A V Jennings Ltd ACN 004 601 503 v Bogdan [2008] FCA 107 (21 February 2008)

PRACTICE AND PROCEDURE – application for an extension of time to file and serve a notice of appeal – consideration of whether ‘special reasons’ made out – consideration of the circumstances of delay – consideration of the principles governing an application for an extension of time – consideration of the exercise of federal jurisdiction by the Magistrates Court of Queensland

Federal Court of Australia Act 1976, s 24(1)(c), s 25(2)(a) and (b), s 25(2A), s 25(2)
Copyright Act 1968 (Cth), s 115, s 131B(2)
Judiciary Act 1903 (Cth), s 39(2)
Constitution of the Commonwealth of Australia, s 75, s 76(ii), s 77(iii)
Federal Court Rules, Order 52, rule 15(1)(a), Order52, rule 15(2), Order 52, rule 15(3)

Ly and Another v Jenkins and Others [2001] FCA 1640; (2001) 114 FCR 237, cited
Jess v Scott (1986) 12 FCR 187, cited
Stollznow v Calvert [1980] 2 NSWLR 749, cited
Douglas v Allen (1984) 1 FCR 287, cited
Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344, cited
Seiler v Minister for Immigration (1994) 48 FCR 83, cited
Re Envirotech Australia Pty Ltd (1989) 14 IPR 108, cited
Envirotech and Johns v Australian Securities Commission (1992) 108 ALR 277, cited

A V JENNINGS LTD ACN 004 601 503 v TIBERIU BOGDAN AND VESNA BOGDAN
QUD410 OF 2007

GREENWOOD J
21 FEBRUARY 2008
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD410 OF 2007

BETWEEN:	A V JENNINGS LTD ACN 004 601 503 Applicant
AND:	TIBERIU BOGDAN AND VESNA BOGDAN Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	21 FEBRUARY 2008
WHERE MADE:	BRISBANE

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	QUD410 OF 2007

BETWEEN:	A V JENNINGS LTD ACN 004 601 503 Applicant
AND:	TIBERIU BOGDAN AND VESNA BOGDAN Respondent

JUDGE:	GREENWOOD J
DATE:	21 FEBRUARY 2008
PLACE:	BRISBANE

1 On 20 March 2007, her Honour, Magistrate Payne, of the Magistrates Court of Queensland pronounced in the exercise of federal jurisdiction, an ex tempore judgment dismissing a claim by the present applicant, A V Jennings Ltd, of copyright infringement on the part of the respondents in respect of the contended reproduction of the applicant’s work being a plan for a house. At pages 13 and 24 of the transcript of proceedings before her Honour, the house plan is described as the Cortona 290 plan and the Kertona 290 plan although the pleadings in the action, and her Honour in the course of her reasons, described the plan as variously the Cambridge 245, Verona 245 and Cortona 245 plan (hereinafter called the ‘Cortona 245 plan’).

2 In the course of proceedings, the respondents admitted, that the applicant is the owner of the copyright subsisting in the plan; the respondents were responsible for bringing into existence a design and plan for a house generally described as the Bogdan plan; and the respondents constructed a house based on the Bogdan plan.

3 The applicants in the proceeding before her Honour contended that the Bogdan plan is a substantial copy of the Cortona 245 plan and the Bogdan house is a three-dimensional reproduction of the applicant’s two-dimensional work.

5 The appellate jurisdiction of the Federal Court of Australia includes a jurisdiction to hear and determine appeals from judgments of a Court of a State exercising federal jurisdiction, in such cases ‘as are provided by any other Act’ (s 24(1)(c) Federal Court of Australia Act 1976). Section 131B(2) of the Copyright Act 1968 (Cth) (‘Copyright Act’) provides that an appeal lies from a decision of a Court of a State under Part V of the Copyright Act to the Federal Court of Australia. Section 39(2) of the Judiciary Act 1903 (Cth) provides that ‘the several Courts of the States shall within the limits of their several jurisdictions, ... be invested with federal jurisdiction, in all matters in which the High Court has original jurisdiction or in which original jurisdiction can be conferred upon it ...’. The High Court has original jurisdiction in the five matters set out in s 75 of the Constitution. By s 76 of the Constitution, the Parliament may confer original jurisdiction on the High Court in any matter arising under any laws made by the Parliament (s 76(ii)). Additionally, by s 77(iii) of the Constitution, the Parliament may make laws investing any Court of a State with federal jurisdiction in respect of the nine matters identified in ss 75 and 76 of the Constitution. Since original jurisdiction can be conferred upon the High Court in any matter arising under the Copyright Act, s 39(2) invests the Magistrates Court of Queensland with federal jurisdiction in respect of a matter under Part V of the Copyright Act which includes s 115 of the Copyright Act conferring an entitlement upon the copyright owner to bring an action for infringement of copyright. The decision of her Honour was thus a decision under Part V of the Copyright Act and an appeal lies from that decision to the Federal Court of Australia (Ly and Another v Jenkins and Others [2001] FCA 1640; (2001) 114 FCR 237 per Sackville J at [69] and following).

