Two recent copyright decisions of the Federal Court of Australia have highlighted the difficulties of distinguishing between flattery and infringement. In Cummins v Vella 1, the Full Federal Court held that the use of very similar style, colours, subject matter and technique to those of the copyright owner does not amount to copyright infringement, irrespective of the apparent similarity to the original. In Henley Arch Pty Ltd v Tamawood Pty Ltd2 the Federal Court concluded that infringement had taken place in relation to the design of a project home despite the fact that the infringer had not directly copied the original and had gone to some lengths to ensure that it was not breaching the copyright in the original.
This article argues that, in applying the test of objective similarity to determine whether one work is a substantial reproduction of another work, the courts must be vigilant to ensure that they are not assisting the plaintiff to establish a monopoly in a market where there is little scope for variation.
A reasonably clear explication of what amounts to flattery, as opposed to infringement of copyright, was provided by the Federal Court of Australia in Cummins v Vella. The Full Federal Court held that the use of very similar style, colours, subject matter and technique to those of the copyright owner does not amount to copyright infringement, irrespective of the degree of similarity to the original.
Dean Vella is a professional painter whose work is characterised by a particular style and technique. Mr Vella generally paints flowers, yachts and abstracts in a distinctive naďf style using bright primary colours and an impasto technique. Greg Cummins is a plasterer, who was introduced to Mr Vella’s work when he was engaged to plaster the walls of the gallery in which Mr Vella’s works were displayed. Mr Cummins was captivated by the Vella paintings. They inspired him to become an artist himself and he began to produce his own paintings of flowers, yachts and abstracts in a distinctive naďf style using bright primary colours and an impasto technique. To the casual observer, many of his paintings were indistinguishable from paintings produced by Mr Vella. Mr Vella took exception to this tribute to his oeuvre and accused Mr Cummins of breaching the copyright in his original works. Mr Cummins protested that his paintings were entirely his own work, despite their obvious similarities to those of Mr Vella.
Mr Vella commenced proceedings in the Supreme Court of Queensland alleging that Mr Cummins had infringed the copyright in 27 of his paintings. Mr Cummins happily explained to the Court that he had blatantly copied Mr Vella’s painting style, choice of colour, method of applying paint and choice of subject matter. He asserted, however, that he had not directly copied any individual painting of Mr Vella’s; all of his paintings were entirely his own work.
Justice Jones in the Supreme Court of Queensland at first instance3 took the view that it was irrelevant that Greg Cummins had not actually copied any particular painting of Dean Vella’s. It was sufficient to constitute an infringement of Mr Vella’s copyright, Justice Jones concluded, that Mr Cummins had copied Mr Vella’s painting style, choice of colour, method of applying paint and choice of subject matter. His Honour formed the view that it was unnecessary for him to consider all 27 paintings of Mr Cummins in order to find that they all breached the copyright in an indeterminate number of Mr Vella’s paintings. His Honour commented that he accepted the evidence of an expert that they all employed the same style and method.
On appeal, the Full Federal Court in Cummins v Vella took only seconds to accept the proposition that Justice Jones had erred in law by considering only 10 of the 27 paintings in issue. The Full Court further concluded that Justice Jones had generally failed to draw a distinction between form and expression on the one hand and style and technique on the other. The Full Court stated that the use of very similar style, colours, subject matter and technique to those of the copyright owner does not amount to copyright infringement; there has to be a substantial reproduction of the original.
Henley Arch Pty Ltd (‘Henley’) is a project home building company and designer of the Chirnside project home ('Chirnside'). Tamawood Pty Ltd (‘Tamawood’) sells project homes to the public. Tamawood drafted plans for one of their clients, Ms Gould, in relation to the construction of her home (‘Gould’ home). Henley took the view that, although the completed version of the Gould did not look the same as the Chirnside, it incorporated most of the key elements of the Chirnside design, such as to amount to an infringement of copyright in the Chirnside plans and the house itself.
Tamawood protested that the Gould design was entirely their own work, based on one of its own designs, the ‘Adrian’, with changes made to the basic Adrian design in accordance with specific requests made by Ms Gould. Ms Gould maintained that, although she had expressed great interest in the Chirnside and had paid a deposit for the construction of a Chirnside before consulting Tamawood, her instructions to Tamawood to amend the Adrian design had not been influenced in any way by the Chirnside.
Justice Spender went to the trouble of itemising some 18 physical attributes of the Gould which he concluded were the same as the Chirnside, including such things as:
(i) the arrangement of the rooms and their relationship with one another;
(ii) the angled corner on the wall of the walk-in wardrobe to bedroom 1; and
(iii) the position, arrrangement and relationship in bedroom 1 of the ensuite.
His Honour found that the objective similarities between the Gould and the Chirnside were overwhelming, such that the claim made by Tamawood that the similarities were coincidental was unsustainable. His Honour was unable to find evidence that there was any direct copying or tracing of the Chirnside plans, but concluded that there had effectively been a ‘reproduction’ of the plans for the purposes of copyright infringement. His Honour found that the reproduction had been effected by modifying the original Adrian plans to bring them in line with the Chirnside design.
