Does Mondo own the copyright in the Torrington drawings?
69 Mondo claims, in summary, that Habitare provided access to Mondo drawings to Mr Souter-Robertson in 2005, and that Tamawood based its Torrington drawings on those Mondo drawings. The apparent sequence of events, as taken from the Souter-Robertson 9/8/2011 affidavit, affidavits of Mr Sweeney sworn 22 August 2011 ("Sweeney 22/8/2011 affidavit") and 1 September 2011 ("Sweeney 1/9/2011 affidavit"), the affidavit of Mr Darren Jarvis sworn 7 October 2011, and the affidavit of Mr Timothy Copley sworn 26 August 2011, may be summarised as follows:
On 2 February 1996 Mr Sweeney was retained by an unrelated entity to prepare designs for a townhouse development at Arundel in Brisbane. He created drawings of plans of two-storey duplexes in computer-aided design (CAD) - in particular on 27 June 1996 he created a drawing of a duplex plan showing the upper and lower floor plans (referred to as "MD1" in the cross-claim) and elevations of that duplex (referred to as "MD2" in the cross-claim). MD1 is as follows:
MD2 is as follows:
Mr Sweeney subsequently produced drawings based on MD1 and MD2, which are referred to by Mr Sweeney in his affidavit of 22 August 2011 as MD3 through to MD18. In particular during the hearing Mondo relied on MD7, MD14 and MD15.
Mr Sweeney identified MD7 as a drawing for a property which he created on or about 23 October 2001. It appears to be the ground floor of a duplex dwelling, and is as follows:
Mr Sweeney identified MD14 and MD15 as respectively the ground floor drawing and upper floor drawing of a duplex dwelling he created on or about 7 September 2001. MD14 is as follows:
MD15 is as follows:
In late 2002 Mondo was approached by Mr Peter Speer to prepare designs for a development application concerning a site at 690 Manly Road, Wynnum ("Wynnum site"). The evidence in relation to the entity on whose behalf Mr Speer sought the designs is slightly confusing, however it appears that, fundamentally, Mr Speer was acting on behalf of Habitare (Sweeney 1/9/11 affidavit paras 3 and 10).
The designs were of two-storey duplex dwellings. Mondo prepared those designs, which were finalised in 2003.
The floor plan design for the duplex ("Mondo Wynnum Duplex 2") is annexed to the Sweeney 1/9/2011 affidavit and is as follows:
The Mondo Wynnum Duplex 2 elevations were as follows:
Development approval was issued by the Brisbane City Council in September 2003 in relation to the Wynnum site.
Habitare then retained Modini+Smith architects (rather than Mondo) to prepare the construction drawings for the development of the Wynnum site.
At material times Mr Jarvis was employed by Habitare. Mr Jarvis deposed in his affidavit that, in the course of Habitare retaining Modini+Smith in relation to the Wynnum site, in June or July 2004 he provided to Mr Kevin Smith of Modini+Smith copies of drawings prepared by Mondo in relation to the Wynnum site. The Court is asked to infer that those drawings were the Mondo Wynnum Duplex 2 drawings or a version of those drawings.
In 2005, Habitare approached Modini+Smith to create drawings for the Hamish Street development. Drawings for a three-bedroom two storey duplex dwelling prepared by Modini+Smith are annexed to Mr Copley's affidavit and identified as "duplex 'Block-B'". The lower floor plan for this duplex is as follows:
The upper floor plan for this duplex is as follows:
Mr Sweeney's evidence is that the Modini+Smith drawings for the Hamish Street development were direct copies of Mondo drawings.
In or about July or August 2005 Mr Souter-Robertson had a discussion with Mr Peter Speer and Mr Shane O'Mara. Mr Speer informed Mr Souter-Robertson that the costs associated with the Modini+Smith drawings were too high for use by Habitare, and that Habitare was interested in Tamawood designs, and showed Mr Souter-Robertson the Modini+Smith drawings. Mr Souter-Robertson printed out Tamawood's standard duplex plans, including the Conondale drawings, for Mr Speer and Mr O'Mara.
