The Forbes‑Taber plans
10 The substance of the proposed separate question is whether the Forbes‑Taber plans "are each original artistic or literary works" and not made by copying any of the Kilthistle plans or the Betterlook plans so that, accordingly, the Forbes‑Taber plans do not infringe copyright in any of the Kilthistle plans or the Betterlook plans.
11 The Austwide respondents admit, on the pleadings, that the fourth respondent, Mr Fleming (then a director of Austwide), on behalf of Austwide, commissioned the making of a series of plans drawn by Mr Forbes‑Taber and that Mr Forbes‑Taber made the Forbes‑Taber plans pursuant to the commission. They admit that this was done without the licence of any of the applicants; they say, of course, that no licence was required. The second further amended statement of claim proceeds to make two allegations, each of which is denied. One is that each of the Forbes‑Taber plans reproduces the whole or a substantial part of a specified Kilthistle or Betterlook plan. That allegation is made in par 80. Paragraph 81 then says:
"Forbes‑Taber, in making the Forbes‑Taber plans, referred to in paragraph 80, copied the [Kilthistle plans and the Betterlook plans] referred to in paragraph 80."
12 Senior counsel for Mr Fleming, whose arguments were adopted by counsel for the other Austwide respondents, made it clear that the question was intended to raise the issues arising from par 81 rather than the broader issue of reproduction raised by par 80. The proposed question, accordingly, is concerned with the subjective element of the notion of "reproduction", that is, actual use of the copyright work or "some causal connection between the plaintiffs' and the defendants' work" (Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614; S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 472; Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1 at 5). It is not concerned - directly, at any rate - with the objective aspect of reproduction, that is, similarity to the copyright work.
13 The Austwide respondents submitted that the "copying" question, in relation to the Forbes‑Taber plans, was a distinct and readily separable issue which, if decided separately, would substantially limit the issues remaining to be dealt with and, more significantly, if the question were decided in favour of the Austwide respondents, would be likely to promote settlement because, the primary question relating to the continuing conduct of the Austwide respondents having been dealt with (because, it was said, Austwide no longer constructs houses in accordance with the Kilthistle plans and specifications), what would remain would be largely, at least, a claim for pecuniary relief which would be readily capable of settlement. Because of the way in which the separate question was framed, it was said, and in the light of the applicants' claims as pleaded and particularised, there would be little overlap between the evidence on the separate question and that in relation to the remaining issues; and there was no serious prospect that a view formed as to the credit of any witness giving evidence in relation to the separate question would cause embarrassment if the judge who determined the separate question also determined the remaining issues. Positively, it was said that the scope of the evidence relevant to the separate question would be quite limited: the allegation was that Mr Forbes‑Taber had, in drawing his six plans, copied six identified plans in which the applicants claimed copyright. Thus, the only relevant comparison would be one between Mr Forbes‑Taber's six plans and the six plans of the applicants. And a finding that there was no copying would finally dispose of the issues relating to the Forbes‑Taber plans and the Forbes‑Taber homes in favour of the Austwide respondents. There would, in other words, be no need to consider evidence about the Forbes‑Taber homes, or any separate plans for those homes.
14 Unfortunately, I am not convinced that the matter is quite so simple. The allegation in par 81 of the second further amended statement of claim is of copying by Mr Forbes‑Taber. He, in making his plans, is said to have copied the applicants' plans. But no claim of infringement is made against Mr Forbes‑Taber. What is meant precisely, in those circumstances, by an allegation that Mr Forbes‑Taber copied the applicants' plans may, in due course, require further elaboration; but I do not think it is at all clear that a finding that that claim was not made out would necessarily lead to a conclusion that the preparation of the Forbes‑Taber plans and their use in constructing transportable homes did not involve infringement on the part of Austwide or other Austwide respondents. In other words, within par 80 of the second further amended statement of claim, "reproduction", in both its subjective and objective aspect, might be established on the part of Austwide independently of the allegation in par 80. The facts of Eagle Homes provide perhaps, an indication (though not an example) of a way in which that might be so: much might depend, for example, on the precise nature of the instructions given by Mr Fleming to Mr Forbes‑Taber when his plans were commissioned. It would follow that, if a separate trial of the question propounded were ordered, the need to investigate homes and their plans would not necessarily be avoided, however the question were answered.
