Case: Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378
Outcome: cited
An important case for present purposes is Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378. It also concerned copyright in project home designs. The trial judge found that copyright had been infringed. On appeal, Wilcox and Lindgren JJ in a joint judgment observed in relation to copyright and project homes generally: "[38] The application of the law of copyright to project home plans gives rise to special difficulty. All modern homes have certain features in common. In the case of project homes competing for the same number of dollars, there are pressures towards sameness. Of course, the size, number of rooms and facilities will vary according to the price range. Commonly, however, those in the same price range will be found: (a) to be designed to fit blocks of approximately similar shape and dimensions; (b) to provide for vehicular access and accommodation; and (c) to include 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. [39] The idea-form distinction, often elusive, is particularly so in the case of project homes. Yet the originality threshold for copyright protection is low. It is no longer challenged that copyright subsisted in the Chirnside Works and Buildings, as well as in the Baltimore Works and Buildings. [40] Although copyright subsists in the whole of a plan or house, this does not mean that each individual part of it, considered in isolation, satisfies the originality test for the subsistence of copyright, that is to say, that it originated with the author. Some parts may be original only in the sense that they are part of a whole which did originate with the author. So, Lord Pearce was able to say that to copy an unoriginal part of a copyright whole is not an infringement: cf Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 ("Ladbroke") per Lord Pearce at 293. [41] The taking of an idea, as distinct from its expression, from a copyright work will also not constitute an infringement, since there is no copyright in ideas: cf Kenrick &amp; Co v Lawrence &amp; Co (1890) 25 QBD 99 ( "Kenrick" ). Common examples concern objects in the real world or ideas based on objects in the real world. A person who draws or photographs an object does not, through the copyright in the drawing or photograph, become entitled to prevent others from drawing or photographing the same object, even though there may be a striking similarity between the two drawings or between the two photographs. The drawing of plans for project homes involves a mixture of the use of familiar ideas based on objects in the real world (many other project homes and the plans for them) on the one hand, and labour, skill and judgment (in combining and arranging the various parts) on the other hand. It may be possible to say of each individual part, considered in isolation, that it merely expresses a common idea, yet there will be copyright in the whole plan if the combination and arrangement originated with the author. In protecting that origination, copyright protects the author's labour, skill and judgment. [42] It is reasonable to expect that the more simple, commonplace, familiar and straightforward the subject matter of a copyright work, the closer the similarity that will be required if infringement is to be found: cf Kenrick at 102." 68 What is clear from Clarendon Homes v Henley Arch, and Tamawood v Henley Arch in particular , as well as the other cases cited, is that in order to prove infringement of copyright there must be proof of copying. As indicated, copying can be deliberate or subconscious although, as the Full Court observed in Clarendon Homes v Henley Arch at [24], in cases involving works such as architectural plans, it would be surprising to find many cases of subconscious copying. If a person independently creates a work that is substantially similar or even identical to another in which copyright subsists, the copyright holder has no recourse: Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 87 FCR 415 at [86] per Lindgren J. 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 . 75 Inform submitted that this objective similarity was a matter of impression for the Court to undertake as a lay observer. That there were differences between the relevant Inform and Boutique plans was to be expected and was in no way determinative. In relation to what it termed the "legacy features", which could be seen as carrying over from the Villa Grand to the Villa View, Inform noted that the question was addressed in Tamawood v Henley Arch. In that case, Wilcox and Lindgren JJ concluded that such features should be "subtracted" from the assessment of what had been reproduced. However, Moore J, in his dissenting judgment, reached the conclusion that they should not. 76 Notwithstanding this, Inform said that a number of key features not present in the Villa Grand could be seen to have been introduced into the Villa View, which reproduced "with remarkable fidelity" features from the Seasons. They were: &#8226; the relocation and orientation of the staircase; &#8226; the redesign of the hallway space and spine on the ground floor; &#8226; the cleaner line