6 The exercise of the Court’s appellate jurisdiction contemplates applications for leave to appeal or for an extension of time within which to institute an appeal to the Court (s 25(2)(a) and (b)). By s 25(2A), the rules of Court may make provision for applications to be dealt with of the kind mentioned in s 25(2). Order 52, rule 15(1)(a) provides that a notice of appeal shall be filed and served within 21 days after the date when the judgment appealed from was pronounced. The time limited for filing and serving a notice of appeal, in this case, expired on 10 April 2007. Order 52, rule 15(2) provides that the Court or a judge for ‘special reasons’ may at any time give leave to file and serve a notice of appeal which, in accordance with Form 54A and Order 52, rule 15(3) involves an application for an extension of time within which, by leave, to file and serve a notice of appeal. The notice of motion seeking an extension of time was filed on 13 December 2007 approximately eight months after the expiration of the time limited for filing and serving an appeal.

7 It is entirely uncontroversial that in considering an application to extend time to file and serve a notice of appeal, the Court will have regard to the length of the delay (Jess v Scott (1986) 12 FCR 187 per Lockhart, Sheppard and Burchett JJ); the explanation for the delay and whether the applicant has contributed to the delay (Stollznow v Calvert [1980] 2 NSWLR 749, per Moffit P); any prejudice to the respondents arising out of the delay (Douglas v Allen (1984) 1 FCR 287 per Morling J; Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344 per Wilcox J at p 349); actions taken by the applicant to alert the respondent to the fact that the decision is or may be contested (Hunter Valley Developments at p 349); the merits of the proposed appeal (Hunter Valley Developments at p 349; Seiler v Minister for Immigration (1994) 48 FCR 83 per French J at p 98B); alternative avenues of relief (Re Envirotech Australia Pty Ltd (1989) 14 IPR 108 per Jenkinson J); and any questions going to public interest (Envirotech and Johns v Australian Securities Commission (1992) 108 ALR 277 per Heerey J).

9 The proceedings before her Honour SM Payne were conducted over two days on 26 and 27 April 2006. An ex tempore judgment was delivered by her Honour on 20 March 2007 approximately 12 months later. The applicant sought access to a transcript of the ex tempore reasons from the Magistrates Court and an appeal was filed in the District Court of Queensland at Brisbane on 16 April 2007, and served. On 24 April 2007, the present solicitors for the respondents, Bennett & Philp, sent a notice of address for service to the solicitors for the applicant. On 26 July 2007, the applicant’s solicitors wrote to the Magistrates Court requesting a copy of the transcript of proceedings. The transcript of the trial was collected by the applicant’s solicitors on 2 August 2007. The appeal filed in the District Court of Queensland on 16 April 2007 was prosecuted in accordance with District Court Practice Direction No. 4 of 1997 which required the appellant in that Court to file an outline of submissions which occurred on 2 October 2007. The appellant’s outline was served on the solicitors for the respondents on 8 October 2007. On 25 October 2007, the respondent’s solicitors wrote to the District Court seeking an extension of time to prepare, file and serve an outline of argument until 28 days after receiving a copy of a transcript of the proceeding and the ex tempore reasons for decision. On 5 December 2007, the solicitors for the respondents sent a letter to the Registrar of the District Court contending that by reason of s 131B of the Copyright Act, the District Court had no jurisdiction to entertain an appeal from the decision of the Magistrates Court. A copy of that letter together with a further letter dated 5 December 2007 was sent by Bennett & Philp to the solicitors for the applicant.

10 On 14 December 2007, the applicant filed the present notice of motion seeking an extension of time to file and serve an appeal to this Court.

