Tamawood Limited v Henley Arch Pty Ltd

Tamawood Limited v Henley Arch Pty Ltd - [2004] FCAFC 78 - FCAFC 2004 case summary — Zoe

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BACKGROUND FACTS 5 Henleys are project home building companies. Henley is a subsidiary of Henley Arch. Henley Arch was the owner of copyright in the plans and drawings for the 'Chirnside' ('the Chirnside Works') and in the houses built in accordance with them ('the Chirnside Buildings'), and in the plans and drawings for the 'Baltimore' ('the Baltimore Works') and in the houses built in accordance with them ('the Baltimore Buildings'). Henley is the exclusive licensee of Henley Arch in Queensland of the right to reproduce the Chirnside Works and Buildings and the Baltimore Works and Buildings in a material form. Each of the Chirnside Works and Buildings and each of the Baltimore Works and Buildings was an original artistic work in which copyright under the Copyright Act 1968 (Cth) ('the Act') subsisted. 6 The first applicant for leave to appeal, Tamawood Limited, unsuccessfully contended before his Honour that copyright did not subsist in the Chirnside Works or Buildings, because the Chirnside plan was not 'original', having been copied, in infringement of Tamawood's own copyright, from Tamawood's 'Renee' plan. Tamawood did not press a ground of appeal relating to his Honour's non-acceptance of that contention. 7 Tamawood is involved in the building of project homes in Queensland, but does not itself build them. Rather, it promotes designs for project homes to the public, and facilitates the building of them by encouraging its clients to contract directly with builders with which Tamawood is associated. 8 Three employees of Tamawood played roles in connection with the facts which underlie the litigation: · the second applicant for leave to appeal, Lev Mizikovsky, who was Tamawood's Managing Director; · Richard Middleditch, who was a sales representative of Tamawood; and · Jason Middleton, an architectural draftsperson employed by Tamawood. 9 The third applicant for leave to appeal, Christine Gould ('Ms Gould'), was a client of Tamawood. She played a central role in the circumstances which gave rise to the litigation, in so far as it relates to the Chirnside. In June 1997 Ms Gould inspected a Chirnside home which was on display at Wishart, a suburb of Brisbane, and obtained a brochure which included what may be described as an indicative (without dimensions) floor plan of the Chirnside. (The position is not entirely clear, but the better view is that on the pleadings the indicative plan in the brochure is included in the Chirnside Works in suit.) Ms Gould later engaged Tamawood to prepare plans for the construction of a house on her land, being Lot 38, 23 Oakley Street, Carindale. 10 Tamawood used as the basis of its plan for Ms Gould's house, its own project home plan called the 'Adrian'. Tamawood owned the copyright in the Adrian. However, it modified the Adrian plan in accordance with instructions given by Ms Gould. 11 His Honour found that the final form of the plan prepared by Tamawood for Ms Gould, incorporating the modifications she requested ('the Gould plan'), infringed Henley Arch's copyright in the Chirnside Works and Buildings, because Ms Gould derived the modifications from, ultimately, the plan on the Chirnside brochure plan and the display home she had seen. His Honour found that the house constructed for Ms Gould based on the Gould plan ('the Gould house') also infringed Henley Arch's copyright in the Chirnside Works. 12 The litigation at first instance and the present appeal also related to Henley Arch's copyright in the Baltimore Works and Buildings. His Honour found that Tamawood infringed Henley Arch's copyright in the Baltimore Works and Buildings by producing and advertising a plan for Tamawood's 'Bern' project home. Ms Gould was not involved in the 'Baltimore-Bern' aspect of the case. Importantly, no house was ever built in accordance with the Bern plan; Henleys' case is that the Bern plan itself infringed Henley Arch's copyright in the Baltimore Works and Buildings. 13 Before his Honour, Tamawood and Mr Mizikovsky ultimately cross-claimed:

that Henleys had unjustifiably threatened them with proceedings for infringement of copyright (see s 202 of the Act);
that in contravention of s 52 of the Trade Practices Act 1974 (Cth), Henleys had represented to customers of Tamawood and/or to members of the public that (relevantly): (a) Tamawood had copied Henley's and/or Henley Arch's plans, designs and/or houses; (b) Tamawood had advertised a plan and/or design that was a copy of Henley's and/or Henley Arch's plans and/or designs; (c) Tamawood was a marketing company; (d) Customers of Tamawood had no choice about the nature or quality of the finish within homes constructed by Tamawood; and
that by reason of its Chirnside plans, Henley had infringed Tamawood's copyright in its 'Renee plans'. Tamawood and Mr Mizikovsky sought declaratory and injunctive relief and damages.

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RELEVANT PROVISIONS OF THE ACT 14 For the purposes of the Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right, in the case of an artistic work, inter alia, 'to reproduce the work in a material form': s 31(1)(b)(i). Such reproduction is referred to in the Act as one of the 'acts' comprised in copyright (see, for example, ss 13(1), 31(1)(b)(i), 36 (1)). Plans for a house, being 'drawings', are an artistic work, as is a 'building': s 10(1) ('artistic work'). 15 Copyright in an artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner, does in Australia, or authorises the doing in Australia, of any act comprised in the copyright: s 36(1). A reference in the Act to an act comprised in the copyright in a work, is to be read as a reference to any act that, under the Act, the owner of the copyright has the exclusive right to do: s 13(1). 16 Subsections 14(1) and 21(3) of the Act provide as follows: '14(1) In this Act, unless the contrary intention appears: (a) a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter; and (b) a reference to a reproduction, adaptation or copy of a work shall be read as including a reference to a reproduction, adaptation or copy of a substantial part of the work, as the case may be.' '21(3) 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) in the case of a work in a three-dimensional form - if a version of the work is produced in a two-dimensional form; and the version of the work so produced shall be deemed to be a reproduction of the work.' 17 It follows from these legislative provisions that Henley Arch's copyright in the Chirnside Works or Buildings is infringed if either of them, or a substantial part of either of them, is reproduced in the Gould plan or the Gould house, since the Gould plan and the Gould house are each a material form. Similarly, Henley Arch's copyright in the Baltimore Works or Buildings is infringed if either of them, or a substantial part of either of them, is reproduced in the Bern plan.

