FEDERAL COURT OF AUSTRALIA

Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371

COPYRIGHT – infringement – architectural plans – whether original work or copied – proof of copying – proof by inference – whether plans reproduced – whether reference can be made to three dimensional form – whether substantial reproduction

Copyright Act 1968 (Cth)

Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 referred to

Arnstein v Porter 154 F2d 464 (2d Cir, 1946) referred to

Beck v Montana Constructions Pty Ltd (1963) 80 WN(NSW) 1578 referred to

Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 applied

British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 applied

Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 applied

Eagle Homes Pty Ltd v Austec Pty Ltd (1999) 161 ALR 503 referred to

Francis Day & Hunter Ltd v Bron [1963] Ch 587 referred to

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 applied

L B (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 applied

Ogden Industries Pty Ltd v Kis (Australia) Pty Ltd [1982] 2 NSWLR 283 applied

S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 referred to

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 applied

CLARENDON HOMES (AUST) PTY LTD & PETER CAMPBELL V HENLEY ARCH PTY LTD, HENLEY PROPERTIES (NSW) PTY LTD, SHANE ROGERS, JOHN EDWARD HARVEY, ROBERT EVAN BOWEN, PETER HAYES & ROBERT ANDREW GRANT

VG 443 OF 1998

JUDGES:       HEEREY, SUNDBERG & FINKELSTEIN JJ

DATE:            7 OCTOBER 1999

PLACE:          MELBOURNE

            On appeal from a single justice of the Federal Court

THE COURT ORDERS THAT:

1.                  The appeal be dismissed.

2.                  The appellants pay the respondents’ costs of the appeal.

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

            On appeal from a single justice of the Federal Court

REASONS FOR JUDGMENT

1                     The first appellant, Clarendon Homes (Aust) Pty Ltd (“Clarendon Homes”), is a builder of residential homes.  It constructs what are called project homes.  A builder of project homes offers for sale a limited range of homes designed by or on behalf of the builder as opposed to a builder who constructs a home that is the subject of an individual design by an architect for a particular client.

2                     On 29 March 1996 Clarendon Homes took an assignment of the copyright in the plan for a home known as the Glengrand from another project builder, Glenvill Homes Pty Ltd.  Clarendon Homes did not acquire the copyright for the purpose of constructing homes in accordance with the plan.  It had a more important reason in mind.  An action for breach of copyright had been taken against Clarendon Homes and its director, Peter Campbell, the second appellant, by the first respondent (Henley Arch) and the second respondent (Henley Properties).  Those companies also build project homes.  In the action Henley Arch claimed to be the owner and Henley Properties the licensee of the copyright in the plan for a project home known as the Oakridge and in buildings constructed in accordance with that plan:  one in Turramara Drive, Rowville, Victoria and the other in Chose Drive, Quakers Hill, NSW.  The Henley companies alleged Clarendon Homes had infringed that copyright by producing the plan of a building known as the Carrington and by constructing a home in accordance with that plan in Williams Road, Quakers Hill.  They also alleged that Mr Campbell had authorised or procured that infringement.  Clarendon Homes and Mr Campbell contend that the Oakridge plans had been copied from the Glengrand plan.  Accordingly, Clarendon Homes and Mr Campbell denied that any copyright subsisted in the Oakridge plan and the homes at Rowville and Quakers Hill because they lacked originality; it was alleged they were reproductions of the Glengrand plan.  They also took proceedings, by cross-claim, alleging that by producing the plan for the Oakridge and constructing the two homes based on that plan, Henley Arch infringed the copyright in the Glengrand plan and that certain of its officers (the remaining respondents) had authorised or procured that infringement.

3                     The trial of the claim and cross-claim was heard by Merkel J.  At the hearing evidence was called by the Henley companies that the author of the Oakridge plan was John Polglase, a draftsman employed by Henley Arch, who had some assistance from Shane Rogers, a designer.  Mr Polglase did not give evidence, because he had died shortly before the trial.  Many preliminary sketches and designs that had been prepared by Mr Polglase in the course of completing the Oakridge plan were tendered.  Peter Hayes, the managing director of the Henley companies, gave evidence of his involvement in the creation of the Oakridge plan; he had instructed Mr Polglase to prepare the plan and told Mr Polglase what features should be incorporated in the design.

