McDonald Jones Homes Pty Ltd v Potter - [2025] FedCFamC2G 841

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
McDonald Jones Homes Pty Ltd v Potter [2025] FedCFamC2G 841

File number(s): SYG 923 of 2022

Judgment of: JUDGE MANOUSARIDIS

Date of judgment: 4 June 2025

Catchwords: INTELLECTUAL PROPERTY – Copyright – whether the applicant is the owner of copyright in floor plans contained in brochures the applicant published – whether the respondent provided to a draftsperson a plan (copy plan) that combined parts of two separate floor plans contained in the brochures and by doing so authorised the draftsperson to design and prepare plans on the basis of the copy plan and therefore infringed the applicant’s copyright in the floor plans – not satisfied respondent provided the copy plan to the draftsperson or was otherwise aware the draftsperson used the copy plan to design plans for the constructions of a house – claim for infringement of copyright dismissed.

Legislation:
Conveyancing Act 1919 (NSW) s 12

Copyright Act 1968 (Cth) ss 10, 14, 31, 32, 35, 36, 115, 196, 197

Cases cited:
Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd (1970) 20 FLR 481

Briginshaw v Briginshaw (1938) 60 CLR 336

Broken Hill Proprietary Company Ltd v Waugh (1988) 14 NSWLR 360

Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371

Coles v Dormer & Ors [2015] QSC 224

Eagle Homes Pty Ltd v Austect Homes Pty Ltd [1999] FCA 138

Equuscorp Pty Ltd v Haxton; Equuscorp Pty Ltd v Bassat; Equuscorp Pty Ltd v Cunningham's Warehouse Sales Pty Ltd [2012] HCA 7

Francis Day & Hunter Ltd v Bron [1963] Ch 587

Global Brand Marketing Inc v Cube Footwear Pty Ltd [2005] FCA 479

Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217

IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14

Kuligowski v Metrobus [2004] HCA 34

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273

Long Leys Co Pty Ltd v Silkdale Pty Ltd (1991) 5 BPR 11,512

Real Estate Took Box Pty Ltd v Campaigntrack Pty Ltd [2023] HCA 38

Rhesa Shipping Co SA v Edmunds [1985] 1 WLR 948

Shah v Hagemrad [2018] FCA 91

Smith v New South Wales Bar Association [1992] HCA 36; (1992) 176 CLR 256

Steinberg v Federal Commissioner of Taxation (1975) 134 CLR 640

Steinberg v Federal Commissioner of Taxation (1975) 134 CLR 640

SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466

Taypar Pty Ltd v Santic (1989) 21 FCR 485

University of New South Wales v Moorhouse (9175) 133 CLR 1

Williams v The Minister Aboriginal Land Rights Act 1983 and New South Wales [2000] NSWCA 255

Division: General

Number of paragraphs: 196

Date of hearing: 22, 23, 24 and 26 April 2024

Place: Sydney

Counsel for the Applicant: Ms R De Stoop

Solicitor for the Applicant: K & L Gates

Counsel for the Respondent: Mr S Milanovic

Solicitor for the Respondent: Prestige Solicitors & Associates
ORDERS

SYG 923 of 2022

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

BETWEEN:
MCDONALD JONES HOMES PTY LTD ACN 003 687 232

Applicant

AND:
ROBERT POTTER

Respondent

ORDER MADE BY:

JUDGE MANOUSARIDIS

DATE OF ORDER:

4 JUNE 2025

THE COURT ORDERS THAT:
1.The application is dismissed.
2.Subject to order 3, the applicant pay the respondent’s costs.
3.The parties have liberty to apply within 35 days after these orders are pronounced for an order varying or discharging order 2.

Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION

On 28 August 2017 the respondent, Mr Bobby Potter, and possibly his wife, met with Mr Timothy Hoover, a house designer and draftsperson, who then provided, and continues to provide, house design and drafting services through his company, Hoover Group Pty Ltd (Hoover Group).
Before Mr Potter met Mr Hoover, he and his wife entered into a contract to purchase a lot (Chisholm Property) in a proposed subdivision of land situated in Chisholm, New South Wales (Waterford County estate). A display homes village was situated on or near the Waterford County estate on which a number of builders had constructed display homes. The applicant (MJH) was one of those builders.
In their meeting of 28 August 2017 Mr Potter and Mr Hoover discussed the possibility of Mr Hoover designing a house to be built on the Chisholm Property, and preparing plans in support of a development application for the construction of such house. On 4 September 2017 Mr Potter and his wife engaged Hoover Group, through Mr Hoover, to design a house to be constructed on the Chisholm Property, and to prepare a development application and construction certificate plans.[1] Mr Hoover, with the assistance of a subcontractor, Mr Bishop, prepared plans for a house. In time, Mr Potter and his wife arranged for a house (Chisholm House) to be constructed on the Chisholm Property in accordance with the plans Mr Hoover prepared; and, by 17 August 2018, after the Chisholm House had been built, Mr Potter and his family moved into the Chisholm Property.
[1] Affidavit B L Potter 21.8.2023, [43]; Annexure 4 (CB1109-10).
On 24 August 2021 Mr and Ms Potter listed the Chisholm Property for sale; and, after accepting an offer made on 29 August 2021, Mr Potter and his wife sold the Chisholm Property. Sometime before 8 November 2021, however, MJH became aware that the Chisholm Property had been advertised for sale on a website to which there had been uploaded a plan of the Chisholm House (Chisholm Plan). MJH formed the view that the Chisolm Plan was substantially the same as a plan (Beach House plan) for a house MJH had been marketing and building since 2006 under the name of “Beach House” (Beach House). The Beach House plan had been made available on MJH’s website since about the time it was released; and was also reproduced in brochures MJH published that were available for collection at MJH display homes.
On 8 November 2021 MJH’s lawyers (KLG) sent a letter to Mr Hoover stating that MJH had become aware of the sale of the Chisholm Property; that the Chisholm Plan and the Chisholm House are strikingly similar to the Beach House plan and the Beach House, with all rooms in the same positions; and that MJH considered it highly likely that the Chisholm Plan and the Chisholm House had been created by reference to the Beach House plan.[2] KLG demanded that, if Mr Hoover denied the Chisholm Plan and Chisholm House had been created by reference to the Beach House plan and the Beach House, Mr Hoover should produce for MJH’s inspection Mr Hoover’s complete original design file for the Chisholm House.
[2] Exhibit E.
Mr Hoover responded to KLG’s letter by his lawyer’s lawyer sent by email on 11 November 2021 (11 November email).[3] Mr Hoover, through his lawyer, said he first became aware of the Beach House plan and the Beach House when he was provided with correspondence KLG sent to Mr Chapman, the principal of Hama Constructions Pty Ltd (Hama), the builder of Chisolm House; and Mr Hoover agreed there is a striking similarity between the Chisholm House plan, on the one hand, and the Beach House plan and the Beach House, on the other. Mr Hoover, however, asserted that any copyright infringement on his behalf “was inadvertent and deeply regretted”. The 11 November email continued as follows (emphasis in original):
Our client explains the situation as follows:
a.In or about August 2017, our client was asked by Mark Chapman, director of Hama Constructions Pty Ltd (“Hama”), to assist one of Hama’s employees with the preparation of their house plans “as a favour to a mate.”
b.This brief was outside our client’s normal scope of work, as the majority of their projects are boutique designs for complex sites, with a special interest in flood prone land and heritage conservation.
c.On or about August 2017, our client met with Hama’s employee, Bob Potter, and Bob’s wife, Nerida (“the homeowners”). He was provided with a hand-drawn sketch (“Floor Plan layout”) that the homeowners had prepared. We enclose a copy of the Floor Plan layout.
d.Our client regrets that he did not ask the homeowners where they sourced their inspiration, and to this date has no idea what sources were used to produce the Floor Plan layout. Unfortunately, this means that he cannot admit to infringing MJH’s copyright in the Copyright Works, as it would merely be speculation on his behalf.
e.Our client has since taken steps to ensure his clients will be actively required to disclose the source of inspiration for any designs or sketches provided to him, to ensure this situation is avoided in future. It was never an issue before, because as previously mentioned, our client’s normal practice involves the creation of unique and original designs, and the House Plan was a highly unusual, one-off departure from his normal practice.
[3] Exhibit E.
I have reproduced in Annexure A to these reasons the “Floor Plan layout” that was attached to the 11 November email; and I will refer to that document as the Actual Potter Plan.
On 13 January 2022 KLG sent an email to Mr Potter in which KLG made allegations based on the matters stated in the 11 November email.[4] On 15 February 2022 KLG sent a letter to Mr Hoover’s lawyer in which KLG stated that “our client has engaged in further correspondence with Mr Potter”, relying on the assertions made in the 11 November email “to make further allegations against Mr Potter.[5] KLG further stated that Mr Potter asserted that “the Floor Plan Layout enclosed under cover of” the 11 November email “reflected Mr Potter’s suggested variations to an initial draft concept plan prepared by your client”.
[4] Exhibit A.
[5] Exhibit F.
Mr Hoover’s lawyer responded to KLG’s letter by letter dated 22 February 2022 (22 February email).[6] Mr Hoover’s lawyer said that Mr Hoover “vehemently denies Mr Potter’s assertion of events”; and that Mr Potter “provides the following evidence as proof”. The letter sets out a table which opens with the following entries:
[6] Exhibit F.

DATE

ASSERTION

EVIDENCE

28/08/2017

The original layout was supplied to our client by Bob Potter, before our client commenced any works or concepts for the design. No information was provided by the Potters about where the original layout came from or what it was inspired by.

“Floor Plan Layout.old.pdf” in folder “02-Received Plans & Markup Done Alongside the clients”

