOEY PLAN"
Exhibit Q was subsequently referred to by Mr. Scott in his cross-examination as follows:
"MR BANNON: Just as a separate matter the Bilgola plan you appreciated was simply a scaled-down version of the Barrenjoey?---I wasn't sure of the changes between the two.
HIS HONOUR: I am interested to know whether there is an issue, Mr. Harris, about this. Is it common ground between you that Bilgola was a scaled-down version of Barrenjoey?
MR HARRIS: Yes, there is.
HIS HONOUR: I rather thought it was.
MR. BANNON: So this is a tracing you have referred to this exhibit Q?---Yes.
That is the word you used?---Yes.
And forgive me I am a lawyer but I assume a tracing means as the ordinary layman would expect you just lay something over the top of something else?---The A3 plan I was supplied with was obviously a mirror reverse of this one not the hand that I required.
HIS HONOUR: This one being exhibit Q?---Exhibit Q, sorry. And I have traced it as it was and turned it over and put the writing on the other side to get the hand that I required."
Earlier, Mr. Scott had given this evidence:
"[MR BANNON] So you did a lot of work on those drawings in March 1994, did not you?---Yes.
A lot of work on what you have got there, exhibit Q, the Barrenjoey plan. Correct?---The majority of it is a trace with variations.
...
I think you agreed that exhibit Q was based on the Barrenjoey drawings, you agreed with that yesterday?---Yes.
You did a lot of work on exhibit Q in March 1994 for Mr McDonald for the Glenshee Road site?---Yes.
You did a lot of work on the Wahroonga plan for the Glenshee Road site in March 1994?---Yes.
So you were well familiar with the Wahroonga floor plan, were not you, in March 1994?---Yes."
Mr. Scott gave the following evidence when, later, he was cross-examined about the time when annexure "B" was prepared:
"[MR BANNON] ... You would agree would you not, that the plan, annexure B, could well have been prepared as late as certainly March 1994 anyway?---I think it was prepared end February, start of March. We start - Fred and I - start[ed] talking about coming up with a different facade for his Kensington at that Christmas of the - that would be 93. We kicked it around and start gathering thoughts, no actual design work had actually started. I think that annexure B was put together, probably the drawing work happened end of February and Fred would have picked it up in that week of 1 March.
Let us just be clear about it. You have got no doubt have you that annexure B was prepared just a short time before the first time he contacted you and said we have a client who likes your sketch? You are not seeking to resile from the evidence you have given about that, are you?---No.
So that if the first time he contacted you about that was in late May, that would necessarily follow, would it not, that you prepared the sketch early May at the latest?---The plan was prepared for Fred Lowery not for Mr Priestley.
I understand that, but you have agreed that it was prepared just a short time prior to this conversation referred to in paragraph 5?---Well again I can only assume the client they're talking about is Mr Priestley.
You have not indicated anywhere in your affidavit have you, that you had discussions with Mr Lowery about this matter in Christmas 93?---No, I have not."
Mr. Scott was further cross-examined as follows as to the time at which annexure "B" was prepared:
"When do you say you drew annexure B?----End of February, start of March.
So that you could have had the Bilgola plans at the time you were drawing annexure B?---No.
You got the Bilgola plans at the start of March, did you not?---Yes, I did.
So you could have drawn annexure B at the same time as you had the Bilgola plans?---If I drew it at the end of February I did not have the Bilgola plans.
You said end of February, start of March?---It was completed and picked up by the start of March. It was done in the end of February, picked up start of March.
Do you want to change the evidence you gave only moments ago that you completed these plans end February, start March, do you want to change that evidence?---No.
It follows from that, does it not, that it is at least possible that you had not completed the plans until after you had received the Bilgola plans?---Are we talking about annexure B?
Yes.It is at least possible that you did not complete annexure B until after you had received the Bilgola plans?---No.
Not even possible?---I don't believe so, no.
Have you ever been in any doubt as to whether or not you completed these plans as early as February?---No.
You have always been certain of this matter, have you?---Could be certain, yes.
You do not mention that anywhere in your affidavit, do you?---No.
What is the date which appears on annexure B?---27 September 1995.
Is there any date on your drawing?---No.
HIS HONOUR: That date you read out is the annexure note, is it not?
MR BANNON: It is annexure marked B, yes. You have been in this business a long time, Mr. Scott, why would you not have dated this drawing?---I date just my working drawings, the completed work."
In cross-examination about the use here of his "Kensington" design, Mr. Scott gave this evidence:
"[MR BANNON] Now, you say that these drawings were based on the Kensington floor plan, is that correct?---Yes, the Kensington variation.
Let us just see what you said in your affidavit. You say in paragraph 4:
I prepared a floor plan, based on existing Kensington
?---Yes.
Do you want to change that evidence?---No.
You say [you] made some changes to the front facade, do you recall saying that?---Yes.
Well, that is a little misleading, is it not, to suggest you simply made some changes to the front facade of the Kensington?---No.
Well, would not you agree that the front facade of your annexure B bears no resemblance to the front facade of the Kensington?---Annexure B was a new facade of the Kensington variation in Fernbank Drive.
Would you agree that it bears no resemblance to the front facade of the Kensington?---Annexure B bears no resemblance to the Kensington.
Yes.You agree with that do you?---The front facade doesn't look like the Kensington, no.
Looks nothing like it, does it?---No.
Why did you simply say I made some changes to the front facade of the Kensington?---It was more economically viable to go with the floor plan you already know that works."
Later, Mr. Scott said this:
"[MR BANNON] Do you say that when Mr Lowery first raised this there was no discussion as to what precise design you were going to look at?---There was no precise design. I advised him to stick with the floor plan he already knew the costings on. Previously we had already come up with what we thought was a successful layout. Why re-invent the wheel with the layout?
Was there any discussion about the facade?---Yes, there was a discussion about which way we thought the trends were going, yes.
What did he say to you and what did you say to him?---He said to me that it was his belief that the power base for the Federation style of home was waning, he wanted something simpler. I said to him you have got to get away from that gingerbread house look, I think is the term I used, they start to get very ornate and we were just going to simplify it up.
Did he say that he wanted a French Provincial/Georgian facade?---We have spoken about a Georgian, I don't believe Fred has ever asked me for a French Provincial.
But he certainly did not give you complete carte blanche to go and make your own design, did he?---He does.
Mr. Scott went on to say:
"[MR BANNON] You know it [Ex D, one of the Glenshee Road designs] looks nothing like the Baltimore?---No, it doesn't look anything like the Baltimore.
So there is an example where you had a free hand in designing a property, you say, at about the time, or perhaps shortly after when you designed annexure B, and you came up with something that looks nothing like the Baltimore which you say you designed independently?---The Baltimore was based on the Kensington which is owned by Fred Lowery.
But the facade looks nothing like the Kensington, does it?---But I wasn't trying to make it look like the Kensington.
You had a free hand?---But I could have made it look [like] anything."
Mr. Scott had earlier said in his evidence that Annexure B, being only a sketch, did not have dimensions and that the only working drawing he prepared for this job was dated 27 June 1994.
In the course of his cross-examination, Mr. Bannon asked Mr. Scott about an earlier draft of his affidavit, which became Ex."R", and which gave the following version of his initial discussion with Mr. Lowery about this job:
"In about 28th April, beginning of 94, Mr. Lowery said to me:
`I have been receiving a lot of enquiries from the North Shore for a French Provincial/Georgian facade. Can you design me something that I can use?'
From my knowledge, I knew that the Federation style, which had been very popular during the late 1980s and the first part of the 90s, was losing its popularity and that French Provincial and Georgian designs were now becoming more popular, particularly on Sydney's North Shore.
Following my conversation with Mr. Lowery, I decided that it would be advantageous for his company to produce a house with a French Provincial appearance but which was based on an existing floor plan constructed by the Third Respondent. I prepared a floor plan drawing which contained some changes to the `Kensington' drawing, and I then drew a sketch of a French Provincial facade for the `Kensington' as amended. When preparing these drawings, I had no reference to the `Barrenjoey' plans or design: I did not even have those plans or designs in my possession at that time. When I had completed the floor plan and facade designs, I gave them to Fred Lowery. Annexed hereto and marked `B' and `C' are copies of the drawings that I gave him."
Mr. Scott was cross-examined on para.4 of the draft affidavit as follows:
"[MR BANNON] ... Was it true, as recorded in paragraph 4 of his document, that Mr Lowery said to you:
I have been receiving a lot of inquiries from the North Shore for a French Provincial Georgian facade. Can you design me something that I can use?
Was that true?---That is true, but the facade that people perceived to be French Provincial is not - it's like a lot of people call contemporary - you know what they call contemporary is not always contemporary.
Was it true that this is what Mr Lowery said to you to the best of your recollection, sometime in 1994, before you prepared this new design?---French Provincial Georgian, could well have been, yes.
