Look Design and Development Pty Ltd v Edge Developments Pty Ltd & Flaton
[2022] QDC 116
•20 May 2022
DISTRICT COURT OF QUEENSLAND
CITATION: Look Design and Development Pty Ltd v Edge Developments Pty Ltd & Flaton [2022] QDC 116 PARTIES: LOOK DESIGN AND DEVELOPMENT PTY LTD
(ACN 130 652 701)(plaintiff) v
EDGE DEVELOPMENTS (QLD) PTY LTD
(ACN 163 938 207)(first defendant) and
FIONA FLATON and PHILIP FLATON(second defendants) FILE NO: D80 of 2017 DIVISION: Civil PROCEEDING: Claim ORIGINATING Maroochydore COURT: DELIVERED ON: 20 May 2022 DELIVERED AT: Maroochydore HEARING DATE: 25 and 26 August 2020 JUDGE: Long SC, DCJ ORDER:
The second defendants are to pay the amount of $500.00 to the plaintiff, as damages pursuant to s 115(2) of the Copyright Act 1968 (Cth).
CATCHWORDS: COPYRIGHT – whether copyright subsists in plans and drawings of a project homebuilder and in a subsequent home built in conformity with those plans – whether copyright is the property of the plaintiff – infringement – whether there has been substantial reproduction or copying – whether there was authorisation of the infringement – damages for lost commercial opportunity or otherwise – additional damages
under s 115(4) of the Copyright Act 1968 (Cth) LEGISLATION: Copyright Act 1968 (Cth) ss 10, 21, 31, 32, 35, 36, 115 CASES: Ancher, Mortlock, Murray and Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 Carlisle County Homes Pty Ltd v Brown & Residential Developments Mackay Pty Ltd [1999] QDC 284
Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR
419
Henley Arch Pty Ltd v Luckey Homes Pty Ltd [2016] FCA
IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239
CLR 458Ownit Homes Pty Ltd & Ors v D&F Mancuso Investments Pty Ltd (1988) AIPC 90-488
Roadshow Films Pty Ltd v iiNet Ltd [No 2] (2012) 248 CLR
42.
Tamawood Ltd v Henley Arch Pty Ltd [2004] FCAFC 78Vanwake Investments Pty Ltd v New-Stat Nominees Pty Ltd & Ors [2005] QDC 57
Sellars v Adelaide Petroleum N.L. (1994) 179 CLR 332S.W. Hart & Co. Pty Ltd v Edwards Hot Water Systems [1985] 159 CLR 466
University of New South Wales v Moorhouse (1975) 133 CLR
1COUNSEL: M White for the plaintiff
R M De Luchi for the second defendantsSOLICITORS: Butler McDermott Lawyers for the plaintiff
Robinson Locke Litigation Lawyers for the second
defendantsIntroduction
The plaintiff is a project home builder trading as “Coast Life Homes”. On
17 May 2015 the second defendants (or at least Mrs Flaton) visited the plaintiff’s
display home at Bells Reach and met with the managing director of the plaintiff, Mr
Kay.
Arising from that and subsequent interactions between Mr Kay and the second
defendants, is the claim made by the plaintiff for the following relief:
“1. A declaration that the plaintiff is the owner of the copyright subsisting in each of the Coast Life Home’s plans; 2. Damages pursuant to section 115(2) of the Copyright Act 1968 (Cth) for infringement of copyright in the sum of $40,000;
3. Further, additional damages pursuant to section 115(4) of the Copyright Act 1968 (Cth) in the sum of $10,000;
4. Interest upon any such amounts pursuant to section 58 of the Civil Proceedings Act 2011 (Qld);
5. Costs.”.[1]
It may be noted that similar claims were made against the first defendant, with an
additional claim for an account of profits, as an alternative to the second claim,
pursuant to s 115(2) of the Copyright Act 1968 (Cth) (‘Copyright Act’), also for
$40,000. It may be further noted that it was admitted in the present proceedings that
the plaintiff’s claim against the first defendant had been settled with the plaintiff being
paid a sum of $30,000 by the first defendant.[2]
[1] In their defence, the second defendants raised an issue as to the jurisdiction of this Court to hear this proceeding. However, not only was this objection not pursued in accordance with UCPR 144, it was not persisted in at trial, save in respect of the reservation of a position to be taken as to any grant of injunctive relief to the plaintiff: T1-7.35-1-8.21. As observed in Vanwake Investments Pty Ltd v New-
[2] See the Statement of Claim, filed 29/6/17 at [35] and the Further Amended Defence of the Second Defendants filed 13/9/2019 at [24A] and [24B].
It is accepted that, as contended for the plaintiff, the following facts are not materially
in dispute:
(a) consequently to the meeting on 17 May 2015 and further interactions between the parties, on 31 May 2015 the second defendants were provided with a copy
of what is alleged to be an amended version of one of the plaintiff’s house
design plans; described as the Byron 214 Revision A Plan;
(b) subsequently and in order to reflect some specific adjustments requested by Mrs Flaton, on 7 June 2015 the second defendants were presented with the
“Revision B Plan”;
(c) as a response to some further amendments requested by the second defendants, as reflected in some handwritten notations on a copy of the Revision B Plan
(Ex.2, p. 11), on 10 June 2015 Mr Kay sent them an email with an updated
Sales Estimate Sheet;
(d) between 11 and 17 June 2015 further emails were exchanged between Mr Kay and Mrs Flaton, relating to the pricing of the plaintiff’s construction of a
dwelling at the second defendants’ land, consistently with the Revision B Plan;
(e) on 15 June 2015 the Flatons provided by email to another project homebuilder, Edge Designer Homes, a copy of the Revision B Plan for the purposes of Edge
Designer Homes constructing a house on the second defendants’ land;
(f) on 17 June 2015, Mrs Flaton advised Mr Kay by email that the second defendants were unable to further the pricing discussions engaged between the
parties due to work commitments;
(g) communications between the plaintiff and the second defendants ceased; and (h) on or about 31 August 2015, the first defendant trading as Edge Designer Homes produced a plan for a house to be built on the land of the second
defendants, referred to as “967 Newry Street – B” (“Edge Designer Homes
Plan”) and between that date and 21 October 2016 the first defendant built a
house for the defendants on Lot 967 on Survey Plan 274001 at 83 Newry Street
in the Brightwater Estate, Mountain Creek, consistently with the Edge Designer
Homes Plan.
The issues
Having regard to the pleadings and the legal principles to be applied and particularly
those to be derived from the Copyright Act, the parties conveniently agree that the
following are the primary issues to be determined by the Court:
(a) does copyright subsist in the Coast Life Homes plans? (b) if copyright subsists, is such copyright the property of the plaintiff? (c) were the Edge Designer Homes Plans (or the Flatons’ house built in accordance with the Edge plans), or both, a reproduction of the
Revision B Plan?(d) did the Flatons authorise the reproduction or copying of the Revision B Plan? (e) if there has been an infringement of copyright what is the measure of the plaintiff’s damages?