The “Floor Plan Layout old.pdf” identified in the “Evidence” column is different from the Actual Potter Plan that was attached to the 11 November email. I will refer to the document attached to the 22 February email as the Alleged Potter Plan. I have reproduced in Annexure B to these reasons the Alleged Potter Plan.
At 3:53 pm on 23 February 2022 Mr Hoover’s lawyer sent an email to Mr Ottaway, a lawyer at KLG (23 February email).[7] The email referred to a telephone conversation with Mr Ottaway “this afternoon”; and identified two questions Mr Ottaway apparently asked, these being whether the details in the design “the Potters – Floor Plan Layout old” provided to Mr Hoover are any clearer in the original; and the second is whether Mr Hoover could provide details of how that document was provided to Mr Hoover. Mr Hoover’s lawyer answered those questions as follows:
1. The scanned copy of “Floor Plan Layout old” is an accurate representation of the physical document provided to him, and the details on the original were similarly faded and illegible.
2. To the best of his memory, our client states that the document “Floor Plan Layout old” was physically handed to our client by Mr Potter during a brief drop in to his office on 28 August 2017, where Mr Potter said words to the following effect: “Here’s what we want to use, can you provide a quote? Everything else has been emailed to you.” The date on the “Floor Plan Layout old” file in his database shows that it was scanned by our client at 5:51pm on 28 August 2017. It was emailed to Roy Bishop of Hilltop Consultants at 9:34 am the next morning.
[7] Exhibit F.
On 24 May 2022, MJH, another company related to MJH, and Hoover Group entered into a settlement agreement in which MJH and the related company settled their claims for copyright infringement against Hoover Group.[8] Mr Potter, in the meantime, sent correspondence to KLG, the last of which sent he on 26 March 2022 (26 March email),[9] in which he denied he had copy and pasted any plan; he claimed he relied on the skill and judgment of Mr Hoover to design, and prepare plans for the construction of a house on the Chisholm Property based on that design; and Mr Potter claimed he did not infringe any copyright MJH may have owned, or authorise Mr Hoover or anyone else to infringe any such copyright.
[8] Exhibit D.
[9] Exhibit H.
CLAIMS AND ISSUES ARISING
In these circumstances, on 28 June 2022 MJH commenced this proceeding against Mr Potter in which, in its amended statement of claim, MJH alleges as follows:[10]
(a)Copyright of which MJH is the owner subsists in the Beach House plan and other plans it created based on or at least substantially derived from that plan. MJH collectively identifies these plans as the Copyright Works.
(b)On or before 28 August 2017 Mr Potter, or alternatively Ms Potter, prepared, or authorised the preparation of, a “draft floor plan”, being the Alleged Potter Plan (but which the amended statement of claim identifies as the “Draft Chisholm Plan”) for a house to be constructed on the Chisholm Property.
(c)On or around 28 August 2017 Mr Potter provided to Mr Hoover with a copy of the Alleged Potter Plan.
(d)On and from around 28 August 2017 Mr and Ms Potter engaged Hoover Group to prepare, and Hoover Group prepared, a final floor plan to be constructed at the Chisholm Property, “based on” the Alleged Potter Plan, resulting in the completion of the Chisholm House by around 17 August 2018.
(e)On or around 7 November 2017 Hoover Group finalised the Chisholm Plan.
(f)On or from 15 January 2018 Mr and Ms Potter engaged Hama to construct, and Hama constructed, the Chisholm House in accordance with the Chisholm Plan.
(g)The Alleged Potter Plan and the Chisholm Plan reproduce the whole or a substantial part of the Copyright Works.
(h)Mr Potter infringed MJH’s copyright in the Copyright Works by, without the licence or approval of “the copyright owner”, reproducing or authorised the reproduction of the whole or a substantial part of the Copyright Works; authorising Hoover Group to reproduce the whole or a substantial part of the Copyright Words to draft the Chisholm Plan; and authorising Hama to reproduce the whole or a substantial part of the Copyright Works to construct the Chisholm House.
[10] Mr Potter’s wife was initially named a respondent, but MJH discontinued its claims against her on 27 November 2023.
The alleged “Copyright Works” MJH alleges Mr Potter infringed has been more precisely identified in the evidence. These consist of part of what I later identify as the Beach House Upgrade plan, and part of what I later identify as the Beach House Executive plan which, MJH alleges, Mr Potter obtained from brochures MJH published, or from MJH’s website. The Alleged Potter Plan is alleged to be the reproduction, and amalgamation into one plan, of two parts of the Beach House Upgrade plan, and the Beach House Executive plan.
In his defence Mr Potter puts in issue MJH’s claims that copyright subsists in the Beach House Upgrade and Beach House Executive plans, and that it is the owner of such copyright as may subsist in those plans. Additionally, Mr Potter denies he provided any plans to Mr Hoover, and positively alleges that, although he did prepare and provided a hand drawn plan, he did so on 14 September 2017, and the plan he submitted, being the Actual Potter Plan, was based on a concept plan Hoover Group had prepared and provided to him.
The principal issues that arise in this proceeding, therefore, are as follows:
(a)Does copyright subsist in the Beach House Upgrade and Beach House Executive plans? If so, is MJH the owner of that copyright?
(b)If, or assuming, both questions in (a) are answered in the affirmative, did Mr Potter create the Alleged Potter Plan, or did Mr Potter provide the Alleged Potter Plan to Mr Hoover at the meeting of 28 August 2017?
(c)If, or assuming, (b) is answered in the affirmative, is the Alleged Potter Plan a reproduction or a substantial reproduction of the Beach House Upgrade and Beach House Executive plans?
(d)However (c) is answered, did Mr Potter authorise Mr Hoover to prepare plans on the basis of the Alleged Potter Plan?
(e)If, or assuming, (d) is answered in the affirmative, are the plans Mr Hoover prepared substantially based on the Alleged Potter Plan and, in any event, substantially the same as the Beach House Upgrade and Beach House Executive plans and, for that reason, substantial reproductions of those plans?
APPROACH
I will first set out the evidence that is relevant to MJH’s claim that copyright subsists in the Beach House Upgrade and Beach House Executive plans, and that MJH is the owner of that copyright. I will then, in chronological order, set out the effect of the evidence, or the evidence itself, that relates to the events that led to Mr Potter meeting Mr Hoover on 28 August 2017; what occurred at that meeting; and the events that followed, up to the completion of the construction of the Chisholm House. In the course of setting out that evidence, I will make some express findings of fact. Unless the context suggests otherwise, however, any unqualified statement of fact should be taken as a finding of the fact stated. I will then set out the relevant provisions of the Copyright Act 1968 (Cth) (Copyright Act), and principles in relation to those provisions; and consider each of the five issues I identify in the preceding paragraph.
EVIDENCE AND SOME FINDINGS
MJH group of companies
MJH is a member of a group of companies (MJH Group), having been incorporated in May November 1995.[11] At that time the MJH Group had been conducting a number of businesses, one of which was the provision of building, design, and construction services in New South Wales under the name of “McDonald Jones Homes” (MJH Business). On its incorporation, MJH commenced to provide building and construction services for the MJH Business, and for other businesses the MJH Group was conducting.[12]
[11] Affidavit N Elkington 28.02.2023, [11], [12].
[12] Affidavit N Elkington 28.02.2023, [12].
Immediately before 20 May 2022, the MJH Business was carried out as follows:
(a)A company called “McDonald Jones Homes Pty Ltd” (now known as “NTX Building Group Pty Ltd”) (NTX) administered the day to day operations of the MJH Business.[13]
(b)MJH provided building and construction services for the MJH Business under the name of “Newcastle Quality Constructions”.[14]
(c)A company called Admindirect Direct Pty Ltd (Admindirect) employed the persons who performed work in connection with the MJH Business.[15]
(d)NTX held the goodwill and other intellectual property that was used in the MJH Business.[16] That included intellectual property employees of Admindirect created since 2005, being intellectual property identified in a deed of acknowledgment and assignment pursuant to which each of NTX and Admindirect acknowledged that the copyright created by such employees was assigned to NTX at the time the relevant works were created.
[13] Affidavit N Elkington 28.02.2023, [14].
[14] Affidavit N Elkington 28.02.2023, [12].
[15] Affidavit N Elkington 28.02.2023, [17].
[16] Affidavit N Elkington 28.02.2023, [14].