Well, Mr Scott, this is the information you gave to your solicitor to prepare this document; correct?---This one here?
Yes?---Well, it's been dictated to the solicitor, yes.
As a result of information you provided?---Yes.
Well, did you make up the fact, when you gave him that information, that Mr Lowery had said to you:
I have been receiving a lot of inquiries from the North Shore for a French Provincial Georgian facade. Can you design me something that I can use?
Did you make that up?---It was probably my perception of - what he means is French Provincial is really a Georgian, it's more your square box.
You appreciated you were being asked by the solicitor to indicate what was your recollection of what Mr Lowery said to you and what I am asking you is was that what Mr Lowery said to you?---That is - yes.
Now, that does not appear, that statement, in your affidavit as sworn, does it?---I don't know.
That conversation referred to in the draft affidavit is the conversation in paragraph 4 of your sworn affidavit, is it not?---Sorry, what did you say then again?
The conversation which is referred to in paragraph 4 of the draft affidavit is the same conversation which you have referred to in paragraph 4 of your sworn affidavit? In other words it is the first occasion you say when Mr Lowery asked you to prepare this design?---You are saying that No 4 in this draft is the same as No 4 in this sworn - - -
I am suggesting to you that in paragraph 4 of the sworn affidavit you are purporting to set out, are you not, the conversation you had with Mr Lowery on the first occasion when he suggested to you that you prepare a new design?---The first time we decided to do a new design was December/January of that year. We talked about it for a long while before we actually did a great deal of final work.
Is it false to suggest as you do in paragraph 4 of your sworn affidavit that in the beginning of 1994 Mr Lowery said the words set out in paragraph 4 of your sworn affidavit?---No, I don't believe that is right at all.
So that is an accurate statement, is it, paragraph 4?---Paragraph 4 of the sworn I believe is accurate.
And there is no reference there to Christmas 1993 or any other conversation, is there?---No.
Are you not intending to indicate by that paragraph that this was the first occasion when Mr Lowery asked you to prepare this new design?---In the sworn statement that is the way it sounds, yes.
Can you explain why it is you have not included in your affidavit the reference to Mr Lowery saying `I have been receiving a lot of inquiries from the North Shore for a French Provincial Georgian facade. Can you design something that I can use'. Can you explain why that is not in the sworn affidavit?---I can't explain that.
You appreciated, did you not, that the Barrenjoey design was known and had been referred to in the Telegraph article as a French Provincial design, did you not?---No, I did not.
And that is why you excluded that conversation from the sworn affidavit?---I don't believe it to be French Provincial.
You do not believe it to be French Provincial?---I don't believe the Barrenjoey is a French Provincial.
I propose to tender this affidavit if my friend does not object.
MR HARRIS: No objection
HIS HONOUR: I think that will become exhibit R.
EXHIBIT R - AFFIDAVIT
MR BANNON: So it would follow from your last answer that you do not think that you designed a French Provincial house or facade in the Baltimore?---No.
And you would deny, would you, that you have ever thought that what you designed was a French Provincial facade?---No.
In other words you deny - - -? Yes."
Later, Mr. Scott was asked this:
"[MR BANNON] It is quite clear in that passage [in Ex R] you are stating that you prepared, when you prepared the Baltimore drawings, what you regarded as a French Provincial facade?---Yes.
Would you like to change the evidence you gave moments ago that you had never believed that you designed a French provincial facade for the Baltimore?---Yes.
It is inaccurate, is it not?---It's a fairly bad French Provincial facade but that's what I have said.
Were you trying to mislead the court when you gave that answer?---No.
You see if you continue on in paragraph five of that draft you see you indicate there, albeit in the middle of June 1994, you say Mr McDonald gave me the plans for the Barrenjoey House, that reflected information which you gave to the solicitor, did it not?
That reflected information you gave to the solicitor, did it not?---Yes, yes.
You have been at pains to deny in this court and in your affidavit that you had ever received the plans for the Barrenjoey House, have you not?---Well, the Barrenjoey is the one that is on display, it was just the common terms for that house that's on display but the A3 that I was given was a Bilgola.
So you were familiar with the Barrenjoey on display?---Well, they're both the same house - - -
You are familiar with the Barrenjoey on display, are you not?---I'm familiar with the Barrenjoey on display.
You were then familiar with the Barrenjoey on display, were you not?---Then, when, June 1994?
Yes?---Yes.
And in early 1994 before then as well?---A lot more so in June 1994."
Mr. Scott was re-examined about Ex. "R" by Mr. Harris, for the respondents, as follows:
"[MR HARRIS] Did you read it [Ex.R] at that time?---Yes.
Some differences between this affidavit and the affidavit that you have sworn in this proceedings have been pointed out to you in cross-examination. Are you able to indicate to the court why those changes have occurred in the affidavit?---It would only - it would only be when you're asked to - do an affidavit you sit on the other side of the desk from the solicitor and give what you have as the - what you think the process was, I didn't have drawings - I don't take drawings down there with dates on working drawings or anything like that to refer to, so possibly when I got back to the office I worked out that some of the dates were incorrect.
That refers to the dates or changes or differences between the draft affidavit and the final affidavit so far as dates are concerned. Are you able to offer any explanation as to the reasons for the other changes from the draft to the final affidavit?---In relation to the French Provincial, it is such a loose term, I'm still not positive what actually that is. You get quite a few people come in, be they builders privately and say they want a French Provincial, I'm not sure. Quite often I'll do a drawing with what I perceive - normally it's if they don't like the Federation, they want it tamer, they'll say French Provincial or Georgian or whatever and if you dish them up that, they don't know what French Provincial is either, the layman.
I am sorry, I do not think that you are answering my question, I am asking you can tell us why it is that in your draft affidavit you make reference to this particular house as being of French Provincial Georgian design or facade, then in the affidavit that you have sworn in these proceedings there is no such reference?---In that item four where it says, `I've been receiving a lot of inquiries from the North Shore for French Provincial Georgian facade'?
Yes, I am asking you why is that statement in the draft affidavit and in particular the reference to French provincial Georgian facade which appears there and in other places in the draft affidavit, whereas there is no reference to that in the sworn affidavit?---I don't know."
(b)The affidavit of Mr. Priestley sworn 28 September 1995 and his other evidence
In his affidavit, Mr. Priestley said that the subject of all of his discussions with McDonald's representatives at the Bella Vista site was the "Warrawee" design, although the quote referred to the "Wahroonga"; and
that he did not take a "Barrenjoey" brochure, indicating to McDonald's representatives that he was not interested in that house.
Mr. Priestley gave the following version of the sequence of events:
"3.In answer to the whole of the Applicant's claim I say as follows; my wife and I initially entered into discussions with seven (7) builders to obtain tenders and quotes for the construction of a home at 1A Karloo Street, Turramurra. Ian McDonald Homes was one of the builders approached in addition we approached Goldmaster Homes and P G Binnet, among others. During these discussions my wife and I attended at the exhibition home of Ian McDonald Homes at Lots 55 and 56 Stockfarm Avenue, Baulkham Hills, commonly known as Bella Vista. My wife and I were interested in the floor plan of the house design of Ian McDonald known as `Warrawee'. My wife and I required certain additions to be added to this house design and a tender was provided by Ian McDonald Homes incorporating those additions.
4.Discussions ensued over the following months between the various builders and my wife and I had decided to have Goldmaster Homes construct the house on our land. In or about late May early June 1994 I phoned Fred Lowery of Lowery Homes in relation to constructing a home on our property. I recall saying to Fred words to this effect:-
`We have decided to use Goldmaster Homes to build our house and are due to pay the deposit, however I am not 100% happy. If I send you over a copy of the inclusion list and the floor plan indicating the size could you let me know if you can do something similar in the same price range. We have a quote from Goldmaster for $265,000.00.'
I then sent by facsimile to Fred Lowery a copy of the floor plan and inclusions of the
Goldmaster house. Annexed herewith and marked with the letter `A' is a copy of the floor plan sent by me to Fred Lowery.
5.Approximately two (2) days later my wife and I attended upon the sales agent for Lowery Homes, Mr McKenzie. At that meeting Mr McKenzie presented to us plans. The plans also contained a front facade profile. My wife and I were happy with the floor plan layout. We discussed various minor modifications in respect to certain room sizes and requested Mr McKenzie to provide a quote. The plans seen, at that time by my wife and I had no name. I recall Mr McKenzie saying to me at the time words to this effect:-
`This is a new design which we have not built yet.'
A couple of days later a quote was received from Lowery Homes in company with a completed plan. We paid a deposit to Lowery Homes and instructed that they commence constructing the home as soon as possible. Construction of the home commenced in the first week of September 1994. My wife and I moved into the completed premises on 25 January 1995."