Mr Timothy Copley, a project manager employed by Habitare, with whom Mr Souter-Robertson was acquainted, deposed that sometime shortly after July 2005 he provided Mr Souter-Robertson with the Modini+Smith drawings in order for Tamawood to estimate how much it would cost Tamawood to prepare construction drawings and to construct the dwellings. Mr Copley also deposed that he provided the drawings to Mr Souter-Robertson either in person or by email.
70 There appears to be no dispute that Mr Souter-Robertson was shown Modini+Smith drawings by persons associated with Habitare. Key disputes between Tamawood and Mondo concern the manner in which Tamawood dealt with the Modini+Smith drawings shown to Mr Souter-Robertson, and whether Tamawood substantially reproduced those drawings in the form of the Torrington drawings.
71 In summary, Tamawood's case is that its employees had little if any regard to the Modini+Smith drawings, whereas Mondo's case is that Mr Souter-Robertson was provided with copies of the Modini+Smith drawings (which essentially reproduced the Mondo Wynnum Duplex 2 drawings) and that those drawings were reproduced in the Torrington drawings.
72 It is not in dispute that the Copyright Act places emphasis on originality in, inter alia, artistic works: I note, for example, Pt III Div 1 of the Copyright Act, and observations of Mason CJ, Brennan and Deane JJ in Autodesk Inc. v. Dyason (1992) 173 CLR 330 at 335-336. However as further observed by Gleeson CJ, McHugh, Gummow and Hayne JJ in Data Access Corporation v Powerflex Services (1999) 202 CLR 1 at [22]:
… [T]he requirement in copyright law that a work be "original" is to be distinguished from the requirements that an alleged invention be novel and that it not be obvious [Their Honours cited here Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49 at 53]. The question for copyright law is whether "the work emanates from the person claiming to be its author, in the sense that he has originated it or brought it into existence and has not copied it from another". If so, the work does not lack originality because of the anterior independent work of another, although, in such circumstances, an invention might lack novelty.
(Footnotes omitted.)
73 These sentiments were echoed by Wilson J in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 482-484 where his Honour explained:
Counsel for the respondent argues that the drawings in the present case lack any real degree of originality because the ideas expressed had been portrayed in earlier literature on the subject, and furthermore the content of the drawings was dictated to an extent by the known function which the product was to perform. I am not persuaded that this submission is established by the evidence. The trial judge was justified in his conclusion that the existing literature could not have provided the information necessary to the construction of the respondent's product. His Honour found that the only explanation of the completed form of that product was the deliberate copying of the appellant's drawings. In any event, novelty or originality of the ideas expressed in an artistic work is not an essential prerequisite to copyright in the work. In L.B. (Plastics) Limited v. Swish Products Limited (1979) RPC 551, at p 567, Whitford J. said:
... no originality of thought is needed to sustain a claim to copyright. Under copyright ideas are not protected, only the skill and labour needed to give any given idea some particular material form, for it is the form in which the work is presented that is protected by copyright. That need only be original in the sense that it is all the author's own work.
In my opinion, there is ample originality in the authorship of the drawings by the appellant. The proposition that the protection afforded by copyright is somehow greater where the artistic work embodies a novel or inventive idea than where it represents a commonplace object or theme was recently rejected by Buckley L.J. in the Court of Appeal in Catnic Components Limited v. Hill and Smith Limited (1982) RPC 183. His Lordship said, at p 223, in a passage cited by Franki J. in the Federal Court:
... what is protected is the plaintiffs' 'artistic work' as such, not any information which it may be designed to convey. If it is said that a substantial part of it has been reproduced, whether that part can properly be described as substantial may depend upon how important that part is to the recognition and appreciation of the 'artistic work'. If an 'artistic work' is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information, but not, in my opinion, by how important the information may be which it conveys or helps to convey. What is protected is the skill and labour devoted to making the 'artistic work' itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the 'artistic work'.