On 20 May 2022 NTX assigned to MJH the goodwill in, and the intellectual property associated with, the MJH Business.[17] (In the remainder of these reasons, unless I state or the context suggests otherwise, I will use “MJH” to refer to the company within the MJH Group that is relevant to the events I describe.)
[17] Affidavit N Elkington 28.02.2023, [16].
MJH engages Mr Everitt
In around May 2005 Mr Haigh, MJH’s then director of sales and marketing,[18] contacted Mr Everitt. Mr Everitt is an architect who, in 2005, had formed his own design consultancy business which he conducted through Stuart Everitt Design Studio Pty Ltd (SEDS). Mr Haigh informed Mr Everitt that Mr Haigh, Mr Helmers, and Mr McDonald had visited Perth and viewed several project homes Mr Everitt designed. [19] Mr Helmers was then the managing director of the MJH, and Mr Jones is the founder of the MJH Business.[20]
[18] Affidavit P R Haigh 28.02.2023, [14]. At the time he made this affidavit, Mr Haigh worked for the MJH Group as a senior advisor.
[19] Affidavit S E Everitt 28.02.2023, [10].
[20] Affidavit S E Everitt 28.02.2023, [14].
In around June 2005 Mr Everitt met with Mr Jones and Mr Andrews at MJH’s business premises in East Maitland where Mr Everitt agreed to perform design services for MJH on a consultancy basis. From approximately May 2005 to December 2005 Mr Everitt reviewed MJH’s design portfolio, in the course of which he updated many of the existing designs by rearranging elements within floor plans, inserting features, and providing new elevation designs. Mr Everitt also prepared new designs, one set of which is the Beach House plans.
SEDS Agreement
In November 2005 the terms on which MJH engaged SEDS were formalised in an agreement MJH (then known as Newcastle Quality Constructions) and NTX entered into with SEDS (SEDS Agreement).[21] Under cl 2.1 of that agreement Mr Everitt agreed to provide “the Services” to “the Principal” (a term which was defined to mean MJH and NTX), these being the following services specified in Schedule 1 to the SEDS Agreement:
[21] Affidavit S E Everitt 28.02.2023, [15]; Annexure SE-1, pages 9-33 (CB980-1004).
At the request and instruction of the Principal, and in accordance with the briefing provided by the Principal:
1 the Contractor is to provide architectural and design services for the preparation of plans for:
(a)designs for single storey and two storey project homes;
(b)architectural facades applicable to each design (4 per plan);
(c)architectural changes to any pre-existing plan or façade belonging to the Principal;
2 unless instructed otherwise by the Principal, the plans must include:
(a)roof design and layout;
(b)structural specification details (as may be required by the Principal); and
(c)architectural features.
3 the Contractor must ensure where reasonable that the designs and plans are in accordance with appropriate Australian Standards and any other relevant local authority guidelines, notwithstanding specific requirements/covenants where separate approvals may be required.
Clause 3.1 provided that, unless the Principal agreed otherwise, only Mr Everitt would provide the Services.
Clause 14.3 of the SEDS Agreement provided that MJH retains ownership of the intellectual property rights in “the Contract Material”. That expression is defined to mean all material developed or created by SEDS “in the course of providing the Services, including drawings or related architectural material created prior to” the date on which the agreement commenced. This clause must be read with cl 14.6(a), which provides:[22]
The Contractor acknowledges and agrees that the ownership of all rights and Intellectual Property Rights in the Contract Material will, upon creation, vest in or be transferred to the Principal at no cost and without the need for further assurance.
[22] As for the effect of this clause, see s 197(1) of the Copyright Act.
Creation of the Beach House Working Plans and Construction of Beach House Display
In around September 2005 Mr Haigh provided Mr Everitt with a brief to create a new house design. The brief contained a set of specifications for a notional block, and a price range. Mr Haigh specified that the house include an open living space at its rear, four bedrooms, a home theatre, a galley kitchen, an optional al fresco space, and a double garage. Mr Haigh informed Mr Everitt that MJH intended to build a house according to the design Mr Everitt was to create at a lot MJH owned at Fern Bay.[23] In September 2005 Mr Everitt provided Mr Haigh with a hand drawn concept plan titled “Proposed Beach House for Fern Bay” (Beach House Concept).[24]
[23] Affidavit P R Haigh 28.02.2023, [21]; Affidavit S E Everitt 28.02.2023, [18]-[21].
[24] Affidavit P R Haigh 28.02.2023, [22]: Annexure PH-1 (pages 12-15) (CB715-718); Affidavit S E Everitt 28.02.2023, [22] (pages 34-37) (CB1005-1008): Annexure SE-1.
In February or March 2006 Mr Haigh instructed Mr Simeon Davidson to prepare working drawings for a display home to be built at Fern Bay based on the Beach House Concept (Beach House Display).[25] Mr Davidson was an employee of NTX from February 2004 to June 2005; and an employee of Admindirect from June 2005 to 2019.[26] After obtaining council approval, MJH began to construct the Beach House Display in late 2006. On about 8 February 2007 Mr Davidson provided to Mr Haigh final working drawings for the Beach House Display, which Mr Haigh approved on the same day. MJH completed the construction of the Beach House Display in March 2007. [27]
[25] Affidavit P R Haigh 28.02.2023, [24].
[26] Affidavit N W Elkington 01.03.2023, [23].
[27] Affidavit P R Haigh 28.02.2023, [20]-[24]: Annexure PH-1 pages 16-21 (CB719-724].
The Beach House Display opened to the public in around June 2007, and remained open until the middle of 2014.[28]
[28] Affidavit P R Haigh 28.02.2023, [30].
Creation and publication of first set of Beach House plans
Mr Haigh says that, “[s]imultaneously with the preparation of the Beach House Display Plan”, he instructed Mr Davidson to prepare master plans for the Beach House. A master plan is a working drawing MJH uses as the standard template for building homes for its clients. Mr Haigh instructed Mr Davidson to prepare three versions: a “standard” master plan; a “manor” version, which would feature a horizontal rather than a vertical children’s activities room; and upgraded versions of these plans to include extra features, such as a free-standing bathtub in the ensuite, coffered ceilings in certain rooms, and a covered al fresco area at the rear of the house.[29]
[29] Affidavit P R Haigh 28.02.2023, [33].
Mr Davidson finalised the master plans for the Beach House manor (Beach House Manor plan), and an upgrade version of that plan in December 2005 (Beach House Upgrade plan); and, on 19 December 2005, Mr Haigh approved the issue of the plans for sale to the market.[30] Mr Davidson finalised the master plans for the Beach House standard in around July 2006 , and MJH issued those plans to the market on 26 July 2006.[31]
[30] Affidavit P R Haigh 28.02.2023, [34], [35]: Annexure PH-1, pages 23, 24 (CB7726,727).
[31] Affidavit P R Haigh 28.02.2023, [41]-[45]: Annexure PH-1, pages 25, 26 (CB728, 729).
Mr Haigh’s evidence of the dates on which he says he instructed Mr Haigh to prepare the master plans does not appear to be consistent. As I have already noted, Mr Haigh says that he instructed Mr Davison to prepare master plans simultaneously with the preparation of the Beach House Display Home, which, Mr Haigh says, he instructed Mr Davidson to prepare in February or March 2016. Mr Davidson, however, finalised the master plans for the Beach House Manor and the Beach House Upgrade in December 2005. Nothing turns on this apparent inconsistency.
Creation and publication of Beach House Executive plan
In around May 2012 Mr Haigh instructed Mr Michael Percival, another designer working for the MJH Business, but employed by Admindirect,[32] to prepare to modify the Beach House Manor plan so that it could fit into a smaller block.[33] Mr Percival started with the Beach House Manor plan; and he made the additions and variations Mr Percival describes in his affidavit.[34] Mr Percival completed the plan for the modified Beach House Manor plan by around 11 October 2012 (this being the Beach House Executive plan I identify earlier in these reasons); and at around the same time, Mr Percival completed and provided to Mr Haigh an upgraded “elite” version of the Beach House Executive plan.[35]
[32] Affidavit M J Percival 27.02.2023, [13].
[33] Affidavit M J Percival 27.02.2023, [14].
[34] Affidavit M J Percival 27.02.2023, [16]-[18].
[35] Affidavit P R Haigh 28.02.2023, [36]: Annexure PH-1, pages 35, 36 (CB738, 739); Affidavit M J Percival 27.02.2023, [19], [20].
Publication of Beach House Brochures
In around November 2008 MJH published its first brochure featuring images of the Beach House Display, and a simplified version of the Beach House Display plan. MJH did so again in June 2010, and in February 2016.[36] In February 2016 MJH also published a “Stuart Everitt” collection brochure, featuring homes that had been designed by Mr Everitt.[37] Printed copies of MJH’s 2016 and the Stuart Everitt brochures were available at MJH display homes during 2016 and 2017; and copies of those brochures were available to be viewed on MJH’s webpage in 2016 and 2017. In addition to making the brochures available, MJH’s website also made available a simplified version of the Beach House and Beach House Executive plans.[38]
[36] Affidavit P R Haigh 28.02.2023, [46]-[50]; Annexure PH-1, pages 37-74 (CB740-777).
[37] Affidavit P R Haigh 28.02.2023, [51]; Annexure PH-1, pages 75-214 (CB778-917).
[38] Affidavit P R Haigh 28.02.2023, [51]-[56]; Annexure PH-1, pages 215-230 (CB918-933).
The Beach House Upgrade and Beach House Executive plans
In June 2016 MJH published a brochure featuring the Beach House Upgrade and the Beach House Executive; and the brochure contained a floor plan for each of the Beach House Upgrade and the Executive Beach House (2016 MJH Brochure).[39] I have reproduced the Beach House Upgrade plan in Annexure C to these reasons; and the Beach House Executive plan in Annexure D to these reasons. [40]
[39] Affidavit P R Haigh 28.02.2023, [50]; Annexure PH-1, at pages 59-74 (CB762 and CB777).
[40] Affidavit P R Haigh 28.02.2023, [58]; Annexure PH-1, at pages 62 and 67 (CB765 and CB770).
In his affidavit, Mr Haigh identified what he says are the most distinctive features of the Beach House plan.[41] These are the open plan great room, dining room, and family room at the rear of the house; the “great room” which just out at the rear creating a glazed central conversation area looking out to the outdoor living area; the option “al fresco”, or covered outdoor dining area at the rear of the property; the open plan, central kitchen which provides a good family meeting place; the master suite, which Mr Haigh considers to be luxurious compared to other home designs in the market at that time; and the children’s activity area and bedrooms being separated from the master suite.
[41] Affidavit P R Haigh 28.02.2023, [39].
In his affidavit, Mr Percival described the principal variations to the Beach House plan he made to create the Beach House Executive plan. These were the removal of the great room; the moving of the dining room into the space the great room had previous occupied; the movement of the al fresco area into a space the dining room had previously occupied; the squaring off of the breakfast bar in the kitchen, making the kitchen narrower, and allowing for the increase of the size of the ensuite and the addition of a short hallway leading from the family room, and providing access to the laundry; the movement of the access to the home theatre to the hallway, and the addition of a furniture recess; the squaring off of the hallway; changing the shape of the computer nook; and giving the ensuite a T-shape.[42]
[42] Affidavit M J Percival 27.02.2023, [18].
March 2017 – Mr Potter commences employment with Hama Constructions
In February 2017 Mr Potter accepted an offer of employment with Hama as a second in charge Leading Hand. Hama was a building company of which Mr Mark Chapman was owner and controller. Mr Potter commenced his employment with Hama in March 2017.[43]
[43] Affidavit B L Potter 21.8.2023, [11].
According to Mr Potter, on the first day of his employment with Hama, Mr Chapman drove him around Hama’s construction sites. This included what Mr Potter describes as a “Hoover Group Pty Ltd designed development site”, as well as to “potential new sites”.[44]
[44] Affidavit B L Potter 21.8.2023, [12].
As I noted at the beginning of these reasons, Hoover Group is a company controlled by Mr Hoover. Mr Hoover has worked as a draftsperson since around 2004; and he incorporated Hoover Group in 2015 to expand his business as a draftsperson. Mr Hoover says that Hoover Group “provides building design and drafting services with a focus on boutique designs for complex sites”.[45]
[45] Affidavit T Hoover 27.02.2023, [5]-[8].
Mr Potter says that during “the period from March 2017” when he commenced his employment with Hama, Mr Chapman introduced Mr Hoover to Mr Potter; and, “on a number of occasions”, Mr Potter saw Mr Hoover on Hama construction sites.[46] Mr Hoover, in his second affidavit, says that he does not recall meeting Mr Potter on Hama construction sites from March 2017, although he accepts it is possible this occurred.[47] It is the case, however, that Mr Chapman had been working with Mr Hoover on construction projects since 2015.[48]
[46] Affidavit B L Potter 21.8.2023, [14].
[47] Affidavit T Hoover 20.10.2023, [8].
[48] Affidavit M G D Chapman 28.02.2023, [18].
May 2017 – Mr Potter places deposit to purchase Chisholm land
Mr Potter says that, having obtained what he considered to be a stable position with Hama, he and Ms Potter decided to follow their dreams to “search for a block of land to build our dream home for our young family and provide stability”.[49] In or about May 2017 Mr Potter and his wife paid a deposit of $500 on the Chisholm Property.[50]
[49] Affidavit B L Potter 21.8.2023, [15].
[50] Affidavit B L Potter 21.8.2023, [16].
There is in evidence screenshots of the results of a search of the Waterford County website as at 19 February 2017 that was conducted on a webpage known as the “Wayback Machine”.[51] The screenshot of the Waterford County website records statements that include the following:
[51] Exhibit G. The screen shot was admitted without objection (T247.20). I considered the admissibility of screenshots of the results of searches conducted on “The Wayback Machine” in Home Grown Brands Australia Pty Ltd v Sperling Enterprises Pty Ltd [2021] FCCA 1597, at [39]-[52].
Waterford County
Nestled amongst the gum trees in Maitland’s new suburb of Chisholm is an exciting residential community designed to exceed your expectations at every corner.
. . . .
With blocks ranging from small, easy to manage 525m²lots to homestead sites up to 1800m² you’ll have more than enough room for cars, caravan and boat: and there’ll be plenty of space to entertain while the kids or grandkids enjoy the great outdoors.
. . . .
Display Village
Waterford County’s new Display Homes Village is due to open in December 2016 and will showcase 16 new homes featuring the very latest in design, materials, fittings and fixtures.
The village will be located next to the new Waterford County Land Sales Centre on Heritage Drive, which is across the road from St Aloysius Catholic School
The six hand-picked builders include:
·     Beechwood Homes
·     Firstyle Homes
·     McDonald Jones Homes
·     Metricon Homes
·     Oracle Platinum Homes
There is also in evidence a screenshot of the results of a search of the MJH website as at 10 March 2017. One screenshot contains the heading “Waterford County Display Homes”, and there are photographs of the outside of two houses, one titled “Garden retreat”, and the other “Santorini”, and the inside of one house, together with details about each of the two houses. Under the words “Contact Details” there appear a telephone number and, under “Address”, the words “McDonald Jones Display Homes Cnr of Redtail St & Whitewater St, Waterford County, Chisholm”. It is open to infer that the names of each of the builders identified in the Waterford County website, including MJH, constituted a hyperlink which, when clicked by the user, led him or her to the webpages of each of the builders.
Mr Potter gave evidence under cross-examination about the circumstances in which he selected the Chisholm Property. Mr Potter said that he dealt with a sales representative named Kathy Dyson who was based in a sales office at 23 Heritage Drive in Chisholm in the Waterford County estate;[52] Ms Dyson assigned to Mr Potter the number associated with the block he had chosen;[53] Mr Potter had visited the site a few times before he selected the block he decided to buy;[54] Mr Potter was aware that, next to Ms Dyson’s sales office, there was the “Waterford County display home village” situated as 23 Heritage Drive, Chisholm;[55] there were “a few” new homes on display at the “Waterford County display home village”,[56] but Mr Potter could not recall the names of the builders whose homes were on display.[57] Mr Potter was provided with a copy of the Wayback Machine screen shot of the Waterford County webpage as at 19 February 2017, and was asked whether he recalled visiting that web page. Mr Potter said he could not say he did not, but he did not recall doing so.[58] Mr Potter was also taken to the screenshot from MJH’s webpage as at 10 March 2017, and on the basis of that document Mr Potter was asked whether he accepted that MJH had a display home at Waterford County. Mr Potter said it could have been the case, but he believed that there was vacant land.[59]
[52] T235.15.
[53] T236.25.
[54] T236.20.
[55] T237.40.
[56] T237.40.
[57] T238.5.
[58] T238.45.
[59] T243.25.
Conversations about designing and building house on Chisholm land
Mr Potter says that, “shortly after” he paid the deposit of $500, he informed Mr Chapman that he had just put a deposit on some land that had not yet been registered, and asked whether Mr Chapman would be interested in building a house for Mr Potter. Mr Chapman said that would not be a problem. After Mr Potter told Mr Chapman that he had never been involved in the design process of a home, Mr Chapman suggested Mr Potter see Mr Hoover, “as he can do the lot. He can design a house and submit all documents required to council etc. [T]hat is what he does”.[60] Mr Hoover says that in around August 2017 he had a telephone conversation with Mr Chapman in which Mr Chapman said that he had a “new guy” who had just moved into the area and is working with Hama, and that he wants to build a house. Mr Chapman asked whether Mr Hoover thought he could help him out with the preparation of plans. Mr Hoover said he could.[61]
[60] Affidavit B L Potter 21.8.2023, [18].
[61] Affidavit T Hoover 27.02.2023, [10].
Again according to Mr Potter, within one week of his conversation with Mr Chapman, Mr Potter had a conversation with Mr Hoover when on a Hama construction site. Mr Potter told Mr Hoover that Mr Potter had paid a $500 deposit on some land that had not yet been registered; that he had a conversation with Mr Chapman to see if he was interested in building a house for Mr Potter; and that Mr Chapman referred Mr Hoover to him, stating that Mr Hoover could do the design, and lodge all documents to council. Mr Hoover said, “That’s what I do”, and asked when the block will be registered. Mr Potter said it would be towards the end of the year. Mr Hoover suggested designing the house before the subdivision was registered.[62] Mr Hoover does not, in his first affidavit, refer to any such conversation with Mr Potter; and in his second affidavit Mr Hoover says he does not recall meeting Mr Potter on any Hama construction sites, or having had any conversation with Mr Potter, although it is possible.[63]
[62] Affidavit B L Potter 21.8.2023, [19].
[63] Affidavit T Hoover 20.10.2023, [8], [9].

