Reasons for Judgment of the Full Court.
7 A preliminary issue has arisen as to the effect of the reasons of the Full Court and thus as to what determinations are now required to be reached in accordance with them.
8 The respondent has submitted that the Full Court "appears to have embarked upon its analysis of infringement looking at the wrong drawings." It is true that the Full Court has annexed to its reasons for judgment a floor plan for "The Kookaburra" rather than the Kookaburra drawing, and a different version of the "Kookaburra Series 2" floor plan from that annexed to the amended application. However, the differences between the Drawings and the floor plans annexed to the reasons for judgment of the Full Court are limited. Similarly, the "Paterson" and "Robertson" floor plans annexed to the reasons for judgment of the Full Court are not the advertisements alleged by the statement of claim to contain reproductions in a material form of the Drawings, nor are they extracted from the advertisements. However, I do not understand it to be suggested by the respondent that the floor plans annexed to the reasons for judgment of the Full Court misrepresent in any material way the floor plans which are reproduced in the pleaded advertisements. In short, I do not think that these are matters upon which it would be appropriate for me to place weight in identifying the issues which I am now required to determine, or in reaching my determination on those issues.
9 The respondent has also submitted that the Full Court appears to have overlooked that the applicant's case as pleaded is limited in the ways set out above. That is, that "[t]here was no allegation of plan to plan copying and no allegation of copying of 'the subject drawings'". The respondent has not approached the Full Court to ask that it withdraw the orders made by it. It is not open to me to conclude, and in any event, I do not conclude, that the Full Court has misapprehended the nature of the case pleaded by the applicant.
10 It is accepted that the reasoning of the Full Court compels a finding that "The Paterson Modern Design" advertisement, which includes a version of the "Paterson" floor plan, is, or includes, a reproduction of the Kookaburra drawing. The applicant's claim that its copyright in the Drawings has been infringed by the respondent's procuring of the publication of "The Paterson Modern Design" advertisement must succeed. The injunction which it seeks restraining further publication of the advertisement will be made.
11 The Full Court has made no finding as to whether the building of a home based on the floor plan shown in "The Paterson Modern Design" advertisement constitutes an infringement of the applicant's copyright in the Drawings. I turn to this issue below.
12 The Full Court made no express finding concerning "The Robertson Modern Design" advertisement. It did not compare the floor plan shown in the advertisement with "The Kookaburra" floor plan in the way that it compared the "Paterson" floor plan with "The Kookaburra" floor plan. However, the Full Court allowed the appeal against the judgment pronounced by me and set aside the orders made by me. It did not allow the appeal merely in part. It must be accepted that the Full Court has set aside my finding concerning "The Robertson Modern Design" advertisement. However, it seems clear that the Full Court itself has reached no view as to whether the "The Robertson Modern Design" advertisement contains a reproduction of the Drawings. I understand that the determination of this issue has been remitted to me with the direction that I determine whether the floor plan shown in "The Robertson Modern Design" advertisement is a reproduction of the Drawings by adopting methodology in accordance with the reasons of the Full Court. If I find that the floor plan shown in "The Robertson Modern Design" advertisement is a reproduction of the Drawings, it will then also be necessary for me to determine whether the building of a home based on that floor plan constitutes an infringement of the applicant's copyright in the Drawings.
"The Robertson Modern Design" Advertisement
13 I turn to the question of whether the floor plan shown in "The Robertson Modern Design" advertisement is a reproduction of the Drawings. Although the case of the applicant as pleaded is that "The Robertson Modern Design" advertisement contained a reproduction in a material form "of a substantial part of the works", the Full Court has indicated that the appropriate question for my consideration "is simply whether the [Robertson] is a "reproduction or colourable imitation" of the Kookaburra as a whole". I understand this to mean that it is appropriate for me to disregard all aspects of both the Kookaburra drawing and "The Robertson Modern Design" advertisement other than the floor plans shown therein and then to consider simply whether the floor plan shown in "The Robertson Modern Design" advertisement is a reproduction or a colourable imitation of the floor plan shown in the Kookaburra drawing viewed as a whole.
