[2021] SADC 36

Copyright in plan of subdivision – interlocutory injunction application – balance of convenience weighted against grant of injunction

Mr D’Annunzio sought an interlocutory injunction to restrain the defendant, Willunga Projects, disposing or dealing with its interests in certain land and requiring Willunga Projects to pay proceeds of sale of the land into Court.

On 24 April 2015, Mr D’Annunzio entered into a contract to purchase land from the then registered proprietor, Graeme Edward Inkley, being three vacant allotments, situated at Willunga in South Australia.

Mr D’Annunzio planned to develop a subdivision comprising 35 vacant allotments of the Willunga land. He then retained consultants, including a Mr Davidson, to survey the Willunga land and to prepare plans for the subdivision. The plans for subdivision included a number of matters including the size of the allotments, the location and layout of an internal roadway and storm water drainage.

Mr D’Annunzio asserted that he and Mr Davidson were the joint authors of the draft plans and subsequent plans created by them or either of them in respect of the subdivision of the Willunga land. For the purposes of the injunction application, Davison DCJ accepted this was the case.

Mr D’Annunzio was unable to settle on the contract to purchase the Willunga land. On or about 10 August 2020, Mr Inkley transferred the Willunga land to Willunga Projects.

Mr D’Annunzio became aware that Willlunga Projects purchased the Willunga land and caused it to be subdivided, and had placed residential allotments resulting from the subdivision on the market. Mr D’Annunzio asserts that in doing so, Willunga Projects had infringed Mr D’Annunzio’s copyright in the plans of subdivision prepared by him and Mr Davidson.

Judge Davison accepted for the purposes of the application, and “notwithstanding that it could be expected there to be certain generic qualities to a subdivision”, that there were sufficient objective similarities between Messrs D’Annunzio and Davidson’s 2018 plan and the Willunga Projects subdivision plan to justify a finding on a prima facie basis that Willunga Projects had infringed the copyright of the applicant by reproducing the plan. Her Honour was therefore satisfied for the purposes of this application that Mr D’Annunzio had established a prima facie case, in the sense that this term is used in ABC v O’Neill (2006) 227 CLR 57.

The difficulty for Mr D’Annunzio lay in the balance of convenience. Mr D’Annunzio’s claim was based on an asserted right to an account of profits from the infringing conduct. Her Honour observed, at [40]:

The applicant has adduced no evidence that the plans were such an essential feature of the subdivision. Indeed, the evidence before me suggests the contrary conclusion. That is, the subdivision could have been undertaken without using the plans of the applicant. If that is the case, the accounting of profits requires an inquiry as to what part, if any, of the profits, was attributable to the drawings of the applicant. This is obviously not the whole of the net proceeds.

Her Honour held that the risk that Mr D’Annunzio would succeed at trial but would be unable to receive the profits (because they have been disbursed) outweighed the damage and inconvenience that would be suffered by Willunga Projects if the injunction were to be granted. In particular, her Honour found that Willunga Projects would be significantly inhibited or prevented from carrying on with the project if the injunction were granted. Her Honour observed that the risk to Mr D’Annunzio could be addressed by an order for an urgent trial.

The authors observe that the relief which Mr D’Annunzio sought was really in the nature of a Mareva injunction or freezing order (and, indeed, Willunga Projects made that point to Davison J). While Davison J did not refer to the principles involved in determining an application for a freezing order, the authors consider that the result would have been the same. A freezing order is made to prevent the frustration or inhibition of the Court’s process by seeking to meet a danger that a judgment of the Court may be wholly or partly unsatisfied: Cardile v LED Builders Pty Limited (1999) 198 CLR 380 at [25]. It did not appear that Mr D’Annunzio had a sufficiently clear claim to the amount of profits he sought to have frozen, and it was far from clear that there was sufficient risk that Willunga Projects would not be good for any judgment in favour of Mr D’Annunzio.