Mr Chapman, in his affidavit, says that in “mid-August 2017” he had a conversation with Mr Potter in which Mr Potter said to him that he wanted to “put down roots here in Newcastle by building a home”, and he asked whether Hama would be interested in building it for Mr Potter. Mr Chapman said that “we can do it at cost”, and that Mr Potter said that he was happy to do a lot of the work himself. Mr Chapman also said that he would “recommend seeing either Tim Hoover or Ad Cad, or seeing an architect, although this could be more expensive”.[64]
[64] Affidavit M G D Chapman 28.02.2023, [17].
June and July 2017 – contracts exchange and draft DP
On about 21 June 2021 Mr Potter and his wife exchanged contracts for the purchase of the Chisholm Property. On 30 July 2021 Mr Potter sent an email to Ms Dyson requesting a copy of the draft deposited plan of the Chisholm land; and on 31 July 2021 he was provided with a copy of the draft deposited plan.[65]
[65] Affidavit B L Potter 21.8.2023, [20], [21].
The meeting of 28 August 2017
There is no dispute that on 28 August 2017 Mr Potter met with Mr Hoover. There is a dispute about what occurred in that meeting; and in particular about whether Mr Potter delivered to Mr Hoover what I identified at the beginning of these reasons as the Alleged Potter Plan.
Mr Hoover’s affidavit evidence in chief
In his first affidavit Mr Hoover says that in or around 28 August 2017 he met with Mr Potter at Mr Hoover’s house, which Mr Hoover used as an office. At the meeting Mr Potter provided him with a “draft floor plan” (this being the Alleged Potter Plan).[66] Mr Hoover has annexed to his affidavit what he says is a scanned copy of the plan Mr Potter handed to him; and states that he still holds “the original physical document on [his] file”.[67] Mr Hoover further says that the metadata for the scan shows that the document was scanned at 5:51 pm on 28 August 2017; but Mr Hoover did not annex to his first affidavit any record of the metadata. Mr Hoover says he does not remember “exactly what” Mr Potter said when he gave Mr Hoover the Alleged Potter Plan, but Mr Hoover’s “understanding was that he wanted [Mr Hoover] to use it as a basis for the floorplan for his house”.
[66] Affidavit T Hoover 27.02.2023, [12(a)]; Annexure TH-1 (CB229).
[67] Affidavit T Hoover 27.02.2023, [12(a)]; Annexure TH-1 (CB229).
Mr Hoover further says that Mr Potter told Mr Hoover that he wanted the hallway of the Chisholm House to be straight, rather than kinked, and that Mr Potter wanted access down the western side for a future shed. Mr Hoover told Mr Potter that he would give him a quote to prepare plans for the Chisholm House using the Alleged Potter Plan as the basis for the drawings. Mr Hoover asked Mr Potter provide him with any other relevant documents he had of the Chisholm Property to help Mr Hoover prepare a quote, including a site survey of the property. Mr Hoover also gave the following evidence:[68]
It was very unusual for me to be provided with a draft floorplan by a client. Usually I work on creating a custom design for sites that are subject to restrictions - for example, sites that are flood affected, in bushfire prone areas or heritage conservation areas. Normally, at the initial meeting, I sit down with clients, discuss their brief and any restrictions applying to the site and work fundamental ideas and sketches alongside the client. Although working from a client’s draft plan was not my preferred method of working, I pressed on because I wanted to help out, as requested by Mark.
[68] Affidavit T Hoover 27.02.2023, [13].
Mr Potter’s affidavit evidence in chief
According to Mr Potter “[o]n or about August 2017” he telephoned Mr Hoover “to make an appointment to follow up our previous conversation”; Mr Hoover scheduled an appointment for 28 August 2017 at Mr Hoover’s home office, and requested Mr Potter email to Mr Hoover information on the Chisholm Property before the meeting.[69] At 4:09 pm on 28 August 2017 an email was sent from Mr Potter’s inbox (Mr Potter says his wife sent the email) attaching an email Ms Dyson sent to Mr Potter on 12 May 2017 attaching files identified as:[70]
9931_WCTY_Stage_T_NewRelease__Map_A3_Feb_HR.pdf
LOT 2721.pdf
LOT 2722.pdf
Image000.mpg
[69] Affidavit B L Potter 21.8.2023, [25].
[70] Affidavit B L Potter 21.8.2023, [25]; Annexure 1 (CB1087).
At 4:13 pm on 28 August 2017 an email was sent from Mr Potter’s email box attaching an email Ms Dyson had sent to Mr Potter on 31 July 2017 attaching the “draft DP plan” she had received “last week”.[71] Ms Dyson had sent the email to Mr Potter in response to an email he had sent to Ms Dyson at 2:55 pm on 30 July 2017 in which he said:[72]
It’s been a while. Hope your [sic] well. Just thought I would check in and see if those plans for our lot have been passed on to you yet.
[71] Affidavit B L Potter 21.8.2023, [25]; Annexure 1 (CB1092).
[72] Affidavit B L Potter 21.8.2023, [25]; Annexure 1 (CB1093).
After he sent the emails, Mr and Ms Potter and their two children attended Mr Hoover’s home; and Mr Potter and his wife had a conversation with Mr Hoover.[73]
(a)Mr Hoover said he had been a designer and developer for many years; in his experience he needed to look at the size of the block of the land to create a new design to suit the block of land meeting the estate’s covenants, and “consult with you until the application is approved by council”.
(b)Mr Potter said he and his wife wanted an original, unique, one-off design for the unique lot to suit his young family and the larger block size, and didn’t want a project looking home.
(c)Mr Hoover said that he had designed a lot of houses, and was experienced in creating original one off designs; he had also done and was experienced in house variation plan variations; he had done many plan variations for project home builders, including McDonald Jones Homes; and his company, Hoover Group, was experienced in the whole process from creating a new house plan to putting the application together for council and getting the approval.
(d)While looking a lot 2722 of the deposited plan, Mr Hoover said that that block has an irregular fan shape, and “we would need to look into the type of designs to suit this and particularly to give you side access”; and that one of the options was “to step the house out to suit the fan shaped angled boundary”.
(e)After Mr Hoover made a number of other suggestions, Mr Potter said that he and his wife “would like to have a 4 bedroom home with a central hallway with ideally bedrooms up the front and open plan living out the back with a large functional oversized kitchen area and oversized garage”. Mr Potter’s wife said that she “would like a design that is a one-of-a-kind dream home that suits a young family”.
[73] Affidavit B L Potter 21.8.2023, [27]-[32].
In his affidavit Mr Potter says that no plans were sketched, drafted, or provided by anyone during the meeting. Mr Potter also says that Mr Hoover did not provide any fee proposal, and Mr Potter did not engage Mr Hoover to do anything.[74]
[74] Affidavit B L Potter 21.8.2023, [33], [34].
Mr Hoover’s affidavit in reply
In his second affidavit, in which he responded to Mr Potter’s affidavit, Mr Hoover says as follows:
(a)Mr Hoover recalls that only Mr Potter attended; he does not recall Mr Potter’s wife or his children attending.[75]
(b)Mr Potter did not say that he wanted an original, unique, one-off design for the unique lot to suit his young family and the larger block size, and not wanting a project looking home.[76]
(c)Mr Hoover did not say he had also done and was experienced in house plan variations; he had done many plan variations for project home builders, including McDonald Jones Homes.[77]
(d)Mr Hoover did not say that the Chisholm Property has an irregular fan shape which he would need to look into the type of designs to suit this and particularly to give side access; or that one of the options is to step the house out to suit the fan shaped angled boundary.[78]
[75] Affidavit T Hoover 20.10.2023, [10].
[76] Affidavit T Hoover 20.10.2023, [12].
[77] Affidavit T Hoover 20.10.2023, [13].
[78] Affidavit T Hoover 20.10.2023, [15].
Mr Hoover annexed to his second affidavit a screen shot of a “Documents Property” box next to which is a copy of the Alleged Potter Plan (Alleged Potter Plan metadata). It records information which includes the following:[79]
[79] Affidavit T Hoover 20.10.2023, [17]; Annexure TH-2, page 8 (CB371).
File:               Floor Plan Layout old
. . .
Created          28/08/2017 5:51:49 PM
Modified:       28/08/2017 5:51:49 PM
. . . .
Advanced
PDF Producer: Mac OS X 10.10.5 Quartz PDF Context
PDF Version:   1.3 (Acrobat 4.x)
Location:        C:\Users\ottawah\Desktop\
File Size         48.45 KB (49,609 Bytes)
Page Size:       8.26 x 11.68 in  Number of Pages:        1
Tagged PDF:    No  Fast Web View: No
The Alleged Potter Plan metadata represents that the document to which it relates was located at “C:\Users\ottawah\Desktop\” at the time the screenshot of the “Documents Property” box was taken. Mr Hoover gave the following evidence about this part of the “Documents Property” box:[80]
[80] T174.5-T174.45.
So that file is titled Floorplan Layout Old?‑‑‑Yes.
And then that has got “created date”?‑‑‑Yes.
“28 August 2017”?‑‑‑Yes.
And the time of 5.51 and 49 seconds pm?‑‑‑Yes.
Now, you have a MAC operating system; is that correct?‑‑‑Yes.
And it was a PDF scanned?‑‑‑Yes.
And the location you saved it as C:\User\ottawahdesktop?‑‑‑Yes.
Okay. So ottawah, is that a name that you trade as, or ‑ ‑ ‑?‑‑‑No, it’s probably just the name that comes up with the scanner or something like that. That’s – I don’t know.
Okay. So o-t-t-a-w-a-h is a scanner name that you come up with?‑‑‑I said it could be, but ‑ ‑ ‑
All right. Are you able to explain how or – I mean, you’re familiar with Adobe, are you not?‑‑‑Yes. Yes.
Okay. Have you had dealings with a solicitor from ..... Harrison Ottaway?‑‑‑During the process, yes.
So that screenshot is not off your computer, is it? It’s off Mr Ottaway’s computer?‑‑‑I don’t know.
Well, did you provide that? I mean, how was that photo taken? I mean, it’s in your affidavit?‑‑‑Yes. I don’t know. Sorry.
So you’ve given this to the lawyers, but you don’t know how that was taken?‑‑‑Yes. It was either myself or Harrison Ottaway. Same thing. We know when the document was originally scanned though, so what’s the ‑ ‑ ‑
Okay. So the document – you saved that as “floorplan layout old”?‑‑‑Yes.
You’re sure of that?‑‑‑Yes.
Another relevant aspect of the Alleged Potter Plan metadata is the name Mr Hoover gave the document to which it relates, namely, “Floor Plan Layout Old”. Mr Hoover’s inclusion of “old” in the name he assigned to the Alleged Potter Plan would be inapt if the document had been given to Mr Hoover at around the time Alleged Potter Plan metadata represents the document was created. Mr Hoover gave the following evidence about why he included the word “old”:
Now, in your affidavit, at at least paragraph 12(e), you make reference to the filename “floor plan layout old”?‑‑‑Yes. Correct.
12(e)?‑‑‑Second affidavit?
First affidavit?‑‑‑First.
Why did you call it “old” if that document was handed to you by Mr Potter, there and then?‑‑‑Because there was a replacement document given to me after the fact.
Paragraph 12 – 12(e). Sorry.
The draft – in 12(e), you refer to a “draft Potter floor plan”?‑‑‑Yes.
Do you recall labelling that draft floor plan Floor Plan Layout Old?‑‑‑I may have, yes.
Why did you call it “old” when he just handed it to you?‑‑‑I may not have called it “old” initially. I may have renamed it for that particular purpose, that it became an old version.
Okay. Do you know when you renamed that?‑‑‑No.
In neither of his two affidavits does Mr Hoover say that, after scanning the Alleged Potter Plan and having given it a name, he renamed the Alleged Potter Plan to “Floor Plan Layout Old”. Further, Mr Hoover did not in the evidence he gave under cross-examination, and he was not asked in re-examination to identify, the name he had originally given to the Alleged Potter Plan; or the “replacement document” he says caused him to rename the Alleged Potter Plan; or why Mr Hoover would have needed to change the name of the Alleged Potter Plan. I am therefore not prepared to find that, on its creation, Mr Hoover assigned to the Alleged Potter Plan a name other than the name the Alleged Potter Plan metadata represents was assigned to it, namely, “Floor Plan Layout old”.
Accounts given in the 11 November, 22 February, and 23 February emails
I have set out at the beginning of these reasons the accounts Mr Hoover, through his lawyer, gave in the 11 November, 22 February, and 23 February emails. There are three matters to note. First, the 11 November and the 22 February emails attach different plans, namely the Actual Potter Plan and the Alleged Potter Plan respectively. The 22 February email, however, does not explain why the plan the 22 February email asserts Mr Potter gave to Mr Hoover on 28 August 2017 is different from the plan the 11 November email asserts Mr Potter gave to Mr Hoover at the same meeting. Further, in neither of his two affidavits does Mr Hoover address the fact that the 11 November email asserts Mr Potter gave to Mr Hoover the Actual Potter Plan yet, in his affidavits Mr Hoover deposes that Mr Potter gave Mr Hoover a different plan, namely the Alleged Potter Plan. It was only during the course of his cross-examination that Mr Hoover provided an explanation.
In oral address counsel for MJH submitted it was through error that the Actual Potter Plan, rather than the Alleged Potter Plan, was attached to Mr Hoover’s lawyer letter of 11 November 2022.[81] In its written submissions, MJH submits that the 11 November email was sent “before Mr Hoover had retrieved all the relevant files relating to the Chisholm Plan from his archive”.[82] MJH relies on the following evidence Mr Hoover gave under cross-examination (emphasis added):[83]
[81] T297.35: “Well, I think, as I said, your Honour, I would submit that when your Honour looks at the rest of that chain of correspondence that is now before your Honour, your Honour will be able to comfortably infer that the document that was provided was – that original floor-plan layout was provided in error before Mr Hoover – it was the first response to our letter of demand. And when they got – obtained – gave proper instructions and took out his entire file some years – this is many years after 2017 . . .”.
[82] Applicant’s Closing Submissions, [98].
[83] T211.1-T211.35.
And there’s, like, “number 1 – floor plan layout.pdf”?‑‑‑Yes.
Now, I suggest, if you turn over the page, that’s the letter. So the first – well, so the second page is the letter dated 11 November 2021?‑‑‑Yes.
And then you go to the last page?‑‑‑Yes.
There appears to be a diagram or a plan that appears to be attached?‑‑‑Correct.
And was that the diagram that you gave to your solicitor to attach and forward it to K&L Gates in response to that email?‑‑‑Yes ..... yes. It was one of the first ones. Yes.
So in response to the letter to see the floor plan was – that was what you referred to as the hand‑drawn floor plan?‑‑‑They were both hand‑drawn. This one was supplied initially, before the job was pulled out of archiving and everything was ..... correct.
So you’re saying there was another letter that was sent attaching other plan?‑‑‑No. I’m saying – I’m saying more files were definitely sent, correct, and they’re all in the email chain supplied.
No. So what I’m saying to you is that that attachment – do you agree that’s the – the attachment that your solicitor referred to is the floor plan layout part of that email?‑‑‑..... saying that’s one of the layout plans we sent. Yes.
Okay. So are you saying, in that email, there were additional attachments?‑‑‑Maybe not on that specific email.
Okay. Because what you’re saying is . . . that this was the first plan that you sent?‑‑‑..... and as I said, until the job was basically pulled out of archiving and everything ..... the previous floor plan was an old floor plan and this was the working floor plan, until the job was fully pulled apart. Correct.
Do you see what (c) says? I will read it again to you:
On or about August 2017, our client met with Mr Hama’s employee Bob Potter and Bob’s wife, Nerida … he was provided with a hand‑drawn sketch (floor plan) … that the homeowner had prepared. We enclose a copy of the floor plan layout.
?‑‑‑Yes, and as I said, that’s what was in the file prior to the file being pulled out .....
Although not particularly clear, Mr Hoover, by this evidence, appears to intend to convey that the Actual Potter Plan constituted the working floor plan; and other documents, including the Alleged Potter Plan, had been archived, but these were subsequently “pulled out of archiving”. That implies that at the time the 11 November email was sent, some but not all of the documents Mr Hoover held in relation to the work he undertook for Mr and Ms Potter, and in particular, the Alleged Potter Plan, were archived. That is implausible, given that, as will appear shortly, Mr Hoover completed the plans by early 2018, and the Actual Potter Plan was created on 14 September 2017, some 17 days after Mr Hoover scanned the Alleged Potter Plan. If Mr Hoover held documents in archives, it is reasonable to expect he would have kept all documents in archive. Even if it be accepted, however, that Mr Hoover had archived the Alleged Potter Plan, but not the Actual Potter Plan, this does not explain why Mr Hoover would not have searched the entire archived material he held in relation to the work Hoover Group performed for Mr and Ms Potter. The letter to which the 11 November email responded had made serious allegations of copyright infringement; and it is reasonable to expect that Mr Hoover would have gone through all material to which he had access to respond to the allegations of copyright infringement, and that he would have instructed his lawyer accordingly.
There is another matter to note about Mr Hoover’s evidence given under cross-examination; and that relates to his evidence that the Actual Potter Plan was “the working floor plan”. That does not accord with the evidence. As will be shown later, Mr Potter prepared the Actual Potter Plan to identify changes to the draft concept plan Mr Hoover sent to Mr and Ms Potter on 13 September 2017. The subsequent correspondence between Mr Hoover and Mr Bishop, and the Chisholm Plan that was issued on 29 September 2017 shows that the floor plan that formed part of the concept plans was the working floor plan, not the Actual Potter Plan.
The second matter to note about the accounts Mr Hoover, through his lawyer, gave in the 11 November, 22 February, and 23 February emails is that in neither the 11 November email, nor in 22 February email is it asserted that at the meeting in which Mr Hoover says Mr Potter handed Mr Hoover a plan, Mr Potter said, or that Mr Hoover understood Mr Potter to have said, that Mr Potter wanted Mr Hoover to prepare plans on the basis of the “hand-drawn sketch” or the “Floor Plan Layout old.pdf”. Given that those emails were responding to serious allegations of copyright infringement, it is reasonable to expect that Mr Hoover to have instructed his lawyer to state that, not only did Mr and Ms Potter provide to Mr Hoover plans, but they also instructed him, or her had understood them to instruct him, that he design a house on the basis of the plans they provided to Mr Hoover. Mr Hoover, however, only did this through his lawyer in the 23 February email, but only in response to a question Mr Ottaway apparently asked Mr Hoover’s lawyer, where it is asserted that Mr Potter provided the plan to Mr Hoover “during a brief drop in to his office stating: “Here’s what we want to use, can you provide a quote? Everything else has been emailed to you”. Even so, in his first affidavit, Mr Hoover does not say Mr Potter provided the plan “during a brief drop in to his office” at which time Mr Potter stated “Here’s what we want to use, can you provide a quote? Everything else has been emailed to you”. Mr Hoover instead deposes that Mr Potter provided to him the Alleged Potter Plan in a meeting and, moreover, says he could not recall the words Mr Potter used when he gave him the Alleged Potter Plan.

