LAW FOR ALL : INTELLECTUAL PROPERTY – whether appellant’s copyright in building plan for project home infringed by respondents – where opportunity for access established – where striking similarities between copyright work and putative infringement – whether requirement of causal connection between copyright work and putative infringement satisfied – whether inference of copying should be drawn – whether onus of proof shifted to respondents – whether proven or admitted facts not explained justified drawing inference of copying – significance of expert evidence concerning similarities in project home designs – significance of appellant’s delay in commencing proceedings against respondents – whether refusal of primary judge to draw inference of copying open on the evidence – decision of primary judge open on the evidence and not shown to be wrong

Saturday, July 28, 2012

INTELLECTUAL PROPERTY – whether appellant’s copyright in building plan for project home infringed by respondents – where opportunity for access established – where striking similarities between copyright work and putative infringement – whether requirement of causal connection between copyright work and putative infringement satisfied – whether inference of copying should be drawn – whether onus of proof shifted to respondents – whether proven or admitted facts not explained justified drawing inference of copying – significance of expert evidence concerning similarities in project home designs – significance of appellant’s delay in commencing proceedings against respondents – whether refusal of primary judge to draw inference of copying open on the evidence – decision of primary judge open on the evidence and not shown to be wrong – appeal dismissed.

Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd [2012] FCAFC 4 (17 February 2012)

Last Updated: 17 February 2012

FEDERAL COURT OF AUSTRALIA

Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd
[2012] FCAFC 4

Citation:	Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd [2012] FCAFC 4

Appeal from:	Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd [2010] FCA 820

Parties:	RON ENGLEHART PTY LTD (ACN 005 657 554) v ENTERPRISE CONSTRUCTIONS (AUST) PTY LTD (ACN 067 405 896) and SAFAK ARLEN DERVISH

File number:	VID 753 of 2010

Judges:	JACOBSON, NICHOLAS & YATES JJ

Date of judgment:	17 February 2012

Catchwords:	INTELLECTUAL PROPERTY – whether appellant’s copyright in building plan for project home infringed by respondents – where opportunity for access established – where striking similarities between copyright work and putative infringement – whether requirement of causal connection between copyright work and putative infringement satisfied – whether inference of copying should be drawn – whether onus of proof shifted to respondents – whether proven or admitted facts not explained justified drawing inference of copying – significance of expert evidence concerning similarities in project home designs – significance of appellant’s delay in commencing proceedings against respondents – whether refusal of primary judge to draw inference of copying open on the evidence – decision of primary judge open on the evidence and not shown to be wrong – appeal dismissed.

Legislation:	Copyright Act 1968 (Cth) ss 31, 36

Cases cited:	SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466 Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd [2009] FCAFC 156; (2009) 261 ALR 269 Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd [2001] FCA 1636; (2001) 116 FCR 448 Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833; (2001) 117 FCR 424

Date of hearing:	28 February, 1 March 2011

Place:	Melbourne

Division:	GENERAL DIVISION

Category:	Catchwords

Number of paragraphs:	116

Counsel for the Appellant:	Mr C Golvan SC with Mr B Gardiner

Solicitor for the Appellant:	Middletons

Counsel for the Respondents:	Mr P Cawthorn SC with Mr C Madder

Solicitor for the Respondents:	Coolabah Law Chambers

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 753 of 2010

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	RON ENGLEHART PTY LTD (ACN 005 657 554) Appellant
AND:	ENTERPRISE CONSTRUCTIONS (AUST) PTY LTD (ACN 067 405 896) First Respondent SAFAK ARLEN DERVISH Second Respondent

JUDGES:	JACOBSON, NICHOLAS & YATES JJ
DATE OF ORDER:	17 FEBRUARY 2012
WHERE MADE:	SYDNEY (HEARD IN MELBOURNE)

THE COURT ORDERS THAT:

The appeal be dismissed.
The appellant pay the respondents’ costs of the appeal.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 753 of 2010

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	RON ENGLEHART PTY LTD (ACN 005 657 554) Appellant
AND:	ENTERPRISE CONSTRUCTIONS (AUST) PTY LTD (ACN 067 405 896) First Respondent SAFAK ARLEN DERVISH Second Respondent

JUDGES:	JACOBSON, NICHOLAS & YATES JJ
DATE:	17 FEBRUARY 2012
PLACE:	SYDNEY (HEARD IN MELBOURNE)

REASONS FOR JUDGMENT

THE COURT:
BACKGROUND

This appeal raises a single issue. Did the respondents copy the appellant’s copyright work when creating sketches and drawings of the first respondent’s project home? The primary judge was not satisfied that they did. He found, in effect, that the similarities between the appellant’s copyright work and the sketches and drawings of the first respondent’s project home were coincidental. The appellant says that this finding was not open on the evidence.
It was the appellant’s case before the primary judge that the first respondent’s architect, Mr Factor, unwittingly reproduced the appellant’s copyright work at the instigation of Mr Dervish, the second respondent. Mr Factor was only able to reproduce the appellant’s copyright work, according to the appellant, because Mr Dervish was at relevant times in possession of a copy of a promotional brochure which included a reproduction of the copyright work which, unbeknown to Mr Factor, Mr Dervish used for the purposes of instructing Mr Factor what to draw.
The appellant and the first respondent are project home builders operating in Victoria. Mr Dervish, the managing director of the first respondent, established the first respondent in about 1994 so that he might use it for the purpose of providing consultancy services to his previous employer for whom he prepared tender documents and undertook contract administration. In 1999, Mr Dervish decided to establish a construction business. He left his then employment and, in December 1999, caused the first respondent to acquire a block of land at Bundoora where the first respondent later constructed its first display home.
The first respondent’s display home, known as the “Sterling”, was a single storey three bedroom house with a garage which was, as we shall explain, designed in February 2000 and constructed later that year. The first respondent built other project homes to the same or substantially the same design in subsequent years. But it was not until July 2009 that the appellant commenced its proceeding against the respondents alleging that the relevant drawings for these homes reproduced the drawing for another project home known as the “Monomeeth 101”, that the appellant’s sketches and drawings of the Sterling were infringing two-dimensional reproductions of the appellant’s copyright in the drawing of the Monomeeth 101, and that the homes constructed by the first respondent in accordance with its drawings were infringing three-dimensional reproductions of that work, as well as of the Monomeeth 101 house itself. However, the latter point was not developed on the appeal.
It was also alleged by the appellant that another design of a project home constructed by the first respondent, known as the “St James”, was an infringement of the appellant’s copyright work. It was common ground, however, that if the drawings of the Sterling were not infringements of the appellant’s copyright, the same must also be true of the drawing of the St James. It was also common ground that copyright subsisted in the drawing of the Monomeeth 101, the copyright work the respondents are alleged to have infringed, and that such copyright was, at all relevant times, owned by the appellant.
The notice of appeal raised 32 separate grounds of appeal. However, at the hearing of the appeal Senior Counsel for the appellant did not address these grounds individually. He instead made submissions aimed at persuading us that the primary judge ought to have found, on the evidence before him, that the respondents’ drawing of the Sterling was copied from a drawing of the Monomeeth 101. He also identified various specific errors which the appellant contended were made by the primary judge. Having regard to the way in which the appeal was argued, it will not be necessary for us to make any further reference to the notice of appeal.
The trial in the present case occupied six days. The primary judge heard extensive oral evidence including that elicited during the cross-examination of witnesses, which in the case of Mr Dervish, in particular, was apparently quite eventful. His Honour also had the opportunity to ask questions of the witnesses, including Mr Factor, who he questioned (without objection) rather closely. We were also told that his Honour had the benefit of a view of the appellant’s display home at Doncaster East and the first respondent’s display home at Bundoora. It is apparent that the primary judge had the usual advantages, perhaps even more than the usual, that a trial judge enjoys in comparison to an appellate court.

