Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) (No 3) - [2013] FCA 410

FEDERAL COURT OF AUSTRALIA
Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) (No 3) [2013] FCA 410

Citation: Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) (No 3) [2013] FCA 410

Parties: TAMAWOOD LIMITED (ACN 010 954 499) v HABITARE DEVELOPMENTS PTY LTD (ADMINISTRATORS APPOINTED) (RECEIVERS AND MANAGERS APPOINTED) (ACN 122 935 497), BLOOMER CONSTRUCTIONS (QLD) PTY LTD (ACN 071 344 100), PETER FREDERICK O'MARA, DAVID GAVIN JOHNSON, WAYNE NORMAN BLOOMER, HABITARE PTY LTD (ACN 098 209 495), EIGHT MARCH PTY LTD (ACN 099 315 787) (AS TRUSTEE OF THE EIGHT MARCH DISCRETIONARY TRUST), FIRST PRIORITY DEVELOPMENTS PTY LTD (ACN 098 329 465) (AS TRUSTEE OF THE FIRST PRIORITY DISCRETIONARY TRUST) and MONDO ARCHITECTS PTY LTD (ACN 085 992 990)

File number: NSD 2504 of 2007

Judge: COLLIER J

Date of judgment: 7 May 2013

Catchwords:
COPYRIGHT – copyright in plans and drawings of project homes – plans for project homes granted development approval – whether licence granted to developer to use approved plans once relationship broke down with copyright owner – whether licence granted to developer to use plans for purposes of development approval – whether licence bare or contractual – scope of licence – whether revocable at will – no fee charged for design of plans on understanding that copyright owner would be builder of project homes – whether infringement of copyright – whether reproduction of plans in whole or substantial part – whether sufficient degree of objective similarity and causal connection between two sets of development plans – quality rather than quantity of similarity – nature of quality which makes something a “substantial part” of copyright work in suit – expert evidence regarding similarity – whether causal connection between plans such that copying has occurred – tendency of project home plans to exhibit similar design features – purpose to make plans “substantially in accordance” with plans previously given development approval by city council – whether inference of copying – whether directors authorised or procured infringement of companies – question of control implicit in authorisation – whether directors had knowledge of or authorised critical decisions regarding infringement taken by employees – whether companies acting pursuant to common design – concurrence in acts causing damage rather than separate acts which by conjoined effect cause damage – purposes of profitable development of project homes and producing architectural plans meeting needs of client – whether innocent infringement of copyright by builder – whether reasonable grounds for suspecting plans infringed copyright – whether put on inquiry – whether damages for flagrant infringement

TRADE PRACTICES – Trade Practices Act 1974 (Cth) – whether misleading or deceptive conduct – infringement of copyright insufficient – representation of ownership in housing estates rather than ownership in housing estate plans – whether knowingly concerned in misrepresentation – whether loss or damage suffered

Legislation: Copyright Act 1968 (Cth) Pt III Div 1, ss 13(1), 15, 21(3), 35(6), 36, 37, 115, 116, 196
Corporations Act 2001 (Cth) s 588G
Trade Practices Act 1974 (Cth) ss 52, 53, 75B, 82
Conveyancing Act 1919 (NSW) s 66G
Integrated Planning Act 1997 (Qld)

Cases cited: Acohs Pty Ltd v RA Bashford Consulting Pty Ltd (1997) 144 ALR 528 cited
Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 cited
Australasian Performing Right Association v Tolbush Pty Limited [1986] 2 Qd R 146 cited
Australasian Performing Right Association Limited v Jain (1990) 26 FCR 53 cited
Autodesk Inc. v. Dyason (1992) 173 CLR 330 cited
Banks v Transport Regulation Board (Vic) (1968) 119 CLR 222 cited
Barrett Property Group v Metricon Homes (2007) 74 IPR 52; [2007] FCA 1509 cited
Beck v Montana Constructions Pty Ltd [1964-5] NSWR 229 cited
Blair v Osborne & Tomkins [1971] 2 QB 78 cited
Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46 cited
Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd (2006) 229 CLR 577 cited
Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 cited
Cowell v Rosehill Racecourse Co Ltd (1937) 56 CLR 605 cited
Data Access Corporation v Powerflex Services (1999) 202 CLR 1 cited
Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 cited
Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763; [2008] FCA 746 cited
Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 61 FCR 479 cited
Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 cited
Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd (2008) 77 IPR 523; [2008] FCA 912 cited
Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 cited
Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd [1990] 1 Qd R 231 cited
Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (No 2) [2008] FCA 1493 cited
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 cited
Louis Vuitton Malletier SA v Toea Pty Ltd (2006) 156 FCR 158 cited
Martin Engineering Company v Nicaro Holdings Pty Limited (1991) 100 ALR 358 cited
Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 cited
Microsoft Corporation v PC Club Australia Pty Ltd (2005) 148 FCR 310 cited
Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 cited
Motor Group Australia Pty Ltd v Owners Corporation Strata Plan 64622 [2004] NSWSC 633 cited
Murray (Inspector of Taxes) v Imperial Chemical Industries Ltd [1967] Ch 1038 cited
Ng v Clyde Securities Ltd [1976] 1 NSWLR 443 cited
Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448 cited
Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191 cited
Parramatta Design & Developments Pty Ltd v Concrete Pty Ltd (2005) 144 FCR 264 cited
Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 cited
Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 cited
Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2012) 95 IPR 64; [2012] FCAFC 4 cited
Sheldon & Hammond Pty Ltd v Metrokane Inc (2004) 135 FCR 34 cited
SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 cited
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354; [2002] FCAFC 157 cited
Tamawood Limited v Henley Arch Pty Ltd (2004) 61 IPR 378; [2004] FCAFC 78 cited
Taplin v Florence (1851) 10 CB 744; (1851) 138 ER 294 cited
Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 cited
Trumpet Software Pty Ltd v Ozemail Pty Ltd (1996) 34 IPR 481; [1996] FCA 560 cited
University of New South Wales v Moorhouse (1975) 133 CLR 1 cited
Wah Tat Bank Limited v Chan Cheng Kum [1975] AC 507 cited
Wardley Australia Ltd v State of Western Australia (1992) 175 CLR 514 cited
WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274 cited

Sainsbury M, “Databases and Copyright – Finding the Match” (2001) 3(1) Digital Technology Law Journal 3

Dates of hearing: 18-21, 24-28 October 2011 and 16 November 2011

Place: Brisbane

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 303

Counsel for the Applicant: Mr R Cobden SC with Mr R Alkadamani

Solicitor for the Applicant: Castrission & Co

Counsel for the First Respondent: The First Respondent did not appear

Counsel for the Second and Fifth Respondents: Mr JG Dearn

Solicitor for the Second and Fifth Respondents: Romans & Romans Lawyers

Counsel for the Third, Fourth, Sixth, Seventh and Eighth Respondents: Mr NH Ferrett

Solicitor for the Third, Fourth, Sixth, Seventh and Eighth Respondents: B2B Lawyers

Counsel for the Ninth Respondent: Mr AM Musgrave

Solicitor for the Ninth Respondent: Barry.Nilsson Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

NSD 2504 of 2007

BETWEEN:
TAMAWOOD LIMITED (ACN 010 954 499)
Applicant

AND:
HABITARE DEVELOPMENTS PTY LTD (ADMINISTRATORS APPOINTED) (RECEIVERS AND MANAGERS APPOINTED) (ACN 122 935 497)
First Respondent

BLOOMER CONSTRUCTIONS (QLD) PTY LTD (ACN 071 344 100)
Second Respondent

PETER FREDERICK O'MARA
Third Respondent

DAVID GAVIN JOHNSON
Fourth Respondent

WAYNE NORMAN BLOOMER
Fifth Respondent

HABITARE PTY LTD (ACN 098 209 495)
Sixth Respondent

EIGHT MARCH PTY LTD (ACN 099 315 787) (AS TRUSTEE OF THE EIGHT MARCH DISCRETIONARY TRUST)
Seventh Respondent

FIRST PRIORITY DEVELOPMENTS PTY LTD (ACN 098 329 465) (AS TRUSTEE OF THE FIRST PRIORITY DISCRETIONARY TRUST)
Eighth Respondent

MONDO ARCHITECTS PTY LTD (ACN 085 992 990)
Ninth Respondent

JUDGE:

COLLIER J

DATE OF ORDER:

7 MAY 2013

WHERE MADE:

BRISBANE

THE COURT DIRECTS THAT:
1.At a date to be fixed, Counsel bring in signed minutes of orders to give effect to the reasons in this judgment.

THE COURT ORDERS THAT:
2.Costs be reserved.
3.There be liberty to apply on three days’ notice.

Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

NSD 2504 of 2007

BETWEEN:
TAMAWOOD LIMITED (ACN 010 954 499)
Applicant

AND:
HABITARE DEVELOPMENTS PTY LTD (ADMINISTRATORS APPOINTED) (RECEIVERS AND MANAGERS APPOINTED) (ACN 122 935 497)
First Respondent

BLOOMER CONSTRUCTIONS (QLD) PTY LTD (ACN 071 344 100)
Second Respondent

PETER FREDERICK O'MARA
Third Respondent

DAVID GAVIN JOHNSON
Fourth Respondent

WAYNE NORMAN BLOOMER
Fifth Respondent

HABITARE PTY LTD (ACN 098 209 495)
Sixth Respondent

EIGHT MARCH PTY LTD (ACN 099 315 787) (AS TRUSTEE OF THE EIGHT MARCH DISCRETIONARY TRUST)
Seventh Respondent

FIRST PRIORITY DEVELOPMENTS PTY LTD (ACN 098 329 465) (AS TRUSTEE OF THE FIRST PRIORITY DISCRETIONARY TRUST)
Eighth Respondent

MONDO ARCHITECTS PTY LTD (ACN 085 992 990)
Ninth Respondent

JUDGE:

COLLIER J

DATE:

7 MAY 2013

PLACE:

BRISBANE

REASONS FOR JUDGMENT

These proceedings, constituting a primary application as well as several cross-claims, involve multiple parties and a great deal of material. Largely as a result of the efficient manner in which the respective claims were presented by the parties’ legal representatives during the course of the trial, including the filing of a Joint Statement of Issues in dispute, the facts and the issues for decision in this case are relatively clear.
In summary, the applicant Tamawood Ltd (“Tamawood”) seeks relief for breach of copyright of its designs for project homes, against a developer (Habitare Developments Pty Ltd and Habitare Pty Ltd), a builder (Bloomer Constructions (Qld) Pty Ltd (“Bloomer Constructions”)), and an architectural firm (Mondo Architects Pty Ltd (“Mondo”)). Mondo has filed two cross-claims (one against Tamawood and one against Habitare).
On 13 September 2011 judgment was entered against the first respondent Habitare Developments Pty Ltd as a consequence of its failure to file a defence and evidence in accordance with self-executing orders made by the Court. It does not appear to be in dispute that, in light of the judgment entered against the first respondent, issues in contention concerning Habitare for which Tamawood seeks relief relate only to the sixth respondent Habitare Pty Ltd (cf transcript 24 October 2011, p 294 l 45-p 295 l 16). For convenience I will refer to the sixth respondent as “Habitare”.
At the conclusion of the trial I indicated to the parties that I would make relevant findings in light of the respective claims, and then invite submissions as to appropriate remedies (including, if necessary, issues of quantum).
Before turning to issues at stake in these proceedings, it is useful to summarise the background facts.
BACKGROUND FACTS
Tamawood is a company which produces plans for low-cost project housing in Australia. There is evidence before the Court that it has published approximately 2000 designs for dwellings on its website.
At all material times Habitare was involved in the construction of low-cost, intensive housing projects in Brisbane. The third respondent, Mr O’Mara, is a director of Habitare and the fourth respondent, Mr Johnson, is an alternate director.
Some time in 2005 Habitare engaged in discussions with Tamawood with a view to Tamawood producing plans to suit Habitare sites owned by the seventh respondent, Eight March, and the eighth respondent, First Priority Developments. The sites were at Hamish Street, Calamvale in Queensland, and Gawler Street/Norris Road, Brackenridge in Queensland. Plans relating to the sites were produced by Tamawood.
Habitare sought and obtained development approval from the Brisbane City Council in respect of those sites using the plans produced by Tamawood. The plans in relation to which the Brisbane City Council granted development approval are in evidence before the Court, exhibited to the affidavit of Mr Marcel Weyland sworn 11 March 2011. They are as follows:
MW7:

MW11:
MW12:

MW13:
MW8:

MW9:

MW14:
Subsequently however Habitare opted not to use the plans for which it had received development approval. Notwithstanding this decision, it is not in dispute that Habitare did not wish to commence fresh development approval applications with the Brisbane City Council in respect of dwellings to be constructed on those sites. It appears that Habitare then decided to proceed with the development projects in respect of plans which were “generally in accordance with” the plans which had received development approval, and approached the ninth respondent, Mondo, for assistance to develop new plans for which building certification could be obtained. At all material times Mr Raymond Sweeney was the director of Mondo.
On 11 October 2006 the Brisbane City Council accepted that Mondo’s drawings for the Calamvale site were “generally in accordance with” the development approval dated 7 July 2006, and these plans were so stamped on 7 December 2006.
On 6 December 2006 construction drawings prepared by Mondo in respect of the Brackenridge site were approved by the certifier, Express Plan Approvals Pty Ltd.
Construction drawings prepared by Mondo in respect of the Calamvale site were approved by the certifier, Certis Pty Ltd, on 17 August 2007.
The fifth respondent, Mr Wayne Bloomer, was a builder approached by Habitare to construct the relevant housing structures, and is a director of the second respondent Bloomer Constructions. It is not in dispute that dwellings were built at both sites in accordance with the certified plans.
In substance, Tamawood seeks relief in respect of alleged breach of copyright of housing plans of which it is the owner, against Habitare, the owners of the Calamvale and Brackenridge sites (Eight March and First Priority Developments), the builder of the Habitare housing projects (Mr Bloomer and Bloomer Constructions), and Mondo. In respect of Mr Peter O’Mara and Mr David Johnson, Tamawood presses a claim only for accessorial liability rather than primary infringement of copyright.
As I noted earlier, Mondo is the applicant in the two cross-claims currently before the Court. Mondo seeks relief:
·in its first cross-claim filed 29 July 2011 – against Tamawood in respect of Tamawood’s alleged breach of Mondo’s copyright in respect of its plans; and
·in its second cross-claim filed 15 August 2011 – against Habitare, for involving Mondo in Habitare’s alleged breach of Tamawood’s copyright in Tamawood plans.
A third cross-claim filed by Habitare on 5 August 2011 against Tamawood and Mondo was dismissed with costs on 26 September 2011 and is no longer in issue.
PRINCIPAL PROCEEDING – CLAIMS OF TAMAWOOD
In a further amended application filed 26 October 2010, Tamawood claims that it is the owner of the copyright in architectural drawings and plans and that the respondents have infringed its copyright. Tamawood states that the proceedings have been brought under s 115 of the Copyright Act 1968 (Cth) (“Copyright Act”). Tamawood also claims that the respondents have engaged in conduct in contravention of s 52 and s 53 of the Trade Practices Act 1974 (Cth) (“Trade Practices Act”) or been persons involved in such contraventions within the meaning of s 75B of that Act. On the grounds stated in Tamawood’s Third Further Amended Statement of Claim (“3rd FASC”) filed on 5 August 2011, Tamawood claims:
1.a declaration that the respondents have infringed the applicant’s copyright in the architectural drawings and plans known as Arcadia, Conondale, Torrington, Dunkeld, Armstrong and Hazen
2.        damages
3. additional damages pursuant to section 115 of the Copyright Act
4.        an account of profits
5.an order restraining the first, second, sixth, seventh, eighth and ninth respondents from further infringing the applicant’s copyright in those plans
6. damages pursuant to section 82 of the Trade Practices Act
7.interest pursuant to section 51A of the Federal Court of Australia Act 1976 (Cth) (“Federal Court Act”)
8.        costs
9.        such further or other orders as the Court deems just
Specifically, Tamawood claims that it owns the copyright which subsists in relation to a number of drawings, being drawings of floor plans and elevations, and drawings or illustrations of three dimensional projections. Those drawings (“Tamawood drawings”) are:
(a)of a dwelling entitled “Torrington” (“Torrington drawings”);
(b)of a dwelling entitled “Conondale” (“Conondale drawings”);
(c)of a dwelling entitled “Dunkeld” (“Dunkeld drawings”);
(d)of a dwelling entitled “Arcadia” (“Arcadia drawings”);
(e)of a dwelling entitled “Armstrong” (“Armstrong drawings”);
(f)of a dwelling entitled “Hazen” (“Hazen drawings”).
The only infringement of copyright in the Arcadia and Armstrong drawings claimed by Tamawood relates to the use by Habitare of those drawings in the application for development approval.
It follows that the focus of both submissions and evidence was on the Torrington, Conondale, Dunkeld and Hazen drawings. In relation to the Hazen plans, Tamawood only presses its claim for infringement of copyright against Habitare up to the development approval phase. To that extent it also follows that Tamawood does not press its claims concerning the Hazen drawings against respondents other than Habitare.
In relation to the Torrington drawings, Tamawood claims, in summary, as follows:
1.The Torrington plan is of a two storey duplex. Each home has three upstairs bedrooms (including a private ensuite to the master bedroom).
2.Drawings of the floor plans of the Torrington are as follows:
3.A drawing of the elevations of the Torrington is as follows:
4.A drawing of a three dimensional projection of the Torrington is as follows:
5.The Torrington drawings were made by Mr Lev Mizikovsky in the course of his employment with Tamawood or an associated company on or about 21 September 2005. Copyright subsists in the Torrington drawings and Tamawood owns that copyright.
6.At some time in 2006 Habitare, Eight March and First Priority Developments retained Mondo to review and effect insubstantial changes to the Torrington, Dunkeld, Armstrong and/or Hazen drawings to be used in the project developments.
7.New designs in keeping with the same parameters as the Tamawood plans were prepared by Mondo.
8.Bloomer Constructions built dwellings for Habitare, Eight March and First Priority Developments at the Calamvale and Brackenridge sites in accordance with Mondo designs.
9.At all material times the respondents knew that copyright subsisted in the Torrington drawings and that Tamawood, being the copyright owner, did not consent to the reproduction of a substantial part of the Torrington drawings. Alternatively the respondents were recklessly indifferent to these circumstances. In relation to the second, third, fourth, fifth and ninth respondents, Tamawood claims that they were recklessly indifferent because (inter alia) they knew that Tamawood was a well-known builder in the Brisbane area, but did not make inquiries of Tamawood as to whether it permitted its drawings to be substantially reproduced or used for the building of the dwellings at Calamvale and Brackenridge.
10.Habitare, Eight March and First Priority Developments have, without the licence of Tamawood:
(a)used Tamawood’s drawings of the Torrington in submissions to the Brisbane City Council for approval of developments at Calamvale and Brackenridge (that is – in the form identified as MW12 and MW13 to the affidavit of Mr Weyland); and
(b)made or procured (from Mondo) the makings of drawings which are reproductions of a substantial part of the Torrington drawings (being floor plans, elevations and drawings or illustrations of three dimensional projections) although referred to as “Duplex A” (at Brackenridge) and “Duplex 2” (at Calamvale), subsequent to which duplexes were constructed by Bloomer Constructions in accordance with the Mondo plans.
11.Exhibit MW12 to Mr Weyland’s affidavit is as follows:
12.Exhibit MW13 to Mr Weyland’s affidavit is as follows:
13.A drawing of the floor plans of the Duplex A is as follows:
14.A drawing of the elevations of the Duplex A is as follows:
15.A drawing of the floor plans of the Duplex 2 is as follows:
16.A drawing of the elevations of the Duplex 2 is as follows:
17.Habitare, Bloomer Constructions, Eight March and First Priority Developments have, without the licence of Tamawood, used Tamawood’s Torrington drawings to build dwellings in accordance with that design or in accordance with Duplex 2 and Duplex A drawings.
18.Mondo made drawings (without the licence of Tamawood) which are reproductions of a substantial part of the Torrington drawings (that is Duplex 2 and Duplex A).
19.Conduct of Habitare in respect of the drawings was authorised by Mr O’Mara and Mr Johnson.
20.Habitare, Bloomer Constructions, Eight March, First Priority Developments and Mondo acted in concert pursuant to a common design to infringe Tamawood’s copyright in the Torrington drawings.

