LED Builders Pty Ltd v Eagle Homes Pty Ltd
[1996] FCA 741
•27 Aug 1996
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No NG 817 OF 1993
) GENERAL DIVISION )
BETWEEN: LED BUILDERS PTY LTD
(ACN 002 351 957)
Applicant
AND: EAGLE HOMES PTY LTD
(ACN 002 800 115)
Respondent
EAGLE HOMES PTY LTD
(ACN 002 800 115)
Cross-Claimant
LED BUILDERS PTY LTD
(ACN 002 351 957)
Cross-Respondent
Coram: Davies J.
Date: 27 August 1996
Place: Sydney
MINUTES OF ORDER
THE COURT DECLARES THAT:
The respondent has infringed the applicant's copyright in the drawings for the floor plans of each of the applicant's houses shown in the table below (and annexed hereto and marked as shown respectively below) by the floor plans for the respondent's houses shown respectively in the table below (and annexed hereto and marked as shown respectively below):
Applicant's Plan Annexure Respondent's Infringing Annexure
Plan
(a) Sussex 4 Bedroom A1 Regal Royale A2
Rumpus Solarium (or Regal Series I)
(b) Freemont 4 Bedroom B1 Flamingo Premier B2
(c) Freemont 4 Bedroom F1 Flamingo Classic F2
(d) Freemont 4 Bedroom G1 Flamingo Regular G2
(e) Freemont 4 Bedroom
with Rear Rumpus H1 Flamingo Deluxe H2
(f)Freemont 4 Bedroom
with Rear Rumpus/ J1 Flamingo Royale J2
solarium
THE COURT ORDERS THAT:
The respondent be restrained from, by itself its servants or agents:
(a)reproducing or authorising the reproduction of the whole or a substantial part of any of the drawings of the floor plans of the houses referred to in paragraph 1 above (whether of the applicant's plans or the respondent's plans listed in paragraph 1); or
(b)building or authorising the building of any of the houses referred to in paragraph 1 above or any house with the same floor plan, or a substantial part thereof, as any of those houses (whether of the applicant's plans or the respondent's plans listed in paragraph 1); or
(c)advertising or offering for sale or opening to the public any exhibition or display home of any of the houses referred to in paragraph 1 above or any house with the same floor plan, or a substantial part thereof, as any of those houses
in infringement of the applicant's said copyright, save for the completion of the Regal Royale house currently being constructed under contract for Mr D Dinic and Ms A Cako at Lot 1228 Whitsunday Circuit in Hinchinbrook in the State of New South Wales and the house contracted to be constructed for Mr & Mrs Ram, Lot 4154 Christabel Pl, Cecil Hills.
3.Within twenty eight (28) days of the giving of judgment on issues of pecuniary relief, the respondent deliver up to the applicant on oath all sketches, drawings, working drawings, master drawings, diagrams and brochures in its possession or control being reproductions of the whole or a substantial part of any of the floor plans referred to in paragraph 1 above.
The Cross-Claim be dismissed.
The respondent pay the applicant's costs of the proceedings (including the Cross-Claim) to date - including all reserved costs, if any.
THE COURT DIRECTS:
The respondent file and serve an affidavit or affidavits by 13 September 1996 setting out in respect of the houses referred to in paragraph 1 above or any substantial reproduction thereof built by the respondent ("the houses"):
(a)the total number of houses;
(b)the location of each of the houses;
(c)the contract price for the construction by the respondent of each of the houses; and
(d)the costs to the respondent of the construction of the houses.
The applicant specify by letter to the respondent the classes of documents of which the applicant seeks discovery for the quantification of damages or an account of profits on or before 27 September 1996.
The proceedings stand over to 4 October 1996 at 9:30 am for further directions.
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 NG 862 OF 1994
) GENERAL DIVISION )
BETWEEN: LED BUILDERS PTY LTD
(ACN 002 351 957)
Applicant
AND: EAGLE HOMES PTY LTD
(ACN 002 800 115)
Respondent
Coram: Davies J.
