A. Copyright infringement - causal connection
67 The first issue or cluster of issues concerns causal connection with the copyright work, indirect copying of that work and the onus of proving that similarities were not causally linked to the copyright work.
68 By its notice of contention, Krueger argues that her Honour ought to have found, by way of inference drawn from the established facts, that Vawdrey had direct access to the substance of the Krueger drawings. In support, Krueger relied on three facsimile transmissions, the first on 4 February 2003 from Paul Vawdrey to Mr Tindal of Camerons, the second from Paul Vawdrey to Camerons on the same date, and the third from Vawdrey to Camerons on 7 February 2003. Krueger gave a notice to produce these faxes but they were not produced.
69 The problem with Krueger's contention is that the faxes could not support an inference that by means of them Camerons provided Krueger Drawings to Vawdrey because they were travelling in the wrong direction: they were from Vawdrey to Camerons, not from Camerons to Vawdrey.
70 Although senior counsel for Vawdrey did not abandon the contention, he seemed to accept that the faxes were travelling in the wrong direction to support it. I would not uphold the contention.
71 By reason of s 31(1)(b)(i) of the Act, Krueger had the exclusive right to "reproduce" the Subsequent Krueger Drawings in a material form. Neither "reproduce" nor any derivative of that word is defined in the Act. It is trite, however, that a work is "reproduced" if (a) there is a sufficient degree of objective similarity between the copyright work and the work said to infringe (infringing work); and (b) there is "some causal connection" between the form of the infringing work and the form of the copyright work: Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 614 per Willmer LJ; SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 472 per Gibbs CJ (with whom Mason and Brennan JJ agreed). Where the objective similarities are sufficiently great and the alleged infringer had an opportunity of access to the copyright work, the Court will infer the causal connection unless the inference is displaced by evidence, the onus of adducing which rests on the putative infringer: Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448 at [19].
72 Vawdrey contends that her Honour erred in finding that the form of the Vawdrey Engineering Drawings was causally connected in the relevant sense to the form of the Subsequent Krueger Drawings. Vawdrey accepts that the required causal link may be established otherwise than by direct copying and may be inferred from sufficient similarity coupled with access, including indirect access, to the copyright work. Vawdrey submits, however, that it is not enough that there be the communication of a mere idea or concept. Vawdrey so characterises the increase in the number of posts from six to seven and the enlargement of the gates, and says that that is all that was found to have happened here.
73 As will be seen, I reject Vawdrey's submission because:
(a) it is not shown that her Honour erred in finding that there was sufficient objective similarity to give rise to the inference;
(b) her Honour did not find that what Camerons told Vawdrey was limited to adding a post and enlarging the gates; and
(c) the unsatisfactory nature of the testimony given by the Vawdrey witnesses, including their formulaic false denial that Camerons had given Vawdrey even the Krueger Concept (the Slide-A-Gate idea), entitled her Honour to draw inferences against Vawdrey as to what passed to it from Camerons.
74 A comparison between the Vawdrey Engineering Drawings and the Subsequent Krueger Drawings shows that the number of posts (7) is identical, that their placement along the trailer is identical or nearly so, and that the size and shape of the gates are similar. An affidavit of Adel Gerges made on 26 August 2005, and in particular Exhibits AG7-AG14 to that affidavit, record measurements showing the extent of the similarities between the Subsequent Krueger Drawings and the Vawdrey Engineering Drawings. I refer to this evidence in some detail in section D at [151] - [152] below.
75 It must be conceded that there are also differences between the Vawdrey Engineering Drawings and the Subsequent Krueger Drawings. First, the Vawdrey Engineering Drawings do not show a pelmet or roof, whereas the Subsequent Krueger Drawings do, thereby concealing what, if anything, is at the top of the posts, whereas in the Vawdrey Engineering Drawings a cross member is exposed at the top of each post. Second, the first two gates (on the upper deck) in the Subsequent Krueger Drawings are smaller than the rear five, with the result that the tops of all seven gates lie in the same horizontal line, whereas all seven Vawdrey gates are of the same size, and to compensate for this there is a stepping down in the line of the tops of the gates as between the front two gates and the rear five. Third, the Subsequent Krueger Drawings show numerous diagonal lines over the surface of the gates whereas the Vawdrey Engineering Drawings show three horizontal bars within each gate.