The Grey Area
In order to constitute an infringement of copyright, the copying can be direct or indirect. An allegedly infringing work need not be a precise reproduction of the original, merely a "substantial reproduction".4 The test is generally expressed to be one of quality rather than quantity and is traditionally formulated in terms of two primary considerations5:
- a sufficient degree of objective similarity between the two works; and
- some causal connection.
In cases of indirect copying, it will often be extremely difficult to draw a clear line between flattery and infringement. The problem was clearly articulated by Justice Street in Ancher, Mortlock, Murray &. Woolley Pty Ltd v Hooker Homes Pty Ltd 6:
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 circumstances where a causal connection has been established, the approach which the courts have generally taken is to consider the conduct of the alleged infringer. If an intention to copy the work of another can be established, the courts have been more inclined to find an objective similarity. In another case involving Henley, Clarendon Homes (Aust) Pty Ltd & Anor v Henley Arch Pty Ltd and Ors7 the Full Court of the Federal Court stated:
...in a case where there has been deliberate copying, the court will not look kindly on a defendant when the plaintiff seeks to establish that what has been copied is sufficiently objectively similar to the plaintiff's work.
Justice Spender in Henley v Tamawood took that approach and found:
...a systematic attempt by Tamawood to compete with Henley, by taking and looking at the range of Henley houses and then trying to create a design as close as possible to that Henley design, but hopefully, without infringing Henley's copyright in the plan.8
In cases like Henley v Tamawood, it must be asked whether there could be risks associated with an approach which concentrates on the conduct of the defendant and fails to consider the conduct of the plaintiff. Under cross-examination in Henley v Tamawood, a witness for the defendant, Mr Mizikovsky, stated:
We checked every single plan to make sure there were no accidental copyright infringements. Henley got a reputation for suing pretty much every major competitor in every market. We were very aware of consequences, and every plan was checked by me thoroughly; compared to make sure that not even a tiniest element accidentally, I suppose, ended up being identical or similar or closely resembling one of the Henley elements. In addition, I thought - after checking that, I thought if I give them the plans they can do the same and avoid the cost of litigation.
In accordance with the principles established in the line of precedents which he had properly followed, Justice Spender treated this statement as evidence that Tamawood was engaged in a systematic attempt to ensure that it did not infringe Henley's copyright. His Honour did not consider the implications of Henley's conduct.
From a policy point of view, there is some danger in an approach which gives undue emphasis to the conduct of the defendant. In failing to consider the conduct of the plaintiff in a case like Henley v Tamawood, the court could effectively be condoning the creation of a monopoly in markets like the project home design market. Once stylistic considerations are excluded from the equation, there are only a limited number of variations on the design of a basic suburban 4 bedroom home. It is apparent from the fact that Henley has been in the Federal Court twice in the last 5 years that it is an aggressive operator. Its lawyers may have issued numerous threats of litigation which have not reached the Federal Court. Many other project home designers may also feel that they are in the very situation outlined by Mr Mizikovsky. In other works, that anything they create will inevitably involve a large number of similarities with an existing Henley design and will attract a threat of litigation. Henley has clearly demonstrated to the market a clear willingness to carry out its threats of litigation.
In light of Henley v Tamawood, all designers of project homes will now have to give careful consideration to each component of their plans to ensure that there are not too many of them which might be common to another design. In addition to the work required in the creation process, a labour intensive survey of the market will now have to be conducted. Even then, nothing may stop an aggressive operator from threatening legal proceedings purely as a means of protecting their market share rather than their legitimate copyright interests.
An Objective Approach
An approach to the test of objective similarity which places less emphasis on the conduct of the defendant would not be inconsistent with precedent. Justice Spender correctly observed that the question of substantial reproduction is a qualitative, rather than a quantative one:
In considering whether a substantial part of the plans have been taken by the respondent, the quality rather than the quantity of what has been taken from the designs is important, and the overall impact of the designs rather than specific individual or minor features is what is important. It is the overall design and combination of features which leads to the conclusion...9:
However, it is not clear that Justice Spender did necessarily apply a qualitative test. Tamawood argued that the similarities between the Gould and the Chirnside could be explained in terms of coincidence. In view of the large number of similarities between the two designs, it was very easy for his Honour to conclude that the similarities were more than a coincidence and that, having failed in relation to its primary argument, Tamawood was in breach of copyright.
His Honour's deliberations may have been different if Ms Gould and Tamawood had admitted that they been strongly influenced by the Chirnside in the same way that Greg Cummins admitted that he had been influenced by the work of Dean Vella. Tamawood could have argued that, given their enthusiastic embrace of Henley's stylistic influences, the number of similarities between the two designs was inevitable. His Honour would then have been faced with a far more difficult question.
