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|Judgments - Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)
HOUSE OF LORDS
Lord Bingham of Cornhill Lord Hoffmann Lord Hope of Craighead Lord Millett Lord Scott of Foscote
OPINIONS OF THE LORDS OF APPEAL FOR JUDGMENT
IN THE CAUSE
DESIGNER GUILD LIMITED
RUSSELL WILLIAMS (TEXTILES) LIMITED (TRADING AS WASHINGTON DC)
ON 23 NOVEMBER 2000
LORD BINGHAM OF CORNHILL
In common with all of your Lordships I agree that this appeal should be allowed and the judge's order restored, and I would order that the appellants have their costs before the House and in the Court of Appeal. But since there are some differences of approach among my noble and learned friends most expert in this field I venture to summarise, very shortly and simply, my own reasons for reaching the conclusion I do. For that purpose I gratefully adopt the account given by my noble and learned friend Lord Scott of Foscote of the facts and background of the case and of the judgments delivered by the judge and the Court of Appeal.
The law of copyright rests on a very clear principle: that anyone who by his or her own skill and labour creates an original work of whatever character shall, for a limited period, enjoy an exclusive right to copy that work. No one else may for a season reap what the copyright owner has sown.
It is not now disputed that DGL's Ixia design was an original product of DGL's skill and labour. That is not to say that DGL drew no inspiration from elsewhere: "there is no new thing under the sun". But the design was sufficiently original to earn copyright protection.
DGL complained that RWT, in its Marguerite design, had copied the Ixia design and so infringed its copyright. RWT strongly contested that accusation at trial, seeking to show that it had not and could not have copied the Ixia design. That, as I infer, was the central issue at the trial. But the judge rejected RWT's evidence. Relying in the main on similarities, which he listed, between the Marguerite and Ixia designs, he concluded in round terms that the one had been copied from the other.
That finding did not conclude the case in favour of DGL. For, realistically recognising that no real injury is done to the copyright owner if no more than an insignificant part of the copyright work is copied, section 16(3) of the Copyright Act 1988 provides that, to infringe, an act must be done "in relation to the work as a whole or any substantial part of it". So the judge had to consider whether RWT had copied DGL's work as a whole or any substantial part of it. Since the judge had based his finding of copying largely on the similarity between the two designs it would have been very surprising if he had found that RWT had not copied a substantial part of DGL's Ixia design, but it was necessary for the judge to consider that question, and he did. He found that there had been copying of a substantial part.
While not accepting the judge's finding of copying, RWT recognised the virtual impossibility of dislodging it in the Court of Appeal and did not challenge it. RWT's challenge was accordingly directed to the judge's finding that a substantial part of the Ixia design had been copied. The Court of Appeal upheld this challenge. But in doing so, as it seems to me, it fell into error. First, by analysing individual features of the two designs and highlighting certain dissimilarities the Court failed to give effect to the judge's conclusion, not challenged before it, that the similarities between the two designs were so marked as to warrant a finding that the one had been copied from the other. While the finding of copying did not in theory conclude the issue of substantiality, on the facts here it was almost bound to do so. Secondly, the Court of Appeal approached the issue of substantiality more in the manner of a first instance court making original findings of fact than as an appellate court reviewing findings already made and in very important respects not challenged. It was not for the Court of Appeal to embark on the issue of substantiality afresh, unless the judge had misdirected himself, which in my opinion he had not.
There was, I conclude, no ground for interfering with the judge's conclusion.
I have had the advantage of reading in draft the speech of my noble and learned friend Lord Bingham of Cornhill. I agree with it, but in view of the fact that we are differing from the Court of Appeal, I shall give my reasons in rather greater detail.
1. The Issues
There is no dispute that the plaintiff was entitled to copyright in the artwork for the fabric design Ixia. The infringement of which the plaintiff complained was that for the purpose of creating its own design Marguerite the defendant had copied a substantial part of Ixia. There were accordingly two main issues at the trial. First, what, if anything had the designers of Marguerite copied from Ixia. Secondly, did what had been copied amount to "the whole or a substantial part" of Ixia?
