FEDERAL COURT OF AUSTRALIA Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138 COPYRIGHT – infringement – floor plans of project homes – reproduction of whole or substantial part – whether sufficient similarity between copyright plan and allegedly infringing plan – whether case one of copying of whole or of substantial part – meaning of "substantial part" – degree of protection to be afforded to floor plans of project homes – relevance of common features possessed by such plans – two aspects of reproduction, that is, subjective copying and sufficient objective similarity – relevance of finding of actual copying – distinction between idea and expression – role of appellate court in reviewing finding of trial judge that plans not sufficiently similar to amount to "reproduction". Copyright Act 1968 (Cth) ss 14(1), 31(1)(b)(i) S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, referred to Beck v Montana Constructions Pty Ltd [1964-5] NSWR 229, considered Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWLR 265, referred to Ancher Mortlock Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278, applied Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 (FCA/Pincus J), referred to University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, considered Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, considered Autodesk Inc v Dyason [No 2] (1993) 176 CLR 300, referred to Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508, distinguished Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 (FC), referred to Ownit Homes Pty Ltd v Mancuso Investments Pty Ltd (1988) AIPC 90-488, referred to LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447, considered Kenrick & Co v Lawrence & Co (1890) 25 QBD 99, distinguished Beazley Homes Ltd v Arrowsmith [1978] 1 NZLR 394, considered Hanfstaengl v Baines & Co [1895] AC 20, referred to MacMillan & Co Ltd v Cooper (1923) 40 TLR 186, considered Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396, applied Commissioner of Taxation v Chubb Australia Ltd (1995) 56 FCR 557 at 560, referred to Biogen Inc v Medeva PLC [1997] RPC 1 at 45, referred to Esso Australia Resources Ltd v Commissioner of Taxation (1998) 98 ATC 4768 at 4779 referred to S & I Publishing Pty Ltd v Australian Surf Lifesaver Pty Ltd (1999) ATPR 41-667 at 42,505, referred to Preston Erection Pty Limited v Speedy Gantry Hire Pty Limited [1998] FCA 1615 at 9-10, referred to Beneficial Finance Corporation Ltd v Karavas (1991) 23 NSWLR 256, referred to George Mitchell (Chesterhall Ltd) v Finney Lock Seeds Ltd [1983] 2 AC 803 at 816, referred to Devries v Australian National Railways Commission (1993) 177 CLR 472 at 479, referred to Warren v Coombes (1979) 142 CLR 531, referred to Coghlan v Cumberland [1898] 1 Ch 704 at 704-5, referred to Bradbury v Hotten (1872) 8 LR Ex 1, referred to Chappell & Co Ltd v DC Thompson & Co Ltd [1928-35] MacG Cop Cas 467, referred to EAGLE HOMES PTY LIMITED v AUSTEC HOMES PTY LIMITED NG 1069 of 1997 LINDGREN, FINKELSTEIN AND WEINBERG JJ 22 FEBRUARY 1999 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1069 OF 1997 ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: EAGLE HOMES PTY LIMITED ACN 002 800 115 Appellant AND: AUSTEC HOMES PTY LIMITED ACN 062 007 096 Respondent JUDGES: LINDGREN, FINKELSTEIN AND WEINBERG JJ DATE OF ORDER: 22 FEBRUARY 1999 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The appeal be allowed. 2. The orders made on 1 December 1997 in proceeding NG 355 of 1996 be set aside, and in lieu thereof, the respondent pay the costs of the appellant as applicant in that proceeding. 3. The matter be remitted to the primary judge in proceeding NG 355 of 1996 for determination in accordance with the reasons of the Full Court delivered on 22 February 1999 in this proceeding. 4. The respondent pay the appellant's costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1069 OF 1997 ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: EAGLE HOMES PTY LIMITED ACN 002 800 115 Appellant AND: AUSTEC HOMES PTY LIMITED ACN 062 007 096 Respondent JUDGES: LINDGREN, FINKELSTEIN AND WEINBERG JJ DATE: 22 FEBRUARY 1999 PLACE: SYDNEY REASONS FOR JUDGMENT LINDGREN J INTRODUCTION 1 The appellant ("Eagle") appeals against an order made by a Judge of the Court dismissing its application based on alleged infringement of its copyright in the floor plans for certain project homes known as the "Kookaburra" and "Kookaburra Series 2" ("the Kookaburra 2"). Like the primary judge, I shall refer to these floor plans together as "the subject drawings". 2 The respondent ("Austec"), like Eagle, was in the business of building project homes. Versions of the floor plans for Austec's "Paterson" and "Robertson" homes were said to constitute reproductions of the subject drawings or of a substantial part of them. The learned primary Judge, who determined the issue of infringement separately from that of the granting of relief, found that there had been some actual copying by Austec of the subject drawings but was not satisfied that either the Paterson or the Robertson was sufficiently similar to the subject drawings to constitute a "reproduction" of them or of a substantial part of them. For this reason she concluded that neither the publication of advertisements for the Paterson and the Robertson, which included their floor plans, nor the admitted building of a Paterson home and a Robertson home, amounted to such a reproduction. BACKGROUND FACTS AND REASONING OF THE PRIMARY JUDGE 3 Annexed to these Reasons for Judgment are copies of both of the subject drawings and of Austec's Paterson and Robertson drawings. Before her Honour, the subsistence of copyright in the subject drawings as original "artistic works" was in issue. This was not so on the appeal: the appeal has turned only on the issue of infringement. Accordingly, I can outline her Honour's findings as to Eagle's copyright in the subject drawings briefly. 4 Section 10 of the Copyright Act 1968 ("the Act") defines an "artistic work" to include a "drawing, ... whether the work is of artistic quality or not". It was not in dispute that the subject drawings were artistic works. Section 32 (2) of the Act provides, so far as relevant, that subject to the Act, copyright subsists or continues to subsist in an original artistic work that has been published, if the first publication of it took place in Australia or its author was a "qualified person" at the time when the work was first published. Beverley Gaye Ord ("Ms Ord"), an architectural draftsperson employed by Eagle Management Australia Pty Limited ("Eagle Management"), a company associated with Eagle, gave evidence that in the course of her employment in early June 1995 she received instructions from Mr Cardile, a director of Eagle Management, to prepare a preliminary design sketch of a home that would fit on a block with a fifteen metre frontage, have a double garage, four bedrooms, a main bathroom and a separate en suite bathroom, and would be inexpensive to build. Pursuant to those instructions, Ms Ord completed a first design sketch. In doing so, she referred to a brochure which depicted the floor plan of a project home known as the "Lorikeet Series II" ("the Lorikeet II"). 5 In response to certain further instructions from Mr Cardile and certain design considerations, Ms Ord prepared a further sketch. She then made computer generated modifications of this further sketch. She identified the final computer-generated modification as the design or floor plan of the Kookaburra. 6 In response to a request from a client for a side rumpus room, she made a drawing of the Kookaburra and provided for this additional feature. This was the Kookaburra 2. Subject to the addition mentioned, a change of the window in bedroom 1 to a bay window and the omission of a short protuberance on the bedroom side of the building at the position of the en suite of bedroom 1, the Kookaburra 2 plan is virtually a "mirror image" of the Kookaburra plan. 7 Notwithstanding some differences of detail between the drawings identified by Ms Ord and the subject drawings, the primary judge was satisfied that Ms Ord was the author of the subject drawings. Her Honour was also satisfied that Ms Ord was a "qualified person" at the time when the subject drawings were first published and that the first publication of them took place in Australia. 8 The parties were at issue before her Honour as to whether the subject drawings were merely a copy of the Lorikeet II floor plan or were "original" artistic works. No expert evidence was called on the issue of the visual similarities and differences between the Kookaburra and the Lorikeet II. Her Honour thought that there were visual differences between the two, although they shared many features. Ms Ord gave evidence of the work she did to develop the Kookaburra from the Lorikeet II. Janet Moya Grey ("Ms Grey"), an architect called as an expert witness by Austec, gave evidence that it takes skill to modify a house design. 9 The primary judge was satisfied that the subject drawings were "original" artistic works in which copyright subsisted. 10 Her Honour found that the subject drawings had been made by Ms Ord pursuant to the terms of her employment by Eagle Management with the result that Eagle Management was the original owner of the copyright in them (see s 35 (2) and (6) of the Act). By deed dated 22 April 1996, Eagle Management assigned all its copyright in the subject drawings to Eagle. Her Honour found, therefore, that Eagle was, at the relevant time, the owner of copyright in the subject drawings. 11 In relation to infringement, the following provisions of the Act are relevant and were referred to by her Honour. Section 31 (1), so far as relevant, provides as follows: "(1) For the purposes of this Act ... copyright, in relation to a work, is the exclusive right: (a) ... (b) in the case of an artistic work, to do all or any of the following acts: (i) to reproduce the work in a material form; ...." The term "reproduce" is not defined in the Act. 12 Section 36 (1) of the Act is as follows: "(1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright." 13 Section 13 (1) provides that a reference in the Act to "an act comprised in the copyright" in a work is to be read as a reference to any act that, under the Act, the owner of the copyright has the exclusive right to do. 14 Section 14 (1) of the Act provides: "(1) In this Act, unless the contrary intention appears: (a) a reference to the doing of an act in relation to a work ... shall be read as including a reference to the doing of that act in relation to a substantial part of the work ...." 15 Accordingly, Austec will have reproduced the subject drawings in a material form, and so infringed Eagle's copyright in them, if it has reproduced them or a substantial part of them in a material form. 16 Eagle's allegation was not only that Austec had reproduced the subject drawings by producing the Paterson and Robertson drawings, but also that it had done so by erecting the Paterson and Robertson homes. In this connection, Eagle relied on s 21 (3) of the Act which provides: "(3) For the purposes of this Act, an artistic work shall be deemed to have been reproduced: (a) in the case of a work in a two-dimensional form – if a version of the work is produced in a three-dimensional form; or (b) ... ; and the version of the work so produced shall be deemed to be a reproduction of the work." 17 The primary judge referred to certain principles relating to the notion of "reproduction" which were, and have been on the appeal, accepted by the parties as uncontroversial. She referred to the well-known passage from the judgment of Gibbs CJ, with whom Mason J agreed and Brennan J agreed on the point, in S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 472: "The notion of reproduction, for the purposes of copyright law, involves two elements – resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Francis Day & Hunter Ltd v Bron [[1963] Ch 587 at 614], 'a sufficient degree of objective similarity between the two works' and 'some causal connection between the plaintiffs' and the defendants' work'." 