A third matter to note is that in the 23 February email Mr Hoover, through his lawyer, stated he “vehemently denies Mr Potter’s assertion of events”. Mr Potter’s assertion of events which the 23 February email asserted Mr Hoover “vehemently denies” was the assertion KLG communicated to Mr Hoover’s lawyer sent by the email on 15 February 2022. The assertion was that “the Floor Plan Layout enclosed under cover of” the 11 November email “reflected Mr Potter’s suggested variations to an initial draft concept plan prepared by your client [Mr Hoover]”. [84] Mr Potter’s assertion, however, is not disputed in this proceeding, and is in any case substantiated by the contemporaneous documentary evidence to which I will refer.
[84] Exhibit F.
Mr Hoover’s evidence given in cross-examination
Mr Hoover was cross-examined about the statement made in his solicitor’s email to KLG sent on 11 November 2021 that, at the meeting of 17 August 2017, Mr Potter handed to Mr Hoover a “hand-drawn sketch”. Mr Hoover was taken to the Alleged Potter Plan, not to the Actual Potter Plan that was in fact attached to the email; and it was put to Mr Hoover that the Alleged Potter Plan is not a hand-drawn sketch, but a computer generated aided plan. Mr Hoover said it could be both.[85]
[85] T151.45.
Mr Hoover was asked a number of non-leading question about what occurred at the meeting, in response to which he gave the following evidence:[86]
MR MILANOVIC: When you say that allegedly Mr Potter handed you that plan – or did he email it to you?‑‑‑He did. He handed it to me.
Physically handed it to you?‑‑‑Correct.
Did you ask Mr Potter where he got that plan from?‑‑‑In hindsight, I should have. No, I didn’t.
No, I’m talking at that time, as it transpired, did you ask him ‑ ‑ ‑?‑‑‑ ..... something I’ve prepared and gave it to me.
So Bob said he prepared that plan?‑‑‑Correct.
You saw his hand-drawn plan?‑‑‑It’s what I thought. It was hand-drawn. Exactly.
[86] T164.30.
A little later Mr Hoover gave the following evidence:[87]
[87] T171.15.
Okay. What else did Bob say?‑‑‑Most of those things are noted in the affidavits.
No, I’m not asking you to read the affidavit. I’m saying what you recall from conversation that was had between yourself and Bob?‑‑‑Basically this is the plan I would like to use for the basis of my house design.
And then he left?‑‑‑Yes.
So was any discussion had about how many bedrooms it would have and the layout of the house, anything like that?‑‑‑No, not initially. I think that’s what I was given to work off the base of the – the house design. That’s what was then sent on to Roy to provide a quote from.
So did Bob tell you that he wanted a hallway to go straight through the house from the front to the back?‑‑‑Yes, he did.
When did he say that – in the first meeting? No, I'm not asking you to look at the affidavit, I'm saying from your recollection, did he say that at the first meeting or not?‑‑‑Yes, he would have. Yes.
He wanted an open plan?‑‑‑He wanted what he gave me on the plan.
He said I want it as the plan, did he?‑‑‑As I said, use this for the basis of the design.
Well, did you ask him what he wanted changed on that basis of design?‑‑‑No, not at that point of time.
So what was the intention, to ‑ ‑ ‑?‑‑‑He still hadn't even provided a quote for the job. We were just given something that then we forwarded on to our contract to provide advice.
Okay?‑‑‑So to me it wouldn’t have been worthwhile asking too many questions at that point
Mr Hoover was taken to the email he sent to Mr Bishop on 29 August 2017 (to which I refer below) in which he stated that he attached a “Rough Floor Plan Layout from the owners”.[88] It was put to Mr Hoover that he did not in that email describe any attachment, yet, in another email he did describe it;[89] and, ultimately, it was put to Mr Hoover that Mr Potter did not give the Alleged Potter Plan to Mr Hoover; Mr Hoover instead volunteered to give the Alleged Potter Plan to Mr Bishop. Mr Hoover said:[90]
No. because I thought he had done it. He had prepared it. Hence why the email to Mr Bishop says “from the owners”.
[88] Affidavit T Hoover 27.02.2023, [14]; Annexure TH-1, pages 80-83 (CB295-297).
[89] T175.10.
[90] T175.30.
Account given in Mr Potter’s email of 26 March 2022
On 26 March 2022 Mr Potter sent an email to Mr Chris Round of KLG (this being the 26 March email I identified earlier in these reasons) in which Mr Potter complained about the conduct of KLG concerning correspondence they had sent in which they alleged on behalf of MJH that Mr Potter had infringed MJH’s copyright in the Beach House plans.[91] In that email Mr Potter said as follows (emphasis in original):
In preparation for the initial meeting about the design and development of a house plan and associated work, I was asked by Hoover Group Pty Ltd to bring along ideas. As mentioned in previous correspondence I had read this was a normal part of the process on several internet sites . . . .
. . . .
A design concept for a home consists of more than a floorplan and I considered many factors prior to the meeting with Hoover Group Pty Ltd.
I have never been through a MJH ‘Beach House’ Display home and did not ‘cut and paste’ anything which is why I did not recognise any of the brochures sent by K & L Gates. A family member accompanied me and may have taken a number of things with them for discussion, criticism and review of current trends as well as convey a general ‘idea or overall feel’ of a functional home for my family. If this family member had gathered various brochures and cut them out it would have been part of their own self-directed research for ‘fact finding’, review, comparison and criticism of current trends in home design. It would have been for use as a visual tool only just as people may take a gardening book with them when discussing landscaping or garden designs. I have referenced in prior correspondence that McDonald Jones Homes did their own ‘fact finding’ trips looking at new architectural styles (most likely for inspiration, review, critique or market research). I believe researching home designs would be classed as ‘air dealing’ under section 40 - 42 of the Copyright Act 1968 and would be exempt from copyright infringement as it was for personal study only with no intention or direction for anything to be copied, reproduced and/or published commercially. As stated in prior correspondence there was an expectation that the design of the house plan would be based more on the original efforts of Hoover Group Pty Ltd and the overall concepts envisioned and discussed, rather than the copying or reproduction of MJH ‘Copyright Works’. If there was an instruction to ‘draft’ a plan the same as any ‘cut and paste’ images then the draft concept plan designed by Hoover Group Pty Ltd and emailed to us on 13 September 2017 would be almost an exact copy of the ‘cut and paste’ referred to by K & L Gates on behalf of MJH as a ‘draft plan’. It is clearly different to the image incorrectly claimed by K & L Gates or Hoover Group as a ‘draft plan’. . . .
[91] Exhibit H.
Mr Potter’s evidence given in cross-examination
The questions asked of Mr Potter during cross-examination explored the extent to which Mr Potter accessed MJH’s website, and the effect of his evidence is that Mr Potter did not access MJH’s website. A focus of counsel’s cross-examination of Mr Potter were a number of statements Mr Potter made in his email of 26 March 2022. Mr Potter was taken to a number of statements he made in that email, which counsel put to him he had omitted from his affidavit or which were inconsistent with evidence he had earlier given during the cross-examination. It is unnecessary to set out the effect of that evidence. The cross-examination on what occurred at the meeting of 28 August 2017 culminated with the following:[92]
[92] T261.45-T262.5.
The second sentence starts on the second line:
A family member accompanied me –
and just for clarification here, we’re talking about the meeting with Mr Hoover:
A family member accompanied me and may have taken a number of things with them for discussion, criticism and review of current trends as well as convey a general idea or overall feel of a functional home for my family.
Do you see those words?‑‑‑Yes.
So you go on to say:
If this family member had gathered various brochures and cut them out, it would have been part of their own self-directed research for fact-finding, review, comparison and criticism of current trends in home design. It would have been for use as a visual tool only just as people may take a gardening book with them when discussing landscaping or garden designs.
Just pausing there, Mr Potter, I put to you that that – those words suggest that somebody brought with them to the meeting with Mr Hoover some plans that may have been a cut and paste that had been gathered various brochures and cut them out. Would you accept that?‑‑‑It does say that.
Mr Potter, I put to you that you brought to the meeting with Mr Hoover a cut and paste that you had gathered various brochures and cut them out as part of your own self-directed research for fact-finding, review, comparison and that you brought it along to the meeting with Mr Hoover. What do you say in response to that, yes or no?‑‑‑ .....
The transcript records no answer to the last questions. I listened to the audio recording, and I could discern no answer to the question. Cross-examining counsel continued as follows:[93]
And I put to you, Mr Potter, that this email that you sent to Mr Round directly records what actually transpired at the meeting with Mr Hoover and is – do you accept that?‑‑‑No. So at this particular time I could not afford legal advice, so as I said, I had ..... help me put something together. I didn’t have legal advice at this particular point in time, and I was under ‑ ‑ ‑
That’s – thank you. Thank you. . . .
[93] T262.10.
The Alleged Potter Plan
I have reproduced the Alleged Potter Plan in annexure B to these reasons; and it would be convenient at this point to address a number of subjects relating to that plan.
What is the Alleged Potter Plan?
The Alleged Potter Plan contains at least four elements. The first is the depiction of a floor plan of a house showing external and internal walls. Subject to the third element I will shortly identify, the plan is not hand drawn. Second, there is handwriting outside the exterior walls with arrows pointing towards parts of the exterior walls; and there is also some handwriting that appears within the walls of the floor plan. Third, there are lines of various thickness that appear to have been hand drawn over most of the printed form of the exterior and interior walls. Fourth, there are printed figures and printed names that appear within the walls. Some of the writing is illegible, and some of the figures contained in the rooms are faded. I find, on the basis of the assertion contained in the 23 February email, that “the details on the original”, that is the copy of the Alleged Potter Plan Mr Hoover says he scanned, “were similarly faded and illegible”.
In his affidavit Mr Haigh says that the Alleged Potter Plan appears to him to be “a ‘cut and paste’ of the Beach House Upgrade Plan . . . and the Beach House Executive Plan”; and Mr Haigh annexed to his affidavit a highlighted version of the Alleged Potter Plan which, Mr Haigh says, identifies the source of each section of the plan (Haigh Highlighted Alleged Potter Plan). Mr Haigh says the highlighted portion of the Haigh Highlighted Alleged Potter Plan “is copied from the Beach House Executive Plan” (a reproduction of which is Annexure D to these reasons) and the “un-highlighted section is copied from the Beach House Upgrade Plan” (a reproduction of which Annexure C to these reasons).[94] I have included as Annexure E to these reasons a copy of the Haigh Highlighted Alleged Potter Plan.[95] Mr Haigh further says as follows:[96]
Each section of the Chisholm Plan [that is, the Alleged Potter Plan] appears to be a photocopy or low resolution scan of the plans in the 2016 Brochure. The room names, font and the depictions of furniture in the Draft Chisholm Plan are all exactly the same. Someone appears to have handwritten annotations on the plan. It also appears that someone has shifted the garage to the left, moved the position of the walk in robe connecting to the master suite, and hand drawn a robe and a new wall in the third bedroom. In my experience, these alterations were likely made to make the plan narrower, possibly to allow vehicle access at the side of the garage to the rear yard. It is also likely that the [Alleged Potter Plan] combines the Beach House Executive Plan and Beach House Upgrade Plan for the same reason – in particular, the kitchen of the Beach House Executive is narrower, allowing the plan to be reduced in width.
[94] Affidavit P R Haigh 28.02.2023, [59].
[95] Affidavit P R Haigh 28.02.2023, [59]: Annexure PH-1 page 232 (CB935).
[96] Affidavit P R Haigh 28.02.2023, [60].
It is apparent from a comparison of the Highlighted Alleged Potter Plan on the one hand, and the Beach House Upgrade and Beach House Executive plans on the other, that the Alleged Potter Plan comprises a copy of part of the Beach House Upgrade plan, and a copy of part of the Beach House Executive plan. In short, as Mr Haigh deposes, and I find, the Alleged Potter Plan comprises the combination of parts of the Beach House Upgrade and Beach House Executive plans.
The documents I have described as the Beach House Upgrade plan and the Beach House Executive plans are not architectural drawings which have been created by computer assisted design software. They are what Mr Percival has described as “brochure plans”;[97] that is they are plans that were included in MJH’s marketing brochures. The brochure plans were created by members of MJH’s marketing team using Adobe software, probably Photoshop. According to Mr Percival, whose evidence I accept, MJH’s marketing team were provided with the floor plans, and the marketing team put in “the words, the tiling, the furniture, the cars on top of it”.[98]
[97] T105.5.
[98] T105.5.
Mr Percival also gave evidence about the Alleged Potter Plan (emphasis added):[99]
[99] T107.15.
Now, if I show you – if you can turn over to page 229. Have you got that document there? Yes. Are you able to say how that was drawn, by AutoCAD or was drawn by – by what means, are you able to comment, how that was drawn? What program, sorry?‑‑‑It looks like a printout and then someone has drawn over it by hand. Or possibly ‑ ‑ ‑
There are components that are drawn by – well, by a computer – is that correct – and there’s some hand ‑ ‑ ‑?‑‑‑Correct. It looks like a ‑ ‑ ‑
Hand overlay?‑‑‑It looks like a brochure plan printed out and drawn over.
But to your knowledge, that thing that was drawn out, does that appear to be drawn by a computer and then some pen or marker on top of that?‑‑‑It appears to be a – a – one of our brochure plans which have been drawn by AutoCAD originally to produce the brochure plan.
So which brochure does this refer to?
HIS HONOUR: Well, just hold on. He hadn’t finished his answer.
MR MILANOVIC: Sorry?‑‑‑This is – appears to be the Beach House with some elements of the Beach House Executive put into it – copy and paste.
Okay. So this actual diagram, as depicted there, that diagram – you don't have a precise brochure depicting that; is that correct?‑‑‑No, it appears to be a cut and paste of two ones put together and photocopied.
Is it equally possible that it’s drawn by some person like that using some sort of program and then ‑ ‑ ‑?‑‑‑Probably not, considering it's showing all the same elements of our brochure plan. There is some elements which has been hand drawn, and can tell the lines aren't straight – not even using a ruler. Also, there's handwriting on there as well, but there are elements I can see that have been copied from a Beach House Executive and placed over top of a Beach House and photocopied.
Is it possible that somebody used Photoshop or Adobe, scanned it and then superimposed an image on top of another image?‑‑‑It's possible Photoshop, but it's still hand drawing on it.
Is it possible that AutoCAD was used as well?‑‑‑No.
Why do you say AutoCAD is not possible to be used?‑‑‑Because this is a brochure plan. Brochure plans – once they're done, it's a PDF format.
How was the Alleged Potter Plan created?
Mr Haigh does not, in his affidavit, explain what he means by “cut and paste”. Mr Percival, however, after having given evidence under cross-examination that the Alleged Potter Plan “appears to be a cut and paste of two ones put together and photocopied”,[100] did explain what he meant by “cut and paste” in answer to questions I asked:[101]
[100] T107.40.
[101] T108.20-T109.25.
HIS HONOUR: You said it looked like a cut and paste from two something?‑‑‑Two designs, yes, so ‑ ‑ ‑
Two designs. So without – because I can’t ask questions that affect what people might want to ask you, I just want to understand what you understand to convey by saying “cut and paste”. I understand “cut and paste” with text because we all do it ‑ ‑ ‑?‑‑‑Yes.
‑ ‑ ‑ but what – how does cut and paste operate in the context of this sort of drawing?‑‑‑In this kind of drawing, our salespeople would get designs from each of our homes ‑ ‑ ‑
Yes?‑‑‑ ‑ ‑ ‑ they cut a part out, stick it over the top of the plan and then photocopy it ‑ ‑ ‑
Right?‑‑‑ ‑ ‑ ‑ so when a client wants to change something on a house – they might like, for instance, from the Beach House Executive to the Beach House, they will cut out that section only, place it over the section they want to change and then they will photocopy that plan as their starting point for the client.
But is it a cut and paste from the plans as opposed cut and paste from a brochure plan, if I can use that?‑‑‑Well, this one is a brochure plan, so it has – they have started with a brochure plan to cut and paste and the bit they're pasting is also from a brochure plan. I can tell that by the walls are all blacked out.
Well ‑ ‑ ‑?‑‑‑That only comes with brochure plans.
All right. So when you say this is “cut and paste”, are you saying it’s cut and paste from other brochures or from other plans or ‑ ‑ ‑?‑‑‑From other plans and stuck on top of each other, yes.
Not from other brochure plans, from ‑ ‑ ‑?‑‑‑It’s ‑ ‑ ‑
That's where I’m a bit – I'm a little bit uncertain ‑ ‑ ‑?‑‑‑Yes. So ‑ ‑ ‑
‑ ‑ ‑ what you mean. Is it cut and paste from – I can understand it going to the marketing and marketing has access to the plans ‑ ‑ ‑?‑‑‑Yes.
‑ ‑ ‑ and it uses those plans and comes up with the brochure plan, but you said this looks like a cut and paste, so I'm not sure whether this is, like, a plan – a brochure made from cutting and pasting drawings ‑ ‑ ‑?‑‑‑Yes.
‑ ‑ ‑ or it's a cut and paste from two other brochure drawings, if you understand what I’m trying to say?‑‑‑Yes, it's actually cut and paste from two brochure plans.
All right?‑‑‑Marketing is not part of this. I’s like someone has liked ..... parts of it ‑ ‑ ‑
All right?‑‑‑ ‑ ‑ ‑ out of a brochure. They've cut or photocopied both, cut the section out they wanted, put it over the top of this plan and then photocopied it against the – as – like it's a new drawing.
All right. Thats what I wanted to understand what you were saying. Thank you?‑‑‑No worries.
On the basis of this evidence I find that the Alleged Potter Plan was created by the person who created it: (a) copying a part of the Beach House Upgrade plan or the Beach House Executive plan; (b) placing on a photocopier (or scanner) the copied part over part of the plan that had not been copied; and (c) photocopying (or scanning) the combined two parts of the plans to produce the one floor layout, being the Alleged Potter Plan. I will refer to the method by which the Alleged Potter Plan was created as the APP Method of Creation.
Counsel for Mr Potter asked Mr Percival questions directed to the Alleged Potter Plan’s not having grey shading of the part of the Beach House Upgrade plan of which MJH alleges forms part of the Alleged Potter Plan; and counsel attempted to cross-examine Mr Percival about the possibility of shading being removed by use of some technical know-how, or by use of a special program. Counsel for MJH objected, and the following exchange occurred (emphasis added):[102]
[102] T111.40-T112.25.
HIS HONOUR:   It’s outside his expertise.
MS DE STOOP:   ‑ ‑ ‑ photocopying and speculating on how a photocopier and the quality of photocopies – is just ‑ ‑ ‑
MR MILANOVIC:   Well ..... asked about photocopies. I asked about a program that can ‑ ‑ either some technical know-how in order to be able to remove that colour, or you would need some sort of special program for that
HIS HONOUR:   Well, look ..... do you know the answer? I mean, you should only answer if you know. You’re not being asked to speculate?‑‑‑Yes. I don’t know ‑ ‑ ‑
And knowledge from your experience?‑‑‑Yes. So I can see this has been photocopied many times.
I think for the ruling, this witness has given evidence that he deals regularly with marketing people, and that is a sufficient basis for him to give about that experience.
MS DE STOOP:   The court pleases.
THE WITNESS:   So this ..... was based on the furniture and the wording, and it has been photocopied many times, so it has lost its quality. So it’s not an original photocopy.
MR MILANOVIC:   Well, the question I’m asking you is is there a program, using some software, that you can actually apply to remove the green?‑‑‑Not that I’m aware of, sir.
So your belief is by multiple photocopying, that grey will disappear?‑‑‑Correct.
Are you able to do a photocopy exercise of that particular brochure – do multiple copies, copies of copies of copies, and see how many copies are needed to have that disappear?‑‑‑Probably the printer copiers back then would be a different printer to what it is now, so it’s not a fair comparison.

