Barrett Property Group Pty Ltd v Dennis Family Homes Pty Ltd  FCA 246
On 18 march 2011, Justice dodds-Streeton of the federal Court held that dennis family Homes Pty Ltd (dennis) had infringed the copyright of Barrett Property group Pty Ltd (Barrett) by copying and reproducing a substantial part of Barrett’s Seattle and memphis works. The substantial part of the Barrett works found to have been taken by dennis was the “alfresco Quadrant” comprising the rumpus room, family room, kitchen and meals areas around a covered alfresco courtyard.
Barrett and Dennis are designers and builders of project homes. In 2000, Barrett introduced its Seattle and Memphis house designs to the market. Between 2003 and 2005, Dennis released seven house designs which Barrett alleged were infringements of copyright in the Seattle and Memphis plans and houses. Dennis denied infringement and submitted that its designers had created the plans independently without copying the Barrett works. The subsistence of copyright in the Seattle and Memphis plans and houses was initially put in issue by Dennis but ultimately conceded before trial.
The decision follows recent proceedings before the Federal Court and on appeal to the Full Federal Court, in which Metricon Homes and Carlisle Homes were held to have also copied and reproduced the same Alfresco Quadrant from the Seattle and Memphis designs in their plans and houses. In those proceedings, the issue of copyright subsistence in the Seattle and Memphis works had been conceded by Metricon and challenged unsuccessfully by Carlisle.
The first issue for her Honour was whether the Alfresco Quadrant constituted a substantial part of the Barrett works. justice Dodds-Streeton referred to the well-established principle that the question of substantial part requires a qualitative rather than quantitative assessment (citing Ladbroke (Football) Ltd v William Hill (Football) Ltd  1 WLR 271). Her Honour referred to the recognised difficulties in applying the idea/expression dichotomy to project home plans due to the sharing of common features dictated by cost and design constraints (citing Tamawood Ltd v Henley Arch Pty Ltd (2004) 61 IPR 378). Her Honour emphasised that in deciding whether a substantial part has been taken, it is important to consider the originality of the relevant part.
justice Dodds-Streeton held that the Alfresco Quadrant in the Barrett works was both qualitatively and quantitatively significant. Her Honour based her finding on the evidence of Barrett’s expert witness, evidence from Barrett’s sales staff and her own inspection of the Seattle and Memphis houses. Her Honour found that despite functional and practical requirements, there was considerable scope for variation in the arrangement of the constituent features and spaces.
Based on her own visual impression during an inspection and assisted by Barrett’s expert evidence, her Honour held that there was sufficient objective similarity to conclude that Barrett’s Alfresco Quadrant had been reproduced in each of the Dennis plans and houses. Her Honour held that there were fundamental similarities between the Dennis and Barrett works, despite some differences in dimensions, proportion, feature and detail.
On the issue of copying, her Honour rejected the evidence of independent creation put forward by the two Dennis designers, finding them to be unreliable and lacking in candour.
Her Honour inferred that the first designer was aware of the Barrett works during the creation of the relevant Dennis plan even though “it was not possible to identify the precise means”. This may have been through the designer’s own visual inspection of either the Barrett works or Metricon infringing works, or through detailed descriptions or instructions from other Dennis personnel. Her Honour was also satisfied that the Barrett works had been copied to create the Dennis plan. It was highly significant to her Honour that the designer had no recollection or contemporaneous record of the design process for the Dennis plan. Her Honour noted that while it may be standard industry practice to save successive electronic CAD files over the last file, the designer’s lack of memory, combined with other circumstances affecting her credit, rendered her assertion of an independent design pathway to be untenable.
It was also significant that the second designer had omitted to mention implementing a formal program of competitor display visits by Dennis designers in early 2003 in his role as National Design Manager. Documents establishing that program were produced just prior to trial, including notes describing Metricon houses with a “Porter Davis style alfresco area”. Her Honour rejected the designer’s evidence that he had forgotten about the program and had not been aware of the Barrett works at the time he designed the relevant Dennis plans.
Next step - remedies
Dennis has not sought to appeal the decision of justice Dodds-Streeton and the next step in the proceeding will therefore be a hearing on remedies, in the form of damages or an account of profits at Barrett’s election.
The decision demonstrates that even without evidence to establish exactly how copying occurred, the Court can infer access and copying in circumstances where a witness’ credit has been severely compromised and there is sufficient similarity between the works.
The decision again emphasises that for designers of copyright works such as house plans, there is great value in keeping a comprehensive record of the design process to put the designer in the best possible position to successfully defend any allegation of copyright infringement. Such a record should include dated documents recording details of all instructions given and received, any precursor works used or referred to in creation of the new work, and all the successive drafts of the new work. This is particularly important in industries such as the project home industry where it is accepted practice for competitors to inspect each other’s works and where design choices are limited by cost and functional considerations, leading to similarities in design.