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
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
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:
Continue reading McDonald Jones Homes Pty Ltd v Potter
Sign in free to access the full text
Details
- AGLC
- McDonald Jones Homes Pty Ltd v Potter [2025] FedCFamC2G 841
- Case
- [2025] FedCFamC2G 841
- Decision Date
CaseChat Overview and Summary
In the case of McDonald Jones Homes Pty Ltd v Potter, the plaintiff sought to establish whether the defendant had infringed upon their copyright in certain floor plans that were published in brochures. The plaintiff, a home builder, alleged that the defendant had provided a draftsperson with a combined plan of two distinct floor plans from the brochures, thereby authorising the draftsperson to design and prepare plans for the construction of a house, which constituted an infringement of the plaintiff's copyright. The dispute came before the court, which was tasked with determining whether the defendant had indeed provided the draftsperson with the combined plan and whether this act constituted an infringement of copyright.
The central legal issue before the court was whether the defendant had supplied a combined plan to the draftsperson, thus authorising the use of the combined plan for designing house plans, which would infringe upon the plaintiff's copyright. The court had to consider the evidence presented regarding the communication between the defendant, the draftsperson, and the content of the plans to ascertain whether the defendant had any knowledge or involvement in the creation of the combined plan. Additionally, the court needed to assess whether the defendant's actions constituted an infringement of copyright by authorising the use of the combined plan for designing house plans.
The court meticulously examined the evidence presented, including the testimonies of the parties involved and the draftsperson. The court found that the defendant had not provided the draftsperson with a combined plan nor was there any evidence that the defendant was aware that the draftsperson had used the combined plan to design house plans. The court held that the plaintiff had not satisfied the necessary elements to establish copyright infringement, as there was no proof of the defendant's involvement in the creation or use of the combined plan. Consequently, the court dismissed the plaintiff's claim for infringement of copyright.
The court's final order was that the defendant was not liable for the infringement of copyright in the floor plans, and the plaintiff's claim was dismissed. The court found no evidence to support the plaintiff's allegations that the defendant had provided the draftsperson with a combined plan or had any knowledge of the draftsperson using such a plan for designing house plans.
The central legal issue before the court was whether the defendant had supplied a combined plan to the draftsperson, thus authorising the use of the combined plan for designing house plans, which would infringe upon the plaintiff's copyright. The court had to consider the evidence presented regarding the communication between the defendant, the draftsperson, and the content of the plans to ascertain whether the defendant had any knowledge or involvement in the creation of the combined plan. Additionally, the court needed to assess whether the defendant's actions constituted an infringement of copyright by authorising the use of the combined plan for designing house plans.
The court meticulously examined the evidence presented, including the testimonies of the parties involved and the draftsperson. The court found that the defendant had not provided the draftsperson with a combined plan nor was there any evidence that the defendant was aware that the draftsperson had used the combined plan to design house plans. The court held that the plaintiff had not satisfied the necessary elements to establish copyright infringement, as there was no proof of the defendant's involvement in the creation or use of the combined plan. Consequently, the court dismissed the plaintiff's claim for infringement of copyright.
The court's final order was that the defendant was not liable for the infringement of copyright in the floor plans, and the plaintiff's claim was dismissed. The court found no evidence to support the plaintiff's allegations that the defendant had provided the draftsperson with a combined plan or had any knowledge of the draftsperson using such a plan for designing house plans.
Orders
Orders of the court
Full text does not contain this section.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
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.pdfLOT 2721.pdfLOT 2722.pdfImage000.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].
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
Full text does not contain this section.