Copyright and Design Act

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					   Case: BH and Booker Homes Pty Ltd v Ewing


       Copyright Act 1968 and Design Act 2003
                                                     by

                                              Muhamed Azrul Azli

                                      Monash University Malaysia 2009

                                    Email: maazl1@student.monash.edu.my




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Introduction

       This essay attempts to examine the rights of BH and Booker Homes Pty Ltd over the Ewing
house design and whether infringement of copyright exist for Masago over the Ewing House under

the Australian intellectual property laws, after Masago took a copy and build their own version of

Ewing house.

        The intellectual property can be described as “the expression used to describe the rights

attaching to such things as inventions, trade marks, product designs and copyright material” 1. The

authors stated the trade-off between the right of the creator of a novel idea to commercially exploit

and sell his creation, and the community’s right to benefit from this. Intellectual property relates to

an issue of ownership and belonging of something created, and ways in which the law can protect

products and their creators from unjust conduct and new competition.

        The discussion will focus on the legal actions that might be brought by BH and Booker

Homes Pty Ltd (BH) under the Australian Copyright Act 1968 as well as Design Act 2003.



Copyright Act 1968

        The Copyright Act use to protect the expression of ideas, supporting the originality and the

creativity of the product produced by the human mind, original literacy, musical, dramatic and

artistic works or other subject matter which included sound recordings films and broadcasts and

published editions. The copyright owner has the exclusive right to do certain acts in respect of the

copyright material. The purpose of the Copyright Act is to protect the way in which the original

ideas are presented2. Copyright is created to protect the expression of an idea, not the idea itself3.



Are the Parties Qualified Person?

Under the s.32 of Copyright Act mentioned that copyright exists in the original literary, musical,

dramatic and artistic work that just the creator of works is qualified person. In order to consider as

qualified person, the person must be an Australian citizen, an Australian protected person or person


1
    B. Clarke & B. Sweeney, Marketing and the Law, Butterworths, Australia, 2006
2
    Donoghue v Allied Newspapers (1937) 3 ALL ER 503
3
    B. Clarke & B. Sweeney, Marketing and the Law, Butterworths, Australia, 2006
resident in Australia and also applies to most of foreigners as it applies to qualified person4 by

virtue of International Protection under the Copyright Regulations 1969. The case did not mention

specifically the location of the person, but it is assumable that both parties are Australian citizen and

Australian complies with its obligations under Berne Convention.




Requirements to seek on Copyright

Material Form

         For the copyright to exist in literary, dramatic, musical or artistic work, it must be in a

material form. S. 10 of the Copyright Act 1968 stated material form as “in relation to a work or an

adaptation of a work, includes any form (whether visible or not) of storage of the work or

adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation,

or a substantial part of the work or adaptation, can be reproduced)”. This means that no copyright of

ideas will exist until the expression of ideas had been reduced to a material form. Furthermore, S.

22 of the CA stated that this making as occurring when the work is first reduced to writing or other

material form which is permanent or fixed surface from which the expression can be copied5. In this

case, Ewing house plans is exist in material form, it printed in a paper and thus it will permanent

exist.

Originality

         Originality means that the work must originate from the author themselves and yet not be

copied from somewhere else. Copyright protect the skills, labor and judgment occupied in the

production of the work rather than any creative merit6. In addition, copyright do not pay concern on

the originality of the ideas, but in the case of Ewing house plans, is the expression of thought in

print or writing7. In this case, BH, the designer certainly need some skills, labor, knowledge,


4
    B. Clarke & B. Sweeney, Marketing and the law , Butterworths, Australia, 2006
5
    Merchandising Corp Of America Inc v Harpbond Ltd (1983) FSR 32
6
    Sands & McDougall Pty Ltd v Robinson (1917) 23 CLR 49
7
    University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601
experience and judgment in order to produce the Ewing house plans, and yet is not copied from

another. Thus, this will satisfy the test for originality.

Substantially Test

          The purpose to established a substantially test is to judge whether the literary work, it must

be substantial enough8. Substantial in the case of Masago, means the house plan must be included

enough information to build the house. Reasonable person test is used to find out whether the

Ewing house plan was substantial. Even though the house plan is only a simple page, the house plan

is an important part to build a house. In addition, the house plan involves scales and features of the

house which the reasonable person would think it is significant to say the house plan is substantial

and the plan was drawn at the grid sheet with grid lines which makes it easier to scale and build the

house. This is saving the builder time managing come out such plans, involved less skills and

judgment as well. Furthermore, the settings of the interior design is so clear for the Ewing house

plans to let a reasonable person to consult their own builder if they like to build one as well, even

though there are some minor change made by the Marago family. Perhaps, the size of the house will

almost the same, this can show from easily identified by Raphael while he drove through the new

suburb.