In cross-examination, Mr. Priestley said that he visited Bella Vista on three or four occasions; and one of those visits was on 27 March 1994; he "looked through" the "Warrawee" and the "Barrenjoey". He had had previous experience studying architectural plans as he had earlier worked with his father building houses.
Mr. Priestley gave this evidence in cross-examination:
"[MR BANNON] May we take it that you were also concerned not only about the size of the house but also the appearance?---No.
You were not concerned at all about the appearance
of the house?---We had a number of criteria when we were looking for a house, or deciding what to build; the physical appearance as a whole was not the issue, part of it was an issue.
Is there a difference of opinion between you and your wife on some of the issues involved in looking for houses?---No.
You do not tell his Honour that the appearance of the outside of the house was irrelevant to your decision making process, do you?---I don't say it's irrelevant, no.
And it was an important matter, was it not?---It was a long way down the level of - down the hierarchy of importance.
It was an important matter, was it not?---In a hierarchy I would say no.
You were about to embark on the largest financial transaction of your life, correct?---Yes.
This is the house you propose to live in for many years, may we take it?---No.
For a number of years?---Not necessarily.
For more than a few weeks?---Yes.
And possibly for a few years?---Possibly.
May we take it from what you say that you were hopeful of being able to sell this house and move on to something else?---At some point.
To a bigger house?---Not necessarily, no.
A better house?---No, a different one that was financially advantageous to us.
May we take it then that the re-saleability of this house would have been a matter of great concern to you?---Yes.
May we take it that you were operating on the assumption at the time you made the decision to enter into this house, that the outside of the house could be very important to people buying the house from you?---I see it as being part of a total package, so individually perhaps not.
But you are not seeking to indicate that it was not particularly important to you, are you not?---I am.
What I am suggesting to you is that if you bought it with a view to a fairly quick re-sale, hopefully, you must have taken into account the fact that there would be many potential purchasers of the house who would be very concerned about the outside appearance of the house?---No, I was concerned that the outside appearance was reasonable in comparison with the rest of the features the house might have.
I will just ask you this one more time, do you agree that the outside appearance of the house was an important matter to you?---No. I can clarify that just slightly, and that is that I had one criterion that I wanted a bagged or rendered house which was the instructions given to all builders that we approach[ed]."
Mr. Priestley went on to say that the floor plan of the "Warrawee" was acceptable to him. However, it had two garages, and he wanted three; hence the reference in McDonald's quote to "Wahroonga" which Mr. Priestley understood to be the "Warrawee" with the extra garage. He conceded that the statement in his affidavit that "all discussions" with McDonald "related to `Warrawee'" and not "Wahroonga", was misleading.
Later, Mr. Priestley was cross-examined as follows:
"[MR BANNON] Can you explain how it was that you came to swear an affidavit with that sentence in it?---Because the Warrawee and the Wahroonga to all intents and purposes from our point of view or from my point of view are the one and the same house.
And you go on in the next sentence to say the quote received from the applicant was however in relation to the Wahroonga designs?---Yes.
Were you not seeking to paint a picture in that paragraph to say well, this Wahroonga design notion just turned up on our doorstep and we knew nothing
about it?---No, because I considered them to be one and the same. They are in fact the same house. One has an extra garage, being the only difference.
Now, you have moved into your house?---Yes.
Do you like the look of the outside of it?---Yes, I do.
Pleasing to the eye?---Yes, it is.
Are you glad you choose the design you did as far as the outside is concerned?---From that perspective indifferent. I am glad we built that house, yes.
But do you agree that you find the outside design appearance of your own house pleasing to your eye?---I do, yes.
... [Y]ou have had firsthand experience of seeing the Barrenjoey side of the house?---Yes I have.
May we take it that the outside design of that house is also pleasing to your eye?---Yes.
But you did not want, did you, the outside appearance of the Warrawee?---In the initial instance we always wanted the Warrawee with a bag[ged] or rendered finish, always, from the very beginning of our conversations.
But you did not want the Warrawee as it was, did you?---The Warrawee as it was, no, we wanted it bagged and rendered."
As to when he first became aware of the name "Baltimore", Mr. Priestley said:
"[MR BANNON] You say [in para.2 of your affidavit] that you first became aware of the name Baltimore in November 1994?---That's correct.
Do you recall that you refer to that in your affidavit in response to a note of the conversation which Margaret Rudd [McDonald's representative] had with you?---That's correct.
Which she indicates that you said to her that you were building the Baltimore?---She says that, yes, supposedly.
You are adamant that you were not aware of the Baltimore name until November 1994?---That's correct.
You are quite sure about that?---Beyond a shadow of a doubt.
Are you as sure about that matter as you are about the fact that you did not pick up a Barrenjoey plan?---Yes.
The word Baltimore just never crossed your path, did it, before November 1994?---Never.
You were in Sydney in September 1994?---Yes.
You recall there was a letter of demand issued by the solicitors for the applicant in relation to the building of the house?---I do.
That came to your attention?---It did.
You dealt with it?---Yes.
That referred to the Baltimore, did it not?---I don't recall.
That was dated 16 September 1994?---I don't recall."
As to when he first met Mr. Lowery, Mr. Priestley said this:
"[MR BANNON] Now, are you able to say when it was that you first had contact with Mr Lowery?---Yes, 4th of June 94.
That is at odds with what you said in your affidavit is it not?---It may be, which particular part are you - - -
Paragraph 2, indent 43, you report a conversation that you had with Mrs Rudd? [in September 1994 in which Mr. Priestley referred to a discussion he had had with Mr. Lowery in early May 1994] --- No, in this particular point I said in early May.
Yes, is early May correct?---No, it was 4 June, it was later than that. That was a conversation off the cuff whilst I was at work and it was a very brief conversation where I wasn't specific to the extent that it was going to be brought up in a court of law. It was a general comment giving the general sequence of events at the time."
Mr. Priestley gave the following description of his first discussion with Mr. Lowery:
"[MR BANNON] And who did you first discuss the matter with at Lowery Homes?---In relation to doing any - in relation to any contact with Lowery Homes was with Fred.
And that was a telephone conversation?---Yes it was.
What did you say to him and what did he say to you?---The conversation I had was along the lines of that we were due to pay a deposit to Goldmaster Homes because we had decided to build one of their houses after much toing and froing. We had spoken with several other builders and we weren't happy with - on the day we were supposed to pay the money I wasn't happy with Goldmaster. We had decided between my wife and myself to look around for a couple of more days. If nothing happened go back to Goldmaster. On the way back from visiting the house, that's the Warrawee, we drove through some subdivisions, had a look at houses in general, saw a house with Fred's sign on it and liked the look of that house in particular, the type of structure it was and that night I rang Fred. That was the first discussion. The gist was that we were building a house along those lines for roughly $265,000, if you could do something of a similar size with the same inclusions for the same money we would be prepared to talk further, if he couldn't, say so, and we'd just go back to Goldmaster.
But what attracted you to Mr Lowery was, you say, you liked the look of the house?---There were two reasons, one, we liked the house - - -
Did not you say that a moment ago, you liked the look of the house?---We didn't like that particular house, we liked the look of the house in general.
Do you want to change the evidence you gave a few minutes ago?---No, I don't. It was introduction to a builder, not anything more than that.
HIS HONOUR: You were interrupted there, you were saying there were two reasons?---Yes, there were two reasons.
You gave the first?---The first reason was because we had seen his name on a house and we recalled at
that point that a friend of ours had mentioned Fred Lowery's name some time prior to us looking for any houses. We didn't know who he was apart from the fact that they had mentioned him and said he was a good builder. We hadn't seen him advertised everywhere, hadn't seen the sale anywhere, we saw his name that day, recalled that and so I said that we would follow it up. So the main reason was not just the house it was because we recalled from a friend of ours that it was a recommendation.
MR BANNON: Just taking up another matter you raised, you were due to pay the deposit under the Goldmaster Homes on 25 May?---Yes.
It was prior to 25 May then that you had your first contact with Mr Lowery?---No, it wasn't, it was actually a week later but as I said the date was changed and you'll see it in those faxes plus or minus a week based on the changes we made to the - - -
Then did you have a meeting with somebody at the - - -?---Yes, we did. That was at the - the first discussion was a Thursday night, on the phone. On the following Saturday we met with David McKenzie who is a Lowery Homes sales consultant.
You discussed what you wanted?---No, we met him on site at a house in Castle - or Glenhaven I think, yes, Glenhaven where he showed us a couple of houses that Fred had built to give us an idea of the quality he was doing and we - whilst we were there he had a set of plans under his arm and he said it was a new house that they were looking at building and we said could we have a look, he said yes, showed them to us and we said that's perfect, we'll have that house, thank you very much.
You said a moment ago that you were driving back from somewhere and you saw the Fred Lowery home?---Yes.