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Chirnside-Gould 18 The major issues raised at first instance were the subsistence of copyright in the Chirnside Works and Buildings and the existence of the necessary causal link between them and the Gould plan and the Gould house. On the appeal, Tamawood did not contest the finding of the primary judge in favour of Henleys on either of these issues. Shortcomings which we refer to below in the statement of his Honour's reasons in relation to the issues pressed by Tamawood on the appeal, may be attributable to the fact that those issues assumed little significance in Tamawood's case at first instance. 19 As noted already, the primary judge rejected Tamawood's claim that copyright did not subsist in the Chirnside Works on the ground, unsuccessfully asserted by Tamawood before his Honour, that they had been copied from Tamawood's 'Renee' design. 20 His Honour observed that some parts of the Gould house conformed to the Adrian plan, but that the Adrian plan had been significantly modified, and that, as a result, there were similarities between the Gould house and the Chirnside design. 21 The primary judge noted that the term 'reproduce' or 'reproduction' is not defined in the Act, but that reproduction has two elements: (1) objective resemblance or similarity; and (2) a causal link between the copyright work and the work said to infringe. His Honour cited, in support, the well-known passage from the judgment of Gibbs CJ (with whom Mason and Brennan JJ agreed on the point) in S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 ('SW Hart') at 472 (set out at [43] below). The primary judge acknowledged that the required causal connection might be established by direct or indirect copying. 22 His Honour recounted the evidence of Ms Gould that she did not have any plan or representation of the Chirnside other than that in the brochure which she obtained when, with her partner, Mark Crompton, she inspected homes built by Henley in the display village. She said she had tried to obtain from Henley a fixed price for construction of a Chirnside house on the block of land at Carindale, but without success. She said it was then, that, on the recommendation of a work colleague, she contacted Tamawood's sales representative, Richard Middleditch. 23 His Honour did not accept aspects of Ms Gould's evidence. He did not accept her testimony that she used Tamawood's 'Samuel' plan during the design process. More importantly, he did not accept her denial that she had derived from the Chirnside brochure the features she requested Mr Middleditch to incorporate into the Adrian design. Mr Middleditch agreed that the changes made to the Adrian plan were made at the direction of Ms Gould, but said he was unaware that she was making her requests by reference to the Chirnside design. He said she did not mention the Chirnside to him. He agreed, however, and contrary to Ms Gould's denial, that they had discussed Henley. Mr Middleditch further said he did not discuss any part of the design of the Gould house with Tamawood's Managing Director, Mr Mizikovsky, because he (Mr Middleditch) did not regard as substantial the departures from the Adrian which Ms Gould was requesting. 24 In rejecting Ms Gould's evidence that she did not derive her requested modifications of the standard Adrian design from the Chirnside brochure, his Honour said (at [36]-[38]): 'The very significant addition of a polygonal, fully-glassed meals area adjoining the kitchen is a striking change from the Adrian, and a major feature of the Chirnside. Ms Gould did not say that she wanted that idea or feature of the Chirnside incorporated in her house, the working out of which she left to Tamawood. She claims not to have been influenced by the Chirnside in the least in requesting that feature. An unusual and striking feature of both the Chirnside and the Gould homes is the pair of pilasters about two-thirds of the height from floor to ceiling which flank the corridor leading from the lounge-dining area of the houses to the rear part of the house. It was put to Ms Gould: "So is it your evidence that it's mere coincidence that this further feature is something which you saw in the Chirnside and which you decided to have incorporated in your house?---It was a feature that was in a pre-existing house that I'd lived in previously. That it was in the Chirnside I can't answer that question. Where I got that idea from was from a house I lived in previously." I do not accept that Ms Gould is being truthful in this explanation, and her account is motivated by a desire not to acknowledge that any of the changes that she obtained in the house as built had their origin in the Chirnside plans. I am satisfied that almost all of the changes sought by Ms Gould were requested by her so as to bring the house she wanted built in line with the Chirnside plans.' (our emphasis) 25 The primary judge also said he had reservations about Mr Middleditch's evidence that he was unaware of the Chirnside or of the fact that the changes he instructed Tamawood's draftsperson, Mr Middleton, to make to the Adrian plan at Ms Gould's direction, had been derived by her from the Chirnside. However, his Honour said he could not 'positively conclude' that Mr Middleditch knew that the changes came from the Chirnside. 26 His Honour had no hesitation, however, in accepting the evidence of the draftsperson, Mr Middleton, that he was unaware of any connection between the changes he drew and the Chirnside. Indeed, Mr Middleton said in cross-examination: ' … there was no talking allowed with the sales people [such as Mr Middleditch] at Tamawood.' 27 As to Mr Mizikovsky, his Honour was not satisfied that when he approved of Mr Middleton's changes to the standard Adrian plan, he knew or suspected that they had come about in order to bring Ms Gould's house 'into line' with the Chirnside design. 28 Turning to the question of objective similarity, his Honour listed (at [41]) 18 'important similarities between the Gould and the Chirnside plans and houses', stating that, although the similarities by themselves would not necessarily be remarkable, in combination they pointed strongly to the conclusion that the modifications were requested by Ms Gould to bring the Adrian design into line with the Chirnside. We list these 18 similarities in [86] below when addressing the parties' submissions in relation to them. Following the listing of the 18 similarities, his Honour said (at [45]): 'When one compares the Chirnside plan with the Gould plan, the objective similarity is in my assessment overwhelming.' (our emphasis) Tamawood attacks this statement on the basis that it fails to acknowledge the underlying similarity which already existed between the Adrian and Chirnside plans. 29 The primary judge did acknowledge (at [43]) that there were differences between the Gould house as designed and the Chirnside Works and Buildings. He gave as examples that 'the Chirnside house has no internal access to the house from the garage, and the configuration of the bathroom and laundry and bedrooms 2, 3 and 4 are quite different'. Nonetheless, his Honour said (at [44]): 'There is in this case a high degree of objective similarity, and I accept that there was a causal connection between the Chirnside plans and the Gould plans and house, because of the quality and extent of the changes requested by Ms Gould, and the reason for those requests.' 30 His Honour said (at [45]) that while he could not conclude that there was direct copying or tracing of the Chirnside plan by Tamawood: '[t]he requests or directions of Ms Gould led to the result that it can fairly be said that the Gould plans are a reproduction of the Chirnside plans, or a substantial part of them.' Tamawood submits that his Honour did not give reasons for his conclusion that there was a reproduction of 'a substantial part' of the Chirnside design: he did not identify the 'substantial part' of the Chirnside that was reproduced. 31 In conclusion on the Chirnside-Gould part of the case, his Honour held (at [47]): · that the Gould plans and house constituted an infringement of the copyright of Henley Arch in the Chirnside Works and Buildings; · that Ms Gould infringed that copyright by procuring the production of plans for her house and the building of her house in accordance with the Chirnside plan; · that he was not satisfied that the infringement by Tamawood was a deliberate or knowing one, because, although he had suspicions, he was not satisfied that Mr Middleditch knew that Ms Gould's requests and directions were founded on the Chirnside Works or Buildings; and · that he was not satisfied that Mr Mizikovsky, when approving the changes made for Ms Gould to the Adrian, knew or suspected that they would, and were intended to, bring the design of the Gould house 'into line' with the Chirnside design. 32 In the light of his Honour's findings, Tamawood's cross-claim, in so far as it alleged that Henleys had infringed Tamawood's copyright in its Renee plans, and had made groundless threats, was dismissed. In so far as the cross-claim alleged misleading or deceptive conduct, his Honour thought that representations (a), (b) and (c) referred to at [13] above were not misleading or deceptive, and that representation (d) (also referred to at [13] above) was not made by or on behalf of Henleys, and, in any event, was not shown to have been false. Accordingly, his Honour dismissed Tamawood's cross-claim.

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Baltimore-Bern 33 Tamawood had a policy of obtaining plans for Henley houses and designing houses to compete with them. The Tamawood houses were marketed within Tamawood's 'Cut Price Homes' division, and were less expensive than their Henley counterparts. Tamawood would choose a name for its house which used the first letter or the first two or three letters of the name of the corresponding house of Henleys. Thus, the Bern was produced to compete with the Baltimore; the Berwick with the Bentley; the Berwick 29 and the Budapest 29 with the Bentley 29; the New York with the Newport; the Los Angelos 36 with the Lodge 36, and the Oxford 35 with the Oakridge 35. 34 Sometimes Tamawood would submit its proposed plan to Henleys and ask Henleys whether they had any objection. Tamawood followed this practice in relation to the Bern. 35 His Honour stated (at [54]): 'I accept that the creation of the Bern was part of a systematic attempt by Tamawood to compete with Henley, by taking and looking at the range of Henley houses and then trying to create a design as close as possible to that Henley design, but hopefully, without infringing Henley's copyright in the plan. It was because of the closeness of design, in my opinion, that Tamawood sent copies of its competing designs to Henley. Here the causal connection is plain and, while there are differences, the Bern and the Baltimore are strikingly similar, and so much I find was intended.' His Honour said he was assisted in reaching this conclusion by the evidence of Mr Wilde, an architect and principal of Goodsir Baker Wilde, architects, who reported: 'Whilst the common features of the subject designs are not in themselves unique, it is the combination of the same features that leads me to form the view that there is an overall striking resemblance of the plans and elevation.' 36 His Honour said (at [55]): 'In considering whether a substantial part of the plans have been taken by the respondent, the quality rather than the quantity of what has been taken from the designs is important, and the overall impact of the designs rather than specific individual or minor features is what is important. It is the overall design and combination of features which leads to the conclusion that, notwithstanding the differences which exist, the Bern plan is a reproduction of at least a substantial part of Henley's Baltimore plan.' 37 His Honour concluded that Tamawood and Mr Mizikovsky infringed Henley Arch's copyright in the Baltimore Works and Buildings by the production of the Bern plan.

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GENERAL Copyright and project homes 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. It is no longer challenged that copyright subsisted in the Chirnside Works and Buildings, as well as in the Baltimore Works and Buildings. 40 Although copyright subsists in the whole of a plan or house, this does not mean that each individual part of it, considered in isolation, satisfies the originality test for the subsistence of copyright, that is to say, that it originated with the author. Some parts may be original only in the sense that they are part of a whole which did originate with the author. So, Lord Pearce was able to say that to copy an unoriginal part of a copyright whole is not an infringement: cf Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 ('Ladbroke') per Lord Pearce at 293. 41 The taking of an idea, as distinct from its expression, from a copyright work will also not constitute an infringement, since there is no copyright in ideas: cf Kenrick & Co v Lawrence & Co (1890) 25 QBD 99 ('Kenrick'). Common examples concern objects in the real world or ideas based on objects in the real world. A person who draws or photographs an object does not, through the copyright in the drawing or photograph, become entitled to prevent others from drawing or photographing the same object, even though there may be a striking similarity between the two drawings or between the two photographs. The drawing of plans for project homes involves a mixture of the use of familiar ideas based on objects in the real world (many other project homes and the plans for them) on the one hand, and labour, skill and judgment (in combining and arranging the various parts) on the other hand. It may be possible to say of each individual part, considered in isolation, that it merely expresses a common idea, yet there will be copyright in the whole plan if the combination and arrangement originated with the author. In protecting that origination, copyright protects the author's labour, skill and judgment. 42 It is reasonable to expect that the more simple, commonplace, familiar and straightforward the subject matter of a copyright work, the closer the similarity that will be required if infringement is to be found: cf Kenrick at 102.

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Reproduction generally 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]). 44 'Causal connection' and 'objective similarity' are not referred to in the Act, and are but the components of the Act's concept of 'reproduction'; Eagle at [98]. Causal connection is sometimes inferred from access to the copyright work in suit and sufficient objective similarity between it and the work said to infringe. But the two elements are conceptually distinct: a young child may try to copy a drawing, yet fail, for lack of skill, to reproduce it; a skilful copier may attempt to copy a work on the basis of his or her recollection of it, yet fail for imperfection of memory; a chain of communications from the observer of a work to the ultimate author of an intended copy of it may be so defective that, again, the intended copy fails to reproduce the original. But even a perfect copy, if truly accidental and independent, is also not a 'reproduction', because the necessary causal link between the two works is missing: cf Ladbroke at 276 per Lord Reid; Eagle at [85], [86]. 45 Tamawood concedes that there can be an infringement although the author did not directly copy from, or even know of, the copyright work. The primary judge cited, in this connection, LED at 225, but that case did not go so far as Tamawood's concession does. In LED, a director of the alleged infringer gave instructions to its drafters for modifications to be made to bring plans into line with the copyright plans of the applicant. The comparable situation in the circumstances of the present case would be that Mr Mizikovsky filled Ms Gould's role, that is to say, that he, as an officer of Tamawood, and knowing of the Chirnside plan and intending to take from it, gave the unsuspecting Mr Middleton instructions for modifications to the Adrian, which, in fact, when implemented, would bring it into line with the Chirnside. On his Honour's findings, that is not this case. 46 The primary judge expressed (at [42]) surprise at a statement in Eagle (at [86]) that 'where subjective copying occurs there can be expected to be found an infringement, unless it transpires that the product is so dissimilar to the copyright work that the copyright work can no longer be seen in the work produced'. Referring to an expectation, that statement allows for exceptions. Also it must be read in context. As stated earlier in the judgment (at [72]) Eagle was better regarded as a case of reproduction of the whole of the copyright work, so it was strictly not necessary to undertake the 'substantial part' inquiry. Eagle was a case of subjective copying of the shapes and arrangement of, and interrelationship between rooms, and of traffic flow, throughout the house. The statement which surprised his Honour is akin to that of Lord Bingham in Designers Guild Ltd v Russell William (Textiles) Ltd [2001] FSR 113 ('Designers Guild') that: '[w]hile the finding of copying did not in theory conclude the issue of substantiality, on the facts here [Designers Guild was also a case of overall similarity] it was almost bound to do so.' (at 116-117) It was acknowledged several times elsewhere in the judgment in Eagle (at [69], [74] and [103], for example) that subjective copying alone is not enough, and that where a part is taken it must be a substantial part of the copyright work. (Peterson J's aphorism, 'what is worth copying is prima facie worth protecting', a statement made in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 610 in relation to the subsistence of copyright, was in fact invoked in the context of infringement and 'substantial part' in Ladbroke by Lord Reid at 279 and by Lord Pearce at 293-294, but the House of Lords may be taken to have cautioned against this practice in Designers Guild).