Works and other subject matter

Artistic Works


          s. 10 of the CA describes artistic work as “(a) a painting, sculpture, drawing, engraving or

photograph, whether the work is of artistic quality or not; (b) a building or a model of a building,

whether the building or model is of artistic quality or not; or (c) a work of artistic craftsmanship

whether or not mentioned in paragraph (a) or (b)”. In this question, is the issues of copyright in

buildings and models for buildings, pay no concern about the artistic quality of the building or




8
    Exxon Corporation v Exxon Insurance Consultants Ltd [1981] 3 All ER 24
model of the building. A building can be exist in any kind of structure9, even mini tennis court.

Copyright clearly exist in the example of Ewing house plans, the floor plan for a house as the

drawing of the plans provided is original from the BH.



        In this case, BH is the originator of the Ewing house plans and hence the design is protected

by copyright. Even though s.31 give exclusive rights for each form of original but building a dream

house is not under a material form, where reduced from ideas to permanent form of writing or

drawing.




9
    Half Court Tennis Pty Ltd v Seymour (1980) FLR 240
Ownership of Copyright



         s.35 (2) of the act stated that the general rule is the author is the owner. The author is the

person who created the original expression but not the person who conceived the idea10. The terms

and nature of arrangement made it clear that the parties must have intended BH to be the beneficial

owner. In this case, there are no clear evident that Raphael is the employee of BH or just a

commissioned designer. No matter what, the plans draw and designed by Raphael must get an

approved by the BH. Also, BH is the only party that holds the authority to quote the price of entire

project, whether or not it is modified. This show very clear that BH hold power over the employee,

even though assume that Raphael is commissioned designer. Hence, the owner of Ewing house

plans is BH.



         If the house plan was created under the course of employment, most likely the copyright

will belong to the employer. There are several considerations must make before determine who is

the owner of the copyright on Ewing house plans. Firstly, the position or status of Raphael, the case

did not mentioned about the position of Raphael. Therefore it is not known whether Raphael is a

senior in Booker Homes. So, this remain unclear.



         Secondly, Raphael was hired clearly to make a house plan for Booker Homes which the

invention is the subject of building a house, therefore the second element is fulfilled. Thirdly, it is

highly possible that Raphael used the employer’s material as making a house plan need some

specific civil engineering equipment where only the constructions company will have it.

Furthermore, Raphael house plan is related to construction business. Lastly, the express term of the


10
     Griggs Group Ltd v Evans & Raben Footwear (2003) EWHC 2914
contract, the case did not mention anything about term of the contract so it is not known whether

there is a contract or not. However, the author, Raphael, the designer, if he is an employee of the BH

and the Ewing house plans was made pursuant to the contract employment, copyright belongs to the

employers11 which clearly mentioned in s35 (6) of CA. Thus, this is clear the owner of the plans

will be BH.



         Thus, it is cleared that Linda is go against the copyright issue to rebuilt their dream house

base on the design of Ewing house plans owned by BH according mostly with the design and

expression of the idea of the BH. Even though Linda Masago make some changes to the standard

design of the Ewing house plans, even though, the changes is minor, not crucial and which does not

clear differentiations between two houses. By adding an additional cupboard in the hall between

bedroom 3 and 4, it will clear that such change will be make different from the outsiders’ point of

view. Furthermore, the same thing happen when Linda wanted to move the laundry to beside the

main bathroom instead of beside the main bedroom. This is so clear that Marago intention of

building the similar house based on Ewing house plans.




11
     Redrock Holdings Pty Ltd & Hotline Communications Ltd v Hinkley (2001) VSC 91
Elements of Infringement under s.36



        Copyright in original work is infringed under s.36 of CA where a person, without the

copyright owner’s permission, in the case of an artistic work, to do all or any of the following acts

under s.31 of CA: (a) to reproduce the work in a material form; (b) to publish the work; (c) to

communicate the work to the public. Furthermore, under s. 14, copyright only infringed if the

impugned act involves the whole or a substantial part of the copyright work. The expression

“substantial part of the copyright work” refers to the quality, in the sense of originality of the work

but not quantity. Thus, this means that infringement of the copyright exists where a vital or material

part of the work has been copied12. The quality is more important than the quantity of the amount of

material taken13, the degree of work taken is copyright, whether Masago family’s intention was to

take the Ewing house plans for the purpose of saving themselves lots of times and effort to come

out the whole ideas and also to the extent which the BH and Masago works complete14. Clearly, the

work from BH accomplished as well as the Masago’s house.



         The Masago’s actions perform without the permission of the owner, BH and also none of the

exceptions to infringement apply under s.36 of CA. Furthermore, intention of Masago building of

their dream house is irrelevant. Although copying the idea itself is not infringement15, nevertheless,

infringement exists when there is a reproduction of the work like what happen with the Masago

example.




12
     Cummins v Vella (2002) FCAFC 218
13
     Millpurrurru v Indofurn Pty Ltd (1994) 30 IPR481 at 490
14
     Ravenscroft v Herbert and New English Library Ltd (1980) RPC 193 at 203
15
     Zeccola v Universal City Studios (jaws and Great White)
Remedies



           Under the s.115 of CA relief for infringement may include orders for injunctions (on such

terms as courts may see fit), awards of damages or orders for an account of profits.



           For the Masago case, if the court found out that they infringe directly, the remedies would be

damages. It is likely that Masago would have to compensate BH for loss in value of copyright by

the infringement. However, if the court come to a decision innocent infringement for Masago,

s.115(3) of CA the court may refuse to award damages like in the case where the plaintiffs was

precluded from recovering damages. In this case the damages are not measured. However,

sometime if the direct infringement cannot be established, the true measure of damages will usually

be restricted to the fair value of a licence to use the work16. In the cases where the infringement

merely involved the construction of a single private house, such awards do not usually exceed

$1000.0017, which is similar to the Masago family case.



           The Masago did that because the design of the Ewing house plans is so similar to their

dream house. The house that they desired and dream to build back from quite several of time. This

can proved from approached several difference builder to build at their affordable price, cause

having live in the dream house is just everything for them. Furthermore, the Masago only build the

house for private use, the intention of private use is so clear. Thus, that likely to be that the damages

will not be too much as it is for Ferdinand, who uses the ideas with a commercial profit making

intention. Thus, the favorable actions that BH can brought is may ask for making profit made by the



16
       New England Country Homes Pty Limited v Bradley Moore (1998) AIPC 91-410.
17
     Turner, AInjunction to restrain completion of a house for alleged infringement of copyright at (1995) 16 Qld Lawyer
     77.
infringement18.




Design Act 2003



         The Design Act (DA) provides a system of registration for new and distinctive designs. The

main purpose of the DA is to protect the overall look by which the product is presented for sale. The

Design Act not created to protect the product functions, feeling of the products, the ways it uses or

the ways which it is constructed. Under s.5 of the DA, design is the overall appearance of the

“product” resulting from one or more visual features of the products. Product can be defines as “A

thing that has one or more indefinite dimensions is only a product for the purposes of this Act if any

one or more of the following applies to the thing: (a) a cross-section taken across any indefinite

dimension is fixed or varies according to a regular pattern; (b) all the dimensions remain in

proportion; (c) the cross-sectional shape remains the same throughout, whether or not the

dimensions of that shape vary according to a ratio or series of ratios; (d) it has a pattern or

ornamentation that repeats itself”.



         In addition, under s. 15 of DA, in order to get the work to be registrable, the product must be

new and distinctive to designs in public use in Australia or published anywhere in the world. A

design is a registrable design if the design is new and distinctive when compared with the prior art

base for the design as it existed before the priority date of the design. The design of Ewing house

plans will be consider new if it is not identical to a design in the prior art base. Hence, the Masago’s


18
     Data Industries Inc v Decor Corporation Pty Ltd (1993) 26 IPR 193
dream house is not a new design by her ownself as it is substantially similar to the BH except some

minor change in interior design. Thus, this means that they breach the law of Design Act 2003.



       Furthermore, there are some factors to be considered in s.19. s.19(1) focused on more

weight to the similarities rather than the differences. S.19(2) also consider the prior art base and also

the statement of newness and distinctiveness given in an application. Also, s.19(3) stated that “if the

design application in which the design was disclosed did not include a statement of newness and

distinctiveness in respect of particular visual features of the design, the person must have regard to

the appearance of the design as a whole.”



       It is cleared from the fact that Linda as the intention to copy the design of the village house

which produced by the BH as they even took back the copy of the Ewing house plans. Hence it is

possible for BH to seek remedies to stop Linda action, perhaps, apply injunction to ruin the house or

maybe ask some economical penalties from Masago family.




Conclusion



       In conclusion, Booker Homes Pty Ltd may bring about successful action against Marago’s

family as well as Ferninand under the Copyright Act 1968 and Design Act 2003. By the significant

contrasts to designs, in copyright a work may, in fact, same as the previous work but still capable of

obtain protection if it is not copy. The key argument in copyright is independent creation, while

designs must always be “new and distinctive”.



Reference List
Clarke, B and Sweeney, B. (2006), arketing and The Law, 3rd edition, LexisNexis Butterworths:

Australia