Copyright Lessons from McDonald Jones Homes v Potter [2025]

Decision Date: 4 June 2025

Court: Federal Circuit Court of Australia (Division 2 – General Federal Law)

Judge: Manousaridis J

1. Copyright in Building Designs Is Strong – But Must Be Proven

This case confirms that floorplans and house designs can qualify as original artistic works under the Copyright Act 1968 (Cth). However, simply asserting copyright ownership is not enough—ownership must be clearly established, often through the submission of:

• Contracts and deeds of assignment;

• Evidence of who created the work and when;

• Consistent commercial practices supporting ownership (e.g., employment, subcontractor arrangements).

Takeaway: Keep robust records of who created the plans and ensure all contracts with employees and designers include IP assignment clauses.

2. Assignment of IP Must Be Clear, Timely, and Enforceable

McDonald Jones Homes (MJH) had acquired copyright through multiple corporate entities. The Court accepted equitable assignments (as opposed to legal assignments) because MJH had a legitimate commercial interest in enforcing past infringement.

However, MJH failed to formally join the assignor, which was a procedural defect the Court was willing to excuse on this occasion.

Takeaway: Always ensure:

• Deeds of assignment are clear and comprehensive;

• Assignors are joined to proceedings where necessary;

• The right to sue for past infringement is explicitly addressed in agreements.

*Equitable assignment is the transfer of equitable ownership of an asset from one person to another. Equitable title is the right to obtain legal title to an asset in the future.

3. Similarity ≠ Infringement Without Proof of Access or Copying

MJH’s case relied on the inference that the alleged infringing plan was a copied and combined version of its protected designs. Although similarities were acknowledged, the Court found:

• No direct evidence that Mr Potter supplied or authorised the infringing plan; and

• The burden of proof lies squarely with the party alleging infringement.

Takeaway: Even a compelling similarity won’t win a copyright case unless you can show:

• How the alleged infringer had access to your work;

• That they actually copied or authorised its reproduction.

4. Authorisation Liability Is Not Automatic

MJH argued that Potter had authorised the infringement by supplying the alleged infringing plan to the designer. The Court disagreed, noting:

• No conclusive evidence that Potter created or provided the plan;

• No evidence that he instructed the designer to use MJH’s works.

Takeaway: To succeed on an authorisation claim, you need to demonstrate clear direction or involvement—passive knowledge is not enough.

5. Metadata and Emails Help—But Can’t Replace Eyewitness Credibility

Metadata was presented to support one party’s version of events, including timestamps on files and emails. The Court acknowledged the metadata and emails but relied more on human evidence and credibility, finding inconsistencies in witness accounts.

Takeaway: Metadata and documentation are helpful, but courts scrutinise the whole story—including context, consistency, and credibility of witnesses.

6. Procedural Precision Matters—Even If It’s Not Fatal

While MJH’s failure to join the original copyright holder could have undermined the case, the Court excused it due to MJH’s equitable entitlement and genuine interest. However, this was an exception, not the rule.

Takeaway: Structure proceedings correctly from the start. Join necessary parties and clearly identify the basis for any assigned rights to sue.

Summary

Best Practice	Why It Matters
Secure written IP assignments	Proves ownership from the outset
Record design ownership carefully	Protects against copycat claims or defences
Retain evidence of decisions and meetings	Supports your version of events
Plead assignments and standing clearly in proceedings	Prevents procedural challenges
Avoid using or replicating competitor brochures	Risk of accidental infringement