(i) did the plaintiff in fact suffer a loss of opportunity with respect to a contract with the Flatons for the construction of their house?
(ii) if so, what is the value of that loss?
(iii) if not, how are damages otherwise to be assessed?
(f)
is the plaintiff entitled to additional damages under s 115(4) of the Copyright Act?
(g)
what is the effect of the settlement with Edge Designer Homes on any award of damages?
Each of those issues will be considered in turn.
Copyright in the Coast Life Homes Plans
It is convenient to consider the first and second issues conjointly.
As has been noted, the plaintiff is seeking to enforce rights conferred under the
Copyright Act. In particular, the plaintiff brings action pursuant to s 115(1) of the
Copyright Act for infringement of its claimed copyright.
Pursuant to the Copyright Act and relevantly:
(a) Section 31 provides that for the purposes of the Act, and unless a contrary intention appears, ‘copyright’ in relation to a work, is the exclusive right:
“(b) In the case of artistic work, to do all or any of the
following acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) to communicate the work to the public”.
(b) ‘Work’ is defined, in s 10, to include ‘a … artistic work’ and ‘artistic work’ is defined to include ‘a … drawing … whether the work is of artistic quality or
not’ and ‘a building or a model of a building, whether the building or model is
of artistic quality or not’.
(c) Section 32 provides for the subsistence of copyright in respect of “an original … artistic work”, if the maker was an “Australian citizen or a person resident
in Australia” when the work is made or substantially made and to continue to
subsist after the first publication of the work if that takes place in Australia
when the author is similarly qualified. It is specifically provided that subject
to the remaining provisions of the Act, “copyright subsists in … an original
artistic work that is a building situated in Australia”.[3]
[3] Such copyright generally subsists for a period of 70 years after the calendar year in which the author of the work dies.
(d) The copyright subsisting in any artistic work is, subject to other provisions in s 35, vested in the author of the work (s 35(2)) and s 35(6) provides that if such
work:
“… is made by the author in pursuance of the terms of his or her
employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright
subsisting in the work by virtue of this part.’
(e) Subject to any other relevant provision in the Act, s 36(1) provides that: “… the copyright in a … artistic work is infringed by a person
who not being the owner of the copyright and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the
copyright.”
Put simply, the plaintiff’s contention is that both the Edge Designer Homes Plan and
the house built by Edge Designer Homes for the second defendants, are so
substantially similar to and consistent with the plaintiff’s plans as to be:
(a) as far as the Edge Designer Homes Plan is concerned, “a direct reproduction of all of the features of the Revision B Plan”;
(b) as far as the house in built form is concerned, “in substance a three-dimensional reproduction of the Revision B Plan”.
And that in such circumstances, there has been infringement of the plaintiff’s
copyright in its plans.
The evidence supports a conclusion that each of the plans provided by the plaintiff to
the second defendants, was produced by an employee of the plaintiff: Mr Van Slyke.
In his evidence to the Court and although he was then no longer employed by the
plaintiff, Mr Van Slyke confirmed his prior employment, here in Australia, as a drafts
person for the plaintiff for some nine years and six months prior to July 2020.[4] He
proceeded to explain a role in use of a computer program to make adjustments to
standard plans of the plaintiff such as those in Exhibit 2 (labelled as the “Byron 215”
and “Byron 214” Plans). He explained how adjustments to standardised plans (which
he created) would occur according to the strictures of particular building sites and the
requests of clients, as were relayed to him by Mr Kay.[5] More particularly, he
confirmed his preparation of the plans marked as “Flaton Revision A” and “Flaton
Revision B”, with the variations being in accordance with information related to him
by Mr Kay.[6]
[4] T1-73.15-22.
[5] T1-73.27, 1-76.20.
[6] T1-76.22 – 1-79.21 and Ex. 2, docs.7-9.
As Mr Kay explained, the further version or the Revision B Plan was discussed with
second defendants with some further consequential handwritten notations made by
him,[7] at that meeting with the second defendants (as admitted in the pleadings, on
7 June 2015) and in notation of their additional requirements.[8]
[7] See: Ex. 2, p. 11.
[8] T1-42.8-40.
Accordingly, on this evidence it is to be concluded that as expressed in each of these
documents, the copyright subsisting in each plan to the extent that Mr Van Slyke was
the author of them as an artistic work, was that of the plaintiff and ultimately no
contrary contention was pressed for the second defendants.[9]
[9] T1-10.25 – 3-12.1.
Before turning to the specific contentions of the second defendants as to the absence
of any such copyright subsisting in these plans, it may be noted that for the plaintiff,
reliance is placed upon the following considerations:
(a) that the concept of “originality” in the context of project home plans is the subject of the following discussion in Tamawood Ltd v Henley Arch Pty Ltd:[10]
[10] [2004] FCAFC 78, at [38]-[39] per Wilcox and Lindgren JJ.
“[38] The application of the law of copyright to project home plans gives rise
to special difficulty. All modern homes have certain features in common. In the case of project homes competing for the same number of dollars, there are pressures towards sameness. Of course, the size, number of rooms and facilities will vary according to the price range. Commonly, however, those in the same price range will be found:
(a) to be designed to fit blocks of approximately similar shape and dimensions;
(b) to provide for vehicular access and accommodation; and
(c) to include features demanded by the market in question, such as, a certain number of bedrooms, a laundry, a kitchen, a family or
rumpus room, an ensuite and a walk-in wardrobe (‘WIR’) in
association with the main bedroom, built-in wardrobes in the other bedrooms, at least one bathroom in proximity to the other bedrooms, and certain facilities in the kitchen such as a sink, bench, dishwasher, stove, hot plate and microwave oven.
[39] The idea-form distinction, often elusive, is particularly so in the case of
project homes. Yet the originality threshold for copyright protection is low. It is no longer challenged that copyright subsisted in the Chirnside
Works and Buildings, as well as in the Baltimore Works and Buildings.”
(b) further and as to the distinction that there is no copyright in ideas: “[41] The taking of an idea, as distinct from its expression, from a copyright
work will also not constitute an infringement, since there is no copyright
in ideas: cf Kenrick & Co v Lawrence & Co (1890) 25 QBD
99 (‘Kenrick’). Common examples concern objects in the real world or
ideas based on objects in the real world. A person who draws or photographs an object does not, through the copyright in the drawing or photograph, become entitled to prevent others from drawing or photographing the same object, even though there may be a striking similarity between the two drawings or between the two photographs. The drawing of plans for project homes involves a mixture of the use of familiar ideas based on objects in the real world (many other project homes and the plans for them) on the one hand, and labour, skill and judgment (in combining and arranging the various parts) on the other hand. It may be possible to say of each individual part, considered in isolation, that it merely expresses a common idea, yet there will be copyright in the whole plan if the combination and arrangement originated with the author. In protecting that origination, copyright
protects the author’s labour, skill and judgment.