Mr Potter, by his counsel, submits that I should find that Mr Potter did not give to Mr Hoover the Alleged Potter Plan, but that it was a document Mr Hoover had prepared without reference to Mr Potter. Counsel relies on the following matters:
(a)Mr Hoover did not keep any file notes or sign notes that reflects the instructions Mr Potter gave to Mr Hoover.[174]
(b)The Alleged Potter Plan plainly appears to be a computer assisted plan, yet Mr Hoover insisted that it was a hand drawn plan.[175]
(c)Mr Percival gave evidence that it was common for a marketing team to cut and paste.[176]
(d)Mr Hoover did not make any enquiries as to the origins of the Alleged Potter Plan.[177]
(e)Having signed a settlement deed with MJH, Mr Hoover was “locked into a particular version of events that he probably could not deviate from”.[178]
(f)Mr Hoover was unable to explain why he included “old” in “Floor Plan Layout old.pdf”.[179] If, as MJH alleges, Mr Potter gave Mr Hoover the Alleged Potter Plan at their first meeting, “[t]hey’re not old plans”.[180] That in turn suggests the Alleged Potter Plan was some other plan Mr Hoover already held.
Determination
[174] T321.10.
[175] T321.30.
[176] T322.5.
[177] T323.25.
[178] T325.15.
[179] T325.25.
[180] T325.45.
What is the question to be determined?
MJH’s submissions are largely directed to Mr Potter’s evidence of the meeting of 28 August 2017; and they appear to assume that the rejection of Mr Potter’s evidence implies the acceptance of Mr Hoover’s evidence. This approach, however, would be incorrect for two reasons. First, MJH bears the burden of proving that Mr Potter created, or authorized the creation of the Alleged Potter Plan; that he handed the Alleged Potter Plan to Mr Hoover during their meeting of 28 August 2017; and that, when doing so, Mr Potter expressly or impliedly instructed or otherwise authorised Mr Hoover to design a house, and prepare plans for the construction of such house, on the basis of the Alleged Potter Plan. The evidence on which MJH principally relies to discharge its burden of proof is that of Mr Hoover, and the objective similarity of the Alleged Potter Plan, on the one hand, and the Beach House Upgrade and Beach House Executive plans, on the other. The first question, therefore, is not whether Mr Potter’s evidence should be rejected, but whether Mr Hoover’s evidence should be accepted.
Second, as Gibbs J (as his Honour then was) observed in Steinberg v Federal Commissioner of Taxation:[181]
The fact that a witness is disbelieved does not prove the opposite of what he asserted: Scott Fell v. Lloyd [(1911) 13 CLR 230, at p. 241]; Hobbs v. Tinling (C.T.) & Co. Ltd. [[1929] 2 KB 1, at p. 21]. It has sometimes been said that where the story of a witness is disbelieved, the result is simply that there is no evidence on the subject (Jack v. Smail [(1906) 2 CLR 684, at p. 698]; Malzy v. Eichholz [[1916] 2 KB 308, at p. 321]; Ex parte Bear; Re Jones [(1945) 46 SR (NSW) 126, at p.128] . . .
[181] Steinberg v Federal Commissioner of Taxation (1975) 134 CLR 640, at page 694. I owe my knowledge of this authority, and of Broken Hill Proprietary Company Ltd v Waugh (1988) 14 NSWLR 360 to which I will shortly refer, to the judgment of Nicholas J in Shah v Hagemrad [2018] FCA 91, at [95]-[99]. See also Kuligowski v Metrobus [2004] HCA 34, at [60]: “In general, disbelief in a witness’s evidence does not establish the contrary. Similarly, disbelief in the case presented by the moving party does not necessarily permit the court to conclude that the positive case of the opposing party is correct.” (footnotes omitted).
Thus, if I were not to accept Mr Potter’s evidence that he did not provide the Alleged Potter Plan to Mr Hoover, that by itself could not support a finding that Mr Potter did so. As Gibbs J further observed in Steinberg, however, it is not universally the case that disbelief of a witness cannot prove the opposite of that which the witness has asserted: [182]
There may be circumstances in which an inference can be drawn from the fact that the witness has told a false story, for example, that the truth would be harmful to him; and it is no doubt for this reason that false statements by an accused person may sometimes be regarded as corroboration of other evidence given in a criminal case: Eade v. The King [34 CLR 154, at p. 15]; Tripodi v. The Queen [(1961) 104 CLR 1]. Moreover, if the truth must lie between two alternative states of fact, disbelief in evidence that one of the state of facts exists may support the existence of the alternative state of facts: Lee v. Russell [[1961] WAR 103, at p. 109].
[182] Steinberg v Federal Commissioner of Taxation (1975) 134 CLR 640, at page 694.
One circumstance, therefore, in which disbelief in what a witness asserts may support an inference of the existence of the opposite of that which the witness asserts is where the evidence relates to one of two alternative facts or states of affairs. But the drawing of a positive inference of the existence of the opposite of what the witness asserts depends on it being found that the witness has lied. That point was made by Clarke JA in Broken Hill Proprietary Company Ltd v Waugh (emphasis added):[183]
In the first place the positive inference is dependent upon disbelief of the existence of one or two alternative states of fact. Hence it is not applicable unless the judge disbelieves the evidence which is given. That is, that he finds that the witness is lying. Mere inability to accept the evidence because, for instance, the judge doubted the accuracy of the witness’s recall or thought that he may have been confused could not, in my opinion, provide the foundation for a positive finding that the contrary was true.
[183] Broken Hill Proprietary Company Ltd v Waugh (1988) 14 NSWLR 360, at page 366 (Kirby P and Hope J agreeing). It should always be remembered that there “is a difference between the rejection of a person’s evidence and a finding that he or she deliberately lied. . . . [A]s a matter of logic and common sense, something more than mere rejection of a person’s evidence is necessary before there can be a positive finding that he or she deliberately lied in the giving of that evidence”: Smith v New South Wales Bar Association [1992] HCA 36; (1992) 176 CLR 256, at page 268.
Assuming, therefore, that Mr Potter’s not giving the Alleged Potter Plan to Mr Hoover is an alternative fact to Mr Potter’s giving the Alleged Potter Plan to Mr Hoover, my not accepting Mr Potter’s evidence that he did not give the Alleged Potter Plan to Mr Hoover could support an inference that he did give the Alleged Potter Plan to Mr Hoover only if I were to find that Mr Potter has lied. I am not satisfied that Mr Potter has lied in his evidence.
Should Mr Hoover’s evidence be accepted?
There are substantial reasons for doubting, and therefore for not accepting, Mr Hoover’s evidence of what occurred at the meeting of 28 August 2017. I have already addressed some of these; but I will substantially repeat here what I have found to avoid having to refer to the earlier parts of my reasons.
First, there is no evidence, independent of Mr Hoover’s evidence that Mr Potter gave him the Alleged Potter Plan, that is reasonably capable of showing that Mr Potter (or some other person whom he authorised): (a) possessed both the Beach House Upgrade plan and the Beach House Executive plan, and copied a part of the Beach House Upgrade plan or a part of the Beach House Executive plan; (b) placed on a photocopier (or scanner) the copied part of the plan over part of the plan that had not been copied; (c) photocopied (or scanned) the combined two parts of the plans to produce the one floor layout, being the original copied Alleged Potter Plan; and (d), made successive copies of the Alleged Potter Plan to the point where the copy it is alleged Mr Potter gave to Mr Hoover, being the Alleged Potter Plan, lost its quality, and had become faded and illegible.
Second, there is the 11 November email, which constitutes Mr Hoover’s first response to MJH’s claim that Mr Hoover infringed MJH’s copyright: it attached the Actual Potter Plan, and asserted that Mr Potter gave to Mr Hoover that plan. Mr Hoover did not assert Mr Potter gave him the Alleged Potter Plan. The 11 November email is inconsistent with the evidence Mr Hoover gives in his affidavits, and the assertions Mr Hoover later made through his lawyers in the 22 February email. It is, however, consistent with the evidence Mr Potter has given, namely, that he prepared the Actual Potter Plan on the basis of the Concept Plans Mr Hoover provided to Mr and Ms Potter on 13 September 2017; and that the Actual Potter Plan was the only plan Mr Potter provided to Mr Hoover. Further, the 11 November email does not assert that Mr or Ms Potter expressly or impliedly instructed, or otherwise authorised, Mr Hoover to prepare plans on the basis of any plan Mr and Ms Potter provided to him.
I have found implausible the evidence Mr Hoover gave under cross-examination by which he sought to explain the reason why the 11 November email attached the Actual Potter Plan rather than the Alleged Potter Plan. (Mr Hoover gave no explanation in his affidavits.) In those circumstances, it would be open to find that Mr Hoover did not in the 11 November email assert that Mr and Ms Potter provided him with the Alleged Potter Plan because Mr and Ms Potter did no such thing.
Third, there is the 22 February email. That is the first occasion on which Mr Hoover asserted that Mr Potter had provided the Alleged Potter Plan. Even here, however, Mr Hoover did not, through his lawyer, assert that Mr and Ms Potter instructed him to prepare plans on the basis of the Alleged Potter Plan. Mr Hoover first made that assertion (through his lawyers) in the 23 February email, and only in response to an inquiry Mr Ottaway made of Mr Hoover’s lawyer about how the Alleged Potter Plan was provided to Mr Hoover. Further, the 22 February email stated Mr Hoover “vehemently denies Mr Potter’s assertion of events”; but the assertion of Mr Potter that the 22 February email denied is an assertion that Mr Potter provided to Mr Hoover the Actual Potter Plan which he prepared on the basis of concept plans Mr Hoover had provided to Mr Potter. Mr Potter’s assertion is not disputed in this proceeding, and is in any case substantiated by the contemporaneous documentary evidence to which I have referred.
Fourth, Mr Hoover has given conflicting or varying accounts relating to the Alleged Potter Plan. In the 11 November email Mr Hoover did not refer to Mr Potter providing him with the Alleged Potter Plan, but correctly asserted Mr and Ms Potter provided him with the Actual Potter Plan; and, moreover, Mr Hoover did not assert that Mr and Ms Potter instructed Mr Hoover to use the plan in any way, or that he understood them to have so instructed him. In the 22 February email Mr Hoover asserted Mr and Ms Potter provided him with the Alleged Potter Plan, but he did not say Mr and Ms Potter instructed him to use it. In the 23 February email Mr Hoover asserted that Mr Potter physically handed the Alleged Potter Plan during a brief drop in his office, stating: “Here’s what we want to use, can you provide a quote? Everything else has been emailed to you”. Yet in his first affidavit Mr Hoover deposes to Mr Potter handing him the Alleged Potter Plan in a meeting, not during a brief drop off. And in evidence given under cross-examination, Mr Hoover said that when Mr Potter handed the Alleged Potter Plan to him, Mr Potter said the Alleged Potter Plan was “something I prepared”, and that “this is the plan I would like to use for the basis of my house design”. In his first affidavit, however, Mr Hoover said he does not remember “exactly what” Mr Potter said when he gave Mr Hoover the Alleged Potter Plan, but Mr Hoover’s “understanding was that he wanted [Mr Hoover] to use it as a basis for the floorplan for his house”. Given these varying accounts, little credit can be given to the account Mr Hoover has given in his affidavits, and in evidence given under cross-examination of the meeting of 28 August 2017, or the circumstances in which the Alleged Potter Plan came into his possession.
Fifth, MJH relies on the screenshot of the Alleged Potter Plan metadata; but MJH’s reliance fails to take into account two matters. The first is that the Alleged Potter Plan metadata is a screenshot of the Alleged Potter Plan that was saved on “C:\Users\ottawah\Desktop\”; it is not a copy of the metadata of the Alleged Potter Plan as it was saved on Mr Hoover’s computer. Mr Hoover says that he scanned the Alleged Potter Plan, which means that the reference in the Alleged Potter Plan metadata to the date and time of “creation” of the document is a reference to the date and time the document was scanned. There is no evidence, however, that, having scanned the Alleged Potter Plan at “28/08/2017 5:51:49 PM”, Mr Hoover saved the document in a file or folder on his computer that relates to any files or folders he created in relation to the work he performed for Mr and Ms Potter; or, if he did, the date on which he did so. In particular, there is no evidence Mr Hoover saved the scanned copy of the Alleged Potter Plan to a folder named “02-Received Plans & Markup Done Alongside the clients”, as asserted in the 22 February email, or that any such folder in fact exists, or existed. Thus, there is no evidence which it may reasonably be supposed Mr Hoover could have provided, if such evidence existed, which would have shown that he maintained a file to which he saved documents he created in connection with the work he performed for Mr and Ms Potter, and that he had saved to that file any plan the Mr and Ms Potter had provided to him on 28 August 2017.
The second matter MJH’s reliance on the Alleged Potter Plan metadata MJH fails to take into account is the inclusion of the word “old” in the name Mr Hoover assigned to the scanned copy of the Alleged Potter Plan. Mr Hoover has given no explanation in either of his two affidavits for including the word “old” in the name he assigned to the scanned copy of the Alleged Potter Plan; and I have not accepted the evidence Mr Hoover gave under cross-examination that the name “Floor Plan Layout old” may not have been the name Mr Hoover originally assigned to the Alleged Potter Plan when he scanned it, but may instead be a new name he assigned to that document after he scanned it. In those circumstances, an inference that is available to be drawn from the fact that Mr Hoover assigned a name to the Alleged Potter Plan that included “old”, on the very late afternoon on which Mr Hoover says Mr Potter gave him, is that the document was indeed an “old” document Mr Hoover already held, and not a scanned copy of a document Mr Potter had just provided to him. That the document could have been old in this sense is reinforced by the evidence Mr Percival gave under cross-examination that the original photocopy copy of the Alleged Potter Plan “has been photocopied many times, so it has lost its quality. So it’s not an original photocopy”, and by the assertions made in the 23 February email (which I have found as a fact) that the “details on the original” of the copy of the Alleged Potter Plan Mr Hoover says he scanned “were similarly faded and illegible”.
Sixth, whichever version of his meeting with Mr Potter on 28 August 2017 Mr Hoover has given, it finds no support which, if true, it is reasonable to expect would be found in the contemporaneous written communications between Mr Hoover, on the one hand, and Mr or Ms Potter, on the other.
(a)In the email Mr Hoover sent to Mr and Ms Potter on 13 September 2017 attaching the Concept Plans, Mr Hoover identified the Concept Plans as “our Concept Plans” without qualification, and without reference to the Alleged Potter Plan. Further, although the Concept Plans contained a number of changes to the Alleged Potter Plan (those differences being the matters covered by Mr Hoover’s handwriting contained in the Hoover Marked Up Alleged Potter Plan, and the further changes Mr Bishop made after Mr Hoover provided him with the Hoover Marked Up Alleged Potter Plan), Mr Hoover did not bring to Mr and Ms Potter’s attention the changes that had been made, something it is reasonable to expect Mr Hoover would have done had Mr and Ms Potter in fact instructed Mr Hoover to prepare a design and plans on the basis of the Alleged Potter Plan.
(b)In the Concept Plans Mr Hoover sent to Mr and Ms Potter on 13 September 2017, Mr Hoover stated that “this drawing & design thereon are copyright and must not be copied, reproduced or constructed without the written approval of the Hoover Group”. That notification is consistent with Mr Hoover having prepared, and having wished to represent to the world that he did prepare, by his own efforts, the Concept Plans, rather than having prepared them on the basis of some other plan, including a plan Mr Potter may have given him.
As against these reasons for not accepting Mr Hoover’s evidence, however, there stand the words Mr Hoover included in the email he sent to Mr Bishop at 9.34 am on 29 August 2017 attaching or embodying a number of documents including the Alleged Potter Plan which Mr Hoover described as “Rough Floor Plan Layout from the owners”. By itself, Mr Hoover’s having uttered those words in an email he sent on the morning after the meeting of 28 August 2017 is very powerful evidence of the fact asserted, namely, that the Alleged Potter Plan was “from the owners”, that is, Mr and Ms Potter had provided the Alleged Potter Plan to Mr Hoover. Powerful as that evidence is, however, its probative value in favour of a finding that Mr and Ms Potter did provide to Mr Hoover the Alleged Potter Plan is not immune from being discounted by evidence and considerations that raise doubts about the evidence Mr Hoover has given in this proceeding that Mr Potter provided to him the Alleged Potter Plan, and evidence which point to Mr Potter not having given the Alleged Potter Plan to Mr Hoover.
The matters I have found give rise to substantial doubts about Mr Hoover’s evidence also raise doubts about the reliability of Mr Hoover’s description of the Alleged Potter Plan in his email to Mr Bishop on 29 August 2017 as the “Rough Floor Plan Layout from the owners”. If, as Mr Hoover in effect asserted in the email he sent to Mr Bishop at 9.34 am on 29 August 2017, the Alleged Potter Plan had been provided to him by Mr and Ms Potter, it is reasonable to expect that:
(a)Mr Hoover would not have instructed his lawyers to send the 11 November email in which Mr Hoover asserted Mr and Ms Potter gave him the Actual Potter Plan, not the Alleged Potter Plan; or, if that assertion was made through error, Mr Hoover would not have waited until being cross-examined before he offered an explanation and, moreover, having been given the opportunity to give an explanation, he would have given a plausible explanation (something I have found he did not do);
(b)Mr Hoover would not have included “old” in the name he attached to the scanned copy of the Alleged Potter Plan, or, if there was an explanation why he included that word in the name, he would not have waited until being asked in cross-examination to explain why he included the word “old”; and, moreover, having been given the opportunity to give an explanation, he would have given a plausible explanation (something I have found he did not do);
(c)Mr Hoover would have given a consistent account when called to do so of the circumstances in which Mr and Ms Potter gave him the Alleged Potter Plan (something I have found he has not done); and
(d)Mr Hoover would have in some way acknowledged to Mr and Ms Potter that the Concept Plans were based on, or contained variations to the Alleged Potter Plan, rather than have asserted full copyright in the Concept Plans; or at least, Mr Hoover would have given an explanation why, having based the Concept Plans on the Alleged Potter Plan, Mr Hoover nevertheless asserted full copyright in the Concept Plans.