2. The findings of the judge  F.S.R. 803.
On the first issue, the position taken by the defendant at the trial was that its designers had copied nothing. Mrs. Aileen Williams, the director in charge of design, and Miss Ibbotson, who produced the art work under her direction, each said in evidence that they was not aware of Ixia at the relevant time. The judge did not believe them. He found them unsatisfactory witnesses and decided that they must have copied. In coming to this conclusion, he relied first upon similarities in the design which went "far beyond the similarities which would be expected simply from both being based on an impressionistic style or from both being based on a combination of stripes and scattered flowers and leaves." He listed these similarities as follows, at p. 813:
Secondly, the judge relied upon the inferences to be drawn from the fact that the defendant's designers had given a false explanation of the provenance of their design. Thirdly, he relied as similar fact evidence upon the fact that they had, as he found, copied the design of another competitor and falsely denied doing so.
On the second issue, the judge summarised the submissions of counsel for the defendant. This took the traditional form of dissecting the Ixia design into its component elements, assigning reasons why each element (such as "stripes," "flowers" etc.) lacked originality or had in some respects not been copied and concluding that those elements which had been copied were not a substantial part. The judge rejected the submission. He said, at p. 828, that the whole work should be considered:
3. The Court of Appeal
In the Court of Appeal Mr. Fysh Q.C., for the defendant, conceded that he could not challenge the judge's findings on copying. Only the issue of substantiality therefore remained alive. The Court of Appeal said that substantiality was a question of judgment on which they were in as good a position to form a view as the judge. They disagreed with him for three reasons:
(a) Visual comparison
Morritt L.J. said that when he compared the two designs, it appeared to him that the one did not involve the copying of a substantial part of the other. "They just do not look sufficiently similar." (paragraph 30) Clarke L.J. agreed.
Morritt L.J. (with whom Auld and Clarke L.JJ. agreed) analysed the component parts of the design. Although both had stripes and flowers, the layout of the flowers in Marguerite was different and the flowers themselves were not copies. That left only the idea of stripes and flowers, which was not original. The brushwork and resist effect involved the use of "comparable techniques" but the visual results were in certain respects different. The effects which were the same did not add up to a substantial part.
(c) Ideas rather than expression.
Morritt L.J. said, at paragraph 37, that the plaintiff was not entitled to a monopoly in ideas. The defendant copied "the idea of Ixia", they "adopted the same techniques" but did not copy a substantial part of the expression of the idea.
My Lords, I must examine each of these three reasons.
4. Visual comparison
Mr. Fysh was the author of the suggestion that the question of substantiality could be resolved by a visual comparison between the two fabrics. He said that the question of substantiality was one of impression. That, in a sense, is true. When judges say that a question is one of impression, they generally mean that it involves taking into account a number of factors of varying degrees of importance and deciding whether they are sufficient to bring the whole within some legal description. It is often difficult to give precise reasons for arriving at a conclusion one way or the other (apart from an enumeration of the relevant factors) and there are borderline cases over which reasonable minds may differ. But the first step in trying to answer any question (whether of impression or otherwise) is to be clear about what the question is. In the present case, it is whether the features which the judge found to have been copied from Ixia formed a substantial part of Ixia as an artistic work. That is certainly a question of judgment or impression. But why, in answering that question, should it be relevant to consider whether Ixia did or did not look like Marguerite?
The similarities between Ixia and Marguerite were of course highly relevant to the question of whether there had been copying and, if so, what features had been copied. They were the foundation upon which the judge constructed his conclusion that the features I have enumerated had been copied. But once those features have been identified, the question of whether they formed a substantial part of the plaintiff's design cannot be decided by revisiting the question of whether it looks like the defendant's. The more I listened to Mr. Fysh's submissions as to why it was relevant to compare Ixia with Marguerite, the more it seemed to me that he was skilfully trying to undermine his concession that he could not challenge the judge's finding that certain features of the design had been copied. Mr. Alastair Wilson Q.C. met this submission on its own ground by producing two artistically draped samples of the two designs in similar colourways. I am bound to say that, at some distance, they looked remarkably similar to me. But, in a case in which there is no longer an issue over what has been copied, I do not regard this as a relevant exercise. In my respectful opinion the Court of Appeal erred in principle by allowing itself to be distracted from the statutory question, which was whether the elements found as a fact to have been copied formed a substantial part of Ixia.