[42] It is reasonable to expect that the more simple, commonplace, familiar
and straightforward the subject matter of a copyright work, the closer the similarity that will be required if infringement is to be found: cf Kenrick
at 102.”.[11]
[11] Ibid at [41]-[42].
(c) an explanation of the application of the concept of originality to a design plan, in Vanwake Investments Pty Ltd v New-Stat Nominees Pty Ltd & Ors:[12]
[12] [2005] QDC 57, at [44] per McGill DCJ.
“[44] It was submitted on behalf of the defendants that the plaintiff did not have copyright in these designs, because they incorporated design elements which originated with others and which were required to be incorporated, and because they were dictated by functional and commonsense considerations rather than the product of original creativity on the part of Mr McConaghy. But that submission in my opinion mistakes the nature of copyright. Copyright operates by reference to works, and a particular plan will be a work. There will be copyright in it if it is an original work. The requirement of originality was explained by Dixon J in Victoria Park Racing and Recreation
Grounds Company Ltd v Taylor (1937) 58 CLR 479 at 511: “Some
original result must be produced. This does not mean that new or inventive ideas must be contributed. The work need show no literary or other skill or judgment. But it must originate with the author and be more
than a copy of other material.” Originality therefore is used in contrast
to mere copying. But it may be entirely functional.”; and
(d) the acknowledgement in Ownit Homes Pty Ltd & Ors v D&F Mancuso Investments Pty Ltd,[13] that an original characteristic of a plan is not necessarily
compromised nor forfeited in the context of evolution or adaption of it by or
for the copyright holder.
[13] (1998) AIPC 90-488 at 38, 239. See also: A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478 at 487-490.
For the second defendants and in respect of the requirement of originality for the
subsistence of copyright, the question is correctly identified as one of degree or extent
of an author’s contribution and as being dependent upon the facts of any given case.
Emphasis is placed upon observations as to necessity for origination with the author
by the application of some independent intellectual effort, without any requirement
of novelty or inventiveness;[14] rather than a collection of other ideas or data.[15]
Although, these are observations made in the particular context of copyright in a
literary work.
[14] IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 at [33].
[15] Ibid at [45]-[48] and [99].
In the further context of correctly noting that the gravamen of the plaintiff’s claim
lies in the allegation of reproduction of the Revision B Plan prepared for the second
defendants, it is contended that copyright does not subsist in the Revision B Plan for
the following reasons:
(a) first, because the Revision B Plan is not in fact an adaption of Look Design’s “set design”, the Byron 214. It in fact bears very little similarly to that plan.
The Revision A Plan (and therefore the Revision B Plan) was created by
reproducing large parts of another plan prepared by Morcraft Homes
(“Morcraft Plan”). The kitchen design from yet another plan prepared by
Avalon Property Group (“Avalon Kitchen Plan”) and specific requests from
Mrs Flaton, all provided to Look Design. Although there are minor differences
from the Morcraft Plan in window placement and configuration of aspects such
as the WIR, what stands out in Look Design’s Plan is the overall positioning,
orientation and design of the rooms, the entry, the garage and kitchen are all
practically identical. The general relationship between the house and the block
is the same. The drawings depict the same design at least in substance. They also indicate the replication of an unusual design feature, namely the
connection of both the garage and the main bedroom with the living room.
(b) secondly, the evidence does not support a conclusion that Mr Van Slyke applied the degree of skill and labour required to make the plan an original
work or design. The software used by the Plaintiff enabled the creation of the
plan without creative or critical application of thought by Mr Van Slyke.
At the heart of the first contention is a factual dispute. The evidence of Mrs Flaton
was that when she was initially engaged with Mr Kay, as to what they were seeking
and in the context of her unsuccessful attempts to sketch the effect of their prior
involvement in developing a floor plan with another project builder and Mr Kay’s
request as to whether they had “any plans that [they] had liked or seen”, that he was
shown a plan which they had obtained from engagement at the “Morcraft display”.[16]
[16] T2-38.44 – 2-39.4, Ex 1, p 10.
Her further recollection was that when shown “a copy of that plan” she recalled Mr
Kay actually stating that it was a bit weird that the doors of the bedroom and garage
came out into the living/dining area.[17] She could not recall whether Mr Kay took a
[17] T2-39.5-18.
copy of the “Morcraft Plan” or just sketched the layout by hand.[18] Earlier, Mrs Flaton
[18] T2-39.39-41.
had described their prior interaction with “Morcraft builders or Morcraft Homes” and
attending their display in Brightwater and as represented by the layout plans earlier
produced for them.[19] She explained:
“We’d gone and visit them a fair few times because, obviously, we
liked the design that they’d come up with. But, then, we wanted to
change a few different things on that design. So, we’d spent hours
sitting there with him moving the plans around on different occasions,
and we were very happy with what he’d come up with. But before we actually thought we’d go any further with him, we’d actually have a
look around and actually look at different houses to make sure we were making the right decision and different builders to secure a good price
and the right home.”.[20]
[19] T2-37.30 – 2-38.37.
[20] T2-38.11-18.
Mr Flaton gave similar evidence, including that he went to their car to retrieve a copy
of the Morcraft Plan and that Mr Kay copied it.[21] He was never asked to clarify what
he meant by saying that Mr Kay copied it.[22]
[21] T2-102.8-32.
[22] See also: T2-110.46-2-111.3.
In contrast, Mr Kay made no reference to viewing or obtaining any earlier layout plan
in his discussions with, in particular, Mrs Flaton as to what they were seeking and he
specifically denied that:
(a) he had asked the Flatons whether they had seen another plan they liked;[23] and (b) he ever saw or received the Morcraft Plan.[24] He also expressed doubt as to whether Mr Flaton was even present at the first meeting
on 17 May 2015 at the Look Design display home, as a matter of recollection.[25]
[23] T1-57.23-24.
[24] T1-59.1-8.
[25] T1-54.40 – 1-55.7.
For the plaintiff, there is some criticism of Mrs Flaton’s evidence that the Morcraft
Plan was available to be given to Mr Kay on 17 May 2015, as they had earlier that
day revisited the Morcraft display,[26] when it is noted that the last version of the
Morcraft Plan and the one said to be shown to Mr Kay, has a reference to the date 13
May 2015 written over the date 11 May 2015 (as appears on a prior version of the
Morcraft Plan).[27] However, there is no necessary contradiction of or inconsistency
with the evidence of the second defendant as to the availability, on 17 May 2015, of
the earlier dated Morcraft Plan.
[26] T2-54.3 – 25.
[27] See Ex. 1 at pp. 7 – 10.
Whilst Mr Kay maintained that he had no interaction with Mrs Flaton (his recollection
being that he only dealt with her on 17 May 2015), as to her drawing or producing
anything else which they had seen and liked, he conceded that he may have indicated
that given the exigencies of their block of land and their criteria, he didn’t
immediately have anything which would be suitable but that he would come back to
them with a plan, which was the Revision A Plan.[28]
[28] T1-57.45 – 1-58.45.