14 For the purpose of considering this question, I note that the following findings of fact made by me were not challenged before the Full Court:
(1) Mr Panetta, a director of the respondent, prepared a rough sketch of a five bedroom home suitable for erection on a block of land with a fifteen metre frontage. At the time that Mr Panetta produced the rough sketch he had seen "The Kookaburra" floor plan in published advertisements but he had not seen the floor plan of the "Kookaburra Series 2". In preparing his rough sketch, Mr Panetta copied certain aspects of "The Kookaburra" floor plan.
(2) Mr Panetta sent his rough sketch to Mr Zappia, a director of Algorry Zappia & Associates Pty Ltd, consulting civil instructional engineers and architectural designers. Mr Zappia gave instructions for the preparation of a "concept sketch" based on Mr Panetta's rough sketch, but excluding the fifth bedroom. Following certain minor changes to the resulting "concept sketch" as a consequence of the receipt of further instructions from Mr Panetta, the "Paterson" floor plan was created by an employee of Mr Zappia's company. The "Robertson" floor plan is accepted to be derived from the "Paterson" floor plan.
(3) Neither Mr Zappia, nor any employee of his company, copied from the floor plans for "The Kookaburra" or "Kookaburra Series 2" in preparing the concept sketch or the "Paterson" floor plan.
15 Copies of the Drawings are annexed to these reasons for judgment. Also annexed to these reasons for judgment are copies of Mr Panetta's rough sketch ("the Panetta drawing"), "The Paterson Modern Design" advertisement and "The Robertson Modern Design" advertisement.
16 A comparison of the Kookaburra drawing and the Panetta drawing reveals that there are significant differences between them. These differences extend beyond differences necessarily resulting from the difference in the number of bedrooms. In the circumstances, for the reason which I identify below, it does not seem necessary for me to identify all of the differences.
17 The expert evidence before me established that there are considerable constraints which impinge on any informed person who seeks to draw a floor plan for a project home suitable for erection on a block with a fifteen metre frontage. Within these constraints, there are also significant differences between the floor plans shown in "The Paterson Modern Design" and "The Robertson Modern Design" advertisements respectively and the Panetta drawing - again extending beyond differences necessarily resulting from the difference in the number of bedrooms. Again, in the circumstances it does not seem necessary for me to identify all of the differences.
18 The reason why I conclude that it is not necessary for me to identify the differences between the various drawings and floor plans is that I understand the Full Court to have found that such differences are immaterial. It is accepted that the floor plan shown in "The Robertson Modern Design" advertisement is derived from the floor plan shown in "The Paterson Modern Design" advertisement. Notwithstanding that the floor plan shown in "The Paterson Modern Design" advertisement was drawn by an employee or employees of Mr Zappia's company and not by Mr Panetta (ie. it was made by a person or persons who did not copy from the Kookaburra drawing), the Full Court concluded that it was "almost irresistible" that all similarities between the "Paterson" floor plan and the Kookaburra drawing are due to copying. The Full Court reached this conclusion without making reference to the fact that some features common to the "Paterson" floor plan and the Kookaburra drawing cannot be seen in the Panetta drawing. I conclude that I am obliged by the reasons for judgment of the Full Court to find that it is "almost irresistible" that all similarities between the "Robertson" floor plan and the Kookaburra drawing are due to copying. That is, I understand that I am obliged to conclude that all features common to the Kookaburra drawing and the "Robertson" floor plan appear in the "Robertson" floor plan because of copying, albeit that some such features form no part of the Panetta drawing.
19 That the reasons of the Full Court are to be so understood seems to me to follow from the fact that Lindgren J, with whom Finkelstein and Weinberg JJ agreed, answered the question of whether "the result of Austec's copying was the production of the Kookaburra drawing again in the Paterson drawing" by comparing the "Paterson" floor plan (not the Panetta drawing or so much of it as remained in the "Paterson" floor plan) with "The Kookaburra" floor plan. The reasons for judgment of Lindgren J reveal that he accepted the invitation of counsel for the appellant to place a transparency of the "Paterson" floor plan upon a version of "The Kookaburra" floor plan drawn to the same scale. His Honour's reasons for judgment do not suggest that in considering the significance of what was revealed by this exercise, his Honour placed any weight on the fact that the "Paterson" floor plan shares some features with "The Kookaburra" floor plan which form no part of the Panetta drawing. Nor in this regard does it appear that his Honour gave any weight to the expert evidence of significant differences in layout between "The Kookaburra" floor plan on the one hand and the "Paterson" and "Robertson" floor plans on the other. Further, in concluding that the finding of actual copying by Mr Panetta rendered inappropriate the emphasis placed by me "on the difficulty of proving infringement in the absence of 'marked originality' and on the pervasiveness of the commonplace in the plans of the project homes", I understand the Full Court to have emphasised that it is not appropriate in the circumstances of this case for weight to be placed on the expert evidence of the "tight parameters" within which designers of project homes work and the many shared features of low cost project homes.
