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I’ll have what she’s having
Intellectual Property Law News | August 2015
Court orders mandatory alterations to a newly built house for infringement of a designer’s copyright
Architects and designers may be interested in a recent decision from the Supreme Court in Queensland in the case of Coles v Dormer & Ors [2015] QSC 224, where it was ordered that copyright infringement had occurred where modifications to be made to a newly built house by the Defendant where the Defendant had copied the design of the Claimant’s house in Port Douglas.
Background
Mr Coles (the Claimant) competed with the Bredens (the Third Defendants) to buy a house with a unique style from the original owners (the Spicers) who had come up with the initial design ideas for the house and had engaged an architect to implement their ideas. The Claimant was successful in buying the house. The Third Defendants decided to engage the builders (the First and Second Defendants) to build a similar house for them in the same estate.
In an effort to prevent this, Mr Coles obtained an assignment of the copyright in the original house plans for two years from the building designer and later sought an injunction, damages, and an order to be provided with all infringing copies of the plans for the Third Defendant’s house.
The Claimant relied on a number of sections of the Copyright Act 1968 (Cth), alleging that the Defendants converted house plans (in which he held copyright which had been assigned to him by the building designer) to their own use and infringed copyright by reproducing the plans and constructing a substantial portion of their house based on those plans.
Held
The Judge in this case found in favour of the Claimant, establishing that there had been an infringement of copyright and conversion and the Third Defendant’s house was found to be closely similar to the design of the Claimant’s house. The Defendants were ordered to make significant alterations to change the appearance of their house.
Issues and key points
- The originality in the architect’s work: given that it arose from instruction from the original owners of the house, there may be a question of joint authorship. However a building designer can own copyright in housing plans even if someone else provided draft plans and design ideas in a “rough ideas email”.
- Courts may be willing to grant an injunction to change the appearance of a building if the Defendants knowingly pressed on in its construction, in infringement of the copyright held in the house plans.
- The grant of an injunction and prompt compliance with the injunction may significantly reduce the amount of damages and additional damages awarded.
Conclusions
It is important for designers and other operators in the building industry to be aware that there are significant risks involved in referring to another builder’s or designer’s work when developing “new” designs.
However in relation to the “rough ideas” provided to the architect by the original owners of the house, as these ideas were subject to extensive and detailed amendments by the architect, it was the Court’s view that the architect owned the copyright in the detailed plans independently. There was significant value in the architect’s plans which delivered a powerful remedy to the Claimant resulting in the mandatory alterations to the Third Defendant’s newly built house for the removal of the distinctive design features.
Forum Law advises in all areas of business and commercial law including laws relating to real property and intellectual property. Intellectual property is often overlooked as a serious asset of a business and it must be protected and asserted if it is to develop and preserve its value.
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