Case: Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378
Outcome: applied
The historical background and authoritative judicial interpretation of the substantial part requirement, in the context of a building design dispute, are comprehensively reviewed by Wilcox and Lindgren JJ in Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378 at [47]-[56]. 85 Counsel for Carlisle submitted that the al fresco quadrant "was the product of negligible or trivial skill, labour and effort". For the reasons given in relation to the subsistence issue, I reject this submission; see Tamawood at [55]-[56]. 86 Counsel also argued that by the time the Provence was designed in 2003 the al fresco quadrant had become commonplace. However, the relevant time for assessing the "substantial part" question is when the Seattle was designed, that is in 1999. If that were not so, copyright owners would lose their rights provided a sufficient number of infringements had been perpetrated. 87 I find that the al fresco quadrant was a substantial part of Barrett's designs and buildings. 88 A finding of subjective copying is relevant to the issue of sufficient similarity. In Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 43 IPR 1 Lindgren J, with whom Finkelstein J agreed, said at [86] that ...where subjective copying occurs there can be expected to be found an infringement, unless it transpires that that the product is so dissimilar to the copyright work that the copyright work can no longer be seen in the work produced. Subsequently in Tamawood Wilcox and Lindgren JJ at [46] somewhat qualified that view. Their Honours noted that the primary judge in the case before them had "expressed surprise" at the passage from Eagle . Their Honours said: 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 11 , [2000] UKHL 58 at 116, 117] ( 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. 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 ). 90 In Tamawood their Honours did not refer to the earlier Full Court decision in Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309. This appears to have been a "substantial part" case: see at [37]. In any event, the Full Court said at [28]: Further, in a case where there has been deliberate copying, the court will not look kindly on a defendant when the plaintiff seeks to establish that what has been copied is sufficiently objectively similar to the plaintiff's work. In Blackie &amp; Sons Ltd v The Lothian Book Publishing Co Pty Ltd [1921] HCA 27 ; (1921) 29 CLR 396 Starke J 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. (Citations omitted.) See also S W Hart &amp; Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 484 where Wilson J referred with approval to the judgment of Street J in Ancher, Mortlock, Murray &amp; Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 where his Honour acknowledged that his finding of infringement had been coloured by the unmeritorious use made by the defendant of the plaintiff's work. 95 Counsel for Carlisle relied on the proposition that the more simple, commonplace, familiar and straight forward the subject matter of a copyright work, the closer the similarity that will be required if infringement is to be found: Tamawood at [42]. He cited the well known case of Kenrick &amp; Co v Lawrence &amp; Co (1890) 25 QBD 99 at 103-104, a case which concerned the representation of a hand making the mark of a cross on a ballot paper. 96 This proposition, while undoubtedly correct, is of little assistance in the present case. Barrett's al fresco quadrant was truly original and commercially successful. Nor is it to the point, as counsel for Carlisle argued, that there are differences elsewhere between the Provence and the Barrett designs, such as in respect of the front facades. The fact that this is a "substantial part" case necessarily means that there are other parts of Carlisle's works in respect of which there is no allegation of copying. 97 Barrett's expert witness Dr John Cooke compared the Seattle plan to the Provence plan. He said: The rear part of the [Provence] plan, containing Kitchen, Meals, Family, Alfresco, Rumpus, Bed 2, Bed 3, Bed 4, Laundry, Bath, WC, Laundry and Pantry is essentially very similar in layout (mirror reversed) to the corresponding area in the Seattle plan, with differences in the arrangement of wet areas and angled doors to Bed 3 and Bed 4 instead of the doors at right angles to the corridor in the Seattle plan. The main difference in this part of the plans is the shape of the Kitchen and the access to the Laundry (direct from the Kitchen in the Respondent's Plan; from the bedroom corridor in the Seattle Plan). The position of the Laundry access in the Respondent's Plan has enabled the bedroom corridor to be shortened. 98 In comparing the respective houses, Dr Cooke said: The vista from the Entry in the (Carlisle house) (Photograph No 67) is closed by a recessed and top lit wall feature, whereas the corresponding vista in the Seattle (Photograph No 4) is closed by an aperture in the wall beside the Rumpus room doorway and the doorway of the Rumpus room itself. The Rumpus room doorway is visible in this vista because the rear part of the plan of the (Carlisle house) is a mirror reversed version of the Seattle plan, with the result that the Entry access leads to the Rumpus room doorway in the Seattle whereas in the (Carlisle house) the Rumpus room is to the right of the Entry access. However the spatial effects in both houses are similar. 99 He concluded: Overall, in my opinion the arrangement of the Alfresco and surrounding living areas, including the indoor/outdoor connection and the Alfresco space itself is a highly significant feature of both houses [reference to photographs] as is the organization of the circulation areas to minimize waste and maximize virtual impact.