76 The question which arises is whether her Honour is shown to have erred in concluding that there was sufficient similarity, in conjunction with the other circumstances, including the communication of the Krueger Concept (see below), to call for the leading of evidence by Vawdrey displacing the inference of a causal link back to the Subsequent Krueger Drawings.
77 It is to be remembered that the task of the Court on an appeal by way of rehearing on the evidence that was before the primary Judge is the correction of error: see ss 24(1)(a) and 27 of the Federal Court of Australia Act 1976 (Cth) and Minister for Immigration and Multicultural Affairs v Jia (2001) 205 CLR 507 at [75]; Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at [22]-[25] per Allsop J, with whom Drummond and Mansfield JJ agreed; Fox v Percy (2003) 214 CLR 118 at [20]-[31]; CSR Ltd v Della Maddalena (2006) 224 ALR 1 at [16]-[24]. In Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 at [113]-[119], Weinberg J explained why a primary Judge's finding of fact on the issue of similarity should be accorded the utmost respect and not departed from unless the appellate court is persuaded that the finding was erroneous in principle or plainly and obviously wrong. His Honour's observations were approved by a Full Court of this Court in Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd (2008) 248 ALR 364 at [20].
78 In my opinion this deference to the findings of the primary Judge applies to that finding of sufficient similarity, which when coupled with a finding of some causal link (see below), will require exculpatory evidence to be led by the putative infringer.
79 At [134] the primary Judge correctly rejected a submission that the form of the drawings was dictated by function; the First Vawdrey Drawing had used only six sliding posts and small hoop-shaped gates. Her Honour also accepted the evidence of Krueger's expert, Dr Hart, that the Krueger Concept (Slide-A-Gate) could be expressed in different ways. The addition of a seventh post and some enlargement of the gates was dictated by function, but this was not shown to explain the degree of similarity that resulted. I refer to more detail of the similarities below, including the size and shape of the gates. In addition there was detailed evidence of Adel Gerges particularising the similarities (see section D at [151] - [152] below). Her Honour found that the Vawdrey Engineering Drawings used substantially the same form of expression as the Subsequent Krueger Drawings. The difference between both of them on the one hand and the First Vawdrey Drawing (Annexure 6 to her Honour's reasons) on the other hand is great.
80 How did the Vawdrey Engineering Drawings come to be similar to the Krueger Subsequent Drawings? Vawdrey's witnesses did not give a satisfactory answer to this question. Indeed, their evidence, rejected by her Honour, was that the Slide-A-Gate idea was devised within Vawdrey.
81 I turn now to the facts relevant to the issue of causal link.
82 Her Honour found (at [82] and [83]), contrary to Vawdrey's denial, that Vawdrey's solution expressed in the First Vawdrey Drawing, incorporating as it did the elements of gates or hoops hanging off sliding posts (the Krueger Concept), was based on a disclosure by Camerons to Vawdrey of the Krueger Concept.
83 On 4 December 2002, Michael Vawdrey instructed Jason Underwood, an engineer and former Vawdrey employee, to prepare a drawing. Two aspects of Michael Vawdrey's instructions to Mr Underwood (according to Mr Underwood's affidavit) may be noted. The first is that Michael Vawdrey had decided to weld hoops, similar to those attached to the Ancra "shoring post" or the "Wingliner Goldbars" (also called "Gold Wingbars"), to Vawdrey's "standard sliding side posts in order to provide the additional load restraint" sought by Camerons. The second is that Michael Vawdrey told Mr Underwood that with the addition of the hoops, one post for every two pallets should suffice to restrain the load. Her Honour accepted (at [59]) Mr Underwood's evidence as to the instructions that he was given.
