Case: Tamawood v Henley Arch (2004) 61 IPR 378
Outcome: applied
In Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378 at 387, another project home case, the majority at [39] observed that: "The idea-form distinction, often elusive, is particularly so in the case of project homes". This, their Honours said at [38] was because such homes commonly have to be designed to fit blocks of approximately similar shape and dimension and to provide for vehicular access and accommodation. There was, it was said, a certain commonality of 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. 15 Project homes, and the drawing of such plans, are distinct from paintings and musical works. The distinction lies in the fact that a project home involves a mixture of familiar ideas and common place features "based on the real world" (in the form of previous project homes and plans) and "labour, skill and judgment (in combining the various features)": Tamawood at [41] [43]. The issue is further complicated when one bears in mind that the plan for a project home is "partly functional." For example, placing a kitchen in reasonable "proximity to a dining room" is, broadly, a functional consideration: see Tamawood at [41]. Accordingly, the "dividing line between that which is dictated by broad functional requirements and that which is not, is...often unclear": Tamawood at [56]. 16 Importantly, one must bear in mind in this case, and as was explained in Tamawood , that an individual part of a plan or home considered in isolation may merely explain a common idea "...yet there will be copyright in the whole plan if the combination and arrangement originated with the author." (Emphasis added): Tamawood at [41]. 17 The applicants in this case point to the particular combination in the alfresco quadrant as central to their claims. 21 The substantial part inquiry "imputes questions of fact and degree": Tamawood at [51]. What is important is the quality of the part taken, rather than its quantity: SW Hart at 474-5; see also Tamawood at [50] and Milpurrurru &amp; Ors v Indofurn Pty Ltd (1994) 30 IPR 209 at 230 where the Court, in considering the qualitative worth of a part of Aboriginal artwork reproduced on carpets, stated: Although as a proportion either of the total artwork, or the total carpet, the area of copied material in comparison with the whole is not great, in a qualitative sense the copying is substantial. The pattern taken from the artwork constitutes the striking feature of the carpet. And again a predominant consideration is the animus furandi of those responsible for the design.... 24 In Tamawood , the Full Court considered the meaning of the expression, 'substantial part', in the context of plans for project homes. Wilcox and Lindgren JJ concluded at [55] 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' . (Emphasis added) 25 Reference to the essential or material features mirrors the language in Powerflex. The passages in both Powerflex and Tamawood are firmly grounded in Ladbroke . In that case, Lord Pearce stated in dictum: 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. (Emphasis added) 36 Third, key features are clearly important and distinct particularly when features of the designs are viewed in collocation and as a whole. The distinctiveness of the Copyright Works also goes to the consideration of the quality of the works. While novelty is not a consideration of copyright, recent cases such as Tamawood suggest that distinctiveness and that which is "essential" to the copyright works are important considerations in cases where substantial part is at issue: see Tamawood at [51]-[54] and particularly at [89]. Cases such as TCN Channel Nine Pty Ltd v Network Ten Pty Ltd [2001] FCA 108 ; (2001) 184 ALR 1 also stress the need to look at the essential features. See also McCutcheon's discussion in the article Property in Literary Characters [2007] EIPR 143. 43 I will now compare the alfresco quadrant, being the substantial part of the Copyright Works, with the Alleged Infringing Works, to determine whether there is a sufficient objective similarity, having regard to: (a) the similarities and differences in the comparison: Tamawood at [28] and [86]-[89]; (b) the essential material and non-functional parts - being the most important and significant parts of the works: Tamawood at [86]-[89]; and (c) commonplace features that preceded the design of the Copyright Works: Clarendon at [42]. 44 Although I deal with these discretely, in the end, I consider them cumulatively. I will first compare the Seattle 31 plan (Schedule A) with the Prada 35 plan (Schedule C). 45 Before doing so, I note that there is no relevant distinction between the Seattle 31 plan and the Memphis 33 plan. The Memphis 33 plan produces a marginally larger floor area. The applicants' statement of claim outlines the changes that were made to the Seattle 31 to construct the Memphis 33, at paragraph 12. Those changes include: &#8226; additional space in internal areas; &#8226; the garage position pulled back behind the front of the building line; and &#8226; the front wall configuration to allow the inclusion of an attached portico. 