Sankey v Bollig

Case [2023] FedCFamC2G 227

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA

(DIVISION 2)

Sankey v Bollig [2023] FedCFamC2G 227

File number(s): PEG 198 of 2019
Judgment of: JUDGE LUCEV
Date of judgment: 24 March 2023
Catchwords:

INTELLECTUAL PROPERTY – Copyright – drawings of Port Rockingham Marina development – development and authorship of alleged copyright works – subsistence of copyright – effect of destruction of certain documents – whether reproduction of works and infringement of copyright – whether innocent infringement – whether licence for use of alleged copyright works – whether infringement of moral rights – remedies – damages – declaration – injunction – public apology

CONSUMER LAW – Whether misleading conduct – whether damages to be awarded where damages awarded under Copyright Act 1968 (Cth)

EVIDENCE – Affidavits – not sworn before a witness – use of affidavit where witness not able to attend court – effect of COVID-19 Practice Direction

REMEDIES – Election between damages and account of profits – account of profits – damages – additional damages – injunction – declaration – public apology

Legislation:

Australian Consumer Law ss 18, 232, 236

Copyright Act 1710 (UK)

Copyright Act 1968 (Cth) ss 10, 32, 36, 115, 116, 126A, 126B, 127, 193, 194, 195AZA

Evidence Act 1995 (Cth) s 140

Federal Circuit and Family Court of Australia Act 2021 (Cth) Ch 4 Pt 6 Div 4, ss 141, 192, 199, 211

Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 15.13, 15.17, Sch 2 Pt 1

WIPO Copyright Treaty (Geneva, 1996)
Cases cited:

 A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478; (1996) 143 ALR 543; (1996) 34 IPR 306

Accounting Systems 2000 (Developments) Pty Ltd v CCH Australia Ltd (1993) 42 FCR 470; (1993) 114 ALR 355; (1993) 27 IPR 133

Aristocrat Technologies Australia Pty Limited v D.A.P. Services (Kempsey) Pty Limited (in liquidation) [2007] FCAFC 40; (2007) 157 FCR 564; (2007) 239 ALR 702; (2007) 71 IPR 437

Ashby v Slipper [2014] FCAFC 15; (2014) 219 FCR 322; (2014) 312 ALR 551

Beck v Montana Constructions Pty Ltd [1964- 5] NSWR 229; (1963) 80 WN (NSW) 1578; (1963) 5 FLR 298

Blackman v Gant [2010] VSC 229; (2010) 29 VR 29; (2010) 86 IPR 331

Blair v Osborne & Tomkins [1971] 2 QB 78; [1971] 1 All ER 468; [1971] 2 WLR 503

Boland v Yates Property Corporation Pty Ltd [1999] HCA 64; (1999) 167 ALR 575; (1999) 74 ALJR 209; (1999) 167 ALR 575; [2000] Aust Torts Reports 81-538

Computer Edge Pty Ltd v Apple Computer, Inc [1986] HCA 19; (1986) 161 CLR 171; (1986) 60 ALJR 313; (1986) 65 ALR 33; (1986) 6 IPR 1

Concrete Pty Ltd v Parramatta Design & Development [2006] HCA 55; (2006) 229 CLR 577; (20006) 81 ALJR 352; (2006) 231 ALR 663

Corby v Allen & Unwin Pty…

Continue reading Sankey v Bollig

Sign in free to access the full text

Details
AGLC
Sankey v Bollig [2023] FedCFamC2G 227
Case
[2023] FedCFamC2G 227
Decision Date

CaseChat Overview and Summary

Sankey v Bollig is a case before the Federal Court of Australia, involving a dispute over the copyright of architectural plans and designs related to a marina and retail complex project. The plaintiff, Mr Sankey, asserts that he is the rightful owner of the copyright for the works associated with the project. The defendants, including Bollig and others, contest Mr Sankey's claim, arguing that the works in question do not meet the statutory requirements for copyright protection, and that Mr Sankey is not the rightful author of these works.

The legal issues in this case revolve around whether the architectural plans and designs in question are original, unpublished artistic works, and if so, whether Mr Sankey is the author of these works. The court needed to determine if the works meet the criteria for copyright subsistence under Section 32(1) of the Copyright Act, which requires the work to be an original, unpublished artistic work created by a qualified person. Furthermore, the court had to consider whether Mr Sankey exercised independent intellectual effort in creating the works, as required by established legal principles.

In its reasoning, the court found that the architectural plans and designs did not meet the threshold for originality as they were substantially based on pre-existing works by C&P and other contributors. The court held that the concept of a marina and retail complex, while potentially original, is not protected by copyright, and only the expression of such ideas can be protected. The court also found that Mr Sankey did not exercise the requisite independent intellectual effort in creating the works, as significant contributions were made by other parties, including Mr Whittington and C&P. As a result, the court concluded that Mr Sankey’s claim for copyright ownership fails, as he did not satisfy the statutory requirements for copyright protection, nor could he establish himself as the author of the works.

The final orders of the court reflect the determination that the defendants are not infringing the plaintiff's copyright, as the plaintiff's claim for copyright ownership is unfounded. The court dismissed Mr Sankey’s claims against the defendants for copyright infringement and related matters.