18 Her Honour also noted that in determining whether a reproduction was of "a substantial part of [a] work", one must give greater weight to the quality of that which has been reproduced than to its quantity (her Honour again referred to S W Hart & Co Pty Ltd v Edwards Hot Water Systems, at 474 (Gibbs CJ), 481 (Wilson J) and 503 (Deane J)). 19 Eagle's further amended statement of claim alleged that Austec had infringed Eagle's copyright in the subject drawings by, without Eagle's licence, procuring the publication of advertisements in a newspaper containing reproductions of the subject drawings under the names "Paterson Modern Design" and "Robertson Modern Design", and by building homes which produced in a material form a substantial part of the subject drawings, under the names "Paterson" and "Robertson". The primary judge considered first the building of a home to the Paterson floor plan, noting that counsel for Eagle conceded that its case for infringement of its copyright was stronger in respect of the Paterson than in respect of the Robertson. 20 Her Honour embarked upon an analysis of the two sets of designs, using the approach and nomenclature of Alexander Smith ("Mr Smith"), an architect called as an expert witness by Eagle. The principal comparison which she made was between the Kookaburra and Paterson floor plans: she referred to the Kookaburra 2 and the Robertson only where they differed respectively from the Kookaburra and the Paterson. On the hearing of the appeal, senior counsel for Eagle accepted that the primary judge's account of the comparison was accurate as far as it went, but I need not set it out here. 21 Her Honour next discussed the drawing of the Paterson floor plan. Evidence on this matter was given by Salvatore Joseph Panetta ("Mr Panetta"), a director of Austec, and Carmelo Anthony Zappia ("Mr Zappia"), a director of Algorry Zappia & Associates Pty Ltd, consulting civil engineers and architectural designers who had been retained by Mr Panetta. Mr Panetta said that in about 1994 or 1995, he perceived a demand in the West Hoxton area of Sydney for project homes suitable for erection on blocks of land with a fifteen metre frontage and decided to prepare a low budget house design suitable for the purpose. He made a rough "sketch plan" of a five bedroom home. Mr Panetta said that at the time of doing so, he had seen the Kookaburra floor plan in published advertisements but that he had not seen the floor plan of the Kookaburra 2. Her Honour accepted that evidence. The primary judge found, contrary to his denial, that in preparing his rough sketch, Mr Panetta "did copy certain aspects of the Kookaburra floor plan". 22 Mr Panetta sent his rough sketch to Mr Zappia and asked him to prepare a drawing based on it but omitting one bedroom. Mr Zappia caused to be prepared, and sent to Mr Panetta, a "concept sketch" of what was now a four bedroom home. Her Honour found that Mr Panetta raised with Mr Zappia the issue of the similarity between his (Mr Zappia's) "concept sketch" and the Kookaburra and that he raised the matter "by reason of his own rough sketch having been derived from the Kookaburra". Mr Zappia had a copy of the Kookaburra floor plan at his place of business at the time that the Paterson drawing was being developed. He faxed a copy of it to Mr Panetta. Her Honour found that he did so as a result of Mr Panetta's having raised with him the issue of the similarity between his concept sketch and the Kookaburra. 23 After receiving further instructions from Mr Panetta, Mr Zappia caused to be prepared a floor plan and elevations and other structural details. Mr Panetta required certain changes. These were made and after "minor touch-ups" the Paterson drawing was created by an employee of Mr Zappia's company. It was common ground that the Robertson drawing was derived from the Paterson. 24 The primary judge was not satisfied that Mr Zappia or any employee of his company actually copied from the Kookaburra, but she was satisfied that Mr Zappia was conscious of the similarities between the Kookaburra and Mr Panetta's rough sketch. She thought it likely that Mr Zappia had sought to minimise the similarities between the Kookaburra and the drawings which his company produced for Mr Panetta. Nonetheless, her Honour concluded that the Paterson drawing, having been derived from Mr Panetta's rough sketch which had been derived from the Kookaburra, was to be seen as having itself "been derived, in part" from the Kookaburra. I will have occasion later to consider the significance of this finding. 25 Her Honour proceeded in the remainder of her Reasons for Judgment to deal with the issue of "resemblance" or "objective similarity between the two works" referred to in the passage from S W Hart & Co Pty Ltd v Edwards Hot Water Systems, set out earlier. She referred to authorities dealing with alleged infringement of copyright in architectural drawings, such as Beck v Montana Constructions Pty Ltd [1964-5] NSWR 229 (Jacobs J), Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWLR 265 (Helsham J) and Ancher Mortlock Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 (Street J). As well, her Honour referred to Copinger & Skone James on Copyright (10th ed) at 272. By reference to these and other authorities, she distinguished between simple or commonplace artistic works of no marked originality and those of marked originality. She took the approach, "the simpler and more commonplace the copyright drawing, the more closely must the alleged infringer adhere to it, in order for liability to exist" (cf Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 (FCA/Pincus J) at 483), an approach which Eagle submits is erroneous. Her Honour thought that the subject drawings did not exhibit any feature of marked originality and that while copyright subsisted in them, in practical terms the protection which it afforded was less comprehensive than that afforded by copyright in drawings of marked originality. 26 Her Honour referred to expert evidence given by Mr Smith called by Eagle and Ms Grey called by Austec comparing the Kookaburra and Paterson drawings. She said that she found the evidence of Mr Smith of limited assistance. After giving a summary account of Ms Grey's evidence, her Honour concluded as follows: "Notwithstanding that there is, no doubt, much to be said for 'the rough practical test that what is worth copying is prima facie worth protecting' (University of London Press Limited v University Tutorial Press Limited [1916] 2 Ch 601 at 610), after careful consideration of the subject drawings, on the one hand, and the 'Paterson' and 'Robertson' plans on the other, I am not satisfied that either of the 'Paterson' or the 'Robertson' plans is sufficiently similar to the subject drawings to amount to a reproduction of a substantial part of such drawings. For this reason I conclude that neither the publications of advertisements for the 'Paterson' of which complaint is made, nor the admitted building of a 'Paterson' home and a 'Robertson' home, amounts to a reproduction of a substantial part of the subject drawings." Accordingly, her Honour dismissed the application and ordered that Eagle pay Austec's costs. ISSUES ON THE APPEAL AND OUTLINE OF PARTIES' SUBMISSIONS 27 The major findings of the trial judge were that: 1. copyright subsisted in the subject drawings; 2. that copyright was Eagle's; 3. in relation to the issue of reproduction by Austec of the subject drawings, Austec's Paterson drawing was "to be seen as having been derived, in part", from the Kookaburra; and 4. again in relation to the issue of reproduction by Austec of a "substantial part" of the subject drawings, neither the Paterson nor the Robertson drawing was "sufficiently similar to the subject drawings to amount to a reproduction of a substantial part of such drawings". 28 Austec does not challenge finding 1 or 2. Nor does it challenge finding 3. However, it disputes that finding 3 amounts to a finding of "actual copying" of the Kookaburra drawing. Austec submits that the primary judge found only that Mr Panetta "did copy certain aspects" of the Kookaburra and not that Mr Zappia, whose company produced the Paterson and Robertson drawings, did so. Austec further submits that "[t]here was no finding that the design changes between the sketch and final design were not differences of a genuine character which resulted in design improvements". 29 Austec also seeks to draw a distinction between the (permissible) copying of an idea and the (impermissible) copying of an artistic work and submits that a finding that Mr Panetta "had in mind" the Kookaburra design while drawing his rough sketch does not amount to a finding that he actually copied the Kookaburra drawing. 30 For its part, Eagle challenges finding 4, that is, the absence of sufficient similarity to give rise to a finding of reproduction of a substantial part of the Kookaburra plan. Her Honour's approach to the question of sufficient similarity to a substantial part was set out in the following passage in her Reasons for Judgment: "…once one moves from consideration of the issue of copying to consideration of the issue of whether what has been reproduced is a substantial part of the copyright work, it is necessary for consideration to be given to the quality of that portion of the copyright work which has been reproduced (Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666 at 669). In that context, it is plain that, in the case of an architectural drawing of no marked originality, as in the case of any other artistic work of no marked originality, its simplicity or commonplaceness will be of significance. As Pincus J pointed out in Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 at 483: 'The simpler and more commonplace the copyright drawing, the more closely must the alleged infringer adhere to it, in order for liability to exist: Kenrick and Co v Lawrence and Co (1890) 25 QBD 99 at 102; Ownit Homes Pty Ltd v D & F Mancuso Investments Pty Ltd (1988) AIPC 90-488 at 38, 243.' See also the comments of the Full Court in upholding Pincus J's approach: Dixon Investments v Hall (1990) 18 IPR 490. So, in the case of a copyright architectural drawing which includes a feature of marked originality, a finding that that feature has been reproduced is more likely to lead to a finding of infringement of copyright than a finding of a reproduction of a commonplace feature: the reproduction of a markedly original feature will, by reason of its quality, amount to a reproduction of a substantial part of the copyright work - even where the feature comprises a relatively small part of the total copyright work. In contrast, in the case of a copyright architectural drawing which is without unusual features, the reproduction of a quantitatively greater proportion of the copyright work will be necessary to establish that a substantial part of the work has been reproduced. The subject drawings do not exhibit, in my view, any feature of marked originality. Whilst copyright subsists in such drawings, in practical terms, the protection afforded by such copyright will be less comprehensive than that afforded to drawings showing marked originality." 