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INFRINGEMENT OF COPYRIGHT WHERE YOU HAVE NOT SEEN THE ORIGINAL WORK

The Full Federal court dismissed an appeal against a finding of infringement of copyright in the decision of Vawdrey Australia Pty Ltd v Kruger Transport Equipment Pty Ltd [2009] FCAFC 156. The decision has extended the bounds of copyright to cover three-dimensional features of a two-dimensional drawing. Also, copyright in work that has not been seen may be infringed by following the oral instructions of a third party.

The facts

Camerons, a transport company, in submitting a tender for a paper transport contract, sought quotations from both Kruger and Vawdrey for the design and supply of truck trailers. In response, Krueger and Vawdrey both submitted quotes for the transport of paper using specialised trucks. Krueger, as part of Camerons’ process of submitting the tender, developed a number of sketches and drawings to Camerons illustrating a ‘sliding gate’ or ‘load restraint system’ to be used with the truck trailers. It was this system that formed part of Camerons winning tender, however Camerons decided on Vawdrey, rather than Kruger, to supply the trailers. Accordingly, Camerons orally divulged Krueger’s concept to Vawdrey and asked them to modify their sketches to adapt the differences.

Given that Krueger had no patent or trademark protection, it chose to sue for breach of copyright.

The decision

The Full Court held that the Vawdrey Engineering Drawings involved a taking of the expression of the Krueger concept to ensure that the load was restrained. The question whether Vawdrey copied a substantial part of the Krueger Drawings was answered strongly in the affirmative.

The Court found that indirect access to copyrighted material, that is, through Camerons’ instructions and not through Krueger’s drawings, was sufficient in establishing a causal link. It was irrelevant that Vawdrey did not have direct access to Krueger’s drawings.

In refuting infringement, Vawdrey argued that the instructions to modify its design did not provide the required causal connection between the copyright work of Krueger and the Vawdrey design. This was because those instructions conveyed the general idea of the work, rather than the form of expression of that idea.

The Court found otherwise, ordering that in circumstances where the similarities between designs of the respective companies were sufficiently great, coupled with Vawdrey having the opportunity to gain access to the latter drawings, Vawdrey bore the onus of establishing how they created the Vawdrey Engineering Drawings. Essentially, Vawdrey had to show that it had not occurred as a result of copying. Thus mere access was sufficient in some cases to establish a causal link. The fact that the causal link was established via instructions from Camerons to Vawdrey, rather than direct access to the work by Vawdrey was therefore irrelevant.

This case expands the potential of copyright infringement in that neither the drawing, nor Krueger’s three dimensional trucks were ever viewed prior to the creation of the drawings by the infringing party. The defence of innocent infringement of copyright was also claimed by Vawdrey. That is, a plaintiff will not be able to recover damages where the defendant is not aware, and has no reasonable grounds for suspecting, that it has infringed copyright. However, Vawdrey failed in its claim. It was held that Vawdrey should have been suspicious of its instructions and should have made reasonable inquiries to identify the source of the information since Camerons was not in a position to hold independent views as to complex design features.

What you should learn from this case

The creator’s of materials that are subject to the laws of copyright need to take responsibility for their work. Creators bear a heavy onus to assure that they are not infringing the copyright of another person. Innocent infringement is not a defence to damages where there are reasonable grounds to be suspicious of the origins of a piece of work. Furthermore, when instructed to provide a design, the Creator needs to ensure the origins of any proposed modifications. This is particularly important in a competitive process such as a tender for a contract.

Holders of copyright need to be wary of parties to whom they submit their designs. Often, holders of copyright will have a remedy against a party who used their work even if the infringing party was of the infringement.

Please be advised that this article is not intended to be legal advice. All advice Berrigan Doube Lawyers provides is tailored to our client’s needs and therefore our advice is on a case-by-case basis after having consideration of our client’s circumstances.

For further information regarding copyright law or other legal enquiries, please contact Berrigan Doube Lawyers.