84 Mr Underwood implemented those instructions on the following day, 5 December 2002, and so produced the First Vawdrey Drawing.
85 The First Vawdrey Drawing was for a 48 foot drop deck Kurtainer and showed six posts, each with a hoop having some similarity to the hoops of the Gold Wingbars and the Ancra "Cargo-Sta" which were depicted in Annexure 5 to her Honour's reasons.
86 There is no suggestion that the First Vawdrey Drawing infringed any copyright, even though it incorporated the Krueger Concept. Indeed, so far as the evidence suggests, Vawdrey owned copyright in the First Vawdrey Drawing.
87 On 13 December 2002 Camerons submitted its tender to Amcor. The tender included (with Grant Krueger's consent) a copy of the Krueger Subsequent Drawing for the 14.62m (48') drop deck Kurtainer.
88 On 11 February 2003 Amcor accepted Camerons' tender.
89 On the day of acceptance of the tender or the following day Camerons requested Vawdrey to change its design. Her Honour referred to the request as a request to increase the number of posts from six to seven and to enlarge the size of the gates.
90 Vawdrey contends that a request so described was to convey only an idea or concept, not a matter of form or expression. There is some force in this contention. It may be accepted too that the functional purpose of these changes was, and was understood by Vawdrey to be, to increase the capacity of the posts and gates to restrain the pallets.
91 It is not clear whether Camerons' instruction on 11 or 12 February 2003 conveyed to Michael Vawdrey that the purpose of the instruction was to make Vawdrey's drawing accord with Krueger's, or whether her Honour was merely saying that this was Camerons' subjective and undisclosed motivation. As appears below, I do not think the distinction matters on the question of infringement.
92 It is necessary to consider the context in which her Honour described Camerons' request to Vawdrey in the terms that she used.
93 The evidence of Paul Vawdrey and Mr Underwood was that they could not recall why the size of the gates was increased (at [71]). Both assumed, however, that, consistent with common practice, any increase resulted from a request of the customer, and, in particular, from Mr Tindal at Camerons (at [71]). Mr Tindal, however, denied making such a request. In support of his denial he referred to the facts that Camerons did not employ any engineers and that it was incumbent on Vawdrey to ensure adequate restraint of the pallets. Her Honour rejected Mr Tindal's evidence (at [71]).
94 Michael Vawdrey, the father of Paul Vawdrey and the most senior person at Vawdrey, said that he increased the number of gates from six to seven because a Vawdrey engineer, Mr Worboys, told him to do so. Mr Worboys, however, gave evidence, which her Honour accepted, that he had no involvement in the job until March 2003 (at [77]). Another Vawdrey engineer, Alastair Lang, accepted that the change from six to seven posts occurred before 27 February 2003 and was not made pursuant to a direction from the Vawdrey engineering department (at [77]).
95 Her Honour rejected Michael Vawdrey's evidence (at 77]).
96 In sum, neither Camerons nor Vawdrey led any evidence to explain the course of events from the First Vawdrey Drawing to the Vawdrey Engineering Drawings or how it came about that the latter were similar to the Subsequent Krueger Drawings. In particular, there was no explanation of how an instruction to enlarge the gates led Vawdrey to abandon its small "hoop" gates in favour of large rectangular shaped gates with rounded corners similar in shape and size to Krueger's.
97 In the light of the evidentiary vacuum with which Vawdrey confronted her Honour, the appeal raises questions as to the nature of the causal link that must be established between a copyright work and the putative infringing work, the meaning of "indirect access" or "indirect copying" as those expressions have been used in the authorities, and the inference appropriate to be drawn by a failure to explain similarities between the infringing work and the copyright work.