20 In answering the question of whether the floor plan shown in "The Robertson Modern Design" advertisement is a "reproduction and colourable imitation" of the Kookaburra drawing as a whole, I consider that I should, having regard to the reasons of the Full Court, notionally undertake an exercise of comparison comparable with that undertaken by Lindgren J in respect of the "Paterson" floor plan. Having notionally placed a transparency of the "Robertson" floor plan over "The Kookaburra" floor plan, I conclude that the Kookaburra drawing has been reproduced in "The Robertson Modern Design" advertisement. In view of this conclusion it is not necessary for me to give separate consideration to whether the "Kookaburra Series 2" drawing has also been reproduced in "The Robertson Modern Design" advertisement. However, assuming, as the applicant contends, that this is an appropriate comparison for me to make, I also conclude, utilising the same methodology, that "The Robertson Modern Design" advertisement reproduces the "Kookaburra Series 2" drawing.
21 The applicant's claim that its copyright in the Drawings has been infringed by the respondent's procuring of the publication of "The Robertson Modern Design" advertisement must on this basis succeed. The injunction which it seeks restraining further publication of the advertisement will be made.
The Erection of Homes
22 I turn to consider the applicant's claim that the respondent has reproduced the Drawings by the erection of certain homes. The respondent has formally admitted that it has built at least one home in accordance with the floor plan shown in "The Paterson Modern Design" advertisement and at least one home in accordance with the floor plan shown in "The Robertson Modern Design" advertisement. I understand this concession to involve admissions that the homes built in accordance with the respective floor plans have walls, doors, windows and internal fittings which conform with the floor plans shown by the two advertisements. That is, that if one were able to take horizontal sections of the homes, one would see that the walls, doors, windows and fittings describe on a scale of 1:1 that which the floor plans shown in the advertisements describe on a reduced scale.
23 Section 21(3) of the Copyright Act 1968 (Cth) ("the Act") provides as follows:
"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) [not here relevant]
and the version of the work so produced shall be deemed to be a reproduction of the work."
24 The qualification upon s 21(3) of the Act originally provided by s 71(1) of the Act was removed with the repeal of s 71 in 1989. Section 71(1), so far as is here relevant, had provided:
"71(1)For the purposes of this Act -
(a) the making of an object of any kind that is in three dimensions does not infringe the copyright in an artistic work that is in two dimensions; and
(b) [not here relevant]
if the object would not appear to persons who are not experts in relation to objects of that kind to be a reproduction of the artistic work."
25 The applicant sought leave following the Full Court's remitter to adduce further evidence in support of its claims that its copyright in the Drawings has been infringed by the building by the respondent of homes which reproduce in a material form a substantial part of the Drawings. I refused such leave. I understand that the further evidence would have touched on the appearance of homes built by the respondent. It was conceded that the evidence proposed to be led was relevant to the issue of liability. On a number of occasions during the course of the initial hearing, counsel for the respondent made it plain that her client did not, and would not, concede that its admissions concerning the building of homes provided a sufficient basis for a determination that such homes reproduced in a material form a substantial part of the Drawings. Nonetheless, the then counsel for the applicant chose not to place additional evidence on this issue before the Court. My refusal to allow the applicant to re-open its case on liability for the purpose of calling such evidence reflects my view that the applicant should be bound by the approach which it took at the initial hearing.
