Dixon Projects Pty Ltd v Hallmark Homes Pty Ltd [2004] FCA 118 (20 February 2004)

Last Updated: 20 February 2004

FEDERAL COURT OF AUSTRALIA

Dixon Projects Pty Ltd v Hallmark Homes Pty Ltd
[2004] FCA 118

COPYRIGHT - infringement - architectural plans - project homes - whether copyright subsists - whether indirect copying - whether substantial part of work reproduced





Copyright Act 1968 (Cth)
Trade Practices Act 1974 (Cth)



SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466 discussed
Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138; (1999) 87 FCR 415 (FC) cited
Ancher, Mortlock, Murray & Wooley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278 considered
















DIXON PROJECTS PTY LTD ACN 010 828 172 v HALLMARK HOMES PTY LTD ACN 007 959 524
Q159 OF 2001

COOPER J
BRISBANE
20 FEBRUARY 2004

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q159 OF 2001

BETWEEN:	DIXON PROJECTS PTY LTD ACN 010 828 172 APPLICANT
AND:	HALLMARK HOMES PTY LTD ACN 007 959 524 RESPONDENT
JUDGE:	COOPER J
DATE OF ORDER:	20 FEBRUARY 2004
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1. The application is dismissed.

2. The applicant pay the respondent’s costs of and incidental to the application including reserved costs, to be taxed if not agreed.






















Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q159 OF 2001

BETWEEN:	DIXON PROJECTS PTY LTD ACN 010 828 172 APPLICANT
AND:	HALLMARK HOMES PTY LTD ACN 007 959 524 RESPONDENT

JUDGE:	COOPER J
DATE:	20 FEBRUARY 2004
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1 The applicant is a project builder. It claims ownership of plans and drawings of a house known as the Grand Vista (‘the Grand Vista Design’). The applicant has constructed display homes built to the Grand Vista Design (‘the Grand Vista Houses’). The applicant claims that at all material times copyright subsisted in the Grand Vista Design and the Grand Vista Houses, and that it was the owner of that copyright.

2 The respondent is a project builder. It produced plans and drawings for a house known as the Montego (‘the Montego Plans’). It has built, or caused to be built, houses in accordance with the Montego Plans (‘the Montego Houses’).

3 The applicant alleges that each of the Montego Houses and the Montego Plans reproduces the whole or a substantial part of the Grand Vista Design, in that it is alleged that the layout of accommodation provided and the planning and relationship of the rooms are materially the same in each case. Accordingly, the applicant alleges that the production of the Montego Plans and the construction of the Montego Houses by the respondent, without the licence of the applicant, infringed its copyright in the Grand Vista Design and the Grand Vista Houses.

4 The applicant also alleges that in marketing houses to be constructed to the Montego Plans, the respondent is representing that the Montego Plans were lawfully produced without copying substantial parts of the works of the applicant, and that the respondent could lawfully build, or cause to be built, houses in accordance with the Montego Plans. The applicant alleges that because the Montego Plans and the Montego Houses infringe its copyright in the Grand Vista Design, the representations are false and misleading and are in breach of s 52 of the Trade Practices Act 1974 (Cth) (‘the TP Act’).

5 The applicant brings its claims for alleged infringement of copyright in the Grand Vista Design and the Grand Vista Houses by virtue of, and pursuant to, the provisions of the Copyright Act 1968 (Cth) (‘the Act’). The applicant’s claim for relief under the TP Act is totally dependent upon the applicant succeeding on its claim for infringement of copyright.

6 The respondent denies that the applicant is the owner of any copyright in the Grand Vista Design or the Grand Vista Houses, or that the Montego Plans or the Montego Houses infringe any copyright in the Grand Vista Design or the Grand Vista Houses.

7 The respondent alleges that the Montego Plans:

(a) were independently produced by the respondent by altering and further developing the respondent’s floor plan to a house known as the ‘Calais’, which itself was produced by altering and developing the respondent’s floor plan to a house known as the ‘Toorak’;
(b) were produced without the respondent copying the whole or any part of the Grand Vista Design, or the whole or any part of any of the Grand Vista Houses; and
(c) are substantially dissimilar to the Grand Vista Design and the Grand Vista Houses.

8 The respondent further alleges that the Montego Houses were constructed in accordance with the Montego Plans without copying the whole or any part of the Grand Vista Design or the whole or any part of the Grand Vista Houses, and that the Montego Houses are dissimilar to the Grand Vista Design and Grand Vista Houses.

9 Finally, the respondent denies that it made any representations in contravention of s 52 of the TP Act as alleged or at all.

10 The applicant’s claim to ownership of copyright in the Grand Vista Design and the Grand Vista Houses is set out in pars 3, 4 and 5 of its further amended statement of claim, which states:

‘3. The Applicant is and at all material times was the owner of copyright subsisting in Australia in the plans and drawings of a house known as the ‘Grand Vista’ (the ‘Grand Vista Design’).

PARTICULARS

(i) The Grand Vista Design was authored by Raymond Sweeney on or about December 1996;

(ii) Raymond Sweeney was at all material times an Australian citizen resident in Australia;

(iii) By written agreement dated 29 June 1995, as amended on 2 December 1998 Raymond Sweeney assigned to the Applicant all rights in the Grand Vista Design;

(iv) A copy of the Grand Vista Design is available for inspection by appointment;

(v) the Grand Vista Design is expressed, inter alia, in the following two-dimensional works:

A original sketch of the ‘Silver Palm 97’ dated December 1996, subsequently renamed the ‘Grand Vista’;

B floorplan for the ‘Grand Vista’, subsequently represented in the brochure for the Grand Vista Design marked ‘copyright 1997’;

C floorplan for the house built at Lot 104 Tallowood Place, Twin Waters, Queensland.

4. The Applicant has constructed and been the owner of display homes built from the Grand Vista Design, each such home being known as the ‘Grand Vista’ (‘the Grand Vistas’).

PARTICULARS

The following houses, built at Twin Waters, Queensland, comprise the Grand Vistas:

(i) Lot 104, Tallowood Place;

(ii) Lot 32 Portmarnock Court;

(iii) Lots 367 and 368 Glenwood Place (the same house); and

(iv) Lot 281 Karinya Place.

5. In the premises of paragraphs 3 and 4 hereof:

(a) copyright subsists in the Grand Vista Design and the Grand Vistas;

(b) at all material times the Applicant has been the owner of that copyright.

(Original emphasis)

11 Copies of each of the works in respect of which copyright was claimed were provided by the solicitors for the applicant and those works are Ex 17.

