On 18 May 2015, the Full Court of the Federal Court delivered its judgment inTamawood Limited v Habitare Developments Pty Ltd (Administrators Appointed) (Receivers and Managers Appointed)  FCAFC 65. The decision considered nine issues, including the existence and terms of a licence, innocent infringement, authorisation, damages, costs and the elements involved in determining whether there has been a 'reproduction' of a copyright work.
We look at the Court's consideration of the final issue – the elements involved in determining whether there has been a reproduction of a copyright work, specifically, the interaction between a sufficient degree of objective similarity and causal connection.
The judgment confirms that these two elements are discrete, but overlapping, and one should not be considered without considering any impact of the other.
The background to this appeal is long and complex. For present purposes, it suffices to know the following.
- Habitare (a developer) engaged Tamawood (a company which produces plans for, and builds, dwellings) to produce plans for low cost housing to be built by Tamawood for Habitare. The housing was a single storey duplex called the Dunkeld and a two storey duplex called the Torrington.
- Development approval (DA) was sought and obtained for the developments, using Tamawood's plans (with Tamawood's agreement). A condition of the DA was that the development be carried out generally in accordance with Tamawood's plans.
- Habitare and Tamawood were unable to agree upon the terms for the building of the dwellings by Tamawood. Habitare then engaged:
- Mondo (architects) to develop detailed plans for construction of the dwellings. In order to comply with the DA condition, the dwellings had to be generally in accordance with Tamawood's plans; and
- Bloomer (builders) to construct the dwellings.
- The dispute concerned, amongst other things, whether Tamawood's copyright in its plans had been infringed by Habitare, Mondo and Bloomer.
- The primary judge found for Tamawood in respect of the Torrington plan, but not the Dunkeld plan. Tamawood appealed the finding in respect of the plan for the Dunkeld.
Images of Tamawood's Dunkeld plan and Mondo's relevant plan are at paragraph 17 of the judgment.
The two elements of reproduction: The chicken and the egg
There are two elements involving in determining whether there has been a 'reproduction' of a work for the purposes of copyright infringement:
- a sufficient degree of objective similarity between the two works; and
- some causal connection between the two works (i.e. that there has been actual copying).
Let's call the sufficient degree of objective similarity the chicken and causal connection the egg.
The primary judge: The chicken comes first
In determining whether Mondo had reproduced Tamawood's plan, the primary judge said that the first question is whether there is a sufficient degree of objective similarity between the two plans. Only if the answer to this question is yes, do you consider whether there is a causal connection between the plans.
The primary judge found against Tamawood on her Honour's first question (sufficient degree of objectively similarity), finding that Tamawood's plan and Mondo's plan represented significantly different dwellings.
Full Federal Court: It doesn't matter whether the chicken or egg comes first, but the health of the chicken can impact the quality of the egg and the quality of the egg can impact the health of the chicken
Although ultimately disagreeing on whether Mondo had reproduced Tamawood's plan, the three Federal Court judges all agreed that the primary judge had erred in her Honour's approach to the issue of reproduction. For them, the two elements of sufficient degree of objective similarity and causal connection are discrete, but interrelated, and a finding on one element will often be relevant to the other.
Justice Jagot and Justice Murphy
Justice Jagot and Justice Murphy, in a joint judgment, commenced their Honours' analysis by looking at causal connection. Their Honours considered an earlier Mondo plan (the February Mondo plan) in evidence which was strikingly similar to the Dunkeld plan. Their Honours found that the only explanation for this similarity was that, as part of the feedback process for developing the plan, Habitare told Mondo what it wanted, and what it wanted was a development similar enough to the Dunkeld to satisfy the DA condition. From this it was inferred that Habitare used the Dunkeld plan as a basis for instructing Mondo for the Mondo plan in respect of which Tamawood alleged infringement. As such, their Honours found that there was a causal connection between the plans.
Although not directly considering whether there was a sufficient degree of objective similarity in determining the question of causal connection, it is clear that objective similarity did have a part to play in their Honours' reasoning.
Their Honours then proceeded to consider the question of sufficient degree of objective similarity, stating that their conclusion on causal connection is relevant to this question as '[g]iven that substantial reproduction involves the quality of what is taken more than the quantity and is a question of fact and degree, the finding of causal connection between the copyright work and the alleged infringing work cannot be divorced from the assessment of objective similarity.'