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Meaning of substantial part 47 Unlike Eagle,the present case is better regarded as one involving the taking of particular parts of the work in suit. The reason is that Tamawood and Ms Gould used the Adrian as their starting point, then 'injected' into it particular features which, unbeknown to Tamawood, Ms Gould had taken from the Chirnside. Accordingly, the 'substantial part' requirement assumes importance. 48 Prior to s 1(2) of the Copyright Act 1911 (UK) the notion of a 'substantial part' of a copyright work did not find expression in copyright legislation. Slesser LJ observed in Hawkes & Son (London) Ltd v Paramount Film Service [1934] Ch 593 ('Hawkes') at 606 that however, in order to avoid absurdity, judges had construed the reference to 'any book' in s 15 of the Copyright Act (5 & 6 Vict. c 45), as including a reference to any essential, vital, material or substantial part of a book; cf Bradbury v Hotton (1872) LR 8 Ex 1; Chatterton v Cave (1878) 3 App Cas 483. Prior to the passing of that Act in 1942, Cottenham LC was able to say in Bramwell v Halcomb (1836) 3 My & Cr 737 (40 ER 1110) that "[o]ne writer might take all the vital part of another's book, though it might be but a small proportion of the book in quantity"; that "[i]t is not only quantity but value that is always looked to"; and that "[i]t is useless to refer to any particular cases as to quantity" (at 738 (ER1110)). In Chatterton v Cave, Lord Hatherley used the expression 'neither substantial nor material' (at 492) (cf Mason CJ in Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 ('Autodesk') at 305, approved in Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 ('Data Access')at [83]-[87]. See [52] below). 49 This historical background to the origin of the reference to 'substantial part' in the legislation is a reminder that too much can be made of the whole/substantial partdistinction expressed in the Act. After all, it is possible to conceive of the shapes, arrangement of, and interrelationship between rooms, and traffic flows (as in Eagle, for example) as a part of a plan. The notion of 'substantial part' may be found most useful and illuminating where particular, quantitatively small parts of the work in suit are taken: cf Hawkes (20 bars of the military march 'Colonel Bogey'); Kipling v Genatosan Ltd [1917-1923] MacG CC 203 (four lines from a poem of 32 lines); G Ricordi & Co (London) Ltd v Clayton & Waller Ltd [1928-1935] MacG CC 154 ('Ricordi') at 162 (eight bars of a particular motif in a well known opera). 50 It has often been said that the expression 'substantial part' in copyright legislation refers to quality, rather than quantity: cf Ladbroke per Lord Reid at 276, per Lord Pearce at 293; SW Hart per Gibbs CJ at 474, Wilson J at 481, Deane J at 503; Autodesk at 305; Data Access at [83]-[87]; Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 ('Dixon Investments 1') per Pincus J at 483 and on appeal in that case ('Dixon Investments 2') at 494-495); Collier Constructions Pty Ltd v Foskett Pty Ltd (1990) 19 IPR 44 ('Collier 1') per Gummow J at 49, and on appeal in that case (Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666 ('Collier Constructions 2') at 669). See, too, the recent discussion by Kirby J of the notion of a "substantial part" of a television broadcast in Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14 at[100] - [102]. Accordingly, a quantitatively small part can be a substantial part for infringement purposes: Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 at 403 per Starke J; Ricordi; Hawkes at 606-607 per Slesser LJ. But quantity may be relevant. Where the same degree of labour, skill and judgment contribute uniformly to all parts of the work, so that no part is distinguishable from any other part in this respect, it will apparently be necessary to demonstrate reproduction of a quantitatively substantial proportion of the work in order to establish reproduction of a substantial part: cf Accounting Systems 2000 (Developments) Pty Ltd v CCH Australia Ltd (1993) 42 FCR 470 (reproduction of 25 per cent of computer program). 51 The notion of "substantial part" in the Act raises questions of fact and degree: Ladbroke at 283, 287-288. But, what is the qualitative relationship between the part taken and the whole of the copyright work to which the notion of 'substantial part' refers? In Ladbroke, Lord Pearce stated (at 293): 'Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that "there is no copyright" in some unoriginal part of a whole that is copyright.' In terms, Lord Pearce's dictum identifies only that which is not a substantial part, but it suggests that in order to be a substantial part, a part must be at least 'original'. 52 In his dissenting judgment in Autodesk, Mason CJ understood the above passage to make clear that it was important to ask whether the part taken was an 'essential or material' part of the work (at 305). Shortly afterwards, the Chief Justice stated: 'the essential or material features of a [copyright] work should be ascertained by considering the originality of the part allegedly taken' (at 308). In Data Access (at [84]), Gleeson CJ, McHugh, Gummow and Hayne JJ preferred, at least in the context of computer programs, Mason CJ's formulation to the 'but for' test which the majority in Autodesk had espoused. 53 Tamawood makes the important submission that for the purposes of the 'substantial part' issue, the inquiry as to the originality of the part taken refers to a different concept of originality from that which is an essential element of the subsistence of copyright. As already observed, the latter is only that the work must have 'originated' with the author - a low threshold not requiring any 'creative spark' (cf Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 192 ALR 433). Tamawood's submission is that Data Access in Australiaand Designers Guild in the United Kingdom establish that originality in a different sense is now the measure of 'substantial part'. In Designers Guild, Lord Scott of Foscote said (at [64], [70] and [75]) that the question was whether the part taken represented 'a substantial part of the independent skill and labour, etc, expended by [the original author in creating the copyright work]' (quoted from Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (2nd ed) para 2-108). 54 We do not accept Tamawood's submission that in Data Access the High Court intended to lay down a new test of 'substantial part'. Autodesk and Data Access concerned computer programs. Every digit in a computer program is essential to the successful operation of the program. The High Court was concerned in those cases to reject the notion that this meant that every such part also necessarily constituted a substantial part of a computer program regarded as a literary work for copyright purposes. In Autodesk,Mason CJ said (at 305) that his formulation was: 'particularly important in the case of functional works, such as a computer program, or any works which do not attract protection as ends in themselves (eg novels, films, dramatic works) but as means to an end (eg compilations, tables, logos and devices).' In Data Access, Gleeson CJ, McHugh, Gummow and Hayne JJ stated (at [85]) that: '… the originality of what was allegedly taken from a computer program must be assessed with respect to the originality with which it expresses [the] algorithmic or logical relationship or part thereof.' (our emphasis) 55 Nor do we accept Henleys' submission that any part of a work which, considered in isolation, satisfies the low threshold of originality for the purpose of the subsistence of copyright, will necessarily constitute a substantial part of that work for the purpose of infringement. The reason is that it is not infringement of the part, but infringement of the whole that is in question. Whether there has been an infringement of the whole requires that the originality of the part be considered in relation to the work in suit as a whole. It must be determined whether the part is an 'essential or material' feature of the whole work, regarded as a copyright work, in the present case, as an artistic work. In our opinion, it must be asked whether the part or parts taken represent a substantial part of the labour, skill and judgment of the author that made the whole work 'original'. Factual questions of degrees of 'significance' or 'importance' of the part to the whole are involved. 56 In applying the "substantial part" test in the present case, one must bear in mind that the plan for a project home is partly functional. Placing a kitchen in reasonable proximity to a dining room, and bedrooms in reasonable proximity to each other and to a bathroom, is suggested by broad functional considerations. Those proximities would not be a substantial part of a plan or house regarded as an artistic work. Moreover, they would be ideas. But broad functional requirements can be satisfied in more ways than one. Some features of a project home plan may be dictated by aesthetic and decorative concerns, for example. In these ways, the labour, skill and judgment of the author are called upon. The dividing line between that which is dictated by broad functional requirements and that which is not, is, however, often unclear.