It is clear that, as contended for the second defendants, the Revision A Plan does
incorporate some features referable to the layout in the Morcraft Plan, including in
respect of the positioning of the garage and main bedroom. It may also be concluded
that in some other respects as well there is a greater appearance of similarity with the
Morcraft Plan layout than with the plaintiff’s Byron 215 floor plan.[29] Although it is
also necessary to understand that there were some particular constraints, for instance
in terms of the location of the garage, due to the exigencies of the site for the building
and that what is sought to be represented is a plan suitable to the desires of the second
defendant.
[29] Compare Ex. 2 p. 8 with Ex. 2 p. 2 and Ex. 1 p. 10.
There is a valid criticism of Mr Kay’s evidence in that his insistence that he would
not refer to other builder’s plans when preparing plans for clients, as opposed to
referencing the plaintiff’s own “back catalogue” of plans, (including those prepared
for other clients) was later contradicted by his admission as to receipt from Mrs
Flaton, in the context of discussions with her as to modifications to the kitchen layout
in the Revision A Plan, of an extract from a plan prepared by another home builder
in respect of her old and desired kitchen layout and which may be seen as reflected
in the Revision B Plan.[30]
[30] T1-51.8–36 and T1-59.13 - 1-60.19.
There are also many criticisms directed at aspects of the evidence of each of the
second defendants (more particularly relating to an issue to be later discussed) and
there is considerable nuance to be understood in respect of the evidence given as to
the interactions between Mr Kay and the Flatons. For instance and in respect of the
last point noted as to Mr Kay’s evidence, it should also be noted that he was prepared
to accept the common experience of personal preference in respect of kitchen layout
and a preparedness to accept that and to work to achieve such requirements where
possible.
None of these witnesses presented as dishonest in their recollections. As to issues of
reliability, it might be considered that some occurrences may have been of greater
significance or more memorable to one rather than another and that a general tenor in
Mr Kay’s evidence, apart from matters of usual practice and reference to written
records, was expression in terms of his recollection or best recollection, rather than unambiguous fact. Moreover, neither of the second defendants were definitive in
asserting that he took an actual copy of the Morcraft Plan, as opposed to noting
particular features of it.[31] And it was the concept of suggested reproduction or copying
of that plan which appeared to be of most concern to Mr Kay. Whilst it would appear
to be likely that some reference was made to a document representing the Morcraft
Plan, it is, in the end, unnecessary to attempt to resolve this particular factual dispute,
in order to conclude the issues of originality and subsistence of copyright in the
Revision B Plan.
[31] T2-39.1-7 and T2-39.33-45, in respect of Mrs Flaton’s evidence and T2-102.8-32, in respect of Mr Flaton’s evidence.
In the first instance, that particular representation of a floor plan or layout was
undoubtedly prepared by Mr Van Slyke to adapt the earlier Revision A plan (itself, a
particular representation in adaptation of an existing standard layout he had prepared
for the plaintiff), which he also prepared in the course of his employment with the
plaintiff. In each instance, it must necessarily be understood that these plans were
prepared upon information relayed by Mr Kay from his various interactions with the
second defendants and particularly Mrs Flaton, to attempt to meet their requirements
or expectations, in the obvious context of attempting to gain the building contract for
their new home.
Accordingly, such a process must be driven by information provided as to such
requirements and expectations. Leaving aside any contention of reproduction of an
earlier plan of another building, which is not contended nor apparent here, given the
degree and substance of differentiation from the Morcraft Plan, evident on visual
comparison, the essential distinction is as between ideas or concepts and a particular
representation of them. In Ownit Homes, there was particular reference to the
following observations:
“In Ladbroke (football) Ltd v William Hill (football) Ltd (1964) 1
WLR 273 Lord Hodson at p.285 said that:
‘common place matter put together or arranged without the
exercise of more than negligible work, labour and skill in making the selection (or house design) will not be entitled to
copyright. “whether enough work, labour and skill is involved,
and what its value is, must always be a question of degree”,
Cramp and Sons Ltd v Frank Smythson Limited (1944) 2 All
England Reports at p.97, per Lord Parker’.
Lord Pearce at p.291 said:
‘the word “original” does not demand original or inventive
thought, but only that the work should not be copied and should
originate from the author’.
It should be noted, however, that works which might seem to have
fulfilled Lord Pearce’s minimal requirements have not always been held to be ‘original’: see for example G.A Cramp and Sons Ltd. v
Frank Smythson Ltd. (1944) A.C.329.
In the New Zealand case of Beazley Homes Ltd v Arrowsmith (1978) 1 N.Z.L.R. 394, McMullin J. in considering whether plans of low-cost houses showing little or no architectural innovation were indeed ‘original’ for the purposes of the Copyright Act 1962 (N.Z.) said at
pp.402-403:
‘I do not think that the similarity which, on account of the
considerations I have just mentioned [the various restrictions
upon a designer of low-cost housing], the plaintiffs’ plans bear
to other plans of a common type, precludes the claim of
originality being made for them…
Indeed, it seems to me that there may be some force in the
plaintiffs’ claim that because the range for skill and design are
limited, the need for their exercise is greater. The architect and plan drawer are not deprived of all opportunity for exercising
their skill and judgement’.”[32]
[32] Ownit Homes Pty Ltd & Ors v D&F Mancuso Investments Pty Ltd (1988) AIPC 90-488 at 38-238.
Whilst Mr Van Slyke accepted that his authorship of the Coast Life Homes plans was
by use of a computer aided drafted program, that, in itself, is not a sufficient reason
to find any absence of sufficient application of his skill and effort, so as to deny the
subsistence of copyright in the plan which was produced as the Revision B Plan for
the second defendants.
It is of importance to note that as Mr McDonald (who was employed as the General
Manager for Coast Life Homes, including in 2015) explained, that sitting behind the
standard and other adapted plans of the plaintiff is the reflection of time and effort
towards ability to make the floor plan in built form. More particularly, to enable a
building cost to be estimated and provided to a client.[33] That enables the “bridging”
of any gap from standard to modified version, by a series of calculations in respect of
the differences incorporated in the adapted designs.[34] That includes having regard to base price of each standard design, as previously calculated with input from
“suppliers” and “trades”.[35]
[33] T1-106.15-17.
[34] T1-106.25 – 1-107.26 and Ex. 2 p. 12.
[35] T1-107.40 – T1-109.35 and Ex. 2 pp. 15-101.
In that context, it should also be accepted that, as Mr Van Slyke explained, he began
by taking those aspects of the Byron 214 standard plan, which are discernible as being
reflected in the Revision B Plan, in what he described as the “CAD file for it”[36] and
[36] T1-77.35.
then adapted it for the design sought by the client, according to the information
brought to him by Mr Kay.[37] And, in rejection of the suggestion put to him as to lack
[37] T1-77.33-46.
of substantial effort or input on his behalf, his evidence was:
“I suggest to you that a preliminary conceptual plan without any elevations,
which is what I understand the Coast Life plan to be, I suggest to you that
creating a plan like that would approximately – would approximately take two
hours?---It would take a lot longer than that because a lot of the other work is
created at the same time. It’s just not published. So things like the elevations are
generated at the same time as doing the floor plan. They’re just not published.
