Dixon Projects Pty Ltd v Hallmark Homes Pty Ltd [2004] FCA 118

FEDERAL COURT OF AUSTRALIA

Dixon Projects Pty Ltd v Hallmark Homes Pty Ltd [2004] FCA 118

COPYRIGHT - infringement - architectural plans - project homes - whether copyright subsists - whether indirect copying - whether substantial part of work reproduced Copyright Act 1968 (Cth) Trade Practices Act 1974 (Cth) SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 discussed Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 (FC) cited Ancher, Mortlock, Murray & Wooley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 considered DIXON PROJECTS PTY LTD ACN 010 828 172 v HALLMARK HOMES PTY LTD ACN 007 959 524 Q159 OF 2001 COOPER J BRISBANE 20 FEBRUARY 2004

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q159 OF 2001

BETWEEN: DIXON PROJECTS PTY LTD

ACN 010 828 172

APPLICANT

AND: HALLMARK HOMES PTY LTD

ACN 007 959 524

RESPONDENT

JUDGE: COOPER J

DATE OF ORDER: 20 FEBRUARY 2004

WHERE MADE: BRISBANE

THE COURT ORDERS THAT: 1. The application is dismissed. 2. The applicant pay the respondent's costs of and incidental to the application including reserved costs, to be taxed if not agreed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q159 OF 2001

BETWEEN: DIXON PROJECTS PTY LTD

ACN 010 828 172

APPLICANT

AND: HALLMARK HOMES PTY LTD

ACN 007 959 524

RESPONDENT

JUDGE: COOPER J

DATE: 20 FEBRUARY 2004

PLACE: BRISBANE

REASONS FOR JUDGMENT 1 The applicant is a project builder. It claims ownership of plans and drawings of a house known as the Grand Vista ('the Grand Vista Design'). The applicant has constructed display homes built to the Grand Vista Design ('the Grand Vista Houses'). The applicant claims that at all material times copyright subsisted in the Grand Vista Design and the Grand Vista Houses, and that it was the owner of that copyright. 2 The respondent is a project builder. It produced plans and drawings for a house known as the Montego ('the Montego Plans'). It has built, or caused to be built, houses in accordance with the Montego Plans ('the Montego Houses'). 3 The applicant alleges that each of the Montego Houses and the Montego Plans reproduces the whole or a substantial part of the Grand Vista Design, in that it is alleged that the layout of accommodation provided and the planning and relationship of the rooms are materially the same in each case. Accordingly, the applicant alleges that the production of the Montego Plans and the construction of the Montego Houses by the respondent, without the licence of the applicant, infringed its copyright in the Grand Vista Design and the Grand Vista Houses. 4 The applicant also alleges that in marketing houses to be constructed to the Montego Plans, the respondent is representing that the Montego Plans were lawfully produced without copying substantial parts of the works of the applicant, and that the respondent could lawfully build, or cause to be built, houses in accordance with the Montego Plans. The applicant alleges that because the Montego Plans and the Montego Houses infringe its copyright in the Grand Vista Design, the representations are false and misleading and are in breach of s 52 of the Trade Practices Act 1974 (Cth) ('the TP Act'). 5 The applicant brings its claims for alleged infringement of copyright in the Grand Vista Design and the Grand Vista Houses by virtue of, and pursuant to, the provisions of the Copyright Act 1968 (Cth) ('the Act'). The applicant's claim for relief under the TP Act is totally dependent upon the applicant succeeding on its claim for infringement of copyright. 6 The respondent denies that the applicant is the owner of any copyright in the Grand Vista Design or the Grand Vista Houses, or that the Montego Plans or the Montego Houses infringe any copyright in the Grand Vista Design or the Grand Vista Houses. 7 The respondent alleges that the Montego Plans: (a) were independently produced by the respondent by altering and further developing the respondent's floor plan to a house known as the 'Calais', which itself was produced by altering and developing the respondent's floor plan to a house known as the 'Toorak'; (b) were produced without the respondent copying the whole or any part of the Grand Vista Design, or the whole or any part of any of the Grand Vista Houses; and (c) are substantially dissimilar to the Grand Vista Design and the Grand Vista Houses. 8 The respondent further alleges that the Montego Houses were constructed in accordance with the Montego Plans without copying the whole or any part of the Grand Vista Design or the whole or any part of the Grand Vista Houses, and that the Montego Houses are dissimilar to the Grand Vista Design and Grand Vista Houses. 9 Finally, the respondent denies that it made any representations in contravention of s 52 of the TP Act as alleged or at all. 10 The applicant's claim to ownership of copyright in the Grand Vista Design and the Grand Vista Houses is set out in pars 3, 4 and 5 of its further amended statement of claim, which states: '3. The Applicant is and at all material times was the owner of copyright subsisting in Australia in the plans and drawings of a house known as the 'Grand Vista' (the 'Grand Vista Design'). PARTICULARS (i) The Grand Vista Design was authored by Raymond Sweeney on or about December 1996; (ii) Raymond Sweeney was at all material times an Australian citizen resident in Australia; (iii) By written agreement dated 29 June 1995, as amended on 2 December 1998 Raymond Sweeney assigned to the Applicant all rights in the Grand Vista Design; (iv) A copy of the Grand Vista Design is available for inspection by appointment; (v) the Grand Vista Design is expressed, inter alia, in the following two-dimensional works: A original sketch of the 'Silver Palm 97' dated December 1996, subsequently renamed the 'Grand Vista'; B floorplan for the 'Grand Vista', subsequently represented in the brochure for the Grand Vista Design marked 'copyright 1997'; C floorplan for the house built at Lot 104 Tallowood Place, Twin Waters, Queensland. 4. The Applicant has constructed and been the owner of display homes built from the Grand Vista Design, each such home being known as the 'Grand Vista' ('the Grand Vistas'). PARTICULARS The following houses, built at Twin Waters, Queensland, comprise the Grand Vistas: (i) Lot 104, Tallowood Place; (ii) Lot 32 Portmarnock Court; (iii) Lots 367 and 368 Glenwood Place (the same house); and (iv) Lot 281 Karinya Place. 5. In the premises of paragraphs 3 and 4 hereof: (a) copyright subsists in the Grand Vista Design and the Grand Vistas; (b) at all material times the Applicant has been the owner of that copyright. (Original emphasis) 11 Copies of each of the works in respect of which copyright was claimed were provided by the solicitors for the applicant and those works are Ex 17.