4                     Initially Clarendon Homes had indicated that it would call one of its directors, Roger Porter, to say that he was the author of the Carrington plan and that he had produced that plan without reference to the Oakridge plan or any Oakridge home.  However the Henley companies called two former employees of Clarendon Homes to give evidence.  The first was Paul Brandalise, the former finance director of the company.  He said he and Peter Brown, the marketing manager of Clarendon Homes, had visited the Oakridge display home in Rowville in July 1995 and were impressed with it.  He took a number of photographs during his visit.  On returning to the office Mr Brown telephoned Mr Porter and told him that the Oakridge was a “stunning” design.  Mr Brandalise later provided Mr Porter with the photographs.  He then prepared a memorandum that was submitted to Mr Campbell suggesting that Clarendon Homes should prepare a design similar to that of the Oakridge as soon as possible.  Later he was told that Mr Porter was working on such a plan.

5                     The second witness was Tara Shrestha who had been employed by Clarendon Homes as an architect.  He gave evidence to the following effect.  In mid 1995 he was briefed by Mr Porter to design a home to compete with the Oakridge.  He was given a brochure for the Oakridge and photographs of an Oakridge home.  He prepared two concept designs, one of which adopted certain distinctive features of the Oakridge.  He provided the two designs to Mr Porter with a note that stated, in relation to the design based on the Oakridge, “Option 1 is similar to [Oakridge] & different [sic] to be different from their plan/s.”  He was then instructed to proceed with that option and to incorporate two specific features from the Oakridge which he had omitted from the design.

6                     Perhaps it was in consequence of this evidence that Mr Porter was not called to verify that he was the author of the Carrington plan and that he had prepared that plan without reference to the Oakridge plan.

7                     Each side also called an expert.  The Henley companies called John Permewan, an experienced architect.  He gave evidence on a number of topics including a comparison between the Rowville Oakridge and the Quakers Hill Carrington, a comparison between the Quakers Hill Oakridge and the Quakers Hill Carrington, and a comparison of the working drawings for the Rowville Oakridge and the drawings for the Quakers Hill Carrington and the Quakers Hill Carrington itself.  His opinion was that it was “highly improbable that the design of the Carrington was created without reference to the design of the Oakridge”.  Dr John Cooke, a senior lecturer in the School of Architecture at the University of New South Wales, was called by Clarendon Homes.  His evidence was principally directed to describing the notable features of the Glengrand and the Oakridge to show their similarity. He also gave evidence about the Carrington describing the differences between that home and the Oakridge. 

8                     In addition to the oral evidence tendered by the parties the trial judge was taken on a view of the Clarendon home at Quakers Hill and the Oakridge home at Rowville.  The parties are agreed that what his Honour saw on the view constituted part of the evidence.  Unfortunately, this Court has not seen any of the homes. This will become important for reasons which will be mentioned later.

9                     To determine whether the Henley companies could succeed in their claim for infringement, the trial judge was required to determine whether copyright subsisted in the Oakridge plan.  The appellants alleged that copyright did not subsist in that plan, because it had been copied from the Glengrand plan.  Accordingly, so the argument went, Mr Polglase and Mr Rogers had not expended a sufficient amount of skill and labour in the creation of the Oakridge plan to justify the conclusion that it was an original artistic work.

10                  In dealing with this issue the trial judge recognised, correctly in our opinion, that even if there had been copying of the Glengrand plan, that would not necessarily deny to the Oakridge plan the stamp of originality that is necessary for the subsistence of copyright.  It must be remembered that to attract copyright it is not necessary to establish that the work in question is novel or unique:  University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608-9.  All that must be shown is that the author expended sufficient skill and labour in the creation of the work to sustain a finding of originality.  What will be sufficient in that regard is a question of degree.  In Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 Lord Hodson said (at 287) that it must be “more than negligible skill”.  In the same case Lord Devlin said (at 289) that what was required was “that the product must originate from the author in the sense that it is the result of a substantial degree of skill, industry or experience”.  Thus, even if a work is derived from another, there may be separate copyright in each.  The derived work will be assessed as being a separate copyright work, although to a considerable extent taken from an earlier work, if in producing the derived work the author expended skill and labour:  see L B (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 at 569 per Whitford J whose decision was affirmed by the House of Lords.  See also Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 379.