Did you indicate you were driving back from the Warrawee?---Yes, we were. No, we weren't actually.
What were you doing driving back from the Warrawee if - - -?---No, we weren't, we were driving back from Goldmaster.
Do you agree with me that you said a few moments ago you were driving back from the Warrawee?---Yes, I believe I did say that but I was - the Warrawee is in the same estate or the same street that the Goldmaster house was. We didn't actually go into the Goldmaster house that day, we decided to wait.
Had you been to the Warrawee on this day when you were driving back from the estate?---No, I don't think we were.
Of course, you were still keen on the Warrawee floor plan at this stage, were you not?---Specifically, no, in general, yes."
Mr. Priestley was asked whether he recalled the use of the term "French Provincial":
"[MR BANNON] Have you ever heard the words, French Provincial used to describe - - -?---I've heard the term.
But have you come across it in your search for a house?---I believe so, I don't recall where but, yes, I believe so.
They were words used to describe the Barrenjoey house, were they not?---I don't recall. The French Provincial concept is something that we were familiar with as along the lines of Tuscany which is similar.
What lines are they?---Terracotta style of open outdoors, airy type feel.
What about the outside features?---I don't recall any connection between the two.
In any event, did Mr McKenzie [of Lowery] talk to you about the French Provincial style of any of the houses which he discussed with you?---Not that I recall.
But he may have?---It is possible."
Mr. Priestley gave this evidence about the name "Chatswood Manor":
"[MR BANNON] Did you know of any home which had been offered by Lowery Homes which went by the name, Chatswood Manor?---No, I didn't.
Can you explain why this letter [Lowery's quote dated 12 June 1994] refers to Chatswood Manor?---Purely coincidental from our perspective. The house that we were looking at with Lowery Homes had no name to our knowledge. The fact that it has a name in here is purely coincidental and what they referred to as the Chatswood Manor had no relationship with anything that we had done or discussed previously.
...
So when you got this [letter quoting] you must have been concerned that you were being given a quote about a house that you had never heard of?---I wasn't. The quote was in relation to a house I had plans for. The name was not significant. The name was not written on the plans and therefore had no relevance to me. The plan in conjunction with lists and inclusions in price was what was relevant to me.
Are you saying that this came with a plan?---Either on that day or with it, yes. I said before.
You cannot be sure that it came with a plan; correct?---I had a plan in my possession at the time that I had the quote. That was the only plan that I had discussed with Fred Lowery and therefore could be the only plan that this quote referred to.
You do not refer in your affidavit, do you, to any intermediate plan between the meeting with Mr McKenzie and the receipt of a completed plan in company with the quote?---No, I didn't."
(c)The evidence of Mr. Lowery, including his affidavit sworn 28 September 1995
In his affidavit, Mr. Lowery said that Mr. Scott had drawn plans for Lowery, including the "Kensington" design, over the period of the previous 10 years. The "Kensington" was one of the more popular homes constructed by Lowery.
In his affidavit, Mr. Lowery gave the following account of the sequence of events:
(Annexure "B" to Mr. Lowery's affidavit is annexure "5" to these reasons, i.e. annexure "B" to Mr. Scott's affidavit. Annexure "C" to Mr. Lowery's affidavit is annexure "7" to these reasons, i.e. annexure "C" to Mr. Scott's affidavit.)
Mr. Lowery was cross-examined about the reference to "parapet walls" in the letter written by his solicitors in September 1994:
"[MR BANNON] Do you recall that your solicitors wrote in September 1994 in response to the letter of demand asserting that the Priestley's home would not have parapet walls?---Do you recall that?---I don't recall that.
I show you this letter which is page 46 in McDonald's affidavit?---Well, I suppose we're getting down to the technical point, if that - if that's the case. If it's written down here, I wouldn't dispute it. A technical point to whether it's a full blown parapet again.
This is the only letter written on your instructions, is it not?---Yes. That's half way down, is it?
Yes?---Parapet walls. There again, on this we're talking parapet walls in a technical form again. I suppose we're getting back to that technical version of whether it's - sorry, sir. Sorry, your Honour, but - but just the - at the time we probably had a discussion whether it was a parapet or not and asked other people's opinion.
It was a little bit disingenuous, was it not, to write in response to the letter of demand asserting that - - -?---It didn't have parapet walls.
- - -it did not have parapet walls?---No. I don't think so. If we talk about the technical parapet. I don't think that's wrong.
Even though it has always been your belief that it is a reasonable description to describe the Baltimore walls or gables as parapet walls or gables?---Yes, well, I suppose that's where the
experts in their documents were arguing with each other. It's a technical little point. I mean, if I concede one, I don't concede the other, so where do I go?"
Mr. Lowery was cross-examined about his knowledge of the "Barrenjoey":
"So whenever you had this conversation with Mr Scott about asking him to prepare a design, by that stage you were aware of the Barrenjoey, correct?---Yes.
Familiar with its design and its floor plan?---I was familiar with what we see in the magazine, I wasn't familiar with the floor plan.
You were aware it had been described as a French Provincial design?---Actually, I'm not sure whether it was called that or not, I'm not really sure.
It is possible, is it, that you had been aware of that?---It's possible some might have classed it as a French Provincial style. The experts tell us it is and I don't know.
In early '94 you had been receiving a lot of inquiries from the North Shore area for a French Provincial Georgian facade?---Yes.
Is that right?---Yes, we had received inquiries, yes.
That was by reference to the Barrenjoey, was it not?---No, actually I was more concerned about a Georgian type facade. It was the type of house that we could do with rendering, was the way I was leaning.
Did you say to Mr Scott, I have been receiving a lot of inquiries from the North Shore for a French Provincial Georgian facade?---Is that in my stat dec here?
I am just asking you from your recollection whether you said that to him?---Would you repeat the question again, please?
Did you say to Mr Scott, I have been receiving a lot of inquiries from the North Shore for a French Provincial Georgian facade?---Yes, that could be correct.
Could be correct?---Yes."
Mr. Lowery was then cross-examined about para.4 of his affidavit:
"[MR BANNON] Now, paragraph 4 of your affidavit, you purport to set out a conversation you had with Mr Scott and you are intending to indicate there are you not, that that was the first conversation you had with Mr Scott, which triggered the design which lead to the Baltimore, correct?---Yes.
You have not included in that conversation any reference to asking him for a French Provincial Georgian facade, have you?---Not in there, no, I haven't.
Can you explain why it is that you have not included that in there?---At the beginning of '94.
Do not worry about the date, concentrate on the first occasion if you would, when you asked Mr Scott to prepare a new design for you. In paragraph 4, whenever that was, paragraph 4 is attempting to set out what that initial conversation was, is it not?---Yes, that's right.
Why have you not included in that conversation, a reference to your request for a French Provincial Georgian facade?---Well, at that particular time in the beginning of '94, I may not have said that at that particular time. What I've said there is quite correct, that's what I said to Russell Scott. I started off conversations asking for something different, that's perfectly true."
Mr. Lowery was then shown Mr. Scott's draft affidavit, Ex. "R". Mr. Lowery accepted that he had written the words "beginning of 94" added to the typed words of para.4.
Mr. Lowery went on to explain the reference to "Chatswood Manor":
"[MR BANNON] Did [the Priestleys] mention to you an
interest they had in the Chatswood home?---No.
In June '94 was a home known as the Chatswood something you were familiar with?---No, I'm not familiar with it, I'm certainly not familiar with their Chatswood.
Did you[r] company put out a home called the Chatswood?---What we did was with Mr - no.
Did your company put out a home called Chatswood Manor?---The first quote, we did with Mr Priestley on the Baltimore we did not have a name on the design. As with new designs we don't name them. My secretary, when I checked with her, she was typing the quote and rather than have nothing on it, it was just one of those names that was plucked out. I mean, if I had known that - I knew that Mr McDonald had a Chatswood and - I mean, why would I call mine Chatswood? We normally choose a North Shore suburb of such but anyway, that was a name that was put on the initial quote."
Mr. Lowery was further cross-examined about annexure "B":
"[MR BANNON] This drawing [Annexure "B"] was done in a rush to meet what you perceived to be the Priestley desire, do you agree with that?---The drawing was done before - well before I met Mr Priestley.
I am suggesting to you that it was done in a hurry to meet what you thought was something desired by the Priestley's?---No, I'm sorry you're pushing the wrong barrow because that's certainly not the truth.
Whatever, it was certainly drawn well after February 1994?---No, certainly not, certainly not. That's one thing I am sure about. I can't put a date on it but I can be sure of that."
THE EXPERT EVIDENCE
Mr. Scott and Mr. Lowery expressed some views of an expert nature. But, since they were parties and thus not independent, and since I have had the benefit of impartial expert opinion evidence, I do not propose to take this evidence of these parties into account.It will be necessary to consider the expert evidence in its sequence.