Their Honours found that there was a sufficient degree of objective similarity between the two plans. This conclusion was, in summary, based on the fact that it was relatively easy to create the Mondo plan by taking the Dunkeld plan and swapping over two of the bedrooms, making a minor adjustment to the bathroom arrangements, and switching one bedroom with the living area.
Their Honours concluded that there had been a substantial reproduction of the Dunkeld plans as the essential features and substance of the plans had been copied.
Justice Greenwood considered at length the correct approach to the two elements involved in determining whether there has been a reproduction, emphasising that the elements are 'discrete yet overlapping issues.' [original emphasis] His Honour scrambles the egg and makes a chicken flavoured omelette.
His Honour explains that the two issues are discrete as, in the absence of some causal connection, objective similarity cannot give rise to reproduction. However, they overlap because an inference of causal connection can be drawn from a high degree of similarity between the two works, coupled with opportunity to copy and sometimes a failure to explain the independent authorship of the work. This inference is clear from the judgment of Justice Jagot and Justice Murphy outlined above. Justice Greenwood notes that, after this inference is drawn, the questions again become discrete as it still must be shown that the high degree of similarity used to draw the inference is asufficient degree of objective similarity. Further, it may be that the similarity used to infer causal connection is a result of the use of ideas instead of the expression of those ideas.
To bring things full circle, Justice Greenwood also notes that causal connection can be relevant to whether there is a sufficient degree of objective similarity. His Honour states that '[t]he sufficiency of that degree is … influenced by the overlapping nature of the otherwise discrete questions.' His Honour then quotes Justice Lindgren in Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 87 FCR 415 who states:
'where subjective copying occurs there can be expected to be found an infringement, unless it transpires that the product is so dissimilar to the copyright work that the copyright work can no longer be seen in the work produced.'
[Justice Greenwood's emphasis]
Justice Greenwood suggested that, if there is any sequence to the inquiry to be made, it is probably the following:
- The first question is whether initially there appears to be a sufficient degree of resemblance between the works (here his Honour is not stating that the chicken comes first, read on).
- 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 the opportunity to access and use the copyright work and apparent similarities, coupled with an assessment of any contended explanation of the similarities by the putative infringer.
- Where actual copying is found to have occurred, the next question is whether the impugned work exhibits a sufficient degree of objective similarity so as to constitute reproduction of the copyright work, recognising that a finding of copying (causal connection) can add significance to objective similarity.
Justice Greenwood agreed with Justice Jagot and Justice Murphy that there was a causal connection between Tamawood's Dunkeld plan and Mondo's relevant plan. His Honour found it could be inferred that the explanation for the emergence of the February Mondo plan (i.e. the plan pre-dating the Mondo plan said to infringe Tamawood's plan) in a form strikingly similar to the Tamawood's plan, was that Mondo was giving effect to Habitare's instructions given with precise reference to Tamawood's plan.
However, Justice Greenwood disagreed that there was a sufficient degree of objective similarity between the plans. His Honour noted that the fact that Mondo's plan had to be generally in accordance with Tamawood's plan (to comply with the DA condition) did not necessarily mean that Mondo's plan would be a reproduction of Tamawood's plan. His Honour appeared to be focusing on the idea/expression dichotomy in this sense. His Honour concluded that there was not a sufficient degree of objective similarity between the plans so as to constitute reproduction having regard to the'layout and traffic flows and the shapes, proportions and inter-relationships of rooms and other spaces being the elements which permeate the whole of Mondo … project home …'
Confused? Just remember, the state of the chicken can impact the egg and vice a versa
Given the inevitably circular nature of the Full Federal Court's consideration of the interrelationship between the elements of sufficient degree of objective similarity and causal connection, one may be left a little confused as to how to approach such an analysis.
However, the key point is that these two elements should not be approached as independent questions. They overlap and the answer to one can impact the other. This reality should not be ignored when evaluating whether someone is infringing your copyright (or whether you may be infringing someone's copyright).
Whether you decide the chicken or the egg comes first, don't forget that the two, although discrete, are connected. The health of the chicken can, but will not always, impact on the quality of the egg, just as the quality of the egg can, but will not always, impact on the health of the chicken.