26 Lindgren J has recently considered the operation of s 21(3) of the Act in another case involving floor plans for project homes - LED Builders Pty Limited v Eagle Homes Pty Limited [1999] FCA 584. His Honour in that case rejected a submission that 'it follows inexorably that houses built "in accordance with" … infringing … plans are a version in three-dimensional form of … the copyright … plans or of a substantial part of [them]'. At para 62 Lindgren J took the view that it is necessary "… for there to be evidence of the appearance of the building, that is, its impact on the eye" to assess the similarity between the building and the plans. His Honour's reasons at para 66 make it clear that the type of evidence that he had in mind included photographic evidence or expert testimony as to the appearance of the house. Lindgren J concluded at para 72 that he could not make a finding of infringement by reproduction in a three-dimensional form of a floor plan in the absence of evidence of the appearance of the house to the human eye.
27 Had the question of the proper construction of s 21(3) of the Act been free of authority, I would not have reached precisely the same conclusion as that arrived at by Lindgren J in LED Builders Pty Limited v Eagle Homes Pty Limited. I respectfully agree with His Honour that it does not inexorably follow that houses built in accordance with infringing floor plans are versions in three-dimensional form of copyright plans. However, I would have been willing to accept that a case could arise in which a concession that a house had been built in accordance with an infringing plan could provide a sufficient basis for a finding that the house reproduces the copyright plan.
28 Lindgren J placed considerable weight on the decision of Helsham J in Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWR 265, a decision made by reference to the Copyright Act 1911 (Imp). In that case Helsham J at 273 accepted that a completed structure must appear to the eye as being a reproduction of what appears on a plan before infringement by a building of copyright in the plan can occur. However, his Honour went on to note that the floor plan of the plaintiff in that case disclosed the shape of the house by reference to exterior walls, the position and relative size of the windows, the interior layout of rooms and doors, and the presence and position of a number of internal fitments. I interpolate that the same may be said of the Kookaburra drawing in this case. Helsham J also noted that he could know from the defendant's plan the similar position and relationship of the self same features, and that he could know from sworn evidence that the house in issue had been erected for all practical purposes in accordance with the defendant's plan. I interpolate that the same may be said of the floor plans shown in the pleaded advertisements in this case. Helsham J observed at 274 that he was "assisted" by a number of photographs which, in effect, confirmed what he already knew, and concluded:
"Without actually visiting the house it is open to me to find that there is between it and the floor plan a similarity that could be seen and which would reveal, in accordance with the evidence, a reproduction of the features depicted on the floor plan by the actual features in situ."
29 Whilst Helsham J clearly took the view in the Lend Lease Homes case, which with I respectfully agree, that proof of reproduction in a three-dimensional form of a floor plan depends upon copying not only having occurred, but also on such copying being able to be seen to have occurred, I do not understand his Honour to have insisted upon actual evidence, or expert testimony, as to the appearance of the allegedly infringing three-dimensional work. That is, whilst his Honour acknowledged gaining assistance from photographic evidence, I do not read his judgment as being intended to convey that without that photographic evidence the plaintiff before him would necessarily have failed. Rather, I understand Helsham J to have indicated that he was willing to draw an inference as to visual similarity between the features depicted on the floor plan and the building there under consideration from the evidence which established that the building had been erected in accordance with the floor plan. As I read his Honour's judgment, his Honour felt more readily able to draw this inference because of the help which he gained from photographs. I doubt that his Honour intended to lay down a rule of law as to the nature of the evidence necessary to support an inference of visual similarity.
30 Nothing in the decisions in Chabot v Davies [1936] 3 All ER 221 or Burke and Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400 seems to me to be inconsistent with the above reading of the Lend Lease Homes case. In each of those cases emphasis is placed on the need to establish visual similarity between the work in which copyright has been shown to exist and the allegedly infringing three-dimensional work. However, neither case suggests any limitation on the types of evidence capable of supporting a finding of visual similarity.
31 It seems to me that in the case of some types of plans or drawings, a court might find it difficult, or indeed impossible, in the absence of evidence of the actual appearance of an allegedly infringing three-dimensional work, to be satisfied of visual similarity between the plan or drawing and the three dimensional work. Similarly, where a three-dimensional work has not been built in close accordance with a two-dimensional plan, a court might require assistance in reaching a conclusion as to visual similarity between the two works. However, in respect of some types of plans and drawing (for example, closely similar floor plans of little complexity), it seems to me that an inference of visual similarity might well be able to be supported by evidence, or admission, of construction having occurred in accordance with the plan or drawing.