Counsel appealed to the older authorities for support, beginning with the decision of the House of Lords in Hanfstaengl v. Baines & Co. Ltd. (1895) AC 20 where Lord Watson said, at p 28:
But in cases where copyright is claimed for pictures or drawings which treat an old and common subject, such as love-making beside a stile, the privilege of the author must, in my opinion, be strictly confined to the particular design which he has chosen.
But this passage merely serves to emphasize the fundamental principle that copyright rests not in the idea, however romantic or important that idea may be, but in the particular form in which the idea finds expression in the work.
74 I note further similar comments of Gummow J in Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 379 and Conti J in Sheldon & Hammond Pty Ltd v Metrokane Inc (2004) 135 FCR 34 at [43].
75 In my view the evidence before the Court supports the finding that the Tamawood drawings including the Torrington drawings are original artistic works, that copyright subsists in Tamawood in relation to them, and that the Torrington drawings are not substantial reproductions of drawings authored by Mr Sweeney or in respect of which copyright may repose in Mondo. I so find for the following reasons.
76 First, as is deposed by Mr Sweeney in his affidavit sworn 22 August 2011, there is significant consistency in his drawings of duplex plans. In my view there is little material difference between the Mondo Wynnum Duplex 2 drawings, and those represented in the duplex plans and elevations identified in MD1-18, in particular MD7, MD14 and MD15 which appeared to be the subject of particular reliance by Mondo.
77 Second, the only evidence of substance before the Court of transmittal of Mondo drawings to Tamawood relates to the meeting in June 2006 at which it appears Mr Souter-Robertson was shown Modini+Smith drawings, which Mondo alleges were reproductions of the Mondo Wynnum Duplex 2 drawings (based in turn upon evidence of Mr Jarvis that he had provided Modini+Smith with those drawings some time in June or July 2004). (Mr Copley also deposes that he provided Mr Souter-Robertson with the Modini+Smith drawings, but he could not recall exactly when or whether he had provided them in person or by email.) To that extent, Mondo's case - at its highest - appears to be that the Torrington drawings are reproductions of the Modini+Smith drawings, which in turn reproduced the Mondo Wynnum Duplex 2 drawings.
78 Specifically Mr Souter-Robertson's evidence was that he was shown Modini+Smith plans in person, and that he glanced at the plans for less than a minute. Mr Souter-Robertson also deposed that he ascertained from that brief glance that those plans would be too complex and costly for Tamawood to build, and included features which were not standard for Tamawood (para 3(d) of Mr Souter-Robertson's affidavit sworn 4 October 2011 ("Souter-Robertson 4/10/2011 affidavit"), supported by his oral evidence at transcript 19 October 2011 p 130 l 39 - p 131 l 17). He also deposed that he was not asked to price the Modini+Smith plans (para 3(e)).
79 In contrast, Mr Copley's evidence was that he provided the Modini+Smith drawings to Mr Souter-Robertson by hard copy or email, and that Mr Souter-Robertson costed the Modini-Smith plans. Mr Copley reiterated this evidence under cross-examination (transcript 27 October 2011 p 650 ll 26-46). However, there is no evidence that Mr Souter-Robertson actually did cost the Modini+Smith plans, and certainly no email has been produced in evidence whereby the Modini+Smith drawings were sent to Mr Souter-Robertson for costing.
80 Further, I note that Mr Speer's evidence was that he could not recall whether he had the Modini+Smith drawings with him at the meeting with Mr Souter-Robertson, although he thought it was probable that he did (for example, transcript 24 October 2011 p 320 ll 12-19 and p 321 ll 6-8). Mr O'Mara's evidence was similar to that of Mr Speer (for example, transcript 25 October 2011 p 403 l 45 - p 404 l 2).