THE PRIMARY JUDGE’S REASONS

The primary judge’s reasons for decision include various appendices some of which are referred to in these reasons and reproduced at the end of our judgment.
The primary judge found that Mr Factor was engaged by the first respondent to design a house for construction on a vacant block of land at Bundoora. He commenced work in February 2000 and by mid 2001 the house was fully constructed.
The primary judge noted that the copyright work alleged to have been infringed by the appellant was that reproduced in Appendix A and Appendix B to his Honour’s reasons. However, his Honour observed that, ultimately, it was the appellant’s case that the respondents had infringed its copyright in the work reproduced in Appendix B and that they did so by making a reproduction of the whole of the work.
The primary judge reproduced the finished architectural drawing of the Sterling house in Appendix C to his reasons.
His Honour observed that for liability for copyright infringement to arise, there must have been copying, directly or indirectly, of the copyright work alleged to have been infringed, but that such copying need not be consciously engaged in. It was not suggested that his Honour’s statement of the relevant principles contained any error.
His Honour also observed that the appellant did not suggest that Mr Factor engaged in any conscious copying of the appellant’s copyright work but that, on the appellant’s case, he was influenced by Mr Dervish, a person who, according to the appellant, obtained access to the appellant’s copyright work.
The appellant’s case before the primary judge was that Mr Dervish knowingly and intentionally sought to lead Mr Factor to create a drawing for the first respondent which reproduced the whole or a substantial part of the Monomeeth 101 or, alternatively, that Mr Dervish was so familiar with the Monomeeth or the Monomeeth 101 that he subconsciously communicated information to Mr Factor concerning those designs so as to cause him to create such a drawing.
His Honour rejected the latter approach as inconsistent with the evidence in that if, contrary to his denials, Mr Dervish was aware of the appellant’s designs, that awareness could not have been sufficient to enable him to convey the relevant design details to Mr Factor without being conscious of what he was doing. His Honour said that in his view the appellant’s case must stand or fall on the strength of the allegation that Mr Dervish consciously instructed Mr Factor by reference to the Monomeeth plans or the Monomeeth display home.
The evidence at trial included a number of reproductions of the appellant’s copyright work which it was suggested Mr Dervish had access to and which might have enabled him to provide the necessary guidance and instruction to Mr Factor.
The first was a plan for the Monomeeth that appeared in the Autumn/Winter 2000 edition of the Herald Sun Magazine entitled “Display Homes”. A picture of the Monomeeth display home constructed by the appellant at Doncaster East appeared at page 64 of that publication together with an outline of its floor plan. The floor plan was reproduced as Appendix D to his Honour’s reasons.
The second was a promotional brochure for the Monomeeth range of houses. It too incorporated an outline of the floor plan of the Doncaster East display home and another partial floor plan which included the following notation:

Monomeeth 101: Garage repositioned to side of study. Repositioned master bedroom, ensuite and powder room. Depending on setback requirements, suits blocks of 18 x 31.9 metres.

The floor plan outline and the partial floor plan were reproduced by his Honour as Appendix E and Appendix F respectively. It is the combination of the floor plan outline and the variation to it depicted in the partial floor plan that provides the floor plan of the Monomeeth 101. This was the particular variant of the appellant’s Monomeeth range of homes that the respondents were alleged to have reproduced.
The appellant relied upon expert evidence from Dr Cooke who compared the Monomeeth 101 plan and the Sterling plan. In evidence that was also quoted by the primary judge, Dr Cooke expressed his conclusions in these terms:

The significant features of both plans are the closely similar disposition of the major rooms and spaces within the rectangular plan shape, planned around a central circulation access commencing at the front door and leading into an open planned formal living dining area and then into an informal kitchen/family/meals area and connected rumpus room, the use of a bay window in the living room and in the meals area (wider in the Monomeeth 101 plan than in the Sterling plan), the recessed external wall and “fernery” of the dining area in the Sterling, the partial bay window to bed 1 in the Monomeeth 101 and, in both plans, the use of wide doorways, ceiling coffers (Monomeeth 101)/bulkheads (Sterling) to strengthen the visual definition of spaces and pilasters/attached columns to frame doorways. Both plans have a classical style front porch and portico and the garage projecting from the side of the study.
The Monomeeth 101 and Sterling plans are strikingly similar: in the overall plan shape, in the disposition of rooms, circulation spaces and passages within the plan (including a formal front portico with classical antecedents in each case), in the flow of space within the plan, and in the use of a bay window in the meals area to connect internal and external spaces. The differences in details of cupboards, windows, doors, bathroom and kitchen fit-out and laundry position are trivial in the total design.