11 It can be seen that although there is a very lengthy period of delay, the applicant’s solicitors promptly sought access to a transcript of the ex tempore reasons of her Honour; filed an appeal in the District Court on 16 April 2007; sought access to a transcript of the entire proceeding heard on 26 and 27 April 2006 and acted consistently with the relevant District Court Practice Direction. Equally clearly, the solicitors for the respondents engaged in that process and sought an extension of time to file submissions in response. During the course of early December 2007, it became apparent to both parties that a notice of appeal ought to have been filed in the Federal Court of Australia. It follows that the applicant proceeded on an incorrect assumption by reason of the approach adopted by the legal advisers and the failure to file a notice of appeal in the Federal Court is not conduct truly referable to the applicant itself. Also, the respondents for a time at least, by their lawyers thought that the District Court of Queensland was the proper forum for hearing and determining an appeal from her Honour’s orders.

12 Accordingly, I am satisfied that although the delay is lengthy, it is sufficiently explained by the events between 20 March 2007 and the filing in this Court of the present notice of motion on 14 December 2007.

13 As to the question of prejudice to the respondents, no prejudice is contended for by the respondents.

14 As to the question of notice to the respondents that the decision would be contested, the appeal filed in the District Court of Queensland at Brisbane gave notice to the respondents that the applicant proposed to contest the decision. The content of that contest was elaborated by the applicant’s outline of argument filed in the District Court as appellant, consistent with the Practice Direction of that Court.

15 The central matter upon which the application is to be resolved is whether the applicant has demonstrated sufficiently arguable grounds of appeal that the interests of justice require the grant of an extension of time to enable an appeal to be heard and determined.

16 As to the grounds of appeal, the applicant contends that the ex tempore decision of her Honour of 20 March 2007 approximately 12 months after the conclusion of the two day hearing resulted in the dismissal of the applicant’s claim based upon reasons which failed to deal with important evidence going to the question of conscious copying and substantial similarity as the test of reproduction of the work. The applicant relied upon contended substantial similarities between its plan for the Cortona 245 and the features evident in the Bogdan plan and house and, in particular, the contended three-dimensional reproduction of the artistic work. The applicant relied upon those similarities as the basis for an inference of copying by the respondents, that is, an inference of a causal connection between the conduct of the respondents and the applicant’s work, and satisfaction of the test of reproduction. In dismissing the applicant’s claim, the applicant contends that her Honour failed to dispositively deal with the evidence of Mr Henesey-Smith; the evidence of an expert architect called by the applicant, Mr Deshon; the evidence of a third party manufacturer of roof trusses, Mr Neuson of Truss Master; the evidence of Mrs Bogdan; and inferences to be drawn from the failure of Mr Bogdan to give evidence as to the authorship and evolution of the Bogdan plan and the failure of the respondents to call evidence from the draftsman retained by the respondents, Mr Djako.

17 In response, the respondents say that her Honour properly considered the authorities relevant to the question of whether the respondents brought their drawing into existence and ultimately constructed their house having regard to any work or structure of the applicant and also the question of whether the Bogdan plan and ultimately the Bogdan house reflect substantial qualitative similarities so as to constitute a reproduction of the work. The applicant says that her Honour erred in concluding that although there are similarities evident in the relevant comparison, those similarities are referable to ‘common design features’ emblematic of house plans. Secondly, her Honour is said to have erred in concluding that the dissimilarities are such that no inference of causal connection can be drawn from the similarity of features in the absence of evidence of access to the work of the applicant, and thus the applicant had failed to discharge the onus of proof.

18 In her reasons for decision, her Honour noted that the applicant called three witnesses: Mr Neuson who worked for Truss Master; Mr Henesey-Smith, the Executive General Manager of the applicant; and Mr Deshon. Her Honour turned to the evidence of Mr Deshon and noted his evidence of the distinguishing features of the applicant’s plan and particularly the features of ‘higher ceilings’ and ‘splayed’ or ‘angled’ walls. Her Honour noted aspects of Mr Deshon’s evidence concerning a plan of ‘Dixon Homes’ which was put to him in cross-examination and Mr Deshon’s observation of some similarities within the layout of that plan and the applicant’s plan.

19 Mr Deshon, in his evidence, also dealt with the central contention of the respondents that the Bogdan plan had evolved from a combination of references to a plan for an earlier Canberra house and contributions to the evolution of the plan by Mr Bogdan’s father-in-law having regard to a particular photograph from a magazine selected by Mr Bogdan exhibiting raked windows. Mr Deshon considered a document described as Annexure ‘A’ (the ‘Canberra plan’), Annexure ‘C’ (the ‘Bogdan plan’) and Annexure ‘B’ (a drawing) out of which Annexure ‘C’ was said to have emerged. Mr Deshon gave evidence that he could not see any progressive development of Annexure ‘C’ from Annexure ‘A’ and questioned the sequence of Annexures ‘A’, ‘B’ and ‘C’ (transcript pp 25-28). It seems from the cross-examination by Mr Bogdan who conducted a defence of the proceeding on behalf of both respondents that references to the Dixon Homes drawing was either intended to suggest an evolution in the development of the Bogdan plan having regard to the Dixon Homes drawing or perhaps more simply that some common features in the Dixon Homes drawing and the applicant’s drawing suggested that features in the Bogdan drawing could not be thought to derive from references to the applicant’s plan or structures built by the applicant based on its plan.