In his first report, dated 8 June 1995, Dr. Johnson proceeded on the basis that the "Barrenjoey" design was depicted in, inter alia, the working drawings prepared for McDonald by Paul Meyer Design Pty. Ltd. for the "Bella Vista" residence.
Dr. Johnson gave the following overview of the "Barrenjoey" design:
Dr. Johnson made the following comparison between the two designs:
Dr. Johnson expressed his conclusions as follows:
In his first report, dated 12 October 1995, Dr. Cooke described the "Barrenjoey" design as follows:
Dr. Cooke went on to describe the "Baltimore" design at Turramurra, and to compare it with the "Barrenjoey" design as follows:
Dr. Cooke then addressed the differences between the two designs, and expressed his conclusions, as follows:
In his second report, dated 1 December 1995, Dr. Johnston joined issue with several of the opinions expressed by Dr. Cooke. It is not necessary for me to explain all of the details of their controversy, but reference should be made to Dr. Johnson's comments, as follows, on sections 2.1 to 2.4 of Dr. Cooke's report:
Dr. Johnson went on to comment as follows on sections 4.3 to 4.5 of Dr. Cooke's report:
In his second ("supplementary") report dated 30 January 1996, Dr. Cooke said this:
By a third report, dated 26 March 1996, Dr. Cooke responded to Dr. Johnson's comments on Dr. Cooke's first report. Again, it is not necessary that I refer to this exchange in any detail. Three items in this report should, however, be noted.
First, Dr. Cooke revisited the "parapeted gable" issue as follows:
Secondly, Dr. Cooke returned to Dr. Johnson's six "key" aspects as follows:
Thirdly, Dr. Cooke made the following comparison between the "Kensington" and "Baltimore" designs:
Both experts were cross-examined, Dr. Cooke first.
Dr. Cooke said that he did not think that he differed greatly from Dr. Johnson. He went on to give this evidence in explanation of para.2.5 of his third report:
"[MR BANNON] But your view as set out in this paragraph remains the same, that the Barrenjoey is the distinctive hybrid design?---Yes.
And by agreeing with that, what you are agreeing with is the proposition that the way which it has arranged its or has arranged in it certain key features, creates a certain impression or impact which is not replicated in other individual building[s] which you have been able to find?---That's correct but I haven't conducted an exhaustive survey. In the time available I simply wasn't able to conduct an exhaustive survey of similar building[s].
I appreciate that, but you are relying on your expertise and your general knowledge and research you have been able to do in the limited time?---That's correct.
You agree that the Barrenjoey and the Baltimore designs or the Turramurra house are aesthetically similar in six aspects of their external appearance?---Yes.
And would you agree that those six aspects of their external appearance which are identified in Dr Johnson's report are a fair statement of the features which create the greatest impact to an observer on viewing the building?---I think that's correct.
You have pointed out that in matters of detail and in some cases reasonably substantial detail there are some differences in the individual features in the Baltimore design and the Turramurra design, I think you have pointed out that, correct?---I think it's more than mere detail.
Well, perhaps I will take it step by step. You have pointed to a number of differences in detail of these six features, correct?---Yes.
But you would agree that the same six features appear in substance in the same arrangement in the Baltimore Turramurra houses?---Roughly speaking, I think some of the details are actually quite significant, the detailed differences are quite significant.
Yes.One of the arts of the architect is to create an impact or impression by use of architectural features, correct?---Yes.
And some of the most dramatic architectural impacts are being created by using some of the most mundane and well-known architectural features but arranged in a striking way, correct?---That probably applies to almost all buildings, I suggest.
The eternal search of the good architect or designer is the arrangement of features, and a selection of individual features to create that important impact?---Roughly speaking, yes.
And would you agree that in the design of residential houses one of the most important aspects of the design is the facade of the building which contains the main entrance to the building?---Yes, certainly in this type of house.
Because that sets the mood for the entrant into the house; it is the first impression he gets of the house, correct?---Yes, and I see it is also important in marketing this type of house.
Yes.You have examined what has been described as some drawings of the house at Balmain, which has some of the features. I think you have annexed that to your 26 March 1996 report?---Is that the Binet design?
Yes.You have had a look at that?---Yes, I've had a look at it.
And you have made some comments, and it is fair to say that in short your conclusion is that the Baltimore/Turramurra design is a lot closer to the Barrenjoey design than it is to the Binet Balmain?---In externals; the plan - I mean correctly - sorry, yes, that's correct. Externally the Barrenjoey and the Baltimore are more similar than the Binet and the Baltimore."
Dr. Cooke was asked as follows about the chimney shown in annexure "B" to Mr. Scott's affidavit:
"MR BANNON: You would never build a chimney as depicted in that first page of annexure B with the fireplace depicted as it is on the second page of annexure B, would you?---It would be possible but it would be very unusual, very unlikely.
Have you ever come across that in your long experience?---I've seen chimneys in a quite different position from the fireplace, to create a symmetrical effect, with quite complicated brickwork to achieve that, but I'm not suggesting that was intended here.
The complicated brickwork involves expense, additional expense?---Yes, yes.
Not the sort of complication you would expect in a project home?---No.
If you would [have] picked that drawing up and [seen the] chimney of that fireplace, may we take it you would have regarded that as an obvious mistake?---I would see it [as] a mistake."
Dr. Cooke went on to say that it was standard practice to date sketch plans and other drawings.
In re-examination, Dr. Cooke gave this evidence with respect to the differences between the "Barrenjoey" and the "Baltimore" designs:
"[MR HARRIS] Can you indicate what differences you feel are significant?---I think the most significant difference between - if we're - if we're comparing the Barrenjoey design with the Baltimore designs, I think the most significant difference is that on the facade of the - on the street facade of the Baltimore design we have three major gable elements and a minor portico gable element whereas on the Barrenjoey the - there are two major gables on - on the street front and a third gable which is a return gable on the - I think it's the eastern side and the portico is non-existent, the entrance is a recessed entrance very much downplayed in the total
composition. There's also a fifth gable if I remember correctly on the - in front - on the side of the garage in the Barrenjoey design, a single storey gable, so there are five - so there were four gables in the Barrenjoey, two of which are at - on the return elevation to the main front elevation, whereas in the Baltimore there are three major two storey high gables plus a single storey portico gable on the - all on the street front. So that's one of the - that's the most significant difference, I think.
Are you able to indicate what other differences there are that have significance in your view?---There are differences of detail, different wall finishes, different - - -
HIS HONOUR: These are in the matters that are in your report?---All in the report. Different cutting details, different paints - - -
If you wish to add anything or modify anything in the report by all means do so?---No, I don't have anything to add to what's in my report.
MR HARRIS: You were asked some questions about the significance of the main entrance to a house?---Yes.
And I think you said that it is important because it sets the mood for the house?---Well, the demarcation of the entrance is a very significant element in the design of the house.
...
Given your opinion that the entrance to a house is significant, is it you[r] view that there is any significant difference between the entrances to these two houses?---Yes, they're quite different.
In what way?---Well, in the Baltimore the entrance is given particular prominence, largely through the use of the parapeted - the gabled portico element, which draws attention to it, whereas in the other, in the Barrenjoey house, the entrance is recessed to one side of the - to the left of the lounge roof element. I suppose the other difference is that the position of the porticoed entrance in the Baltimore is - is in a more central position in the overall facade than is the entrance in the Barrenjoey, which is to the edge of the main elevation."
In his cross-examination, Dr. Johnson agreed as "fair" with the suggestion that the floor plans of both "Barrenjoey" and of "Baltimore" "followed a fairly standard type of floor plan".
Dr. Johnson was cross-examined as follows about the comparative appearances of the two buildings:
"[MR HARRIS] What you are saying is that if one looks at the Baltimore from the front it is similar to looking at the Barrenjoey from an angle?‑‑‑Yes.
But if one looks at the Baltimore from the front it is not similar to looking at the Barrenjoey from the front?‑‑‑Not exactly similar, no.
Well not at all, is it?‑‑‑Yes, I believe it is. There is a similarity in the composition in the sense that you have in, what I would call abstract terms, two or three major masses with a lesser mass that comes down in between those masses, which is very much a picturesque compositional mode for domestic architecture over a range of periods.
I want to put to you that in fact that is one of the significant points of difference between these two houses, the way in which they have the larger areas with the single storey element connecting them?‑‑‑Are you putting that to me as a question?
Yes?‑‑‑Well I would disagree in the sense that I have written it in my report that when you look at the front of the Turramurra Baltimore you see a gable on the right; you see two gables on the left; you see a piece of roof in between and then there is a protruding single storey element which is the entrance portico. Now, that combination, especially the separation of the gables to allow the roof to come in between, is, I believe, a similar compositional device overall to the impact that the Barrenjoey has, which is the reason I made the statement. There are two separated gables, a roof coming down in between and then in the Barrenjoey coming down to collect itself together as a single storey element, whereas in the Baltimore it doesn't come down as a single storey element, but becomes the porch which is a single storey element, but nevertheless compositional intention and the aesthetic perception of it is not dissimilar.
