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Trademark Lawyers Australia – Full Federal Court – Tamawood

Tamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed) [2015] FCAFC 65 (18 May 2015)

This was an appeal from a judgment of Collier J finding Habitare, its architects and builder had infringed Tamawood’s copyright in plans for certain project homes.

Tamawood had prepared plans for Habitare to use for the development of two sites in Brisbane. Habitare used these plans to obtain development approval from Brisbane City Council which required the developments to be carried out generally in accordance with the approved drawings. Habitare was unable to reach agreement with Tamawood for the construction of the dwellings and then retained Mondo Architects to prepare plans for the dwellings for each site (which needed to be generally in accordance with the earlier drawings by Tamawood to comply with the development approvals). Bloomer Constructions was also retained to build these dwellings.

There was expert evidence that amendments which can be considered as generally in accordance with approved plans relate to less substantial matters that have no bearing on town planning criteria or development assessment matters, but can include amendments to internal layouts such as removal of walls and rearrangement of rooms. More substantial amendments would require lodgement of a new development application.

Not surprisingly, Tamawood asserted that the two dimensional plans prepared by Mondo and the three dimensional structures on the sites built by Bloomer were reproductions in a material form of its copyright in the original plans used to obtain development consent.

The appeal raised 9 issues with the more interesting being the approaches taken in determining copyright infringement.

At first instance, Collier J found that Habitare infringed Tamawood’s copyright in the relevant drawings through precise copying by supplying Mondo with copies of the development approval.

As to whether Tamawood’s drawings were wholly or substantially reproduced in the re-design process undertaken by Mondo, Collier J referred to case law establishing that reproduction for the purposes of copyright law involves two elements, namely a sufficient degree of objective similarity between the two works and some causal connection between them. However, her Honour treated these as two discrete questions. The first question is whether there is a sufficient degree of objective similarity between the respective works and, if the answer to that first question is in the affirmative, then the second question is whether there a causal connection between the respective works. Her Honour ultimately found infringement of Tamawood’s copyright in the drawings for the two storey ‘Torrington’ duplex dwelling, but not the single storey ‘Dunkeld’ duplex dwelling.

The relevant plans for the Tamawood and Mondo single story duplex dwellings are shown below:

Dunkeld duplex plans          Mondo duplex plans

On appeal, Jagot and Murphy JJ found the primary judge fell into error with this approach when considering the elements relevant to infringement of Tamawood’s copyright in the plans for the single story ‘Dunkeld’ duplex.

Objective similarity and causal connection are discrete, yet overlapping elements. Once the causal connection is made (typically by means of an inference of access to and use of the drawings with a high degree of similarity or striking similarity between the two works such that independent creation is unlikely), it is necessary to determine whether the whole or a substantial part of the copyright work has been reproduced. The conclusion on causation is relevant to and cannot be divorced from the assessment of objective similarity. Their Honours found there was also sufficient objective similarity between the two sets of single story duplex plans. The fundamental relationship between the internal spaces and the exterior of the building is substantially, indeed overwhelmingly, the same. Tamawood’s Dunkeld plans were embedded in Mondo’s single story duplex plans.

Greenwood J agreed with Jagot and Murphy JJ regarding the discrete yet overlapping nature of these two elements and that it can be artificial to consider them separately. His Honour considered that, if there is any sequence in the enquiry, then logically “the first question (in the absence of an admission) is whether initially there appears to be a sufficient degree of resemblance between Tamawood’s plans and those of Mondo. Taking into account the answer to that question, the next question is whether a causal connection has been made out informed by considerations such as Mondo’s opportunity to secure access to and use of Tamawood’s drawings and apparent similarities (particularly an apparent, high degree of objective similarity in the case of floor plans for low cost project homes) coupled with an assessment of any contended explanation of the similarities by the putative infringer: “probative similarity”.”

Greenwood J ultimately found no copyright infringement relating to the single storey duplex. After considering the layout and traffic flows as well as the shapes, proportions and interrelationships of rooms and other spaces, his Honour was not satisfied there was a sufficient degree of objective similarity so as to constitute reproduction of Tamawood’s Dunkeld plan.

On all other issues raised in the appeal, Greenwood J agreed with Jagot and Murphy JJ.

The Full Court agreed with the primary judge that there was a bare licence from Tamawood to Habitare to use the original plans which terminated once Habitare decided not to appoint Tamawood as builder. There was no evidence to support the existence of a licence which extended to the use made of Tamawood’s plans by Habitare and Mondo. Rather, Habitare knew it was not authorised to use Tamawood’s plans once it decided not to proceed to engage Tamawood as builder.

Mondo’s contention that Tamawood should be precluded from also relying on indirect copying in the appeal was rejected.

The Full Court agreed with the primary judge that Mondo did not raise the innocent infringer defence in the proceedings at first instance and, in any event, observed that the notion that Mondo, on the evidence, could satisfy this defence “borders on the fanciful”.

The Full Court overturned the primary judge and allowed Tamawood’s appeal that Mr Peter O’Mara and Mr Johnson of Habitare authorised the copyright infringements by Habitare. They had the power to avoid infringement by obtaining fresh development approvals not based on Tamawood’s plans. The circumstances “demand the inference that it was more likely than not that Peter O’Mara and Mr Johnson knew that there was a real risk that the process in which Habitare was involved would infringe Tamawood’s copyright and did nothing to avert that real risk”.

The Full Court agreed with the primary judge that it was not appropriate to make an order for additional damages and dismissed Tamawoods appeal on this issue, particularly as Tamawood principally argued this point on the conduct of Habitare being flagrant.

The Full Court agreed with the primary judge that Bloomer Constructions had established the innocent infringer defence and dismissed Tamawood’s appeal on this issue. There was no error in the analysis by the primary judge and her Honour, on the evidence, was entitled to find that Bloomer had no awareness of anything to do with Tamawood and had no reason for suspecting any infringement.

The Full Court was satisfied that the primary’s judge’s exercise of discretion in ordering Tamawood to pay Bloomer’s costs miscarried and upheld Tamawood’s appeal on this issue. Satisfying the innocent infringer defence merely protected Bloomer from a claim for damages and rendered them liable only to an account of profits. Bloomer did not just plead they had the benefit of the innocent infringer defence, rather they put Tamawood to proof on the whole of its case. It was appropriate for Tamawood and Bloomer to pay their own costs of the proceedings before the primary judge.

Finally, the Full Court agreed with the primary judge that Mr Shane O’Mara of Habitare engaged in misleading and deceptive conduct in assuring Mondo that there were no outstanding issues with Tamawood concerning the use of Tamawood’s drawings.