Further to these claims, in its Reply filed 28 September 2011 Tamawood contested the existence of any licence in Habitare in respect of use of Tamawood drawings as submitted by the respondents. This is because, inter alia:
·In his affidavit sworn 9 August 2011, Mr Peter Souter-Robertson, a salesman employed by Tamawood, deposed that he had made it clear in conversations with Mr O’Mara and Mr Peter Speer of Habitare that Tamawood would permit use of its plans by lodgment of the plans with the Brisbane City Council for development approval, on the basis that Tamawood was to build the houses in the proposed developments, and not otherwise.
·Since Tamawood was not so retained, there was no licence to use the Tamawood plans for development consent or thereafter.
·There was no consideration from any of the respondents to support the claimed licence.
Similar claims were made in relation to the Conondale, Dunkeld and Hazen plans produced by Tamawood.
The Conondale and Dunkeld drawings are alike, being plans for a single storey duplex, each home having three bedrooms. There is some evidence that the Dunkeld was an “evolved” version of the earlier Conondale design (I note in particular evidence of Mr Weyland in his affidavit sworn 11 March 2011 (cf transcript 21 October 2011, pp 244-246)). The key difference between the Conondale and the Dunkeld designs is that a version of the Conondale plan did not offer a separate ensuite bathroom for Bedroom 1, whereas the Dunkeld design had that feature.
The relevant Conondale drawings were as follows:
·the floor plan of the Conondale:
·the elevations of the Conondale:
The relevant Dunkeld drawings were as follows:
·the floor plan of the Dunkeld:
·the elevations of the Dunkeld:
·a three dimensional projection of the Dunkeld:
Tamawood claims in summary that:
·the Conondale drawings were made by Mr Alejandro Cohn and/or Mr Scott Gerchow in the course of their employment with Tamawood or an associated company in or about March 2004;
·the Dunkeld drawings were made by Mr Lev Mizikovsky in or about November 2005 in the course of his employment with Tamawood or an associated company; and
·copyright subsists in both the Conondale drawings and the Dunkeld drawings, and Tamawood owns that copyright.
Tamawood claims further that without the licence of Tamawood, the Conondale and/or Dunkeld drawings were used by Habitare, Eight March and First Priority Developments in submissions to the Brisbane City Council for approval of developments at Calamvale and Brackenridge. The plans which were submitted to the Brisbane City Council for development approval are exhibited to the affidavit of Mr Weyland sworn 11 March 2011 as MW7 (in relation to the Brackenridge site) and MW11 (in relation to the Calamvale site). Tamawood claims that these plans were, essentially, the Conondale drawings.
The drawing at exhibit MW7 was as follows:
The drawing at exhibit MW11 was as follows:
The Brisbane City Council gave conditional development consent or approval to those developments on the basis of those drawings.
Tamawood further claims (in summary) that Habitare, Eight March and First Priority Developments made or procured (from Mondo) the makings of drawings “generally in accordance” with the Conondale/Dunkeld plans which were submitted to the Brisbane City Council. Both duplex plans and single dwelling plans were prepared by Mondo, “generally in accordance with” the plans which had received development approval. The duplex plan designed by Mondo was “Duplex 1” (at the Calamvale site). The single dwelling plan designed by Mondo, for the Calamvale site, was “House Plan 2” (without private ensuite to Bedroom 1) and “House Plan 1” (with private ensuite).
The Duplex B design, which was used by Habitare for construction of duplexes at the Brackenridge site, is similar in a number of ways to Mondo’s Duplex 1. It appears however that the Duplex B design was produced by another architectural company, Caprice Group. Evidence before the Court concerning Habitare’s relationship with Caprice Group is scanty, and supports inferences that Habitare had had discussions of some kind with Caprice Group in 2006, that Caprice Group had commenced building duplexes at Brackenridge in or about July 2006, but that Caprice Group had become insolvent. Caprice Group is not a party to these proceedings, nor are any facts associated with Caprice Group the subject of pleadings.
Plans prepared by Mondo which received approval from the Brisbane City Council as being “generally in accordance with” the plans already approved were exhibited to the affidavit of Mr Weyland sworn 11 March 2011 as MW16 and MW17, and as a single dwelling version MW22 and MW23. These plans are as follows:
·the floor plan of Duplex 1:
·the elevations of Duplex 1:
·the floor plan of House Plan 2:
·the elevations of House Plan 2:
The Duplex B design prepared originally by Caprice Group is as follows:
Tamawood also claims (in summary) that dwellings in accordance with these plans were constructed by Bloomer Constructions.
In relation to the Hazen drawings, Tamawood repeats claims similar to those made in relation to the Torrington, Conondale and Dunkeld drawings concerning use by Habitare of the Hazen drawings in seeking development approval from the Brisbane City Council for construction of dwellings at the Calamvale site. Specifically, Tamawood claims that the Hazen drawings were included in Habitare’s application, depicting some of the dwellings that were proposed to be constructed at the Calamvale site. The Hazen plans are of a single story duplex, each home with three bedrooms, a study and a double garage.
A drawing of the floor plan of the Hazen is as follows:
A drawing of the elevations of the Hazen is as follows:
A drawing of a three dimensional projection of the Hazen is as follows:
Tamawood claims that the Hazen drawings were made by Mr Lev Mizikovsky and or Ms Rachel Prestidge on or about 4 February 2004, and that copyright in those drawings subsists in Tamawood.
As I have already noted, Tamawood also claims that its copyright in the Arcadia and Armstrong drawings was infringed by Habitare using those drawings, without the licence of Tamawood, in Habitare’s application to the Brisbane City Council for development approval.
Finally, Tamawood claims, inter alia, that Habitare, Bloomer Constructions, Eight March and First Priority Developments impliedly represented that they owned all rights and privileges in any copyright in the plans for the dwellings built and sold at the Brackenridge and Calamvale sites, and that such representations were misleading and deceptive contrary to s 52 of the Trade Practices Act. Tamawood further claims (in summary) that this conduct was aided, abetted or procured by Mr O’Mara, Mr Johnson and Mr Bloomer.
The principal proceedings were strongly defended by all respondents.
PRINCIPAL PROCEEDINGS - DEFENCES
Habitare, Mr O’Mara, Mr Johnson, Eight March and First Priority Developments concede a number of important points claimed by Tamawood. In particular, they concede that:
·Habitare submitted an application for development approval with the Brisbane City Council in respect of the Calamvale site which included the Hazen, Dunkeld, Torrington and Armstrong plans.
·Eight March submitted an application for development approval with the Brisbane City Council in respect of the Brackenridge site which included the Dunkeld, Armstrong and Torrington plans.
·Subsequent to negotiations between representatives of Tamawood and Habitare, negotiations broke down between the parties and Tamawood was not retained to construct any of the dwellings on the Calamvale or Brackenridge sites.
·Habitare procured Mondo to make drawings.
·Dwellings were constructed in accordance with drawings prepared by Mondo.
Otherwise they oppose Tamawood’s claims on grounds including:
·Eight March and First Priority Developments did not retain Mondo.
·Although Habitare retained Mondo, it was not to review and effect insubstantial changes to the Tamawood drawings. Further, it was an express term of the Mondo contract that Mondo prepare plans and drawings which did not infringe any copyright in respect of the plans and drawings already lodged with the Brisbane City Council.
·In any event, during negotiations between Habitare representatives and Tamawood representatives (in particular Mr Lev Mizikovsky and Mr Peter Souter-Robertson), Tamawood advised Habitare that the plans provided by Tamawood could be used for the purpose of seeking development approval from the Brisbane City Council. To that extent, Tamawood granted Habitare an express licence to use the plans to seek development approval. That licence extended to anyone involved in the developments.
·It was an implied term of the licence that the Tamawood plans could be amended to the extent reasonably required in seeking development approval.
·It was an implied term of the licence that the Tamawood plans could be reproduced or substantially reproduced by or on behalf of Habitare in carrying out the developments.
·Eight March and First Priority Developments had no relationship with Bloomer Constructions.
·Although Mondo made drawings other than under licence from Tamawood, those drawings were not reproductions or substantial reproductions of Tamawood plans.
Bloomer Constructions and Mr Bloomer similarly deny Tamawood’s claims. In particular, they deny liability for the further damages claimed on the basis that (in summary) at the time of the alleged infringements they had no reasonable grounds for suspecting that the acts alleged to constitute infringement of copyright were infringements of copyright because the drawings provided to them for the purpose of construction made no reference to Tamawood. They further deny that they have engaged in misleading and deceptive conduct, because at all material times from the time of entry into the agreement to build the dwellings the second respondent relied on a contractual warranty as to the developer’s right to all relevant intellectual property, including as to relevant drawings.
In its Amended Defence dated 19 August 2011 Mondo claims, in summary, as follows:
·In relation to the Torrington drawings:
oMondo denies that any copyright subsisted in Tamawood, because there were notations on the drawings indicating that any copyright subsisted in “Dixon Systems”, which is a legal entity separate from Tamawood;
othey are not original artistic works of Tamawood because, inter alia, they depict familiar ideas and are similar to other designs for dwellings;
oin fact, they are copies of Mondo’s drawings for the Duplex A and Duplex 2;
oin any event, by providing the Torrington drawings for the purposes of development approval from the Brisbane City Council, Tamawood represented to any person or entity viewing the development approval that the owner of the copyright in those drawings:
§consented to a substantial reproduction of the drawings by the preparation of construction drawings based on those drawings the subject of the development approval; and
§gave the respondents a licence to use the Torrington drawings to carry into effect the development approval by preparing construction drawings, constructing the dwellings shown in the Torrington drawings and marketing those dwellings to the public;
oin or about June 2006 Mr Speer on behalf of Habitare and Mr Sweeney on behalf of Mondo had a conversation in which, inter alia, Mr Speer assured Mr Sweeney that there were no outstanding issues or problems between Tamawood and Habitare.
·In relation to the Conondale, Dunkeld and Hazen drawings:
oMondo denies that any copyright subsisted in Tamawood, because there were notations on the Dunkeld and Hazen drawings indicating that any copyright subsisted in “Dixon Systems”, which is a legal entity separate from Tamawood;
othey are not original artistic works of Tamawood because, inter alia, they depict familiar ideas and are similar to other designs for dwellings;
oMondo denies that it knew that copyright subsisted in these drawings or that the copyright owner did not consent to the reproduction of a part or a substantial part of these drawings;
ofurther, if copyright did subsist in those drawings, Tamawood had made representations in relation to their use similar to those representations made in respect of the Torrington drawings;
oMondo understood that it was entitled to use the drawings in light of the conversation in or about June 2006 between Mr Speer and Mr Sweeney;
oMondo denies that it created or was retained for the purpose of creating substantial reproductions of any copyright works.
CROSS-CLAIM: MONDO V TAMAWOOD
By cross-claim filed on 29 July 2011 against Tamawood, Mondo claimed, in substance, that:
·Between 1996 and 2001 Mr Raymond Sweeney had authored drawings in the course of his employment with Primal Pty Ltd, which drawings were subsequently reduced to computer generated versions using the computer aided design (CAD) program by employees of Mondotecture Pty Ltd (a wholly owned subsidiary of Primal Pty Ltd (“the Mondo drawings”).
·Copyright subsisted in the Mondo drawings, and by deed dated 22 July 2011 Primal Pty Ltd and Mondotecture Pty Ltd assigned all interest in copyright in that work to Mondo.
·Tamawood carried on the business of the design and construction of dwellings of the type shown in the Mondo drawings.
·Tamawood has infringed copyright in the Mondo drawings by reproducing them in a material form as, in summary, the Torrington drawings, and in turn providing them in late 2004 or early 2005 to the Habitare parties.
·Tamawood continues to use the infringing drawings in developments throughout Australia.
Mondo seeks:
·a declaration that it is the owner of the copyright subsisting in the Mondo drawings;
·an injunction to restrain Tamawood from infringing its copyright;
·damages for infringement of copyright, including additional damages pursuant to s 115(4) of the Copyright Act;
·alternatively, an account of profits;
·alternatively, damages pursuant to s 116 of the Copyright Act for wrongful conversion and/or detention of infringing copies of the Mondo drawings;
·interest upon any such damages;
·delivery up to Mondo of all infringing materials; and
·costs.
Tamawood disputes the cross-claim.
CROSS-CLAIM: MONDO V HABITARE, MR SPEER AND MR O’MARA
By cross-claim filed on 15 August 2011 Mondo claimed, in substance, that should Tamawood succeed in the main action against Mondo, Mondo was entitled to damages or an indemnity in respect of any money it was ordered to pay, the costs of defence to the main action, and the costs of these proceedings against Habitare, Mr Peter Speer and Mr Shane O’Mara. The basis of this claim was, in summary:
·In or about June 2006 Mr Speer and Mr O’Mara had a conversation with Mr Sweeney during which:
oMr Speer showed Mr Sweeney a copy of drawings attached to the Hamish Street development application;
oMr Sweeney commented unfavourably on the quality of those drawings;
oMr Sweeney asked whether there were “any outstanding issues between Tamawood and Habitare” and whether “everything [was] resolved with Tamawood” to permit Habitare to continue with the development approval process with the Brisbane City Council;
oMr Speer and Mr O’Mara informed Mr Sweeney that “everything is fine” and “there is no problem”;
oMr Sweeney advised Mr Speer that Mondo could provide architectural drawings for the purpose of the Hamish Street development, and that because plans attached to the development approval application were incomplete Mondo would use Mondo drawings for the development.
·Habitare and Mondo entered into a contract in respect of the provision of architectural drawings.
·Terms of the contract were:
oHabitare warranted that there were no outstanding issues between Tamawood and Habitare;
oHabitare warranted that it was entitled to use the Tamawood plans submitted to the Brisbane City Council for the purpose of obtaining the building approval;
oHabitare warranted that the Tamawood plans could be used to create construction drawings for the Hamish Street development and that doing so would not constitute an infringement of Tamawood copyright because all outstanding issues had been settled between Tamawood and Habitare.
·In fact Habitare had not obtained the consent of Tamawood to use the Tamawood plans in relation to the Hamish Street development, and it was not entitled to use those plans for that purpose.
·Notwithstanding the representations by Mr Speer and Mr O’Mara, there clearly were outstanding issues between Tamawood and Habitare, namely Tamawood’s existing claim in respect of copyright over the plans the subject matter of the development approval. This constituted a representation to Mondo within the meaning of s 52 of the Trade Practices Act.
·Mr Speer and Mr O’Mara knew of or were involved in the making of the representations by Habitare, and were knowingly concerned in the conduct of Habitare.
In defences filed 26 September 2011, Habitare, Mr Speer and Mr O’Mara deny the allegations in Mondo’s cross-claim. In particular, in paragraph 8 of each Defence to the Cross-Claim, they plead as follows:
a)after development approval for the Hamish Street site was received, Shane O’Mara and Peter Speer met with Ray Sweeney of Mondo Architects at Mr Sweeney’s office in Brisbane;
b)Speer explained to Sweeney that Tamawood’s plans formed part of the development approval for Hamish Street which he showed him;
c) Sweeney stated that the plans were very similar to his plans;
d)Speer said to Sweeney that Habitare did not want to have to go through the development approval process again as it would take too long. Habitare could not use the Tamawood plans for copyright reasons, so new plans were needed that would not cause copyright problems but would allow Habitare to get approval on the basis that the plans were substantially in accordance with the development application. He asked Sweeney if he could fix the problem;
e)Sweeney replied that he would re-do the plans using his designs, and there would be no problem.
LEGISLATIVE PROVISIONS RELEVANT TO ENTITLEMENT TO RELIEF
While basic provisions of the Copyright Act upon which Tamawood relies concerning the establishment of its copyright in the particular drawings, and infringement thereof, are not specifically pleaded, legislation relevant in this context was neatly summarised by Wilcox and Lindgren JJ in circumstances involving a similar claim (in Tamawood Limited v Henley Arch Pty Ltd (2004) 61 IPR 378; [2004] FCAFC 78) as follows:
[14] For the purposes of the Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right, in the case of an artistic work, inter alia, ‘to reproduce the work in a material form’: s 31(1)(b)(i). Such reproduction is referred to in the Act as one of the ‘acts’ comprised in copyright (see, for example, ss 13(1), 31(1)(b)(i), 36(1)). Plans for a house, being ‘drawings’, are an artistic work, as is a ‘building’: s 10(1) (‘artistic work’).
[15] Copyright in an artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner, does in Australia, or authorises the doing in Australia, of any act comprised in the copyright: s 36(1). A reference in the Act to an act comprised in the copyright in a work, is to be read as a reference to any act that, under the Act, the owner of the copyright has the exclusive right to do: s 13(1).
[16] Subsections 14(1) and 21(3) of the Act provide as follows:
‘14(1) In this Act, unless the contrary intention appears:
(a)a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter; and
(b)a reference to a reproduction, adaptation or copy of a work shall be read as including a reference to a reproduction, adaptation or copy of a substantial part of the work, as the case may be.’
‘21(3) For the purposes of this Act, an artistic work shall be deemed to have been reproduced:
(a)in the case of a work in a two-dimensional form – if a version of the work is produced in a three-dimensional form; or
(b)in the case of a work in a three-dimensional form – if a version of the work is produced in a two-dimensional form;
and the version of the work so produced shall be deemed to be a reproduction of the work.’

