Council of the City of Sydney v Goldspar Australia Pty Ltd

REASONS FOR JUDGMENT 1 This is the hearing of the following four separate questions, ordered to be determined pursuant to O 29 r 2 of the Rules of the Court: "1. Whether on the true construction of the contract between the Applicant and the First Respondent dated 29 May 1998 ("the Contract") and in the events which have happened, the owner of copyright in the drawings identified in Schedule A hereto ("the Works"), is the Applicant or the First Respondent. 2. Whether on the true construction of the Contract and in the events which have happened the owner of all right, title and interest in the intellectual property (including but not limited to all design, patent and/or copyright) which has arisen, may have arisen or may arise, in relation to the Works, is the Applicant or the First Respondent. 3. Whether on the true construction of the Contract and in the events which have happened the owner of all right, title and interest in the copyright which has arisen, may have arisen or may arise, in relation to the goods supplied by the First Respondent to the Applicant pursuant to the Contract is the Applicant or the First Respondent. 4. Whether on the true construction of the Contract and in the events which have happened the owner of all right, title and interest in the intellectual property (including but not limited to all design, patent and/or copyright) which has arisen, may have arisen or may arise, in relation to the goods supplied by the First Respondent to the Applicant pursuant to the Contract is the Applicant or the First Respondent. SCHEDULE A 1. All drawings forming part of the First Respondent's Version 2 Non-Conforming Tender being part of Exhibit "KJW1" to the affidavit of Katherine Jane Williams sworn 19 July 2002 ("Exhibit KJW1"). 2. All drawings forming part of the Contract being Exhibit KJW1 and known as "General Arrangements and Parts Drawings - Issue C". 3. All drawings relating to the goods supplied pursuant to the Contract." 2 The contract in question was the result of a request for tender issued by the applicant, the Council of the City of Sydney ("the Council"), and, as usual, followed considerable negotiation. As a result of proceedings elsewhere, there is now no doubt as to the documents which comprise the contract, which can be summarised as follows: (a) the tender documents (including the request for tender); (b) the non-conforming tender submitted by Goldspar Australia Pty Ltd ("Goldspar"), one of the respondents; (c) certain General Conditions of Contract; (d) a specification issued on 14 November 1997; and (e) Issue C drawings. (It is to be noted that the parties are agreed that there were no drawings issued later than C). 3 The request for tender commenced in the following way: "INTRODUCTION 1. The Council of the City of Sydney invites tenders for the carrying out of the manufacture and supply (with the option of installation) of Multi-functional Street Poles in accordance with this Request for Tender. 2. Tenderers are required to submit Tenders in the manner required by this Request for Tender. 3. Tenders must be placed in the Tender Box located on Level 2, Town Hall House, 456 Kent Street, Sydney, no later than 10:00am on Tuesday 8 July 1997. BACKGROUND 1. Council commissioned the design development of the Multi-functional Street Pole system ie. A streetlight pole which can accommodate various combinations of the following functions for application throughout the CBD. (a) upgraded street lighting (roadway and pedestrian) (b) traffic and pedestrian signalling devices (c) traditional signage (street name, parking restrictions, directional etc) (d) celebration of special events (traditional banners and illuminated electronic panels) (e) special effects lighting (highlighting of the adjacent buildings, monuments, tree canopies etc) (f) real time public communications (electronic changeable panels for events, emergency etc) (g) cellular telecommunications (use as a micro-cell antenna by service providers) other street-pole furniture (bins etc) This will provide the City with an advanced system suitable for the 2000 Olympics and two decades into the future, and the benefits of rationalised pole furniture, reduced pole quantities and liberation of the pedestrian pathway. The developed design is now ready to be manufactured, and the first installation is scheduled for the end of October 1997. 