OWNERSHIP OF COPYRIGHT

12 The documents specified in par 3(v) A, B and C of the further amended statement of claim are attached to the affidavit of architect Raymond Sweeney (Ex 2 in the proceedings) and respectively marked Ex RJMS4, Ex RJMS5 and Ex RJMS6. Sweeney gave evidence, which I accept, that he drew up an original sketch plan (Ex RJMS4) in about December 1996, which he labelled ‘Silver Palm 97’. The design was drawn up at the direction of the applicant to become one of the range of project houses to be marketed by the applicant in 1997. The original ‘Silver Palm 97’ design was re-named ‘Grand Vista’ by the applicant and was the basis of the CAD drawings (Ex RJMS5) produced by the applicant which appeared in the applicant’s brochure bearing a copyright mark dated 1997. The floor plan for the display home built on Lot 104, Tallowood Place, Twin Waters, Queensland is dated 14 February 1997 (Ex RJMS6). Sweeney gave evidence that the floor plan for the display home was drawn up by Shane Keiler who, I find, was an employee of the applicant in February 1997. The floor plan was drawn up by Keiler in the course of his employment with the applicant, notwithstanding that the work was done under the direction of Sweeney.

13 The provision by Sweeney of professional services as an architect to the applicant is pursuant to a written agreement dated 29 June 1995, made between Sweeney personally and the applicant (Ex RJMS2 of Ex 2). The original agreement has been amended by an addendum of 1 October 1996 and a further addendum of 2 December 1998 (Ex RJMS3 of Ex 2). Attached to each agreement is a plan list which contains plans drawn by Sweeney for the applicant in accordance with the terms of the agreement. The schedule attached to the addendum dated 2 December 1998 discloses that the Grand Vista standard designs appeared in the applicant’s brochure dated 1 February 1997.

14 At the time he prepared the original draft of the Grand Vista Design and at the time he supervised and directed the preparation and final form of the CAD drawings and the display home floor plan, Sweeney was a director and employee of a company named Primal Pty Ltd (‘Primal’). Primal was the trustee of the Primal Trust, which carried on a business including the business of an architect trading under the name ‘Ray Sweeney Architect’.

15 Prior to approximately 15 or 16 April 1997, the applicant maintained its own architectural drawing section and prepared its own CAD drawings. Those drawings were prepared by either Shane Keiler or Bruce Schofield, both employees of the applicant. On or about 15 or 16 April 1997, the applicant closed its drawing section and the necessary architectural drawing services were thereafter provided by Primal, who employed both Keiler and Schofield to work as architectural draftsmen.

16 On 24 April 1997, an amendment was made to the floor plan for the display home to be constructed at Tallowood Place. The change involved a sliding door being provided to the garage, and the pergola pier being moved. That change was drawn by Schofield who was then an employee of Primal.

17 The respondent submits that as Sweeney was employed by Primal and prepared the original sketch drawing of the ‘Silver Palm 97’ design (Ex RJMS4) in his capacity of an employee of Primal, ownership in the copyright in that work vested in Primal: s 35(6) of the Act. Accordingly, the respondent contends that Sweeney had no rights in the copyright in the work to assign to the applicant.

18 In its final submission, the respondent conceded that the applicant owned the copyright in the floor plan for the display home at Tallowood Place, Twin Waters (Ex RJMS5 to Ex 2). However, the respondent submits that there is no acceptable evidence as to who produced the CAD drawing contained in Ex 17, and therefore it continues to deny the ownership of the applicant in the works contained in Ex 17.

19 The agreement dated 29 June 1995, on its proper construction is one between Sweeney (personally as architect) and the applicant (as client) for the provision of professional services. Sweeney was the ‘author’ for the purposes of s 35(2) of the Act of the work constituted by the original ‘Silver Palm 97’ design which became the Grand Vista Design. The works were produced by Sweeney for the applicant pursuant to the agreement dated 29 June 1995 and subject to the terms of that agreement. Primal was fixed with the knowledge of Sweeney. He was one of its two directors, the other being Sweeney’s wife, and he had the conduct of the architectural practice carried on by Primal as a trust business under the name of Ray Sweeney Architect. Although Primal, because of its employment arrangements with Sweeney, received the financial benefits paid or payable by the applicant, such work as it did or permitted Sweeney to do, was in satisfaction of his obligations as architect under the agreement. The work was not created by Sweeney in pursuance of the terms of his employment by Primal under a contract of service or apprenticeship within the meaning of s 35(6) of the Act.

20 The applicant obtained ownership of the copyright in the original drawing of the ‘Silver Palm 97’ design drawn by Sweeney in December 1996 by the operation of cl 6 of the Agreement dated 29 June 1995.

21 I am satisfied that the CAD drawing which formed part of Ex 17 was produced in the applicant’s drawing section prior to 1 February 1997 and was incorporated in the brochure bearing the 1997 copyright mark which was issued on or about 1 February 1997. I am satisfied that the drawing was prepared by one or more employees of the applicant, working under the direction of Sweeney, in the course of their employment under a contract of service with the applicant. The applicant obtained the ownership of the copyright in the work constituted by the CAD drawing of the floor plan by the operation of s 35(6) of the Act.

22 It follows that I am satisfied that the applicant has copyright in each of the works contained in Ex 17 which constitute the Grand Vista Design.

BREACH OF COPYRIGHT

23 The copyright which the applicant has in the Grand Vista Design and the Grand Vista Houses derives from the operation of the Act, and not otherwise: s 8. The acts comprised in the copyright are those acts which the owner of the copyright has the exclusive right to do and includes the right to authorise another person to do the act in relation to the work: s 13(1) and (2). The doing of an act in relation to a work includes the doing of an act in relation to a substantial part of the work, and the reproduction, adaptation or copy of a work includes a reproduction, adaptation or copy of a substantial part of the work: s 14(1).

24 The Grand Vista Design and the Grand Vista Houses are artistic works for the purposes of the Act. Copyright in the case of an artistic work is the exclusive right to do all or any of the following acts (s 31(1)(b)):

(a) to reproduce the work in a material form;
(b) to publish the work; and
(c) to communicate the work to the public.

25 Subject to the Act, the copyright in a work is infringed by a person who, not being the owner of the copyright and without the licence of the copyright owner, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright: s 36(1).

26 The act of ‘reproduction’ is not defined under the Act, however it has been considered by many courts in this country and in the United Kingdom. In SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466 at 472, Gibbs CJ, with whom Mason and Brennan JJ agreed, said:

‘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".

See also Eagle Homes Pty Ltd v Austec Homes Pty Ltd [1999] FCA 138; (1999) 87 FCR 415 (FC) at 419 per Lindgren J, with whom Finkelstein and Weinberg JJ agreed.

27 In determining whether a ‘substantial part’ of a work has been reproduced, greater weight must be given to the quality of that which is reproduced than the quantity of it: SW Hart & Co Pty Ltd v Edwards Hot Water Systems at 474, 481, 503; Eagle Homes Pty Ltd v Austec Homes at 419. One must also examine the importance of the alleged substantial part in relation to the work as a whole: Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 at 494; Collier Constructions Pty Ltd v Foskett Pty Ltd (1991) 20 IPR 666 at 669.