32 Returning to the present case, none of "The Kookaburra", "Paterson" and "Robertson" floor plans is complex. Each outlines a domestic structure of the kind with which most people, including judges of this Court, might be expected to be familiar. Each of them shows, amongst other things, the respective size and configuration of the rooms, the way in which an occupant might move between the various rooms, the layout of the kitchen and bathroom and the placement of certain fittings, such as the planter box, within the home.
33 Were the issue free of authority, I would have felt able to draw some inferences as to the appearance of homes erected in accordance with the floor plans shown in "The Paterson Modern Design" and "The Robertson Modern Design" advertisements. As is mentioned below, I would have felt able to draw an inference of visual similarity between a house built in accordance with the floor plan shown in "The Paterson Modern Design" advertisement and the Drawings. However, in view of the fact that another judge of the Court has in a similar case, indeed a case involving a party who is also a party in this case, taken the approach that such an inference may not be drawn in the absence of "evidence of the appearance of … the houses to the human eye", I conclude that I should, in this area of some legal difficulty, take the same approach. I conclude that the applicant has failed to prove that the respondent has infringed the applicant's copyright in the Drawings by the building of homes.
34 However, in case the matter should go further, I consider it appropriate to indicate the findings that I would have made had I not considered it appropriate to follow the approach adopted by Lindgren J in LED Builders Pty Limited v Eagle Homes Pty Limited. That is, the findings that I would have made in the light of the conclusions, which I consider to be the necessary consequence of the judgment of the Full Court, that the floor plans shown in "The Paterson Modern Design" and "The Robertson Modern Design" advertisements reproduce the Kookaburra drawing.
35 I consider first the question of whether a house built in accordance with the floor plan shown in "The Paterson Modern Design" advertisement would infringe the applicant's copyright in the Drawings. That is, relevantly, whether such a house, as a completed structure, would appear to the eye as being a reproduction of what appears in the Kookaburra drawing.
36 I note that the floor plans shown in "The Paterson Modern Design" advertisement and the Kookaburra drawing respectively, both show not only the position, size and relationship of rooms and other features but also details of certain fittings, such as kitchen fittings. The Kookaburra drawing shows a relatively simple design capable of being conceptualised in three sections - a front section comprising a garage, patio, entrance and bedroom area, a central living area flowing in a relatively open way from the entry to the rumpus room, and a bedroom, bathroom and laundry unit towards the rear and at one side of the house. I conclude that a house built in accordance with the floor plan shown in "The Paterson Modern Design" advertisement, which shows similar sections, would be seen to be similar to the Kookaburra drawing and would appear to the eye to be a reproduction of the plan depicted in the Kookaburra drawing.
37 I turn to consider whether a house built in accordance with the floor plan shown in "The Robertson Modern Design" advertisement would infringe the applicant's copyright in the Drawings. The floor plan shown in "The Robertson Modern Design" advertisement in less simple than either of the Drawings and is less easily conceptualised in the three sections referred to above. In particular, it can be noted that a house built in accordance with the floor plan shown in "The Robertson Modern Design" advertisement would not reproduce a living area flowing in a relatively open way from the entry to the rumpus room. A house built in accordance with the floor plan shown in "The Robertson Modern Design" advertisement would also have other features which would tend to suggest against the house appearing to be a reproduction of the Drawings. It would have, for example, only one bedroom at the front of the house whereas the Drawings show two bedrooms at or near the front of the house. It would have a dining room nearer to the front of the house, and further from the kitchen, than is illustrated in the Drawings. Its back section would be wider than is suggested by the Drawings. I feel unable to be satisfied, in the absence of evidence touching on the appearance of a house built in accordance with the floor plan shown in "The Robertson Modern Design" advertisement, that those similarities between the floor plan and the Drawings which show, on the approach adopted by the Full Court, that the floor plan is a reproduction of the Drawings would be visually apparent in a house built in accordance with the floor plan.
38 The parties have helpfully produced schedules of plans for houses built, or planned to be built, of "the Paterson type and the Robertson type." The schedules provided to the Court at the conclusion of the hearing have been supplemented by schedules of additional houses and plans which have assumed relevance between that time and the date of the Full Court decision.