81 A difficulty for Mondo in this case is that the Court is required to draw an inference as to which Modini+Smith drawings were shown or otherwise communicated to Mr Souter-Robertson. There is no direct evidence as to which drawings he saw in or about July or August 2005. Mondo's case, at its highest, is that the plans shown to Mr Souter-Robertson were those described as "duplex 'Block-B'".
82 I accept Mr Souter-Robertson's version of events relating to his access to the Modini+Smith drawings as being credible in the circumstances. In particular, I accept Mr Souter-Robertson's evidence that he looked at the Modini+Smith drawings but quickly concluded that they were unsuitable for Tamawood's purposes.
83 I also prefer the evidence of Mr Souter-Robertson to that of Mr Copley in relation to whether Mr Souter-Robertson performed costings on the Modini+Smith drawings. In my view it is likely that Mr Souter-Robertson was more interested in developing plans for Habitare which fit Tamawood standard models and practices. There is certainly no material evidence before the Court to contradict his assertion that he did not perform any such costings, other than a recollection of Mr Copley (which is not substantiated).
84 Finally in relation to this point, there is no evidence that Mr Mizikovsky had seen any Mondo drawings or Modini+Smith drawings at any time relevant to the creation of the Torrington drawings. Indeed, Mr Mizikovsky deposes in his affidavit sworn 7 October 2011 that he had not, and this evidence was not challenged.
85 Third, and in any event, while the Torrington drawings, the Mondo Wynnum Duplex 2 drawings, and the Modini+Smith drawings described as "duplex 'Block-B'" may represent three-bedroom duplex dwellings, as I have already observed it is clear from cases including Data Access, SW Hart, Interlego AG and Sheldon & Hammond Pty Ltd that novelty of design (or the absence thereof) in itself is not decisive in a consideration of the existence and ownership of copyright. This point was emphasised in relation to project dwellings of the kind designed by Mondo and Tamawood by Wilcox and Lindgren JJ in Tamawood Limited:
[38] The application of the law of copyright to project home plans gives rise to special difficulty. All modern homes have certain features in common. In the case of project homes competing for the same number of dollars, there are pressures towards sameness. Of course, the size, number of rooms and facilities will vary according to the price range. Commonly, however, those in the same price range will be found:
(a) to be designed to fit blocks of approximately similar shape and dimensions;
(b) to provide for vehicular access and accommodation; and
(c) to include features demanded by the market in question, such as, a certain number of bedrooms, a laundry, a kitchen, a family or rumpus room, an ensuite and a walk-in wardrobe ('WIR') in association with the main bedroom, built-in wardrobes in the other bedrooms, at least one bathroom in proximity to the other bedrooms, and certain facilities in the kitchen such as a sink, bench, dishwasher, stove, hot plate and microwave oven.
[39] The idea-form distinction, often elusive, is particularly so in the case of project homes. Yet the originality threshold for copyright protection is low…
86 It follows that no inference can be drawn of infringement of copyright by Tamawood in relation to the Torrington drawings by reference to the Mondo drawings merely because they exhibit a number of common features, including single garage, kitchen, lounge room, entry foyer, and dining area on the lower level with stairs to an upper floor (with three bedrooms, a bathroom and an ensuite to the main bedroom).
87 Fourth, and in any event, in comparing the Mondo Wynnum Duplex 2 drawings with the Torrington drawings, despite some features in common there are also significant differences between the drawings. Placing to one side as unnecessary a comparison between the Torrington drawings and the Modini+Smith drawings described as "duplex 'Block-B'" (in respect of which no action lies by Mondo), distinctions between the Torrington drawings and the Mondo Wynnum Duplex 2 drawings include:
The Mondo Wynnum Duplex 2 drawings represent a dwelling with a lounge room, a family room and a dining area. The dwelling represented by the Torrington drawings has only a living and dining area.
