Case: Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 161 FCR 503
Outcome: cited
Because s 14(1) of the Copyright Act recognises that reproduction of an artistic work in a material form includes a reference to reproduction of a substantial part of such a work, the Copyright Act recognises a distinction between the undifferentiated whole of a particular artistic work and a substantial part of it ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 161 FCR 503 (Full Court) per Lindgren J [70]). One class of case might involve a question of whether the respondent's work is a colourable imitation of the applicant's undifferentiated work. Another class of case might simply involve a question of whether a part of the applicant's work has been taken in which event the question will be whether the identified part constitutes a substantial part of the applicant's work. If not a copy , the court must then decide whether that which is reproduced is a colourable imitation of the identified part. 185 Accordingly, the analysis of reproduction might well involve a range of different questions. 186 In this case, the applicant relies upon seven drawings in respect of five components and says that the undifferentiated drawing for each component has been copied. The question is not whether a substantial part of each drawing has been taken. The applicant also says that each component copied is a material and significant component critical to the operation of the assembled 4 in 1 bucket. However, the copyright infringement question is not one of whether the respondent's drawing for a particular component and the respondent's manufacture of a three-dimensional component itself is a reproduction of a 'substantial part' of either the applicant' s 4 in 1 assembled bucket or a drawing for the bucket, that is, in the overall sense. The materiality of the component part to the bucket, is, of course, important in assessing the damages flowing from infringement of the particular drawing in suit. However, the copyright infringement question is whether indirect copying of the applicant's discrete component drawing or drawings has occurred by reason of the respondent making a two-dimensional drawing of the identified component, and a three-dimensional component, being versions of the applicant's relevant drawing. 187 The respondent also contends that there are many manufacturers of 4 in 1 buckets in the market; that these buckets reflect common features necessarily present in 4 in 1 buckets in order that such a bucket might open and close and thus exhibit the functional requirements of a 4 in 1 bucket; that these buckets were in the market at the moment in time when the respondent developed its drawings and commenced manufacture on 2 December 2003 of its 4 in 1 bucket; and that as a result, the court should be slow to draw any conclusion that similarities of feature reflect a reproduction or a substantial reproduction of any of the applicant's drawings for any of its component parts. Secondly, the respondent says that differences evident in the respondent's drawings and thus its three-dimensional components sufficiently differentiate the respondent's work and components from that of the applicant's drawings with the result that reproduction in a material form is not made out. 188 Although the respondent has placed emphasis upon these contended common features evident in other buckets, the respondent did not call evidence of the range of buckets or differentiating features in the field of buckets available in the market which usefully informed the 'designer' within the respondent's research and development group during the course of November 2003 leading up to the design and manufacture of the respondent's finished bucket on 2 December 2003. I am invited to conclude that because these other examples of 4 in 1 buckets were available in the market with similar features, the conduct of the respondent does not amount to reproduction. 190 In the context of these observations, the following remarks of Lindgren J in Eagle Homes v Austec Homes (supra) concerning the role a finding of conscious copying plays in aiding the determination of the question of reproduction apply in the present case. The observations are these: '[91] ...In no case concerning project homes of which I am aware, where there has been such a finding of actual copying, has it been held that nonetheless the copier will not have infringed copyright unless there is in addition an extraordinarily close resemblance between his or her drawing and the copyright work. Rather, I think that the issue of sufficient objective similarity simply poses in the case of project homes, as in other cases, the usual question whether the copyright drawing can still be seen embedded in the allegedly infringing drawing, that is, whether the allegedly infringing drawing has adopted the "essential features and substance" of the copyright work Hanfstaengl v HR Baines &amp; Co Ltd [1895] AC 20 at 31 [Lord Shand]. [92] ... I do not accept, however, that where, as here, actual copying is found to have occurred, "reproduction", and therefore infringement, cannot be proved in the absence of such a specially close similarity as might be required in a particular case to support an inference of subjective copying. To insist that a copyright owner can satisfy the "sufficient objective similarity" limb of reproduction only by establishing such a close similarity is a hurdle too high to be placed before a copyright owner who is found to have proved subjective copying. The way of the copier, including the copier of a plan of a project home, should not be made easy. A copier intends to benefit from another's skill and labour. It may transpire that what the copier produces is, at the end of the day and as a result of whatever intervening causes, so dissimilar from the copyright drawing that the copyright drawing cannot be seen in the allegedly infringing drawing. But in my view that is not this case. ... [94] A similar observation was made by Starke J in Blackie &amp; Sons Ltd v Lothian Book Publishing Co Pty Ltd [1921] HCA 27 ; (1921) 29 CLR 396. His Honour, sitting at first instance, found actual copying and said (at 404): "It is not for the court to make the way of the taker of copyright matter easy. It is a sound principle of copyright law that the court should not allow one man to take away the result 'of another man's labour, or, in other words, his property', unless it is satisfied that the part taken is 'so slight, and the effect upon the total composition was so small', 'as to render the taking perfectly immaterial', or, what is much the same thing, that the part taken is an unsubstantial part: Hogg v Scott (1874) LR 18 Eq 444 at 458; Chatterton v Cave (1878) 3 App Cas 483 at 490, 495. ... [98] The two elements of "causal link" and "sufficient objective similarity" are not referred to in the Act and are but aspects of "reproduction". The two are interrelated and it can be artificial to consider them separately, at least in a case like the present one where actual copying is found to have occurred. A finding of copying can add significance to objective similarity; cf Anchor, Mortlock, Murray &amp; Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 289; S W Hart &amp; Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 474; 61 ALR 251 (Wilson J). [99] It is often suggested that, once a copyright owner has established subjective copying, that makes easier the task of proving that what was taken was "a substantial part" of a protective work. For example, in Anchor, Mortlock, Street J said (at 289) "I have already ... inferred that the defendant did engage in unfair copying of the plaintiff's plans and houses. This adds significance to the similarities that do exist and diminishes significance from the dissimilarities". See also Bradbury v Hotten (1872) 8 LR Ex 1 and Chappell &amp; Co Ltd v D C Thompson &amp; Co Ltd [1928-35] MacG Cop Cas 476 (Ch D).'