11                  The trial judge found that Mr Polglase had in fact expended a sufficient amount of skill and labour in producing the Oakridge plan to justify a finding of originality.  His Honour also found that the plan had not been copied from the plan of the Glengrand.  In relation to this last finding the trial judge accepted that there were similarities between the two plans, in the sense that certain design features were common to each.  Notwithstanding these similarities, the trial judge was of the view that the different dimensions and the different features in the two plans did not imply copying of the “expression of the design concepts or ideas in the Glengrand”.  The fact that there was similarity in certain features of the two plans led to a comment by the trial judge that it was possible that Mr Polglase or Mr Hayes might have been aware of the Glengrand plan and that some of the design concepts and ideas in the Glengrand were employed in the Oakridge.  However his Honour was not prepared to “elevate that finding to a probability … that there was any copying or taking of the expression of those concepts or ideas” by Henley Arch.

12                  To make out a case that Henley Arch had copied the Glengrand plan, Clarendon Homes relied upon two matters.  First it alleged that Mr Hayes had admitted copying had taken place.  The second basis upon which the argument was founded was that the two plans were sufficiently similar that copying should be inferred. 

13                  Clarendon Homes was not able to establish to the satisfaction of the trial judge that Mr Hayes had admitted copying.  Mr Hayes denied making such an admission and the evidence of the witnesses to whom the alleged admission was made was not accepted. 

14                  In the result Clarendon Homes could only establish copying by inference.  There was some attempt made to show that representatives of the Henley companies had visited a home constructed in accordance with the Glengrand plan.  Leonard Warson, the former managing director of Glenvill Homes, said that the Glengrand plan was first published in 1987 and a display home based on the plan was built in 1988 at the Glenvill Design Centre.  Mr Warson said that many developers visited the centre and saw the Glengrand.  On the other hand, Mr Hayes gave evidence that when he instructed Mr Polglase to design the plan that was later to become the Oakridge, and when commenting on various sketches that Mr Polglase prepared, he was not familiar with the Glengrand plan.  The trial judge accepted this evidence.

15                  There being no evidence that Mr Polglase had access to the Glengrand plan or that he ever saw a Glengrand home, proof of copying could only be established from the similarity that the Oakridge plan bore to the Glengrand plan.  The trial judge did not specify any test by reference to which he would determine whether there had been copying.  It is convenient to state an appropriate test for a case such as this.  When the defendant’s work is the same as the plaintiff’s work then it is clear that the inference can be drawn.  But there will not be many occasions when a copyist will reproduce the plaintiff’s work in its entirety.  In that event the plaintiff must show, in the absence of evidence of access, that the similarities are so striking as to preclude the possibility of the defendant having arrived at the same result independently:  compare Arnstein v Porter 154 F2d 464, 468 (2d Cir, 1946). 

16                  In determining whether there had been copying the trial judge appears to have adopted an approach along the lines that we have suggested.  After a close examination of the two plans the trial judge acknowledged that they shared several design concepts.  However the trial judge found that the overall design of the Oakridge plan was in many respects significantly different to the Glengrand plan.  Accordingly, the trial judge found that no copying had taken place.  It was in the course of reaching this conclusion that the trial judge commented on the possibility that Mr Polglase or Mr Hayes were aware of the “design features” of the Glengrand and may have employed some of those ideas in the Oakridge.  Here his Honour was referring to the ideas that underlie a work and not to the expression of those ideas.  Clearly enough, the underlying ideas are not protected by copyright law:  they form part of the material available for creative endeavour and are for all to use. 

17                  On the question whether Clarendon Homes had infringed the copyright in the Oakridge plan and the Oakridge homes, the issue to be determined by the trial judge was whether Clarendon Homes had reproduced a substantial part of the Oakridge plan or the Oakridge homes at Quakers Hill and Rowville by producing the Clarendon plan and by building the Clarendon home at Quakers Hill. 