There weren’t any elevations for this plan though, were there?---No, there
weren’t. We don’t publish those at that stage”.[38]
[38] T1-92.20-28.
Earlier, Mr Van Slyke had responded to another related suggestion as follows:
“Okay. So to go from – to go from, say, your Byron 214 plan to the Revision B
Plan the program would actually make it quite easy for you to change some of the internal walls to move some of those rooms?---It is quite easy to generate new rooms. But the difficulty comes in in applying those rooms so that they flow and
getting code compliance with those as well. So you’ve got lighting and ventilation
to consider for every room. You’ve also got to make sure that the block – that the
house sits inside of the lot boundaries and the building envelope.
But that wouldn’t be so much of an issue if you’re moving rooms around within the
same building footprint, would it?---It depends on if the internal walls are shifting as well. If any of the internal walls are shifted all the calculations have to be
redone”.[39]
[39] T1-91.22-32.
Later in cross-examination there was this:
“Would you agree, or disagree, with the suggestion that when it comes to project
home plans and, in particular, if we’re talking about a four bedroom, single storey
house, there aren’t a great deal of – there isn’t a great deal of creativity that can be
applied when you’re trying to fit a house on a standard, small sized block?---In
terms of width, that’s true, but it’s site specific. It depends on the site.
Naturally?---Yep.
But when it comes to, for example, the master bedroom lay-out, you’ll quite
commonly see a very similar lay-out with a master bedroom, an L-shaped walk-in
robe and an en suite not dissimilar to what you’ve drafted on your plans with a
shower, basin, a double basin and toilet?---Most of the time, yes.
And is it, also, quite common to see the living dining and kitchen all in open plan, especially - - -?---These days it is, yes.
These days?---Yep.
So you said you didn’t create the elevations for the Byron revision plans. I suggest
to you that that would have saved you a significant amount of time in preparing
those plans?---They’d need to be created at the same time for the floor plan to
work. So you’ve got to make sure the whole house can work before you show a
client. There’s no point showing them something that doesn’t work. So we do
need to check those things.
But you said that you didn’t create the elevation.
HIS HONOUR: No that wasn’t his evidence. His evidence was that it was all done,
just not published?---It wasn’t published. The elevations were created, but they
weren’t published, yeh”.[40]
[40] T1-96.15-44.
At least as some context for these passages, it should be further noted that in his
evidence in chief and when asked to comment on the rudimentary room-size
measurements shown in the Revision B Plan, Mr Van Slyke further explained as
follows:
“In terms of the measurements on this plan, can you comment on what those
measurements are?---So these – the measurements at this preliminary stage, we don’t do fully dimensioned plans. We do do notations of those internal dimensions,
so you’ll see, for instance, the garage has six metres by 5.7, which refers to the
height and width of the garage. Same with the media room, 4.3 by 3.3. That’s – we
just do that just to save investing too much time in producing a full working
document.When you say investing too much time, what do you mean by that?---Well, for one, it makes it difficult to take to someone else and copy, because all the working is
already done. It’s already out on display, which is one of the reasons why we use
text dimensions instead of notated dimensions, and it does take quite a bit of time
to produce fully dimensioned drawings”.[41]
[41] T1-79.31-42.
Notwithstanding the rudimentary nature of the plan provided to the second
defendants, as the Revision B Plan and the absence of the overt representation of work explained by him to be sitting behind it, it is clear that the preparation of it required
some time effort and skill on the part of Mr Van Slyke, as a particular representation
of concepts and ideas in a layout or floor plan of a house which could be built for the
needs of the second defendants and priced for them, as was done in broad terms by
the provision of sales estimate sheet by email from Mr Kay on 10 June 2015.[42] As Mr
Van Slyke further observed, not only could he quite easily add the detailed
measurements to the Revision B Plan but “anyone who knew how to do it could quite
easily do it”.[43]
[42] Ex. 1, pp. 34-37.
[43] T 1-90.24-29.
In these circumstances, it should be concluded that, as expressly represented on it,
there is subsistence of the plaintiff’s copyright in the Revision B Plan.
Were the Edge Design Homes Plans or the Flatons’ house built in accordance
with those plans, or both, a reproduction of the Revision B Plan?
As to the questions of reproduction, the applicable principles were stated in S.W. Hart
& Co. Pty Ltd v Edwards Hot Water Systems:
“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 (1963) Ch 587,
at p 614, ‘a sufficient degree of objective similarity between the two works’ and ‘some causal connection between the plaintiffs' and the defendant’s work’”.[44]
Although not expressly referred to in the Copyright Act, the concepts of “objective
similarity” and “causal connection” are the recognised components of the concept of
reproduction in that Act.[45]
[44] [1985] 159 CLR 466 at 472, per Gibbs CJ (Mason and Brennan JJ agreeing).
[45] Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 419 at [98].
As the issue of infringement of copyright was approached in Ownit Homes, it was
identified as involving proof of reproduction, or substantial reproduction or
copying.[46] Reference is made to dicta from authorities including S.W. Hart & Co Pty
[46] (1988) AIPC 90-488 at 38, 240.
Ltd v Edwards Hot Water Systems, as to the potential interrelationship of “two factors
which are involved in reproduction, namely similarity and copying”. That included
notation of the following observations of Street J, in dealing with the question of
resemblance, in Ancher, Mortlock, Murray and Woolley Pty Ltd v Hooker Homes Pty
Ltd:
“If the defendant’s architect had drawn the plans that are here
challenged as infringements after a mere inspection and examination of the plaintiffs' plans and houses, the present case would fall within what I have earlier described as the grey band. The similarities and the dissimilarities, weighed together and weighed separately, might well have led me to the conclusion, particularly in the split-level house, that no infringement had occurred. The defendant might well have been credited with having engaged in a bona fide application of the concept and ideas of Mr Woolley, and not in an unfair copying of his
expression of concept and ideas”.[47]
And also the observations of Gibbs CJ in the S.W. Hart case, in confirmation of a
majority conclusion of reproduction in the Federal Court, below:
“… in the light of the fact that the respondent actually copied the
appellant's drawings, obviously for the purpose of appropriating the benefit of the appellant's labour, and having regard not merely to the volume, but to the significance, of the similarities between the
respondent's products and the drawings …”.[48]
[47] [1971] 2 NSWLR 278 at 289; see: ibid at pp 38, 240 – 38, 241.
[48] See (1988) AIPC 90-488 at 38, 241.
In the present case, there is no direct evidence of actual copying. However, there is
no dispute that Edge Developments Pty Ltd was given access to the Revision B Plan.
Also, there is no suggestion that this occurred with the consent or licence of the
plaintiff. There is evidence that Mr Flaton forwarded a copy of it, by email, on 15
June 2015.[49]
[49] Ex. 1 pp. 53-54.