In my view the same provisions of the Copyright Act are applicable in this case.
Further, in the principal proceeding Tamawood relies for relief primarily on s 115 of the Copyright Act and s 52 and s 82 of the Trade Practices Act (as then in force).
So far as relevant, s 115 provides as follows:
115 Actions for infringement
(1) Subject to this Act, the owner of a copyright may bring an action for an infringement of the copyright.
(2) Subject to this Act, the relief that a court may grant in an action for an infringement of copyright includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of profits.
(3) Where, in an action for infringement of copyright, it is established that an infringement was committed but it is also established that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright, the plaintiff is not entitled under this section to any damages against the defendant in respect of the infringement, but is entitled to an account of profits in respect of the infringement whether any other relief is granted under this section or not.
(4) Where, in an action under this section:
(a) an infringement of copyright is established; and
(b) the court is satisfied that it is proper to do so, having regard to:
(i) the flagrancy of the infringement; and
(ia) the need to deter similar infringements of copyright; and
(ib) the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and
(ii) whether the infringement involved the conversion of a work or other subject matter from hardcopy or analog form into a digital or other electronic machine readable form; and
(iii) any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv) all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
Section 52 of the Trade Practices Act (in force at relevant times) provides:
52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).
Section 82 of the Trade Practices Act (in force at relevant times) provides:
82 Actions for damages
(1) Subject to subsection (1AAA), a person who suffers loss or damage by conduct of another person that was done in contravention of a provision of Part IV, IVA, IVB or V or section 51AC may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention.
(1AAA) A person who suffers loss or damage by conduct of another person may not recover the amount of the loss or damage by an action under subsection (1) to the extent to which:
(a) the action would be based on the conduct contravening a provision of Division 1 of Part V; and
(b) the loss or damage is, or results from, death or personal injury; and
(c) the death or personal injury does not result from smoking or other use of tobacco products.
(1AAB) Divisions 2 and 7 of Part VIB apply to an action under subsection (1) for loss or damage a person suffers by conduct of another person to the extent to which:
(a) the action is based on the conduct contravening a provision of Division 1 of Part V; and
(b) the loss or damage is, or results from, death or personal injury; and
(c) the death or personal injury results from smoking or other use of tobacco products;
as if the action were a proceeding to which Part VIB applies.
Note 1: Division 2 of Part VIB deals with the limitation periods that apply for claims for damages or compensation for death or personal injury and, to the extent to which that Division is applied to the action by this subsection, it overrides subsection (2) of this section.
Note 2: Division 7 of Part VIB deals with structured settlements for claims for damages or compensation for death or personal injury.
(1AA) Subsection (1) has effect subject to section 87AB.
Note: Section 87AB may limit the amount that the person may recover for a contravention of section 52 (Misleading or deceptive conduct) from the other person or from another person involved in the contravention.
(1B) Despite subsection (1), if:
(a) a person (the claimant) makes a claim under subsection (1) in relation to:
(i) economic loss; or
(ii) damage to property;
caused by conduct of another person (the defendant) that was done in contravention of section 52; and
(b) the claimant suffered the loss or damage:
(i) as a result partly of the claimant’s failure to take reasonable care; and
(ii) as a result partly of the conduct referred to in paragraph (a); and
(c) the defendant:
(i) did not intend to cause the loss or damage; and
(ii) did not fraudulently cause the loss or damage;
the damages that the claimant may recover in relation to the loss or damage are to be reduced to the extent to which the court thinks just and equitable having regard to the claimant’s share in the responsibility for the loss or damage.
Note: Part VIA also applies proportionate liability to a claim for damages under this section for a contravention of section 52.
(2) An action under subsection (1) may be commenced at any time within 6 years after the day on which the cause of action that relates to the conduct accrued.
Note: Part VIB restricts awards of compensation for death or personal injury, and sets out time limits for commencing actions for damages for death or personal injury.
(3) In this section:
smoking has the same meaning as in the Tobacco Advertising Prohibition Act 1992.
tobacco product has the same meaning as in the Tobacco Advertising Prohibition Act 1992.
I will now turn to the issues identified by the parties for decision in these proceedings. For convenience, in considering these issues I will adopt the numbering agreed by the parties in the Joint Statement of Issues, tendered at the hearing as exhibit 69(M).
IDENTIFICATION OF THE APPLICANT’S WORKS IN SUIT (THAT IS, THE TAMAWOOD DRAWINGS), WHETHER THE TAMAWOOD DRAWINGS ARE ORIGINAL ARTISTIC WORKS, AND WHETHER COPYRIGHT SUBSISTS IN THE TAMAWOOD DRAWINGS (ISSUES 1, 2 AND 3)
In summary, Tamawood claims that the author of the Tamawood drawings was principally Mr Lev Mizikovsky, who was at all material times the managing director of Tamawood. Tamawood claims further that others in its employ contributed to the authorship of relevant plans – for example Mr Peter Souter-Robertson in relation to the Torrington drawings, and Mr Alejandro Cohn and/or Mr Scott Gerchow in relation to the Conondale drawings.
This claim is supported by the detailed affidavit of Mr Mizikovsky sworn 28 July 2011. Mr Mizikovsky’s affidavit explains the practices in Tamawood relating to the development of the Tamawood drawings, including extensive evidence of the work undertaken by himself and other employees of Tamawood in creating the Tamawood drawings.
Mr Mizikovsky also deposes that he had always understood that, at all material times, he, and the other Tamawood architects and draftsmen who developed the Tamawood drawings, were employees of Tamawood.
To that extent, the case of Tamawood is that it is the owner in the copyright in the Tamawood drawings in light of s 35(6) of the Copyright Act, which provides (inter alia) that where an artistic work is made by the author in pursuance of the terms of his or her employment, the employer is the owner of any copyright subsisting in the work.
There is evidence before the Court however that Tamawood Services Pty Ltd (“TSPL”), a wholly owned subsidiary of Tamawood, was the corporate vehicle which paid all employees of Tamawood and associated entities, and accordingly it is possible that Mr Mizikovsky and the other relevant Tamawood architects and draftsmen were employees of TSPL. Mr Mizikovsky deposes that, by deed dated 8 December 2010, TSPL assigned all its right, title and interest in the Tamawood drawings to Tamawood pursuant to s 196 of the Copyright Act (para 51 and exhibit “LM35” of Mr Mizikovsky’s affidavit).
There appears to be no dispute by the first to eighth respondents that copyright subsists in the Tamawood drawings in Tamawood. However Mondo does dispute the existence of copyright in Tamawood in the Tamawood drawings so far as concerns the Torrington drawings. In particular, Mondo claims that it is the owner of copyright in the Torrington drawings and that the Torrington drawings are an infringement of the Mondo Duplex 2/Duplex A precursors (which drawings were independently created by Mondo and are the subject of the cross-claim filed by Mondo against Tamawood on 29 July 2011). The precursors to the Mondo Duplex 2/Duplex A drawings appear to commence (sequentially) with the drawing identified in the proceedings as “MD1” and include a drawing I later refer to in this judgment as one of the “Mondo Wynnum Duplex 2 drawings”.
As these issues overlap significantly with the cross-claim brought by Mondo against Tamawood, it is appropriate to also consider the cross-claim at this point.
Does Mondo own the copyright in the Torrington drawings?
Mondo claims, in summary, that Habitare provided access to Mondo drawings to Mr Souter-Robertson in 2005, and that Tamawood based its Torrington drawings on those Mondo drawings. The apparent sequence of events, as taken from the Souter-Robertson 9/8/2011 affidavit, affidavits of Mr Sweeney sworn 22 August 2011 (“Sweeney 22/8/2011 affidavit”) and 1 September 2011 (“Sweeney 1/9/2011 affidavit”), the affidavit of Mr Darren Jarvis sworn 7 October 2011, and the affidavit of Mr Timothy Copley sworn 26 August 2011, may be summarised as follows:
·On 2 February 1996 Mr Sweeney was retained by an unrelated entity to prepare designs for a townhouse development at Arundel in Brisbane. He created drawings of plans of two-storey duplexes in computer-aided design (CAD) – in particular on 27 June 1996 he created a drawing of a duplex plan showing the upper and lower floor plans (referred to as “MD1” in the cross-claim) and elevations of that duplex (referred to as “MD2” in the cross-claim). MD1 is as follows:
MD2 is as follows:
·Mr Sweeney subsequently produced drawings based on MD1 and MD2, which are referred to by Mr Sweeney in his affidavit of 22 August 2011 as MD3 through to MD18. In particular during the hearing Mondo relied on MD7, MD14 and MD15.
·Mr Sweeney identified MD7 as a drawing for a property which he created on or about 23 October 2001. It appears to be the ground floor of a duplex dwelling, and is as follows:
·Mr Sweeney identified MD14 and MD15 as respectively the ground floor drawing and upper floor drawing of a duplex dwelling he created on or about 7 September 2001. MD14 is as follows:
MD15 is as follows:
·In late 2002 Mondo was approached by Mr Peter Speer to prepare designs for a development application concerning a site at 690 Manly Road, Wynnum (“Wynnum site”). The evidence in relation to the entity on whose behalf Mr Speer sought the designs is slightly confusing, however it appears that, fundamentally, Mr Speer was acting on behalf of Habitare (Sweeney 1/9/11 affidavit paras 3 and 10).
·The designs were of two-storey duplex dwellings. Mondo prepared those designs, which were finalised in 2003.
·The floor plan design for the duplex (“Mondo Wynnum Duplex 2”) is annexed to the Sweeney 1/9/2011 affidavit and is as follows:
·The Mondo Wynnum Duplex 2 elevations were as follows:
·Development approval was issued by the Brisbane City Council in September 2003 in relation to the Wynnum site.
·Habitare then retained Modini+Smith architects (rather than Mondo) to prepare the construction drawings for the development of the Wynnum site.
·At material times Mr Jarvis was employed by Habitare. Mr Jarvis deposed in his affidavit that, in the course of Habitare retaining Modini+Smith in relation to the Wynnum site, in June or July 2004 he provided to Mr Kevin Smith of Modini+Smith copies of drawings prepared by Mondo in relation to the Wynnum site. The Court is asked to infer that those drawings were the Mondo Wynnum Duplex 2 drawings or a version of those drawings.
·In 2005, Habitare approached Modini+Smith to create drawings for the Hamish Street development. Drawings for a three-bedroom two storey duplex dwelling prepared by Modini+Smith are annexed to Mr Copley’s affidavit and identified as “duplex ‘Block-B’”. The lower floor plan for this duplex is as follows:
The upper floor plan for this duplex is as follows:
·Mr Sweeney’s evidence is that the Modini+Smith drawings for the Hamish Street development were direct copies of Mondo drawings.
·In or about July or August 2005 Mr Souter-Robertson had a discussion with Mr Peter Speer and Mr Shane O’Mara. Mr Speer informed Mr Souter-Robertson that the costs associated with the Modini+Smith drawings were too high for use by Habitare, and that Habitare was interested in Tamawood designs, and showed Mr Souter-Robertson the Modini+Smith drawings. Mr Souter-Robertson printed out Tamawood’s standard duplex plans, including the Conondale drawings, for Mr Speer and Mr O’Mara.
·Mr Timothy Copley, a project manager employed by Habitare, with whom Mr Souter-Robertson was acquainted, deposed that sometime shortly after July 2005 he provided Mr Souter-Robertson with the Modini+Smith drawings in order for Tamawood to estimate how much it would cost Tamawood to prepare construction drawings and to construct the dwellings. Mr Copley also deposed that he provided the drawings to Mr Souter-Robertson either in person or by email.
There appears to be no dispute that Mr Souter-Robertson was shown Modini+Smith drawings by persons associated with Habitare. Key disputes between Tamawood and Mondo concern the manner in which Tamawood dealt with the Modini+Smith drawings shown to Mr Souter-Robertson, and whether Tamawood substantially reproduced those drawings in the form of the Torrington drawings.
In summary, Tamawood’s case is that its employees had little if any regard to the Modini+Smith drawings, whereas Mondo’s case is that Mr Souter-Robertson was provided with copies of the Modini+Smith drawings (which essentially reproduced the Mondo Wynnum Duplex 2 drawings) and that those drawings were reproduced in the Torrington drawings.
It is not in dispute that the Copyright Act places emphasis on originality in, inter alia, artistic works: I note, for example, Pt III Div 1 of the Copyright Act, and observations of Mason CJ, Brennan and Deane JJ in Autodesk Inc. v. Dyason (1992) 173 CLR 330 at 335-336. However as further observed by Gleeson CJ, McHugh, Gummow and Hayne JJ in Data Access Corporation v Powerflex Services (1999) 202 CLR 1 at [22]:
… [T]he requirement in copyright law that a work be “original” is to be distinguished from the requirements that an alleged invention be novel and that it not be obvious [Their Honours cited here Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 53]. The question for copyright law is whether “the work emanates from the person claiming to be its author, in the sense that he has originated it or brought it into existence and has not copied it from another”. If so, the work does not lack originality because of the anterior independent work of another, although, in such circumstances, an invention might lack novelty.
(Footnotes omitted.)
These sentiments were echoed by Wilson J in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 482-484 where his Honour explained:
Counsel for the respondent argues that the drawings in the present case lack any real degree of originality because the ideas expressed had been portrayed in earlier literature on the subject, and furthermore the content of the drawings was dictated to an extent by the known function which the product was to perform. I am not persuaded that this submission is established by the evidence. The trial judge was justified in his conclusion that the existing literature could not have provided the information necessary to the construction of the respondent's product. His Honour found that the only explanation of the completed form of that product was the deliberate copying of the appellant’s drawings. In any event, novelty or originality of the ideas expressed in an artistic work is not an essential prerequisite to copyright in the work. In L.B. (Plastics) Limited v. Swish Products Limited (1979) RPC 551, at p 567, Whitford J. said:
... no originality of thought is needed to sustain a claim to copyright. Under copyright ideas are not protected, only the skill and labour needed to give any given idea some particular material form, for it is the form in which the work is presented that is protected by copyright. That need only be original in the sense that it is all the author's own work.
In my opinion, there is ample originality in the authorship of the drawings by the appellant. The proposition that the protection afforded by copyright is somehow greater where the artistic work embodies a novel or inventive idea than where it represents a commonplace object or theme was recently rejected by Buckley L.J. in the Court of Appeal in Catnic Components Limited v. Hill and Smith Limited (1982) RPC 183. His Lordship said, at p 223, in a passage cited by Franki J. in the Federal Court:
... what is protected is the plaintiffs’ ‘artistic work’ as such, not any information which it may be designed to convey. If it is said that a substantial part of it has been reproduced, whether that part can properly be described as substantial may depend upon how important that part is to the recognition and appreciation of the ‘artistic work’. If an ‘artistic work’ is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information, but not, in my opinion, by how important the information may be which it conveys or helps to convey. What is protected is the skill and labour devoted to making the ‘artistic work’ itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the ‘artistic work’.
Counsel appealed to the older authorities for support, beginning with the decision of the House of Lords in Hanfstaengl v. Baines & Co. Ltd. (1895) AC 20 where Lord Watson said, at p 28:
But in cases where copyright is claimed for pictures or drawings which treat an old and common subject, such as love-making beside a stile, the privilege of the author must, in my opinion, be strictly confined to the particular design which he has chosen.
But this passage merely serves to emphasize the fundamental principle that copyright rests not in the idea, however romantic or important that idea may be, but in the particular form in which the idea finds expression in the work.
I note further similar comments of Gummow J in Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 379 and Conti J in Sheldon & Hammond Pty Ltd v Metrokane Inc (2004) 135 FCR 34 at [43].
In my view the evidence before the Court supports the finding that the Tamawood drawings including the Torrington drawings are original artistic works, that copyright subsists in Tamawood in relation to them, and that the Torrington drawings are not substantial reproductions of drawings authored by Mr Sweeney or in respect of which copyright may repose in Mondo. I so find for the following reasons.
First, as is deposed by Mr Sweeney in his affidavit sworn 22 August 2011, there is significant consistency in his drawings of duplex plans. In my view there is little material difference between the Mondo Wynnum Duplex 2 drawings, and those represented in the duplex plans and elevations identified in MD1-18, in particular MD7, MD14 and MD15 which appeared to be the subject of particular reliance by Mondo.