28 Where an author produces a substantially similar result by independent work, the result is not a ‘reproduction’ because there is ‘no actual use of the copyright work which is one of the two essential elements of reproduction’: SW Hart & Co Pty Ltd v Edwards Hot Water Systems at 472; Eagle Homes v Austec Homes at 434, 431.

29 In Ancher, Mortlock, Murray & Wooley Pty Ltd v Hooker Homes Pty Ltd [1971] 2 NSWLR 278, Street J said at 284:

‘There is undoubted force in the contention that the field of architecture is traditionally one in which new ideas are constantly evolving and being developed. Applications of new architectural ideas and concepts by those who follow the leaders in their profession are legitimate, and will not be restrained by the copyright laws. There is a clear distinction between the protection which the law will afford to an architect’s plans on the one hand, and, on the other hand, the absence of any protection to the architectural idea or concept which may happen to be expressed in a given set of plans. The same distinction applies in the case of a completed house.

The copyright law will prevent the building of another house which reproduces a substantial part of the original house where such reproduction comes about as a result of a copying of the physical object itself. But the law does not restrict the application and development of architectural concepts and styles: original concepts and styles may, without risk of infringement, be applied and developed by other architects in subsequent buildings. The law does not prevent one architect from following in the footsteps of a colleague; it does prevent him from copying the plans of his colleague so as to enable him to follow those footsteps; and it does prevent him from physically reproducing those footsteps and thereby following them.

I make these general observations to underline the importance that will attach in this and in any other copyright suit to the question of how the alleged infringing work came into existence. An architect may legitimately inspect an original plan or house and then, having absorbed the architectural concept and appreciated the architectural style represented therein, return to his own drawing board and apply that concept and style to an original plan prepared by him and in due course to a house built to such plan. There is a dividing line separating such a legitimate process from an inspection followed by a later copying of a substantial part of the physical object inspected, even though the copying be from memory; the latter exercise does infringe. In many instances it will be difficult to state categorically whether the dividing line has been crossed. Cases will not always be black or white where the alleged copying is from memory. The borderline area is clouded by a band of grey within which opinions and conclusions may differ. Within this grey band conflicting answers could without error be given to the questions - is that plan or house only a copy of the concept or style of the original and hence legitimate? , or is it a copy of the author’s manifestation of that concept or style and hence an infringement?

In this grey band, in answering such questions as these, it can be of critical importance to know how the architect who is said to have infringed went about the preparation and drawing of his plan. It is only after making a finding, either on direct evidence or by inference, of copying, that is to say, of unfair or unconscientious use of the author’s plan or building, that significance will attach to the degree of similarity. In a practical sense, of course, the degree of similarity is frequently a most telling element on the question of copying. To some extent the two aspects overlap, but they are distinct in point of principle and they must be considered with this distinction in mind.’

30 This approach has been consistently applied in this Court when questions involving allegations of infringement of house plans have arisen: see for example LED Builders Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447 at 450 - 453; Eagle Homes v Austec Homes at 434 - 437.

31 The Montego Plans and the Montego Houses came about in the following way. Graham Gilbertson is one of two directors of the respondent. Prior to commencing his own business with Anthony Painter in 1982, he held management positions with Jennings Industries Ltd, a well-known project builder. The respondent carried on the business of a project builder in South Australia until it relocated its business to the Gold Coast region of Queensland in December 1990. From the commencement of the respondent’s business, Gilbertson and Painter drew rough sketches for new designs which they then had trained draftsmen develop into working designs. Further, from time to time, new designs would be created by adapting an already existing plan from the respondent’s plan portfolio. At all times relevant to these proceedings, the respondent employed Gerard Walker as an architectural draftsman. Walker holds an Associate Diploma in Built Environment Technology which he obtained from the Queensland Institute of Technology in 1981 or thereabouts.

32 In mid-2000, the respondent decided to expand its business into the Sunshine Coast region of Queensland. To that end, Gilbertson visited the Sunshine Coast area to see what land was available, the types and sizes of lots available and the size of the houses being built in new estates. Gilbertson gave evidence, which I accept, that he did not visit display homes of any other builder during this time and did not visit any home constructed, or in the course of construction, by the applicant. Many of the allotments he saw were waterfront lots facing canals or lots facing golf courses, some of which had views over water courses. As a result of his inspection, the respondent purchased land in the Pelican Waters development near Caloundra and later at the Mountain Creek development near Mooloolaba. In February 2001, the respondent purchased Lot 301 Karinya Place in the Twin Waters development north of Maroochydore, with the intention of building a display home on site. Lot 301 was one of a number of lots on an island in a lake accessed by a bridge. The rear boundary of the lot backed onto the lake.

33 At the time the respondent purchased Lot 301, it was constructing a house at Forest Lake, Brisbane to a design which it called its ‘Calais’ design. On or about 16 February 2001, while at the Forest Lake construction site, Gilbertson had a conversation with Shawn Haswell, who had been recently appointed supervisor/manager for the respondent’s Sunshine Coast expansion. The purpose of the meeting was to show Haswell the Calais design and to discuss the suitability of this design for the Sunshine Coast market.

34 Haswell had been previously employed by the Dixon Group of companies in Brisbane and since 1997 had been employed by the applicant on the Sunshine Coast as a construction manager responsible for building supervision. Haswell commenced employment with the respondent on 8 January 2001. He lived on the Sunshine Coast.

35 In his affidavit he gave the following evidence as to what occurred in his meeting with Gilbertson at Forest Lake:

‘8. On or about 9 February 2001, Graham Gilbertson called and arranged for me to meet him at a house which was being built by Hallmark Homes in accordance with its ‘Calais’ design at Forest Lake (and was close to completion). At that stage the house was Hallmark Homes’ only Calais display house. I had not seen the Calais display house prior to this visit. My meeting with Mr Gilbertson was arranged as Mr Gilbertson said he was intending to visit the house on the date proposed for the meeting (16 February 2001) in any event and I was due to visit the house as part of my familiarisation with the Hallmark Homes product.

9. On 16 February 2001, I met Mr Gilbertson at the Calais house located at 8 Ascot Avenue in Forest Lake, as arranged. Mr Gilbertson showed me through the house and said the following words (or words to like effect):

‘What do you think of the Calais design for the Sunshine Coast market?’

10. I thought the general style was suitable for the Sunshine Coast market, however it needed to be more "open" and have a fairly extensive use of glass at the rear of the house. The Calais display house had a separate rumpus room at the rear, separated from the house by a wall which I thought should be removed.

