Case: Francis Day &amp; Hunter Ltd v Bron (1963) 1 Ch. 587
Outcome: cited
application of the law of copyright to project homes gives rise to special difficulty as the drawing of plans for project homes involves a mixture of the use of familiar ideas based on objects in the real world and many other project homes and plans for them, on the one hand; and the labour, skill and judgment of an author in combining and expressing those ideas in an original work on the other. The more simple and straightforward the work, the closer the similarity must be for infringement to be found. The notion of reproduction involves resemblance to the owner's work and actual use of that work ( S W Hart &amp; Co Proprietary Limited v Edwards Hot Water Systems [1985] HCA 59 ; (1985) 159 CLR 466 at 472 per Gibbs CJ), or put another way, what is required is "a sufficient degree of objective similarity between the two works and ... some causal connection between [the two works]" ( Francis Day &amp; Hunter Ltd v Bron (1963) 1 Ch. 587 at p 614 per Willmer LJ). Causal connection and objective similarity are components of reproduction of the work in a material form. Causal connection might be inferred from access to the plan in suit and objective similarity between that work and the plan said to infringe. Too much can be made of the distinction between the work and a substantial part of it. The notion of substantial part may be found most useful where particular quantitatively small parts of the work in suit, are taken. Can it be said that a quantitatively small part is, for identified reasons given in evidence, nevertheless a substantial part of the work? The ultimate question is not infringement of the part but infringement of the whole . Whether there has been infringement of the whole requires that the originality of the part taken be considered in relation to the work as a whole. The question is whether the part is an "essential or material" feature of the whole. There is no doubt that Jennings bears the onus of proving on the balance of probabilities that the respondents made actual use of the work in suit and having used the work, they brought into existence a plan that either takes a substantial part of the plan in suit, shown to be an essential or material feature of the whole (although perhaps a quantitatively small part) or takes substantially the whole plan, viewed quantitatively, assuming that an exact copy of the plan in suit has not been made. As to the last matter, no such claim is made. In this case, actual use is sought to be established as an inference arising out of contended striking similarities between the two plans. Those striking similarities then speak to reproduction of the plan in suit and thus infringement. In Francis Day &amp; Hunter Ltd v Bron , Willmer LJ at p 614 noted, apart from the observations mentioned at [54] of these reasons, these further matters: (3) Where there is a substantial degree of objective similarity, this of itself will afford prima facie evidence to show that there is a causal connection between the plaintiffs' and the defendants' work; at least it is a circumstance from which the inference may be drawn. (4) The fact that the defendant denies that he consciously copied affords some evidence to rebut the inference of causal connection arising from the objective similarity, but is in no way conclusive. As to subconscious copying, Willmer LJ noted in Francis Day &amp; Hunter at p 613 that, "if subconscious copying is to be found, there must be proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied". In the absence of any direct evidence of use of or access to the Jennings plan in suit, the causal link can be established by inference. The greater the degree of objective similarity between the two plans, the more likely it is that an inference of actual use might be drawn ( S W Hart &amp; Co (supra) per Gibbs CJ at 472; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 per Heerey, Sundberg and Finkelstein JJ). Exact copying is rarely the conduct in controversy. Normally an inference is sought to be drawn in the face of quantitative features of the plan in suit, present in the plan under challenge, or by correspondence with a substantial part qualitatively of the plaintiff's plan, or both. If the contention is that a substantial part of the plan in suit has been taken, a question of "fact and degree" arises ( Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912 per Weinberg J at [71]) and 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" ( Inform Design , per Weinberg J at [71] [emphasis added]). An allegation of substantial reproduction of the work by reproduction of a substantial part will be made out if what is taken is an essential or material part of the work in suit. The phrase "substantial part" refers to the quality of that taken and the importance it bears to the work as a whole ( Tamawood v Henley Arch at [50], [52] and [54]; Dixon Investments Pty Ltd v Hall 18 IPR 490 at 494 per Lockhart, Spender and Ryan JJ; Autodesk Inc. v Dyason [No. 2] [1993] HCA 6 ; (1993) 176 CLR 300 per Mason CJ at 305). It may be that a particular orientation and layout of rooms which draws a user through a structure in a particular way is an essential or material part of a plan ( Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 ; (1999) 161 ALR 503 at [74] ). Essentiality is a question of fact and degree.