2. Council resolved on 12 May 1997 to proceed with the tender. 3. These conditions of Tender have been prepared by Steven Newman, Project Manager - Industrial Design, ph 9265 9055, City Projects Division, the Council of the City of Sydney. 4. Details of the Specification are set out in Part 4 of this Request for Tender." 4 The contents of the request for tender were described as follows: "The Request for Tender comprises the following: (a) these Conditions of Tender; (b) the Tender Form; (c) the Conditions of Contract based on AS 3556 - 1988; (d) the Specifications; (e) the Drawings; and (f) any Addenda issued by Council;" 5 Clause 11 was as follows: "11. Conforming and Alternative Tenders 11.1 In addition to submitting a conforming Tender, a Tenderer may also submit an alternative non-conforming Tender. Any alternative non-conforming Tender must satisfy the objectives of Council in issuing the Request for Tender, the requirements of the Specifications and the General Conditions of Contract. 11.2 Tenderers must complete the Statement of Conformance in part 3 of the Tender Form." 6 The specification and drawings were said to be prepared by: "Barry Webb & Associates (NSW) Pty Ltd Consulting Electrical Engineers Lighting Consultants ACN 050 056 712 37 Ryde Road Pymble NSW 2073 Alexander Tzannes Associates Pty Limited Urban Design and Architecture ACN 069 785 655 63 Myrtle Street Chippendale NSW 2008 James Taylor & Associates Structural Engineer ACN 002 376 454 4 Gurrigal Street Mosman NSW 2088" The drawings at that stage were Issue B and copyright was noted in Barry Webb & Associates (NSW) Pty Ltd on some of them. The copyright in the specification was noted as Sydney City Council. 7 The nature of the contract can be gleaned in part from Part 2 of the tender form, the most relevant parts of which are as follows: 'SCHEDULE OF PRICES The price filled in by the Tenderer against each item shall include all charges, including purchase of materials, labour, freight, travelling time, profit, etc. The Tender sums included within the Schedule of Prices shall incorporate all items as designed and specified within the Contract documents. Offers using alternative equipment or designs will be considered, however, they must be submitted separately to the conforming tender offer and must include full details and drawings of alternative equipment to allow evaluation. Refer Conditions of Contract Annexure - Limits of Accuracy The sum indicated on the form of tender is made up of the following amounts:- A. Set Up 1 Preliminaries including insurances, fees etc. $ NIL 2 Initial production and assembly - tooling/dies/jigs/fixtures (to be property of City of Sydney $ 24,600 3 Production Datum samples - 1 Type A arrangement columns as specified & 1 Type B column $ 28,555 4 Preparation of preproduction drawings (with tender) and full production drawings $ 82,250 5 Preparation of structural analysis $ 5,000 6 Preparation of technical catalogue manuals $ 3,500 7 General/any other items not listed (specify) $ NIL SUB-TOTAL $ 143,905 B. George Street Project (23 October 1997 - 30 June 1999) 1 Supply (to a nominated site within CBD) of complete column arrangement Type A-130 off (including standard accessories) $ 771,633 2 Supply (to a nominated site within CBD) of complete column arrangement Type B - 30 off (including standard accessories) $ 122,086 3 Supply (to a nominated site within CBD) of complete column arrangement Type C - 10 off (including standard accessories) $ 35,548 4 Supply (to a nominated site within CBD) of complete column arrangement Type D - 10 off (including standard accessories) $ 25, 850 Note: Footings and installation by others SUB-TOTAL $ 955, 117 C. George Street Project (23 October 1997 - 30 June 1999) 1 Supply and install (to project site within CBD) of complete column arrangement Type A - 130 off (as per Spec - Section 2 clause 9) $ 1,031,633 2 Supply and install (to project site within CBD) of complete column arrangement Type B - 30 off (as per Spec - Section 2 clause 9) $ 182,086 3 Supply and install (to project site within CBD) of complete column arrangement Type C - 10 off (as per Spec - Section 2 clause 9) $ 55,548 4 Supply and install (to project site within CBD) of complete column arrangement Type D - 10 off (as per /Spec - Section 2 clause 9) $ 40,850 Note: Footings by others SUB-TOTAL $ 1,310,117