Well can I put this to you: the single storey element in the Barrenjoey house, in fact breaks up the parapeted gables, whereas the single storey in the Baltimore house connects the gables, being a small gable construction itself?‑‑‑I agree with you that the Barrenjoey in a sense separates the gables but I do not agree necessarily that the portico in the Baltimore connects the gables. I think the roof still separates the gables or the gables are still divided or separated.
And the Baltimore has columns around the front entrance?‑‑‑Yes.
Which do not appear in the Barrenjoey?‑‑‑Not as round columns, no, they appear as piers.
The Baltimore has quoins which the Barrenjoey does not have?‑‑‑Correct.
The Baltimore has the small portico or gable over the front door which the Barrenjoey does not have?‑‑‑Correct.
And can I put this to you that the combination of those elements gives the Baltimore a classical look that the Barrenjoey does not have?‑‑‑I would tend to argue a more classical look. I think there are classical elements in the Barrenjoey which are to do with symmetry and other devices.
But the use of the columns, the quoins and the portico over the front door significantly increases that effect in the Baltimore, does it not?‑‑‑I think there is an increase in effect, yes.
Can I put this to you, there is another effect created by the columns and the portico in the Baltimore and that is to accentuate the entrance?‑‑‑There is an accentuation of the entrance, yes.
Whereas in the Barrenjoey the entrance is played down, is under-accentuated?‑‑‑Well I would say accentuated differently."
Later, Dr. Johnson gave this evidence:
"[MR HARRIS] So, do not we have this position that there are some elements in common between the Barrenjoey and the Baltimore house and they are what
one might call the larger elements such as the parapet gables and I suppose the ventilation slots as well?‑‑‑Yes.
The more idiosyncratic elements like the slit windows, the blind windows, the corbelling and so on are not reproduced in the Baltimore house?‑‑‑If by idiosyncratic you mean there are other elements which are not reproduced, yes.
The more distinctive features of the house?‑‑‑There are some distinctive features in the Barrenjoey not reproduced in the Baltimore."
THE ADMISSIBILITY OF THE EXPERT EVIDENCE
The expert evidence here was led without objection and it was admissible.In the Hooker Case, above, Street J. said (at 286):
"The decision upon the issue of similarity is an original decision for the court itself. It is to be reached upon an assessment of such similarities and dissimilarties as appear to the court between the plans or buildings under consideration ... By attending to the progress of [the] argumentative process between counsel and expert the court is enabled to perceive and more readily to appreciate the points of similarity and dissimilarity. In this way the tendering of expert evidence is of value in exposing the facets of the ultimate question to which the expert opinion evidence is directed. But the important point is that, in distinction from the judicial process in relation to expert evidence such as is normally encountered in litigation, a court in the present type of litigation is entitled, and, indeed, bound, to form and act on its own original opinion."
In Collier Constructions Pty. Ltd. v Foskett Pty. Ltd. (1990) 19 IPR 44, Gummow J., after citing this passage, said (at 51):
"In the present case, no objection was taken by either side to the leading of evidence from architects. There was agreement that the above
remarks of Street J supported such a course. In a patent case, an expert could not be asked his opinion as to whether a given step was obvious, this being a question of law central to the case: British Celanese Ltd v Courtaulds Ltd... per Lord Tomlin; Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions, 1969, 4th ed, pp 461-5. The question of whether a substantial part of an artistic work had been taken would fall into the same category, as Street J indicated. But where plans are of some complexity, the court may be assisted in looking for similarities and dissimilarities by the evidence of those vested in the reading of such plans: S W Hart and Co Pty Ltd v Edwards Hot Water Systems... . Such evidence is admissible."
I need not stay to examine whether, in practical terms, the position has now altered in the light of the abolition of the "ultimate issue" rule by s.80 of the Evidence Act 1955 (see J.D. Heydon, A Guide to the Evidence Act 1995 (Cth) at 44).
CONCLUSIONS ON THE ISSUE OF LIABILITY
It will be convenient to address the facts first.(a) The primary facts
As has been noted, although in some areas the primary facts were in dispute, in other areas there was no real issue about what had occurred.(i) Areas of common ground
In particular, it seems that there is no serious dispute that by February 1993, Mr. Meyer, as consultant to McDonald, had completed plans for the design of the "Barrenjoey" project home; that construction of the
"Barrenjoey" home on the Bella Vista Estate was completed in September 1993; that brochures advertising that home were available to the public from October 1993; that in December 1993, the "Barrenjoey" received publicity in the "Daily Telegraph" as an award-winning "French Provincial design"; that the Project Home Buyer's Guide in late 1993 included the "Barrenjoey"; that the "Warrawee" was sited beside the "Barrenjoey" at the Bella Vista Estate; that in late February or early March 1994, Mr. McDonald engaged Mr. Scott to work on adapting plans for homes at the site at Glenshee Road, Glenhaven; that Mr. McDonald then gave Mr. Scott plans for the smaller "Bilgola" version of the "Barrenjoey", together with the plans for the "Warrawee"; that the "Wahroonga" is the three car garage version of the "Warrawee"; that another of McDonald's homes was the "Chatswood", having the same floor plan as the "Warrawee/Wahroonga", but with a different exterior and smaller dimensions; that in March 1994, Mr. Scott worked for McDonald on the "Bilgola/Barrenjoey" and on the "Warrawee/Wahroonga" plans for the Glenshee Road site and sent an account for this work on 24 March 1994; that on 27 March 1994, McDonald received an inquiry from Mr. and Mrs. Priestley, expressing interest in a home with a three car garage which was "bagged" or "rendered"; (It will be recalled that McDonald's documentation suggests that Mr. and Mrs. Priestley selected the "Wahroonga" design; however, Mr. Priestley's evidence was that he was interested in the "Warrawee". It would seem that it is possible to reconcile
the apparent conflict by taking into account the circumstance that, from Mr. Priestley's perspective, the two garage "Warrawee" became a "Wahroonga" with the addition of an extra garage.); that on 24 May 1994, McDonald submitted a tender to Mr. and Mrs. Priestley for the erection of a "Wahroonga" design home at 1A Karloo Street, Turramurra; that Mr. Priestley then also received some information on pricing of McDonald's "Chatswood" home, collecting two "Chatswood" brochures; that on 12 June 1994, Lowery submitted a tender to Mr. and Mrs. Priestley for "our latest design `Chatswood Manor'" and on 18 July 1994, Lowery sent them a selection and inclusions list for "construction of a new two storey Federation"; that on 22 August 1994, Mr. and Mrs. Priestley and Lowery entered into their building contract; and that construction of their home commenced in September 1994 and was completed in January 1995.Further, as has been noted, the respondents accept that McDonald has copyright, either original or on assignment from Mr. Meyer or his company, in the drawings for the "Barrenjoey" design.
So much may be accepted, virtually as common ground. But, as has been seen, there was a substantial conflict in the evidence as to what happened in other important respects, and when it happened, in particular with respect to the relevant dealings between the respondents themselves.
(ii) The areas of dispute about the facts
(A)The version of the facts in dispute contended for by the respondents
On behalf of the respondents it is submitted that it should be found, in accordance with the affidavit evidence of Messrs. Scott and Lowery, led in chief on behalf of the respondents, that they had discussions "in early 1994" concerning the possibility of Mr. Scott producing a new facade for the "Kensington" floor plan, and this led to the production, in February 1994, of the drawing which is annexure "B" to Mr. Lowery's affidavit (Annexure "5" to these reasons). This, it is said, accordingly pre-dates the time when Mr. McDonald gave Mr. Scott the "Barrenjoey" plans, so that, the submission runs, there could not have been actual use by Mr. Scott of McDonald's plans. Moreover, it is said, Mr. Scott had previously prepared many similar designs, including ones involving parapet gables.
Then it is said, on behalf of the respondents, that no significance should be attributed to any similarity between the floor plan in Mr. Scott's sketch (annexure "B" to his affidavit, annexure "5" to these reasons), and the floor plan of "Warrawee". In fact, there is very little difference between the several floor plans in evidence, including "Kensington" and "Goldmaster".
(Indeed, as Mr. Harris noted, Mr. Bannon does not
allege any breach of copyright in respect of the floor plans: the complaint now made is in respect of the "Baltimore" facade, and, in particular, the parapet gables and the vertical slot.)
(B)The applicant's contentions on the primary facts in dispute
(It should be noted at the outset that it is submitted for McDonald that the only significance of the similarity in the floor plans of the "Baltimore" and the "Warrawee" was to dispel a suggestion in the respondents' evidence that they utilised Lowery's "Kensington" floor plan. In other words, the infringement alleged relates to the facade, and not to the floor plan.)