My task is to assess and weigh the probative value of all of the evidence considered together and, having done that, consider whether, on the balance of probabilities, I am satisfied that Mr Potter provided to Mr Hoover the Alleged Potter Plan. To be so satisfied it is necessary that I experience “an actual persuasion of the existence of the matter to be proved”, namely that Mr Potter gave to Mr Hoover the Alleged Potter Plan; or, as it has been differently expressed, that I hold “an appropriate degree of confidence in its existence”.[184] That follows from what Dixon J said in Briginshaw v Briginshaw (emphasis added):[185]
The truth is that, when the law requires the proof of any fact, the tribunal must feel an actual persuasion of its occurrence or existence before it can be found. It cannot be found as a result of a mere mechanical comparison of probabilities independently of any belief in its reality. No doubt an opinion that a state of facts exists may be held according to indefinite gradations of certainty; and this has led to attempts to define exactly the certainty required by the law for various purposes. Fortunately, however, at common law no third statement of persuasion was definitely developed. Except upon criminal issues to be proved by the prosecution, it is enough that the affirmative of an allegation is made out to the reasonable satisfaction of the tribunal. But reasonable satisfaction is not a state of mind that is attained or established independently of the nature and consequence of the fact or facts to be proved. The seriousness of an allegation made, the inherent unlikelihood of an occurrence of a given description, or the gravity of the consequences flowing from a particular finding are considerations which must affect the answer to the question whether the issue has been proved to the reasonable satisfaction of the tribunal. In such matters “reasonable satisfaction” should not be produced by inexact proofs, indefinite testimony, or indirect inferences. Everyone must feel that, when, for instance, the issue is on which of two dates an admitted occurrence took place, a satisfactory conclusion may be reached on materials of a kind that would not satisfy any sound and prudent judgment if the question was whether some act had been done involving grave moral delinquency.
[184] Williams v The Minister Aboriginal Land Rights Act 1983 and New South Wales [2000] NSWCA 255, at [61] (Spigelman CJ and Sheller JA agreeing).
[185] Briginshaw v Briginshaw (1938) 60 CLR 336, at pages 361-362, at [61].
The reasons I have identified for having substantial doubts for accepting Mr Hoover’s evidence prevent me from feeling an actual persuasion that Mr Potter gave to Mr Hoover the Alleged Potter Plan, or that Mr Potter had created the Alleged Potter Plan or had authorised another person to do so, even though there is a near contemporaneous assertion by Mr Hoover that Mr and Ms Potter did provide to Mr Hoover the Alleged Potter Plan. Given that near contemporaneous assertion, however, I am also unable to feel an actual persuasion that Mr Potter did not provide the Alleged Potter Plan to Mr Hoover. In those circumstances, it is open to me to proceed, and I consider it is appropriate for me to so proceed, to determine this part of the case by applying the principles Lord Brandon stated in Rhesa Shipping Co SA v Edmunds:[186]
[T]he judge is not bound always to make a finding one way or the other with regard to the facts averred by the parties. He has open to him the third alternative of saying that the party on whom the burden of proof lies in relation to any averment made by him has failed to discharge that burden. No judge likes to decide cases on burden of proof if he can legitimately avoid having to do so. There are cases, however, in which, owing to the unsatisfactory state of the evidence or otherwise, deciding on the burden of proof is the only just course for him to take.
[186] Rhesa Shipping Co SA v Edmunds [1985] 1 WLR 948, at pages 955-962.
I am not satisfied Mr Potter gave to Mr Hoover the Alleged Potter Plan at the meeting of 28 August 2017; and I am not satisfied Mr Potter did not give the Alleged Potter Plan to Mr Hoover at that meeting. Given that MJH bears the burden of proving Mr Potter did give to Mr Hoover the Alleged Potter Plan, as it alleges in the amended statement of claim, my not feeling an actual persuasion that Mr Potter provided the Alleged Potter Plan to Mr Hoover means that MJH has failed to prove a material fact in its cause of action against Mr Potter based on the infringement of its copyright.
DID MR POTTER AUTHORISE MR HOOVER TO PREPARE PLANS ACCORDING TO THE ALLEGED POTTER PLAN?
I have already found that the Alleged Potter Plan is a copy of a part of each of the Beach House Upgrade and Beach House Executive plans. Two questions then arise. The first is whether the Chisholm Plan is a substantial reproduction of the Alleged Potter Plan. Assuming it is, the second question is whether Mr Potter authorised Mr Hoover to reproduce the Alleged Potter Plan.
Counsel for Mr Potter identified a number of differences between the Alleged Potter Plan and the Chisholm Plan;[187] and between the Chisholm Plan, and the plan of the Chisholm Home that was actually submitted to Council.[188] Counsel referred to, for example, to differences in walk-in robes; in the garage size and shape, in roof pitch, the width, and the absence of an activity room.
[187] T339.25-340.15.
[188] T340.15-T342.25; the plan is at Affidavit T Hoover 20.10.2023, [51] Annexure TH-1, page 223 (CB438).
This approach ignores the evidence which reveals how the Chisolm Plan was created; it was based on the Alleged Potter Plan. Mr Hoover initiated his work on the design of the Chisholm House by creating the Hoover Marked up Alleged Potter Plan, and sending that document to Mr Bishop who, on the basis of it, prepared the Concept Plans. It is a case of subjective copying of the Alleged Potter Plan which comprised of two parts of the Beach House Upgrade and the Beach House Executive plans. Although there are some variations, both the Chisholm Plan and in the plans based on the Chisholm Plan that were submitted to Council, adopted the essential features and substance of the Alleged Potter Plan.
I therefore find that the Chisholm Plan and the plans based on the Chisholm plan that were submitted to the Council are each a substantial reproduction of each part of the Beach House Upgrade and the Beach House Executive plans that comprised the Alleged Potter Plan.
I have concluded I am not satisfied that Mr Potter provided to Mr Hoover the Alleged Potter Plan; and I have also found that Mr Hoover did not meet Mr Potter on 4 September 2017 and, for that reason, I am not satisfied Mr Potter created or authorised another or others to create the Alleged Potter Plan. I have also found that Mr Hoover’s handwriting on the Hoover Marked up Alleged Potter Plan does not reflect instructions Mr Potter gave to Mr Hoover at a meeting on 4 September 2017, but reflects Mr Hoover’s initial ideas for the design of a new dwelling on the Chisholm Property which he recorded to provide to Mr Bishop to prepare concept plans for the proposed new house. From these findings it necessarily follows there is no evidence that Mr Potter knew that Mr Hoover or Mr Bishop used the Alleged Potter Plan to prepare the Chisholm Plan, or that the Chisholm Plan and the plans submitted to the Council that had been prepared on the basis of the Chisholm Plan, had adopted and embedded in them the Alleged Potter Plan. I am therefore not satisfied that Mr Potter authorised Mr Hoover or Mr Bishop to do any act comprised in the copyright that subsists in the Beach House Upgrade and Beach House Executive plans that were used to create the Alleged Potter Plan.
CONCLUSION AND DISPOSITION
MJH has not proved that Mr Potter infringed the copyright of which MJH is the owner that subsists in the Beach House Upgrade and Beach House Executive plans, or in the Beach House plan or any other plans based on the Beach House plan.
I therefore propose to order that the application be dismissed. There is no reason why the usual order for costs should not be made. I therefore also propose to order that MJH pay Mr Potter’s costs, but reserve to the parties liberty to apply within 35 days after I pronounce my orders to vary or discharge the order for costs I propose to make.