between hall and dining space at front of the house with no columns and reduced articulation of the separation between that room and the hallway; &#8226; the placement of the study at the front of the house; &#8226; the shift forward of the garage; &#8226; the 'straighter' alignment of the front of the house with the garage; &#8226; the arrangement of the downstairs laundry and toilet 'wet areas' around the stair, which have the same 'footprint' on the two plans, although the disposition of the laundry and toilet within the footprint is varied; &#8226; the arrangement upstairs of the bathrooms and toilet around the stairway; &#8226; the rearrangement of the children's bedrooms in a cluster at the rear without separation by a bathroom; &#8226; the introduction of the island bedhead/wardrobe in the master bedroom; and &#8226; the spatial arrangement and disposition of en suite bathroom, robe and master bedroom. 77 Even subtracting the "legacy features" from the Villa Grand that were present in the Villa View design, and allowing for the slight differences in dimension and arrangement of some of the spaces, Inform argued that there remained a striking similarity between the Villa View and Inform's Seasons and Urban plans. 88 As noted above, copyright subsists in the work as a whole. It will be infringed if a "substantial part" of the work is reproduced, though no separate copyright is conferred on that part. As was noted in Tamawood v Henley Arch, the critical question will be whether the part or parts taken represented a substantial part of the labour, skill and judgment of the author that made the whole work "original". Plainly, this involves questions of degree. 89 As indicated above, Inform relied on the evidence of Mr Meyer and Mr Wines to submit that a number of features, which were material, essential or important parts of the Urban and Seasons designs, are found in the Villa View. Of these features, the most significant is the arrangement of a centralized staircase in proximity to a "core" of wet areas with living area and bedrooms then arranged around that core. Inform submitted that this aspect of the design of the Seasons and Urban was of key qualitative significance. 90 Despite Mr Rivette's suggestions in cross-examination that the central staircase, and arrangement of wet areas around it, were unremarkable features in commercial design, Inform contended that Boutique had not been able to offer any evidence of these features forming part of the "common stock" in project housing before the Urban and Seasons. Inform noted how the central stair in the Urban and Seasons could have been pushed further forwards or backwards in the buildings or rotated to face the front or rear. Its placement where it was represented a concrete choice by Mr Meyer from which other choices, such as the subsequent arrangement of surrounding rooms, flowed. Similarly, Inform contended, the arrangement of the wet areas around the stairs had no functional or cost benefits but was simply a choice made from many which were available. This was also true of the separation and arrangement of the downstairs meals and living rooms and the upstairs rooms around the core. Inform said that, despite Boutique's attempts to portray these aspects of the design of the Inform homes as being the result of the requirements of building on narrow blocks and satisfying building codes, this was not the case. 94 In addition it drew attention to the comments of Wilcox and Lindgren JJ in Tamawood v Henley Arch, in which their Honours said (at [89]) : "It would be tedious to attempt to identify the most important features of the Chirnside which were taken. In our opinion, cumulatively, they constituted a substantial part of the Chirnside. As between the Chirnside and the Adrian, the parts of the Chirnside that were taken were "distinctively" Chirnside. We regard: &#8226; the absence of protrusions from bedroom 1 and bedroom 2 and of diagonal walls and hampers between the dining and living areas; &#8226; the glassed conservatory-style meals area between the rumpus room and the kitchen; &#8226; the lack of diagonal walls and hamper between the rumpus and family rooms; &#8226; the glass walls of the rumpus room; and &#8226; the absence of a door and built-in wardrobe of bedroom 5/study, as essential and material non-functional parts of the Chirnside, regarded as an artistic work, that were copied. We prefer, however, to say that all of the items which we have concluded were taken from the Chirnside, when regarded cumulatively, amount to a substantial part of the Chirnside." 95 In reply, Boutique submitted that even if I found that there had been copying, it would still not have infringed Inform's copyright. It submitted that any such copying, assuming it had occurred, was not done in relation to a "substantial part" of Inform's work. 97 Boutique submitted that in considering whether a "substantial part" of Inform's work had been reproduced, I should bear in mind the observations of Wilcox and Lindgren JJ in Tamawood v Henley Arch at [56]: "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 the project home plan may be dictated by aesthetics 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." 