In his written submission, Mr. Bannon put the following:
(1)Mr. Scott maintained that he had prepared the first sketch "Baltimore" plan (annexure B to his affidavit) around the end of February, March 1994 and "[Lowery] would have picked it up in that week of 1 March". He maintained this notwithstanding he had not dated the sketch plan contrary to ordinary industry practice. Further, the respondents have failed to produce any bill or record of payment for any of the work allegedly carried out by Scott in February/March. This is extraordinary.
(2)Further, the only evidence about any clients of Lowery liking the Scott sketch, as reported to Scott by Lowery, are the Priestleys; Mr. and Mrs. Priestley first made contact with Lowery in May or June 1994; and the Scott drawing was made no more than two weeks before Mr. Lowery told Mr. Scott about the interest of the client in his drawing. It follows that the Scott drawing could not have been made more than two weeks before Mr. and Mrs. Priestley contacted Lowery in late May early June 1994. Mr. Scott accepted in cross-examination was never led to believe anything other than that the client referred to in para.5 of his affidavit was the same client referred to in para.6 of his affidavit. The "Baltimore" was not advertised until the Spring issue of the Project Home Guide, suggesting it had not been approved by Mr. Lowery in, for example, February or March 1994.
(3)As has been noted, a significant plank in the respondents' defence is that the floor plan of Mr. Scott's new design was based on Lowery's existing "Kensington" home. Lowery claimed that the Scott sketch was "traced" from the Kensington floor plan, but Mr. Scott conceded in cross-examination that the floor plan of his first sketch was closer to the "Warrawee" floor plan than that of the "Kensington". The significance of this evidence is that it undermines the attempt to provide an innocent explanation for the source of the
Scott sketch plan; also Mr. and Mrs. Priestley were very keen on the "Warrawee" floor plan.
(4)Mr. and Mrs. Priestley inspected the "Warrawee" and the "Barrenjoey" at least twice; they liked the "Warrawee" floor plan although they wanted an extra garage which was the "Wahroonga" floor plan; they also picked up brochures and made price enquiries regarding McDonald's "Chatswood" house which (as has been noted above) is another version of the "Warrawee" with the same floor plan; they still have copies of the "Warrawee" and "Chatswood" floor plans; Mr. Priestley said in cross-examination that he was not aware of any house offered by Lowery known as the "Chatswood" or "Chatswood Manor"; but Lowery issued a quote to Mr. and Mrs. Priestley dated 12 June 1994 in respect of the "Chatswood Manor"; Mr. and Mrs. Priestley did not like the "Warrawee" exterior as it was, but required changes.
(5)In cross-examination, Mr. Priestley said that he first made contact with Mr. Lowery after seeing his sign "on the way back from visiting the house, that's the 'Warrawee'." This is significant because he had previously suggested that he was virtually committed to Goldmaster for an entirely different home.
(6)The earliest dated plans of the "Baltimore" Scott design
bear the date 27 June 1994.
(7)No explanation has been forthcoming as to why Mr. and Mrs. Priestley's inclusions list described the proposed house as a two storey "Federation".
(8)A fact consistent only with copying in haste, is the chimney in the Scott drawing. Its depiction in the facade of the house is practically identical with the "Barrenjoey" chimney, with the length of the rectangle comprising the chimney running parallel to the front of the house. This angle displays to good advantage the two feature slots in the chimney, just as in the "Barrenjoey". However, the ground floor plan in the Scott drawing depicts a fire place the length of the rectangle of which runs perpendicular to the front of the house. Dr. Cooke described it as a "discrepancy" between the elevation and the plan. He would (as has been noted above) "see it [as] a mistake". Although a disconformity in orientation between the fireplace and chimney is achievable, it would be, as Dr. Cooke accepted, "very unusual", "very unlikely", expensive and complicated, and not the sort of thing one would expect in a project home. There is no void in the upstairs floor plan which would allow for the chimney. To position a fire place in a corner of the living room is not sensible.
(9)An "enormously troubling matter" so far as the credit of Mr. Lowery and Mr. Scott is concerned, is the evidence relating to the draft affidavit of Mr. Scott (Ex."R"). The typed wording of para.4 of Ex. "R" pinpoints the conversation which initiated the first Scott sketch as May 1994. As we have seen, Mr. Priestley says that he first contacted Mr. Lowery in late May or early June 1994 (Mr. Priestley's affidavit, para.4). The typed in "May 1994" date has a handwritten change to "28 April" and another handwritten note "beginning of 94". The typed date accorded with information which Mr. Scott gave to his solicitor to prepare the draft. The words "beginning of 94" are in Mr. Lowery's handwriting. Neither Mr. Scott nor Mr. Lowery could offer any explanation as to how Mr. Lowery's handwriting appeared on Mr. Scott's draft affidavit. But the sworn affidavits of both Mr. Lowery (para.4) and Mr. Scott (para.4) refer to the initiating conversation as occurring in or at "the beginning of 1994". The draft affidavit also records that in that conversation, Mr. Lowery said:
"I have been receiving a lot of enquiries from the North Shore for a French Provincial/Georgian facade. Can you design me something that I can use?"
(10)Mr. Scott conceded that this had in fact been said. He could not explain why it was not in the sworn affidavit. Earlier, he could not recall Mr. Lowery using the expression "French Provincial". He sought to deny that
he thought that the "Baltimore" was "French Provincial" in style until directed to p.3 of the draft affidavit which, he agreed, reflected his opinion that it was "French Provincial". As has been noted above, the expression "French Provincial" had been used in the "Daily Telegraph" article in December 1993 to describe the "Barrenjoey". The inclusion of the draft affidavit conversation referring to that expression in the sworn affidavit would have provoked an obvious connection between the conversation and the article. Its exclusion from the sworn affidavit without explanation is unsatisfactory. The draft affidavit bears a fax date of 21/2/95, which pre-dates the receipt of the sworn McDonald affidavit, which annexed the "Telegraph" article and deposed to Mr. Scott's work on McDonald's plans in March 1994. Mr. McDonald's affidavit would have highlighted to Mr. Scott and Mr. Lowery the importance of excluding the "French Provincial" conversation and dating the sketch initiating conversation before Mr. Scott worked on McDonald's drawings. Mr. Scott sought to say that prior to March 1994 he was not familiar with the "Barrenjoey" home and was not aware of the award it received. This is improbable, given the statement in his affidavit that he kept up with the latest building fashions and trends. Mr. Lowery conceded that he had been aware of the "Barrenjoey" since the end of 1993. After being shown Mr. Scott's draft affidavit, he
accepted that he would have heard some people describing the "Barrenjoey" house as French Provincial.
(11)Mr. Lowery's evidence is in conflict with that of Mr. Priestley in this respect. Mr. Priestley says that he was shown the new Scott sketch plan at his first meeting. Mr. Lowery says that Mr. and Mrs. Priestley were shown through the "Kensington" and "they liked it, particularly the downstairs floor plan and that was the trace off that we did the `Baltimore' from. They were very interested in our house but after seven days they were shown the new floor plan".
(12)Mr. Lowery was clear that Mr. and Mrs. Priestley were not shown the new floor plan at the first meeting. Lowery's salesperson who dealt with Mr. and Mrs. Priestley, Mr. McKenzie, was not called by the respondents.
(13)Mr. Priestley's evidence was unsatisfactory in a number of respects: (a) his resistance to the proposition that he was concerned as to the exterior of the house; (b) his affidavit evidence that the "Wahroonga" design was not discussed; (c) his "Warrawee" slip, mentioned above; (d) his evidence as to when he first heard of "Baltimore"; (3) his evidence as to the "Chatswood Manor" (f) his evidence as to how many plans he received and when.
(14)On any view of the evidence, the Scott drawings were brought into existence after: (a) the completion of the "Barrenjoey" plans in February 1993; (b) the completion of construction of and the opening of the "Barrenjoey" Bella Vista display home; (c) the making available to the public of brochures depicting the facade and a floor plan; (d) the award for the "Barrenjoey", with its attendant publicity, in November 1993; (e) the appearance of the "Barrenjoey" in the Project Home Guide.
(15)There are three possible scenarios as to the date of creation of the first Scott drawings:-
(i)between January and March 1994, prior to Mr. Scott working on the Glenshee Road project;
(ii)between March 1994 and May/June 1994 during or after Mr. Scott's Glenshee Road work, but before contact between Mr. and Mrs. Priestley and Mr. Lowery;
(iii)after the first contact between Mr. and Mrs. Priestley and Mr. Lowery.
(16)Under any of those scenarios, McDonald should succeed because there can be little doubt that at the time of creation of the Scott drawings, Mr. Scott had before him, whether as a result of recollection or otherwise, the design of the "Barrenjoey" house.
