A recent decision of the Supreme Court of Western Australia in relation to infringement of intellectual property rights serves as a reminder to consultants working in the construction industry to make all necessary enquiries and seek appropriate assurances regarding copyright ownership and permitted use before adopting or amending  the designs of a consultant whom they have replaced on a project.

In Milankov Designs and Project Management Pty Limited v Di Latte [2018] WASC 14, an Architect who adopted and used drawings prepared by the Plaintiff failed in his defence of ‘innocent’ infringement under Section 115(3) of the Copyright Act 1968 (Cth).

The Architect had been retained by the Di Lattes  following the breakdown of their relationship with the Plaintiff and the termination of the Plaintiff’s retainer.

The Architect admitted to substantially reproducing drawings prepared by the Plaintiff but defended the claim of copyright infringement on the basis that at the time of the infringement the Architect was not aware, and had no reasonable grounds for suspecting, that the act constituting an infringement was in fact an infringement of the Plaintiff’s copyright.

The Court held that the Architect did not make out the defence of ‘innocent’ infringement. The Court found that the Architect was aware that the plans had been prepared by the Plaintiff under an agreement with the Di Lattes and, whilst the Architect had enquired about the terms of that agreement with Mr Di Latte, it did not go so far as to ask to see a copy of it. Further, the Architect did not contact the Plaintiff to ask if the Plaintiff contended that the use of the plans it had prepared in the manner proposed constituted an infringement of copyright.

The Court found that both the Di Lattes and the Architect infringed the Plaintiff’s copyright and assessed the Plaintiff’s damages resulting from the infringement at $157,825.

You can read a full copy of the judgment handed down in the case here.

Natalie Sullivan

Risk Manager