31 As noted earlier, on the basis of her own careful comparison of the plans, the primary judge concluded that neither the Paterson nor the Robertson drawing was "sufficiently similar to the subject drawings to amount to a reproduction of a substantial part of such drawings". 32 Eagle submits that her Honour's finding of actual copying was a strong indicator that what was copied was a substantial part of the subject drawings. It points to the "rough practical test that what is worth copying is prima facie worth protecting" enunciated in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 610, which was referred to by the primary judge, but, in Eagle's submission, given insufficient weight by her. Eagle also submits that her Honour erred in placing too much weight on her finding that "the subject drawings do not exhibit … any feature of marked originality". It submits that the question is not one of the simplicity of the plans or the degree of protection that they merit, but simply whether, on a visual inspection, Austec's plans reproduced a substantial part of the subject drawings. 33 By a notice of contention, Austec advances an additional reason to support the primary judge's conclusion in its favour on the issue of "sufficient similarity of a substantial part". Austec submits that her Honour should have taken into account, as relevant to that issue, the fact that the subject drawings were derived from the Lorikeet II plan. Austec submits that "where a work which is unoriginal because it has been copied from a previous work or because it incorporates whole portions of unoriginal work, the Court is permitted in effect to subtract the unoriginal parts of the Plaintiff's work in assessing substantiality. If it cannot be precisely subtracted, then the Court can give less weight to the copying of that unoriginal portion when making its assessment." 34 In substance, and by reference to this passage, Austec submits that as to its rear half the Kookaburra was unoriginal because it incorporated the rear half of the Lorikeet II, and, therefore, that the primary judge should have subtracted the rear half of the Kookaburra "in assessing substantiality", or at least given less weight to any copying by Austec of that half. REASONING ON THE APPEAL Facts relevant to Austec's notice of contention 35 I find it convenient to deal with the facts relevant to Austec's notice of contention first. These are the facts touching the relationship between the plan of the Lorikeet II and that of the Kookaburra. 36 As noted above, the primary judge addressed the question of the use made of the Lorikeet II drawing when dealing with the issue of subsistence of copyright in the Kookaburra. The following is the relevant passage in her Honour's judgment: "The only remaining issue on the question of whether copyright subsists in the subject drawings relates to the claim of originality. It is not in dispute that the subject drawings are based on the floor plan of the 'Lorikeet Series II'. Copyright will not subsist in a slavish copy of an earlier work, but an artistic work which derives from an earlier artistic work can nonetheless amount to an original artistic work in which copyright subsists (Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273; Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348). The question for the Court is whether the subject drawings are merely a copy of the 'Lorikeet Series II' floor plan, or are a new artistic work or artistic works (see Interlego AG v Croner Trading Pty Limited, per Gummow J, with whom Black CJ and Lockhart J agreed, at 379). No expert evidence was called on the question of the visual differences between 'The Kookaburra' floor plan and the 'Lorikeet Series II' floor plan. My own judgment is that there is a visual difference between the two floor plans, although they share many features. Ms Ord gave evidence, in general terms, of the work that she undertook to produce the "The Kookaburra" floor plan. [Ms Grey], architect, gave evidence that it takes some skill to modify a house design. I am satisfied that the subject drawings are original artistic works in which copyright subsists. (emphasis supplied) When her Honour turned to the issue of infringement, she did not return to the Lorikeet II. 37 In summary, Austec's notice of contention claims that her Honour ought to have held that: (a) the subject drawings derived from and substantially reproduced the Lorikeet II plan in which Eagle did not own or assert copyright; (b) by reason of their derivative nature, the subject drawings did not "exhibit any feature of marked originality"; (c) the differences between the Lorikeet II and the subject drawings were so insignificant that each of the subject drawings "could attract a new copyright only by reason of its collocation with the unoriginal parts taken from" the Lorikeet II; (d) the question whether there has been infringement by reproduction of a "substantial part" of the subject drawings must be approached by, "in effect, subtracting or giving much less weight to that portion of [the subject drawings] which reproduced the unoriginal part taken from the Lorikeet [II]"; (e) the subject drawings, "when robbed of their collocation with" the Lorikeet II plan, had not been reproduced in whole or substantial part by Austec's Paterson or Robertson drawing. 38 It is necessary to refer to the evidence of the derivation of the subject drawings from the Lorikeet II. As noted earlier, before the primary judge the identity of the owner of any copyright in the Lorikeet II was not established. It was not submitted, and on the evidence it could not have been successfully submitted, that Eagle owned copyright in that plan. 39 As observed earlier, Ms Ord received instructions to prepare a preliminary design sketch of a home that would fit onto a fifteen metre block frontage, have a double garage, four bedrooms, a main bathroom and a separate en suite bathroom and be inexpensive to build. She said that in response she completed a "first design sketch". This was later to become the Kookaburra. In her affidavit, she said: "In preparing this sketch I also referred to the brochure depicting the plan of another project home built by Eagle Homes called the 'Lorrikeet Series II'." 40 Annexed to these Reasons for Judgment are copies of the Lorikeet II drawing and Ms Ord's "first design sketch dated 14 July 1995 of the Kookaburra". There are some differences such as a slightly lesser width of the home designed by Ms Ord, the relocation of bedroom 1's en suite and walk-in wardrobe to the rear of bedroom 1, the elimination of a side protrusion of bedroom 1, the elimination of a window from the side wall of the double garage, the omission of two partial walls which demarcated the rumpus room from the family room of the Lorikeet II, and the lengthening of the bench between the kitchen and the family room. Notwithstanding these differences, Ms Ord's first design sketch was almost a mirror image of the Lorikeet II. In particular, the rear halves were almost identical. 41 In cross examination, Ms Ord affirmed that she "referred" to the Lorikeet II and "used the Lorikeet as the base and some aspects of it", and assumed that she "probably would have" had the Lorikeet II plan "in front of" her when she was drawing the first design sketch of the Kookaburra. 42 Ms Ord said that she gave her first design sketch to Mr Cardile on 14 July 1995 when he instructed her to reverse the positions of the double garage and bedroom 1 so that the garage could have a roller door at the back. She did so in a second sketch which she produced. She made other changes too. For example, she replaced the one window in bedroom 1 with two smaller windows and re-introduced on the bedroom side of the house in the area of bedroom 1's en suite, a short protrusion which now extended beyond the wall between bedroom 1 and the adjoining bedroom 2. The overall length and breadth of the homes shown in both the first and second sketches were 23.29m and 12.78m, but the floor area of the second was a little larger than the first (220.09m2 as against 208.38m2). 43 Ms Ord said that the most important constraint affecting her was the 15 metre frontage. She said: "Yes, [the] 15 metre frontage was basically the most important thing of the design, it had to fit on a 15 metre wide block." This evidence is consistent with that of Mr Panetta, a director of Austec. He said that in about 1994 or 1995 there were several subdivisions in and around West Hoxton as a result of which many thousands of residential blocks were released for sale, a significant number of which had a narrow 15 metre frontage, but that until that time: "the more usual width of a building lot in the area surrounding West Hoxton was about 18 metres or more and [his] existing designs mostly catered for these wider blocks." 44 Mr Valeri, the general manager of Eagle, gave evidence that 15 metre blocks became fairly common in the Liverpool area and elsewhere in Sydney by about 1993. It seems a fair summary of the evidence that both Eagle and Austec were seeking to accommodate, by way of narrowing, existing project home designs to the 15 metre wide blocks that had become available in significant numbers in the West Hoxton area. 45 Ms Ord said that she was aware that a house built to either her first or her second design sketches would not fit on a block fifteen metres wide. She said that she had deliberately "designed too large" in order to facilitate a critical study of the design, intending to make the necessary reductions in width later. She said that she used a computer to make a sequence of drawings and that each was overwritten every time a fresh drawing was done. Her affidavit contained the following passage dealing with the design changes she made between her second sketch and the final form of the Kookaburra: "(a) I deleted the previous extension under the eaves to bedroom 2 and the ensuite. (b) The garage was brought forward and encroached slightly into the entry area. (c) The entry into bedroom 1 was splayed. (d) The bathroom was made into an all-in-one bathroom rather than a three-way bathroom. (e) The window was enlarged in the rear of the rumpus room. (f) A window was put in the side of the rumpus room. (g) The sidelight for the entry was deleted. (h) There was one large window put into bedroom 1 instead of two windows. (i) The right hand side wall to the family room, kitchen, and living room was reduced by 510 mm, to reduce the span of the trusses. One effect of this change was to reduce the construction costs of the home built to the design. The change reduced the overall width of the home." 46 The result, the final Kookaburra design, was completed by the end of July 1995. It provided for a building of 204.84m2 - less than both the first and second sketches. The reduction in area was accounted for by the reduction in width, necessitated by the 15 metre site width, while the length remained the same. 47 Ms Ord was cross examined as to the reasons for some of the changes identified in the passage set out above. According to her evidence, several were directed by Mr Cardile in order to improve the design of the home. Others originated in a desire to keep building costs down. In fact, Ms Ord said of virtually all changes made as between her second sketch and the final version of the Kookaburra drawing: "… the prime thing was to keep the cost down. It was designed to be a very low budget home." 48 Accordingly, and by way of illustration, bedroom 1 of the Lorikeet II had one large front window, Ms Ord's first sketch had one large 1.8 metre window, her second sketch had two smaller windows of 1.2 metres each, and the final Kookaburra plan reverted to one large window (of 2.1 metres). Ms Ord explained: "There was one large window in the Lorikeet but I wanted to put in two smaller windows in the Kookaburra just to make it look that little bit different, but two windows, even two smaller windows are still more expensive than one larger window so that's why we went back to the one larger window." 