98 As noted earlier, Vawdrey does not dispute that indirect access coupled with sufficient similarity can suffice to give rise to an inference of a causal link, or that the intervening route between the copyright work and infringing work may not involve a work at all and may be oral; see, for example, Solar Thomson Engineering Co Ltd v Barton [1977]RPC 537; House of Spring Gardens Ltd v Point Blank Ltd [1983] FSR 213; Frank M Winstone Merchants Ltd v Plix Products Ltd [1985] 1 NZLR 376 (discussed below); LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215; Ultra Marketing (UK) Ltd v Universal Components Ltd [2004] EWHC 468 (a case in which it was concluded, however, that the putative infringer had taken ideas, not form). Vawdrey's submission is that her Honour's finding that Camerons instructed Vawdrey to add an additional post and to enlarge the gates shows that Camerons communicated only an idea or concept, and that this is insufficient. In my respectful opinion this submission does not accord sufficient importance to (a) the primary Judge's assessment of the similarities between the Vawdrey Engineering Drawings and the Subsequent Krueger Drawing, and (b) the unsatisfactory nature of the evidence led by Vawdrey.
99 On the question of indirect copying, her Honour described the present case as being 'on all fours' with LED Builders v Eagle Homes Pty Ltd (1996) 35 IPR 215. Her Honour referred to the Court's finding of indirect copying based on the giving of oral instructions by an intermediary to bring the infringing design plans into line with the copyright holder's.
100 The critical passage from the judgment of Davies J in LED Builders is as follows (at 225):
I am satisfied on the whole of the evidence that, although Mr Cardile did not ask his draftsmen to copy the plans of LED, he gave them instructions for change, both by way of sketches and orally but principally orally, which when implemented would bring Eagle's plans into line with LED's. I am satisfied that there was deliberate copying by Eagle of LED's plans, though the copying was achieved by the giving of instructions for change rather than the direct tracing of one plan from another. In coming to this conclusion, I have taken into account the effect achieved, namely that Eagle's drawings depict the same design as appears in those of LED, at least in substance. Thus, there was a causal connection between Eagle's drawings and those of LED.
Mr Yates submitted that where there is a case of indirect copying, the verbal description must be precise and detailed and he submitted that Mr Cardile's instructions were of a general nature. Mr Yates relied particularly upon the remarks of Buckley LJ in Solar Thomson Engineering Co Ltd v Barton at 559-60. However, his Lordship did not use the terms which Mr Yates adopted.
I am satisfied that there was substantial reproduction of LED's designs and that this was achieved through the implementation of Mr Cardile's instructions which were intended to achieve the result that Eagle's designs would be the same or substantially the same as those of LED.
101 Vawdrey submits that the instructions given by Mr Cardile to his draftsmen to amend their plans were more detailed than Camerons' instructions to Vawdrey. It is true that the primary Judge did not make express findings of detailed instructions to make particular changes of form given by Camerons to Vawdrey. She could hardly do so in the evidentiary vacuum with which those companies confronted her Honour. Nor, however, should she be treated as having found that the instructions were in their terms limited to adding a post and enlarging the gates. It is necessary to recall that Mr Tindal denied requesting the alterations at all; Paul Vawdrey and Mr Underwood said that they had no recollection of the matter; and Michael Vawdrey gave false evidence that he increased the number of gates because a Vawdrey engineer had told him to do so.
102 The only persons who knew the truth were not forthcoming on the matter.
103 In these circumstances, and in the light of her Honour's assessment of the similarities between the appearance of the Vawdrey Engineering Drawings and the Subsequent Krueger Drawings, it would be wrong to read her Honour's finding as excluding the possibility that the instructions given were more detailed than simply to "add a post" and "enlarge the gates". That was just a convenient way of summarising them. It is clear that her Honour's view was that Camerons must have given Vawdrey whatever instructions were necessary, whether by supplying a copy of the Subsequent Krueger Drawings or otherwise, to produce the similarities that the Vawdrey Engineering Drawings bore to the Subsequent Krueger Drawings.
104 It does not matter either, in my view, that those at Camerons who had possession of the Subsequent Krueger Drawings were not employed by Vawdrey. The argument to the contrary would be based on the proposition that the author of the infringing work must have had indirect access to the copyright work itself or through its agent. In the present case Camerons and Vawdrey were dealing with each other at arm's length and it is difficult to conceive of Camerons as Vawdrey's agent.