18                  The trial judge did state the principles to be applied in deciding whether there was infringement.  They were not controversial and may be summarised from his Honour’s reasons for judgment:  (1) the question of reproduction for the purposes of copyright law involves the two elements of resemblance to, and actual use of, the copyright work; (2) there is no reproduction for the purposes of the Copyright Act 1968 (Cth)where two persons produce substantially similar works through independent effort; (3) in determining whether “a substantial part of the work” has been reproduced, greater weight must be given to the quality of what is copied than to its quantity; (4) the degree of protection under copyright law of an architectural plan may be limited by reason of the significant proportion of features which are common to all plans, with the result that the remaining portion of a plan in which copyright will subsist is consequently limited; (5) whether the alleged infringing work is sufficiently similar to the work in which copyright subsists to amount to a reproduction of a substantial part of that work is for the Court to determine.  The Court can be assisted by expert evidence which is of value in exposing the facets of the ultimate question to which the expert opinion evidence is directed.

19                  The trial judge then turned to consider in what respects there were similarities between the copyright works (plan and homes) and the alleged infringing works (plan and home).  Although not the subject of any critical comment, his Honour undertook this task by identifying features not only by reference to the plans but also by reference to features that were only visible either in the photographs of the homes that had been tendered in evidence or that were visible as a result of his inspection of the homes. 

20                  There was a danger in adopting this approach.  When the claim is that a two dimensional work has been reproduced in two dimensional form, the question whether there is “a sufficient degree of objective similarity between the two works”, to put the matter as Willmer LJ did in Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614, requires a comparison of the two works and not a comparison of three dimensional reproductions of those works.  When the claim is that copyright in a two dimensional work has been infringed by the production of a work in three dimensional form, it is no doubt necessary to form a visual image of the two dimensional work in its three dimensional form and then compare that with the alleged infringing work:  Ogden Industries Pty Ltd v Kis (Australia) Pty Ltd [1982] 2 NSWLR 283.  However, in none of these cases would it be appropriate to have regard to an actual three dimensional version of work to assist in the comparison when, as the evidence suggests in this case, the three dimensional version of the plaintiff’s work contains features that are not shown on the plan that is alleged to have been misappropriated.

21                  In identifying the respects where similarity was to be found the trial judge adopted the evidence of Mr Permewan (with which he agreed), and divided them into those that were of particular importance and those that were not so important.  By “importance” the trial judge was referring to features that were important either as an individual component of the design or as part of the overall design.  The trial judge also identified the various respects where there were differences between the Oakridge plan and homes and the Carrington plan and home. 

22                  This comparison led his Honour to conclude that there was “a substantial objective similarity and resemblance of the Carrington and its architectural plans to the Oakridge and its architectural plans”.  He also found that there had been “actual use in the design of the Carrington of the Oakridge floor plans which were contained in the Oakridge brochure [produced by Henley Arch], and of the design of the Oakridge home”.  It followed from these findings that Henley Arch had established infringement of its copyright in the Oakridge plan and homes. 

23                  His Honour then considered whether a case had been made out against Mr Campbell.  He concluded that Mr Campbell had authorised the infringing acts and was thus liable as a joint tortfeasor. 

24                  Two principal questions arise on this appeal.  The first is concerned with the claim by Clarendon Homes for infringement of its copyright in the Glengrand plan.  The issue is whether the trial judge erred in failing to find that Henley Arch had made actual use of the Glengrand plan in producing its plan for the Oakridge.  To prove infringement of copyright there must be proof of copying.  Copying might be deliberate or it might be subconscious, although it must be said that in the case of works such as architectural plans it would be surprising to find many cases of unconscious copying.  If the trial judge did err then a subsidiary issue arises, namely whether the Oakridge plan is sufficiently similar to the Glengrand plan to infringe the copyright in that plan.

25                  The second question concerns the claims made by the Henley companies.  Here Clarendon Homes contends that the trial judge erred in his conclusion that there was a sufficient degree of objective similarity between the copyright works and the alleged infringing works to permit a finding of infringement.  It should be noted, however, that it was not denied there had been copying of the Oakridge plan or the Oakridge homes. 

26                  At the outset it is appropriate to refer to one submission made by the appellants that was deceptively simple, but incorrect in law.  It was pointed out, correctly we would accept, that each of the Glengrand plan, the Oakridge plan and the Carrington plan, and the respective homes that were constructed in accordance with those plans, shared certain features in common.  It followed from this, so it was submitted, that if the trial judge found that the Carrington plan and home had infringed copyright in the Oakridge plan and homes, the reasons that justified that conclusion, or at least the process of reasoning that led to that conclusion, should produce the same result on Clarendon Homes’ claim in respect of the Glengrand.