49 After completion of the Kookaburra plan, a client expressed a desire for a side rumpus room. Accordingly, Ms Ord drew a further plan on 2 September 1995 showing an optional side rumpus room. This was the Kookaburra II. 50 Most of the "main changes" made by Ms Ord to the Lorikeet II were to the front half of the home. A comparison of the rear half of the Kookaburra and of the Lorikeet II reveals that subject to the reductions in width, they are almost identical. The only differences are: (1) the bathroom was changed from a "three-way" bathroom to an "all-in-one" bathroom; (2) the partial walls which had demarcated the Lorikeet II's rumpus room from its family room were omitted; and (3) the bench top dividing the Lorikeet II's kitchen from its family room was lengthened to equal the length of the kitchen wall opposite. A window in the side wall of the rumpus room was omitted from Ms Ord's first and second sketches but was reinstated in the final version of the Kookaburra. 51 Ms Ord conceded that modifications to the rear of the house did not occupy much work. She said that "[b]asically, the back wasn't really an issue" and that what she did was to try to get the house to fit on the site by working only on the front of the house. She said that once the front was sorted out she "just drew the back." This evidence is easily understood: the rear half of the Lorikeet II was much narrower than its front half and would easily fit on a 15 metre wide block. (In fact, Ms Ord also made the rear half of the house narrower by reducing the width of the family and rumpus rooms from 5.19 metres to 4.0 metres.) 52 The above account of the derivation of the Kookaburra from the Lorikeet II and of the work that Ms Ord did provides the necessary factual background to Austec's notice of contention. In substance, Austec submits that the primary judge was required to determine whether the Paterson reproduced a "substantial part" of the Kookaburra by concentrating on their front halves, since the rear half of the Kookaburra was "unoriginal." I shall return to this issue later when dealing with the objective aspect of reproduction. The subjective aspect of reproduction: actual copying of the copyright work or of a substantial part of it. 53 It is desirable to elaborate a little on the account given earlier of the derivation of the Paterson drawing. In early February 1996, Mr Panetta prepared and sent to Mr Zappia his rough sketch. A copy of it is annexed to these Reasons. Mr Panetta said that it was "based on features of a number of existing designs of Austec". He annexed copies of those earlier Austec plans to his affidavit and identified the parts of them from which he said the respective parts of his rough sketch were derived. Mr Zappia stated that Mr Panetta's initial instructions to him were: "Please prepare drawings for a low budget house suitable for narrow blocks having a maximum width of 15 metres. Improve on the sketch if you can, suggest any changes you think would be a good idea and forget about the fifth bedroom. Keep it simple." 54 On 12 February 1996, Mr Zappia sent back to Mr Panetta a first "concept sketch of new budget home" based on Mr Panetta's rough sketch. It omitted the fifth bedroom in accordance with Mr Panetta's instructions. Mr Panetta and Mr Zappia relate in their affidavits a process by which, on two successive occasions, Mr Panetta instructed Mr Zappia to make changes and he did so. Mr Zappia's company commenced work on the final version of the Paterson drawing on 14 February 1996 and it was produced on 19 February 1996. 55 Austec's case before the primary judge, therefore, was not that Mr Panetta or Mr Zappia had created the Paterson solely as a work of his imagination but that through Mr Panetta's rough sketch it was derived from other Austec drawings. Her Honour rejected that case and found that the Paterson was derived, at least in part, through Mr Panetta's rough sketch, from the Kookaburra. Mr Panetta conceded that he had been aware of the Kookaburra design when the Paterson was being designed, but he denied copying it. The primary judge rejected Mr Panetta's denial and found that he had copied "certain aspects" of the Kookaburra. 56 It is necessary now to consider in some detail her Honour's finding and its precise significance. 57 In the first place, I do not think any significance attaches to the fact that her Honour did not find that Mr Zappia or an employee of his company copied the Kookaburra directly. Her conclusion in relation to the activity of Mr Zappia and his company is found in the following passage: "I am not satisfied that Mr Zappia, or any employee of his company, copied from 'The Kookaburra' in preparing the 'Paterson' drawing. However, I am satisfied that Mr Zappia was conscious of the similarities between 'The Kookaburra' and Mr Panetta's rough sketch. I consider it likely that Mr Zappia sought to minimise the visual similarities between 'The Kookaburra' and the drawings that his company produced on Mr Panetta's instructions. Nonetheless, in my view, the 'Paterson' drawing, having been derived from a rough sketch which was itself derived from 'The Kookaburra', is to be seen as having been derived, in part, from 'The Kookaburra'." 58 Did her Honour find that the form of the Paterson was "in part" or in "certain aspects" the result of a copying of the form of the Kookaburra? I think it at least clear from the passage set out above that she did not consider that the changes made by Mr Zappia were sufficient to enable the ultimate Paterson drawing to be regarded differently in this respect from Mr Panetta's rough sketch. It is therefore necessary to turn to that sketch. 59 It is not correct to say that her Honour found that when making his rough sketch, Mr Panetta merely "had in mind" the Kookaburra plan as distinct from actually copying parts of it. Her Honour said: "Mr Panetta agreed in cross-examination that the dimensions of the double garage shown on his rough sketch were larger than usual. The dimensions of the double garage shown by Mr Panetta in his rough sketch are exactly those of 'The Kookaburra' double garage although I note that none of the floor plans identified by Mr Panetta as the design source of his rough sketch has a garage of precisely those dimensions. Nor does the 'Paterson' floor plan show a garage with those dimensions. The general design of a planter box forming a division between the entry and the living room in Mr Panetta's rough sketch is also the same as that which appears in 'The Kookaburra' floor plan although none of the floor plans identified by Mr Panetta as the design source of his rough sketch shows a planter box of this design. I note, but place less weight on the fact, that Mr Panetta's rough sketch includes a kitchen bench with the same chamfered, or bevelled, corners as are shown on 'The Kookaburra' floor plan and a patio in the same position with roughly the same dimensions. I am satisfied that in making his rough sketch of the five bedroom home, Mr Panetta did copy certain aspects of 'The Kookaburra' floor plan." 60 I think it clear from this passage and those set out above that her Honour meant, not merely that Mr Panetta had made use of ideas suggested by the Kookaburra plan, but that he actually copied, at the very least, the four aspects of that drawing that she mentioned. Those four aspects were the dimensions of the double garage, the design of the planter box, the chamfered or bevelled edges of the kitchen bench, and the location and dimensions of the patio. This understanding of what her Honour said is supported, for example and in particular, by her finding that the dimensions of the garage in Mr Panetta's rough sketch were the same as those of the Kookaburra garage (the particular Kookaburra advertisement which Mr Panetta had seen had a 6.00 metre x 5.50 metre double garage like that depicted in his rough sketch), yet different from those of the garages on the other floor plans from which Mr Panetta claimed to have drawn inspiration. 61 There is some further support for my understanding of her Honour's finding in her statement: "that Mr Panetta did raise the issue of similarity with Mr Zappia and that his concern arose by reason of his own rough sketch having been derived from 'the Kookaburra'." Would Mr Panetta have been so concerned if he had merely used design ideas suggested by the Kookaburra? Possibly, but I think probably not and that her Honour mentioned the matter because she shared this view. 62 Further, there is the final substantive paragraph in her Honour's Reasons for Judgment set out earlier in which she said that notwithstanding "the rough practical test that what is worth copying is prima facie worth protecting", she did not find a sufficient similarity between the Paterson and the Kookaburra. This was an implicit acknowledgment that the Paterson had been copied, at least in part, from the Kookaburra and that if the "rough practical test" were to govern the matter without qualification, infringement would be found to have occurred. 63 It is not to the point that there is no finding that Mr Panetta traced the Kookaburra plan or even that he had it in front of him when he drew his sketch. As Street J said in Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 at 284: "An architect may legitimately inspect an original plan or house and then, having absorbed the architectural concept and appreciated the architectural style represented therein, return to his own drawing board and apply that concept and style to an original plan prepared by him and in due course to a house built to such plan. There is a dividing line separating such a legitimate process from an inspection followed by a later copying of a substantial part of the physical object inspected, even though the copying be from memory; the latter exercise does infringe." (emphasis supplied) In terms of this passage, the primary judge's finding was a finding, not merely of Mr Panetta's "application of a concept or style" derived from the Kookaburra, but that he copied aspects of the form of that plan, which, via his rough sketch sent to Mr Zappia, were carried forward into the form of the Paterson. 64 Her Honour did not purport to identify all those "aspects" of the Kookaburra plan that were copied by Mr Panetta and carried forward by Mr Zappia into the Paterson. However, in my opinion, the consequence of her Honour's findings of "derivation" and of a copying of "certain aspects" is that any similarities between the Kookaburra and the Paterson drawings were implicitly found to be the result of the copying of the Kookaburra by Mr Panetta. 65 Her Honour rejected Mr Panetta's evidence that he composed his rough sketch by cutting out parts of other Austec plans and sticking them together like pieces of a jigsaw puzzle. This evidence was given for the first time during Mr Panetta's cross-examination. No "cut and tape" plan was produced by Austec. Moreover, I have looked at the plans from which the "pieces" are said to have been taken. The arrangement of the rooms in those plans is quite different from that in Mr Panetta's rough sketch. 