Ferntree Homes Pty Ltd v Bohan [2002] FCA 16

FEDERAL COURT OF AUSTRALIA

Ferntree Homes Pty Ltd v Bohan [2002] FCA 16 COPYRIGHT – infringement of copyright in plans for project home – reproduction - whether causal link between allegedly infringing plans and the copyright plans of project home builder

Copyright Act 1968 (Cth)

S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 followed Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 cited FERNTREE HOMES PTY LIMITED (ACN 051 610 069) v PATRICK JOSEPH BOHAN & ORS N 454 OF 2000 LINDGREN J 18 JANUARY 2002 SYDNEY

GENERAL DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 454 OF 2000

BETWEEN: FERNTREE HOMES PTY LIMITED (ACN 051 610 069)

APPLICANT

AND: PATRICK JOSEPH BOHAN & ISOBEL BOHAN

FIRST RESPONDENTS

MICHAEL DEAN

SECOND RESPONDENT

JUDGE: LINDGREN J

DATE OF ORDER: 18 JANUARY 2002

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The application be dismissed. 2. The applicant pay the respondents' costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

GENERAL DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 454 OF 2000

BETWEEN: FERNTREE HOMES PTY LIMITED (ACN 051 610 069)

APPLICANT

AND: PATRICK JOSEPH BOHAN & ISOBEL BOHAN

FIRST RESPONDENTS

MICHAEL DEAN

SECOND RESPONDENT

JUDGE: LINDGREN J

DATE: 18 JANUARY 2002

PLACE: SYDNEY

REASONS FOR JUDGMENT

introduction 1 The applicant ("Ferntree") sues for infringement by the respondents of its copyright in building plans for a project home known as the "Golden Fern MK2". Ferntree alleges that the respondents reproduced those plans in a material form. The case concerns the construction of a home on land then owned by the first respondents ("Mr and Mrs Bohan", or, the "Bohans") in accordance with architectural plans produced by the second respondent ("Mr Dean"), an architectural draughtsman. The land has apparently by now been transferred to Mr and Mrs Bohan's daughter and her husband. 2 Ferntree seeks a declaration of infringement of copyright, damages pursuant to subs 115(2) of the Copyright Act 1968 (Cth) ("the Act") and additional damages pursuant to subs 115(4) of the Act. In relation to Mr Dean, Ferntree seeks, in the alternative to damages, an accounting for profits. In addition, Ferntree seeks orders for delivery up and costs. 3 The respondents concede that the Golden Fern MK2 plans ("Ferntree's plans") are an original artistic work for the purposes of the Act, that there is copyright under the Act in them, and that Ferntree was at all relevant times the owner of that copyright. The copyright included the exclusive right to reproduce Ferntree's plans in a material form. The notion of reproduction includes a reproduction of "a substantial part" of Ferntree's plans: par 14(1)(b) of the Act. Being an artistic work, Ferntree's plans are deemed to have been reproduced if a version of them is reproduced in a three-dimensional form: subs 21(3) of the Act. Ferntree alleges that each of the respondents, without the licence of Ferntree, reproduced or authorised the reproduction of Ferntree's plans or a substantial part of them in a material form, namely, both the home which was constructed on the Bohans' land and the antecedent architectural plans drawn by Mr Dean for that home. 4 In S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, Gibbs CJ said (at 472) in a well-known passage: "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." And see the discussion of the concept of reproduction in the specific context of building plans for a project home in Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 at [70]. 5 In the present case the questions arise: whether Mr Dean's plans and the home constructed for the Bohans in accordance with them sufficiently resemble the plans for Ferntree's Golden Fern MK2 or a substantial part of those plans, and, if so, whether there is the required causal link between Ferntree's plans on the one hand and Mr Dean's plans and the home erected for the Bohans on the other hand.