11. I replied to Mr Gilbertson with the following words (or words to like effect):

‘You want to open the house up and have one big area at the back, with more glass. You should not wall in the rumpus room with double doors and should not have a full height wall separating the kitchen from the rumpus room.’

12. I also said to Mr Gilbertson words to this effect:

‘Houses of this size being built on the Sunshine Coast these days generally have canal or golf course views. You therefore need an open area with lots of glass at the back.’

13. As I spoke with Mr Gilbertson we walked throughout the rear of the house. We spoke on the subject for approximately 15 to 20 minutes. Mr Gilbertson did not take any notes of my comments as I spoke to him. I did not view a plan of the Calais with Mr Gilbertson as I spoke to him, although I had seen the design in Hallmark’s sales brochures prior to the meeting in the general course of becoming familiar with Hallmark’s products.

14. Other than as indicated above, I did not discuss with Mr Gilbertson or with any other person specific details of how to redesign the Calais, such as which walls should be relocated.

15. When I was discussing the alterations to the Calais plan with Mr Gilbertson, I did not have in mind the Grand Vista or any other Dixon Project design. I was thinking of the general style of houses of this size that were then currently being built on the Sunshine Coast. Such houses often have all living areas, and the main bedroom, at the rear of the house. A lot of glass is used in order to take advantage of the views of canals and golf courses to which these houses are often adjacent.’

36 He gave further evidence of a meeting with Gilbertson on 9 March 2001:

‘16. On or about 9 March 2001, Mr Gilbertson visited me on the Sunshine Coast while I was involved in renovating the Sunshine Coast office for Hallmark Homes. About this time, Mr Gilbertson used to visit the Sunshine Coast approximately once per fortnight to discuss with me general issues concerning the business.

17. On this occasion, Mr Gilbertson had with him an A4 brochure plan of the Calais with sketched alterations on it in red pen. Annexed hereto and marked ‘SH2’ is a true copy of that sketch plan. Mr Gilbertson showed me the sketch plan and said words to the effect:

‘Is that what you mean about opening up the back and rumpus room?’

I replied with words to the effect:

‘Yes, that’s it. There is a lot more glass.’

18. This was the extent of my conversation with Mr Gilbertson about redesign of the Calais. The conversation was very brief, lasting approximately a minute or two at most. I was not subsequently involved with the redesign process.’
(Original emphasis)

37 Haswell was cross-examined with a view to showing that he advised Gilbertson to make specific changes to the Calais plan to replicate the essential features of the Grand Vista Design. Haswell denied that he had done so either consciously or unconsciously. His cross-examination ended with the following exchange:

‘You see, you don’t think it’s possible, do you - and I’m not for a moment suggesting that anything that you did was deliberate but isn’t it possible that in trying to contribute to Mr Gilbertson’s desire to change the Calais you told him some of the features that you were familiar with from the Grand Vista, because the Grand Vista was, as you know, an extremely successful plan that your former employer had built? --- No, I don’t believe I did.

But is it possible? --- Well, I don’t believe - I don't believe I was thinking along those lines. I believe I was thinking with the opening up of the rear of the house like removing the rumpus room walls, I was thinking of the general concept. I mean I’ve seen many display homes from many builders on the Sunshine Coast and they all have an open feeling at the rear of the house, because if you’re on a golf course or I mean - bearing in mind a lot of the land up there is golf course, canals, or whatever it may be, there’s a lot of glass at the rear. They don’t have rooms closed off at the rear of the house. So it was a general concept I would have had in my mind and I’ve seen many - obviously seen many, many different display homes in my time up there.’

I accept the evidence of Haswell. He is no longer employed by the respondent and has no interest in the outcome of the litigation.

38 Gilbertson gave the following evidence of his recollection of the meeting:

‘39. On or about 16 February 2001, when the Calais display house was very close to completion, I met Mr Haswell as arranged and walked through the Calais display house with him. Set out below is my recollection of the effect of the words used by me and by Mr Haswell during our conversation:

GILBERTSON: What do you think of the Calais design for the Sunshine Coast market? What do we need to do to the design to make it suitable for the Sunshine Coast market?

HASWELL: You need to open it up a lot more.

GILBERTSON: How much do we need to open it up?

HASWELL: There needs to be full visibility to the back yard when looking out from the Kitchen. The lady of the house wants to be able to stand in the kitchen and look out at the views. There is no need for a separate rumpus room. People on the Sunshine Coast like to have a big open living area that incorporates the kitchen area. A lot of entertaining is done outside adjacent to the casual living area.

40. Overall my discussion with Mr Haswell regarding the design for the Sunshine Coast area lasted about 15 to 20 minutes as we walked through the rear of the house, although we were not speaking for that entire time. The above dialogue took no more than a few minutes. In light of those comments of Mr Haswell we also discussed a reconfiguration of the kitchen layout to accommodate the suggested "opening up" of the casual living area. For example, a wall that had overhead cupboards was to be removed between the rumpus room and the kitchen and a breakfast bar was to be installed. Throughout the conversation Mr Haswell’s answers to my queries were simply and specific. We talked briefly about the Front Entry and agreed that it would be advantageous if there was a clear view from the Entry through the Living room to the rear outdoor living area.

41. During the course of that conversation neither Mr Haswell nor myself made any mention of Dixon Projects’ Grand Vista plans or houses; nor did we view any such plans or visit or view any of the Grand Vista houses the subject of this proceeding. Nor was this done on any other occasion.’

39 In consequence of this discussion with Haswell, Gilbertson made amendments to the floor plan design of the Calais house. In his affidavit he deposed:

‘42. Later on or about 16 February 2001 I made amendments to an A4 brochure plan of the Calais in red pen to take account of Mr Haswell’s comments to "open up" the rear of the house. On that plan I:

(a) removed the dividing wall between the Family/Meals area and the Rumpus room to provide a completely open area in keeping with the design criteria already used in the San Remo design;

(b) replaced the external wall adjacent to the Meals area with a window to provide a better outlook to the outdoor area in keeping with the design criteria used in the San Remo design;

(c) changed the shape of the top left corner of the Family Room to create a shape similar to the San Remo design and allow for the inclusion of an underroof patio adjacent to the Meals/Family room;

(d) altered the shape of the kitchen bench to provide a 90 degree angle to the breakfast bar area so that it became a point of difference to the Calais and San Remo designs;

(e) deleted the wide window to the Kitchen external wall to facilitate relocation of the overhead cupboards from the Kitchen/Rumpus wall to the external wall;

(f) enlarged the Entry area to allow for double entry doors and double side light windows which resulted in a decreased Study area. This also created a realignment of the Entry to provide a clear line of sight through the Living Room to the outdoor area;

(g) extended the left side of the house to the left to allow for an enlarged Bedroom and a longer more rectangular Living Room as well as a larger Entry;

(h) aligned the external left wall of Bed 1 with the external left wall of the garage to facilitate the criteria set out in (g) above as well as modifying the roof line;

(i) provided for the Ensuite off Bed 1 to protrude from the left external wall of the Bed 1/Garage alignment to accommodate an enlarged Ensuite and walk in Robe.’