Second, the only evidence of substance before the Court of transmittal of Mondo drawings to Tamawood relates to the meeting in June 2006 at which it appears Mr Souter-Robertson was shown Modini+Smith drawings, which Mondo alleges were reproductions of the Mondo Wynnum Duplex 2 drawings (based in turn upon evidence of Mr Jarvis that he had provided Modini+Smith with those drawings some time in June or July 2004). (Mr Copley also deposes that he provided Mr Souter-Robertson with the Modini+Smith drawings, but he could not recall exactly when or whether he had provided them in person or by email.) To that extent, Mondo’s case – at its highest – appears to be that the Torrington drawings are reproductions of the Modini+Smith drawings, which in turn reproduced the Mondo Wynnum Duplex 2 drawings.
Specifically Mr Souter-Robertson’s evidence was that he was shown Modini+Smith plans in person, and that he glanced at the plans for less than a minute. Mr Souter-Robertson also deposed that he ascertained from that brief glance that those plans would be too complex and costly for Tamawood to build, and included features which were not standard for Tamawood (para 3(d) of Mr Souter-Robertson’s affidavit sworn 4 October 2011 (“Souter-Robertson 4/10/2011 affidavit”), supported by his oral evidence at transcript 19 October 2011 p 130 l 39 – p 131 l 17). He also deposed that he was not asked to price the Modini+Smith plans (para 3(e)).
In contrast, Mr Copley’s evidence was that he provided the Modini+Smith drawings to Mr Souter-Robertson by hard copy or email, and that Mr Souter-Robertson costed the Modini-Smith plans. Mr Copley reiterated this evidence under cross-examination (transcript 27 October 2011 p 650 ll 26-46). However, there is no evidence that Mr Souter-Robertson actually did cost the Modini+Smith plans, and certainly no email has been produced in evidence whereby the Modini+Smith drawings were sent to Mr Souter-Robertson for costing.
Further, I note that Mr Speer’s evidence was that he could not recall whether he had the Modini+Smith drawings with him at the meeting with Mr Souter-Robertson, although he thought it was probable that he did (for example, transcript 24 October 2011 p 320 ll 12-19 and p 321 ll 6-8). Mr O’Mara’s evidence was similar to that of Mr Speer (for example, transcript 25 October 2011 p 403 l 45 – p 404 l 2).
A difficulty for Mondo in this case is that the Court is required to draw an inference as to which Modini+Smith drawings were shown or otherwise communicated to Mr Souter-Robertson. There is no direct evidence as to which drawings he saw in or about July or August 2005. Mondo’s case, at its highest, is that the plans shown to Mr Souter-Robertson were those described as “duplex ‘Block-B’”.
I accept Mr Souter-Robertson’s version of events relating to his access to the Modini+Smith drawings as being credible in the circumstances. In particular, I accept Mr Souter-Robertson’s evidence that he looked at the Modini+Smith drawings but quickly concluded that they were unsuitable for Tamawood’s purposes.
I also prefer the evidence of Mr Souter-Robertson to that of Mr Copley in relation to whether Mr Souter-Robertson performed costings on the Modini+Smith drawings. In my view it is likely that Mr Souter-Robertson was more interested in developing plans for Habitare which fit Tamawood standard models and practices. There is certainly no material evidence before the Court to contradict his assertion that he did not perform any such costings, other than a recollection of Mr Copley (which is not substantiated).
Finally in relation to this point, there is no evidence that Mr Mizikovsky had seen any Mondo drawings or Modini+Smith drawings at any time relevant to the creation of the Torrington drawings. Indeed, Mr Mizikovsky deposes in his affidavit sworn 7 October 2011 that he had not, and this evidence was not challenged.
Third, and in any event, while the Torrington drawings, the Mondo Wynnum Duplex 2 drawings, and the Modini+Smith drawings described as “duplex ‘Block-B’” may represent three-bedroom duplex dwellings, as I have already observed it is clear from cases including Data Access, SW Hart, Interlego AG and Sheldon & Hammond Pty Ltd that novelty of design (or the absence thereof) in itself is not decisive in a consideration of the existence and ownership of copyright. This point was emphasised in relation to project dwellings of the kind designed by Mondo and Tamawood by Wilcox and Lindgren JJ in Tamawood Limited:
[38]     The application of the law of copyright to project home plans gives rise to special difficulty. All modern homes have certain features in common. In the case of project homes competing for the same number of dollars, there are pressures towards sameness. Of course, the size, number of rooms and facilities will vary according to the price range. Commonly, however, those in the same price range will be found:
(a)to be designed to fit blocks of approximately similar shape and dimensions;
(b)       to provide for vehicular access and accommodation; and
(c)to include features demanded by the market in question, such as, a certain number of bedrooms, a laundry, a kitchen, a family or rumpus room, an ensuite and a walk-in wardrobe (‘WIR’) in association with the main bedroom, built-in wardrobes in the other bedrooms, at least one bathroom in proximity to the other bedrooms, and certain facilities in the kitchen such as a sink, bench, dishwasher, stove, hot plate and microwave oven.
[39]     The idea-form distinction, often elusive, is particularly so in the case of project homes. Yet the originality threshold for copyright protection is low…
It follows that no inference can be drawn of infringement of copyright by Tamawood in relation to the Torrington drawings by reference to the Mondo drawings merely because they exhibit a number of common features, including single garage, kitchen, lounge room, entry foyer, and dining area on the lower level with stairs to an upper floor (with three bedrooms, a bathroom and an ensuite to the main bedroom).
Fourth, and in any event, in comparing the Mondo Wynnum Duplex 2 drawings with the Torrington drawings, despite some features in common there are also significant differences between the drawings. Placing to one side as unnecessary a comparison between the Torrington drawings and the Modini+Smith drawings described as “duplex ‘Block-B’” (in respect of which no action lies by Mondo), distinctions between the Torrington drawings and the Mondo Wynnum Duplex 2 drawings include:
·The Mondo Wynnum Duplex 2 drawings represent a dwelling with a lounge room, a family room and a dining area. The dwelling represented by the Torrington drawings has only a living and dining area.
·The Mondo Wynnum Duplex 2 drawings contemplate a laundry area with a toilet on the left side of the dwelling. The Torrington drawings do not provide for a separate laundry – there is provision for a washing machine in the single garage.
·The Torrington drawings provide for an outside area for an outdoor setting under the roof line. No such provision is made in the Mondo Wynnum Duplex 2 drawings.
·The Mondo Wynnum Duplex 2 drawings provide for a balcony adjacent to Bedroom 1 on the upper level. No such provision is made for a balcony in the Torrington drawings.
·The rooms on both the lower and upper levels of the Mondo Wynnum Duplex 2 are arranged differently to those in the Torrington. So, for example:
§On the lower level in the Mondo Wynnum Duplex 2 drawings the family and dining areas are on the right side of the drawings, between the garage and the back of the dwelling. Between the garage and the back of the dwelling on the lower level in the Torrington drawings are the stairs, a toilet room and the kitchen.
§On the lower level in the Mondo Wynnum Duplex 2 drawings the lounge room, stairs, laundry and kitchen are on the left side of the drawings. The kitchen in the Mondo Wynnum Duplex 2 drawings is relatively square in shape. The only features on the left side of the lower level in the Torrington drawings are a living and dining area and an outdoor eating area.
§On the upper level in the Mondo Wynnum Duplex 2 drawings the rooms are arranged such that Bedroom 1 is separated from the other two bedrooms by stairs and an area at the top of the stairs. In the Torrington drawings the three bedrooms are grouped around the stairs.
§Further, in the Mondo Wynnum Duplex 2 drawings the bathroom areas are on the right side of the drawings, contrasted with the Torrington drawings where the bathroom areas are located on the left side of the drawings.
These differences also carry over to a comparison between the Torrington drawings and subsequent Mondo drawings including MD1, MD7, MD14 and MD15.
In Tamawood Limited Wilcox and Lindgren JJ observed:
[43] In the well known passage from the judgment of Gibbs CJ (with whom Mason and Brennan JJ agreed) in S W Hart at 472 (referred to by his Honour – see [21] above), the Chief Justice said:
The notion of reproduction, for the purposes of copyright law, involves two elements – resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614, “a sufficient degree of objective similarity between the two works” and “some causal connection between the plaintiffs’ and the defendants’ work”.
(followed in Australia in, for example, Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 (‘Dixon Investments 2’) at 495; LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215 (‘LED’) at 218; Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 (‘Eagle’) at [17]).
In my view there is not a sufficient degree of objective similarity between the two works to support a finding of reproduction of the Mondo Wynnum Duplex 2 drawings (or later Mondo drawings including MD1, MD7, MD 14 and MD15) in the Torrington drawings.
Finally, as I have already noted, there is evidence before the Court concerning the processes in Tamawood for the development of drawings, and the exercise of skill, judgment and labour in their creation by architects employed by Tamawood, including in creation of the Torrington drawings. I note in particular:
·Evidence of Mr Mizikovsky at paragraphs 29-32 of his affidavit sworn 28 July 2011 (“Mizikovsky 28/7/2011 affidavit”) and of Mr Souter-Robertson at paragraph 7 of his affidavit sworn 9 August 2011 (“Souter-Robertson 9/8/2011 affidavit”) where they detail the genesis of the Torrington drawings in 2005.
·Oral evidence of Mr Mizikovsky and Mr Souter-Robertson at the hearing where they explained the exhibits LM28 and PSR2A to their respective affidavits. Specifically, those exhibits were sketches, representing floor plans of the duplex design which would become the Torrington, amended by thick felt pen and the subject of consultative amendment.
·Oral evidence of Mr Speer that “over a period of time” following the initial discussion between Mr Speer, Mr O’Mara and Mr Souter-Robertson, Mr Souter-Robertson produced drawings which were eventually suitable for Habitare’s requirements (for example, transcript 24 October 2011 p 320 ll 21-25, p 321 ll 16-19).
Conclusion
I am not persuaded that there is “some causal connection” between the work of Mondo and the work of Tamawood to support a finding that, through the Torrington drawings, Tamawood has infringed copyright in Mondo’s work. Further, I am not persuaded that the Torrington drawings constitute a substantial reproduction of drawings authored by Mr Sweeney.
In my view, the Tamawood drawings are original artistic works, and copyright in the Tamawood drawings subsists in Tamawood.
It also follows that the cross-claim filed by Mondo against Tamawood on 29 July 2011 fails.
THE SCOPE OF THE LICENCE GRANTED BY TAMAWOOD TO HABITARE AND THE THIRD, FOURTH, SEVENTH AND/OR EIGHTH RESPONDENTS IN RELATION TO THE TAMAWOOD DRAWINGS (ISSUES 4 AND 5)
One of the infringing acts alleged by Tamawood against Habitare and the third, fourth, seventh and eighth respondents in the 3rd FASC is that Habitare used Tamawood drawings for the purpose of seeking development approval from the Brisbane City Council. In relation to the question whether Tamawood granted a licence for the use of the Tamawood drawings for purposes associated with the Brackenridge and Calamvale sites, the case has been argued before the Court on the basis of a coincidence of interest between Habitare and the third, fourth, seventh and eighth respondents. To that extent I will consider the issue of the licence on the basis that it was, or was not, granted to these respondents by Tamawood.
There does not appear to be a dispute that a licence in some form was granted by Tamawood to Habitare and other respondents in relation to the use of the Tamawood drawings. Indeed, Tamawood accepts that it granted a licence at some point in 2005 to Habitare to reproduce the Tamawood plans for development consent from the Brisbane City Council (transcript 18 October 2011 p 19 ll 18-21).
The real issue for determination concerns the scope of that licence. The question has also arisen as to whether the licence was a bare licence, or a contractual licence.
Tamawood’s case is that, in summary, the licence was subject to the clear condition that the use of the Tamawood drawings in connection with the Calamvale and Brackenridge sites was dependent upon Habitare having the intention of using Tamawood as the builder in relation to the developments at those sites. Accordingly, and notwithstanding that Tamawood had provided Habitare with the Tamawood drawings, until Habitare decided to proceed with the developments at Calamvale and Brackenridge using the Tamawood drawings, with Tamawood as the builder, it was not licensed to reproduce copies of the Tamawood drawings for the purposes of development applications to the Brisbane City Council or for any other purpose. Similarly, if having formed that intention Habitare then decided not to proceed in those terms, any licence terminated.
It is clear that this particular aspect of the case of Tamawood relates to both:
·the initial use of the Tamawood drawings (in seeking development approval from the Brisbane City Council); and
·its claims concerning later use of the Tamawood drawings, including in relation to the preparation of the drawings prepared by Mondo for the Calamvale site (which drawings on 11 October 2006 the Brisbane City Council accepted were “generally in accordance with” the development approval dated 7 July 2006) and the Brackenridge site (which drawings were approved by the certifier on 6 December 2006), and the subsequent construction of dwellings at those sites.
In their defences, Habitare and Mondo plead that Tamawood granted a contractual licence to use the Tamawood drawings for the purpose of obtaining development consent from the Brisbane City Council in relation to the Calamvale and Brackenridge sites. They claim further that once the plans were used for development approval, the licence contemplated use of the plans for purposes derived from the development approval, namely the construction of houses based upon the plans contained in the development approval. In particular, Mondo submits that it could hardly be contended that the term of the licence was to the effect that upon revocation Habitare would have no alternative but to commence the process of development approval again.
The facts
Direct evidence relating to the scope of the licence granted by Tamawood to Habitare is slight.
In his affidavit sworn 9 August 2011 Mr Souter-Robertson deposed (relevantly):
6(a)     A meeting was then held in Tamawood’s head office at 1821 Ipswich Road, Rocklea in September, 2005, and Lev, myself, Peter and Shane were all present. During the meeting we had a conversation of or to the following effect:
Peter Speers said:
“We want Tamawood to build a lot of duplexes for us on various sites in Brisbane. What designs are available for such sites. We have seen your brochures advertising many different plans and want to know what you have on offer.”
I then showed to the said Habitare representatives the duplex designs on the Tamawood website, “ These included the Conondale, Hazen and various other designs which did not interest them as those other designs had high gross floor averages.
(b)      Peter or Shane then said:
“We like your standard low-set duplex plan called the “Conondale” because it has the size and shape requirements that we are after.”
Peter then said words to the effect:
“This design is great. However, we really need an ensuite to the main bedroom of the Conondale design.”
Lev then said:
“We can bring bedroom one forward to create more space to allow for an ensuite provision. And we can also move the front door towards bedroom one to satisfy your request.”
(c)       I said:
“We are happy to form a relationship where we will invest our drafting time and our money on the understanding that we be appointed as the builders and we will then work together.”
Peter said:
“I am more than happy with that. So go ahead and prepare the plans for the two projects.”
(d)      I then made a hand drawn changes [sic] to the said plan incorporating the changes which Peter had requested and showed it to Peter and Shane one of whom said words to the effect: “That OK [sic]”. Annexed hereto and marked “PSR 1” is a copy of the said hand-drawn modified Conondale elevation plan. In November, 2005 that modified Conondale plan was renamed the “Denmark”. The Denmark underwent further changes in October, 2006 and was then renamed as the “Dunkeld”. Annexed hereto and marked “PSR2” is a copy of the Dunkeld design floor plan.
(e)       In the same meeting Shane said words to the effect:
“How much is it going to cost to get these plans from you so that we can pass them to our town planner who is going to do the application to Council. Our town planner will be Harvey Property Consultants.”
I said words to the effect:
“We know Harvey Property Consultants. We don’t charge for you using our plans to get the development approval from Council as long as we build the duplexes as soon as the plans are approved and the civil works are underway.”
Shane said:
“Of course Tamawood will be the builder”.
At paragraphs 8, 10, 15 and 16 of his affidavit Mr Souter-Robertson gave evidence concerning conversations he alleged occurred at various times in 2005 and 2006 between himself and Mr Copley, the Habitare in-house lawyer Ms Bernadette Dixon, Mr Speer, and Mr Shane O’Mara, in which each of those Habitare staff indicated that Tamawood would be the builder of the dwellings in accordance with the Tamawood drawings provided to Habitare.
Under cross-examination, Mr Souter-Robertson also said that Tamawood does not “sell” designs – rather Tamawood builds houses for customers in accordance with its designs. In particular, Mr Souter-Robertson said:
All right. Thank you?---So to answer your question, normally we don’t just do plans that sell. If someone comes in and goes, “I like your plan,” we don’t go, “Well, here it is. Off you go.” It’s for us to build. They choose an inclusion range. They choose if they want roof tile or Colorbond. So they get involved, and - - -
Right. So normally – sorry, Mr Dearn, I just want to clarify this in my own mind. So normally you have a customer come in and they won’t say, “I would like to buy the plan,” and walk off?---No.
They will say, “I like your designs. Will you build me that house?”?---Correct.
And therefore you enter into an arrangement with that person to build the house on the land?---Correct.
But that’s not what was happening here, was it? Or was it?---It was the – it was the early – you couldn’t enter into an arrangement because the land was not developed. They were going to use our plans to get DA approval so we could build the homes once they have got the DA approval. Once - we couldn’t sign the contract because we needed to know if there were conditions, if we had to meet the conditions. If they put extra things in there, we needed to find that out.
(transcript 19 October 2012 p 122 ll 24-43)