[22]

'… the essential or material features of a work should be ascertained by considering the originality of the part allegedly taken.' (per Mason CJ in Autodesk at 305, approved in Data Access at [83]-[87]). 59 Ms Gould had in her possession the Chirnside brochure and made her requests for modifications on the basis of it, and, no doubt, on the basis of her recollection of the Chirnside display home she had inspected. 60 The fact that Ms Gould did not have in her possession a copy of the architectural Chirnside plan does not mean that there could not be an infringement of the copyright in it also: the architectural plan, the plan on the Chirnside brochure and the Chirnside Buildings (including the Chirnside display home) were all linked causally. 61 Ms Gould requested the modifications to the Adrian in a series of conversations with Mr Middleditch, face to face and over the telephone. 62 On the hearing of the appeal, senior counsel for the applicants said that the applicants accepted that the primary judge's finding is that Ms Gould instructed Mr Middleditch, not merely as to ideas, leaving the form of expression of them to him, but as to the form in which they eventually came to be expressed. At times, however, submissions were made that only 'ideas' had been taken. Similarly, it is not always clear what his Honour the primary judge had in mind when he referred to the 'features' of the 'design' of the Chirnside - ideas or forms of expression. 63 Annexed to these reasons are copies of the following: A The Adrian plan; B The Chirnside plan; C A diagrammatic plan from a Chirnside brochure (Ms Gould no longer had the brochure which had been given to her, but it was not disputed that it contained a diagrammatic plan of the Chirnside home, identical or similar to the one in Annexure C); D Exhibit 39, which was a copy of the Adrian plan bearing Mr Middleditch's notations on the modifications made at Ms Gould's request; and E The Gould plan without those annotations. 64 There is obvious similarity between the Adrian and Chirnside plans. In particular, there is a similarity in the arrangement of the rooms and the 'footprint' of the buildings (with a qualification, recognising the polygonal 'meals' area, and the bevelled corner of the family room in the Chirnside but not in the Adrian, and the bay window of bedroom 1 of the Adrian but not of the Chirnside). Obviously, it is important in considering the similarities between the Gould and Chirnside plans, to discount the pre-existing similarities between the Chirnside and the Adrian: the Gould was 'based' on the Adrian, not on the Chirnside. As noted earlier, Tamawood complains that his Honour did not perform that exercise, and was improperly influenced by the overall similarity of the Gould plan to the Chirnside. 65 Even in the absence of an earlier copyright work of the alleged infringer, such as the Adrian, it is easy to be erroneously influenced by similarities between the allegedly infringing work and the work in suit. In the case of a reproduction of parts, once the necessary causal link is established between the allegedly infringing work and the work in suit, the former ordinarily ceases to be relevant, because the issue of 'substantial part' poses only the question whether the parts taken are a substantial part of the work in suit. Whether the parts taken account for the whole or a substantial part or a non-substantial part of the allegedly infringing work, is in the ordinary case irrelevant to the statutory question whether they constitute a substantial part of the work in suit. See Designers Guild generally for the propositions in this paragraph. 66 Ms Gould requested the modifications to the Adrian plan in two stages: on 19 September 1997 and on 6 October 1997. Twenty-six variations were requested on 19 September and 22 on 6 October. Of the later 22 however, 18 merely repeated changes which had formed part of the earlier 26. That is, only four of the later list did not occur in the earlier batch. 67 His Honour set out the 26 modifications at [28] and the 22 at [29]. The first 26 modifications were written in Mr Middleditch's handwriting into a printed document called 'Schedule of Budget Inclusions' dated 19 September 1997 and signed by Ms Gould. They were as follows: 'CHANGE REQUESTS 8 RANGEHOOD SUPPLY INSTALL $ 263 9 OVERHEAD CUPBOARD 1M $ 320 10 DISHWASHER $ 685 11 DBL IN LIEU OF SGL $ 275 12 SECURITY TO WINDOWS $ 1017 13 COLONIAL DOORS IN LIEU OF FLUSH DOORS $ 468 14 COLONIAL DOORS TO ROBES SLIDING $ 480 15 REDUCE RUMPUS 1M -$ 1518 16 EXTEND MEALS AS SHOWN $ 1510 17 WINDOWS FOR MEALS/FAMILY/RUMPUS AS SHOWN $ 1180 18 SHS COUPLERS FOR ABOVE $ 560 19 REDUCE LIVING/DINING 200MM -$433 20 HINGE DOOR IN LIEU OF 2118SD GARAGE -$ 78 21 DELETE 1206SW IN KITCHEN -$ 128 22 DELETE STUDY DOOR & ROBE -$ 380 23 WIR BED 1 AS SHOWN $ 100 24 DELETE 0618SW BED 1 -$ 180 25 INCREASE ROBE IN BED 2 $ 250 26 SITE EXCAVATIONS BY OWNER TO RL 12.2 APPROX -$ 350 27 DELETE WALLS/HAMPERS IN LIVING/DINING -$ 450 SUB TOTAL (A) $ 3591 37 500MM REDUCTION KITCHEN LIVING AS SHOWN -$ 431 38 1824SW IN LIEU OF BAY (WINDOW) BED 1 -$ 524 39 DELETE SECURITY TO FRONT WINDOWS -$ 132 40 2118 & 2115 SECURITY DOORS $ 430 41 VACUUM SEAL KITCHEN DOORS TO KITCHEN $ 350 42 1.2M SHOWER WITH ANGLE IN ENS, REDUCE BED 1 200MM INCREASE ENS DELETE VANITIES (BY OWNER) $ 377 SUB TOTAL (B) $1423' 68 The later 22 modifications were set out in a similar kind of standard form document, dated 6 October 1997 and signed by Ms Gould. The four new items (we have numbered them [1], [2], [3] and [4] for convenience) were as follows: '35 [1] 350MM SET DOWN TO GARAGE $ 1050 36 [2] DELETE VANITIES BY OWNER -$ 596.7 37 [3] DELETE GABLES -$ 370.7 38 [4] TIMBER SHELVING IN LIEU OF CLAIRSON LINEN/ROBE (SHELVING) -$ 84.7' 69 We describe the modifications in [70] to [84] below, reserving until later our discussion of the question whether what was taken was a substantial part of the Chirnside. It assists in appreciating the significance of the 30 modifications to have regard to Exhibit 39 (Annexure 'D' to these reasons). The modifications can be analysed as follows:

[23]

Seven items (21, 22, 24, 27, 39, [2] and [3]) of the 30 are deletions from the Adrian 70 Item 21. The deletion of the kitchen window resulted in the external wall of the kitchen being identical to that in the Chirnside. 71 Item 22. The deletion of the Adrian's swinging door to the study in favour of a 'hamper' in a different wall of the study and deletion of the wardrobe in the study, made the study in the Gould identical in these respects to that of the Chirnside, which had an open aperture entrance to the study and no wardrobe. 72 Item 24. The deletion of the side wall window (not the bay window) in bedroom 1 made the Gould plan identical to the Chirnside in this respect. 73 Item 27. The deletion of the 'walls/hampers' intervening between the living and dining areas of the Adrian, meant that Ms Gould's plan showed that intervening area as open space, as on the Chirnside plan. 74 Item 39. This item, deletion of 'security to front windows' seems to have referred to a decision not to have some kind of security screen on the 'front windows', apparently the bay window (itself being deleted - see item 38) and the bedroom 5/study window. But such screens do not appear on the Adrian plan (or on the Chirnside). It seems that this suggested modification of the Adrian should be ignored. 75 Item [2]. The words 'delete vanities by owner' suggests that vanity basins or units shown on the Adrian plan were to be provided, not by the builder, but by the owner. On this basis, this item is not an instance of bringing the Adrian into line with the Chirnside. 76 Item [3]. The plans in evidence to which we were taken do not establish a presence of gables in the Adrian, which do not appear in the Chirnside. Eleven items (8, 9, 10, 11, 12, 13, 14, 40, 41, [1] and [4]) of the 30 are changes in circumstances in which the replacement item did not appear on the Chirnside plans 77 These items are for the supply of additional or substituted things by Tamawood but they do not appear on the Chirnside plan ("Westinghouse 600 mm rangehood in decorative plaster housing" is recorded as a "standard inclusion" in the notes on the Chirnside brochure), and therefore cannot be said to have been copied from that plan, and apparently should be ignored. (Item 11 was incompletely transcribed in the reasons for judgment. In full, it is 'dbl p/p in lieu of sgl', signifying that there were to be double power points throughout the house in lieu of single power points (double power points were not shown on the Chirnside plan).)