40 His evidence of the meeting with Haswell on 9 March 2001 was in similar terms.

41 On 12 March 2001, Gilbertson showed the Calais plan which he had marked up in red pen to Walker, asking him to tidy up the plan and tell him whether it would work. To this end, Walker prepared a 1:100 scale plan in pencil.

42 Walker gave the following evidence of his involvement in the development of the Montego Plans. He deposed:

‘B. Development of the Montego Design

8. I do not recall exactly when I commenced working on a new design that was to become the Montego, other than that it was in early 2001. I do not keep a record of when a new design is commenced.

9. I recall that one morning in early 2001 Mr Gilbertson came into my office with an A4 size brochure plan of a Calais (an existing plan in Hallmark Homes’ portfolio of plans) that had been marked in red pen. I recall Mr Gilbertson said words to me to the effect, "Can you get this plan to work?". Mr Gilbertson often said such words to me when he presented me with an idea for a new design. I could see the concept Mr Gilbertson was trying to achieve from the red pen notations on the Calais plan; I did not need him to explain it to me in detail. Annexed hereto and marked ‘GW1’ is a true copy of that marked up plan.

10. I worked on Mr Gilbertson’s new design idea straight away and in accordance with my usual practice, I placed a piece of tracing paper over the marked up Calais plan and drew a rough sketch on the tracing paper to reflect Mr Gilbertson’s new design. Annexed hereto and marked ‘GW2’ is a true copy of that rough sketch.

11. I then put the tracing paper to one side until I saw Mr Gilbertson again. As Mr Gilbertson usually comes to see me, rather than vice versa, I believe Mr Gilbertson came to see me later that day and discussed the plan.

12. Following that discussion, later that day or possibly the next day I drew a 1:100 scale pencil sketch of the Montego on tracing paper to reflect the matters I had discussed with Mr Gilbertson. Annexed hereto and marked ‘GW3’ is a true copy of the plan.

13. I do not specifically recall my conversations with Mr Gilbertson regarding the development of the new design from the Calais plan altered in red pen. However, having reviewed the attachments ‘GW1’, ‘GW2’ and ‘GW3’ for the purpose of preparing this statement, I note the following matters:

•	as indicated on ‘GW1’, the walls between the Rumpus and Family areas were to be removed;

•

as indicated on ‘GW1’, the wall between the Rumpus and the Kitchen that is a full height solid wall on the Calais design was to be removed and a breakfast bar was to be used in lieu of the wall. The overhead cupboards on that wall on the Calais were to be relocated to the eastern wall of the Kitchen;

•	the arrow on the top wall of the Rumpus room indicated that Mr Gilbertson wanted there to be access at that point from the inside to the outside. Ultimately this was not incorporated into the new design;

•	the top left corner of the Living area was amended to incorporate a greater use of glass. The "honeycomb" effect of that corner, namely an angled window with lot of glass on either side of it, had been used on a number of plans within Hallmark Homes’ portfolio that had previously been developed;

•

in producing the sketch plans I generally do not get too far ahead of my discussions with Mr Gilbertson. When I produced ‘GW2’ I purposely left the back of the house unresolved; I did not want to possibly waste time designing that part of the house when I knew that I would be able to discuss it with Mr Gilbertson next time I saw him. ‘GW3’ indicates the parts of the rear of the house that were to be solid walls and the parts that were to be glass. I drew these after discussing the matter with Mr Gilbertson;

•

the "height" of the Living area was decreased by one metre such that the exterior wall of the Living area did not align with the top exterior wall of Bedroom 1. As indicated on ‘GW2’, I in fact rotated Bedroom 1 through a quadrant to effectively turn it on its side, which resulted in the two walls being aligned. I am allowed a bit of licence to make such amendments and I deliberately worked on this part of the design to have the walls aligned;

•	the red pen notations on ‘GW1’ indicate a symmetry to the Entry by extending the left side of the design to the left, narrowing the width of the Study and using centred double entry doors;

•

standing in the Entry of the Calais it is not possible to see though [sic] the house into the backyard. Consistent with the general approach of developing the new design to "open up" the Calais (as told to me by Mr Gilbertson), dwarf walls were used between the Entry and the Living area. The open effect would not have been realised if full height walls were used;

•	‘GW1’ indicates that the right wall of the Study is to be removed to make it a walk-through "open plan" Study;

•	although ‘GW1’ includes a notation that the lower exterior wall of Bedroom 3 is to align with the lower exterior wall of Bedroom 2, this was not ultimately incorporated into the new design;

•

‘GW1’ indicates that the pathway to the porch is to remain three metres wide ("3000") and the width of the Garage is decreased from six metres to 5.7 meters. On ‘GW2’ the width of the Garage has been decreased accordingly, yet the path has increased to 3.4 metres wide. The Garage on ‘GW3’ is 5.7 metres wide and the pathway has returned to three metres wide;

•	the notation on ‘GW2’ "Toorak type angles???" is in Mr Gilbertson’s handwriting. From this I understood Mr Gilbertson wanted me to draw the angles indicated to see how they would affect the "look" of the design;

•	the notation "-300" on ‘GW2’ indicated that 300 millimetres or one foot was to be removed from the centre of the house.

14. At no time during the development of the Montego design did Mr Gilbertson mention:

(a) Dixon Projects or Dixon Projects’ plans;
(b) any other builder’s plans;
(c) subject to paragraph 20 below, any reason why the new design was being developed.

15. During all my said conversations with Mr Gilbertson in the period March to May 2001 concerning the development of the Montego design, no mention was made by either Mr Gilbertson or myself of Dixon Projects or Grand Vista houses or plans; nor did we view such plans or visit or view any of the Grand Vista houses the subject of this proceeding. Nor was that done on any other occasion during the process of developing the Montego plan and constructing the Montego House.

16. If Mr Gilbertson had discussed Dixon Projects’ or another builder’s plans I believe it would have stuck in my mind as it would have been unusual for him to have done so. In my experience other builders’ plans are not discussed at Hallmark Homes.

C. Montego House

17. I believe the 1:100 scale pencil hand-drawn sketch plan was put aside for a few months before I prepared the CAD drawings of it. My computer records indicate that the Montego LH CAD drawing was created on 2 May 2001 and the Montego RH CAD drawing was created on 4 June 2001. Annexed hereto and together marked ‘GW4’ are true copies of the LH and RH CAD drawings.
...
20. I do not recall specifically when it was said, however I do recall Mr Gilbertson said to me at some stage during the development of the Montego (possibly after I showed him my rough tracing paper sketch) words to the effect that the new design would be:

(a) a good plan to be used in the Sunshine Coast area. (I was aware at that stage that Hallmark Homes was entering the Sunshine Coast market); and
(b) suitable for lots that had views of canals and golf courses which tended to be a feature of lots in the Sunshine Coast area.