I certify that the preceding one hundred and ninety-six (196) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis.
Associate:
Dated: 4 June 2025
Annexure A – Actual Potter Plan.
Annexure B – Alleged Potter Plan.
Annexure C – Beach House Upgrade Floor Plan.
Annexure D – Beach House Executive Floor Plan.

Annexure E – Haigh Highlighted Alleged Potter Plan.
Annexure F – Hoover Marked up Alleged Potter Plan.
Annexure G – Revised Concept Plans Sent 14 September 2017.
Annexure H – Chisholm House Plan.

File number(s):	SYG 923 of 2022
Judgment of:	JUDGE MANOUSARIDIS
Date of judgment:	4 June 2025
Catchwords:	INTELLECTUAL PROPERTY – Copyright – whether the applicant is the owner of copyright in floor plans contained in brochures the applicant published – whether the respondent provided to a draftsperson a plan (copy plan) that combined parts of two separate floor plans contained in the brochures and by doing so authorised the draftsperson to design and prepare plans on the basis of the copy plan and therefore infringed the applicant’s copyright in the floor plans – not satisfied respondent provided the copy plan to the draftsperson or was otherwise aware the draftsperson used the copy plan to design plans for the constructions of a house – claim for infringement of copyright dismissed.
Legislation:	Conveyancing Act 1919 (NSW) s 12 Copyright Act 1968 (Cth) ss 10, 14, 31, 32, 35, 36, 115, 196, 197
Cases cited:	Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd (1970) 20 FLR 481 Briginshaw v Briginshaw (1938) 60 CLR 336 Broken Hill Proprietary Company Ltd v Waugh (1988) 14 NSWLR 360 Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 Coles v Dormer & Ors [2015] QSC 224 Eagle Homes Pty Ltd v Austect Homes Pty Ltd [1999] FCA 138 Equuscorp Pty Ltd v Haxton; Equuscorp Pty Ltd v Bassat; Equuscorp Pty Ltd v Cunningham's Warehouse Sales Pty Ltd [2012] HCA 7 Francis Day & Hunter Ltd v Bron [1963] Ch 587 Global Brand Marketing Inc v Cube Footwear Pty Ltd [2005] FCA 479 Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217 IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14 Kuligowski v Metrobus [2004] HCA 34 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 Long Leys Co Pty Ltd v Silkdale Pty Ltd (1991) 5 BPR 11,512 Real Estate Took Box Pty Ltd v Campaigntrack Pty Ltd [2023] HCA 38 Rhesa Shipping Co SA v Edmunds [1985] 1 WLR 948 Shah v Hagemrad [2018] FCA 91 Smith v New South Wales Bar Association [1992] HCA 36; (1992) 176 CLR 256 Steinberg v Federal Commissioner of Taxation (1975) 134 CLR 640 Steinberg v Federal Commissioner of Taxation (1975) 134 CLR 640 SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 Taypar Pty Ltd v Santic (1989) 21 FCR 485 University of New South Wales v Moorhouse (9175) 133 CLR 1 Williams v The Minister Aboriginal Land Rights Act 1983 and New South Wales [2000] NSWCA 255
Division:	General
Number of paragraphs:	196
Date of hearing:	22, 23, 24 and 26 April 2024
Place:	Sydney
Counsel for the Applicant:	Ms R De Stoop
Solicitor for the Applicant:	K & L Gates
Counsel for the Respondent:	Mr S Milanovic
Solicitor for the Respondent:	Prestige Solicitors & Associates

SYG 923 of 2022
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:	MCDONALD JONES HOMES PTY LTD ACN 003 687 232 Applicant
AND:	ROBERT POTTER Respondent

ORDER MADE BY:	JUDGE MANOUSARIDIS
DATE OF ORDER:	4 JUNE 2025

DATE	ASSERTION	EVIDENCE
28/08/2017	The original layout was supplied to our client by Bob Potter, before our client commenced any works or concepts for the design. No information was provided by the Potters about where the original layout came from or what it was inspired by.	“Floor Plan Layout.old.pdf” in folder “02-Received Plans & Markup Done Alongside the clients”