Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 759

FEDERAL COURT OF AUSTRALIA

Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 759

COPYRIGHT – Copyright Act 1968 (Cth) – infringement – copyright in floor plans for project homes – whether home built in accordance with a floor plan that infringes an applicant's copyright will also infringe that copyright – need for evidence to show visual similarity Copyright Act 1968 (Cth), s 23(1) Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 161 ALR 503, applied LED Builders Pty Limited v Eagle Homes Pty Limited [1999] FCA 584, applied Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWR 265, considered Chabot v Davies [1936] 3 All ER 221, considered Burke and Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400, considered EAGLE HOMES PTY LIMITED v AUSTEC HOMES PTY LIMITED NG 355 of 1998 BRANSON J SYDNEY 7 JUNE 1999 IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 355 of 1996

BETWEEN: EAGLE HOMES PTY LIMITED

Applicant

AND: AUSTEC HOMES PTY LIMITED

Respondent

JUDGE: BRANSON J

DATE OF ORDER: 7 JUNE 1999

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: The applicant bring in short minutes of order to reflect these reasons. 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 355 of 1996

BETWEEN: EAGLE HOMES PTY LIMITED

Applicant

AND: AUSTEC HOMES PTY LIMITED

Respondent

JUDGE: BRANSON J

DATE: 7 JUNE 1999

PLACE: SYDNEY

REASONS FOR JUDGMENT

Introduction 1 This matter has been remitted to me by order of the Full Court dated 22 February 1999 for determination in accordance with the reasons of the Full Court published on that day. The judgment of the Full Court has now been reported as Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 161 ALR 503. 2 Each of the applicant and the respondent is in the business of building project homes. By its further amended statement of claim ("the statement of claim") the applicant claims copyright in certain plans for residential homes known as "The Kookaburra" and the "Kookaburra Series 2" respectively. The statement of claim refers to the plans as "the works" and identifies the works by reference to copy drawings annexed to the amended application. The copy drawings annexed to the application are first a copy advertisement for "The Kookaburra" ("the Kookaburra drawing"), which depicts a floor plan for "The Kookaburra", and a floor plan for the "Kookaburra Series 2". 3 By paragraph 12 of the statement of claim the applicant alleges that: '… the respondent, without the licence of the applicant, has advertised and promoted its building services through the publication of advertisements, which advertisements contain reproductions in a material form of a substantial part of the works by reference to the names "The Paterson Modern Design" and "The Robertson Modern Design". Particulars On 28th February, 1996 and on 20th March, 1996, Austec procured the publication of advertisements for "The Paterson Modern Design" house and on 27th November 1996 Austec procured the publication of an advertisement for "The Robertson Modern Design" house in a newspaper known as "The Liverpool Champion", each of which advertisements contained a reproduction of the work [sic].' 4 By paragraph 13 of the statement of claim the applicant alleges that: "… the respondent, without the licence of the applicant, has built residential houses, and/or offered to build residential houses which reproduce in a material form a substantial part of the works." 5 No other allegations of infringement of copyright are made by the statement of claim. 6 By order dated 1 December 1997, I dismissed the application on the basis that I was not satisfied that either of the floor plans reproduced in the pleaded advertisements was sufficiently similar to the drawings annexed to the application ("the Drawings") to amount to a reproduction of a substantial part of the Drawings. It was accepted that such a finding had the necessary consequence that the building of homes in accordance with the floor plans shown in the advertisements could not amount to an infringement of the applicant's copyright in the Drawings. The Full Court, by order dated 22 February 1999, allowed an appeal against the judgment pronounced by me and set aside the orders made by me on 1 December 1997. As is mentioned above, the Full Court remitted the matter to me for determination in accordance with the reasons of the Full Court.