66 When her Honour's rejection of Mr Panetta's evidence is coupled with the finding that he actually copied "certain aspects" of the Kookaburra plan, the conclusion that any similarities between that plan and his rough sketch and the final Paterson drawing based on that sketch are due to copying is almost irresistible. 67 Although her Honour did not express her conclusion in those terms, the fact that she went on to consider whether the Paterson as a whole was a copy of a substantial part of the Kookaburra as a whole indicates that this was the effect that she intended the terms of her finding to have. I think that her reference to Mr Panetta's having copied "certain aspects" of the Kookaburra was not meant to signify that only the four aspects expressly mentioned by her were copied. Her Honour had already referred to the overall similarities and dissimilarities between the plans. Clearly she mentioned the four matters of detail because she thought it extremely unlikely that they would appear in both plans by coincidence, not because she thought them the only parts that had been copied. 68 There is simply no satisfactory explanation other than copying for the similarities between the Kookaburra and Mr Panetta's rough sketch. It strains credulity to say that, although Mr Panetta copied the double garage, planter box, kitchen bench and patio from the Kookaburra, all other close similarities between his rough sketch (and thus the Paterson) and the Kookaburra are simply coincidental, particularly in light of the fact that he did not claim to have drawn his rough sketch using solely his own imagination. The objective aspect of reproduction: sufficient similarity to the copyright work or to a substantial part of it. General 69 Notwithstanding her Honour's findings referred to above, it remains a possibility to be considered that, looked at objectively, Austec did not, in its Paterson drawing, reproduce the Kookaburra or a substantial part of it. Indeed, in relation to the four matters of detail mentioned by her Honour, it is noteworthy that, unlike Mr Panetta's rough sketch, the double garage of the Paterson does not have dimensions identical to those of the Kookaburra's garage; the design of its planter box is different from that of the Kookaburra; its kitchen bench does not have chamfered or bevelled corners; and its patio, while in the same position as that of the Kookaburra, has different dimensions from, and a "more square" and "less oblong" shape than, the patio of the Kookaburra. 70 The word "reproduce" is not defined in the Act. It has its ordinary meaning of "make a copy, representation, duplicate, or close imitation of" (Macquarie Dictionary) or "repeat in a more or less exact copy; produce a copy or representation of" (New Shorter Oxford English Dictionary). But these definitions prompt such inquiries as how much of the copyright work must be reproduced before it can be said that that "work" has been reproduced and how similar must what is produced be to the copyright work? The effect of s 14 (1) of the Act is that the reference in s 31 (1) (b) (i) to reproducing an artistic work in a material form includes a reference to reproducing a substantial part of such a work in a material form. In terms, this provision acknowledges a distinction between the undifferentiated whole of a copyright work and a substantial part of it. The Paterson does not reproduce exactly the whole of the Kookaburra. Copinger and Skone James on Copyright (13th ed, 1991) at par 8-20 states as follows: "It is unusual for an infringement to consist of an exact copy or use of the whole of the plaintiff's work. In some cases, the defendant's work may to a greater or lesser degree resemble the whole of the plaintiff's work, in which case the question is whether the defendant's work is a colourable imitation. [Sillitoe v McGraw-Hill Book Co (UK) Ltd [1983] FSR 545.] Alternatively, the defendant's work may have been taken from part only of the plaintiff's work. Here, the defendant's work may be an exact reproduction of that part of the plaintiff's work or it may only to a greater or lesser degree resemble that part. In this alternative class of case, the first step is to identify the part of the plaintiff's work which is alleged to have been reproduced and then decide whether it constitutes a substantial part of the plaintiff's work. If it does, but it is not an exact copy of that part, it must then be decided whether it is a reproduction or colourable imitation of that part of the plaintiff's work. [Spectravest Inc v Aperknit Ltd [1988] FSR 161.]" 71 Professor Ricketson in The Law of Intellectual Property (1984) begins his discussion of the ordinary case of something less than an exact reproduction of the whole of the copyright work as follows (at par 9.4): "Two difficult issues arise for consideration here: 1. How much of the work or other subject matter must be taken before a direct infringement is held to have occurred? In other words, what quantum is necessary to amount to an infringement? 2. If the reproduction, performance, etc. is not an exact or literal reproduction, performance, etc. of the original work or other subject matter, how closely must it resemble the original before it constitutes a direct infringement of that copyright? The first of these is dealt with by s 14 (1) of the 1968 Act which introduces the concept of a 'substantial part'. ... The second is more complex and raises difficult questions as to the dividing line between ideas and their expression ... ." 72 In my opinion, the present case is one of resemblance between the whole of the Paterson and the Kookaburra. While the Paterson does not reproduce the whole of the Kookaburra exactly, this is not a case in which the Paterson resembles only an identifiable part of the Kookaburra, for example, the front half of the house. It is therefore not necessary to undertake the step of deciding whether a particular part of the Kookaburra constitutes a "substantial part" of that work. Rather, the question is simply whether the Paterson is a "reproduction or colourable imitation" of the Kookaburra as a whole. As Professor Ricketson notes, this raises, in particular, the issue of the dividing line between ideas and their expression. 73 This was not the approach taken by the learned primary judge. Her Honour said: "Plainly, the 'Paterson' drawing does not reproduce the whole of the subject drawings. Nonetheless, the applicant's claim of infringement of copyright will be made out if it can demonstrate that the 'Paterson' drawing reproduces a substantial part of the subject drawings (s 14(1))." (In saying that the Paterson plainly did not reproduce the whole of the Kookaburra, her Honour appears to have meant that the Paterson plainly did not reproduce the whole of the subject drawings exactly or almost exactly.) 74 While I do not, with respect, agree with her Honour's approach, I do not consider that there would be any difference in the result if the Paterson were regarded, somewhat artificially in my view, as having taken only part of the Kookaburra. The reason is that that part of the Kookaburra which is produced again in the Paterson is the layout and traffic flows and the shapes, proportions and interrelationships of the rooms and other spaces - elements which permeate the whole of a project home. There was, moreover, undisputed evidence before the primary Judge that the draftsperson's skill is invoked in designing precisely these elements. Accordingly, if it were necessary to decide whether they constitute a "substantial part" of the Kookaburra, I would decide that they do (in identifying a "substantial part" of a copyright work, it is necessary to focus on quality rather than on quantity: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 293 (Lord Pearce); S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 474 (Gibbs CJ), 481 (Wilson J) and 503 (Deane J); Autodesk Inc v Dyason [No 2] (1993) 176 CLR 300 at 305). Austec's notice of contention 75 It is convenient, first, to dispose of Austec's notice of contention. An artistic work is not prevented from being an original artistic work by the fact that it has made use of the ideas of others or even some part of another's work. That is to say, the work need not be unique. An artistic work will be an original artistic work if it is sufficiently distinctive and is an original product. In Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, the House of Lords rejected an argument that a work (in that case football pool betting coupons) could be dissected to determine whether each part was distinctive; rather the work was to be looked at as a whole. Lord Hodson said (at 285): "The defendants have sought to argue that the coupons can be dissected and that upon analysis no copyright attaches to any of their component parts and accordingly no protection is available. In my opinion, this approach is wrong and the coupons must be looked at as a whole. Copyright is a statutory right which by the terms of section 2 of the [Copyright Act 1956 (UK)] would appear to subsist, if at all, in the literary or other work as one entity." Lord Reid said (at 277): ". . . the more correct approach is first to determine whether the plaintiff's work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial." 76 However, cases such as Ladbroke and Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508 (Plowman J) do establish that copying of only the unoriginal passages in a copyright work will not constitute an infringement of the copyright in that work. 77 Austec does not submit, and could not successfully submit, that Eagle did not have copyright in the whole of the Kookaburra. I agree with the primary judge that the Kookaburra was not a "slavish copy" of the Lorikeet II and was a new artistic work. I have recounted earlier the contribution of labour, skill, judgment and experience that Eagle, through Ms Ord and to a lesser extent Mr Cardile, made to the development of the Kookaburra drawing. While most of Eagle's work focused on the front half of the home, the necessity of accommodation to the fifteen metre wide block of land also called for changes in the dimensions in the rear half because it had to "fit" onto the reduced front half. As well, it had to have appropriate internal shapes and proportions. Finally, there were the particular changes to the rear half listed earlier. 