Date: 27 August 1996
Place: Sydney
MINUTES OF ORDER
THE COURT DECLARES THAT:
The respondent has infringed the applicant's copyright in the drawings for the floor plans of each of the applicant's houses shown in the table below (and annexed hereto and marked as shown respectively below) by the floor plans for the respondent's houses shown respectively in the table below (and annexed hereto and marked as shown respectively below):
Applicant's Plan Annexure Respondent's Infringing Annexure
Plan
(a) Essington 4 Bedroom C1 Regal Series II C2
with Side (or Regal Supreme)
Rumpus/Solarium
(b) Essington 5 Bedroom D1 Oriole 4 Mk I D2
with Side
Rumpus/Solarium
(c) Clovelly 4 Bedroom E1 Oriole 4 Mk II E2
THE COURT ORDERS THAT:
The respondent be restrained from, by itself its servants or agents:
(a)reproducing or authorising the reproduction of the whole or a substantial part of any of the drawings of the floor plans of the houses referred to in paragraph 1 above (whether of the applicant's plans or the respondent's plans listed in paragraph 1); or
(b)building or authorising the building of any of the houses referred to in paragraph 1 above or any house with the same floor plan, or a substantial part thereof, or any of those houses (whether of the applicant's plans or the respondent's plans listed in paragraph 1); or
(c)advertising or offering for sale or opening to the public any exhibition or display home of any of the houses referred to in paragraph 1 above or any house with the same floor plan, or a substantial part thereof, as any of those houses
in infringement of the applicant's said copyright, save for the completion of the Regal Royale house currently being constructed under contract for Mr D Dinic and Ms A Cako at Lot 1228 Whitsunday Circuit in Hinchinbrook in the State of New South Wales and the house contracted to be constructed for Mr & Mrs Ram, Lot 4154 Christabel Pl, Cecil Hills.
Within twenty eight (28) days of the giving of judgment on issues of pecuniary relief, the respondent deliver up to the applicant on oath all sketches, drawings, working drawings, master drawings, diagrams and brochures in its possession or control being reproductions of the whole or a substantial part of any of the floor plans referred to in paragraph 1 above.
The respondent pay the applicant's costs of the proceedings (including the Cross-Claim) to date including all reserved costs, if any.
THE COURT DIRECTS THAT:
The respondent file and serve an affidavit or affidavits by 13 September 1996 setting out in respect of the houses referred to in paragraph 1 above or any variation or substantial reproduction thereof built by the respondent ("the houses"):
(a)the total number of houses;
(b)the location of each of the houses;
(c)the contract price for the construction by the respondent of each of the houses; and
(d)the costs to the respondent of the construction of the houses.
The applicant specify by letter to the respondent the classes of documents of which the applicant seeks discovery for the quantification of damages or an account of profits on or before 27 September 1996.
The proceedings stand over to 4 October 1996 at 9:30 am for further directions.
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 NG 817 OF 1993
) No NG 862 of 1994 GENERAL DIVISION )
BETWEEN: LED BUILDERS PTY LTD
(ACN 002 351 957)
Applicant
AND: EAGLE HOMES PTY LTD
(ACN 002 800 115)
Respondent
Coram: Davies J.
Date: 27 August 1996
Place: Sydney
SUPPLEMENTARY REASONS FOR JUDGMENT
In my reasons for judgment which were handed down on 29 July 1996, I dealt with five sets of comparative floor plans and held that Eagle Homes Pty Limited ("Eagle") had reproduced in its five designs the substance of the equivalent five designs of LED Builders Pty Ltd ("LED") and had thereby infringed LED's copyright. I held that, although there had been no direct copying or tracing of LED's plans by Eagle, the Managing Director of Eagle, Mr Paul Cardile, had given Eagle's draftsman instructions for change, both by way of sketches and orally, which, when implemented, brought Eagle's plans into line with those of LED. I held that there had in this way been deliberate copying by Eagle of LED's designs.
During the hearing of the matter, there was some confusion as to the plans which were in issue and I indicated to counsel my view that attention should first be given to a limited number of plans. It was for that reason that my reasons for judgment dealt with only the five sets of comparative plans, copies of which were attached to my reasons. I reserved liberty to the parties to come back before me if they were in dispute as to the remainder of the plans which had been mentioned in the evidence.
I heard counsel on this issue on 15 August. Mr I. Jackman of counsel appeared for LED and Mr D. Yates of counsel appeared for Eagle. Mr Jackman said that the other plans with which LED was concerned were Eagle's plans for a homes which Eagle called the "Flamingo". In respect of the "Flamingo" designs, Mr Jackman did not claim breach of copyright in respect of the "Ultimate" or the "Executive", but he did claim that there had been a breach of copyright in respect of the "Regular", the "Deluxe", the "Classic" and the "Royale".