[85]

Notice of Contention 91 By a notice of contention, Henleys challenge his Honour's failure: · to find that the infringement by Tamawood, which he found to have occurred, was a deliberate or knowing one; · to find that Mr Mizikovsky knew or suspected that the changes he approved came about so as to bring Mr Gould's house into line with the Chirnside design; and · to conclude that Tamawood was aware that the changes sought by Ms Gould were to bring the plans for her home into line with the Chirnside design. 92 Henleys' submissions in support of their notice of contention proceed along the following lines. In his affidavit sworn 24 May 2000 Mr Mizikovsky said that he finalised the standard Adrian plan on or about 18 June 1996 and that at about the same time he drew a plan known as the 'Chicago'. Henleys submit as follows: 'There was no need for Mr Mizikovsky to refer to the Chicago.' Tamawood replies by pointing out, correctly, that his Honour took into account Mr Mizikovsky's testimony in relation to the Chicago at [48] and [49] of his Reasons for Judgment. Nonetheless, his Honour said that he had nothing more than 'suspicions' and was not able to conclude positively that Tamawood was aware that Ms Gould was seeking changes to bring the plans for her house into line with the Chirnside design. 93 His Honour had the benefit of observing Mr Mizikovsky in the witness box. No sufficient reason is shown for disturbing his Honour's conclusion. 94 Henleys refer next to Mr Middleditch's testimony that he had a very good knowledge of Henley Arch's plans at the time Ms Gould came to see him (July/August 1997), and said that, at the time he spoke to Ms Gould, there was not to his knowledge in existence a 'Chicago' plan in the Tamawood range. Henleys submit that this provides an ample basis for the conclusion that Tamawood knowingly infringed the copyright in the Chirnside Works. 95 His Honour said he had 'very real suspicions as to the knowledge by Mr Middleditch of the Chirnside plans and the significance of those plans to the requests made by Ms Gould', but declared himself 'unable to be satisfied that infringement by Tamawood was a deliberate or knowing one'. 96 His Honour took into account the evidence relating to the 'Chicago' when assessing the testimony of Mr Middleditch, whom he also observed in the witness box, and we see no reason to disturb his Honour's conclusion.

[86]

BALTIMORE-BERN 97 Copies of the Baltimore and Bern plans are respectively Annexures F and G to these reasons. Tamawood (in the Baltimore-Bern context, we will use 'Tamawood' to refer to the company and Mr Mizikovsky, but not, of course, to Ms Gould) did not dispute the originality of the Baltimore Works. 98 Nor did Tamawood dispute the existence of a causal link: its Bern plan was produced as part of its strategy of competing with Henleys' project homes, in this case, the Baltimore. There are similarities and differences between the Baltimore and the Bern. As noted at [35] above, his Honour made a finding that: '[T]he Bern and the Baltimore are strikingly similar, and so much I find was intended.' (at [54]) 99 His Honour elaborated in the following paragraph ([55]) to the effect that in considering whether a 'substantial part' of the Bern had been taken: 'the overall impact of the designs rather than specific individual or minor features is what is important'. He added that it was 'the overall design and combination of features' which led to the conclusion that, notwithstanding the differences between them, the Bern was a reproduction of 'at least a substantial part' of the Baltimore. 100 In his affidavit sworn 24 May 2000, Mr Mizikovsky stated that about 1997-1998 Tamawood decided to expand its range of project homes to compete in the market for two storey homes, and arranged for the Bern plan to be created to compete in that market in about 1998. He said he recalled directing and supervising the creation of the Bern design, which took about just over one hour to create, drawing on parts of other standard plans of Tamawood. He conceded, however, that he was aware of the plans of Tamawood's competitors in the two-storey project home market, including the Baltimore, and said: 'I supervised the drawing of the "Bern" plan to ensure that [it] was completely different from the "Baltimore".' In his affidavit, Mr Mizikovsky listed 19 differences between the Bern and the Baltimore which he described as 'significant differences'. 101 He withdrew the Bern plan from sale on or about 12 April 1999, following receipt of a letter of demand from Henleys' solicitors and after checking that Tamawood had not made any sales of the Bern, which he described as 'unsuccessful'.

[93]

'Given my conclusion that the Baltimore Plans and Bern Plans and Baltimore House at Lot 37 Redgum Close, Bridgeman Downs and the Bern Plans exhibit a substantial likeness, in my opinion, based on my experience as an architect and also as a lecturer and student, the statistical probability that these two designs could have been created independently is negligible particularly in view of the public nature of the project homes industry.' (our emphasis) Again, in terms Mr Wilde is addressing a causal question. 106 Mr Wilde did not address the question whether the Bern is objectively so similar to the Baltimore that it reproduces the whole or a substantial part of the Baltimore. 107 In relation to the question of any 'unique' features common to both plans, Mr Wilde stated in his report: 'Whilst the common features of the subject designs are not in themselves unique, it is the combination of the same features that leads me to form the view that there is an overall striking resemblance of the plans and elevations.' Senior counsel for Tamawood drew attention to passages from the cross-examination of Mr Wilde in which he conceded that he did not identify any features of the Baltimore which he would describe as 'unique' or 'special' as he had in relation to the Chirnside. He conceded that the Baltimore and Bern 'were two storey houses with central staircases and an organisation of rooms around them which did change in some areas', but 'in the main … were very similar'. He conceded that there was 'nothing at all unusual' in: · having, in a two storey home, the rooms which the Baltimore and the Bern had; · having all the bedrooms upstairs; · having an ensuite and another bathroom associated with those bedrooms; · having a 'TV area or … lounge or something' upstairs; · having one bedroom, usually called the master bedroom, larger than the others; · having a house deeper than its width if it is to be accommodated on a suburban block of land with greater depth than its frontage. 108 Mr Wilde accepted in cross-examination that there was nothing unusual about the configuration of rooms in the Baltimore and Bern plans and that both were examples of a well-known style of house and configuration of rooms in Australian project homes. Indeed, he said he saw nothing in them that he could say 'was not Australian or not seen regularly'. 109 We find it difficult, in the light of Mr Wilde's concessions in cross-examination, to understand the basis of his conclusion that the Baltimore and the Bern were so similar that they must have come from the same source (or that one must have come from the other). In any event, he did not address the question whether, as a matter of objective similarity, the whole or a substantial part of the Baltimore was reproduced in the Bern. He did not identify parts of the Baltimore that were taken and ask himself whether they constituted a substantial part of the Baltimore, according to the concept of substantial part established by the authorities (see the discussion at [47] to [56] above). 110 Before us, senior counsel for Henleys identified 22 similarities between the Baltimore and Bern plans, but he emphasised that creating lists of similarities and differences is not conclusive. We agree. 111 His Honour said that the Bern plan was a reproduction of 'at least a substantial part' of the Baltimore. If there is to be a finding of reproduction of a substantial part of a work, the substantial part should be identified. His Honour referred to 'the overall design and combination of features' but gives no further detail. His Honour did not attempt to identify any part of the Baltimore as being a qualitatively substantial part of the Baltimore in the sense discussed at [47] - [56] above. With respect we think his Honour erred in this regard. Likewise, "striking similarity", without more, does not necessarily mean that there has been a reproduction of the whole or a substantial part of the plan of a project home. The similarity referred to may have been that of common ideas. 112 Tamawood draws attention, in its written submissions, to the following examples of differences between the Bern and the Baltimore: 'a) the staircase is quite different, being a "T" staircase in the Baltimore, in contrast to the single flight in the Bern; b) the configuration of the walk-in robes and ensuite in the main bedroom is very different; c) in the Baltimore there is no corridor in from bedroom 3 allowing movement between bedroom 2 and 4 or direct access to the toilet; d) the garage in the Bern is projected some 2 metres forward from the rest of the house; e) the laundry and powder room are located on the opposite sides of the houses.' 113 The rear halves of the 'Upper Floor' of the Bern and the 'First Floor' of the Baltimore are quite different. Indeed, everything rear of the three bedrooms at the front commencing with the corridor adjacent to their rear walls in the Bern (absent in the Baltimore) is different (the only difference between those three bedrooms themselves in the two plans is that the location of the doorway of the middle one differs as between the Baltimore and the Bern). It can hardly be suggested that having three bedrooms in alignment upstairs at the front of a two-storey home is a substantial part of the labour, skill and judgment that produced the plan for the home. 114 The two ground floors are more similar to each other than are the two upper floors. Unlike the Baltimore's, however, the Bern's double garage protrudes well in front of the porch. An important difference is that the PWD and laundry are on opposite sides of the house. As a result, the family room of the Bern is larger and more open than that of the Baltimore, whereas the kitchen/dining room side of the Bern is more compact and "cluttered" than the same side of the Baltimore. 115 There are other differences between the two ground floors:

not only is the return bench of the kitchen in the Baltimore bevelled; it is longer with the result that the open entry into the kitchen of the Bern is considerably wider;
on the other hand, the open entry to the dining room in the Baltimore is considerably wider than the similar entry to the Bern dining room;
the Bern living room has two open entries below hampers, whereas the Baltimore's living room has a single wide open entry. With the exceptions noted, the arrangements of the rooms on the ground floor are similar as between the Baltimore and the Bern. 116 Was that arrangement of the rooms downstairs (entry, study, lounge/ living room, family room, meals, kitchen and dining room) a substantial part of the Baltimore? We think not. The reason is that it is a common feature of a dwelling house to have kitchen, dining room and meals area in reasonably close proximity to one another, and a study next to the entry; cf the plans of both the Adrian (annexure 'A') and the Chirnside ('annexure 'B') in the present case. 117 The differences to which we have referred, coupled with the concessions made by Mr Wilde in cross-examination, persuade us to think that there is not sufficient closeness between the Bern and the Baltimore to sustain a conclusion that the Bern reproduces the Baltimore or a "substantial part" of the Baltimore. 118 In relation to the Baltimore-Bern issue, leave to appeal should be given and the appeal should be allowed.

[97]

REASONS FOR JUDGMENT MOORE J: 123 I agree with Wilcox and Lindgren JJ that leave should be granted and the appeal dismissed in relation to the Chirnside. I also agree with their Honours that the contention of the respondents to the appeal should be rejected. However, unlike Wilcox and Lindgren JJ, I consider the appeal should be dismissed in relation to the Baltimore/Bern matter, though leave should be granted. 124 I will not distinguish between Henley Arch Pty Ltd and the Henley Properties (Qld) Pty Ltd (collectively 'Henleys'). Henleys alleged they owned the copyright in the plans and drawings for Chirnside ('Chirnside Works') and also copyright in homes built from those plans ('Chirnside Buildings'). In this appeal, both contentions are not in issue. Henleys also allege both Tamawood Ltd ('Tamawood') and Ms Gould reproduced plans and built houses which involved the reproduction of the whole or a substantial part of the Chirnside Works and the Chirnside Buildings. It was alleged that both activities constituted an infringement of Henleys' copyright in the Chirnside Works and Chirnside Buildings. While the infringing plans and buildings were described in the statement of claim as Adrian plans and Adrian buildings, it emerged during the hearing that the allegedly offending plans (and buildings on which they were based) were modifications of the Adrian plans (copyright that subsisted in Tamawood) which came to be known as the Gould plans. The infringing building (built for Gould) was erected on lot 38, 23 Oakley St, Carindale, Brisbane. 125 In order to determine this appeal as it relates to the Chirnside, it is necessary, in my opinion, to consider separately the position of the applicants. That arises from the case as pleaded and certain unchallenged findings of facts made by the primary judge. One finding was that Gould had a copy of the Adrian plans and at least a brochure for Chirnside and, by reference to them, requested modifications to 'bring [the Adrian plans] into line' with the Chirnside Works. What, in effect, Gould did was to adopt many parts of the Adrian plans which were also reflected in the Chirnside Works and request modifications of the Adrian plans to the extent that, in several material respects, they differed from the Chirnside Works. However, as the primary judge noted, the plans emerging from this process did not correspond in all respects to the Chirnside Works and there were some important differences (between the Gould plans and the Chirnside Works). 126 In my opinion, it is neither necessary nor appropriate, as a matter of principle, to discount or put to one side features of the Adrian plans adopted by Gould and reflected in the Gould plans which also correspond to features in the Chirnside Works, when determining whether Gould infringed Henleys' copyright in the Chirnside Works. The issue is whether Gould reproduced a substantial part of the Chirnside Works by giving the instructions: see LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215, which resulted in modifications to the Adrian plans and the creation of the Gould plans. By the process of adoption and modification just discussed Gould did, on the findings of the primary judge, reproduce a substantial part of the Chirnside Works. The fact that she did so consciously and by reference to the Chirnside Works (that is, by subjective copying) favours, in a case such as the present where the result is not obvious, a conclusion that what was copied was a substantial part: see Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 at [39]. The primary judge was correct in concluding that she had. 127 The position of Tamawood is different to that of Gould in two respects. First, on the findings of the primary judge, Tamawood did not engage in subjective copying. Secondly, Tamawood was the author of, and the owner of the copyright in, the Adrian plans. It should be emphasised that the primary judge concluded that there was a relevant causal connection (in relation to the liability of Tamawood) between the plans created as a result of the instructions of Gould and the Chirnside Works. His Honour reached this conclusion having regard to the approach adopted by Davies J in LED Builders Pty Ltd v Eagle Homes Pty Ltd (supra). Implicit in his Honour's approach was that the draftsman employed by Tamawood, in receiving and acting on instructions from Gould, was engaged in the reproduction of the Chirnside Works even though, on his Honour's findings, the draftsman did not, nor did any officer or other employee of Tamawood, know that this was occurring. No challenge was made in this appeal to the primary judge's conclusion concerning the causal connection. 128 The first point of difference (no subjective copying) bears on the determination of whether the creation of the Gould plans by the draftsman engaged by Tamawood involved the reproduction of a substantial part of the Chirnside Works by the draftsman. Does the second point of difference (the Adrian plans were created by Tamawood) have any relevance to the question of whether a substantial part of the Chirnside Works was copied? On one approach, which is that adopted by Wilcox and Lindgren JJ, those parts of the Gould plans that involved the repetition of features in the Adrian plans (but also a repetition of features of the Chirnside Works) should be put to one side or discounted in assessing whether a substantial part of the Chirnside Works were copied. The other approach would be to make the assessment in the way I have just discussed concerning Gould. However, there is no reproduction for the purposes of the Act where two persons produce substantially similar works through independent effort: see S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 472. It would seem to follow that to the extent that Tamawood simply repeated, in the Gould plans, representations of features in its Adrian plans, that repetition cannot constitute reproduction for the purposes of the Act. However, for the reasons given by Wilcox and Lindgren JJ, there was nonetheless reproduction by Tamawood of a substantial part of the Chirnside Works.