78 The present case is not one in which any discrete part of the Kookaburra was unoriginal, that is, copied exactly from the Lorikeet II. It follows that the case cannot be seen as one in which the Paterson reproduced only a particular part of the Kookaburra in which Eagle did not own copyright (in this respect, the case is unlike, for example, Warwick Film Productions Ltd v Eisinger, above). The primary judge was not required, and it would have been erroneous for her, when dealing with the issue of infringement, to dissect the Kookaburra plan into the front and rear halves and to treat the front half as the only "substantial part" for the purpose of testing for infringement. Accordingly, I would not uphold the contention made in Austec's notice. I note, however, that even if it had been necessary to confine attention to the front halves of the Kookaburra and Paterson drawings, in my view this would not have led to a different result in the present case. Difficulty touching the "sufficient similarity" limb in the case of project homes 79 I turn again to her Honour's conclusion that the Paterson drawing was not sufficiently similar to the Kookaburra to constitute a reproduction of it or of a substantial part of it. Difficulty touching this issue arises from a combination of elements: • the fact that copyright subsists in plans for project homes within the same price band designed for blocks of land of the same or similar size, even though they will possess certain common features which will impose certain limits on the scope for originality in the design of the homes and drawing of the plans; • the fact that "reproduction" in copyright law necessarily involves both copying and resulting sufficient similarity; • the fact that it is an aim of copyright law to protect the skill and labour which produce an original work against copying but not to protect against the risk of accidental reproduction; • the difficulty of the distinction between "idea" and "form" in the particular context of plans for project homes; and • the distinction between "quality" and "quantity" in connection with the question whether a "substantial part" of a copyright work has been reproduced. Copyright protection for the plans of project homes 80 Low or medium cost project homes share certain features. By and large, they will have three or four bedrooms, a lounge room, dining room, kitchen, two bathrooms, a laundry, a single or double garage and an entrance hall or lobby, and many will also have a "family room" or rumpus room or both. The kitchen will need to be close to the dining room and there will need to be convenient access as between the bedrooms and the bathrooms. The bedrooms will be together, although the principal bedroom may be separate from the others and may include one of the bathrooms en suite. The homes will commonly be designed in a rectangular or 'L' or 'U' shape for standard size blocks of land. The drawings themselves will consist mainly of locations of external and internal walls, doorways, windows and appliances or fittings for appliances. A casual comparison of the plans of several project homes (including the plans of the Lorikeet II, the Kookaburra and the Paterson) indicates obvious similarities between them. Nevertheless, one also sees distinctive features, usually in the combination of elements involving the organisation of the space within the building. To some extent the layout of space will be determined by functional considerations (eg site size and construction cost) that are common to all of the plans. But while there may be some limit to the scope for originality, originality can nonetheless be present in the various plans. 81 In the present case, Ms Grey, an architect called by Austec, accepted that there are "tight parameters" such as cost, land size and the requirements of the market place within which the designer of a project home works and that the design task calls for a considerable degree of skill and experience as well as time and labour. She said that what was important was for the architect or draftsperson to achieve appropriate "spatial relationships", "arrangement and cohesion of floor plan layout" and "traffic flows". 82 For its part, Austec seeks to emphasise the following obiter dicta from the judgment of Jacobs J in Beckv Montana Constructions Pty Ltd (1963) 80 WN (NSW) 1578 at 1580 which was set out by the primary judge: "It is clear I think that the degree of protection of an architectural plan must of its nature be very limited and it seems to me that one of the reasons for the severe limitation in the degree of protection under the law of copyright is that in any architectural plan more than any other forms of literary or artistic production there is a greater element which may be described as common to all plans and that the particular portion of a plan which may be regarded as belonging to the owner of the copyright, the particular features of it and of the expression must consequently be more limited." 83 His Honour also referred (at 1579) to the "considerable difficulty" that may be felt in distinguishing between an idea and the expression of it in the case of architectural plans. In Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] NSWR 265 at 269, Helsham Jreferred with approval to the observations of Jacobs J in Beck. Their Honours' remarks were made in the context of the subsistence of copyright in architectural plans; see also Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 (Street J) at 283; Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 (FCA/Pincus J) at 484; 490 (FC) at 496; Ownit Homes Pty Ltd v Mancuso Investments Pty Ltd (1988) AIPC 90-488 (FC) at p 38, 243. 84 The fact that project homes share certain features may create a difficulty for proof of infringement where, as often occurs, the copyright owner asks the court to infer that copying has taken place on the basis that the alleged infringer had access to the copyright drawing when making the allegedly infringing one and that the two drawings are so similar as to support an inference that one was copied from the other - "probative similarity" as it is called in Nimmer on Copyright Vol 3 at § 13.03(A). The reason for the difficulty is that the similarities between the two plans may be thought to be explicable by their possession of common features: see, for example, Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 (Street J) at 283G; LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447 (FCA/Sheppard J) at 454. It is understandable that in such cases of project home plans there will be an emphasis on the need for close similarity if infringement is to be proved. 85 In the present case, her Honour did infer actual copying on the basis of access and probative similarity, and dealt separately with the second limb – "substantial similarity" as it is called in Nimmer - to which she took the "stringent" approach just described. In this regard, I think, with respect, that her Honour erred. The error was in the application of a too stringent test. Her Honour's reasoning was that because project home plans were simple drawings of the "commonplace", lacked "marked originality" and could be expected to have some similarities because they share certain features, sufficient objective similarity could not exist in the absence of a very close resemblance. But this approach ignored the implicit finding (explained earlier) that such similarities as existed were the result of copying. 86 The requirement of a causal link excludes from infringement an "accidental and independent reproduction". But such a reproduction of a copyright work cannot be avoided (at least, in the absence of a system of registration of such works), whereas subjective copying can be. It is reasonable, therefore, to think that copyright law is concerned to protect against subjective copying and 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. 87 It is understandable that the copyright in a drawing such as a drawing of a human hand pencilling a cross in a square on a ballot paper should give rise to special considerations; cf Kenrick & Co v Lawrence & Co (1890) 25 QBD 99. What is represented in the drawing in such a case is something that has an objective existence. The law of copyright will not prevent anyone who wishes to express the idea of such a thing in a drawing from doing so. Copyright will subsist in the drawing. To safeguard against the danger that such copyright might be thought to protect the idea, courts have emphasised that the resemblance must be very close. In Kenrick & Co v Lawrence & Co, for example, Wills J said (at 102): "But in such a case it must surely be nothing short of an exact literal reproduction of the drawing registered that can constitute the infringement, for there seems to me to be in such a case nothing else that is not the common property of all the world. It is possible that in this case the proprietors of the drawing registered may have a right to be protected from a reproduction of their picture of a hand drawing a cross in which every line, dot, measurement, and blank space shall be rendered exactly as in the original, or in which the variations from such minute agreement shall be microscopic. But I cannot see how they can possibly make a higher claim, or say that because they have registered a drawing of a hand pencilling a cross within a square that no other person in the United Kingdom is at liberty to draw a hand pencilling a cross within a square for perhaps the next half century." 88 A drawing of a proposed home, that is, a diagramatic representation of something that has no existence except as an idea or concept, is different from a drawing that purports to represent an object that already exists, such as the Sydney Harbour Bridge, a particular mountain or the human hand mentioned. 89 As Sheppard J noted in LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (above, at 454), while the constraints mentioned earlier may make the task of designing a project home simpler than that of designing a larger more elaborate and expensive house, "… the task may be extremely difficult because the very fact that the designer has to work within the constraints … means that a degree of skill and professional expertise must be brought to the task. One can well imagine that some designs … may involve a great deal of work. Others may come more easily." 90 Similarly, in Beazley Homes Ltd v Arrowsmith [1978] 1 NZLR 394, McMullin J said (at 403): "… it seems to me that there may be some force in the plaintiffs' claim that because the range for skill and design are limited, the need for their exercise is greater. The architect and plan drawer are not deprived of all opportunity for exercising their skill and judgment." 91 In my opinion, her Honour's finding that actual copying occurred, that is, that the form of the Paterson drawing was derived in certain, albeit unidentified respects, from the form of the Kookaburra drawing, rendered inappropriate her emphasis on the difficulty of proving infringement in the absence of "marked originality" and on the pervasiveness of the commonplace in the plans of project homes. 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 Baines & Co [1895] AC 20 at 31 (Lord Shand) (I exclude the exact replication of a discrete unoriginal part of the copyright work discussed earlier). 92 I do not question that it may be difficult to prove infringement in the case of project home plans because, as noted earlier, a general similarity of the plans for project homes will not necessarily give rise to an inference of actual copying, that is, of a causal connection between the two plans. Nor do I question that a causal connection without more does not establish infringement. 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. 93 In the present connection the following words of Lord Atkinson in MacMillan & Co Ltd v Cooper (1923) 40 TLR 186 at 189, quoted with approval by Goff J in Harman Pictures NV v Osborne [1967] 1 WLR 723 at 732 and by Brightman J in Ravenscroft v Herbert [1980] RPC 193 at 204, are apposite: "In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from materials which are open to all, the fact that one man has produced such a work does not take away from anyone else the right to produce another work of the same kind, and in doing so to use all the materials open to him. But, as the law is concisely stated by Hall V-C in Hogg v Scott (1874) LR 18 Eq 444 at 458, 'the true principle in all these cases is, that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work, that is, in fact, merely to take away the result of another man's labour, or, in other words, his property.'" 