It was on the basis of striking similarities observed by Dr Cooke that the appellant invited the primary judge to infer that the respondents had copied the appellant’s copyright work. His Honour accepted that there was a close similarity. He observed that “the strong impression which one gets from the overlays prepared by Dr Cooke is of marked similarity in the overall and relative dimensions, and in the arrangement of the various rooms”.
Because the drawing in the Herald Sun publication did not contain the detail that would have enabled Mr Dervish to lead Mr Factor to reproduce the appellant’s drawing of the copyright work, the case against the respondents turned on whether Mr Dervish had visited the appellant’s display home at Doncaster East, which on the evidence was the only place where he could have obtained the promotional brochure which contained a sufficiently detailed reproduction of the floor plan for the Monomeeth 101.
Mr Dervish denied that he knew of any of the Monomeeth range of homes or that he had sought to have Mr Factor reproduce the design of any such home. In particular, he denied that he had ever visited the appellant’s display home at Doncaster East.
The primary judge did not consider that Mr Dervish was a reliable witness and his Honour gave little weight to his denials or his other evidence. This was largely because Mr Dervish was shown to have reconstructed some of his evidence including, in particular, evidence concerning the documents which he claimed to have sent to Mr Factor for the purpose of providing information and ideas in relation to the proposed design. But even though his Honour was minded to discount Mr Dervish’s evidence heavily on the basis that he was not a reliable witness, he still needed to consider whether or not the appellant’s case had been made out on the evidence as a whole.
Evidence from Mr Factor, accepted by the primary judge, established that Mr Dervish had sent Mr Factor a number of documents soon after he was engaged. These documents included a photocopy of the front cover of a magazine published by Dulux which showed the façade of a particular house and a floor plan of a house design in May 1999 by Mr David Calleja.
His Honour considered that the presence of such documents on Mr Factor’s file demonstrated that Mr Dervish was quite prepared to give Mr Factor illustrations of what he wanted Mr Factor to produce, both as to the appearance of the proposed design from street level and as to its floor plan. His Honour considered it highly improbable that, if Mr Dervish had been of a mind to reproduce the Monomeeth plan, he would not have sent Mr Factor a copy of the promotional brochure or the relevant page from the Herald Sun magazine if he was in possession of either document.
The primary judge examined the records of Mr Factor’s and Mr Dervish’s oral communications that were in evidence. These consisted of notes prepared by Mr Factor dated 28 January 2000 and 7 February 2000. His Honour found that there was nothing in them that suggested there were communications between Mr Factor and Mr Dervish at anything like the level of detail required to make out the appellant’s case.
The primary judge also studied the evolution of Mr Factor’s design. His Honour found that although Mr Factor never visited the Bundoora site, it was clear that he was asked to design a house that would fit its unusual configuration. The site was neither square nor rectangular. The northern boundary at the front of the block was longer than the rear boundary to its south and one of its two side boundaries, the western boundary, was shorter than the other. Vehicular access was to be by way of a cross-over situated at the north-western corner of the site where the front boundary met the shorter of the two side boundaries.
Mr Factor first prepared a basic outline of his proposed design on “butter paper”. He then prepared a more detailed sketch plan in accordance with his basic outline. The sketch was dimensioned and the rooms designated. His Honour reproduced that sketch in Appendix H to his reasons. On 14 February 2000 Mr Factor sent a copy of his sketch to Mr Dervish by facsimile.
The primary judge found that Mr Factor was not happy with his initial design because he had been unable to make the rear section of the house (bedrooms two and three, the kitchen, meals area, and the family and rumpus rooms) as wide as he would have liked. In this, Mr Factor had been constrained by the asymmetrical shape of the site and the location of the cross-over. He recognised that if he reversed or “flipped” the design along its vertical axis, moving the cross-over and the garage to the opposite side of the north-eastern corner of the block, he would have more space to open up the rear section of the house.
The conversation which took place between Mr Factor and Mr Dervish in relation to these changes on 14 or 15 February 2000 – we shall refer to it as the 15 February 2000 conversation although there may have been more than one – is of particular importance to the issues that arise in the appeal. His Honour observed that there were no notes of the 15 February 2000 conversation but that Mr Factor’s evidence of what he recalled was said at that time was not challenged by the appellant in cross-examination.
The primary judge found that Mr Factor told Mr Dervish in the 15 February 2000 conversation that the design embodied in his sketch of 14 February 2000 would not work on the Bundoora site and that Mr Factor then discussed with Mr Dervish the possibility of relocating the cross-over to the other side of the site which would enable Mr Factor to “flip” the plan. Mr Factor made these changes and sent Mr Dervish a copy of his revised sketch plan on 15 February 2000. His Honour observed that with this new configuration, the house was a much better fit for the site. A copy of the drawing sent by Mr Factor to Mr Dervish on 15 February 2000 is reproduced as Appendix I to his Honour’s reasons.
The primary judge found that the drawing Mr Factor sent to Mr Dervish on 14 February 2000 did not “betray an unconscious attempt to reproduce the Monomeeth.” We take this to be a finding that the drawing of 14 February 2000 did not show any signs of having been copied from the Monomeeth 101 as alleged by the appellant.
His Honour also found that it was not until the drawing of 14 February 2000 was flipped by Mr Factor – resulting in the plan he sent to Mr Dervish on 15 February 2000 – that the striking similarity observed by Dr Cooke between Mr Factor’s sketch of 15 February 2000 and the Monomeeth 101 first emerged. Even then, however, his Honour said that “there were no tell-tale indications of copying” and he found that the striking similarity between the design embodied in Mr Factor’s sketch and the Monomeeth 101 “was explained by the entirely benign circumstance that the plan was ‘flipped’ in order the better to fit the shape of the site.”
On 16 February 2000, the day after he received Mr Factor’s revised plan, Mr Dervish sent him at least three further versions of it incorporating suggested amendments. Mr Dervish’s suggestions were referred to in detail by the primary judge and are shown in a sketch plan apparently produced by Mr Dervish which is reproduced as Appendix J to his Honour’s reasons. All of Mr Dervish’s suggestions were accepted by Mr Factor. A revised sketch prepared by Mr Factor and incorporating Mr Dervish’s suggestions is reproduced as Appendix K to his Honour’s reasons.
The primary judge found that by this stage the design of the house was architecturally complete. A technical drawing of the house, prepared by Mr Factor’s wife in March 2000, is reproduced as Appendix L to his Honour’s reasons. One slight modification was later made to the width of the family room.
The appellant argued before the primary judge that it should be inferred, contrary to Mr Dervish’s denials, that he visited the appellant’s display home at Doncaster East and there obtained a copy of the promotional brochure which he used for the purpose of providing instructions to Mr Factor. His Honour rejected this argument for a variety of reasons.
First, his Honour observed that he was not willing to give Mr Dervish’s denials much weight but that there was no direct evidence that justified the drawing of such an inference and no other evidence from which it might be inferred that Mr Dervish probably made such a visit.
Secondly, as we have mentioned, his Honour was satisfied that the similarity between the design of the Sterling and the Monomeeth 101 first emerged on 15 February 2000 when Mr Factor “flipped” his earlier design. His Honour was satisfied that this similarity was not attributable to copying.
Thirdly, the changes suggested by Mr Dervish on 16 February 2000, while assisting the appellant’s case, were not sufficient to establish that there had been any copying from the appellant’s copyright work. His Honour explained why at para [71] of his reasons:

... it is odd that, if Mr Dervish was here relying on the applicant’s brochure, he did not always do so either faithfully or completely. The changes which he made were not so distinctive or unusual that I should regard it as unlikely that he made those changes independently of the applicant’s plan. Perhaps the areas in which his changes most closely corresponded with design elements of the Monomeeth 101 were those of the bay window to the living area and the orientation and shape of the island bench in the kitchen. I could not, however, find that these were other than standard features, the appearance of which in a project house design, or even in any two project house designs independently created, would not be at all remarkable.

Fourthly, his Honour observed that since Mr Dervish had not been unwilling to provide particular drawings to Mr Factor – in this connection his Honour referred to the floor plan drawn by Mr Calleja – there was no reason why, if he was in possession of the appellant’s brochure, Mr Dervish would not have sent it to Mr Factor. His Honour said at para [69] of his reasons:

Only by attributing to Mr Dervish a conspicuously Machiavellian disposition could I conclude that, having the applicant’s brochure in his possession and wanting to achieve a reproduction of it, he nonetheless gave Mr Factor a quite different plan – that drawn by Mr Calleja – and sought to achieve his objective by oral instructions of sufficient subtlety for Mr Factor himself to have made no clear reference to them in his notes of 28 January or 7 February 2000.

