Case: Tamawood Ltd v Henley Arch Pty Ltd [2004] FCAFC 78 ; (2004) 61 IPR 378
Outcome: cited
Payne noted Mrs Bogdan's evidence that her father-in-law produced the draft plan and ultimately the plan was taken to Igor Designs for a final plan to be prepared. Magistrate Payne noted that Mr Bogdan did not give evidence and this was unhelpful as he was, according to Mrs Bogdan's evidence, one of the persons who drew up the plan. Magistrate Payne found it unhelpful that no evidence was called from anyone from Igor Designs. Her Honour referred to ss 10 , 14 , 31 and 36 of the Copyright Act and placed reliance upon paras [38], [41], [42], [44], [49] and [55] of the reasons for judgment of Wilcox and Lindgren JJ in Tamawood Ltd v Henley Arch Pty Ltd [2004] FCAFC 78 ; (2004) 61 IPR 378 (Moore J agreeing). Magistrate Payne noted those paragraphs as they contain a statement of principles that, in her Honour's view, governed the resolution of the case. At those paragraphs, Wilcox and Lindgren JJ note these principles. Magistrate Payne also referred to [111] of the reasons for judgment of Wilcox and Lindgren JJ in Tamawood in which their Honours said this: 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 . [emphasis added] Her Honour then applied those principles to the evidence before noting that a plan for a project home is partly functional reflecting "reasonable proximities" that would not be a "substantial part" of a house plan regarded as an artistic work. Her Honour made this finding at p 10 of her reasons: If seen in isolation, a comparison of the Bogdan plan and the Jennings Cortona and Verona plans shows there are striking similarities. Taking up the notion of a requirement on the part of Jennings, in order to discharge its onus, to show more than striking similarities, so as to establish reproduction of the work either as to the whole work or as to a substantial part, Magistrate Payne said this: The footprint of the Bogdan plan and the AV Jennings Cortona plan are similar, although there are differences. There is also similarity between the Bogdan plan and the AV Jennings Verona plan, and again there are differences, and I say this noting that the Bogdan plan was a mirror reverse of the AV Jennings plans. There is a similarity between the arrangement of the rooms and the footprint of the buildings, although all three are different from each other in some respects. These differences include a different floor plan and different roof line. However, it is not the footprint or floor plan alone the plaintiff complains of. The plaintiff says it is the footprint with the original or distinguishing feature of displayed walls and the higher ceilings. [emphasis added] Magistrate Payne then expressed the view set out in para 2 quoted below, which resonates with the reservation expressed by Wilcox and Lindgren JJ in the last sentence of [111] in Tamawood : I note also that Mr and Mrs Bogdan did little to assist me other than to say that Mrs Bogdan in her evidence had never heard of AV Jennings and had never seen one of their plans and she said she had not seen one of their homes until she was contacted by AV Jennings. ... However, despite this little assistance the onus rests on the plaintiff in this matter. When considering all of those similarities and dissimilarities which I have done and then, in applying the law, I do not consider that the plaintiff has discharged its burden of proof. I find that the displayed walls and raised ceiling to be that of a common idea and not sufficient to sustain a conclusion of reproduction of the whole or a substantial part of the AV Jennings Verona plan or Cortona plan by either or both of the first or second defendant. [emphasis added] Consideration of the issues on appeal As to subconscious copying, Willmer LJ noted in Francis Day &amp; Hunter at p 613 that, "if subconscious copying is to be found, there must be proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied". In the absence of any direct evidence of use of or access to the Jennings plan in suit, the causal link can be established by inference. The greater the degree of objective similarity between the two plans, the more likely it is that an inference of actual use might be drawn ( S W Hart &amp; Co (supra) per Gibbs CJ at 472; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 per Heerey, Sundberg and Finkelstein JJ). Exact copying is rarely the conduct in controversy. Normally an inference is sought to be drawn in the face of quantitative features of the plan in suit, present in the plan under challenge, or by correspondence with a substantial part qualitatively of the plaintiff's plan, or both. If the contention is that a substantial part of the plan in suit has been taken, a question of "fact and degree" arises ( Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 per Weinberg J at [71]) and the "protected element may arise out of a combination of elements, any one of which considered individually might not qualify as sufficiently original to attract copyright" ( Inform Design , per Weinberg J at [71] [emphasis added]). An allegation of substantial reproduction of the work by reproduction of a substantial part will be made out if what is taken is an essential or material part of the work in suit. The phrase "substantial part" refers to the quality of that taken and the importance it bears to the work as a whole ( Tamawood v Henley Arch at [50], [52] and [54]; Dixon Investments Pty Ltd v Hall 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ; Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305). It may be that a particular orientation and layout of rooms which draws a user through a structure in a particular way is an essential or material part of a plan ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503 at [74] ). Essentiality is a question of fact and degree. In Tamawood at [111], Wilcox and Lindgren JJ (Moore J agreeing) noted that striking similarities however may not be enough in circumstances where the plaintiff has failed to identify the "substantial part" reproduced and has put its case on the footing of the "overall design and combination of features but gives no further detail ". In such circumstances, their Honours noted that substantial similarities may simply be referable to "common ideas". Magistrate Payne found that splayed walls and raised ceilings are a "common idea" and not sufficient to sustain a conclusion of reproduction of the whole or a substantial part of either the Verona plan or the Cortona plan by either respondent. The evidence before Magistrate Payne did not establish the notion that angled walls are a common idea. It is true that the Jennings plans, the Bogdan plan and the Dixon plan exhibit elevated ceilings. However, the conclusion reached by Magistrate Payne did not take into account the particular combination of features reflected at [61] to [65] of these reasons, the evidence of Mr Deshon concerning the evolution of the Bogdan plan as a contended progression from the Canberra plan and the evidence in relation to the features of Annexure C (that is, the elements of [61] to [69]). The evidence that supports the conclusion of striking similarities based upon the identified combination of precise features makes it clear that the combination cannot be described as commonplace or simply a common idea. Taken separately, the notion of elevated ceilings may not suggest actual use of a Jennings plan. The adoption, by itself, of angled walls at 15 degrees "off the right angled rib" might not be sufficient to suggest actual use although the evidence suggests that such a feature is an essential or material feature. The combination of those two features adds incremental weight to the notion of objective similarity suggesting use. The combination of those features together with a floor plan exhibiting substantial similarity in orientation and layout of rooms further supports an inference of use. The expert evidence casting doubt on the proffered explanation of the origin of the Bogdan plan adds further weight to the inference as does Mr Deshon's evidence that the magazine photograph (Exhibit 6) would not lead him to a design of elevated flat ceilings had the photograph been produced to him as a starting point for a design of the rooms and ceilings in a new house, reflecting the design depicted in the photograph. Accordingly, her Honour in reaching the finding as to a "common idea" did not take into account all of the evidence. Moreover, the notion that something more must be shown is put in proper context by their Honours in Tamawood . As their Honours noted, that case concerned circumstances where the plaintiff had failed to identify the substantial part said to be reproduced and had put its case on the basis of overall design and a combination of features in circumstances where no detail had been given. That is not this case. It follows therefore that the evidence supports an inference that the Bogdan plan evolved through the use of either of the Jennings Verona 245 plan, the Cortona 245 or the Cortona 290 (as the embodiment of the combination of features identified and relied upon by the appellant). The question that remains is whether the evidence supports an inference of actual use by either or both of the respondents. Mrs Bogdan gave the evidence described earlier in these reasons which led to a finding of fact and a finding of credit ([50] of these reasons) in her favour. Magistrate Payne accepted her evidence entirely and especially her evidence that she had not seen a Jennings plan and did not have any knowledge that the Bogdan plan was a copy of any Jennings plan. That finding was plainly open on the evidence and counsel for Jennings accepted that such a finding was open to her Honour. It follows therefore that Mrs Bogdan did not make actual use of any Jennings plan in either formulating her ideas or contributing those ideas to her husband and/or Mr Florien Bogdan and there is no basis for disturbing those findings. However, the evidence of Mrs Bogdan makes it plain that Mr Bogdan was an author of Annexure C to Exhibit 4 and contributed together with Mr Florien Bogdan to the draft drawings. Mr Florien Bogdan produced Annexure D1 which was given to Igor Designs to produce Annexure E. Mr Bogdan, by his submissions, says that it is apparent from the transcript that he made statements throughout the proceeding that illustrate the nature of the evidence he would have given had Magistrate Payne made it plain to him that an adverse inference might arise should he not give evidence and those statements are set out at pp 26, 33, 35, 36, 62, 74 to 76 and 84 and 85 of the transcript. However, even if an assumption is made that the statements at those pages of the transcript ought to be treated as, in effect, oral evidence, the statements do not answer the conclusion open on the totality of the evidence that authors of the Bogdan plan used either the Verona 245 plan, the Cortona 245 plan or the Cortona 290 plan (as the embodiment in final form of the features in those plans and the plan in suit) in bringing into existence the Bogdan plan with its combination of features evident in the Cortona 290 plan. It may be that an inference is open that either Mr Bogdan used a Jennings plan and reproduced the combined features relied upon by the appellant or alternatively, Mr Florien Bogdan did so. Alternatively, an inference might be found that both men so used the plan. It seems likely as a matter of inference from all the evidence and particularly that of Mrs Bogdan, that Mr Florien Bogdan as a carpenter who had previously built eight houses, used a Jennings plan and thus reproduced the combined features relied upon by the appellant. However, the evidence of Mrs Bogdan makes it plain that Mr Bogdan was responsible for Annexure C and was a contributory author to the drawings (see [44] to [48] of these reasons). Mrs Bogdan referred to eight drawings in all in the evolution of the Bogdan plan, although only those drawings annexed to Exhibit 4 were produced in evidence. It follows, that Magistrate Payne erred by failing to find use of the appellant's work and reproduction in a material form of that work in suit, as against the respondent, Mr Tiberiu Bogdan. It follows that the order of the Court below dismissing the appellant's claim against Mr Tiberiu Bogdan is to be set aside and judgment entered for the plaintiff below. The second question that arises is the assessment of damages. The Court below did not assess nor make findings as to the quantum of the plaintiff's damage. Accordingly, it is necessary for this Court to do so. Damages