JURISDICTION : DISTRICT COURT OF WESTERN AUSTRALIA
IN CIVIL
LOCATION: PERTH
CITATION: VENEZUELA PTY LTD -v- BRIGHT [2017] WADC 79
CORAM: SWEENEY DCJ
HEARD: 8-11 DECEMBER 2015, 22-23 & 25 FEBRUARY 2016
DELIVERED : 16 JUNE 2017
FILE NO/S: CIV 528 of 2013
BETWEEN: VENEZUELA PTY LTD
Plaintiff
AND
IAN DOUGLAS BRIGHT
Defendant
Catchwords:
Breach of copyright - Copyright infringement - Architectural plans - Copyright Act 1968 - Substantial reproduction - Sufficient objective similarity - Actual copying - Assessment of damages for breach of copyright
Legislation:
Nil
Result:
Plaintiff's claim dismissed
Representation:
Counsel:
Plaintiff: Mr P McGowan
Defendant: Mr R J Price
Solicitors:
Plaintiff: GV Lawyers
Defendant: Tottle Partners
Case(s) referred to in judgment(s):
Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278
Arnstein v Porter (1946) 154 F2d 464
Bailey v Namol Pty Ltd [1994] FCA 1401; (1994) 125 ALR 228
Barrett Property Group v Metricon Homes [2007] FCA 1509 [28]; (2007) 74 IPR 52
Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371; (1999) 46 IPR 309
Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138
Fenning Film Services Ltd v Wallsall & District Cinemas Ltd [1914] 3 KB 1171
Henkel Kgaa v Holdfast New Zealand Ltd [2007] 1 NZLR 577; (2007) 70 IPR 624
Henley Arch Pty Ltd v Clarendon Homes (Aust) Pty Ltd (1998) 41 IPR 443
Inform Design & Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd (2008) 77 IPR 523; [2008] FCA 912
Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445
International Writing Institute Inc v Rimila Pty Ltd (1994) 30 IPR 250
Ladbroke (Football) Limited v William Hill (Football) Limited [1964] 1 WLR 273
LED Builders Pty Ltd v Eagle Homes Pty Ltd [1996] FCA 1658; (1996) 35 IPR 215
LED Builders Pty Ltd v Eagle Homes Pty Ltd [1999] FCA 584
Manfal Pty Ltd v Longuet (1986) 8 IPR 410
Microsoft Corporation v Aus China Polaris Pty Ltd (1996) 71 FCR 231
New England Country Homes Pty Ltd v Bradley Moore [1998] FCA 345; (1998) 45 IPR 186
Ownit Homes Pty Ltd v D&F Mancuso Investments Pty Ltd (1988) AIPC 90-488
Pacific Gaming Pty Ltd v Aristocratic Leisure Industries Pty Ltd [2001] FCA 1636; (2001) 116 FCR 448
Raben Footwear Pty Ltd v Polygram Records Inc (1997) FCA 370
Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd [2012] FCAFC
Solar Thompson Engineering Co Ltd v Barton (1977) RPC 537
Spotless Group Ltd v Blanco Catering Pty Ltd [2011] FCA 979; (2011) 93 IPR 235
SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466
Tamawood Ltd v Havitare Developments Pty Ltd [2015] FCAFC 65; (2015) 112 IPR 439
Tamawood v Henley Arch [2004] FCAFC 78; (2004) 61 IPR 378
TS & B Retail Systems Pty Ltd v 3 Fold Resources Pty Ltd…
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- AGLC
- Venezuela Pty Ltd v Bright [2017] WADC 79
- Case
- [2017] WADC 79
- Decision Date
CaseChat Overview and Summary
The primary legal issues were whether Bright authorised the infringement, whether there was actual copying, and whether there was a sufficient objective similarity between the plans that would constitute a reproduction. The court considered the statutory criteria under the Copyright Act 1968 and whether Bright had an onus to explain the similarity between the plans if a finding of sufficient objective similarity was made. The court also examined the extent of Bright's power to prevent the infringement, the nature of his relationship with the architect, and whether he took reasonable steps to prevent or avoid the infringement.
The court examined the similarities and differences between the plans, considering whether they were sufficient to merit an examination of actual copying. The court found that while there were similarities, Bright had discharged any evidentiary onus to explain them. The court concluded that there was no actual copying and that the Ross Griffin plans did not show a sufficient degree of objective similarity to constitute a reproduction of Venezuela's plans. Therefore, the court ruled in favour of Bright, finding no infringement of copyright.
The final orders of the court were that Venezuela's claim against Bright for copyright infringement was dismissed, and no orders for costs were made.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
I accept the plaintiff's submission that the appropriate test for determining whether the defendant authorised the infringement is whether the defendant expressly or impliedly procured or directed the infringing conduct: Microsoft Corporation v Aus China Polaris Pty Ltd (1996) 71 FCR 231, 239 - 246 (Lindgren J), adopted by Merkel J in Henley Arch Pty Ltd v Clarendon Homes (Aust) Pty Ltd (1998) 41 IPR 443. Section 36(1A) of the Act provides:(1A)In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:(a)the extent (if any) of the person's power to prevent the doing of the act concerned;(b)the nature of any relationship existing between the person and the person who did the act concerned;(c)whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice. Section 36(1A) provides for mandatory considerations to be taken into account, but does not exclude other factors that might be relevant. In this case the plaintiff submits that, if a finding of sufficient objective similarity is made by comparison between the two sets of plans, then there rests upon the defendant an onus to explain that similarity. The defendant submits that, as he is not the putative copier (the putative copier being Mr Druce), then no onus can sensibly be placed upon him, given that he did not engage in the alleged copying and was not in a position to know the design process undertaken by Mr Druce. I reject that submission. The plaintiff's case against the defendant rests entirely on establishing that he authorised the copying of the plaintiff's plans. He was the person who was given access to those plans, and then had direct dealings with Mr Druce. Mr Druce was engaged to design his house. He and Mr Druce are the only two people who know what access Mr Druce was given to the plaintiff's plans, and what instructions were given to Mr Druce by the defendant. In those circumstances, if a finding of sufficient objective similarity is made by comparison between the two sets of plans, I consider that does raise an onus upon the defendant to explain that similarity. A failure to do so will result in the court more readily drawing an inference against the defendant of both actual copying, directly or indirectly, and that he authorised that copying. I accept, however, it is no more than an evidentiary onus. The onus to prove its case rests upon the plaintiff. Nothing much turns on the legal determination of whether the plaintiff is correct in attributing an evidentiary onus to the defendant, however, because in this case, as will be seen, I am satisfied that the defendant has discharged any evidentiary onus. I turn now to consider the evidence. I propose to address first the similarities and differences between the two designs to determine whether, prima facie, there is sufficient similarity to merit consideration of whether there has been actual copying and to determine whether an evidentiary onus is cast upon the defendant to explain any similarity. I then intend to address whether, bearing in mind the similarities, a causal connection is proved informed by considerations such as Mr Druce's opportunity to access the plans, and evidence offered by way of explanation of the similarity. Finally, informed by whether actual copying is made out, I will address whether the Ross Griffin plans show a sufficient degree of objective similarity so as to constitute a reproduction of the whole or a substantial part of the plaintiff's plans.