21. During this period of developing the Montego plan, from about February/March 2001 to May/June 2001, Mr Gilbertson told me he wanted the design to be such that a person could walk in the Entry and see through the Living area into the back yard. For that reason a lot of glass was used at the rear of the house. Mr Gilbertson said he wanted to "open up" the Calais design when developing the Montego design.
...
F. Grand Vista Design

29. I have never see a Grand Vista house other than seeing the house at Lot 300 when visiting the Montego at Lot 301 in late 2002. I have never been inside a Grand Vista house. I have never been inside a Dixon Projects display house.

30. Prior to the allegations that are the subject of these proceedings being raised, I had never been aware of nor shown a copy of the Grand Vista design, depicted as either a floorplan (in a sketch, handdrawn plan, CAD drawing or brochure plan form or in a newspaper advertisement) or a representation of a constructed house. I was first shown a copy of the Grand Vista floorplan shortly after it was sent to Mr Gilbertson via facsimile from Mr Lev Mizikovsky at Dixon Projects on or about 6 June 2001. At that time I saw the floorplan for only a few seconds. Annexed hereto and marked ‘GW9’ is a true copy of the floorplan that was shown to me.’
(Original emphasis)

43 Walker specifically addressed those aspects of the Montego Plan which Sweeney alleged were copied from the Grand Vista Design in his second affidavit. Walker said:

‘7. In relation to paragraph 17(b) of Mr Sweeney’s second affidavit, I note the following:

(a) on the red pen plan that is Exhibit "GW1" to my first affidavit, Mr Gilbertson has simply drawn two boxes for the ensuite and walk-in-robe areas. I therefore designed the detail of those areas, namely the positions of the shelving in the walk-in-robe and the positions of the toilet, shower and sink in the ensuite, myself, as noted on Exhibit GW2 to my first affidavit.

I made the access to the walk-in-robe from the ensuite as I thought this was a good thing to do. It was consistent with the overall concept of the design to be "open", as was the deletion of the doors between Bedroom 1 and the ensuite and the deletion of doors to the walk-in-robe.

Hallmark Homes sales representatives regularly send copies of Hallmark Homes’ CAD drawings to me and the other draftspersons at Hallmark Homes, on which hand-drawn amendments have been made to reflect a particular customer’s wishes for the design of their house. Such customer altered designs had indicated to me what the market was interested in and the design of the Montego ensuite and walk-in-robe is consistent with such customer-altered designs.

(b) on Exhibit "GW2" I had added priers [sic] to the front Porch as I liked the concept. Although not shown on the brochure plan, the Madison display house built at Mountain Creek, that was opened on 30 June 2001 (the CAD drawing for which was prepared in December 2000), had piers adjacent to the walls on the approach to the Porch. Annexed hereto and marked "GW10" is a true copy of a CAD drawing for the Madison display house at Lot 38 Glenfields Boulevard, Mountain Creek.

(c) on Exhibit "GW2" I moved Bedroom 4 away from Bedrooms 2 and 3 as access to those bedrooms was already from the Home Office. I believed the linen closet would work better opposite the Home Office. Consequently Bedroom 4 was moved closer to the Kitchen. However, in refining the design, as noted on Exhibit "GW3", I swapped the position of Bedroom 4 and the Laundry as I thought it was a good idea to have the entrance to Bedroom 4 from the small passage to the toilet, opposite the entrance to the Bathroom.

(d) I did not include the piers outside Bedroom 1 and the Meals and Family areas because piers are usually the last part of the house to be added. Ordinarily Hallmark Homes’ designs are not depicted in the sales brochures with piers as the construction of the piers significantly increases the cost of the house. They are therefore an optional extra should the customer choose to have them. Further, it is important to design the roofline of the house so that it is not necessary to have piers to support the roof. Outdoor piers used by Hallmark Homes are ordinarily not merely aesthetic, they serve a structural support function.

(e) the positions of the sink and hotplates have been altered on the Montego (and on the Madison, that was designed prior to the Montego) primarily because there is no wall between the Kitchen and Family on which to attach a range hood over the hotplates (in contrast with the Calais and other designs, to which the range hood over the hotplates is attached). To accommodate the wall for the range hood, the window on the external wall of the Kitchen has been split to create two windows.

(f) I did not accept Mr Gilbertson’s idea to align the front external walls of Bedrooms 2 and 3 because I could not get the design to work. Hallmark Homes standard bedroom sizes are generally a square shape, with walls approximately 3400mm in length. To have simply "pulled" the wall of Bedroom 3 forward to align with Bedroom 2, would have cause [sic] Bedroom 3 to be disproportionately large, which was not a desirable effect for maintaining the proportions of the design. To have kept the dimensions of Bedroom 3 and have simply moved the design forward would have caused difficulties with the entrance to the room. Ultimately Bedroom 3 remained unchanged.

(g) Although I consider any alterations Mr Gilbertson suggests when developing a new design, I do have an amount of licence as to whether to adopt those suggested alterations into the new design; my primary objective in developing a new design is to ensure each part of the design works with the other parts of the design to produce a design that is satisfactory overall.

8. In relation to paragraph 17(c) of Mr Sweeney’s second affidavit, I note the following:

(a) in designing houses for Hallmark Homes, I had previously toyed with the idea of using raked ceilings. Raked ceilings are ceilings that rise up on the diagonal to a peak. However, raked ceilings are substantially more expensive to construct than raised ceilings that are used by Hallmark Homes. Raised ceilings are parts of ceilings that are higher than the surrounding parts of the ceiling and are joined to them with a perpendicular "step" effect. In designing the Entry of the Montego I was trying to create an area and perspective that would be impressive upon entering the house. This was achieved, in part, by using the raised, rather than raked ceiling. A raised ceiling is indicated on Exhibit "GW2" and although a raked ceiling is indicated on Exhibit "GW3", it was not ultimately adopted; a raised ceiling was used instead.

(b) in relation to paragraph 17(c)(ii) regarding Mr Sweeney’s comments concerning the use of a window on either side of the hotplates, I repeat my comments on this matter as set out above.

(c) in relation to paragraph 17(c)(iii) regarding Mr Sweeney’s comments concerning the final positions of Bedroom 4 and the Laundry, I repeat my comments on this matter, as set out above.’

44 Walker was not challenged in respect of any of the matters he deposed to. It was not put to him that he had copied the Grand Vista Design or was aware of the detail of any Grand Vista House. His entire cross-examination consisted of the following:

‘MR LEEMING: Might the witness be shown the laminate?

