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"Wow factor" snares copyright breach of architectural plans

In September 2007 the Federal Court of Australia ruled on the question of copyright in project homes and plans for them. Barrett Property Group Pty Ltd v Metricon Homes Pty Ltd [2007] FCA 1509 was an action between two competing project home developers in the market in Victoria.

The breach of copyright claim was made by Barrett Property Group Pty Ltd trading as Porter Davis Homes. It claimed Metricon Homes Pty Ltd had copied certain project homes and architectural plans for them, commencing with the "Seattle 31" model.

The case is a lesson on the nature and extent of evidence required to win a architectural plan copyright infringement case. If you read to the end you'll see that the numbers in this court case don't talk, they scream. An appeal has been filed and is scheduled for February 2008.

To begin with, proving breach of copyright, in homes and plans for them, is not easy. Project homes of course have functional features, such as roofs, doors and windows. There's only so many places or ways you can for example place a roof. This means it can be difficult to assert copyright if you have an ordinary combination and arrangement of such features.

In his decision Judge Gilmour conducted a very thorough review of copyright issues for project home designs and the importance of "overall impression", analysing firstly whether the claimant's design was capable of protection and then conducting an objective similarity analysis to decide whether the defendant's designs were in breach.

To prove copyright breach what is needed is evidence that a substantial part has been copied. This involves an enquiry that should put weight on the quality of what is copied more so than the quantity.

Also relevant to the enquiry into quality is the relationship between what is taken and the rest of the original work. In the Porter Davis Homes case Justice Gilbour cited this phrase, "...essential or material features of a work should be ascertained by considering the originality of the part allegedly taken." He was quoting the High Court decision in the Autodesk Inc case in 1993 at paragraph 305.

A great deal of evidence is needed to prove copyright breach. The Porter Davis Homes case was no exception. Before reaching his decision regarding the derivation of Metricon's house plans, Justice Gilmour carefully examined the evidence. For example, he:

  • inspected one of the project homes,
  • overlayed transparencies of house plans,
  • considered expert and lay witness evidence,
  • noted the requests for changes to affidavit evidence by Metricon's executives,
  • noted their demeanour in the witness box,
  • considered the design chronology and design evolution of the project homes and their designs, and
  • considered those of the project homes copied and the designs copied.

On examination a spotlight was put onto "the alfresco quadrant" of the Seattle 31. This was a house design element of the Seattle 31and other Porter Davis Homes designs.

A chartered architect was the expert witness for Porter Davis Homes. He gave evidence on the originality of the alfresco quadrant.

The alfresco quadrant was a hub linking the kitchen, rumpus room and other communal areas. It covered about one-third of the floor area of the Seattle 31. It was, said Judge Gilmour, a "substantial part" of the copied works. He also held there was evidence of "significant labour, skill and judgment" in the plan for the Seattle 31. With these comments we can see that what is needed for copyright to exist in the plans for the Seattle 31 or the alfresco quadrant started to take shape.

Metricon submitted its own evidence on the point, examples of other homes with outdoor design elements. Its position was that there was prior art making the alfresco quadrant a combination of common place features not capable of being an original work protected by copyright. Justice Gilmour said: "Not one of the 12 prior art items cited particularly by the respondents discloses an alfresco, as expressed in the Seattle 31 design, under a single roof line."(para. 60)

Justice Gilmour wrote about his personal inspection of a Porter Davis Homes project home. "The view conducted by me, following the opening of the parties' respective cases, led me to the view that the covered alfresco arrangement within the alfresco quadrant under a single roof-line, the alfresco having an interior type ceiling, was a very striking and distinctive feature as a matter of impression."(para 195)

Examination of allegations of copying always involves considering how either side's work has been created. Commenting on the evidence Justice Gilmour noted that within Porter Davis Homes about 130 drawings and notes were made that culminated in the final Seattle 31 plan approved in about September 1999. As for Metricon's handiwork Justice Gilmour noted 13 preliminary drawings were needed by Metricon to produce Prototype 20A and only one drawing to produce the final design concept for the Prada 35.(para 129)

This is where the "wow factor" came into evidence. Mr Popple, Product Development Manager for Metricon, gave evidence that "Palazzesi [Managing Director of Metricon] frequently used the term "wow factor". Palazzesi explained that by the term "wow factor" he meant openness and light filled areas and that when a prospective purchaser entered the display home the purchaser would be overwhelmed by what the purchaser saw. All of Palazzesi's oral briefs emphasised the necessity for the "wow factor." "(para. 122)

Many things were in evidence in this case. The Seattle 31 had been on display from early 2000. There were four visits by senior executives of Metricon to Perth during which time they had personally inspected a built Seattle 31. At least one of the executives had taken photos.(para 149) One executive had taken a brochure and kept it in his office library, the Seattle 31 brochure contained its floor plan.

Justice Gilbour found copyright breach by Metricon and held two executives personally liable. In the result Metricon, the defendant company, was held liable for copyright breach. For authorising the breach of copyright, Metricon's Managing Director (Mr Ross Palazzesi) and a Product Development Manager (Mr Adrian Popple) were both held personally liable.(para 280)

His Honour said: "I find that Bugeja deliberately copied the alfresco quadrant from the Seattle 31, by reference to a floor plan and discussions with Popple who had the benefit of actually inspecting the Seattle 31 display home."(para 225) "The applicants have taken the idea and, importantly, the expression of the idea, further than that established in the common stock. On this basis, it cannot be considered part of the common stock."(para. 72)

the_scream_munchOn reading the decision a puzzling question echoes. In the face of so much evidence why did Metricon persist with its defence? Perhaps we can infer the answer from some screaming numbers. The damages claim by Porter Davis Homes may extend to hundreds of project homes built by Metricon using substantial parts of the copyright work of Porter Davis Homes. Metricon's builds 800 homes a year. It's been about seven years since the Seattle 31 became available for inspection. You do the maths.

Implications. Take note architects, architectural plan drafters, designers, builders, developers and other toilers in the building sector. If you see and feel the "wow factor" in a house design and want to copy it, first obtain legal advice. The "wow factor"  makes it difficult to dispel evidence of the existence of an original work of quality or with significant labour, skill and judgement to attract protection under copyright law.

The Age reported on 7 October 2007 ("An alfresco is the same by any name") that Porter Davis Homes in 2007 settled its copyright claim against Hermitage Properties. It has cases against Carlisle Homes and Dennis Family Homes ready to proceed in 2008. In terms of screaming numbers, The Age article states that the case against Metricon "...was fought for 13 sitting days last March [2007], with both sides represented by five-member legal teams led by silks."


Painting: The Scream by Edvard Munch. 1893. Oil, tempera and pastel on cardboard at Nasjonalgalleriet, Oslo.


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