Copyright In The Plans For Project Homes. A Fine Line Between ...

22 OCTOBER 2008
Copyright In The Plans For Project
Homes. A Fine Line Between
Functionality And Originality
Dibbs Abbott Stillman Lawyers restructured on 1 March, 2009.
The Sydney, Brisbane and Canberra offices are now DibbsBarker.
The competitive nature of the project homes market can make it difficult for developers to market and sell a project home that
both meets the functional needs of potential customers, as well as offering some individuality and originality. A number of
recent Federal Court decisions have highlighted the complicated relationship between project home designs and copyright
law. These cases include Barrett Property Group Pty Limited v Metricon Homes Pty Limited (2007) 74 IPR 52, Barrett
Property Group Pty Limited v Carlisle Homes Pty Limited [2008] FCA 375, Metricon Homes Pty Limited v Barrett Property
Group Pty Limited [2008] FCAFC 46 and Inform Design and Construction Pty Limited v Boutique Homes Melbourne Pty
Limited [2008] FCA 912.
The intention of this article is not to specifically review these cases but instead consider the common issues that arise when
attempting to protect the copyright in the design of a project home.
Subsistence of copyright in project home designs
A drawing constituting a design for a project home is protected under the Copyright Act 1968 (the Act) as an artistic work.
The copyright owner has the exclusive right to reproduce the work, or a substantial part of the work, in a material form. Under
s21(3) of the Act, an artistic work shall be deemed to have been reproduced if a two dimensional drawing is reproduced in
three dimensional form, or vice versa.
It is a reproduction of the copyright in a drawing for a design of a home (the Original Design) to either build a home by
reference to:
the Original Design, or a substantial part of the Original Design; or
a home, or a substantial part of a home, that has been built based upon the Original Design.
If either of these are done without the permission of the owner of the copyright in the Original Design, it is an infringement of
the copyright in the Original Design and is a breach of the Act.
Perhaps the best summary of the difficulties that can arise in relation to copyright in project home designs was set out in
Tamawood Limited v Henley Arch Pty Limited (2004) 61 IPR 378. This case noted that all modern homes have certain
features in common and in the case of project homes, there are pressures towards sameness. There are also certain
functional elements often common to all homes, such as the desire to place the dining room close to the kitchen, an en suite
bathroom in the main bedroom and at least one bathroom in proximity to the other bedrooms. The design of a project home,

therefore, requires a mixture of commonplace features with labour, skill, judgement and, as a result, some originality.
The more simple, commonplace and straightforward the subject matter of a copyright work, the closer the similarity required if
infringement of that copyright is to be found.
Protection under the Act also not only applies to the design as a whole, but to substantial parts of that design. The question
as to what is a substantial part is a question of fact and degree but is also decided by its quality rather than its quantity. Even
if, therefore, only a small part of the design is copied, that part could be an essential part from a qualitative sense and still
amount to an infringement of copyright. In Tamawood, the Court asked whether the part or parts taken represented a
substantial part of the labour, skill and judgement of the author that made the whole work original.
The dividing line between that which is dictated by broad functional requirements and that which is not, is, however, often
unclear.
Recent cases
Recent cases illustrate the types of issues that arise.
Inform Design failed in its case against Boutique Homes. This case was concerned with the positioning of the staircase and
the location of the wet services surrounding it. This concept made good economic sense and was adopted by both Inform
Design and Boutique Homes. Inform Design claimed Boutique Homes had copied its design. Boutique Homes was, however,
able to produce a detailed documentary trail demonstrating how it had come to independently create its own design over
several months and with hundreds of changes based upon trial and error. The independent creation of a work that is the
same, or substantially similar, to that created by another does not amount to copyright infringement.
Barrett was successful in its disputes with both Metricon and Carlisle Homes. Central to these disputes was an “alfresco
quadrant” feature which formed part of Barrett’s designs. Both cases noted that Barrett had invested significant amounts of
labour, skill and judgement in the development of the plans for its houses with the alfresco quadrant. In fact it was the
alfresco quadrant that was the distinctive and essential feature of Barrett’s designs. This feature was copied by both
Metricon and Carlisle Homes. The alfresco quadrant formed a substantial part of Barrett’s designs and was more than just a
commonplace design. Barrett was able to produce documentary evidence to demonstrate that the alfresco quadrant was the
product of considerable design evolution.
In relation to one of its project homes, Barrett was able to produce approximately 130 drawings and notes that culminated in
the final plan and the development of the alfresco feature. Far from being trivial, this design feature had not appeared in the
market before and formed a key part of a commercially very successful design.
Lessons for project home designers
Designers should be aware of the fine line that exists between a home consisting of purely common features driven by
functionality and the original features that make a project home stand out from the crowd. If a designer has invested
significant time, skill or judgement in designing the original part, then any argument that that part is a merely trivial part of the
design may not stand up in a court.
It is important to keep records of all designs to demonstrate how they came about. A document trail showing how a design
came about can help support an argument that a particular feature is far from functional and is, in fact, an essential, original
part of the design from a qualitative point of view (as per the Barrett cases). In other words, a great deal of thought went into
creating that particular part of the design and it warrants copyright protection.
Another reason for keeping a document trail is to assist (as it did Boutique Homes) with the defence of any accusations of
copying. The document trail could demonstrate evidence that a design was developed independently and it was just a matter
of chance that it turned out identical or similar to the design of another.
The often functional nature of project home design can make it difficult to develop and protect truly original ideas. The
competitive nature of the industry and the fine line between functionality and originality lends itself to designers potentially
crossing the line between what they can copy and what they cannot copy. The suggestions in this article may help designers

emain on the right side of copyright laws.
Michael Sutton, Senior Associate
IP & Technology Group
E: michael.sutton@dibbsbarker.com