[98]

129 In relation to the appeal as it concerns the Baltimore, I consider the appeal should be dismissed. As Wilcox and Lindgren JJ suggest, his Honour's conclusions on this aspect of the contest between the parties, were expressed with economy. Their Honours identify as an error of the primary judge, a failure to attempt to identify any part of the Baltimore as being qualitatively substantial (as reflected in the Bern) in accordance with principles they earlier discuss. But that is, at base, a complaint about the adequacy of the primary judge's reasons and the notice of appeal does not raise the adequacy of the reasons as an issue. At [55] of his judgment, the primary judge set out the applicable principles (with unexceptionable economy) in terms which are conformable with the more detailed and therefore considerably lengthier discussion of the principles by Wilcox and Lindgren JJ at [47]-[56]. It cannot be suggested (and was not suggested by counsel for Tamawood) that his Honour ignored those principles as they applied to the facts or did not apply them (save, as I understand it, for an argument that Wilcox and Lindgren JJ have not embraced about the place of originality: see their Honours' judgement at [53]-[54]). Tamawood's complaint is about the result flowing from the application of those principles. However, in my opinion, unless there was an error in the approach adopted by the primary judge (which there was not) this Full Court should not substitute what it considers is a preferable view about whether the Bern plans are an infringing copy, for the view of the primary judge if that latter view was open. 130 It is not now in issue that Tamawood set about copying the Baltimore plan but, as it hoped, without infringing Henleys' rights as the owner of the copyright in the Baltimore plan. Indeed, as part of that strategy, it went so far as to choose a name for its house commencing with the same letter as the name chosen by Henleys. I accept that having regard to both similarities and dissimilarities, one might conclude, for the purposes of determining whether there had been copyright infringement, that the Bern plan was not a reproduction of a substantial part of the Baltimore plan. That is illustrated by the discussion of Wilcox and Lindgren JJ who explain the view they prefer. However, in my opinion, the similarities are sufficient to sustain a conclusion that the Bern plan was a reproduction of a substantial part of the Baltimore plan (which, in this appeal, is conceded to be an original artistic work) having regard to the originality of the ideas those similarities represent in aggregate. That was the conclusion reached by the primary judge and it was a conclusion open to him. In support of that conclusion it is sufficient to refer to the similarities identified by counsel for Henleys in this appeal, many of which I view as pointing to substantial similarity, namely: Ground Floor (i) The ground floor outline or footprint is substantially identical in each plan; (ii) The ground floor of each design has all rooms (aside from the laundry and powder room) in exactly the same location and in the same relationship to one another; (iii) Each design has a porch; (iv) Each design has a formal entry; (v) In each design the formal entry is set in the centre of the house and the study is located to the left of the entrance; (vi) In each design the entrance to the study is through a hamper opening with a column on each side of the opening rather than a doorway; (vii) In each design the garage is located to the right of the entrance; (viii) In each design there is a grand formal staircase in front of the entrance; (ix) In each design the lounge or living room is located to the left of the staircase and the dining room is located to the right of the staircase; (x) In each design the living and dining rooms are entered through a hamper opening with columns on either side of the opening rather than through a doorway; (xi) In each design the kitchen is located to the right and behind the staircase, and the kitchen is arranged in a similar way; (xii) In each design the family room is adjacent to the kitchen and the meals area is a projected square area; (xiii) In each design a sliding door by the meals area provides access to a courtyard area; (xiv) In each design linen storage is under the staircase; and (xv) The windows in the family room, meals area, kitchen, dining room are in substantially the same positions in each design.

[99]

First Floor (i) In each design the rooms on the first floor (with the exception of the WIR to bedroom 1 and the WC) are in the same location and are in the same relationship to one another; (ii) Bedrooms 2, 3 and 4 in each design is in the same position and have robes in the same position; (iii) In each design there is a large rumpus or tv room to the left of the staircase that has the windows in the same position; (iv) Each design has a very large master bedroom that is classified as a 'retreat'; (v) In each design the master bedroom has his and her WIR; (vi) Each design has a large ensuite; and (vii) The wet areas (bathroom, WC and ensuite) are all on the right hand side of the house. 131 By identifying features common to both designs, one is necessarily identifying the parts in the Baltimore plan (and not merely ideas) which are reflected in the Bern plan and can reasonably be viewed as a substantial part not simply in a quantitative sense but a qualitative sense as well. Listing similarities and dissimilarities with little or no discussion, is an accepted method of analysis and discourse in cases such as the present: see, for example the judgment of the Full Court in Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (supra) at [41]-[42]. 132 Making an assessment about whether the creation of an artistic work involved the copying of a substantial part of another artistic work will almost always be a matter of impression involving subjective assessment about which there can be, in many cases, no one correct answer. This is, in my opinion, transparently so in relation to architectural plans of the type to which this appeal relates. Unless an appellant in a case such as the present demonstrates error on the part of the primary judge, then it is not for an appellate court to substitute its opinion (based on impression) for that of the primary judge if the impressions are different. There will be cases where the appellant establishes that the impression of the primary judge resulted from some error of principle in the approach adopted or, perhaps less likely, the impression is one that on any rational view is simply not open. That latter error might be characterised as one where the primary judge made a finding of fact not open on the evidence. There is a helpful discussion of the legal foundation for this approach by Weinberg J in Eagle Homes Pty Ltd v Austec Homes Pty Ltd (supra) with which I respectfully agree. As Gibbs CJ and Wilson, Brennan and Toohey JJ said in Coulton v Holcombe (1986) 162 CLR 1 at 7: It is fundamental to the due administration of justice that the substantial issues between the parties are ordinarily settled at the trial. If it were not so the main arena for the settlement of disputes would move from the court of first instance to the appellate court, tending to reduce the proceedings in the former court to little more than a preliminary skirmish. While these observations concerned points being raised on appeal not made at first instance, they are apt to apply, in my opinion, to appeals involving findings of fact based on impression and assessment of artistic works. No appealable error has been demonstrated by the applicants in relation to the judgment of the primary judge concerning the Baltimore plans. 133 I would grant leave to appeal but dismiss the appeal and order that the applicants pay Henleys' costs. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moore.

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