20 Although her Honour initially made reference to the evidence of Mr Neuson, there is no evaluation of Mr Neuson’s evidence to the effect that a request made of him to build a truss for the Bogdan structure based on the Bogdan plan immediately suggested to him as an experienced manufacturer of trusses that there was a striking similarity between the applicant’s plan and the Bogdan plan. Similarly, her Honour did not deal with the evidence of Mr Henesey-Smith. Her Honour concluded from her own examination of the plans that the comparison ‘shows there are striking similarities’. Her Honour concluded that notwithstanding these striking similarities, her Honour could not find that there had been a reproduction of the whole or a substantial part of the applicant’s plan. Her Honour noted some of the similarities and dissimilarities in terms of features, the arrangement of the rooms and the footprint of the buildings. Her Honour observed that she had carefully considered the evidence of Mr Deshon who was of assistance to the Court. Her Honour concluded however that, when considering all of the similarities and dissimilarities, the applicant had not ‘discharged its burden of proof’. Her Honour further concluded that the splayed walls and raised ceiling features identified as significant distinguishing features were ‘that of a common idea and not sufficient to sustain a conclusion of reproduction of the whole or a substantial part’ of the applicant’s plan.

21 Having regard to the finding of ‘striking similarities’, the failure of her Honour to deal with the evidence of Mr Neuson and Mr Deshon is, it seems to me, an appellable error in dispositively quelling the controversy. Mr Deshon sought to deal with the primary contention of Mr Bogdan put to Mr Deshon in cross-examination that the Bogdan plan was the rational and logical evolution of a drawing from the Canberra plan assisted by the magazine photograph. Moreover, Mr Bogdan although warned by her Honour of the consequences of taking a course of not giving evidence as to his authorship and contribution to authorship of the plan, failed to give that evidence and thus explain his independent authorship of the plan and the contribution of his father-in-law to the plan. Mrs Bogdan’s evidence was that she did not know of the applicant’s plan or structures and that any question about similarities and authorship would have to be directed to Mr Bogdan. However, he gave no evidence as to these matters. Her Honour noted that Mr Bogdan’s election not to give evidence was ‘unhelpful as his evidence would have been likely to assist me, especially as he was, according to Mrs Bogdan, one of the persons who drew up the plans before they were sent to the architect for the final plans to be drawn’.

22 As to that final observation, the architect who drew up the final version of the Bogdan plan was Mr Djako of Igor Designs. Mr Djako was not called to give evidence either.

23 In dealing with the question of whether inferences might or might not be drawn from striking similarities, the disposition of the proceeding required her Honour to weigh in the balance the evidence of Mr Deshon and Mr Neuson and the curious matter that Mr Bogdan notwithstanding her Honour’s invitations to him to consider his position, elected not to give any evidence as to independent authorship.

24 I am satisfied that arguable grounds of appeal have been made out. I am satisfied that having regard to all of these matters, the applicant has established ‘special circumstances’ and accordingly I grant leave to the applicant to file and serve a notice of appeal to the Federal Court of Australia from the orders of her Honour dismissing the applicant’s proceeding before the Magistrates Court of Queensland and for that purpose grant an extension of time.

25 As to the costs of the application, although the applicant proceeded on a false assumption, the respondents did not bring about that false assumption. The events provide an explanation for the delay in filing a notice of appeal before this Court. However, had the applicant filed and served its notice of appeal within the 21 day period provided for, this application would not have been necessary and the respondents would not have been put to the expense of dealing with an application for an extension of time for the filing and serving of a notice of appeal. Accordingly, the applicant shall pay the costs of the respondents of and incidental to the application.

I certify that the preceding twenty-five (25) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.

Counsel for the Applicant:	Mr P W Hackett

Solicitor for the Applicant:	H Drakos & Company

Counsel for the Respondent:	Respondents represented by Solicitors

Solicitor for the Respondents:	Bennett & Philp

Date of Hearing:	18 February 2008

Date of Judgment:	21 February 2008