Mr Yates submitted that, during the hearing of the proceedings, the then counsel for LED, Mr P.L.G. Brereton, had limited the applicant's claim to the "Premier", one of the designs of which I dealt in my reasons. However, I did not understand Mr Brererton to so limit the claim, I took him as indicating that the "Premier" was the version of the "Flamingo" to which attention should be given in the first instance. Mr Yates also submitted that, in his evidence, the principal witness for LED, Mr W.J. Thompson, did not claim that the "Classic" and the "Royale" were infringements. However, Mr Thompson exhibited designs of the floor plans of the "Flamingo Mk II" range of houses in an exhibit No. WJT 19. Mr Thompson
gave evidence that, in his opinion, the floor plans of the "Flamingo" referred to therein were a reproduction of a substantial part of the floor plans of LED's "Freemont". In his cross-examination, Mr Thompson was asked by Mr Yates, "tell me which of the Flamingos that I should be concerned with in WJT 19". In the answers which followed, Mr Thompson mentioned the "Regular" and the "Deluxe" and the "Executive". However, it seems to me that he was not intending to limit LED's claims to those homes and that the question which Mr D. Yates had asked him was not answered. What followed after the question had been asked was a succession of other questions. I think it likely that Mr Thompson's attention never went back to the point which Mr Yates had sought to clarify.
In comparing the plans, I have taken into account my earlier finding that there was deliberate copying by Eagle of LED's plans. Such a finding assists the conclusion that there was reproduction of the applicant's copyright.
I attach, marked F1, a copy of LED's Freemont and, marked F2, a copy of the "Flamingo Classic". It appears to me that there was a copying of LED's design. The only significant change is that a rectangular rumpus room was inserted between the double garage and the kitchen and the lounge. Apart from this addition, the design is that of the "Freemont Premier", which I have already held to be a reproduction of LED's design. It seems to me that the mere addition of a rectangular room without altering any other features of a home does not sufficiently change the nature of the design so as to exclude reproduction. Looking at LED's design and at the "Classic", it seems to me that there was a reproduction of LED's
plan notwithstanding the differences to which Mr Yates has drawn attention.
I attach, marked G1, a copy of LED's Freemont three bedroom home and, marked G2, a copy of the Flamingo Regular. In my opinion, the latter is a reproduction of the former. The only significant difference is the position of the laundry which, in LED's plan, is adjacent to the kitchen and, in Eagle's plan, is adjacent to the bathroom. As I mentioned in my reasons of 29 July 1996, I think that differences in position of laundries tend not to be substantial differences.
I attach, marked H1, a copy of LED's Freemont with four bedrooms and rumpus/solarium. I attach, marked H2, a copy of Eagle's "Flamingo Deluxe". Here the principal differences are that the Deluxe does not have solarium windows and the laundry is in each case in a different position, the opposite to what they are in G1 and G2. In my opinion, the plan for the "Deluxe" is a reproduction of LED's design.
I attach, marked J1, a copy of LED's Freemont with four bedrooms and rumpus/solarium and, marked J2, a copy of Eagle's "Flamingo Royale". In my opinion, the latter is a reproduction of the former. The rumpus room does not have solarium windows but otherwise the general concept is the same. The other difference is that the Freemont has the laundry adjacent to the rumpus room while the Royale has the laundry in the double garage and a similar space adjacent to the rumpus room
described as an optional patio, study, laundry or bedroom. The one plan was a reproduction of a substantial part of the other.
I shall include these plans in the orders made. In each case there was a reproduction of a substantial part of LED's design, in the sense I explained in my reasons of 29 July 1996.
Eagle should pay the costs of the further hearing.
I certify that this and the 4 preceding pages
are a true copy of the reasons for judgment herein
of the Honourable Justice Davies.
Associate:
Date: 27 August 1996
Counsel for the applicant: P.L.G. Brereton
I.M. Jackman
Solicitors for the appellant: Speed & Stracey
Counsel for the respondent: D.M. Yates
Solicitors for the respondent: Castrission & Co.
Date of hearing: 4-8 March 1996
Date of judgment: 27 August 1996
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