Case: SW Hart &amp; Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466
Outcome: cited
In SW Hart &amp; Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 , Gibbs CJ said (at 472): "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 &amp; 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". Lord Reid said in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 276 ...: 'Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken'." 67 Their Honours referred to the well-known passage from the judgment of Gibbs CJ in SW Hart &amp; Co v Edwards Hot Water Systems, cited earlier in these reasons for judgment, and then continued: "[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 )." 69 In the absence of any direct evidence of copying, or access by the respondent to the applicant's work, the causal link can be inferred. The greater the degree of objective similarity, the more likely it will be that that inference will be drawn: SW Hart &amp; Co v Edwards Hot Water Systems (at 472); Clarendon Homes v Henley Arch and Barrett Property Group Pty Ltd v Carlisle Homes Pty Ltd [2008] FCA 375 . 71 Determining whether "a substantial part of the work" has been reproduced is a question of fact and degree. As indicated, greater weight must be given to the quality of what is reproduced than to its quantity: SW Hart &amp; Co v Edwards Hot Water Systems. 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. An allegation of substantial reproduction will be made out if what has been taken is an essential or material part of the applicant's work: Autodesk Inc v Dyason [No 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305; Tamawood v Henley Arch at [52]; and Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ .