25 Aug 2015

Copycat building is copyright infringement, says court

by Mary Still

The court has ordered a home-owner to strip out architectural features after finding the house was an infringement of copyright.

A shared taste for French provincial architecture with tropical flourishes has raised a few interesting issues in the application of copyright law to building designs, particularly remedial orders (Coles v Dormer [2015] QSC 224).

Mr and Mrs Spicer had some detailed plans and design ideas for their future home. They engaged Mr Skyring, a building designer, to translate these into a comprehensive set of architectural and structural plans. Along the way, they reviewed and commented upon his work, with Mr Skyring making modifications as required by his clients.

Fast forward to the completed house, which the Spicers put up for sale. Two couples, the Bredens and the Coles, were struck by what they considered its unique appearances, but only the Coles succeeded in this battle for ownership. The Bredens then bought a lot three houses' away (and within sight of the Coles' new home), and contracted the Spicers' builders to build a house for them.

Getting wind of this, the Coles talked to the builders and got what they thought was an agreement to alter the front of the Bredens' new home so that their own home retained its uniqueness. The Coles also took the precaution of getting Skyring to assign his copyright in the plans to them. The Bredens' home did not however reflect their requested changes. Their next step was a lawyer's letters, and then litigation against the builders and the Bredens.

Who is the author of the plans?

The defendants argued that the Spicers' initial work was enough to make them co-authors of the plans: the work involved in the Skyring house plans was really just a continuum of the existing original work of the Spicers.

Justice Henry said no. Applying IceTV Pty Ltd v Nine Network Australia Pty Ltd, he held that the Spicers' initial work and Skyring's plans were two separate works, and the Spicers' feedback was not enough to make them joint authors of those finished plans.

Was the assignment effective?

The defendants said it wasn't, but that even if it were, the Coles acquired no accrued rights of action for any infringement. By the time the copyright was assigned, their own plans had been produced.

This argument failed; both the plan, and the house (a separate infringement) were produced post-assignment.

Substantial copying?

The judge found there was substantial copying:

"The elements of similarity are not merely found in the repeated coincidence of the lineal and spatial forms on the plans but also in identical notations upon the plans. In one instance identified by Mr Gleeson an error in the Skyring house plans about window height was replicated in the Breden house plans.  In another a reference to the location of a bathroom window in the Skyring house plans was replicated in the Breden house plans notwithstanding that a variation in the layout of the Breden house, necessitated by the nature of the block, meant the window should have been on the opposite side.  In short it is obvious copying on a substantial scale must have occurred "

It implicitly followed that any house constructed from such plans was also an infringement. To remove any doubt, Justice Henry compared the two houses visually, and found substantial copying between the two.

What can the court order?

So, the Coles took lawful steps to prevent the infringement, and yet it happened anyway. How can the court help them?

Under section 115 of the Copyright Act, the court can grant an injunction, and either order damages or an account of profits. The plaintiffs argued the infringing copy made their home less unusual, and hence there was a potential diminution of its value.

Here, given "the defendants’ conduct in knowingly continuing with construction of a nearly identical residence and taking the commercial risk of not altering the external indicia of replication, it ought not be assumed the additional damages absent an injunction would be small."

But assessment of damages or an account of profits could wait for another day.

An injunction can be a pretty strong response ‒ even possibly oppressive ‒ but in this case "the defendants chose to press on and build the house after being warned of the consequences. Indeed they continued to build well knowing this action was afoot."

As a result they have been ordered to strip away many of the exterior features that presumably charmed them so much in the first place: arched and round windows, stone edge trim on the corners and dormer roofs will all have to go.

The plans used by the Bredens and their builders do not, however, have to be handed over. There's no evidence the defendants are about to build another house from them, and the plans might be needed for any further work on the house.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.