48 The assessment is a matter of impression for the Court: see generally Tamawood and Clarendon. In making the assessment, the Court was invited to compare the transparencies of the Seattle 31 and Prada 35 plans. Upon overlay of the transparencies, one can clearly see the striking similarities. In my view, the alfresco quadrant is almost identical in both cases. This is of paramount importance to the present case, as it constitutes the substantial part of the applicants' plan. 49 My view is further fortified by several lay and expert witnesses of both parties. For instance, Popple agreed that the position of the kitchen was "sort of similar" and that of the rumpus, alfresco, family room and meals area were "similar." The area that Popple refers to is, in essence, the alfresco quadrant. Palezzesi also found it difficult to disagree with Popple's assessment. 50 The similarity between the Prada 35 and Seattle 31 designs was confirmed by Popple in cross-examination. Popple's and Palazzesi's observations of similarity given in the witness box in fact extended beyond the alfresco quadrant to include bedrooms two, three and four. 56 In Tamawood at [56], Wilcox and Lindgren JJ considered the functional aspects of the copyright works: 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. 57 The alfresco quadrant, as I have found, is a most important feature, being both essential and material to the design of the Seattle 31 plan. Significant labour, skill and judgment went into the design of the plan, including 130 drawings over a six month period. The designs are centred around the incorporation of an alfresco, which is the part that the respondents have taken. To arrive at this conclusion, I must also examine why the alfresco quadrant is not functional. This was a key argument submitted by the respondents. I will turn to that issue below. 58 A primary contention of the respondents was that there was very little (if any) room for choice as to where the alfresco and surrounding rooms could be placed in the Prada 35. The respondents' contention was purportedly buttressed by the following points: &#8226; since any alfresco is situated where the informal living rooms are situated to the "rear" or to the "side" of the house, there are limited options as to how an arrangement of rooms can be configured; &#8226; thus, if one decided to configure an alfresco within a Melbourne project home, either to the "rear" or to the "side" of the house, it would ordinarily be surrounded by rumpus, family and dining or meal rooms; and &#8226; this, the respondents assert, is what happened in the case of the Prada 35. Further, they assert that the applicants' arrangement is not "so unusual" that it must have been derived from the Seattle 31 plan. 62 The respondents point to the fact that the doors and windows are differently sized and positioned. These differences, it was submitted, were highly significant given the asserted limited scope for variation in what they described as the very restrictive part of the plan relied upon by the applicants. Kenrick was used to support the respondents' submission. I disagree. This is not a " Kenrick "-like case, where there was only one means of expressing the idea of a hand ticking a box. Instead, it conforms with what Wilcox and Lindgren JJ stated in Tamawood , that "broad functional requirements can be satisfied in more ways that one" at [56]. The evidence discloses that there are a number of ways of incorporating an alfresco in combination with a kitchen, living, dining and rumpus. Accordingly, the plan as expressed in the Seattle 31 design is far from obvious, as contended by the respondents' counsel and witnesses. I reject the submission that the design of the alfresco quadrant was 'obvious'. For example, there was no necessity for the shape of the alfresco to be rectangular: there are examples of angled rectangular shapes in the prior art. Longer rectangular features, squares and other shapes thus were possible options. 73 It is to be remembered that it is the combination of features producing the alfresco quadrant which is the result of the labour, skill and judgment of the applicants' Copyright Works and, which as a whole, may be characterised as original. Quite apart from the failure to cross-examine as to the matters which I have identified, the conclusion of infringement is not to be challenged by breaking down the alfresco quadrant and considering the individual areas, and then considering each in isolation as to whether it represents a common or stock feature: Tamawood 61 IPR 378 at [41]. 74 While there was some discounting of common stock designs in the Tamawood decision, this is not a Tamawood case. Tamawood is distinguishable from this case on the basis that the starting design for the respondent's work in Tamawood was a design that it had owned. The respondent had then incorporated aspects from the applicant's copyright work into the original starting design owned by the respondent. Moreover, the case is distinct for another reason. In Tamawood , the level of specificity of the analysis of the 18 items was particular to that case. Here, the substantial part can be grouped within the back end of the Seattle 31 plan, being the alfresco quadrant. In light of the distinctions with Tamawood, the issue of discounting as outlined in that case is not applicable in this case. 75 Accordingly, in my opinion, there is sufficient objective similarity to satisfy the first limb of the SW Hart test, as between the alfresco quadrant in the Seattle 31 and that in the Prada 35.