15 Additionally, however, I do not accept that it is appropriate to separate the trial of the two aspects, the subjective and the objective, of reproduction. The particular submission of the Austwide respondents, on this aspect of the case, was that evidence of the prior art, while relevant to the question of objective similarity, was not relevant to the question of copying, so that a good deal of detailed, particularly expert, evidence would not be required if the copying question were decided in favour of the Austwide respondents. Certainly, Eagle Homes demonstrates that, once copying is established, the objective similarity hurdle is not very high; and that it may, therefore, be useful and appropriate to decide questions of copying before turning to objective similarity. But much will depend, in any given case, on the way in which copying can be proved, or is sought to be proved. The author of an infringing plan may admit copying or may be proved to have had a copyright plan on the drawing board when preparing the allegedly infringing plan; or, as in Eagle Homes, the allegedly infringing plans may be shown to have incorporated particular and striking features of the copyright plans not present in what the author of the allegedly infringing plans claimed to have been the source material for those plans. On the other hand, it may be possible to establish copying only by inference from objective similarity and in some such cases a "specially close similarity" might be required: Eagle Homes at 21. In a case of that kind there is an obvious overlap between the two elements of reproduction, and I do not see why evidence about prior art would not be equally relevant to the subjective as to the objective element: an inference of copying might be made much more readily where a feature of the copyright plan appearing in the allegedly infringing plan was an original or unusual feature than where it was one which might be found, for instance, in numerous plans of transportable homes or, possibly, houses of other kinds such as project homes.
16 How the applicants will seek to prove copying in this case is, so far as the material before me goes, a matter of speculation. Substantially all that is known is that there is no admission: both copying and reproduction are alleged and both are denied. It follows, I think, that I must accept the submission of senior counsel for the applicants that expert evidence may well be relevant; that the experts involved are likely to be those who would be called in relation to other issues; and that there is therefore at least a great deal to be said for the proposition that it is more convenient that they be called once only and, particularly, that matters of credit, and relative weight, should be considered in the light of their evidence as a whole.
17 Then there is the question of Mr Fleming's evidence. Plainly, his evidence will be important on the question of copying and senior counsel for the applicants made it clear that his credit will be in issue. Mr Fleming is also said to have authorised, and to have been a participant in a common design in relation to, the earlier infringements. Although I accept that Mr Fleming's involvement with Austwide, as pleaded, before December 1995 was relatively short and that the particulars of his involvement, given in the second further amended statement of claim, rely largely on his own affidavit evidence (of his limited involvement), nevertheless, if the question of copying were tried separately, it is likely that views would be expressed, in the reasons for the answer to the question, on his credit; and in circumstances where his conduct would be in issue in any trial of the remaining issues.
18 There are two other matters. One concerns the submission that a decision on the separate question might substantially eliminate questions about injunctive relief (and additional damages); the other relates to the possible impact of appeals. As to the former, although the argument appeared to proceed on a common assumption that the only plans still used by the Austwide respondents, in relation to which the first, second and fourth applicants claim copyright, are the Forbes‑Taber plans, that in fact, as I understand it, is not admitted. So far as the pleadings go, there is an allegation that the respondents threaten and will continue to engage in all the infringing conduct alleged against them unless restrained. That is denied in relation to the (pre‑December 1995) Kilthistle plans; but Austwide admits that it will continue to do what it is alleged to have done (though it denies infringement) in relation to both the Forbes‑Taber plans and the Betterlook plans. To suggest in those circumstances that a decision of the proposed separate question, favourable to the Austwide respondents, would eliminate questions of injunctive relief is, at best, speculative.
19 As to the other matter, questions about copying are notoriously difficult. It is not unlikely that the parties which were unsuccessful on the separate question would wish to appeal. An appeal would lie, of course, only with leave; and on the application for leave the Court would, no doubt, have to consider, among other things, whether it was more convenient to hear an appeal in relation to separate questions, leaving the trial of other matters to take place separately (and presumably later) or, on the other hand, to defer any appeal until the issues between the parties had been fully determined at first instance. In neither case is it easy to see how the making of the order sought by the present motion would promote the expeditious determination of the issues between the parties. I shall comment further on this matter when considering the other proposed separate question.
20 Undoubtedly the identification of questions appropriate to be determined separately can narrow issues, promote settlement and assist in the efficient administration of justice. But there are numerous cautionary examples of the unfortunate effects of the separation of issues where it is not appropriate; and authority indicates that caution is indeed necessary (see the summary in the judgment of Branson J in Reading Australia Pty Ltd v Australian Mutual Provident Society [1999] FCA 718). For the reasons I have given I am not persuaded that it is appropriate to order a separate trial of the issues raised by par 81 of the second further amended statement of claim.