27                  There is, of course, an obvious error in this argument.  The question whether, in the absence of an admission, copying (that is a causal nexus between the plaintiff’s work and the defendant’s work) is established is not the same as the question whether, once copying has been established, the whole or a substantial part of the plaintiff’s work has been appropriated.  We accept that very often the two issues will overlap.  But nevertheless they are discrete issues and the answer to one does not necessarily produce an answer to the other.  For example, in order to prove that there has been a copying it is usual to attempt to show opportunity, that is access to the plaintiff’s work, and such similarities between the plaintiff’s work and the defendant’s work as makes independent creation by the defendant unlikely.  Such similarities may or may not be substantial.  They can include common error, sometimes deliberately inserted in the plaintiff’s work.  Paradoxically, there will be occasions where dissimilarities may provide the basis for an inference of access and copying.

28                  Further, in a case where there has been deliberate copying, the court will not look kindly on a defendant when the plaintiff seeks to establish that what has been copied is sufficiently objectively similar to the plaintiff’s work.  In Blackie & Sons Ltd v The Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 Starke J said (at 404):

            “It is not for the Court to make the way of the taker of copyright matter easy.  It is a sound principle of copyright law that the Court should not allow one man to take away the result ‘of another man’s labour, or, in other words, his property,’ unless it is satisfied that the part taken is ‘so slight, and the effect upon the total composition was so small,’ ‘as to render the taking perfectly immaterial,’ or what is much the same thing, that the part taken is an unsubstantial part.” (citations omitted)

See also S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 484 where Wilson J referred with approval to the judgment of Street J in Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 where his Honour acknowledged that his finding of infringement had been coloured by the unmeritorious use made by the defendant of the plaintiff’s work. 

29                  Was the trial judge in error in failing to find that Henley Arch had copied the Glengrand plan?  The only basis put forward to support the contention that copying must have occurred was “the degree of similarity between the plans”.  This contention should not be taken to mean that the appellants are asserting that there is similarity between all aspects of the two plans.  That is, they are not suggesting that one plan is a reasonably faithful copy of the other.  Each of the Glengrand plan and the Oakridge plan is for a two storey home with living rooms on the ground floor and bedrooms on the upper floor.  The appellants confine their allegations of substantial similarity to the ground floor design.  They accept, as indeed they must, that the first floor design of each plan is different.  In substance the appellants’ submission requires acceptance of the proposition that Mr Polglase had access to or was aware of the Glengrand plan and made use of that plan, or his memory of it, in preparing the Oakridge plan. 

30                  The background against which this argument must be considered is as follows.  Mr Hayes instructed Mr Polglase to prepare drawings for the Oakridge around April 1994.  Apart from a period of a few weeks where little work was done, Mr Polglase worked on the assignment for approximately eight months.  From time to time he was given instructions on the content of the design by Mr Hayes.  He produced many drafts, some of which were shown to Mr Hayes for comment.  The early drafts contain few features that are to be found in the Glengrand.  The features which do bear resemblance to those found in the Glengrand were incorporated gradually, as work on the plan progressed.  Mr Hayes did not instruct Mr Polglase to prepare a design based on the Glengrand and the nature of the instructions that he gave do not suggest that they had been derived from any particular plan then in existence.  Finally, a number of the features incorporated in the Oakridge plan, being features which bear similarity to the Glengrand, can also be found in plans for other buildings that had been produced by Mr Polglase some time earlier.

31                  To test the appellants’ argument it is necessary to undertake a comparison of the two plans, because it is only as a consequence of such a comparison that the inference of copying, if the inference is to be drawn, can be established.  First we will mention the similarities.  They are taken from the evidence of Mr Permewan and the evidence of Dr Cooke:

(a)        both are two storey houses;

(b)       the central location of the entrance, and the central hallway is similar;

(c)        the central hallway and entry with glazed sidelights gives access to similar primary functions on either side and at the end;

(d)       both hallways give the appearance of sidewalls with attached columns;

(e)        both have access to the first floor by a stair commencing at the side of the hallway;

(f)        both stairways have curved landings;

(g)        both have 5-sided eating areas protruding from the rectangular house plan;

(h)        both have kitchen, meals, family areas in an open, interconnected and triangular arrangement;