105 "Access" to the copyright work is but an aspect of proof of the causal link element of reproduction. Infringement does not require that the putative infringer intend to reproduce or be conscious of the causal link. Like the element of similarity, the causal link element of reproduction is a matter of objective fact.
106 Frank M Winstone (Merchants) Ltd v Plix Products Ltd [1985] 1 NZLR 376 bears on the present issue. Plix designed and manufactured a range of containers for carrying kiwifruit called "pocket packs". It had copyright in the drawings, patterns, moulds and kiwifruit pocket packs. The Plix range was successful. The New Zealand Kiwifruit Authority (Authority) and the New Zealand Kiwifruit Exporters Association (Association) laid down specifications and instructions, which were derived from the Plix range.
107 Winstone wished to enter the kiwifruit pocket pack market but was aware of the need not to infringe the copyright claimed by Plix.
108 Winstone's designer relied on copies of the Authority's specifications and the Association's instructions, and was supplied with a quantity of ungraded kiwifruit. He had never, to his recollection, seen a kiwifruit pocket pack, let alone a Plix pocket pack. He was told that he must work on his own without discussion with any person who had knowledge of kiwifruit pocket packs and that he should on no account look at any existing pocket packs. Working in this way for a period of about 260 hours spread over six months, he designed a range of pocket packs.
109 The specifications and instructions gave the designer so much information that even though he was independent and attempts were made to avoid infringement, the work he produced was still held to be an infringing reproduction.
110 The New Zealand Court of Appeal stated (at [379]):
The conclusion is no less inevitable in our view, that [the] designer has indirectly copied at least a substantial part of each Plix design. It follows that each … pack reproduces at least a substantial part of work in which Plix has copyright. Ultimately this stems from the present insistence of the Authority and the Association, who together effectively control the export trade, on requirements derived from the Plix range. We explored with counsel for the appellants whether there could be any ground for contending that the requirements might furnish a defence to infringement. The matter had plainly not gone unconsidered and counsel were unable to advance any such defence. Of course the requirements are not necessarily immutable; but while they stand they may virtually give Plix a monopoly for the period or periods of its copyright…
It was not thought to be a break in the chain of causation that the designer had relied on the specifications and instructions laid down by the Authority and the Association, both of which were independent of both Plix and Winstone. All that mattered was that as a matter of fact the form of the infringing work was attributable to that of the copyright work.
111 Such a case, like the present one, might be explained in either of two ways. It might be said that the proved causal link between the forms of the copyright work and the putative infringing work means that the putative infringer is deemed to have had access to the copyright work for present purposes, or, on the other hand, that access to the copyright work, is but one way of proving causal link and need not be present if the causal link is established without it. The difference does not matter for present purposes although I venture the opinion that the latter is the preferable explanation.
112 In the present case access to the copyright work (or causal link) is not negated by the fact that Camerons, and Mr Tindal in particular, was not Vawdrey's agent.
113 In the light of the similarities, as her Honour assessed them, between the Krueger Subsequent Drawings and the Vawdrey Engineering Drawings and the causal link between them, the onus was on Vawdrey to establish that the form of the latter did not result from the form of the former. A Full Court of this Court noted the relevant principle in Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd (2001) 116 FCR 448 at [19]. Referring to what Jacob J said in Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 at [296]-[297], the Full Court stated:
Where the objective similarities are sufficiently great and it has been shown that the alleged infringer had an opportunity to gain access to the copyright owner's work the court will draw an inference of copying.
Their Honours accepted that in such circumstances the onus rests on the defendant to rebut the inference of copying. The Full Court also cited Ancher, Mortlock, Murray & Woolley Pty Limited v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at [289]; Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 at [437]-[438].
114 There can be no question but that Vawdrey failed to rebut the inference. It gave no plausible explanation as to the progression from the first Vawdrey Drawing to the Vawdrey Engineering Drawings.
115 Vawdrey's grounds of appeal based on absence of causal connection should not be upheld.