94 A similar observation was made by Starke J in Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (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)." The idea/expression dichotomy 95 An important consideration in relation to the issue of sufficient objective similarity is the well known, if often difficult, distinction between ideas or concepts on the one hand and the form of expression or manifestation of them on the other: see, in the context of architectural plans, Ancher, Mortlock, Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd, above,at 284; Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 (FC) at 496. It is a trite saying that there is no copyright in ideas or concepts. Two plans may manifest the "idea" of having two rooms separated by a kitchen with waist-high benches which allow a person standing in the kitchen to see into the other two rooms. But this idea can be given form in more than one way. For example, the three rooms may or may not be in the same straight line. Sufficiently different shapes, dimensions and orientations of the three rooms will signify that only the idea, not the form, has been taken. 96 But the distinction between idea and form can be difficult. It would be possible to conceive of "ideas" or "concepts" in such a way as to increase or reduce the scope of copyright protection of project home drawings. If the idea of a project home permitted to be taken were no more detailed than "a four bedroom project home to fit on a 15 metre wide block and to sell in a low price range comprising a double-garage, kitchen, rumpus room, dining room, family room, bathroom and laundry, with an en suite shower and 'vanity unit' and a walk-in wardrobe associated with the main bedroom", such matters as the shape, size, location and interrelationship of rooms, and, of course, more detailed ones such as the provision of a line of vision from the kitchen into other rooms, would all be matters of form protected by copyright. On the other hand, the more of those matters that are included in the notion of "idea" or "concept", the less the copyright protection given. 97 As noted earlier, in my view the primary judge's finding that Mr Panetta copied "certain aspects" of the Kookaburra and that his sketch plan, and through it the final version of the Paterson, were, alike, derived from the Kookaburra, signifies a finding that such similarities of form as exist between the Paterson and the Kookaburra were the result of Mr Panetta's subjective copying. The question of the relevance of a finding of subjective copying to the issues of "sufficient objective similarity" and the concept of a "substantial part" 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 Ancher, Mortlock Murray & Woolley Pty Ltd v Hooker Homes Pty Ltd at 289 (set out below); S W Hart & Co Pty Ltd v Edwards Hot Water systems (1985) 159 CLR 466 at 474 (Wilson J). There was no evidence before her Honour that, for example, Mr Panetta copied aspects of the front half of the Kookaburra but that he drew the rear half without reference to the Kookaburra. The primary judge specifically rejected Mr Panetta's claim that he created his sketch by piecing together elements of existing plans of Austec, that is, without reference to the Kookaburra at all. Rather, the effect of her Honour's finding is that Mr Panetta copied the Kookaburra as a whole and that Mr Zappia unsuccessfully sought to "minimise [the] visual similarities" between it and Mr Panetta's sketch. 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 the protected work. For example, in Ancher Mortlock, above, 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 & Co Ltd v DC Thompson & Co Ltd [1928-35] MacG Cop Cas 467 (Ch D). 100 Although, as indicated earlier, I think that the present case is properly viewed as one of reproduction of the whole, rather than of a substantial part, of the copyright work, it is profitable to consider the case on the alternative basis, as I do in the following paragraphs. 101 The two elements of copyright infringement, subjective copying and sufficient similarity are distinct matters that the copyright owner must prove, although there may be overlap between them. For example, if proof of copying cannot be established directly (for example, by admissions), it will be necessary to prove it by inference. As noted earlier, this is usually done by showing that the defendant had access to the protected material and that the allegedly infringing work is so similar to it to give rise to an inference of subjective copying in preference to other explanations. That is, there will be cases where the similarities between the protected material and the allegedly infringing material are so persuasive that in substance the same evidence will justify an inference of subjective copying and will establish sufficient objective similarity. 102 But the cases go further. In University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, the defendant reproduced certain examination papers in mathematics and published answers to some of the questions and made some criticisms of the way in which the papers had been set. Accordingly, copying was not in issue. There was, however, an issue whether copyright subsisted in the papers. In this context, Peterson J, after rejecting the defendant's submissions as to why the papers were not "original literary works", uttered the famous aphorism, "and, after all, there remains the rough practical test that what is worth copying is prima facie worth protecting" (at 610). The basis of this "rough practical test" (it is only that) is that a person copies because the work contains something not readily available to him or her otherwise, and that this is likely to be something "original" to the work in question. It is perhaps understandable that the aphorism should also have been applied in the context of infringement to the qualitative test of "substantial part", that is, to the question whether what has been copied constitutes a "substantial part" of the copyright work: cf Ladbroke (Football) Ltd v William Hill (Football) Ltd, above at 279 (Lord Reid), 293-4 (Lord Pearce). 103 However, Peterson J's "rough practical test" should not be taken too far. It is the function of the trier of fact to determine, on the evidence, not only whether there has been actual copying, but whether what has been taken is a "substantial part" of the protected work. Resort to maxims or brief or pithy statements of the law may mislead. There is a danger that too ready an application of Peterson J's "test" will result in the judge or jury finding the existence of a prima facie case when a proper reading of the evidence does not justify it. Comparison of the plans in this case 104 Taking into account the principles outlined above, I must examine the parties' drawings to determine whether the result of Austec's copying was the production of the Kookaburra drawing again in the Paterson drawing. 105 When one places a transparency of the Paterson upon the Kookaburra, as the Court was invited to do and as I have done, and as it appears her Honour the trial Judge also did, the overall similarity between the two appears to me to be striking. In terms of the overall layout of the rooms, the only differences of any consequence are: • the Kookaburra's bedroom 2 has been relocated to the rear of the house on the same side, with the result that all the rooms on that side, except bedroom 1, are "pushed down" by the space of one room; • the rumpus room in the Paterson is larger, chiefly as a result of a lateral extension to the rear of the house, • two protrusions of the bedroom side wall of the Kookaburra have been "linked up" in the Paterson so as to make one continuous protrusion for most of that side of the Paterson. 106 These differences do not detract significantly from the overall similarity of the plans. The Paterson has Ms Ord's locations of the double garage and bedroom 1, her omission of the partial walls demarcating between the family room and the rumpus room, and her extended bench between the kitchen and the family room. The Paterson also has the lateral extension to the rumpus room and the front bay window in bedroom 1. Although these features had been introduced by Ms Ord into the Kookaburra 2, her Honouraccepted Mr Panetta'sdenial that he was aware of the Kookaburra 2 when he prepared his sketch plan and Eagle does not challenge her acceptance of the denial on the appeal. 107 While the comparable rooms on the two plans are of slightly different dimensions, subject to three matters the differences are not great and the overall shapes of the rooms and other internal spaces of the two homes and their interrelationships are generally the same. Two of the three matters have just been mentioned: the lateral extension to the rumpus room and the front bay window in bedroom 1. These were additions. They do not disturb the interrelationships between rooms or traffic flows. They do not prevent me from seeing the Kookaburra drawing embedded in the Paterson. The third matter is that the bedroom adjoining bedroom 1 of the Kookaburra has been moved to the rear of the building in the Paterson and this has the effect of "pushing down" the other rooms on the same side of the house by the space of one room. This is a more significant dissimilarity. It makes it less likely that bedroom 2 will be used as a study rather than as a bedroom and improves markedly the access between bedroom 2 and the bathroom. The relocation of bedroom 2 to the rear of the building also alters traffic flow. But in the end I do not think that this change, taken alone or with the others mentioned, is sufficient to prevent a conclusion that the Kookaburra drawing is reproduced in the Paterson. It appears to me that the Paterson drawing is sufficiently similar to the Kookaburra in terms of its length and breadth, its room sizes, shapes, locations and interrelationships and its traffic flow, to lead to the conclusion that the Kookaburra is reproduced in it in an objective as well as a causal sense. 108 In coming to this conclusion, I have borne in mind that the question of sufficient similarity is one of impression and that "particular respect and weight should be given to the decision of the trial judge unless some error in [her] judgment has been demonstrated": S W Hart & Co Pty Ltd v Edwards Hot Water Systems at 478 (Gibbs CJ); see also George Mitchell (Chesterhall) Ltd v Finney Lock Seeds Ltd [1983] 2 AC 803 at 815-816; Commissioner of Taxation v Chubb Australia Ltd (1995) 56 FCR 557 at 560 (Burchett J) and 572-573 (Hill J). However, as I have said earlier, in this case in my respectful opinion the primary judge did commit an error of approach in placing too much emphasis on the suggested unoriginality and commonplaceness of the Kookaburra and insisting upon too close a resemblance between the two plans for the purpose of resolving the issue of sufficient objective similarity. CONCLUSION 109 For the above reasons, in my opinion the appeal should be allowed and the order of the primary judge dismissing Eagle's application with costs should be set aside. By its notice of appeal, Eagle seeks orders as sought in its application or, in the alternative, an order that the matter be remitted to the primary judge for determination in accordance with the reasons of the Full Court. There are outstanding issues to be decided at first instance. It seems to me that the more convenient course is to make the alternative form of order. 