Fifthly, his Honour found that there was no connection between Mr Dervish and the appellant in early 2000 and that Mr Dervish “had no more reason to turn to the applicant’s plan than those of any other builder.”
Sixthly, his Honour observed that there was no evidence that Mr Dervish ever visited the appellant’s display home at East Doncaster. His Honour said that given the geographical separation involved, there was “no reason to regard Mr Dervish’s denials as remarkable”.
Seventhly, his Honour made the following observations concerning the expert evidence at para [70] of his reasons:

It seemed to be common ground as between the experts that the Sterling plan might have been designed independently of any of the Monomeeth plans. There was nothing in the former that need have been derived from the latter. All these plans consisted of layouts, elements and features that one might encounter in any house, particularly (because of cost restraints) in any project house. For the most part, the points of similarity that struck Dr Cooke – the overall plan shape, the disposition of rooms, the circulation spaces and passages and the “flow of space” – all represent elements that existed in Mr Factor’s plan on 15 February 2000, before Mr Dervish’s alterations.

His Honour then went on to find that it was improbable that Mr Factor reached the point he did on 15 February 2000 as a result of any prompting by Mr Dervish. His Honour said also at para [70]:

Albeit that it amounts in effect to a finding of coincidence, I consider more likely that things were as they appeared to be, namely, that Mr Factor was asked to design a house for a certain site, and he did so independently, subject only to the overall parameters that he was given by Mr Dervish.

RELEVANT PRINCIPLES

The copyright in a work is infringed (subject to exceptions not relevant to this case) when, without the licence of its owner, a person reproduces, or authorises another person to reproduce, the work, or a substantial part of it, in a material form: ss 31, 36 Copyright Act 1968 (Cth) (the Act).
Whether or not there has been a reproduction of a work or substantial part of a work raises two discrete but often overlapping issues. First, it must be shown that the copyright work and the putative infringement have a “sufficient degree of objective similarity”. Second, it must be shown that this objective similarity is the result of copying. In SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466, Gibbs CJ (with whom Mason and Brennan JJ agreed) said 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 L.J. in Francis Day & Hunter Ltd. v. Bron [[1963] Ch. 587, at p. 614], “a sufficient degree of objective similarity between the two works” and “some causal connection between the plaintiffs’ and the defendants’ work”. Lord Reid said in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd [[1964] 1 W.L.R. 273, at p. 276; [1964] 1 All E.R. 465, at p. 469]:

Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.

(See also [1964] 1 W.L.R., at pp. 283, 288 and 293; [1964] 1 All E.R., at pp. 473, 477 and 481.) In the same case, Lord Evershed said [[1964] 1 W.L.R., at p. 283; [1964] 1 All E.R., at p. 473], “that what amounts in any case to substantial reproduction ... cannot be defined in precise terms but must be a matter of fact and degree”.

For the purpose of establishing reproduction, it is not necessary to show that there has been direct copying. Indirect copying will suffice. For example, the copyright in a two-dimensional drawing may be infringed if the putative infringement has been copied from a three-dimensional reproduction of the copyright work. Similarly, copyright may be infringed where a person who has access to the copyright work conveys information derived therefrom to another person who does not have such access. Whether there has been copying is a question of fact.
Inferences are often drawn from established facts to show that the putative infringement has been copied from the copyright work in relation to which the exclusive right of reproduction is said to have been infringed. But in all such cases it is necessary for the copyright owner to establish a basis for drawing such an inference. As Dixon CJ said in relation to the drawing of inferences: “The facts proved must form a reasonable basis for a definite conclusion affirmatively drawn of the truth of which the tribunal of fact may reasonably be satisfied.”: Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 at 305.
It has been said that if the similarities between the putative infringement and the copyright work are sufficiently great and it is established that the alleged infringer had the opportunity of obtaining access to the copyright work, then the court will infer that access was obtained unless the inference is displaced by other evidence. In this context it has also been said that there is an onus on the putative infringer to explain the similarities between the putative infringement and the copyright work: see, for example, Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd [2009] FCAFC 156; (2009) 261 ALR 269 per Moore and Bennett JJ at [25] and per Lindgren J at [71], citing Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd [2001] FCA 1636; (2001) 116 FCR 448 per Sackville, Finn and Kenny JJ at [19].
The passages in Vawdrey and Pacific Gaming to which we have referred are concerned with what is commonly referred to as the evidentiary onus or evidentiary burden as opposed to the legal onus or legal burden. In a proceeding for copyright infringement, the legal onus is always on the copyright owner to prove the essential elements of the cause of action, including that the putative infringer reproduced or authorised the reproduction of the copyright work in the relevant sense. No matter how strong the evidence of objective similarity, the legal burden of proving the necessary causal connection is always on the copyright owner.
In Pacific Gaming the Full Court referred with approval at para [19] to the following passage in the judgment of Jacob J in Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 at 296-297 in which his Lordship said:

It may then be possible for the defendant to rebut the inference – to explain the similarities in some other way. For instance he may be able to show both parties derived the similar bits from some third party or material in the public domain. Or he may be able to show that the similarities arise out of a functional necessity – that anyone doing this particular job would be likely to come up with similar bits ... The concept of sufficient similarities shifting the onus onto the defendant to prove non-copying is well recognised in copyright law. Thus Lord Wilberforce in LB (Plastics) Ltd v Swish Products [1979] RPC 611 at 621 asked whether the inference of copying:

could be displaced by evidence from the respondents showing how in fact they had arrived at their design and that they had not done so by copying?

Actually I think the proposition is not so much one of law as of plain rational thought.

We respectfully agree with his Lordship’s observations. In particular, we agree that the “shifting onus” discussed in the cases to which we have referred is not so much a rule of law as a process of reasoning which recognises that proven or admitted facts, if left unexplained by other evidence, may justify the drawing of a particular inference.

Whether the court will make a finding of copying where there is evidence of close similarity but no direct evidence of copying having occurred will depend on the nature of the copyright work and the nature and extent of the similarity. There may be some similarities that point strongly in favour of finding that access has been obtained and that copying has occurred. Whether the similarities justify that conclusion is often a matter of impression and degree. If the similarities consist of unusual or distinctive features or details that are not likely to be the product of independent effort by the putative infringer, then a judge may have no difficulty inferring that there has been copying. However, the position may be otherwise where that which is said to have been copied is neither unusual nor distinctive but routine or commonplace.
The decision that the primary judge came to in the present case necessarily involved matters of impression and degree. Unless it can be shown that his Honour’s decision was affected by some error of principle, then it is to be given particular weight. This is a case in which the Full Court would not depart from the findings made by the primary judge in relation to such matters unless it was clearly of a different opinion to that reached by his Honour: Branir Pty Ltd & Ors v Owston Nominees (No 2) Pty Ltd & Anor [2001] FCA 1833; (2001) 117 FCR 424 per Allsop J at [29]. See also, Optical 88 Ltd v Optical 88 Pty Ltd (2011) 197 FCR 67 per Cowdroy, Middleton and Jagot JJ at [25]-[34].

