Case: S W Hart &amp; Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466)
Outcome: cited
Ultimately, the question to be determined on the issue of originality is one of fact and degree in every case ( G.A. Cramp &amp; Sons Limited v Frank Smythson Limited [1944] A.C. 329 at 335) as to whether the author of each work has deployed a sufficient level of skill, work, labour, care, concentration, analysis or effort so as to bring into existence a work in which copyright subsists ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 476477; Sands &amp; McDougall Pty Ltd v Robinson [1917] HCA 14 ; (1917) 23 CLR 49; University of London Press v University Tutorial Press [1916] 2 Ch 610; Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1990) 1 Qd.R 231; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ), whether or not the plans or drawings comprising the artistic works exhibit 'artistic quality' ( Amalgamated Mining Services Pty Ltd v Warman International Ltd (1992) 24 IPR 461; S W Hart &amp; Co. Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466). Originality in this sense means the work of an author not copied from another work ( Walter v Lane [1900] AC 539). When the plans in suit have a genetic footprint in earlier drawings to which the author has had regard, the degree of work, labour, skill, effort and judgment deployed in bringing the plans in suit into existence, must exhibit, as the expression of that effort, visually identifiable changes that make it plain that the drawing is a new artistic work and not simply a copy of the earlier drawings ( Interlego AG v Croner Trading Pty Ltd (1992) 111 ALR 577). 182 Although I have found that the respondent made conscious use of the applicant's new 4 in 1 bucket and has consciously copied components of the bucket, the court must be satisfied that the respondent reproduced each of the applicant's drawings or a substantial part of them. The test of reproduction is whether there is a sufficient degree of objective similarity between the applicant's drawings and the respondent's drawings ( Francis Day &amp; Hunter Ltd v Bron [1963] Ch. 587 at p 614 per Wilmer LJ; S W Hart &amp; Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ; CIPEC v First Melbourne Securities Pty Ltd [1999] FCA 660 ; (1999) 44 IPR 512 [52] per Merkel J). The question of what amounts to substantial reproduction in any case is not capable of precise definition and is a matter of fact and degree ( Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at p 473 per Lord Evershed). The question of reproduction is a separate question from causal use and causal copying although the two overlap ( Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd [1999] FCA 1371 per Heerey, Sundberg and Finkelstein JJ [27]). 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).'