HIS HONOUR: Yes.

MR LEEMING: Mr Walker, if you wouldn’t mind please, just have a look at the second and the third plans on that fold-out. You recognise them I think as one which I’ll call the red ink plan, being some amendments to the Calais that Mr Gilbertson gave you? --- Yes.

A couple of years ago and the middle one, the third one, that’s your hand drawn plan? --- It is.

And all the writing on that is yours, is it, except for the little words "Toorak type" and I can’t read the third word, I’m so sorry.

HIS HONOUR: "Angles".

MR LEEMING: "Angles"? --- Yes.

Between the main bedroom and the living room? --- Yes.

All the rest of it is yours, is it? --- That’s right, yes.

I just wanted to ask you some questions about the bottom right-hand corner of those plans. Before I ask those questions, you’ve said in your affidavit, and it’s the case I take it that Mr Gilbertson gave you the red ink plan and you then in response to that drew up this sketch? --- Yes.

Now, just look down at the bottom right-hand corner; it was bedroom three on the Calais, but on your sketch it's become bedroom two? --- Yes.

Do you see on the red ink plan, there are arrows extending the street front of that bedroom so that it’s parallel to the other bedroom? --- Mm.

Now, you haven’t done that on your plan? --- That’s right.

You’ve said - do you agree with me the reason that you didn’t do that was that it’s part of a design that just didn’t work? --- Well, as Graham has drawn it, he hasn’t - he hasn’t given it much thought, you know, he’s just drawn a few lines. But if you look at it closer which I did, you’ll see that I couldn’t get it to work so I didn’t draw it.

It was part of the design that just didn’t work? --- Yes.

Then can I direct you to the main bedroom in the red ink plan, and just outside that, there’s a couple of square boxes which I take it indicate columns? --- Yes.

Now, you haven’t made in your hand-drawn sketch any reference to those columns, have you? --- No.

Now, just why was that? --- Because I would have taken those as being under roof patios which we generally - which we don’t incorporate - generally don’t incorporate on to our standard brochure plans.

Thank you, your Honour. I’ve got no further questions.’

45 There was no evidence tendered by the applicant of direct copying. Its case in support of a finding of actual copying is based upon the evidence of Sweeney and David Nutter, a semi-retired architect, of similarities between the Montego Plans and the Montego Houses and the Grand Vista Design.

46 The one significant circumstance which led Nutter to conclude that the Montego Plan and the Grand Vista Design ‘reflect a common origin’ and that ‘the most likely explanation for the similarities between the Grand Vista design and the Montego design is that the Grand Vista design was referred to in the preparation of the Montego design’, is the similarity in the format and treatment of the entry axis.

47 In Nutter’s opinion, the drawings of Walker are development drawings leading to the Montego Design. According to Nutter, it is the red markings on the Calais design which produce the following specific similarities to the Grand Vista design:

‘4.6 ...
• Bedroom 1 and the ensuite have been moved over to line up behind the garage;
• Living room has been moved to a position on the axis of the entry;
• Study has been moved to give wide entry and remove angled projection into porch area;
• Entry door has been changed to a pair of doors and moved to centre on the axis of the porch;
• Wide entry to living room, flanked by columns, on axis of entry porch;
• Columns shown outside bedroom 1 similar to those on Grand Vista;
• Family room is altered to remove projecting portion;
• External patio is indicated outside family room;
• There is indication of lining up the front walls of bedrooms 2 and 3.’

Nutter concludes in his report:

4.7 In my opinion, based on the detailed similarities listed in paragraph 4.6 above, it is most probable that the changes were directly influenced by the Grand Vista design, and that a likely explanation of the way changes were made to the Calais design was by referring to the Grand Vista design.’

48 Nutter also undertook a comparison of Montego and Calais plans. His conclusion on that comparison was:

‘3.9 Due to the similarity of the general layouts in the Montego and the Calais, it is my opinion that the designs are likely to have a common origin. They represent variations on a recognisable plan form. However, the most distinctive planning feature of the Montego, the formal porch/entry/living progression, does not occur in the Calais. In addition, the openness of the family area at the rear of the Montego also does not occur in the Calais. All these features occur in the Grand Vista. In view of the above, and the comparisons of the Montego with the Grand Vista in section 2 of this report, it is my opinion that there is greater similarity between the Montego and the Grand Vista than there is between the Montego and the Calais.’

49 The clear import of Nutter’s evidence is that if copying has occurred by reference to the Grand Vista Design, then it has occurred at the point that Gilbertson produced the red ink alterations to the Calais floor plan. The difficulty with this conclusion is that much of the fine details which the applicant claims are copied features of the Grand Vista Design were, on the evidence of Walker, introduced by him in making the red ink draft work. That is, the adaptations and changes to the red ink sketch (the rearrangement of rooms, the ensuite and the walk-in robes, the opening up of the ensuite by the use of a dwarf wall, the details of the kitchen layout arrangements and the entry arrangements) were choices made by Walker by reference to his general know-how and the standard design features used by the respondent in its range of houses and without reference to the Grand Vista Design or Grand Vista Houses. The items claimed to be similarities are, to a greater or lesser extent, featured in earlier designs of the respondent and are acknowledged by all witnesses to be known features used by project builders in Australia.

50 The determining features which incline Nutter to the view that the Montego Plans and the Grand Vista Design have a common origin rather than the Montego Plans having the common origin otherwise apparent in the Calais design, are the changes made to open up the rear of the Calais design and the changes made to provide a strong visual axis from the front entry through the house in order to see the vista behind. It is the conceptual changes made to open up the house to give the Calais plan a different character, which happen to be elements in the Grand Vista Design, which underpin Nutter’s theory of copying.

51 Sweeney bases his assertion of copying on the detailed similarities between the plans; the fact that the respondent did not previously have a design which contained the particular combination of elements; and an assertion that certain elements penned in red, which he asserts replicate features of the Grand Vista Design, had not been included in the final Montego Plan in order to disguise the fact of copying. This final assertion was not a matter of expert opinion, was never put to Walker in cross-examination, and I reject it.

52 Both Nutter and Sweeney had available to them for comment the affidavits of Gilbertson and Walker, together with the suite of drawings including the Calais floor plan, the red ink marked up Calais plan, and the drawings leading to the CAD Montego Plan. Neither, as a matter of expert opinion, gave a credible basis for rejecting the respondent’s explanation of how the final form of the Montego Plans was arrived at. Although both Nutter and Sweeney each concede the similarities by reference to the open back living area with the use of a large amount of glass and the porch entry living room axis may have arisen by coincidence, it is inherent in both their positions that they do not believe the respondent’s explanation. This involves a view as to the credibility of Gilbertson and Walker which is an issue for the Court to determine.