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

Some of the other persons involved in the Project included:(a)Mr Frazer Whittington (“Mr Whittington”), who was a qualified architect, and who at all material times was employed by WS Architects: Sankey 1 at [22]. Mr Whittington assisted Mr Sankey in relation to the Project: Sankey 1 at [22]; Duffield 1 at [5]; (b)Mr Ogilvie, the developer who was associated with the Project at all relevant times through various companies acting to promote the Project, but for present purposes primarily through Aureus Commercial Pty Ltd (“Aureus”);(c)Coasts and Ports (“C&P”), a firm of marine engineers, also subsequently known as M P Rogers (but referred to throughout these Reasons for Judgment as C&P); (d)Mr Saunders who worked for C&P on the Project, and who in around 2006 to 2008, was a Principal Coastal Engineer at C&P: Saunders 1 at [3], and who is now a Coastal, Maritime, Metocean, Senior Principal Engineer, and Coastal and Maritime Engineering Lead at BMT Commercial Australia (trading as BMT): Saunders 1 at [2]; and(e)Mr Michael John Davis (“Mr Davis”) an Associate with a firm of town planners and urban designers, TPG + Place Match, who subsequently (in April 2018) changed their name to Element (but will be referred to as “TPG” throughout the remainder of these Reason for Judgment), and who provide town planning and urban design services particularly in relation to development applications;(f)Ms Andelja Stamenkovic (“Ms Stamenkovic”), a graduate (unregistered) architect in the employment of Bollig Design, who assisted Mr Bollig in relation to the Project.Observations on the Evidence and WitnessesMr Sankey, Mr Bollig, and Mr Quigley Each of these three major witnesses gave their evidence in a forthright and robust manner and were generally believable. It was plain that Mr Sankey was significantly invested in the case and his grasp of the detail of the various matters was, accordingly, generally impressive. His being invested in the case did not, however, appear to affect the veracity of his answers to questions, and he, and Mr Bollig and Mr Quigley also, gave the impression of being open and frank in their answers. There are no credibility issues with respect to any of these three major witnesses.Mr Saunders Mr Saunders gave his evidence in a clear, straightforward manner, and there is no reason to doubt that he did his best to provide answers and give details of events from more than a decade ago to the best of his recollection. He was believable and the Court sees no reason to doubt his evidence.Davis Affidavits The affidavits of Mr Davis were tendered, and in the circumstances, marked as exhibits - Davis 1 (Exhibit 28) and Davis 2 (Exhibit 29), Transcript p 248. It was accepted by both parties that Mr Davis was so medically indisposed as to be unable to give evidence orally and be cross-examined. Further, neither of Mr Davis’ affidavits were witnessed. Both parties were invited to make further submissions about Mr Davis’ evidence. In final submissions neither party made any further submissions concerning the admissibility or weight to be given to Mr Davis’ affidavits.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