39 Schedules A and B were provided to the Court at the conclusion of the hearing. Schedule A lists houses and identifies the plans from which they were built. All of the plans (except one) identified by Schedule A are of the "Paterson" type. As to some of the plans identified by Schedule A, the applicant does not allege that the construction of houses in accordance with these plans constituted an infringement of the applicant's copyright in the Drawings. As to others, the respondent concedes that it would follow from a finding that a house built in accordance with the "Paterson" floor plan infringes the copyright in the Drawings that the building of houses in accordance with these plans resulted in infringement of the applicant's copyright in the Drawings. On the basis of this concession, and the Full Court's finding that the "Paterson" floor plan reproduces the Kookaburra drawing, I would have found that the houses built in accordance with the plans numbered 14, 28, 59 and 61 in Schedule A infringe the applicant's copyright in the Drawings.
40 As to houses built in accordance with plans identified in Schedule A in respect of which no relevant admission has been made, I would, on the basis identified above, have found as follows. Where houses have been built in accordance with the floor plan shown in "The Paterson Modern Design" advertisement but with features not shown in the "Paterson" floor plan (eg. a particular facade, a style of ceiling, variation in floor heights), I would have found that the houses infringe the applicant's copyright in the Drawings except in instances where I could not be satisfied that such additional features would not obscure visual similarity. On this basis, I would have found that houses built in accordance with plans numbers 2 and 37 in Schedule A infringe the applicant's copyright in the Drawings. Where houses have been built in accordance with plans which depart from the "Paterson" floor plan in only minor ways (eg. the absence of a door, modifications in window or door width or style, the absence of the "rumpus extension") I would also have found that the houses infringe the applicant's copyright in the Drawings. Houses built in accordance with plans numbers 4, 39, 51 and 56 in Schedule A fall within this class.
41 Plan number 3 in Schedule A has three bedrooms, rather than the four shown in the "Paterson" floor plan. Its external wall on the "bedroom side" is not indented front and back and it does not have a "rumpus extension". In a number of ways this plan is closer to the Kookaburra floor plan than the "Paterson" floor plan. I would have found that a house built in accordance with this plan shared sufficient visual similarity with the Kookaburra floor plan for the house to infringe the applicant's copyright in the Drawings.
42 Houses built in accordance with plans numbers 8, 9, 11, 12, 18, 21, 24, 34, 46 and 55 of Schedule A, I would have placed in the same category as houses built in accordance with plan 3 of Schedule A.
43 On the evidence led in this case, I would not have been satisfied that houses built in accordance with plans numbers 10, 16, 19, 20, 22, 25, 27, 32, 35, 36, 38, 43, 44, 45, 47, 48, 49 or 58 in Schedule A would have shared significant visual similarity with the floor plans shown in the Drawings to infringe the applicant's copyright in the Drawings.
44 All of the plans identified in Schedule B are of the "Robertson" type. For the reasons given above I am not satisfied on the evidence led in this case, that any of the houses identified in Schedule B infringe the applicant's copyright in the Drawings.
45 Schedule D lists additional "Paterson" houses and identifies the plan from which they were built. I will refer only to the plans concerning which the parties are in dispute. Adopting the same approach as is indicated above in respect of the houses listed in Schedule A, I would have found that the houses built in accordance with plans numbers 5, 23, 24, 25, 27, 30, and 33 in Schedule D infringe the applicant's copyright in the Drawings. However, on the evidence before me, I would not have been satisfied that any houses built in accordance with plans numbers 2, 6, 10, 14, 17, 19, 21, 22, 29, 31, 32, 34, 36, 37, 41 or 45 infringe the applicant's copyright in the Drawings.
46 Schedule E lists additional "Robertson" houses and identifies the plans from which they were built. These houses are covered by my above ruling concerning the houses identified in Schedule B.
47 However, on the approach which I have considered it appropriate to take, the only orders that will be made at this stage of the proceeding are orders restraining the respondent from further publishing "The Paterson Modern Design" and "The Robertson Modern Design" advertisements. The applicant is to bring in short minutes of order in accordance with these reasons.
I certify that the preceding forty-seven (47) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson.