Tolmark Homes Pty Ltd v Paul - [1999] FCA 1355

FEDERAL COURT OF AUSTRALIA
Tolmark Homes Pty Ltd v Paul [1999] FCA 1355
INTELLECTUAL PROPERTY – copyright – infringement – floor plans of project home – ownership of copyright – reproduction – authorisation – damages for infringement.
Copyright Act 1968, ss 13(2), 14(1), 36(1), 115(3), 127
Lend Lease Homes v Warrigal Homes Pty Ltd [1970] 3 NSWR 265, followed
LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447, considered
Collier Constructions Pty Ltd v Foskett Pty Ltd [1991] 20 IPR 666, considered
LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215, considered
University of New South Wales v Moorehouse (1975) 133 CLR 1, applied
Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1, cited
WEA International Inc. v Hanimex Corporation Ltd (1987) 17 FCR 274, cited
Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 65 FCR 399, cited
Golden Editions Pty Ltd v Polygram Pty Ltd (1996) 61 FCR 479, considered
Chabot v Davies [1936] 3 All ER 221, followed
Stovin-Bradford v Volpoint Ltd [1971] 1 Ch 1007, followed
Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445, followed
Australasian Performing Right Association Ltd v Grebo Trading Co Pty Ltd (1978) 23 ACTR 30, followed
New England Homes v Moore (1998) 82 FCR 500, cited
Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472, cited
TOLMARK HOMES PTY LTD V DEBRA ANNE PAUL
NG 242 OF 1998
JUDGE:        BEAUMONT J.
DATE:          30 SEPTEMBER 1999
PLACE:        SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 242 OF 1998

BETWEEN:

TOLMARK HOMES PTY LTD
Applicant

AND:

DEBRA ANNE PAUL
Respondent

JUDGE:

BEAUMONT J

DATE OF ORDER:

30 SEPTEMBER 2999

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.Judgment for the applicant against the respondent in the sum of $3,300, together with interest in the sum of $1,200.

2.Costs reserved.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 242 OF 1998

BETWEEN:

TOLMARK HOMES PTY LTD
Applicant

AND:

DEBRA ANNE PAUL
Respondent

JUDGE:

BEAUMONT J

DATE:

30 SEPTEMBER 1999

PLACE:

SYDNEY

REASONS FOR JUDGMENT
BEAUMONT J:
INTRODUCTION

Tolmark Homes Pty Ltd (“the applicant”) is a project homebuilder and developer, operating in the Wyong, Central Coast and Newcastle districts of New South Wales. The applicant’s usual practice is to design and prepare standard plans for project homes, and to build those homes for clients. On occasion the plans are varied for clients who have particular requirements. The applicant does not provide plans for purposes other than building a Tolmark project home.
As part of the applicant’s operations it designed a project home known as the Tolmark “Chisholm” design. The Chisholm design contained three bedrooms, a bathroom, a family room, a lounge room, a kitchen,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Tolmark Homes Pty Ltd v Paul and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1999] FCA 1355
Decision Date: 30 SEPTEMBER 1999

CaseChat Overview and Summary

Tolmark Homes Pty Ltd brought an action against Paul, alleging infringement of copyright in a house design and seeking damages. The dispute centered around whether Paul had copied Tolmark Homes' floor plan for a house design and used it without permission. The court had to decide who owned the copyright in the floor plan and whether Paul had infringed on that copyright. Additionally, the court needed to determine the appropriate measure of damages if copyright infringement was established.

The court found that Tolmark Homes owned the copyright in the floor plan, as it was based on the original idea exemplified in the plans drawn by Mr. Sneesby. The court rejected the respondent's argument that Ms. Johnson, the draughtsperson, owned the copyright. The court also concluded that Paul had infringed on Tolmark Homes' copyright by using the floor plan in her building agreement with Jones Homes. The court awarded Tolmark Homes damages in the form of a licence fee for the use of the plan, which it determined to be $3,300, along with interest of $1,200. The court reserved costs for further consideration.

Orders

Orders of the court

1. Judgment for the applicant against the respondent in the sum of $3,300, together with interest in the sum of $1,200.

2. Costs reserved.

Background

Background to the litigation

The applicant claims damages for infringement of copyright under s 115(2) of the Copyright Act 1968 (“the Act”), and additional damages pursuant to s 115(4) of that Act. The applicant also claims damages for conversion under s 116 of the Act. Alternatively, the applicant seeks an order that an inquiry be held to determine the applicant’s loss and damage.BACKGROUND FACTS On or about the 9 February 1996 the respondent met with Mr Beazley, a housing consultant employed by the applicant, to inspect residences at a housing estate at Warrabrook. The Warrabrook estate contained a number of inspection homes (known as “spec” homes within the industry) and, in particular, two Chisholm “spec” homes which the applicant had for sale. The respondent shortly afterward met with Mr Beazley for a second time and again inspected the Chisholm homes. The respondent made an offer to purchase a rather narrow parcel of land together with a Chisholm design home, however the offer was rejected as too low. On or about the 19 February 1996 Mr Beazley provided the respondent with a quote of $66,287 “for the construction of a modified Tolmark Chisholm with Federation facade” which attached a copy of the floor plan (“the subject plan”). The quote together with the subject plan became Exhibit “A”. Discussions between the respondent and the applicant did not proceed any further. The respondent decided that the quote was beyond her price range. The respondent then commenced discussions with another project home developer, Jones Homes Pty Ltd (“Jones Homes”) and provided it with a copy of the subject plan in order to obtain a second, more competitive, quote. The respondent had a preference for the design in the subject plan because the block of land she was contemplating to purchase was narrow, and the subject plan suited those requirements. Jones Homes offered a number of different designs to the respondent, but the respondent preferred the Chisholm design as the only workable design for the block. Jones Homes subsequently provided to the respondent a written tender dated 29 February 1996 in the amount of $60,580 “for the construction of a three bedroom brickveneer and title ‘Oxley’ design home …”. The written tender became Exhibit 4, and did not attach a plan. On 12 April 1996, the respondent accepted the written tender by signing a document entitled “Acceptance of Tender” (Exhibit J). Exhibit J also did not attach a plan, instead a “Plan Preparation Request”, which nominated the design of the house as the respondent’s “own design”, was attached. On 24 May 1996 the respondent attended the offices of Jones Homes and signed the final building agreement. The plan of the Jones Homes’ design (Exhibit E) was signed by the respondent on 29 April 1996 but no variations were permitted after 24 May 1996. Exhibit E is alleged to be the plan which reproduces the subject plan.CONCLUSIONS ON LIABILITY(a) Who owns copyright in the subject plan?

Evidence

Evidence Before The Court

Mr Sneesby gave evidence that the applicant would ordinarily charge a fee of $3,000 for the use of a Chisholm design. In my view, this evidence is admissible, although not of course conclusive on the question of the amount of the notional licence fee to be attributed in this case. During cross-examination, Mr Sneesby conceded that when a person was given a licence to build a Chisholm home from the applicant, that fee would include all of the relevant documents prepared by the applicant, that is, the house plan, the specification and the engineer’s plan.The respondent’s evidence Mr Martyn Chapman, the respondent’s expert witness, provided two reports. In his first report (Exhibit 2A), dated 27 July 1998, Mr Chapman stated:“…the floor plan is typical of a layout designed for a narrow block and in my view is not unique and does not reflect special skill in its design. As a consequence I am of the view that it would be reasonable to base a licence fee for the use of the plan on the time taken for a draughtsman to produce a sketch layout and I would estimate a reasonable fee in the range between $750 and $1,000.” Mr Chapman reiterated this opinion in his subsequent report dated 7 August 1998 (Exhibit 2B):“The usual fee an architect would charge for the design of a house in sketch form, including receiving a brief from a client, studying the site and preparing a preliminary cost estimate would be 12% (RAIA fee guide) of the total fee for the design documentation and contract administration of a project. A reasonable fee for a one off house design would be 10% of the building cost, therefore the total sketch design fee would amount to 1.2% of the cost, a net fee for a one off design would in my opinion be 1%.” Mr Chapman was not cross-examined at any length.CONCLUSIONS ON DAMAGES The applicant claimed damages for infringement and additional damages. Damages for infringement of copyright are awarded by way of compensation to the copyright owner. The measure of the damages open to this Court, in a case of this kind, include damages at large or, alternatively, what has been called the “licence fee” approach; see Chabot v Davies [1936] 3 All ER 221; Stovin-Bradford v Volpoint Ltd [1971] 1 Ch 1007; Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445 at 447; Australasian Performing Right Association Ltd v Grebo Trading Co Pty Ltd (1978) 23 ACTR 30 at 31; for a recent application, see New England Homes v Moore (1998) 82 FCR 500 at 505 – 506. If it be necessary to draw an inference that the respondent would have paid the licence fee for the use of the applicant’s plans (see Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 at 476-7), I have no difficulty in concluding that the respondent, in the circumstances of this case, would have paid that licence fee. The respondent had clearly decided that the applicant’s plan was the only design suitable for the block of land she had chosen. It should be noted that the case was conducted by the respondent on the basis that the licence fee approach was the appropriate measure of damages, if infringement and authorisation were proved.

Decision

Reasons for decision

On 24 May 1996 the respondent attended the offices of Jones Homes and signed the final building agreement. The plan of the Jones Homes’ design (Exhibit E) was signed by the respondent on 29 April 1996 but no variations were permitted after 24 May 1996. Exhibit E is alleged to be the plan which reproduces the subject plan.CONCLUSIONS ON LIABILITY(a) Who owns copyright in the subject plan? The respondent submitted that the applicant was not the owner of copyright in the subject plan annexed to Exhibit A. Exhibit A, it will be recalled, was the quote provided by the applicant annexing the subject plan which the respondent provided to Jones Homes. Exhibit A was essentially a reproduction of floor plans drawn by the applicant’s draughtsperson, Ms Johnson. The plans drawn by Ms Johnson became Exhibit D at trial. Counsel for the respondent submitted that Ms Johnson was the owner of copyright in Exhibit A. Mr Sneesby, a director and the manager of the applicant, in his evidence said that Ms Johnson did nothing but trace Exhibit C (hand drawn plans Mr Sneesby had designed) onto Exhibit D (the applicant’s plans on which Ms Johnson is recorded as the draughtsperson). Exhibit A reproduced the floor plan in Exhibit D. During his evidence, Mr Sneesby was asked to place Exhibit C over Exhibit A, in order to illustrate that the plans were identical. This exercise indicated that this is indeed the case. In Lend Lease Homes v Warrigal Homes Pty Ltd [1970] 3 NSWR 265, Helsham J said (at 270):“It seems to me that there is no magic to be found in detailed scale plans if the floor plan contains the exemplification of the original idea. I believe that any reasonably competent draughtsman, given the floor plan, the approximate room sizes, and the total area (as in the present case) could come up with a set of working drawings, and I fail to see how such working drawings could claim the copyright that is said to be denied to the very embodiment of the architects idea, namely the floor plan.” (Emphasis added) It seems to me that Exhibit C, the plans drawn by Mr Sneesby, were the “exemplification of the original idea”, in that the plans contained the necessary details for Ms Johnson to subsequently draught both the floor plans and the elevations (Exhibit D), those floor plans becoming the subject plans annexed to Exhibit A. The floor plan specifications in Exhibit A were almost identical with those found in Exhibit C, and this was starkly shown when Exhibit C was superimposed over Exhibit A. I find therefore that copyright in Exhibit A vests in the applicant. The respondent also submitted that s 127(1) of the Act applied in this case. Section 127(1) provides:“127. (1) Where a name purporting to be that of the author of a literary, dramatic, musical or artistic work appeared on copies of the work as published or a name purporting to be that of the author of an artistic work appeared on the work when it was made, the person whose name so appeared, if it was his or her true name or a name by which he or she was commonly known, shall, in an action brought by virtue of this Part, be presumed, unless the contrary is established, to be the author of the work …” (Emphasis added)

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 242 OF 1998

BETWEEN:	TOLMARK HOMES PTY LTD Applicant
AND:	DEBRA ANNE PAUL Respondent
JUDGE:	BEAUMONT J
DATE OF ORDER:	30 SEPTEMBER 2999
WHERE MADE:	SYDNEY

JUDGE:	BEAUMONT J
DATE:	30 SEPTEMBER 1999
PLACE:	SYDNEY