THE APPELLANT’S CHALLENGE TO THE PRIMARY JUDGE’S FINDINGS

Changes made to Mr Factor’s sketch of 14 February 2000

As we have mentioned, the appellant identified various alleged errors in the primary judge’s reasons. The most significant of these concerned the primary judge’s finding that the similarity between the drawings of the Sterling and the drawing of the Monomeeth 101 which first emerged with Mr Factor’s drawing of 15 February 2000 “was explained by the entirely benign circumstance that the plan was ‘flipped’ in order the better to fit the shape of the site.” The appellant argued that this finding was not supported by the evidence.
During the course of the argument before us, it was accepted by Senior Counsel for the appellant that the appellant’s case against the respondents depended upon it being inferred that Mr Dervish visited the appellant’s display home at East Doncaster where he obtained a copy of the appellant’s promotional brochure which he then used for the purposes of providing instructions to Mr Factor. He accepted that the instructions given to Mr Factor by Mr Dervish prior to 15 February 2000 were inconsistent with Mr Dervish having possession of the brochure. And he also accepted that on the appellant’s case Mr Dervish must have obtained a copy of the brochure from the appellant’s display home at East Doncaster sometime between 7 and 15 February 2000.
The appellant argued that the changes made by Mr Factor to his sketch of 14 February 2000 following the 15 February 2000 conversation indicated that Mr Dervish was in all probability then in possession of the brochure and that he used it for the purpose of giving instructions to Mr Factor on that date.
In finding that Mr Factor “flipped” the 14 February 2000 sketch to create his 15 February 2000 sketch, the primary judge is not to be taken to say that all Mr Factor did was reverse the earlier design along its vertical axis. The flipping was, as his Honour’s reasons make clear, undertaken for the purpose of opening up the rear section of the house.
Mr Factor gave evidence, accepted by the primary judge, that he was not happy with his initial design. He said (at paragraph 9 of his first witness statement) that the location of the garage limited the design of the house. One of the specific problems with the initial design that Mr Factor referred to by way of example was that the hallway from the front door ended at the wall of the second bedroom. Mr Factor also said (at paragraph 10 of his first witness statement) that he discussed the possibility of relocating the cross-over with Mr Dervish. He said:

I discussed with Mr Dervish relocating a crossover to the north-east side. This would require an additional cost and the consent of the developer. By moving the crossover, I could ‘flip’ the plan so that the garage was located on the north-east corner of the block. The hallway then ran down the house to the family and meal areas. I was happy with that plan.

Mr Factor exhibited a copy of the sketch he drew on 15 February 2000 to his statement. It is obvious when looking at this sketch that there were other changes made to the earlier version apart from the flipping. Of course, the hallway in the revised version extends into the family room longitudinally past what became a U-shaped rather than an L-shaped kitchen. But there are other obvious differences. For example, the family and meal areas in the revised sketch extend from west to east rather than north to south as they did in the earlier version and the eastern wall where the meals area is situated includes a bay window that extends along its entire length.
Mr Factor was cross-examined in relation to paragraph 10 of his first written statement but not extensively. Relevantly, the cross-examination was as follows:

But the discussion with Mr Dervish that you refer to in paragraph 10 could well have occurred on 14 February?---Yes.
And again, there’s no record of that discussion, as such, is there? Other than the fact that it occurred, we don’t know what was said?---No, but I do recall that specific discussion.
Right. But there could well have been other things said. It’s a long time ago and it’s not - I don’t think it would be fair to expect you to recall the detail of a discussion that happened at the time?---Yes.
Insofar as Mr Dervish gave you directions or instructions at the time, I assume your position is that you can’t recall the detail of those directions or discussions as at 14 February?---No, I can’t recall, no.

There was no attempt in cross-examination to explore with Mr Factor what changes, if any, were initiated by Mr Dervish rather than Mr Factor on 14 or 15 February 2000.

The appellant pointed to 22 changes made by Mr Factor to his sketch of 14 February 2000 apart from the mere “flipping” of the plan which, it may be inferred, were made by Mr Factor on the instructions of Mr Dervish. Three of the 22 changes need not be separately addressed as they are sufficiently covered by what we have said elsewhere in this judgment. The remaining 19 changes, as specified in the appellant’s written submissions, were as follows:

(a) the width of the back half of the house has been significantly increased and the dimensions of all the rooms south of the dining/living areas have changed making the house significantly wider and shorter;
(b) a hallway from the front door which previously turned right adjacent the kitchen (which resulted in a dark central passage requiring a skylight) is continued in a straight line through the now much wider back half of the house into the family/meals area, which, with the changes to the kitchen layout, brings more light into the hallway and dispenses with the need for the skylight;
(c) the increased width of the back half of the house has also allowed a number of other changes including:

(i) the family/meals area has been reorientated to extend from east to west instead of from north to south;
(ii) the width of the bay window off the meals area has increased significantly;
(iii) a significant increase in the size of bedroom 2 allowing for the creation of a larger robe on the southern wall of bedroom 2;
(iv) the relocation of the built in robe in bedroom 3 from the north wall to the east wall;
(v) the orientation of the bathroom has been shifted from east to west to north to south;
(vi) the laundry has increased in size significantly, the orientation has shifted from north to south to east to west and the configuration of the sink, benches and laundry appliances has changed;
(vii) the lengthening of the bathroom and reconfiguration of the bath, shower and vanity; the introduction of a linen cupboard off the hallway opposite the WC; and
(viii) the lengthening of the WC;

(d) with the change to the central hallway the L shape of the configuration of the benches and appliances in the kitchen has been altered to create a U shaped configuration around the central island bench;
(e) the combined area of the dining/living area has increased from 238 square metres to 245 square metres;
(f) French doors have been deleted from the family room;
(g) the window on the east wall of the rumpus has been replaced by French doors;
(h) a window has been introduced to the south wall of the rumpus room;
(i) the French doors between the rumpus and family areas have been deleted;
(j) the bathroom vanity and bench has been replaced with a freestanding vanity;
(k) the width of the bathroom window has been reduced; and
(l) the locations of the stovetop in the kitchen and the island bench have shifted.