Tamawood submits that:
·Habitare’s requirements as to the single storey duplex and the double storey duplex as conveyed to Mondo brought about the infringing drawings, and thus Habitare authorised the infringements of Mondo; and
·In requiring the houses to be build in accordance with infringing drawings, Habitare authorised the infringements of Bloomer Constructions.
I note that Habitare accepts that, if Habitare is taken not to have been licensed and Mondo is found not to have created original drawings, handing over the plans to Bloomer Constructions for use in the building phase would amount either to an infringement or authorisation of an infringement.
In relation to Mondo, it is clear that Habitare procured the services of Mondo to prepare plans according to Habitare’s requirements, and that in the course of doing so there was a substantial reproduction by Mondo of the Torrington plans.
In my view both claims of Habitare in relation to the infringements of Mondo and Bloomer Constructions (limited to the Duplex 2/Duplex A drawings) are substantiated.
Mr Bloomer
It is not in dispute that Mr Bloomer is the director of Bloomer Constructions, and that he is the directing mind and will of Bloomer Constructions such that all decisions relating to the conduct of the business of Bloomer Constructions are made by him.
In my view Tamawood has substantiated its case that any infringements of its copyright by Bloomer Constructions were authorised by Mr Bloomer.
Common design: Habitare, the seventh and eighth respondents, and Mondo; and Habitare, and the seventh and eighth respondents
Principles relevant to pursuance of tortious conduct in common design were discussed by Dowsett J in Louis Vuitton. In that case the applicant, a corporation which manufactured luggage, hand bags and other accessories, brought an application against the landlord of and the party responsible for operating, supervising and controlling a market at which goods infringing the applicant’s trademark were sold. The applicant claimed, inter alia, that the infringing conduct was undertaken by the stallholders at the market with the concurrence of the respondents and pursuant to their common design.
Dowsett J observed that a leading case in this context was The Koursk [1924] P 140, and continued:
[148]   I have previously referred to the applicant’s reliance on the decision of the Court of Appeal in The Koursk … However I suspect that it has misconceived that decision. The case arose out of a collision at sea involving the Clan Chisholm, The Koursk and the Itria, leading to the loss of the Itria. The owners of the Itria sued the owners of the other vessels, alleging separate and independent acts of negligence against each of them. The question was whether judgment recovered against the owners of the Clan Chisholm barred a further action by the owners of the “Itria” against the owners of The Koursk. This depended upon whether the two ship owners (of the Clan Chisholm and The Koursk) were joint or several tortfeasors. Bankes LJ adopted the following proposition from Clerk and Lindsell on Torts (7th ed) at p 59:
Persons are said to be joint tortfeasors when their respective shares in the commission of the tort are done in furtherance of a common design.
[149]   Scrutton LJ said (The Koursk [1924] P at 155):
The substantial question in the present case is: What is meant by “joint tortfeasors”? and one way of answering it is: “Is the cause of action against them the same?” Certain classes of persons seem clearly to be “joint tortfeasors”: The agent who commits a tort within the scope of his employment for his principal and the principal; the servant who commits a tort in the course of his employment, and his master; two persons who agree on common action, in the course of, and to further which, one of them commits a tort. These seem clearly joint tortfeasor; there is one tort committed by one of them on behalf of, or in concert with another.
[150]   The applicant fastens on the proposition concerning two persons who agree on common action in the course of which one commits a tort, submitting that the present case fits that description. However that observation by Scrutton LJ must be read in the context of his Lordship’s later remarks (The Koursk [1924] P at 156) where he referred with approval to the statement in Clerk and Lindsall (to which Bankes LJ had referred), that:
“Persons are said to be joint tortfeasors when their respective shares in the commission of the tort are done in furtherance of a common design” ... “But mere similarity of design on the part of independent actors, causing independent damage, is not enough; there must be concerted action to a common end.” Still more so when there is not even similarity of design, but independent negligence accidentally resulting in one damage.
[151]   At 159 Sargant LJ adopted the same passage.
His Honour referred to Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574, in particular comments of the majority (Brennan CJ, Dawson and Toohey JJ) at 580-581:
The difference between joint tortfeasors and several tortfeasors is that the former are responsible for the same tort whereas the latter are responsible only for the same damage ... . As was said in The “Koursk” ..., for there to be joint tortfeasors “there must be a concurrence in the act or acts causing damage, not merely a co-incidence of separate acts which by their conjoined effect cause damage”. Principal and agent may be joint tortfeasors where the agent commits a tort on behalf of the principal, as master and servant may be where the servant commits a tort in the course of employment. Persons who breach a joint duty may also be joint tortfeasors. Otherwise, to constitute joint tortfeasors two or more persons must act in concert in committing the tort.
Materially, Dowsett J concluded in summary that:
·control does not, itself, imply a common purpose, but may be relevant in determining whether a common purpose existed at the relevant time;
·in Louis Vuitton:
othe respondents did not act in common with any of the stallholders in the actions which constituted infringement of the applicant’s copyrights;
osuch infringements were not committed in the execution of any common purpose shared with the respondents;
othe respondents’ purpose was to conduct an efficient and profitable market and the purpose of each stallholder was the successful conduct of his or her stall. There was no common purpose.
In this case Tamawood submits in summary that:
·All the Habitare parties and Mondo participated with reckless indifference to Tamawood’s copyright.
·Despite notice of Tamawood’s previous involvement, Mondo never contacted Tamawood to ascertain whether its plans could be used or whether there were any “issues” between Habitare and Tamawood.
·Habitare never informed Tamawood of the development consents, or the appointments of Caprice Group, Mondo or Bloomer Constructions.
·Habitare never approached Tamawood to ascertain what it could or could not do in relation to the use of Tamawood’s plans.
·The essential element in relation to the question of joint tortfeasor circumstances is control. Mondo had the opportunity either not to licence, or to terminate its licence of, the infringing plans at any time. It therefore controlled their use.
(I understand that Tamawood does not claim that Bloomer Constructions was party to any common design with the other corporate respondents relating to infringement of Tamawood’s copyright, and, as I noted earlier, Tamawood does not press this claim against Mr Peter O’Mara and Mr Johnson.)
The material before the Court supports a finding that the sixth, seventh and eighth respondents, despite being separate corporate entities, are related corporations in light of their common shareholdings and directorships. It is also apparent that the seventh and eighth respondents acquiesced to the management of the Calamvale and Brackenridge projects by Habitare, including all acts which constituted infringement of copyright. The primary engagement of the seventh and eighth respondents appears to have been execution of various contracts in furtherance of the development of the Calamvale and Brackenridge sites.
The purpose of the seventh and eighth respondents as the owners of the Calamvale and Brackenridge development sites appeared to be the same as those of Habitare – in summary the successful and profitable development of those sites by the construction of duplexes in accordance with architecturally drawn plans for which development approval was given by the Brisbane City Council, and the subsequent sale of those duplexes. To that extent I am persuaded that acts of Habitare and the seventh and eighth respondents were done in furtherance of a common design.
I am not persuaded, however, that acts of Mondo were performed in furtherance of a common design with Habitare or the seventh or eighth respondents. In particular:
·I am not persuaded that the failure of Mondo to make enquiries of Tamawood to ascertain whether there were any outstanding issues from Tamawood’s perspective in relation to the development of the Calamvale and Brackenridge sites supports a finding of common design. Rather, I accept Mondo’s submission that Mondo and Tamawood were in competition, and any approach between competitors would potentially have created new legal problems.
·Mondo was not under the control of any of Habitare parties, nor were they under Mondo’s control.
·I do not consider that Mondo’s purpose was the same as those of the Habitare or the seventh or eighth respondents. I consider that Mondo’s primary purpose was to produce architectural plans in conformance with the needs of its client, Habitare. Clearly, this was far removed from the purpose of the Habitare parties in relation to the successful and profitable development of the Calamvale and Brackenridge sites.
·At best in this context, the Court can draw an inference of co-incidence of separate acts by Mondo and Habitare which by their conjoined effect caused damage. As was explained in Thompson such co-incidence does not warrant a finding of common design.
INNOCENT INFRINGEMENT PURSUANT TO SECTION 115(3) OF THE COPYRIGHT ACT (ISSUE 13)
It does not appear to be in dispute that Bloomer Constructions has pleaded the defence of innocent infringement of Tamawood’s copyright under s 115(3). As I have already noted, in constructing the buildings in accordance with the Duplex 2/Duplex A drawings, Bloomer Constructions infringed Tamawood’s copyright in the Torrington drawings. A key issue is whether Bloomer Constructions can substantiate a defence of innocent infringement under s 115(3) of the Copyright Act. Tamawood submits that Bloomer Constructions has not done so.
In relation to Mondo, questions arise whether Mondo has similarly pleaded s 115(3) and, if it has, whether that defence has been substantiated. Tamawood submits that the answer to both questions is in the negative.
Section 115(3)
Section 115(3) of the Copyright Act provides:
(3) Where, in an action for infringement of copyright, it is established that an infringement was committed but it is also established that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright, the plaintiff is not entitled under this section to any damages against the defendant in respect of the infringement, but is entitled to an account of profits in respect of the infringement whether any other relief is granted under this section or not.
Section 115(3) provides for relief in the form of an account of profits only in circumstances of innocent infringement. It has been the subject of considerable previous judicial analysis (I note in particular the list of cases identified by Gordon J in Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (No 2) [2008] FCA 1493 at [10]).
In Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 the Full Court of the Federal Court observed at [52] that:
To obtain the protection of s 115(3) a defendant must establish (i) an active subjective lack of awareness that the act constituting the infringement was an infringement of the copyright, and (ii) that, objectively considered, he or she had no reasonable grounds for suspecting that the act constituted an infringement.
Similarly in Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 61 FCR 479 Burchett and Tamberlin JJ said at 480:
But in general the question is not whether the defendant knew the identity of the owner of the copyright, but whether the defendant has established a lack of awareness, and of reasonable grounds for suspecting, that the relevant act was an infringement of the copyright which was infringed, in whomsoever that copyright might be vested.
(Emphasis added.)
A deliberate choice not to inquire, in such circumstances, may enable a further finding, since it may suggest a mind in which real suspicion resided: Golden Editions at 488.
Bloomer Constructions
Tamawood submits that Bloomer Constructions has not made out a defence under s 115(3) of the Copyright Act because, in summary:
·Bloomer Constructions had clear grounds for suspecting that copyright in Tamawood drawings was being infringed in connection with the construction of duplexes at the Calamvale and Brackenridge sites, in that it had access to the development approvals which recorded the house plans on which the approvals were based (namely, Tamawood drawings).
·It is not in dispute that the terms of the development approvals required that the documents containing conditions of approval and all plans forming part of the approval needed to be kept on site at all times and given to all contractors. This means that Bloomer Constructions should have been given those documents and in turn provided the documents to its own contractors.
In my view, however, Bloomer Constructions has substantiated its defence of innocent infringement of copyright under s 115(3) in respect of the Tamawood drawings. I so find because:
·Bloomer Constructions had no involvement in the original process whereby development approval was obtained in relation to the Calamvale and Brackenridge sites.
·I am satisfied that Bloomer Constructions (and in particular Mr Bloomer) was unaware of any potential infringement of Tamawood’s copyright in relation to the plans prepared by Mondo (or Caprice Group) and which were the basis of the construction of dwellings at the Calamvale and Brackenridge sites.
·There was no reference to Tamawood on the Mondo (or Caprice Group) plans relating to the Calamvale and Brackenridge sites.
·While it is clear from the development approvals that Habitare had engaged Tamawood earlier in the development process, this does not, of itself, create grounds for suspicion in a builder that subsequent plans drawn by reputable firms (Caprice Group and Mondo) had infringed copyright in Tamawood plans. The Court is able, in my view, to draw the inference that the engagement of successive architects during a development process is not in itself unusual or controversial. Certainly in cross-examination Mr Sweeney commented on situations where clients, who had already consulted other architects, sought to consult him (Sweeney 20/9/2011 affidavit paras 25-26). Similarly, creation by third parties of designs “generally in accordance” with already approved plans prepared by someone else was not cause for comment as unusual by any expert in these proceedings.
·Indeed, at the time of engagement of Bloomer Constructions it appears that civil work had already been undertaken at the Brackenridge site by Caprice Group. In my view a reasonable inference capable of being drawn from this fact by Mr Bloomer and Bloomer Constructions was that Caprice Group, if not the original architect in relation to at least some of the plans, had provided new plans to Habitare for development purposes superseding plans originally provided by Tamawood.
Mondo
In its written submissions Mondo submits that issues relevant to the claim against Mondo raise the question of innocent infringement by Mondo.
Tamawood submits that Mondo has not pleaded this defence. In my view this submission is correct. I can identify no aspect of Mondo’s second further amended defence which raises innocent infringement in accordance with s 115(3) of the Copyright Act. It follows that I do not accept Mondo’s submission that the question of innocent infringement is relevant in relation to Mondo’s defence against claims by Tamawood.
WHETHER CIRCUMSTANCES ATTRACTED THE OPERATION OF SECTION 115(4) OF THE COPYRIGHT ACT (ISSUE 14)
In this case Tamawood has sought an indication as to whether threshold conditions for the operation of s 115(4) have been achieved in respect of one or more respondents.
Section 115(4) of the Copyright Act provides as follows:
(4) Where, in an action under this section:
(a) an infringement of copyright is established; and
(b) the court is satisfied that it is proper to do so, having regard to:
(i) the flagrancy of the infringement; and
(ia) the need to deter similar infringements of copyright; and
(ib) the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and
(ii) whether the infringement involved the conversion of a work or other subject matter from hardcopy or analog form into a digital or other electronic machine readable form; and
(iii) any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv) all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
The section entitles the copyright owner to damages for “flagrant” infringement. In considering s 115(4) in Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763; [2008] FCA 746, Besanko J observed:
[19] The meaning of “the flagrancy of the infringement” has been described in various ways. In Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 Brightman J referred to it as “scandalous conduct, deceit and such like; it includes deliberate and calculated copyright infringement”; in Prior v Lansdowne Press Pty Ltd [1977] VR 65 at 70, Gowans J (at 70) referred to it as a “calculated disregard of the plaintiff’s rights, or cynical pursuit of benefit”; and in Raben Footwear Pty Ltd v Polygram Records Inc (1997) 75 FCR 88 at 103 flagrancy was said to connote conduct which could probably be described as “glaring, notorious, scandalous” or “blatant”. In Polygram at 461-462 Lockhart J said that flagrancy did not include mere mistakes or carelessness and that if the infringer mistakenly believed that he or she owned the relevant copyright , or acted in the bona fide belief that no copyright subsisted in the plaintiff’s work then the conduct was not flagrant.
In summary, Tamawood submits:
·In relation to Habitare:
oHabitare sought to “cut corners” in relation to the development of the Calamvale and Brackenridge sites because it was under financial pressure to progress the developments;
oin the words of Mr Cobden SC for Tamawood, Habitare sought “the fig leaf of Mondo’s suggestions that they will be able to redraw everything in a clean room environment”.
·In relation to Mondo:
oMondo plainly failed to take sufficient steps to satisfy itself in relation to the copyright in the Tamawood plans and whether Habitare had extricated itself from any arrangement with Tamawood;
oMondo stubbornly clung to a view, in particular concerning Tamawood’s copyright in the Torrington drawings, and persisted with its engagement in the projects.