It is not apparent that Justice Spender specifically considered the quality of the individual parts of the Chirnside design which were taken by Tamawood. His Honour appears to have taken the view that he did not need to, because Tamawood's defence had already been defeated. However, it is a well established principle of copyright law that, where there has not been a direct copying of the whole of the work, it is necessary to consider the originality of the part or parts taken. As Lord Pearce said in the decision of Ladbroke (Football) Ltd v William Hill Ltd10:
In considering whether the defendant has taken a substantial part of the plaintiff's work it is first necessary to determine whether the plaintiff's work as a whole is protected by copyright and then to inquire whether the part taken by the defendant is substantial. If what is taken consists only of unoriginal parts of the plaintiff's work (in the case, for example, of a compilation) that will not usually be a substantial part of the copyright.
It is submitted that Justice Spender should have given less emphasis to the conduct of Tamawood and taken another step after identifying the parts of the Chirnside design which were allegedly taken by Tamawood. The outcome may have been the same. However, if those parts, on their own, would not have attracted copyright protection because they are common to a large number of project homes, they can't, in aggregate, constitute a substantial part of the copyright in the whole. The essence of the copyright in the Chirnside plans could be said to lie in the original composition of a large number of unoriginal components, like the copyright which exists in Telsta's phone directories. The fact that a large number of those unoriginal components have been copied does not necessarily amount to a substantial reproduction of the whole. Alternatively, there may be a unique feature of the Chirnside in which the substance of the copyright interest in the whole design is quintessentialised, like the chorus of a song.
In a case involving works in respect of which there is a limited number of possible variations in a limited market, such as project home designs, it will not be productive for the court to engage in a lengthy consideration of the motives of the alleged infringer. It will probably always be the case that there is a causal connection between the two works and that the motives of the infringer are impure, because plaintiff and defendant will be competitors in a relatively small market. As a purely practical matter, it will often be largely impossible to distinguish between the situation in which conscious and unconscious copying might have taken place, to determine whether the infringer has been influenced by style rather than form or to decide whether the situation is one of genuine flattery or dishonest appropriation.
As a general principle, copyright demands a very low level of originality and is unconcerned with the underlying idea. A work need not have any artistic merit at all to attract the protection of copyright; it need only be more than simply a substantial reproduction of another work11. Particularly in cases involving purely commercial literary works such as lists, tables and directories, the courts have emphasised that the key function of the law of copyright is the protection of the labour, skill and investment of the plaintiff12. The underlying rationale of copyright protection is that nobody should be allowed to appropriate the labours of another as a short cut to creation. The most serious offender known to the law of copyright is the person who spends 5 minutes copying the work of another, the creation of which may have taken months or years, and then deals with the work as their own.
In determining objective similarity, a threshold issue, rather than the intention of the alleged infringer, should be the time and labour expended by the alleged infringer in relation to the creation of the alleged copy. If the time and labour spent is not commensurate with the creation of an independent work of the kind in question, there will be a strong implication that the alleged infringer has taken a short cut and appropriated the work of the other party. If there has been considerable time and labour expended by the alleged infringer, the court should then go on to deconstruct the two works as Justice Spender did in Henley v Tamawood. The final step should be an objective consideration as to whether any one or more of the parts taken would of themselves attract copyright protection. It should not be sufficient that there is simply a large number of similarities.
This suggested approach is generally consistent with the approach taken by the Full Federal Court in the decision of TCN Channel Nine Pty Ltd v Network Ten Pty Ltd13, in which the court decided that the broadcast copyright subsists in each and every still image in a television program, rather than just in the broadcast program as a whole.
In applying the test of objective similarity to determine whether substantial reproduction has taken place, the courts should not be unduly influenced by the conduct of the defendant. If the court is so influenced, there is a risk that it could be condoning the creation of a monopoly in favour of the plaintiff. While the rights of the owner of an original work must always be protected, ultimately the integrity of copyright law rests on its ability to withstand accusations concerning the creation of monopolies.
Until the precise implications of the decision in Henley v Tamawood are clarified, all designers of project homes should give careful consideration to each component of their plans to ensure that there are not too many of them which might be common to another design. Even then, nothing may stop an aggressive operator from threatening legal proceedings purely as a means of protecting their market share rather than their legitimate copyright interests. In the event of such proceedings, as much as it might go against the grain, the defendant could be well advised to proclaim their boundless admiration for the plaintiff's work and to highlight the powerful stylistic influence the plaintiff's work has had on their own work, rather than entering into a discussion about the phenomenology of coincidence.
1 (2002) FCAFC 218.
2 (2003) FCA 204.
3 (2001) 53 IPR 538
4 Section 14(1) of the Act provides that "a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter."
5 S.W. Hart & Co Pty Ltd v Edwards Hot Water Systems (1985)159 CLR 466 at 472.
6  2 NSWLR 278 at 284.
7 46 IPR 309 22 at 28.
8 At paragraph 54.
9 At paragraph 55.
10 (1964) 1 WLR 273.
11 Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937)58 CLR 479, Dixon J at 511.
12 Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd(2002) 55 IPR 1;  FCAFC 112 (Black CJ, Lindgren and Sackville JJ) (15 May 2002) at .
13  FCAFC 146.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.