Mrs Flaton said that this was done with her knowledge and “because the builder asked
for it”.[50] There is then the following exchanges:
[50] T2-83.17-28.
“Is it fair to say that the plans that Edge eventually produced for you, they were
based on this plan that you sent through?---Possibly, yes.
And that that was your intention in sending Edge these plans?---No, he told us that he only had to change it 10 per cent, any plan from any builder.
Were you happy with the Coast Life plans that you’d received at this stage?-
--I liked the layout and I liked the Morcraft layout.
I’m not sure I understand. Why, then, were you continuing to deal with Morcraft
after all this time if you still liked their plans?---Because we were shopping around.
Okay. But again you didn’t have any issues with the pricing that Morcraft had
offered you to build the plan – to build a house consistent with the plan that you
liked?---I didn’t have an issue with the price, no.
Okay. All right. I’d suggest that after you sent through this plan, Edge then
produced plans consistent with this plan; do you agree with that?---They’re not
exact.
And then Edge then built a house in accordance with those Edge plans that
had been developed by them?---The Edge plans, yes”.[51]
[51] T2-84.38 – T2-85.13.
And further:
“HIS HONOUR: When – who was it that you were dealing with at Edge who told
you that the plans just had to be changed by 10 per cent?---Nigel.
When?---At our first meeting. Any plans and they need to be changed by 10 per cent.
Is that before you sent through the - - -?---Yes.
- - - revision B plan to him?---Yes.
Do you wish to pursue that, Mr White?
MR WHITE: I do briefly, your Honour. Why did that come up as a point of discussion that he only had to vary them 10 per cent?---Because we had both
plans there at the time. Any plans that we were looking at he said they’d only had
to be changed 10 per cent if we liked the design.
So you told him you wanted the Coast Life Homes design?---We didn’t tell him
we wanted it exact, but we said we liked the design, yes. I said that we liked also
the Morcraft design as well.
And it was in response to you saying that you liked the plans that he told you it
only has to be changed 10 per cent?---That’s right, yes.
But your general instructions to him were can you please build me a house that looks like this; is that fair?---No.
No. What do you say is different from that?---He was going to get his architect to change the plans.
By 10 per cent?---Yes.
So he was going to change them by 10 per cent in order to do what?---So he can trouble?---Yes, I suppose so, yes.
build us a house.
So surely that was an indication to you that you were doing something wrong?---Didn’t cross my mind at the time, no”.[52]
Then in re-examination:
“MS DE LUCHI: It was just suggested to you that Nigel was going to get his
architect to change these plans by 10 per cent, and that was because Nigel didn’t
want to get into any trouble. Did he say that to you at all?---No. He just said that
we – he had to change any plan 10 per cent.
And you trusted that was the case?---Yes”.[53]
[52] T2-91.22 – T2-92.13.
[53] T2-92.24-29.
In his cross-examination, Mr Flaton explained the sending of the email attaching the
Revision B Plan, as follows:
“Did – do you remember any dealings at all with Nigel, meetings or otherwise,
before you sent this email?---I had – everything with Nigel was rather blasé. It was his – one of his – he was just starting out so it wasn’t a, “Come into my sales office,” type thing. It was go to someone’s house. So yeah.
So do you remember if you went to his or he went to yours?---I went to his house.
And what was discussed while you were there?---On what date? When?
This - - -?---On our first meeting? Our first meeting was about building us our house.
And how long before this email was sent? Can you recall in a general sense?---I
wouldn’t.
Who else was at that meeting?---Pardon?
Who else was with you at that meeting?---My wife.
And what did you ask of Nigel at that meeting?---I just asked him if he could
build me something similar to – on this – no, something similar to what I’d seen at
Coast Life. A four bedroom house with - - -
Can you just clarify that answer. Did you say if he could build you something similar to - - -?---No, I - - -
So you didn’t have a document?---No.
Okay. So you said, “Can you build me something similar to what I’ve seen in
Coast Life”?---Yes. And I tried to draw it and I couldn’t draw it.
Yes?---So he said, “Just email it to me.” And I - - -
So I’m – could I just stop you there. So you said to him, “I’d like you to build mesomething that looks like this”?---Yes, and I was drawing it on a piece of paper.
You tried to draw it and you had trouble?---Yep.
So then you sent him through the plan?---Yep.
So his instructions were, “Build me something that looks like this”?---And change
it.
Well, can you explain the change it part. When did that first get discussed?---That was when I gave him the plan, the copy of the plan. I asked him to change it.
When? When did you give him a copy of the plan?---When I handed him the – when I – not handed, when I emailed him the copy. Me and my wife both said, “Can you change it. Can you put your own spin on it,” basically.
Can you please go to page 53 of that bundle. Is that an email from you to Nigel?--
-At Nigel, regards Phil. Is - - -
Did you send that email?---Yes.
And then the next page. Was that plan an attachment to that email?---Yes.
So there’s no reference there to, “Can you please change it or put your spin on it,”
is there?---It was a verbal.
When do you say that was?---When – when we actually sent the plan. It was – I
did ask him to change it.
And why did you ask him to change it?---Because of obvious – obvious reasons.
They can’t be identical.
I see. So why can’t they be identical?---He actually suggested that we need to
change it - - -
Can I take you - - -?--- - - - for copyright reasons.
Can I take you back to those plans that you’ve got in front of you there. The
attachment?---Yep.
If you have a look at that plan below the building footprint, the house footprint?---
Mmm.
There’s a notation there:
These plans are the property of Coast Life homes and are protected by copyright. No part may be used, reproduced or copied by any means or in any form without prior permission of Coast Life homes.
?---Yep.
Have you read that?---Yep.
What did you take that to mean when you read it?---Well, obviously, with thediscussion of Nigel, we can’t duplicate the house.
Yes?---So - - -
So you knew – you knew that he couldn’t copy that?---We tried to rearrange it
and he said, “I’ll just get my draftsman or architect or whatever you want to call it
to - - -”
So the purpose for you rearranging it was to avoid getting in trouble because of that notation?---Yes.
That’s the only reason why you rearranged it?---Well, you can’t – to my belief,
you couldn’t reproduce it, so.
So is it fair to say that, in sending that plan through, you kind of knew that what
you were doing wasn’t necessarily the right thing to do?---Not until it was actually
brought up by the builder. When he said, “I can’t copy it, I’ve got to change it.” So
we tried to change it and we couldn’t figure a way to change it, so he said his
architect or draftsman would change it”.[54]
[54] T2-117.37 – T2-119.47.
Although this evidence is also relevant to the further issue as to whether the second
defendants authorised a reproduction of the Revision B Plan, their admissions as to
the discussions with Edge Developments, as to the basis upon which that builder was
given access to the Revision B Plan, is necessarily important context to consideration
of any objective similarity in the Edge Designer Homes Plan and the house built, and
therefore the questions as to reproduction.