Mr Cobden SC conceded that Tamawood’s case for additional damages against Bloomer Constructions was weaker than against the other respondents.
In my view a case for additional damages has not been made out as against Habitare, Mondo or Bloomer Constructions.
In relation to Habitare, I accept Mr Musgrave’s submission that the Habitare executives, in particular Mr Speer, having perceived there to be a copyright issue concerning the Tamawood drawings, sought to address that issue by arranging for new plans to be drawn. While there is also evidence that Habitare had indicated to Mondo that Habitare had resolved any outstanding issues with Tamawood concerning the Tamawood drawings and the project sites (when in fact such resolution had not occurred), I am not persuaded that the facts support a finding of flagrant infringement of copyright.
In relation to Mondo, I consider its actions were predicated upon at least two false assumptions, namely:
·its belief that Tamawood had in fact used Mondo’s plans (particularly in relation to the Torrington drawings); and
·its belief that Habitare had resolved outstanding issues with Tamawood.
While these issues could possibly have been, in turn, resolved by actions and inquiries from Mondo, such a conclusion is speculative. I am not persuaded that the events involving Mondo are supportive of a finding of a calculated disregard of Tamawood’s rights by Mondo, or scandalous or deceitful conduct.
Finally, in light of my finding that Bloomer Constructions has substantiated a defence of innocent infringement under s 115(4) of the Copyright Act, there is no scope for Tamawood’s claim of additional damages against Bloomer Constructions.
CLAIM UNDER THE TRADE PRACTICES ACT 1974 (CTH) (ISSUES 15, 16, 17, 18 AND 19)
At all material times s 52 of the Trade Practices Act 1974 (Cth) then in force provided as follows:
52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).
In summary, Tamawood claims that:
·the conduct of Bloomer Constructions, Habitare, Eight March and First Priority Developments was misleading and deceptive within the meaning of s 52;
·Habitare, Eight March and/or First Priority impliedly represented to the market that they were entitled to exploit the copyright in the plans from which dwellings were built by offering the dwellings at Calamvale and Brackenridge for sale;
·if the Court finds that its copyright has been infringed by the building of the houses then it will follow that the implied representation was misleading and deceptive or likely to mislead or deceive in contravention of s 52; and
·Mr Peter O’Mara, Mr Johnson and Mr Bloomer, or any of them, held the necessary state of mind to be liable under s 75B of the Trade Practices Act for any such contravention.
Tamawood seeks damages pursuant to s 82 of the Trade Practices Act.
At all material times s 75B provided that a reference to a person being involved in a contravention of, inter alia, s 52 included circumstances where a person:
(a) has aided, abetted, counselled or procured the contravention;
(b) has induced, whether by threats or promises or otherwise, the contravention;
(c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or
(d) has conspired with others to effect the contravention.
Tamawood does not submit that Mr Bloomer had sufficient knowledge to establish accessorial liability pursuant to the Trade Practices Act.
In my view Tamawood’s claims relating to contravention of the Trade Practices Act have not been substantiated.
First, as observed by Gibbs CJ in Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191 at 197 the liability imposed by s 52 in conjunction with s 82 need not involve any infringement of copyright. A finding of infringement of copyright in relation to Tamawood drawings by the corporate respondents to these proceedings does not, as the applicant seems to submit, automatically lead to a finding of misleading representation by those respondents in contravention of s 52.
Second, and more pertinently, I am not persuaded that, in offering the dwellings at Calamvale and Brackenridge for sale to the public, Bloomer Constructions, Habitare, Eight March and First Priority Developments impliedly represented that they owned all rights and privileges in any copyright in the house plans used to build the houses. I form this view because:
·Evidence before the Court is limited in relation to the manner in which Habitare developed the Calamvale and Brackenridge sites. However it appears that the sites were envisaged as housing estates from inception (before Tamawood was asked to produce plans), with duplexes intended to be constructed on the sites to maximise the dwelling occupancy of those sites. Mr Speer gave evidence in cross-examination of his early discussions with town planner Mr Ernie Harvey in the following terms:
All right. Now, let’s just think about site plans for a moment. Can you just explain to her Honour the difference between a site plan and a floor plan, if I can put it that way? Sorry, a site plan is the overall block of land, and which if we were doing 40 or 47 townhouses, we would position these townhouses throughout the block, and that’s the site plan. Whereas the floor plan is the individual floor plans for the individual units.
(Transcript 24 October 2011 p 307 ll 25-30)
And later:
MR FERRETT: Did you – can you tell us about occasions on which you observed Mr Harvey’s work, as opposed to what you understand, for example, from what Mr Harvey told you?---Yes. We had a meeting in Ernie’s office one morning where he had put together – pasted a floor – a site plan utilising Tamawood’s plans.
All right. So just can you give her Honour a bit of detail about what that pasted-up plan involved?---Well, it involved taking a scale drawing of the site, and it involved taking – and if there were 40 - 40 scale drawings of the little houses, and pasting those all over the site, with the roads drawn in, and whatever other facilities were included. That’s how it was presented to us initially, and it seemed to work, and from there it was drawn up more exactly.
(Transcript 24 October 2011 p 308 ll 4-13)
Site plans for both the Calamvale and Brackenridge sites developed by Mr Harvey for Habitare are in evidence before the Court:
·It is clear that site plans were lodged with the Brisbane City Council in the application for development approval (cf evidence of Mr Shane O’Mara transcript 25 October 2011 p 398 ll 4-13).
·Similarly in evidence before the Court is the “generally in accordance with” site plan for Calamvale developed by Mondo, which features, inter alia, representations of duplex dwellings, common property, and roads through the housing estate.
·To that extent it is clear that Habitare decided which dwellings were to be constructed on the Calamvale and Brackenridge sites by Bloomer Constructions, rather than individual customers of Habitare (cf evidence of Mr Shane O’Mara transcript 25 October 2011 p 426 ll 35-42).
·It is not in dispute that Habitare, Eight March and First Priority Developments were in the business of property development. It is not controversial to infer that, in developing the Calamvale and Brackenridge projects, Habitare, Eight March and First Priority Developments intended to sell dwellings at those sites, to purchasers, for financial gain.
I accept the submissions of Mr Ferrett for Habitare that it does not flow naturally from the act of selling a dwelling that the vendor represents that it owns the copyright in the design of the dwelling, and that something more is required to raise an implied representation of that nature. There is no evidence before me as to whether Habitare sold completed dwellings or dwellings at varying stages of construction, however it appears that these were projects whereby dwellings were being built according to the approved drawings and marketed in that manner. These were not projects whereby Habitare consulted prospective purchasers to gain input into the design of individual dwellings, to customise the dwelling to the purchaser’s particular needs. (In this respect, the process appears distinguishable from circumstances where a particular customer may come to a developer with specific needs in mind, and the developer produces plans to suit that customer. Indeed, Mr Mizikovsky gave evidence that customers sometimes seek modifications of Tamawood designs to suit themselves, and that Tamawood can accommodate such requirements to amend the design (transcript 20 October 2011 p 158 ll 11-21).) Accordingly, it follows that the dwellings were being sold to purchasers by the Habitare corporate respondents, and that any representations as to ownership related to ownership of the dwellings, not copyright in the designs of the dwellings.
Third, s 82 requires, inter alia, that the claimant for damages has suffered loss or damage by conduct of another person that was done in contravention of s 52 of that Act. In Wardley Australia Ltd v State of Western Australia (1992) 175 CLR 514 at 525 the plurality observed that s 82 contemplates (materially):
·misrepresentation in contravention of s 52 of the Trade Practices Act;
·acts done by the representee in reliance upon the misrepresentation, such that the element of causation is satisfied;
·loss resulting from those acts.
I accept the submission of Mr Ferrett for Habitare, Eight March and First Priority Developments that no evidence of “loss” has been adduced by Tamawood within the meaning of s 82 of the Trade Practices Act, in relation to any alleged misrepresentation made by those respondents concerning copyright in the plans of houses constructed at the Calamvale and Brackenridge sites.
It also follows that no liability can be attributed to Mr O’Mara, Mr Johnson or Mr Bloomer in relation to contravention of the Trade Practices Act as alleged.
CROSS-CLAIMS
I have already stated that the first cross-claim filed on 29 July 2011 by Mondo against Tamawood was not substantiated.
In contrast, I am satisfied that the cross-claim filed on 15 August 2011 by Mondo against Habitare, Mr Speer and Mr Shane O’Mara has been substantiated.
Mondo’s cross-claim against Habitare is in contract and for contravention of s 52 of the Trade Practices Act, and against Mr Speer and Mr Shane O’Mara for being knowingly concerned in the contravention of the Trade Practices Act. It revolves around the contract of retainer between Mondo and Habitare entered into on or about 21 June 2006.
It is clear that, in discussing the engagement of Mondo proposed by Habitare on 21 June 2006, Mr Sweeney was concerned that Habitare had resolved all matters with Tamawood concerning Habitare proceeding with the Calamvale and Brackenridge projects using new architects and builders. Mr Speer and Mr Shane O’Mara had clearly informed Mr Sweeney that Tamawood had earlier prepared plans for those sites. Mr Sweeney was insistent, both in his affidavit evidence and in cross examination, that he had specifically asked Mr Speer and Mr O’Mara about Mondo preparing plans “generally in accordance” with the plans already approved. In cross-examination Mr Speer and Mr O’Mara conceded that Mr Sweeney had raised this issue with them, and that they had assured him that there was no problem.
Habitare submits that it is inherently unlikely that Mr Sweeney, knowing Mr Mizikovsky’s reputation for “litigiousness” (cf transcript 26 October 2011 p 537 ll 21-30), would have blindly accepted Habitare’s assurances that there was “no problem” with Habitare. However I do not accept this. Indeed, I consider that there was every reason for Mr Sweeney to accept Habitare’s assurances. In particular:
·It is clear that, inter alia, Mr Sweeney, Mr Mizikovsky, Mr Speer, Mr Shane O’Mara and Mr Souter-Robertson had all known each other for some time, and had sometimes worked in different combinations on various projects. I consider it reasonable to infer that, in the course of their business relationship, Mr Sweeney would be prepared to accept the assurances of Mr Speer and Mr Shane O’Mara concerning Habitare’s relationship with Tamawood.
·Mr Sweeney deposed that Mr Speer had said that Habitare had several other jobs with Tamawood at the relevant time. A reasonable inference for Mr Sweeney to draw was that, from a commercial perspective and as compensation to Tamawood for not proceeding with Tamawood in relation to the Calamvale and Brackenridge projects, Habitare had made alternative building arrangements with Tamawood. In that light, it followed that it would have been reasonable for Mr Sweeney to accept that Tamawood would not object to Habitare engaging other contractors to progress development of the Calamvale and Brackenridge sites notwithstanding that the development approval of those sites had been sought and obtained on the basis of Tamawood plans.
Mr Sweeney plainly sought to avoid infringing the copyright subsisting in Tamawood in relation to the drawings which had received development approval. I have already found that Mondo was only partly successful in this regard, and that Mondo’s Duplex 2/Duplex A drawings do infringe Tamawood’s Torrington drawings. However I am also satisfied that Mondo would never have entered a contract with Habitare to produce drawings for the developments of the Calamvale and Brackenridge sites had Mr Speer and Mr O’Mara, on behalf of Habitare, not assured Mr Sweeney that there were no outstanding issues with Tamawood.
In Parkdale at page 198 Gibbs CJ explained the meaning of “misleading and deceptive” for the purposes of s 52 of the Trade Practices Act as follows:
The words of s. 52 require the Court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive. Those words are on any view tautologous. One meaning which the words “mislead” and “deceive” share in common is “to lead into error”. If the word “deceptive” in s. 52 stood alone, it would be a question whether it was used in a bad sense, with a connotation of craft or overreaching, but “misleading” carries no such flavour, and the use of that word appears to render “deceptive” redundant. The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone.
I am satisfied that, in informing Mr Sweeney on 21 June 2006 that there were no outstanding issues between Habitare and Tamawood concerning the use of the Tamawood drawings, that this was a representation which was misleading and deceptive within the meaning of s 52.
I am also satisfied that Mondo’s case has been made out against Mr Speer and Mr Shane O’Mara. I am not persuaded that Mr Speer and Mr Shane O’Mara did not appreciate the misleading nature of the representation they had made to Mr Sweeney on 21 June 2006. While Mr Speer claimed that, in his view, there actually were no outstanding issues between Tamawood and Habitare on 21 June 2006 when the meeting with Mr Sweeney took place, in my view this claim was based on an optimistic (and baseless) appraisal of the facts existing at that time rather than a realistic assessment of the history of negotiations between Tamawood and Habitare. Certainly there was no evidence from Mr Souter-Robertson or Mr Mizikovsky to support an inference that any copyright subsisting in Tamawood in respect of the drawings the subject of development approval had been, for example, waived, and certainly no foundation upon which Mr Speer or Mr Shane O’Mara could reach such a conclusion. In my view, Mr Speer and Mr Shane O’Mara were persons who knew of or were involved in the making of the representations by Habitare, or alternatively were persons knowingly concerned in the conduct of Habitare within the meaning of s 75B of the Trade Practices Act.
Finally, I am satisfied that Mondo will sustain loss as a result of these proceedings, and my findings concerning the infringement of Tamawood’s copyright by Mondo.
In relation to the question whether Habitare acted in breach of its contract of retainer with Mondo, entered on or about 21 June 2006, I am also satisfied that:
·Mondo agreed to prepare drawings which were generally in accordance with the development approval, and to substitute its own drawings for the Tamawood drawings in relation to that development approval;
·Mondo would not have entered into the contract with Habitare had Mr Sweeney not been assured by Habitare personnel that there were no outstanding issues between Tamawood and Habitare;
·There clearly remained outstanding issues between Tamawood and Habitare in relation to the work undertaken by Tamawood prior to that date in connection with the preparation and use of Tamawood drawings for the Calamvale and Brackenridge sites; and
·To that extent, Habitare misrepresented the position concerning its relationship with Tamawood to Mondo, and Mondo was induced to enter a contract with Habitare on that basis.
Accordingly, I consider that Mondo’s claim of breach of contract by Habitare has been substantiated.
Orders
I will direct that, at a date to be fixed, Counsel bring in signed minutes of orders to give effect to the foregoing reasons. The orders should include declarations as to my findings on liability and appropriate directions for the next stage of the proceedings.
At this stage I order costs to be reserved, and that there be liberty to apply on three days’ notice.

I certify that the preceding three hundred and three (303) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier.
Associate:
Dated: 7 May 2013

Citation:		Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) (No 3) [2013] FCA 410
Parties:		TAMAWOOD LIMITED (ACN 010 954 499) v HABITARE DEVELOPMENTS PTY LTD (ADMINISTRATORS APPOINTED) (RECEIVERS AND MANAGERS APPOINTED) (ACN 122 935 497), BLOOMER CONSTRUCTIONS (QLD) PTY LTD (ACN 071 344 100), PETER FREDERICK O'MARA, DAVID GAVIN JOHNSON, WAYNE NORMAN BLOOMER, HABITARE PTY LTD (ACN 098 209 495), EIGHT MARCH PTY LTD (ACN 099 315 787) (AS TRUSTEE OF THE EIGHT MARCH DISCRETIONARY TRUST), FIRST PRIORITY DEVELOPMENTS PTY LTD (ACN 098 329 465) (AS TRUSTEE OF THE FIRST PRIORITY DISCRETIONARY TRUST) and MONDO ARCHITECTS PTY LTD (ACN 085 992 990)
File number:		NSD 2504 of 2007
Judge:		COLLIER J
Date of judgment:		7 May 2013
Catchwords:		COPYRIGHT – copyright in plans and drawings of project homes – plans for project homes granted development approval – whether licence granted to developer to use approved plans once relationship broke down with copyright owner – whether licence granted to developer to use plans for purposes of development approval – whether licence bare or contractual – scope of licence – whether revocable at will – no fee charged for design of plans on understanding that copyright owner would be builder of project homes – whether infringement of copyright – whether reproduction of plans in whole or substantial part – whether sufficient degree of objective similarity and causal connection between two sets of development plans – quality rather than quantity of similarity – nature of quality which makes something a “substantial part” of copyright work in suit – expert evidence regarding similarity – whether causal connection between plans such that copying has occurred – tendency of project home plans to exhibit similar design features – purpose to make plans “substantially in accordance” with plans previously given development approval by city council – whether inference of copying – whether directors authorised or procured infringement of companies – question of control implicit in authorisation – whether directors had knowledge of or authorised critical decisions regarding infringement taken by employees – whether companies acting pursuant to common design – concurrence in acts causing damage rather than separate acts which by conjoined effect cause damage – purposes of profitable development of project homes and producing architectural plans meeting needs of client – whether innocent infringement of copyright by builder – whether reasonable grounds for suspecting plans infringed copyright – whether put on inquiry – whether damages for flagrant infringement TRADE PRACTICES – Trade Practices Act 1974 (Cth) – whether misleading or deceptive conduct – infringement of copyright insufficient – representation of ownership in housing estates rather than ownership in housing estate plans – whether knowingly concerned in misrepresentation – whether loss or damage suffered
Legislation:		Copyright Act 1968 (Cth) Pt III Div 1, ss 13(1), 15, 21(3), 35(6), 36, 37, 115, 116, 196 Corporations Act 2001 (Cth) s 588G Trade Practices Act 1974 (Cth) ss 52, 53, 75B, 82 Conveyancing Act 1919 (NSW) s 66G Integrated Planning Act 1997 (Qld)
Cases cited:		Acohs Pty Ltd v RA Bashford Consulting Pty Ltd (1997) 144 ALR 528 cited Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 cited Australasian Performing Right Association v Tolbush Pty Limited [1986] 2 Qd R 146 cited Australasian Performing Right Association Limited v Jain (1990) 26 FCR 53 cited Autodesk Inc. v. Dyason (1992) 173 CLR 330 cited Banks v Transport Regulation Board (Vic) (1968) 119 CLR 222 cited Barrett Property Group v Metricon Homes (2007) 74 IPR 52; [2007] FCA 1509 cited Beck v Montana Constructions Pty Ltd [1964-5] NSWR 229 cited Blair v Osborne & Tomkins [1971] 2 QB 78 cited Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46 cited Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd (2006) 229 CLR 577 cited Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 cited Cowell v Rosehill Racecourse Co Ltd (1937) 56 CLR 605 cited Data Access Corporation v Powerflex Services (1999) 202 CLR 1 cited Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 cited Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763; [2008] FCA 746 cited Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 61 FCR 479 cited Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 cited Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd (2008) 77 IPR 523; [2008] FCA 912 cited Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 cited Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd [1990] 1 Qd R 231 cited Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (No 2) [2008] FCA 1493 cited Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 cited Louis Vuitton Malletier SA v Toea Pty Ltd (2006) 156 FCR 158 cited Martin Engineering Company v Nicaro Holdings Pty Limited (1991) 100 ALR 358 cited Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 cited Microsoft Corporation v PC Club Australia Pty Ltd (2005) 148 FCR 310 cited Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 cited Motor Group Australia Pty Ltd v Owners Corporation Strata Plan 64622 [2004] NSWSC 633 cited Murray (Inspector of Taxes) v Imperial Chemical Industries Ltd [1967] Ch 1038 cited Ng v Clyde Securities Ltd [1976] 1 NSWLR 443 cited Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448 cited Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191 cited Parramatta Design & Developments Pty Ltd v Concrete Pty Ltd (2005) 144 FCR 264 cited Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 cited Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 cited Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd (2012) 95 IPR 64; [2012] FCAFC 4 cited Sheldon & Hammond Pty Ltd v Metrokane Inc (2004) 135 FCR 34 cited SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 cited Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354; [2002] FCAFC 157 cited Tamawood Limited v Henley Arch Pty Ltd (2004) 61 IPR 378; [2004] FCAFC 78 cited Taplin v Florence (1851) 10 CB 744; (1851) 138 ER 294 cited Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 cited Trumpet Software Pty Ltd v Ozemail Pty Ltd (1996) 34 IPR 481; [1996] FCA 560 cited University of New South Wales v Moorhouse (1975) 133 CLR 1 cited Wah Tat Bank Limited v Chan Cheng Kum [1975] AC 507 cited Wardley Australia Ltd v State of Western Australia (1992) 175 CLR 514 cited WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274 cited
Sainsbury M, “Databases and Copyright – Finding the Match” (2001) 3(1) Digital Technology Law Journal 3
Dates of hearing:	18-21, 24-28 October 2011 and 16 November 2011
Place:	Brisbane
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	303
Counsel for the Applicant:	Mr R Cobden SC with Mr R Alkadamani
Solicitor for the Applicant:	Castrission & Co
Counsel for the First Respondent:	The First Respondent did not appear
Counsel for the Second and Fifth Respondents:	Mr JG Dearn
Solicitor for the Second and Fifth Respondents:	Romans & Romans Lawyers
Counsel for the Third, Fourth, Sixth, Seventh and Eighth Respondents:	Mr NH Ferrett
Solicitor for the Third, Fourth, Sixth, Seventh and Eighth Respondents:	B2B Lawyers
Counsel for the Ninth Respondent:	Mr AM Musgrave
Solicitor for the Ninth Respondent:	Barry.Nilsson Lawyers

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	NSD 2504 of 2007

JUDGE:	COLLIER J
DATE OF ORDER:	7 MAY 2013
WHERE MADE:	BRISBANE

JUDGE:	COLLIER J
DATE:	7 MAY 2013
PLACE:	BRISBANE