(i)         the relationships between the main rooms (den, dining room and living room) is very similar;

(j)        both have laundry accessed off the kitchen or from the outside;

(k)       both have dropped ceiling edges in the hallway;

(l)         there is similarity in the overall dimensions

32                  Then there are the differences between the plans.  Those differences were the subject of evidence by Mr Permewan.  The most significant that he identified are:

(a)        the Glengrand has a two storey void over the living room creating a two storey room which the Oakridge does not have;

(b)       the Oakridge has a small void over the front door which acts as a visual and light link between two separate floor levels.  The Glengrand entry lacks this void;

(c)        the Glengrand entry lacks the multi-stepped ceiling, columns and continuous arcade effect of the Oakridge;

(d)       the Glengrand entry and hallway has dropped ceilings not present in the Oakridge;

(e)        the Glengrand stair is freestanding with a two storey volume giving access to an overlooking balcony separate from other functions, while the Oakridge stair disappears through the floor and discharges within the TV area;

 (f)       the Glengrand has a large fireplace and tall windows consistent with a double-storey space;

(g)        the Glengrand entry hall ends with the blank wall of another area with doors to the family room, while the Oakridge has columns framing direct access to a family room.

33                  Further, each plan incorporated a number of features that are of significance so far as the overall impression of each plan is concerned.  Again, reference might be made to the evidence of Mr Permewan.  He described those features in the following way:

            As regards the Glengrand:

(a)        the two storey living room containing a freestanding stair leading to an overlooking internal balcony;

(b)       the central hallway and entry have dropped ceilings;

(c)        the two storey open stair within the living room visibly curving to the first floor open balcony from the more enclosed space of the hallway.

            As regards the Oakridge:

(a)        the void over the entry;

(b)       the long central hallway with the unusual yet simple stepped ceiling;

(c)        the open stair visible through the living room curving to the first floor;

(d)       a pair of freestanding columns at the end of the hallway;

(e)        the five-sided area at the rear of the home breaking down the “boxiness” of the area used by the family;

(f)        the first floor communal area allowing both direct and visible access to the ground floor while providing an area away from the ground floor without being a bedroom or hallway;

(g)        a first floor master bedroom with space and amenities beyond mere strict physical requirements and forming a self-contained parents area (often promoted as a “parents retreat”).

34                  We do not accept that the similarity between the two plans is sufficient to suggest copying, especially when regard is had to the very important differences that exist which show that each plan has its own unique features.  Although in the end it is a matter of impression, in this respect we are of the same view as the trial judge and do not accept that he was in error in his conclusion. 

35                  We can now consider the second issue that arises on this appeal, namely whether Clarendon Homes infringed the copyright in the Oakridge plan.  We have summarised the principles that were applied by the trial judge on this aspect of the case.  It was not suggested that his Honour was mistaken in his statement of those principles.  Nevertheless, it is necessary to make a few additional observations on the issues raised. 

36                  Copyright gives to the owner the exclusive right to do certain things including “reproducing the work in a material form” (see s 31(1) of the Copyright Act).  By s 14(1) reproduction includes reproduction of “a substantial part of the work”.  Here the allegation is that Clarendon Homes reproduced a substantial part of the Oakridge plan by producing the Carrington plan and the Quakers Hill Carrington.

37                  Whether a substantial part of the plaintiff’s work has been taken is always a question of degree.  The allegation will be made out if what has been taken is an important or material part of the plaintiff’s work:  Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 at 494.  It is not necessary to show that the copy is a perfect reproduction of a substantial part of the plaintiff’s work:  British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 at 72.  But it must always be borne in mind that a part of the plaintiff’s work which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected:  Ladbroke [1964] 1 WLR at 293.  It is for this reason that one finds a warning in the cases that it is difficult to establish infringement of copyright in building plans especially plans for project homes where many common features are shared:  see eg Beck v Montana Constructions Pty Ltd (1963) 80 WN(NSW) 1578 at 1580; Ancher, Mortlock [1971] 2 NSWLR at 283.  However, as Eagle Homes Pty Ltd v Austec Pty Ltd (1999) 161 ALR 503 shows, this warning should not be taken too far.  Frank Lloyd Wright wrote that “an architect practises a fine art as a profession with the commercial and the scientific of his time as his technique”: F Guthiem (ed), On Architecture-Selected Writings 1894-1940 (1941).  An architect is not only imitative, but innovative as well.  This is true for all sorts of architectural works, from shelters to houses to great public buildings.  Accordingly there is no reason why an architect’s creative work should not be considered in the same way as great art or high drama.

38                  There are two further general points that should be made.  The first is to recall the statement of Starke J in Blackie & Sons that is set out earlier in these reasons.  A defendant is not at liberty to avail himself of the plaintiff’s labour for the purpose of producing his own work.  The second point has also been mentioned.  In determining whether there has been infringement it is appropriate to bear in mind the fact, if it be the fact, that the defendant has made unmeritorious use of the plaintiff’s work.  Then it is easier to find misappropriation.

39                  At first blush these propositions may appear to be controversial, because to establish infringement both copying and similarity must be shown.  But copying can be both conscious and unconscious.  When copying is deliberate then, so it seems, the Court is permitted to show greater latitude in the plaintiff’s favour.  We accept this approach should not be taken too far.  In a given case there either is or is not sufficient objective similarity to make out infringement.  It will only be when the trial judge regards the position as finely balanced that he should err in favour of the plaintiff if the conduct complained of is deliberate.

40                  With these propositions in mind we can now consider whether the Clarendon plan is sufficiently similar to the Oakridge plan to constitute an infringing work.  In this connection it is also important to remember that the appellants did not contest the finding made by the trial judge that Mr Shrestha had made use of the Oakridge plan when producing the plan for the Carrington.

41                  Dr Cooke identified the differences between the two plans.  We take the following summary of his evidence from the appellants’ submissions:   

(a)        the orientation of the kitchens and differences in the counter feature;

(b)       the location of the 5 sided eating area;

(c)        the kitchens, family rooms, dining rooms, bathrooms and laundries are on different sides;

(d)       the stairway in the Carrington acts as a divide between the dining and living rooms, whereas in the Oakridge the stairway is at one end of the living room and against a wall and the dining room is at the opposite side of the hall;

(e)        the Oakridge has a winder feature on the stairway as compared with a flat half landing on the Carrington.  The Oakridge stairway is consequently shorter.

However, there are many similarities.  The most important of them were identified by Mr Permewan: 

(a)        the central hallway giving access to the same primary functions on the sides and at the end;

(b)       both hallways have side walls stepped in and out to create shallow recesses and openings;

(c)        both have a pair of columns at the end framing the open rear area of the house;

(d)       both have a stepped ceiling;

(e)        both hallways commence after an entry area with central door and glazed sidelights situated beneath a void in the floor of the first floor TV/Rumpus area above.

42                  Mr Permewan said that it was highly improbable that the Carrington plan was created without reference to the Oakridge plan.  A comparison of the plans bears out the accuracy of this observation when the areas of similarity are considered.  It also leads to the conclusion that the Clarendon plan reproduces substantial parts of the Oakridge plan.  Not only is it a reproduction of substantial parts of the Oakridge plan, it has appropriated many aspects that are not part of the common stock of attributes or designs of project homes, at least according to the evidence.  To the extent that “ideas” that are in the public domain have been reproduced in the Oakridge plan, their manner of expression appears to be original and that originality can be seen in the Clarendon plan.  It follows that the trial judge did not err in finding infringement.

43                  The final issue that arises concerns the finding by the trial judge that the Clarendon home infringed the copyright in the Oakridge plan and also the copyright in the Oakridge homes.  This finding was also challenged.  But, we are in no position to hold that the trial judge was in error.  It will be remembered that the trial judge was taken to see the homes and what he observed is part of the evidence in the case.  We do have the evidence of the experts who have described the homes.  We also have the photographs that were taken of the interior of each home.  Even with the assistance of this evidence, it is not possible to obtain the same impression of the homes that the trial judge gained from his view.  As Mr Permewan said when he attempted to describe the homes, many of the attributes of the designs cannot be fully appreciated without a view.  Words alone are not a sufficient substitute.  The photographs do not capture all aspects of the homes including, to adopt the words of Mr Permewan, “the dynamic impact as the viewer moves through the space, in the way that the eye can”. 

44                  In the result, the appeal must be dismissed with costs.

Associate:

Dated:              7 October 1999