The plaintiff refers to the following observations as to the need for a qualitative rather
than quantitative assessment, in order to determine whether or not “a substantial part”
of the artistic work has been reproduced:
“[158] First, the relevant assessment is a qualitative assessment rather
than a quantitative assessment. Indeed, it has been said that “the
quality of what is copied is critical” (IceTV Pty Ltd v Nine
Network Australia Pty Ltd (2009) 239 CLR 458 at [30] per French CJ, Crennan and Kiefel JJ). The question is whether there is a sufficient degree of similarity between the two works objectively assessed (Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2012) 95 IPR 64; [2012] FCAFC 4 at [46] per Jacobson, Nicholas and Yates JJ and Tamawood Ltd v Habitare Developments Pty Ltd (2015) 112 IPR 439; [2015] FCAFC 65 at [19] to [35] per Greenwood J, albeit partly in dissent but not as to the relevant principles). The other dimension to reproduction, ie a causal connection between the two works (ie copying), can be put to one side for present
purposes. It is not now in doubt that Henley Arch’s floorplan
was the starting point for the respondents’ annotations,
modifications, reproduction and use both in two dimensions
and in three dimensions.[159] Second, merely pointing to dissimilarities between the various
plans does not establish that a “substantial part” of the relevant
copyright work has not been copied.
[160] Third, whether there has been a reproduction including a
copying of a “substantial part” involves questions of fact and
degree. If similarities are identified, the question is the qualitative significance of such similarities. Reproduction does not strictly require a complete and accurate correspondence to
a “substantial part” of the work (SW Hart & Co Pty Ltd v
Edwards Hot Water Systems (1985) 159 CLR 466 at 482 per
Wilson J).[161] Fourth, as the trial judge, I can be credited with at least some modicum of ability to read and interpret design drawings and to make relevant comparisons without relying upon expert opinion evidence in order to assess whether there has been a
reproduction or the copying of a “substantial part” of an artistic
work.
[162] Fifth, in the case of project home plans, whether there is
sufficient “objective similarity” depends on whether the
allegedly infringing drawing has adopted the essential features and substance of the copyright work (Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 at [91] per Lindgren J.)
[163] Relatedly, the substantial part of the work that has been taken must be assessed by reference to the whole of the copyright work. That is, the question is not whether there has been infringement of a part of the work but rather whether there has been infringement of the work as a whole by the taking of a substantial part of that work (Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378; [2004] FCAFC 78 at [55] per Wilcox and Lindgren J). In Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309; [1999] FCA 1371, it was held (at [37] per Heerey, Sundberg and Finkelstein JJ) that a
substantial part is taken if it is “an important or material part”
of the copyright work. Another way to express the point is to
ask whether “the part or parts taken represent a substantial part
of the labour, skill and judgment of the author that made the
whole [artistic] work ‘original’” (see Tamawood Ltd v Henley
Arch Pty Ltd at [55] per Wilcox and Lindgren JJ). Further, it is
not necessary to show that the copy is a “perfect reproduction
of a substantial part” of the copyright work.
[164] Sixth, the animus furandi may be relevant to the present question. Where there is deliberate copying, this may assist to more readily conclude that there is the requisite sufficient objective similarity between the infringing and copyright works
or a substantial part of the copyright work.”.[55]
[55] Henley Arch Pty Ltd v Luckey Homes Pty Ltd [2016] FCA 1217 at [158]-[164], per Beach J.
And more particularly, in respect of the comparison of two-dimensional drawings:
(a) “It is important to focus on the two-dimensional expression of these aspects rather than the functionality or ideas underpinning these aspects. It is trite to observe that plans for project homes may incorporate commonplace concepts involving the number and type of standard types of rooms (bedrooms, bathrooms, kitchens, lounge rooms etc), their relationship with each other, traffic flow, ingress and egress and the like. And it may be said, superficially, that many residential home designs will have substantially overlapping themes dealing with such matters. That is not really to the point. What is being looked at for present purposes is rather the form of the expression of such commonplace concepts and ideas. The question of objective similarity is a comparison between forms of expression, rather than between ideas or
concepts.”;[56] and
(b) “One of the matters which must be borne in mind when comparing plans is that the more commonplace and straightforward the plan the more precisely the supposed copy has to adhere to the original before it can properly be found to be a copy of the original: Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 at 483; 490 at 496. Conversely, where there is an unusual or special feature of the original, reproduction of that feature will strengthen the argument that the supposed copy is in fact a copy. Another general proposition which appears from the cases is that minor differences in detail, such as minor changes in dimensions which do not affect the general layout or the overall proportions of what is shown are not of any real significance. Such matters are not
uncommonly dismissed by other judges in a few words.”.[57]
[56] Ibid at [175].
[57] Van Wake Investments Pty Ltd v New-Stat Nominees Pty Ltd & Ors [2005] QDC 57, at 55 per McGill DCJ.
As to the question of reproduction of the Revision B Plan, the two-dimensional
comparison is assisted by placement of an A3 copy of the Edge Designer Homes Plan,
in transparent form (exhibit 5), over an A3 copy of the Revision B Plan.[58] When that
is done, there is, as noted by Mr Van Slyke,[59] assistance towards an obvious sense of
overall correlation of layout and dimension in each of the plans. That is, both in a
quantitative sense and more particularly qualitative sense, in terms of the overall
effects. As pointed out for the second defendants, Mr Van Slyke also conceded some
observably discernible differences.[60] Particular reliance is placed upon:
“… the obvious ones being the larger front façade and change to roof
line, removal of the stepped wall at the front of the house where the media room appears, differences in window types and sizes (for example B3 and media rooms), the alcoves off the living room wall, the bulk head in the entry, the difference in size of the al fresco area, the exterior materials (mostly brick veneer in the Revision B Plan, but mostly cladding in the edge plan), and the positioning of the kitchen
appliances.”.[61]
[58] These as they appear respectively at Ex.1, p. 159 and Ex.2, p. 10 and also the Morcraft Plan, to which reference has been made, as that appears at Ex.1, p. 10, are copied respectively, as appendices A, B and C to these reasons.
[59] T1-81.29-1-84.23.
[60] Ibid and T1-86.46-1-89.38.
[61] Second defendants’ written submissions, filed 12/10/20, at [27(b)].
In reality, these are minor issues and the discernible differences may be seen as further
adjustments or modifications to the Revision B Plan, which is essentially replicated.
For instance, in respect of the reliance upon the differences in the positioning of the
kitchen appliances, the differences in the Edge Designer Homes Plan are reflective of
what was raised with Mr Kay in respect of the Revision B Plan and as particularly
reflected in the extract of another plan (in relation to Mrs Flaton’s old and preferred
kitchen layout) as sent to him by email.[62] Another example, is the inclusion of an
external grade door to the side of the garage, which was discussed with and noted by
Mr Kay on a copy of the Revision B Plan.[63]
[62] See para [21], above.
[63] Ex 2, p 11.