53 I accept the evidence of Gilbertson and Walker as to how the Montego Plan was developed. Gilbertson’s evidence is credible and is corroborated by Haswell, whose evidence I have accepted. Walker’s evidence is credible and stands unchallenged. I find that neither of them had inspected a Grand Vista display home or seen the Grand Vista Design before June 2001, when the complaint of infringement of the design was first raised by the applicant. Of the houses listed by the applicant in par 4 of the further amended statement of claim as display homes, the house at Lot 104 Tallowood Place was built in 1997 and was used as a display home until 1999, at which time it was sold. There is no evidence that Gilbertson or Walker were interested in project housing on the Sunshine Coast during this period. The respondent’s interest in expanding its business in the Sunshine Coast area did not arise until mid-2000. The Grand Vista display house on Lot 300 Karinya Place, Twin Waters is next door to the Montego house built by the respondent. However, construction of the house did not commence until October 2001 and it was not completed until 2002. The Montego Plan and construction of the Montego House occurred before the commencement of construction of the Grand Vista House on Lot 300. The display home on Lot 300 played no part in the development of the Montego Plan. The houses at Lot 281 Karinya Place, Twin Waters, Lot 32 Portmarnock Court, Twin Waters and Lots 367 and 368 Glenwood Place, Twin Waters, built by the applicant to its Grand Vista Design, were not display homes. They were built for private clients under contracts respectively dated 3 February 2000, 26 February 1999 and 20 October 1999. There is no evidence that Gilbertson or Walker had access to any of these houses or the plans for them at any time prior to 16 February 2001 when Gilbertson marked up the Calais plan in red ink. I find that the construction of the houses particularised in par 4 of the further amended statement of claim played no part in the development of the Montego Plan by Gilbertson and Walker, nor in the design of the Montego House constructed by the respondent at Karinya Place, Twin Waters.

54 There was evidence that there was some advertising of the Grand Vista Design in the ‘Courier Mail’ newspaper and the ‘Sunshine Coast News’ newspaper from 30 August 1997 to 8 May 1999. Both Gilbertson and Walker say that they did not see these advertisements, let alone have copies of them. I do not accept as credible any suggestion that a cursory look at any advertisement at a time so far removed from the preparation of the Montego Plan, if it occurred but is now forgotten, was the origin of the changes made to the Calais design by Gilbertson in red ink, and developed by Walker into the final Montego Plan.

55 There is no evidence of access on the part of Gilbertson or Walker to the copyright plans, either directly or indirectly. It is the finding of access which founds the drawing of an inference of the causal link between the copyright plan of a project home and the alleged infringing copy where significant similarities are identifiable in both plans: see Ferntree Homes Pty Ltd v Bohan (2001) 54 IPR 267 at 271. The similarities by themselves, although relevant to the establishment of a causal link, do not without more establish it. In the light of the evidence given by Gilbertson and Walker, which I accept, as to the development of the Montego Plan, and the evidence of Haswell as to the advice which he gave Gilbertson as to the conceptual changes necessary to the Calais design to suit consumer preferences in the Sunshine Coast market, I do not accept that the existing similarities lead to an inference of the necessary causal link of unlawful reproduction. Having made the decision to change the Calais design in two significant respects, in terms of opening up the house to expose the view to the rear of the house to both the internal living areas and the front entry, those changes and the other changes that were consequent upon them, did indicate a sudden moving towards a style and concept of housing of which the Grand Vista Design was but one example. However, the right to adopt the stylistic changes and to alter the existing Calais plan to give effect to it was always an option available to the respondent. The applicant had no copyright in the style or the concept. The similarities which exist are not so striking as to preclude the possibility that the respondent independently arrived at a similar result. Further, some of the similarities claimed already existed in the Calais design and remained in the Montego Plan, although in an altered position (for example, the pillars at either side of the arched entry to the living area; the main bedroom with ensuite and walk-in robe at the rear of the house behind the internal garage, to the left of the living room, the living areas to the right of the entry; the number of bedrooms; and the inclusion of a study, a bathroom and a laundry).

56 Kenneth Down, an architect practising on the Sunshine Coast, gave evidence on behalf of the respondent that such similarities as existed did not indicate that the Montego Plan had been derived from the Grand Vista Design. Both Down and Nutter are agreed generally as to the similarities and differences between the two designs and are agreed that the porch/entry/living room progression is the significant element of the Grand Vista Design. However, they are agreed that it is not unique to the Grand Vista Design and has been used by others in designing project homes in Australia. Indeed, Sweeney was introduced to the concept when inspecting project housing in Florida in the United States of America in 1988 when he undertook a study tour on behalf of the Dixon group of companies.

57 I am satisfied that the decision made by Gilbertson to open up the Calais design in the way he discussed with Haswell, using as a starting point the existing Calais plan to achieve one open eating and living area facing the view over the water/golf course, opening onto an outdoor living and entertaining area, inevitably led to the design changes to that part of the house plan which included the addition of a pergola above those outside areas which linked those areas to the interior living spaces at the rear of the house, which appear in red ink on the drawing of Gilbertson dated 16 February 2001.

58 I am also satisfied that the decision to open up the house to create a strong visual axis from the front entry through the house to the area behind the house inevitably forced the number one bedroom, the ensuite and the walk-in robe to be moved outwards and the living room walls and archway to be moved into alignment on the axis from the front door through the living room to the backyard of the house. Those changes are indicated in the red ink alterations to the Calais plan. It also dictated the extensive use of glass in the rear walls and the removal of a full wall between the living room and the meals area. In its built form, the visual integration of the living room in the Montego Design with the meals and family area is totally different than in the Grand Vista Design, where a wall between the two areas confines the sense of space to the living room and the sight line along the perpendicular access to the rear. In the Montego House, the sense of space opens out from the living room to include both the outdoor entertainment living areas and the internal living areas in the rear of the house in the kitchen, family and meals area.

59 I find that the Montego Plan is not an infringing reproduction of the applicant’s copyright in the Grand Vista Design or its copyright in the Grand Vista Houses.

60 I find that the Montego House was constructed in accordance with the Montego Plan and is not an infringing reproduction of the applicant’s copyright in the Grand Vista Design or its copyright in the Grand Vista Houses.

61 Having regard to my findings in respect of the copyright issue, the applicant fails to make out its claim to relief under the TP Act.

62 The application will be dismissed with costs.

I certify that the preceding sixty-two (62) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper.

Associate:
Dated: 20 February 2004

Counsel for the Applicant:	MJ Leeming
Solicitor for the Applicant:	Mallesons Stephen Jacques
Counsel for the Respondent:	D Logan
Solicitor for the Respondent:	Minter Ellison
Date of Hearing:	31 March, 1 - 3 April 2003
Date of Judgment:	20 February 2004