110 Austec should be ordered to pay Eagle's costs at first instance and on the appeal. I certify that the preceding one hundred and ten (110) paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren Associate: Dated: 22 February 1999 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1069 OF 1997 ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: EAGLE HOMES PTY LIMITED ACN 002 800 115 Appellant AND: AUSTEC HOMES PTY LIMITED ACN 062 007 096 Respondent JUDGES: LINDGREN, FINKELSTEIN AND WEINBERG JJ DATE: 22 FEBRUARY 1999 PLACE: SYDNEY REASONS FOR JUDGMENT FINKELSTEIN j: 111 I agree with the reasons for judgment of Lindgren J and with the order that he proposes. I certify that the preceding one (1) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein Associate: Dated: 22 February 1999 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 1069 OF 1997 ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: EAGLE HOMES PTY LIMITED ACN 002 800 115 Appellant AND: AUSTEC HOMES PTY LIMITED ACN 062 007 096 Respondent JUDGE: LINDGREN, FINKELSTEIN AND WEINBERG JJ DATE: 22 FEBRUARY 1999 PLACE: SYDNEY REASONS FOR JUDGMENT WEINBERG J: 112 I have had the advantage of reading, in draft, the judgment of Lindgren J. I agree with his Honour's conclusion that the appeal should be allowed for the reasons set out in his Honour's judgment. I would add only a few observations concerning my view of the role of the Court in an appeal of this nature. 113 In considering this appeal the Court must have regard to the fact that her Honour, the primary judge, gave careful consideration to these drawings, and based her conclusion that the Paterson drawing was not sufficiently similar to the Kookaburra drawing to amount to a reproduction of a substantial part thereof upon her assessment of them. That was a finding of fact which "depended on a matter of impression not readily susceptible of precise analysis" – Commissioner of Taxation v Chubb Australia Ltd (1995) 56 FCR 557 at 560 per Burchett J. That does not pre-empt this Court's consideration of the issue. However, it does require us to avoid what Burchett J described as "any nitpicking reconsideration" of the way her Honour decided where the boundaries ought to be drawn. 114 Whether or not a particular drawing is sufficiently similar to another to amount to a reproduction of it, or a reproduction of a substantial part of it, may be described, as the House of Lords put it in a slightly different context, as "a kind of jury question". A finding of this type "should be treated with appropriate respect by an appellate court" – Biogen Inc v Medeva PLC [1997] RPC 1 at 45 per Lord Hoffmann. This passage from his Lordship's speech has been cited with approval by at least three Full Courts of this Court – Esso Australia Resources Ltd v Commissioner of Taxation (1998) 98 ATC 4768 at 4779; S & I Publishing Pty Ltd v Australian Surf Lifesaver Pty Ltd (1999) ATPR 41-667 at 42,505 and Preston Erection Pty Limited v Speedy Gantry Hire Pty Limited [1998] FCA 1615 at 9-10. 115 In Biogen, Lord Hoffmann continued at 45: "It is true that in Benmax v. Austin Motor Co. Ltd. [1955] A.C. 370 this House decided that, while the judge's findings of primary fact, particularly if founded upon an assessment of the credibility of witnesses, were virtually unassailable, an appellate court would be more ready to differ from the judge's evaluation of those facts by reference to some legal standard such as negligence or obviousness. In drawing this distinction, however, Viscount Simonds went on to observe, at page 374, that it was 'subject only to the weight which should, as a matter of course, be given to the opinion of the learned judge'. The need for appellate caution in reversing the judge's evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge's overall evaluation. It would in my view be wrong to treat Benmax as authorising or requiring an appellate court to undertake a de novo evaluation of the facts in all cases in which no question of the credibility of witnesses is involved. Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation." 116 There are passages to similar effect in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466. For example, Gibbs CJ stated at 478: "The nature of the issue, involving as it does matters of impression, is one in which particular respect and weight should be given to the decision of the trial judge unless some error in his judgment has been demonstrated." 117 It should be noted that Mason J at 478 agreed with the reasons given by the Chief Justice for allowing the appeal. Wilson J at 489 regarded the particular question as being one "of fact upon which minds may differ". His Honour then expressed his agreement with the trial judge, and allowed the appeal from the decision of the Full Court of the Federal Court. Brennan J at 491 referred to the findings of the trial judge as having been "reasonably open". His Honour then proceeded: "An appellate court is not justified in setting those findings aside merely because that court differs from the trial judge on the question of opinion as to what a non-expert who had examined the drawings would or would not visualize in his mind." 118 It is instructive to note that in Beneficial Finance Corporation Ltd v Karavas (1991) 23 NSWLR 256 Kirby P dealt with an appeal from a decision by a trial judge that a contract was "unjust" in the circumstances relating to the contract at the time it was made, within s 7(1) of the Contracts Review Act 1980 (NSW). His Honour concluded that a determination of that character was not properly to be classified as "discretionary". It was rather the application to the facts found of a legal criterion. His Honour went on, however, to say that the dichotomy between "discretionary" and "non-discretionary" decisions could be viewed as being false and arbitrary. He said at 262: "Application of a very general standard (such as whether a contract is "unjust") may suggest that the making of the order involves the exercise of a judicial intuition which involves a high element of personal judgment …" His Honour continued: "Even if the decision that the contracts here in question were 'unjust' is not discretionary in character there are many reasons for the exercise of care in the appellate review of the decision reached by the trial judge concerning the application of the Act. … This Court has said on a number of occasions, including recently, that the very open-ended and evaluative nature of the statutory criterion ('unjust') imports a reason for restraint in the conduct of appellate review … In part this restraint derives from the proper acknowledgment of the advantages which the trial judge has … In part, it derives from a modest appreciation of the fact that opinions of what constitutes injustice will vary from one judicial decision-maker to another. So long as there is an adequate basis for the opinion to be reached, conscientiously and honestly in a particular case, the appellate court should approach with caution the substitution of its opinion for that of the trial judge." 119 Whether or not a particular drawing reproduces another drawing, or reproduces a substantial part of that drawing, are questions which, while they involve matters of impression and degree, are not so open-ended and evaluative as whether a particular contract was "unjust" at the time it was made. Nonetheless, the principles stated by Kirby P should be borne in mind in dealing with the issues raised in this appeal. This Court must be conscious of the need to approach her Honour's finding of fact in the present case with the utmost respect, and would not depart from that finding without being persuaded that it is erroneous in principle, or plainly and obviously wrong – George Mitchell (Chesterhall Ltd) v Finney Lock Seeds Ltd [1983] 2 AC 803 at 816 per Lord Bridge of Harwich. 120 In Devries v Australian National Railways Commission (1993) 177 CLR 472 at 479 their Honours Brennan, Gaudron and McHugh JJ, in a joint judgment, observed: "More than once in recent years, this Court has pointed out that a finding of fact by a trial judge, based on the credibility of a witness, is not to be set aside because an appellate court thinks that the probabilities of the case are against – even strongly against – that finding of fact. See Brunskill (1985) 59 ALJR 842; 62 ALR 53; Jones v Hyde (1989) 63 ALJR 349; 85 ALR 23; Abalos v Australian Postal Commission (1990) 171 CLR 167. If the trial judge's finding depends to any substantial degree on the credibility of the witness, the finding must stand unless it can be shown that the trial judge 'has failed to use or has palpably misused his advantage' – SS Hontestroom v SS Sagaporack [1927] AC 37 at p 47 or has acted on evidence which was 'inconsistent with facts incontrovertibly established by the evidence' or which was 'glaringly improbable' - Brunskill (1985) 59 ALJR at p 844; 62 ALR at p 57." 121 The process of comparing the Paterson drawing with the Kookaburra drawing, both of which drawings are before this Court in the appeal, may, in a sense, be likened to "facts incontrovertibly established by the evidence" or "established facts" – see the discussion of this issue in Devries at 477 and the earlier observations of the High Court in Warren v Coombes (1979) 142 CLR 531. 122 The primary judge's finding of fact on the issue whether the Paterson is sufficiently similar to the Kookaburra to amount to a reproduction of a substantial part thereof did not depend to any degree, let alone any substantial degree, on the credibility of any witness. Her Honour was, in that sense, in no better position than is this Court to make that finding of fact. 123 In Devries their Honours Deane and Dawson JJ described the duty of an appellate court in the following terms at 479: "An appellate court which is entrusted with jurisdiction to entertain an appeal by way of rehearing from the decision of a trial judge on questions of fact must set aside a challenged finding of fact made by the trial judge which is shown to be wrong." 124 Their Honours cited with approval the following passage from the decision of the Court of Appeal in Coghlan v Cumberland [1898] 1 Ch 704 at 704-5 where Lindley MR, Rigby and Collins LJJ stated: "Even where, as in this case, the appeal turns on a question of fact, the Court of Appeal has to bear in mind that its duty is to rehear the case, and the Court must reconsider the materials before the judge with such other materials as it may have decided to admit. The Court must then make up its own mind, not disregarding the judgment appealed from, but carefully weighing and considering it; and not shrinking from overruling it if on full consideration the Court comes to the conclusion that the judgment is wrong." 125 The Court has concluded, after its own comparison of the subject drawings, that the better view is that there is a sufficient degree of objective similarity between the "Kookaburra" and the "Paterson" to warrant the conclusion that Austec had, in effect, reproduced the "Kookaburra" drawing as a whole, or in the alternative, reproduced a substantial part of it. That is the Court's own assessment of the subject drawings. Such a finding might not, of itself, in a case so heavily dependent upon matters of impression, warrant disturbing her Honour's finding to the contrary. It is because the Court has also concluded that her Honour's finding discloses the error of principle identified by Lindgren J that it has gone further, and determined that the appeal must be allowed. I certify that the preceding fourteen (14) paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Weinberg. Associate: Dated: 22 February 1999 Counsel for the Appellant: Mr D K Catterns QC with Mr R Alkadamani Solicitor for the Appellant: Castrission & Co Counsel for the Respondent: Ms S Goddard Solicitors for the Respondent: Sprusons Date of Hearing: 20 November 1998 Date of Judgment: 22 February 1999