(C)Conclusions on the disputed facts - general
I accept the substantial logical force of all of the applicant's thorough and detailed foregoing analysis in its submissions on the primary facts that remain seriously in dispute. In my view , those submissions should be accepted in their entirety as the proper version of the sequence of the events which actually occurred. It is significant, in my view, that in their arguments, the respondents made no real attempt to meet any of the applicant's substantial contentions. As has been seen, the arguments advanced by the respondents, in respect of the findings to be made as to the primary facts, consisted of no more than a repetition of the version of the events given by the respondents in chief in their affidavit evidence. No attempt was made to address, or explain, the difficulties that were exposed in the course of the cross-examination, notwithstanding that attention was drawn to this absence in the course of the hearing of oral argument. These difficulties were, as has been seen, substantial in several major areas. In significant respects, the respondents' evidence was internally self-contradictory, or inconsistent with other evidence given by another respondent.
In my view, serious questions arise as to the credit of each of the respondents' witnesses. In particular, I cannot accept Mr. Priestley's claim of his comparative lack of interest in the appearance of the facade of his proposed home.
The respondents' solicitors' letters, written in late 1994, also indicate, as has been noted, the existence of difficulties in accepting, as a credible version, the impression of the sequence of events created by the respondents' evidence in chief. Even more important are the problems for the respondents' case which were exposed by the circumstances surrounding Ex."R" and the various amendments of para.4 of that draft affidavit.
However, whilst the foregoing considerations are material to the findings I make, in general terms, on the primary facts, I will next consider the issue of resemblance, as this can also be a material consideration to be taken into account in determining the specific question whether or not copying had, in fact, occurred.
(D)Conclusions on the issue of resemblance
In this aspect, I have been much assisted by the expert witnesses. Both have high qualifications in this field and, as has been seen, each gave the matter a thorough analysis.
In approaching the issue of resemblance, it is important to bear in mind, as has been noted, that Dr. Cooke accepted, correctly in my view, that his opinion did "not differ greatly" from the view of Dr. Johnson.
In my opinion, for the reasons given by Dr. Johnson, the features of the facade of the "Barrenjoey" design were distinctive. It will be recalled that Dr. Johnson dealt with this at paras. 2.3 and following of his first report, Ex."E"; and that Dr. Cooke at para. 2.5 of his first report, Ex. "1", substantially accepted this.
As has been noted, no claim is made of infringement by the floor plan and the difficulties of establishing infringement in that area, discussed in the authorities above, need not be explored here.
I further accept that the six features of the "Barrenjoey" facade mentioned by Dr. Johnson, and with the substantial concurrence of Dr. Cooke, create the greatest impact on the observer.
I agree also with the applicant's contention, which is in line with the opinions of Dr. Johnson, whose evidence I accept entirely, that the "Baltimore" design resembles the "Barrenjoey" design in terms of their respective facades in several key respects. For convenience in analysis, they may be grouped as follows:
(1) The angle of the parapeted gable in both designs is similar, notwithstanding that, in some respects, to be mentioned below, Mr. and Mrs. Priestley's home is somewhat
different. It is also true that Dr. Cooke was able to point to some differences in construction here. But for present purposes, the visual impact is important. In this area, an impression of similar appearance in a significant respect is created. In terms of appearance, especially their line and the way in which they level off at each end, and in terms of the detail of the finish, the two designs of the gables are practically identical.(2) Both designs create an appearance of a smooth finish to the wall of the facade by use of the same "bagging", or "rendering", process.
(3) Both designs provide for narrow, vertical slots in the gables, which are similarly positioned.
(4) The fenestration is similar in three areas: (i) the use of double hung windows divided into panes; (ii) the symmetrical use of windows; and (iii) the absence of adornment.
(5) There is an overall similarity in appearance in "massing" or in the compositional elements of the designs:
In the "Barrenjoey" design, a visual impression is created, on the right hand view, of a complete facade which is unobscured by any other element, in the sense that the viewer
sees all the windows and the whole facade, from the gable at the top of the building to ground level. On the left hand view, the viewer's perspective rises again to an identical type of parapeted gable which, in this section, is obscured in the sense that the lower portion of the room, which extends out towards the front garden, prevents the full effect of the gable being presented to one viewing from the street.
The "Baltimore" design creates a similar effect. A viewer's perspective of one side of the drawing is of an unobscured complete facade from the top to ground level, next, also, appears a lower mass, in the sense that a roofline without gables appears, before there next appears another gable section which, as well, is partially obscured, not by a room but by an entrance portico.
The entrance portico does provide a difference between the designs which cannot be dismissed from consideration, as Dr. Cooke pointed out in his re-examination (at T.118-9 set out above). Nor can the addition of the third gable in the "Baltimore" design be dismissed.
But, in my view, in their appearance, both designs have important common elements: a clean facade; a parapeted gable; an area of clear roofline; then another parapeted gable which is obscured by a front section.
I agree with the applicant's submission in this connection that the parapeted gables are a dominant feature of the composition of the "Barrenjoey" design, and that the "Baltimore" has succeeded in attracting the same "combination" and "feel" by adopting that feature in the overall composition of the facade.
(6) Although perhaps not of great significance for present purposes, both designs provide for the same hipped roof.
(7) Both designs provide for a similar chimney, although the chimney built at Turramurra is not in the same position.
_____________________________________
So far as the respondents' reliance on the Binet/Balmain design is concerned, I agree with the view expressed by Dr. Cooke (Ex. "E", 3rd respondent, para.3.11), that the "Baltimore" more closely resembled the "Barrenjoey" than the Binet.
I conclude that, on the whole, and accepting that there are some areas of difference, the facade of the "Baltimore" design, and the facade of the Turramurra property, both resemble the facade of the "Barrenjoey" design.
(E) Conclusion on the issue of copying
The decided cases show that, in their practical application, the theoretically distinct principles of "taking" and "resemblance" tend to overlap. The observations of Wilson J. in Hart's Case, above, at 484, previously quoted, are in point. In my opinion, the conclusion I have reached on the similarity of the designs reinforces my earlier view that, given the sequence of the primary facts as I have found them to have occurred, the inference should be drawn that the respondents made an unfair, or unconscientious, use of the "Barrenjoey" design in a substantial part, that is in respect of the design of the facade.
A finding should be made, on the primary evidence and in the light of the expert opinions expressed in evidence, that, in respect of the facade, Mr. Scott copied the "Barrenjoey" design on the instructions of Mr. Lowery, and at the request of Mr. and Mrs. Priestley.
RELIEF
It follows, in my opinion, that the second and third respondents have infringed the applicant's copyright; and that the first respondents have authorised the infringement (see University of New South Wales v Moorhouse (1974) 133 CLR 1 per Gibbs J. at 13; Australian Tape Manufacturers Association Ltd. v The Commonwealth of Australia (1993) 176 CLR 480 per Mason C.J., Brennan, Deane and Gaudron JJ. at 498). There will be declarations accordingly. There will
also be an injunction against the second and third respondents but limited, in accordance with these reasons, to the facade of the "Barrenjoey" design (see, as to this form of relief, Blackie & Sons Limited v The Lothian Book Publishing Company Proprietary Limited (1921) 29 CLR 396 at 405). The respondents must pay the applicant's costs to date. As has been noted, the question of any consequential relief will be reserved.I propose to make the following orders:
1.Declare that the respondents' plans of the "Baltimore" design, prepared by the second respondent on the instructions of the third respondent at the request of the first respondents, and described in paras. 8 and 9 of the statement of claim, substantially reproduced the applicant's plans of the "Barrenjoey" design, described in para.3 of the statement of claim.
2.Declare that, accordingly, the second and third respondents have infringed the applicant's copyright, and that the first respondents have authorised that infringement.
3.Order that the second and third respondents be restrained from further printing, copying, publishing, selling, supplying or otherwise disposing of their plans,
described in paras. 8 and 9 of the statement of claim, containing the facade of the applicant's "Barrenjoey" design described in para.3 of the statement of claim.
4.Order that the respondents pay the applicant's costs to date.
5.Reserve liberty to the applicant to apply, if so advised, for further relief on giving the respondents' solicitors 28 days' notice in writing.
I certify that this and the preceding One hundred and fifteen (115) pages are a true copy of the Reasons for Judgment herein of his Honour Justice Beaumont.
Associate
Dated: 30 August 1996
Counsel and Solicitors
for Applicant: Mr. A.J.L. Bannon, instructed by
Frank M. Deane & Co.
Counsel and Solicitors
for Respondent: Mr. C. Harris, instructed by
Matthews Folbigg
Date of hearing: 3 & 4 April, 24 July 1996
Date Judgment delivered: 30 August 1996
0
5
0