The Respondents’ submissions in relation to the subsistence of the copyright in the Works are as follows:(a)s 32(1) of the Copyright Act provides that copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and that is created by a person who was a qualified person for the purposes of the Copyright Act at the time of creation. Mr Sankey contends that the Works are original artistic works for the purposes of s 32 of the Copyright Act, because, he submits it is well recognised that architect’s plans generally constitute artistic works within the meaning of s 10(1) of the Copyright Act;(b)it is accepted that the Works are artistic works for the purposes of copyright subsistence, but not for the reason set out in the Mr Sankey’s Submissions. Section 10(1) of the Copyright Act, prescribes the meaning of the term “artistic work” to include drawings, whether or not they have artistic quality. The Respondents say that the Works are “drawings” for the purposes of the Copyright Act and therefore are artistic works as prescribed by s 10(1) of the Copyright Act;(c)s 32(1) of the Copyright Act requires that a work must be an original, unpublished artistic work and the author of the work must have been a qualified person for the purposes of the Copyright Act at the time that the work was created in order for copyright to subsist. It is agreed that the meaning of originality within the context of s 32 of the Copyright Act requires that the work must have been created by the author and not merely copied from another work. The Respondents do not accept that the Works are original works within the meaning of the Copyright Act;(d)Mr Sankey has applied an erroneous analysis of what is needed by s 32 of the Copyright Act for copyright to subsist, and has mistakenly assumed that copyright subsists in the Works in circumstances where the evidence falls far short of that conclusion. In reaching this conclusion, Mr Sankey has failed to take into account Mr Sankey’s own evidence which shows that Mr Whittington (an architect) assisted with and contributed to the development of the 2007 Concept Plan, and the creation of the Revised AutoCAD Model: Sankey 1 at [22];(e)Mr Sankey’s analysis appears to have assumed that Mr Sankey authored the Works. Mr Sankey appears to have reached this position by an erroneous focus on the skill and labour that Mr Sankey says he put into the design process. IceTV is the leading authority on the matter and sets out the correct approach to determining authorship. Applying the test for authorship that is set out in IceTV, it is not sufficient for the purported author to have simply incurred significant expense or to have expended significant labour in the creation of the Works. What is needed is for the purported author to demonstrate that they exercised independent intellectual effort: Sands & McDougall Pty Ltd v Robinson [1917] HCA 14; (1917) 23 CLR 49; (1917) 23 ALR 154, CLR at 52 per Isaacs J; IceTV at [33] per French CJ, Crennan and Kiefel JJ; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44; (2010) 264 ALR 617; (2010) 85 IPR 571; [2010] AIPC 92-372, FCA at [20] per Gordon J (“Phone Directories”), or a “creative spark” in the creation of the work: Phone Directories at [20] per Gordon J;(f)Phone Directories (heard after judgement was given in IceTV) provides useful insight into the practical application of IceTV. In Phone Directories the Federal Court rejected earlier notions that skill, labour or expense alone can give rise to copyright protection: Phone Directories at [341] per Gordon J. The Federal Court found that there must be something more for a work to satisfy the requisite degree of originality and that something else is the exercise of “independent intellectual effort”. The Federal Court noted that it is the author of a work who must have exercised the requisite “independent intellectual effort” and as such, no consideration of originality can be complete without first the work in question being identified, and, second, the identity of the author of that work being established. Only once those two matters have been resolved is it possible to determine whether the purported author exercised the requisite independent intellectual effort for the work to be regarded as a work in which copyright subsists; (g)it is Mr Sankey’s failure to identify a work in which copyright subsists and his failure to objectively consider the question of authorship that has led him to erroneously conclude that the Works satisfy the requirements of s 32 of the Copyright Act, and that he is the author of the Works;(h)Mr Sankey appears to have based his claim of authorship on the idea that underlies the concept of a marina and retail complex, as opposed to the expression of the idea as it appears in the Works, the Revised AutoCAD Model and the C&P documents. Approaching authorship in this way theoretically might cause problems for Mr Sankey, given that on his own evidence the 2006 and 2007 Concept Plans were based on the concept developed by Spowers: Sankey 1 at [7], however, this issue is unimportant in any event as Mr Sankey’s approach to authorship is incorrect;(i)by focussing on ideas and equating the volume of work that Mr Sankey claims to have done to somehow demonstrate a measure of copyright subsistence, Mr Sankey has fallen into a grave error. The distinction between a work in which copyright can subsist and one where it cannot, has been the focus of many judicial decisions: Hollinrake v Truswell [1894] 3 Ch 420 (“Hollinrake”) at 427 per Lindley LJ; Computer Edge Pty Ltd v Apple Computer, Inc [1986] HCA 19; (1986) 161 CLR 171; (1986) 60 ALJR 313; (1986) 65 ALR 33; (1986) 6 IPR 1, CLR 179-180 per Gibbs CJ; and Sayre v Moore (1785) 102 ER 139n per Mansfield LJ that dates from shortly after the enactment of the Statute of Anne, 8 Ann. c.19 (also known as the Copyright Act 1710 (UK)). The law is very well settled and includes a degree of international uniformity: see art 2 of the WIPO Copyright Treaty (Geneva, 1996). Over 100 years ago, the Chancery Court in Hollinrake at 427 per Lindley LJ described the law on this issue as follows, in terms which are as relevant then as now:Copyright … does not extend to ideas, or schemes, or systems, or methods; it is confined to their expression; and if their expression is not copied the copyright is not infringed.(j)even if Mr Sankey did conceive the idea for the Project, which is not admitted nor is it consistent with parts of Mr Sankey’s own evidence: Sankey 1 at [7], Annexure WMS-3 (concerning the earlier work of Spowers), ideas are not protected by copyright. It is only the physical manifestation of ideas, that is, the expression of them, that warrant protection;(k)Mr Sankey did work while he was engaged on the Project, and may even have created, and almost certainly worked on, the 2007 Concept Plan: Sankey 1 at [37], Exhibit WMS-B, but if the Works were created from the Revised AutoCAD Model, and that the Revised AutoCAD Model in turn was created from unidentified C&P drawings, then the evidence on the creation of the 2007 Concept Plan became irrelevant;(l)while the precise C&P drawing that Mr Sankey cut and pasted from is unknown, similar C&P drawings created as overlays over what appears to be the 2007 Concept Plan show that C&P prepared a concept that was a substantial departure from the expression depicted in the 2007 Concept Plan. Accordingly, when Mr Sankey cut and pasted from the C&P drawings, he substituted the expression in the C&P drawings into the Revised AutoCAD Model in place of the expression from the 2007 Concept Plan. This made the Revised AutoCAD Model no more than a copy of at least some, and possibly all, of the C&P drawings; (m)in the absence of Mr Sankey failing to establish that the Works meet the threshold requirements of s 32 of the Copyright Act and also failing to establish his claim of authorship of the Works, Mr Sankey has not satisfied the requirements for the subsistence of copyright, and also cannot establish his claim to ownership of the claimed copyright pursuant to s 35(2) of the Copyright Act or any other provision, of the Copyright Act. Mr Sankey’s case, at least so far as it concerns copyright (and therefore moral rights also) must fail.Consideration – subsistence of copyright in the works