98 Boutique submitted that in order to determine whether the relevant causal connection was established, the Court had to identify that part of Inform's work that was the subject of copying, whether consciously or subconsciously. In that regard, Inform's case was that the essential features of its Urban and Seasons designs that were reproduced were those set out by its counsel in his opening, namely: &#8226; a long narrow rectangular plan forming a "spine" to the building; &#8226; a centrally positioned free-standing staircase; &#8226; minimized hallway space downstairs and upstairs; &#8226; creation of a central services "core" around the stairwell ie placement of the kitchen adjacent to the stairwell but not abutting a permitter wall; &#8226; placement of other "service" areas such as laundry powder room and en suite bathroom around the stairwell; &#8226; placement of living and bedrooms around the core in zones; &#8226; master bedroom at front of house, forward of stairs (upstairs) with an island style bedhead/robe; &#8226; rumpus room and children's rooms upstairs at rear; &#8226; arrangement of the children's rooms; &#8226; arrangement of bathrooms upstairs; &#8226; open informal living spaces on ground floor with visual floor to rear of house; &#8226; a meals area extending into the yard creating a courtyard effect with garage; &#8226; a garage arranged to side of the house; &#8226; fa&ccedil;ade/elevation arrangements designed to break down the visual and spatial massing of the building; and &#8226; a relatively low pitch roofline. 99 Boutique submitted that many of these features were either mere ideas or common to all project homes. It will be recalled that in Tamawood v Henley Arch, the Court observed (at [38]) that the application of the law of copyright to project home plans gave rise to special difficulty. All modern homes had certain features in common and, in the case of project homes competing for the "same number of dollars", there were pressures towards sameness. See also Eagle Homes v Austec Homes at [80] per Lindgren J . In Henley Arch Pty Ltd v Clarendon Homes (Aust) Pty Ltd (1998) 41 IPR 443 , Merkel J (at 460) went so far as to suggest that the degree of the protection under copyright of an architectural plan might be limited by reason of the proportion of features common to all plans. 101 For functional reasons, kitchens are normally located in reasonable proximity to dining areas. For similar reasons, in a two-level home, bedrooms are usually positioned upstairs in reasonable proximity to each other. In Tamawood v Henley Arch, the Court observed (at [56]) that proximities such as these would not be a substantial part of any plan or house regarded as an artistic work. Moreover, they would be ideas and not the expression of ideas. 102 Boutique argued that the design of project homes was invariably dictated by features such as the size and shape of the block of land available, the requirements of Rescode (the planning scheme provisions applying to residential developments in Victoria), local government requirements, and cost considerations. 103 Inform conceded that many of the features identified by Boutique as common to project homes were present in the Villa Grand 35 plan, to which Inform took no exception. Indeed, a number of those features were present in the earlier Mawson Lakes home as well. Boutique submitted that these pre-existing elements had to be excluded from any analysis of what may have been derived from Inform's work. In Tamawood v Henley Arch, Wilcox and Lindgren JJ said at [64]: "Obviously, it is important in considering the similarities between the Gould and Chirnside plans, to discount the pre-existing similarities between the Chirnside and the Adrian: the Gould was 'based' on the Adrian, not the Chirnside." 104 Boutique argued that when one excluded these common and pre-existing features, all that was left was the central core of the Urban and Seasons, that being the staircase and its position in the house with the wet services area around it. In that regard, even Mr Wines conceded that a central staircase was hardly novel. Moreover, a staircase that folds back on itself has been around for centuries. Mr Meyer acknowledged that such a staircase was quite standard and that the structure of a staircase that wrapped around a blade wall or balustrade was not uncommon in 1999 when he designed the Core house. He agreed that the staircase in the Villa View differed from that used in the Urban and Seasons in that it did not appear to wrap around a blade wall, but rather a balustrade. 105 Mr Wines accepted that commercial and high-rise properties often had wet service areas surrounding the vertical core. He accepted that this concept had been adopted by both Inform and Boutique and that it made good sense as an economy measure. He agreed that the wet areas were configured above each other in the Villa Grand and that this same approach had been taken in the design of the Villa View. Mr Meyer accepted that other architects or designers might have been using a central staircase with serviced wet areas surrounding it at the time that he designed the Core house in 1999.