August 3, 2020

Volume X, Number 216

July 31, 2020

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Henley Arch Obtains Significant Damages Award in Copyright Claim Against Home Owner

Late last year, Judge Baird of the Australian Federal Circuit Court handed down a decision in the case of Henley Arch v Del Monaco, a copyright infringement matter in respect of a project home design.

The claim was brought by well-known Australian builder Henley Arch, who readers might also recall from the 2016 decision in Henley Arch v Lucky Homes. The respondent in this case, Dorian Del Monaco, was an individual who owned a property in Pakenham (Melbourne), Victoria.

In 2015, Mr Del Monaco purchased a vacant plot of land in Pakenham and sought to build a large “ranch-style” home on the property. At this time, Henley Arch was promoting a style of project home known as the “Colorado”, which was based on floor plans created by an employee of Henley Arch.

Judge Baird found that in the course of Mr Del Monaco’s search for an appropriate home to build on his Pakenham property, he had come across the Colorado design on Henley Arch’s website. Mr Del Monaco proceeded to take a photo of the Colorado floorplan and send it to a third party builder, Elite Building Services. The photo did not bear any Henley Arch indicia and it was not contended at trial that Elite Building Services was aware of the association with Henley Arch, nor was Elite Building Services a party to the proceeding. Ultimately, plans were prepared for Mr Del Monaco by reference to the Colorado plan in the photograph and a home based on those plans was built at the Pakenham property.

Henley Arch commenced proceedings against Mr Del Monaco for copyright infringement. The court readily accepted that copyright existed in the Colorado plans and that the building of a house could constitute infringement of copyright in a floor plan. The Judge assessed the similarities between Henley Arch’s Colorado plans and the plans for Mr Del Monaco’s Pakenham house, and found that the Pakenham house plans reproduced a substantial part of Henley Arch’s design. Judge Baird found that Mr Del Monaco’s behaviour in commissioning the Pakenham home and his participation in the build process indicated that he had authorised the builder’s actions in reproducing Henley Arch’s design (in order to create the plans for the Pakenham house and also to build the house). Mr Del Monaco had therefore infringed Henley Arch’s copyright. He had also infringed copyright by taking the photograph of Henley’s plan and by emailing it to Elite Building Services.

Henley Arch sought compensatory and additional damages from Mr Del Monaco.

Evidence was given that had Henley Arch built a Colorado house for Mr Del Marco, its profits would have been in region of A$67,000. In order to arrive at the loss suffered by Henley Arch as a result of the infringing conduct, Judge Baird applied discounts to this figure to allow for contingencies and uncertainty as well as a reduction to account for the possibility that Mr Del Monaco might not have actually contracted with Henley Arch to build him a home “but for” the infringing conduct, and arrived at a compensatory damages awarded of $42,000.

Judge Baird also ordered Mr Del Monaco to pay $40,000 in additional damages, having regarding to factors including his failure to adequately engage with Henley after he was put on notice of its copyright infringement claims, his financial position and the need to deter similar infringements of copyright in the future.

In total, Henley Arch was awarded $82,000 in damages plus interest of almost $5,000. This award is substantial for a single house and shows that there is merit in designers and builders pursuing infringement claims for one off builds. In addition to recovering compensation, judgments like this are an effective way for designers and builders to signal to the market that they will not tolerate copying and will take action if their designs are used without permission.

Copyright 2020 K & L GatesNational Law Review, Volume X, Number 97

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About this Author

Savannah Hardingham, Intellectual Property Lawyer, Special Counsel, KL Gates
Special Counsel

Ms. Hardingham is an intellectual property (IP) lawyer with experience in the protection, management, exploitation and enforcement of IP rights including trade marks, copyright and designs. She has a broad range of litigation experience which includes IP matters as well as disputes regarding the misuse of confidential information, defamation, passing off and misleading and deceptive conduct.

Ms. Hardingham has acted for a range of clients including fashion and footwear brand owners, designers and manufacturers, designer builders, prolific...

+61.3.9205.2043
Karen Liu Complex Commercial Litigation & Disputes Attorney K&L Gates Melbourne, Australia
Lawyer

Ms. Liu joined K&L Gates as a seasonal clerk and then as a graduate, completing the graduate program.

This is a temporary biography. A complete biography will be available soon.

Primary Practice

  • Complex Commercial Litigation and Disputes

61.3.9205.2086