Notwithstanding what may be regarded as the relatively standard nature of the floor
plan, in terms of types, shapes, sizes and configuration of rooms and spaces and the
absence of any particularly distinctive or unusual features,[64] there is, in the context of
the circumstances of Edge Developments gaining a copy of it, such substantial
correlation to the Revision B Plan as to objectively bespeak substantial copying or
reproduction of it. That is, in the sense of taking advantage of the time and effort
expended and represented by the plan prepared by Mr Van Slyke for the plaintiff, in
preparation of a workable floor plan to suit the configuration and exigencies of the
second defendants’ site and their substantial requirements. Another relevant
circumstance is that Mrs Flaton’s evidence was that she was aware that the first
defendant did not have “standard plans” but “did design houses”.[65]
[64] As largely conceded by Mr Kay (T1-69.32-24) and Mr Van Slyke (T1-95.33-1-96.29).
[65] T2-82.1-2.
Accordingly, it is to be concluded that the Edge Designer Homes Plan has been
prepared in infringement of the copyright subsisting in the Revision B Plan to the
benefit of the plaintiff.
The further contention of the plaintiff that the house built in accordance with the Edge
Designer Homes Plan is similarly an infringement of that copyright, is met by
contentions for the second defendants which are critical of the absence of any more
detailed plans, including any proof by the plaintiff of any more detailed plans,
including any elevations or more precise measurements or exterior design details of
the residence to be built in accordance with the Revision B Plan. The contention is
that it is therefore difficult to make any comparison in respect of “an imagined
constructed version of the Revision B Plan, a floor plan without anything more
without assuming many elements of design that were not proved”.[66]
[66] Second defendants’ written submissions, filed 12/10/20, at [29]. The submissions extend to contending
However, the difficulty is in accommodating such submissions in the context of the
plaintiff’s understandable reliance upon s 21(3) of the Copyright Act, which provides:
“For the purposes of this Act, an artistic work shall be deemed to have
been reproduced:
(a) in the case of a work in a two-dimensional form – if a version of the work is produced in a three-dimensional form; or
(b) in the case of a work in a three-dimensional form – if a version of the work is produced in a two-dimensional form;
and the version of the work so produced shall be deemed to be a
reproduction of the work.”.
Indeed, there is no submission made in response to that reliance or as to how s21(3)
is not applicable, as the plaintiff contends.[67]
[67] See also the second defendants’ written reply, filed 8/12/20.
Accordingly, it is to be concluded that the effect is that once, as it is established here,
the second defendants’ house has been constructed in accordance with the Edge
Designer Homes Plan, as a substantial reproduction of the Revision B Plan, the result,
in the words of s21(3), is that “a version of the [Revision B Plan] is produced in a
three-dimensional form”, “deemed to be a reproduction of the [Revision B Plan]”.
And also therefore, an infringement of the plaintiff’s copyright “to reproduce the
work in a material form” (s31(1)(a)(i)).
an award of additional damages in the same sum: $10,000.00. In this respect, there
is effective embracement of the evidence of the Flatons as to their discussions with
the first defendant and being told of only a need to modify the plans by 10%, when
the reality is that they desired a home built in accordance with the Revision B Plan,
and without any attempt to obtain any permission or licence to do so.
Although Mr Flaton did concede an understanding that the house could not be
duplicated in accordance with the Revision B Plan and thereby an acceptance of the
suggestion that the one reason for modification or rearrangement was in order to avoid
getting into trouble”,[128] Mrs Flaton (who it may be noted, on the evidence, was much
[128] T2-119.28-41.
more engaged with Mr Kay in developing the specifics of the Revision B Plan) made
it clear that her concern was in shopping around to get the best deal for the house that
they wanted.[129] One way in which the Edge Developments Homes Plan differed from
[129] T2-85.12 and T2-95.16-35.
the Revision B plan, is in the adoption of the layout of appliances in the Kitchen, as
demonstrated to Mr Kay by Mrs Flaton sending him a copy of the extract of her earlier
kitchen plan and the evidence demonstrates that the Edge Designer Homes Plan from
which the second defendants’ house was built was also the subject of ongoing
modifications and adjustments before finalisation.[130]
[130] See: Ex. 1 pp. 66-95.
Particularly in the context of the findings made in respect of any loss of opportunity
for the plaintiff to build the house, the evidence in this case did not impress as being
supportive of the contentions for the plaintiff that it should be found that the second
defendants had such a sense of knowledge that they were acting wrongly and taking
any unfair advantage of the work of the plaintiff as represented in the Revision B
Plan, so as to provide any foundation for an award of additional damages on the basis
of flagrancy of their infringement of the plaintiff’s copyright.
Further and also in respect of any broader consideration of such an award it is
important to understand that:
(a) the infringement here is in respect of the particular representation of a collection of ideas in the sense of a layout plan, because although as Mr Van
Slyke explained there was more in terms of the representation of his time and
effort on behalf of the plaintiff sitting behind this layout plan, what was
provided to the second defendants and substantially reproduced was the
conceptual layout or rudimentary floorplan; and
(b) although, as has been explained, not relevantly detracting from a finding of authorisation of the reproduction, there was an obvious sense of reliance upon
the representations of the first defendant as to how a reproduction could
legitimately be achieved by them.
As was noted for the second defendants, it is more generally accepted that an award
of exemplary or punitive damages is in punishment of ‘conscious wrongdoing in
contumelious disregard of another’s rights’.[131]
[131] See: second defendants’ written submissions, filed 12/10/20, at [64] and Whitfield v De Lauret & Co
In these circumstances and whilst the situation may well have been different in respect
of the first defendant, it is not appropriate to award any additional damages against the second defendants by way seeking deterrence of similar infringements, or
otherwise pursuant to s 115(4) of the Copyright Act.
Conclusion
The conclusion is that upon the findings that there has been infringement of the
plaintiff’s copyright in the Revision B Plan, by the second defendants’ authorisation
of the reproduction of that plan by the first defendant and construction of a house in
accordance with that reproduced plan on the second defendants’ land, there will be
an award of the amount of $500.00 to the plaintiff, as damages pursuant to s 115(2)
of the Copyright Act.
Otherwise, the parties will be given an opportunity to be heard as to the form of final
orders, including as to interest and costs.
APPENDIX A
APPENDIX B
APPENDIX C
State Nominees Pty Ltd & Ors [2005] QDC 57 at [3] – [4], at least as far as encompassing the power
to award damages is concerned, s 39(2) of the Judiciary Act 1903 (Cth) confers such jurisdiction upon this Court (subject to the limits of its jurisdiction pursuant to the District Court of Queensland Act 1967 (Qld).
for an inference pursuant to the reasoning expounded in Jones v Dunkel [1959] 101 CLR 298 at 312.
2/11/20, at [96]-[102].
– [23].
Residential Developments Mackay Pty Ltd [1999] QDC 284 at 19 – 22.
and T2-114.8-9 and Ex. 2 pp. 12 – 14.
Ltd (1920) 29 CLR 71 and XL Petroleum (NSW) Pty Ltd v Caltex Oil (Australia) Pty Ltd (1985) 155
CLR 448. See also: Autodesk Inc v Yee (1996) 68 FCR 391 at 394.
1
6
1