The effect of the appellant’s submissions was that these changes brought the Sterling plan much closer to that of the Monomeeth 101 and that they were made by Mr Factor on the instructions of Mr Dervish. Thus, it was submitted that the primary judge was in error in finding that the similarity between the plans of the two houses, which emerged in Mr Factor’s drawing of 15 February 2000, was explained not by any intervention on the part of Mr Dervish, but by the “benign circumstance” of “flipping”.
We have sought to address this submission by reference to the changes relied upon by the appellant both individually and collectively. We have also taken into account the transcript references provided to us by the appellant in support of its submission. For reasons which we will now explain, we are not persuaded by the appellant’s submission.
We have no doubt that the whole purpose of relocating the cross-over was to enable Mr Factor to enlarge the back half of the house. This made it possible for Mr Factor to increase the size of the rooms in that area by locating the rear bedrooms, the rear bathroom and the laundry closer to the boundary than was possible when they were located on the eastern side of the site. This in turn reduced what might reasonably be viewed as wasted space in the vicinity of the eastern boundary.
The revised sketch of 15 February 2000 also incorporated a hallway extending from the front door through to the family and meals areas at the rear of the house. It is clear from Mr Factor’s evidence that he wanted to change his earlier design by eliminating the rather awkward arrangement in which the hallway terminated at the northern wall of the second bedroom.
We do not see any basis for inferring that the changes referred to in sub paras (a) and (b) above were more likely to have been initiated by Mr Dervish rather than Mr Factor.
We turn then to the changes referred to in para (c) above. The first of these is the reorientation of the meals and family areas so that they extend from west (family) to east (meals) rather than north to south. This seems to us to be a perfectly logical change to make given the elimination of the wasted space to which we have referred and the overall reduction in the length of the building. Again, there is no reason to think that the reorientation of the meals and family areas is likely to have been initiated by Mr Dervish rather than Mr Factor.
Still in the meals and family areas, the appellant also pointed to the width of the bay window in the meal areas which has increased significantly. But in the sketch of 14 February 2000 the bay window extends along the length of the meals area just as it does in Mr Factor’s revised sketch. We see the lengthening of the bay window as a natural consequence of the reorientation of the family and meals area. There is no reason to think that the enlargement of the bay window was initiated by Mr Dervish rather than Mr Factor.
Another change relied upon by the appellant is the increase in the size of the second bedroom which is said to have allowed the creation of a larger robe along its southern wall. But here again we do not see anything about this change to suggest that it was initiated by Mr Dervish. Mr Factor’s earlier design also incorporated a built-in robe, albeit smaller than the one which appeared in the revised sketch. The size of the second bedroom was increased slightly from 3.5m x 3.4m to 3.7m x 3.3m. There is nothing remarkable about increasing the size of the built-in robe in such circumstances. Moreover, the built-in robe in the second bedroom of the Monomeeth 101 is in a different location. There is no reason to think that the enlargement of the built-in robe in the second bedroom as shown in Mr Factor’s revised design was initiated by Mr Dervish.
The appellant also pointed to the relocation of the built-in robe in the third bedroom from the north wall to the east wall. There does not appear to us to be any obvious explanation for relocating the built-in robe though we suspect that there were advantages to be gained in incorporating the built-in next to the cupboard located opposite the WC between the walls separating the bedroom from the rumpus room. We are not persuaded that this change was likely to have been initiated by Mr Dervish rather than Mr Factor.
The appellant also pointed to the reorientation of the bathroom adjoining the second and third bedrooms. It is true that there has been a change in the orientation of the bathroom or, at least the bathtub, from north to south to east to west. However, there is nothing to indicate that this change was instigated by Mr Dervish. In any event, this change is inconsistent with the appellant’s explanation of events in that the orientation of the bathtub in the bathroom adjoining the second bedroom in the Monomeeth 101 is not from east to west but from north to south. Moreover, the shower recess and the bathtub are located in opposite corners of the bathroom in the Monomeeth 101 whereas they are adjacent in the 15 February 2000 sketch.
The appellant then pointed to the increased size of the laundry in Mr Factor’s revised plan, the change in orientation from north to south instead of east to west, and changes in the configuration of the sink, benches and laundry appliances.
It is true that the size of the laundry has increased significantly but we see this as consistent with Mr Factor making use of additional space that became available with the relocation of the cross-over and the hallway. It is apparent that the reorientation of the laundry was necessary to make the most of such additional space.
In any event, the rectangular layout of the laundry in Mr Factor’s sketch of 15 February 2000 is quite unlike the layout of the laundry in the Monomeeth 101. Again, there is no reason to think that this change in layout was initiated by Mr Dervish rather than Mr Factor. And even if there was, it does not support the appellant’s contention that Mr Dervish initiated such a change so that the design of the laundry would more closely resemble the laundry in the Monomeeth 101.
The appellant also pointed to the lengthening of the bathroom, the reconfiguration of the bath, shower and vanity, the introduction of a linen cupboard off the hallway opposite the WC and the lengthening of the WC.
We have already discussed the lengthening of the bathroom. The other changes made to the bathroom are consistent with Mr Factor making efficient use of additional space. Significantly, the bath, shower and vanity in the Monomeeth 101 are in different locations.
The introduction of the linen cupboard opposite the WC in Mr Factor’s revised sketch is hardly remarkable. It is in a quite different location to the linen cupboard in the Monomeeth 101 which backs up against the laundry wall. Nor does the layout of the WC in Mr Factor’s revised design support the appellant’s explanation of events. The WC in the revised drawing is quite elongated in its layout and different to that of the WC in the Monomeeth 101.
We are not satisfied that any of the changes referred to in para (c) above were initiated by Mr Dervish rather than Mr Factor. In any event, none of the changes, even if made at the suggestion of Mr Dervish, indicate that he was likely to have been in possession of the appellant’s brochure.
The appellant also pointed to the change to the hallway. We have already referred to Mr Factor’s evidence on this topic. We do not think it provides any support for the appellant’s explanation of events.
The appellant says that the other changes made to the kitchen indicate that they were made at Mr Dervish’s initiative and that they point to him being in possession of the appellant’s brochure.
We do not agree. If it is assumed that the change from an L-shaped kitchen as shown in the sketch of 14 February 2000 to a U-shaped kitchen as shown in the revised sketch of 15 February 2000 was made at Mr Dervish’s direction, then it is hard to see why, if he was making use of the appellant’s brochure as the appellant alleges, he would not have directed Mr Factor to move to an open plan kitchen. But Mr Factor, for reasons apparent from his evidence, included an internal wall which shielded the kitchen from view along its western side. We do not think there is anything about the changes made to the kitchen in Mr Factor’s sketch of 15 February 2000 to suggest that the changes were made at Mr Dervish’s direction or that he was in possession of the appellant’s brochure.
Accordingly, we do not see any basis for inferring that the changes referred to in para (d) above were more likely to have been initiated by Mr Dervish rather than Mr Factor or that Mr Dervish was in possession of the appellant’s brochure at the time of the 15 February 2000 conversation.
The point made in para (e) above is that the combined area of the dining/living area has increased. In fact, it does not appear to us that the size of the area has changed. In both the sketches the living room dimensions (4.2m x 5.2m) and the dining room (4.0m x 3.6m) dimensions are the same. We suspect that the figures referred to by the appellants (238 sq.m/245 sq.m) include not just those areas but also the rest of the house.
The appellant pointed in para (f) above to the deletion of the French doors situated on the western wall of the family room in the sketch of 14 February 2000. But the reorientation of the family and meals area and the extension of the bay window along its eastern wall made it impossible to retain French doors in that position which most likely explains why they were relocated to the rumpus room. Again, we do not see this change as one that was more likely to have been initiated by Mr Dervish than by Mr Factor. Nor is it a change which, if made at Mr Dervish’s suggestion, would lead us to infer that he was in possession of the appellant’s brochure.
Most of the other changes referred to in paras (g), (h), (i), (j), (k) and (l) above appear to be related to other changes to which we have referred. For example, the window of the rumpus room has been moved from the western wall to the rear wall, hardly a surprising change given that in the revised sketch the French doors occupy the eastern wall of the rumpus room. Moreover, some of the changes referred to are inconsistent with the appellant’s explanation of events. For example, the reduction in the size of the bathroom window referred to by the appellant meant that Mr Factor’s revised design had a window extending across only one half the length of the bathroom’s exterior wall. In the case of the Monomeeth 101, however, the bathroom window extends across what is almost the entire length of the exterior wall. In any event, there is nothing about these changes, even if initiated by Mr Dervish, to suggest that he was in possession of the appellant’s brochure.
Of course, in considering whether it should be inferred, first, that the numerous changes made to the sketch of 14 February 2000 were more likely than not to have been made at the request of Mr Dervish and, secondly, that his requests were motivated by a desire to have Mr Factor draw a house very similar to that depicted in the brochure then in his possession, it is necessary to look at all the changes that were made collectively as well as separately.
In our view, there is nothing about the changes made by Mr Factor on 15 February 2000 that satisfy us that all, or even some, were prompted by suggestions made by Mr Dervish. Much less is it open to us to infer, on the basis of such changes, that Mr Dervish was in possession of the appellant’s brochure.
It is true that not every change made by Mr Factor to his drawing of 14 February 2000 evident in his drawing of 15 February 2000 was attributable to the relocation of the cross-over and the “flipping” of the earlier design. Nevertheless, the more substantial changes were made possible by this fundamental change of approach. In any event, we are not persuaded that it is more likely than not that any of the substantial changes made by Mr Factor were initiated by Mr Dervish. Nor are we persuaded that any of the changes made by Mr Factor justify our inferring that Mr Dervish was in possession of the appellant’s brochure at the time of the 15 February 2000 conversation.

Changes made to Mr Factor’s sketch of 15 February 2000

Each of the changes suggested by Mr Dervish on 16 February 2000 was analysed by the primary judge. His Honour recognised that the changes to Mr Factor’s sketch of 15 February 2000 by Mr Dervish strengthened the appellant’s case. This was because, according to his Honour, the changes suggested by Mr Dervish “brought the Sterling design closer to the Monomeeth”. Ultimately, however, his Honour was still not satisfied that it was more likely than not that Mr Dervish was in possession of the appellant’s brochure.

Changes to the en-suite bathroom and the inclusion of a walk-in-robe

The sketch of 15 February 2000 did not include any walk-in-robe. Mr Dervish suggested the creation of a walk-in-robe adjoining the master bedroom. This was accomplished by moving the exterior wall of the bathroom closer to the western boundary of the property and introducing an internal wall which separated the reconfigured bathroom from the newly created walk-in-robe.
It is apparent that Mr Dervish suggested that the single wash basin en-suite shown in the sketch of 15 February 2000 be replaced by twin basins, fully recessed into the vanity unit located against the new internal wall separating the bathroom from the walk-in-robe.
Mr Dervish also suggested the inclusion of a spa in the en-suite. As in the Monomeeth 101, the spa is located in the southern corner of the en-suite but, unlike the Monomeeth 101, it stands alongside, rather than opposite, the shower recess.
The primary judge identified the similarities and differences between the newly configured en-suite and the en-suite in the Monomeeth 101. His Honour concluded that the changes to the en-suite produced a result that was not closely similar to the Monomeeth 101. We agree with his Honour.
Nor do we think much can be read into the introduction of the walk-in-robe, other than that Mr Dervish thought it was desirable to incorporate such a space into the design. There is nothing remarkable about a walk-in-robe in a project home. Indeed, the evidence of Dr Cooke and Mr Millar suggested the walk-in-robe was a standard feature of project homes being constructed around this time.
The appellant also pointed to the changes made to the exterior wall of the dining area. Mr Dervish suggested that the exterior wall of the dining area be set back, reducing the size of the dining area but allowing additional space for the creation of a “fernery” on the other side of the wall. In relation to the change to the dining room wall, the primary judge said at para [62]:

Although the set-back in the external wall to the dining area was a feature suggested by Mr Dervish which corresponded directly with the Monomeeth 101, there is a basis for supposing that this feature was introduced by him to facilitate the establishment of a fernery external to the dining room window. That is to say, there is a rational explanation for Mr Dervish having made this change which is independent of the applicant’s plan. I accept that this is a relatively minor consideration, but the reference to the fernery on the plans returned to Mr Factor on 16 February 2000 does bespeak a certain independence of thinking which is inconsistent with the applicant’s case.

The significance of this passage in his Honour’s reasons is that it makes clear that he had regard to this particular change and specifically considered whether it might have been Mr Dervish’s own idea as opposed to one which he had obtained from the appellant’s brochure. The primary judge found that there was a rational explanation for Mr Dervish having made this change arising out of a desire to establish a fernery visible from the dining room. We do not think there is any basis for rejecting that finding.

Changes to the kitchen

The appellant also pointed to changes to the kitchen which were also suggested by Mr Dervish. The first was the removal of the internal wall (and adjoining cabinetry) which, as depicted in the sketch of 15 February 2000, separated the kitchen from the hallway. The second related to the design of the island bench in the kitchen. At Mr Dervish’s suggestion the shape of the island bench was changed so that, rather than being rectangular in shape, one of its sides – that facing south toward the family/meals area – became slightly curved.
The primary judge considered these particular changes. It is apparent that his Honour did not think that either of them provided a basis for inferring that Mr Dervish was in possession of the appellant’s brochure.

Changes to the family bathroom

The appellant also relied upon a change to the design of the family bathroom at the rear of the house. Mr Factor’s sketch of 15 February 2000 showed a freestanding wash basin beside the external wall. Mr Dervish suggested that the wash basin be replaced with a vanity unit incorporating a recessed wash basin located alongside the bathroom’s southern wall opposite the bath and shower recess.
As his Honour noted, while the change to the vanity unit on the southern wall was said by the appellant to be very similar to the style and orientation of the vanity unit in the appellant’s brochure, the configuration of the respondents’ bathroom is different to that of the Monomeeth 101 in other respects. In particular, the shower recess and the bath are located in different positions.

The combination of changes

The appellant emphasised that its case before the primary judge was that it was the combination of features common to the Monomeeth 101 and the Sterling that should have led the primary judge to infer that the sketches created by Mr Factor on 15 and 16 February 2000, as amended at Mr Dervish’s request, were indirectly copied from the appellant’s brochure. Such an inference should have been drawn, according to the appellant, in circumstances where, first, it was established that the appellant’s brochure could easily have been obtained by Mr Dervish from the appellant’s display home at East Doncaster and, secondly, the respondent failed to explain why the Monomeeth 101 and the Sterling were so similar.
We are satisfied that the primary judge properly considered the case of the appellant as one based upon the combination of features common to the Monomeeth 101 and the Sterling and explained comprehensively why he did not accept it. It is apparent from his Honour’s reasons that he clearly recognised that the appellant’s case was that the overall similarity between the appellant’s and the respondents’ designs was no mere coincidence. And he also recognised that, in rejecting that case, (though, with respect to the primary judge, we do not think this necessarily follows), he was making what was, in effect, a finding that the similarity between the two designs was the result of coincidence.