The Mondo Wynnum Duplex 2 drawings contemplate a laundry area with a toilet on the left side of the dwelling. The Torrington drawings do not provide for a separate laundry - there is provision for a washing machine in the single garage.
The Torrington drawings provide for an outside area for an outdoor setting under the roof line. No such provision is made in the Mondo Wynnum Duplex 2 drawings.
The Mondo Wynnum Duplex 2 drawings provide for a balcony adjacent to Bedroom 1 on the upper level. No such provision is made for a balcony in the Torrington drawings.
The rooms on both the lower and upper levels of the Mondo Wynnum Duplex 2 are arranged differently to those in the Torrington. So, for example:
On the lower level in the Mondo Wynnum Duplex 2 drawings the family and dining areas are on the right side of the drawings, between the garage and the back of the dwelling. Between the garage and the back of the dwelling on the lower level in the Torrington drawings are the stairs, a toilet room and the kitchen.
On the lower level in the Mondo Wynnum Duplex 2 drawings the lounge room, stairs, laundry and kitchen are on the left side of the drawings. The kitchen in the Mondo Wynnum Duplex 2 drawings is relatively square in shape. The only features on the left side of the lower level in the Torrington drawings are a living and dining area and an outdoor eating area.
On the upper level in the Mondo Wynnum Duplex 2 drawings the rooms are arranged such that Bedroom 1 is separated from the other two bedrooms by stairs and an area at the top of the stairs. In the Torrington drawings the three bedrooms are grouped around the stairs.
Further, in the Mondo Wynnum Duplex 2 drawings the bathroom areas are on the right side of the drawings, contrasted with the Torrington drawings where the bathroom areas are located on the left side of the drawings.
88 These differences also carry over to a comparison between the Torrington drawings and subsequent Mondo drawings including MD1, MD7, MD14 and MD15.
89 In Tamawood Limited Wilcox and Lindgren JJ observed:
[43] In the well known passage from the judgment of Gibbs CJ (with whom Mason and Brennan JJ agreed) in S W Hart at 472 (referred to by his Honour - see [21] above), the Chief Justice said:
The notion of reproduction, for the purposes of copyright law, involves two elements - resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614, "a sufficient degree of objective similarity between the two works" and "some causal connection between the plaintiffs' and the defendants' work".
(followed in Australia in, for example, Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 ('Dixon Investments 2') at 495; LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215 ('LED') at 218; Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 ('Eagle') at [17]).
90 In my view there is not a sufficient degree of objective similarity between the two works to support a finding of reproduction of the Mondo Wynnum Duplex 2 drawings (or later Mondo drawings including MD1, MD7, MD 14 and MD15) in the Torrington drawings.
91 Finally, as I have already noted, there is evidence before the Court concerning the processes in Tamawood for the development of drawings, and the exercise of skill, judgment and labour in their creation by architects employed by Tamawood, including in creation of the Torrington drawings. I note in particular:
Evidence of Mr Mizikovsky at paragraphs 29-32 of his affidavit sworn 28 July 2011 ("Mizikovsky 28/7/2011 affidavit") and of Mr Souter-Robertson at paragraph 7 of his affidavit sworn 9 August 2011 ("Souter-Robertson 9/8/2011 affidavit") where they detail the genesis of the Torrington drawings in 2005.
Oral evidence of Mr Mizikovsky and Mr Souter-Robertson at the hearing where they explained the exhibits LM28 and PSR2A to their respective affidavits. Specifically, those exhibits were sketches, representing floor plans of the duplex design which would become the Torrington, amended by thick felt pen and the subject of consultative amendment.
Oral evidence of Mr Speer that "over a period of time" following the initial discussion between Mr Speer, Mr O'Mara and Mr Souter-Robertson, Mr Souter-Robertson produced drawings which were eventually suitable for Habitare's requirements (for example, transcript 24 October 2011 p 320 ll 21-25, p 321 ll 16-19).