The respondents’ failure to explain similarities

The appellant argued that the primary judge gave insufficient weight to what it submitted was the respondents’ failure to explain the striking similarity between the Monomeeth 101 and the Sterling. However, it is not correct to say that the similarities were not explained. Both experts agreed that project homes contain a number of common elements. They both agreed that for a single storey version of a typical project home there will be three bedrooms, with the main bedroom having its own en-suite and walk-in-robe or dressing room. Further, Mr Millar gave evidence, with which Dr Cooke agreed, that:

The project house designer faced with a combination of fierce competition in the market place, the increasing affluence and demands of the potential customer and the changing trends in the way we live have produces [sic] designs with remarkably similar floor plans. Although larger in area than their predecessors in the seventies and eighties they must also be capable of being placed on increasingly smaller parcels of land.
...
In my opinion there is [sic] little if any unique architectural elements in project house design. Rather the various project house designers rely on a variety of treatments to make individual spaces appear to be different (and hopefully more acceptable to the potential customer) than those same spaces in the housed [sic] designs of their competitors.
...
In the review of any current project house designs, while there will be numerous examples of unique external and internal treatments to various surfaces and finishes, the overall floor plans, the shape and the construction of most designs will be very similar and contain a large list of common elements.

The strength of the appellant’s case that the similarity between the appellant’s design and the first respondent’s design was most likely the result of copying was considerably diminished by this evidence. None of the common elements upon which the appellant’s submissions concentrated was said to be in any way unusual or out of the ordinary.

An exceptional feature of this case was that the appellant waited almost 10 years before commencing its proceeding against the respondents. Some of the delay was explained on the basis that the appellant was unaware that the first respondent was constructing project homes of the design in question until around 2003, but the further delay of close to seven years was never adequately explained. It is perhaps not surprising given this delay that neither Mr Dervish’s nor Mr Factor’s evidence provided any detailed explanation of the reasons why some rather than other design elements were adopted.

ADDITIONAL MATTERS

The appellant raised various other matters said to reveal error on the part of the primary judge which we need refer to only briefly.
The appellant argued that his Honour was in error in approaching the case on the basis that its case against the respondents attributed to Mr Dervish “a conspicuously Machiavellian disposition”. We do not think his Honour’s observation on the nature of the case advanced by the appellant reflects any error. On the contrary, we think his Honour’s observation was accurate.
It was also submitted by the appellant that his Honour erred by placing undue weight on Mr Factor’s notes of oral instructions which, the appellant asserted, may have been somewhat less than complete. The submission was not developed in the argument before us. In any event, it seems to us to be quite irrelevant given the way in which the case has been argued on appeal, which reflected an acceptance by the appellant that Mr Dervish did not obtain the appellant’s brochure until some time after Mr Factor’s notes of 28 January 2000 and 7 February 2000 were made.
The appellant criticised the primary judge’s reference to the fernery as an indication of independent thinking on the part of Mr Dervish. The primary judge explicitly acknowledged that this was a “relatively minor consideration”. To the extent it was suggested by the appellant that Mr Dervish was bereft of ideas beyond those derived from the appellant’s brochure then his Honour’s observation was of obvious relevance. In any event, it is apparent from his Honour’s reasons that this was a minor consideration in his process of reasoning.
The appellant also submitted that the primary judge overstated the significance of geographical separation. His Honour said that there was no evidence that Mr Dervish ever visited the appellant’s display home. His Honour was plainly referring to the absence of any evidence indicating that Mr Dervish had been to the Doncaster East display home other than the relevant sketches and drawings upon which the appellant’s inferential case was based. His Honour’s observation fairly stated the position. In relation to Mr Dervish’s denial that he had ever visited the appellant’s display home at Doncaster East, the primary judge also said that, given the geographical separation involved, there was no reason to regard Mr Dervish’s denials as remarkable. This observation fairly stated the position.
The appellant referred to observations of the primary judge concerning the expert evidence at para [70] of his Honour’s reasons which we have previously set out. It will be recalled that his Honour said that “[i]t seemed to be common ground as between the experts that the Sterling plan might have been designed independently of any of the Monomeeth plans”.
Where an expert is of the opinion that a reproduction of a copyright work is unlikely to have been produced without reference being made, either directly or indirectly, to the copyright work, it is common for him or her to say so and, of course, explain why he or she holds that opinion. There was no such evidence from Dr Cooke either in his written report or his oral evidence. This is in no sense a criticism of his evidence. Nevertheless, in our view it was open to the primary judge to interpret the expert evidence in the way he did. We are not persuaded that his Honour’s assessment of the expert evidence was affected by error.
The last matter concerns two particular observations made by the primary judge in relation to the opportunity to obtain access to the copyright work. The first is his Honour’s observation at para [40] of his reasons that “... the only sense in which [Mr Dervish] had the opportunity to visit the display house was that in which every other member of the public had such an opportunity.”
What was significant for the purposes of this case was whether Mr Dervish had an opportunity to obtain a copy of the appellant’s brochure from the display home at Doncaster East. What opportunity others may have had was quite beside the point. Nevertheless, his Honour plainly accepted that Mr Dervish had the opportunity to visit the Doncaster East display home should he have chosen to do so. Accordingly, we do not think too much should be read into his Honour’s observation as having any significance to his ultimate conclusion.
The second observation is at para [66] of his Honour’s reasons where he said that “[i]n setting about to design his first house, Mr Dervish had no more reason to turn to the applicant’s plans than to those of any other builder.” The appellant referred us to evidence that showed the Monomeeth was the subject of two industry awards, that it had been extensively advertised by the appellant and that it enjoyed considerable commercial success. The primary judge recognised that the Monomeeth had been commercially successful. He made a finding to that effect in para [2] of his reasons for decision.
Again, we do not think too much should be read into his Honour’s observation. The point we think his Honour was seeking to make was that there were likely to be other plans that Mr Dervish would have been just as likely to copy from if he was minded to engage in copying. Given the expert evidence in the case (particularly that referred to at para [103] above), we are not persuaded that his Honour’s observation was inapposite.

DISPOSITION

The decision of the primary judge turned on matters of impression and degree upon which minds might reasonably differ. We are satisfied that it was open to his Honour to reject the appellant’s case on the ground that it was not made out on the evidence. We are not satisfied that his Honour’s decision was wrong. The appeal must be dismissed with costs.

I certify that the preceding one hundred and sixteen (116) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Jacobson, Nicholas & Yates.

Associate:
Dated: 16 February 2012

APPENDIX A