The exercise in dissection also, as it seems to me, involved two errors. First, it ignored substantial parts of the judge's findings on what had been copied and, secondly, it dealt with the copied features piece-meal instead of considering, as the judge had done, their cumulative effect. Thus the judge's findings on copying were by no means confined to the notion of stripes and flowers. There are many ways of depicting both stripes and flowers and the judge was obviously impressed by the fact that the defendant had been unable to find any other stripe and flower pattern which resembled Ixia or Marguerite in anything like the degree to which they resembled each other. With the assistance of the expert evidence of Mr. Victor Herbert, a design consultant, the judge identified the additional visual similarities as arising from such matters as the brush-work, the resist effect and the loose arrangement of freely drawn leaves and flowers. These features, he found, had been copied and cumulatively constituted a substantial part of the work.
My Lords, here again it seems to me that Mr. Fysh's invitation to the Court of Appeal to reduce the copied elements to the mere notion of stripes and flowers amounted to an attempt to withdraw his concession that he could not challenge the judge's findings on copying. The Court of Appeal dismissed some of the elements which the judge found to have been copied as "technique." That is true. The creation of artistic work involves having ideas and using technique to express them. But that cannot detract from the fact that the results of the use of the techniques were visual effects forming part of the artistic work. They were what produced the distinctive impression of looseness and boldness combined with lightness and fragility which the designer wished to achieve.
The Court of Appeal also dismissed the significance of these copied elements on the ground that the visual effects they produced as applied to the two designs were in certain respects different. For example, the underlying stripe colour showing through the petals in Ixia made them look translucent whereas in Marguerite they looked perforated. But this seems to me the same fallacy as that involved in visual comparison. When one is considering the question of substantiality, it is no longer relevant to examine in what respects the two designs are different. The difference between translucency and perforation may have led to the conclusion that the defendant did not copy its resist effect from the plaintiff. But once it is concluded that it did, the only question is whether the resist effect as such, together with all the other copied elements, added up to a substantial part of the plaintiff's work.
If there had been no finding that anything had been copied except the notion of flowers and stripes, the conclusion of the Court of Appeal would have been unexceptionable. But this involved ignoring the findings of fact, both in their detail and their cumulative effect.
6. Ideas and expression
It is often said, as Morritt L.J. said in this case, that copyright subsists not in ideas but in the form in which the ideas are expressed. The distinction between expression and ideas finds a place in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (O.J. 1994 L. 336 p. 213), to which the United Kingdom is a party (see article 9.2: "Copyright protection shall extend to expressions and not to ideas "). Nevertheless, it needs to be handled with care. What does it mean? As Lord Hailsham of St. Marylebone said in L.B. (Plastics) Ltd v. Swish Products Ltd.  R.P.C. 551, 629, "it all depends on what you mean by 'ideas'."
Plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work. But the distinction between ideas and expression cannot mean anything so trivial as that. On the other hand, every element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author. It represents her choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, and so on. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a "substantial part" of the work. Although the term "substantial part" might suggest a quantitative test, or at least the ability to identify some discrete part which, on quantitative or qualitative grounds, can be regarded as substantial, it is clear upon the authorities that neither is the correct test. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.  1 W.L.R. 273 establishes that substantiality depends upon quality rather than quantity (Lord Reid at p. 276, Lord Evershed at p. 283, Lord Hodson at p. 288, Lord Pearce at p. 293). And there are numerous authorities which show that the "part" which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. That is what the judge found to have been copied in this case. Or to take another example, the original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original. If one asks what is being protected in such a case, it is difficult to give any answer except that it is an idea expressed in the copyright work.
My Lords, if one examines the cases in which the distinction between ideas and the expression of ideas has been given effect, I think it will be found that they support two quite distinct propositions. The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such. The same is true of an inventive concept expressed in an artistic work. However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own: see Kleeneze Ltd. v. D.R.G. (U.K.) Ltd.  F.S.R. 399 . The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work. Kenrick & Co. v. Lawrence & Co. (1890) 25 Q.B.D. 99 is a well-known example. It is on this ground that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff's work. At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author's skill and labour as to attract copyright protection.
Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author's skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better than hedgehogs. In this case, however, the elements which the judge found to have been copied went well beyond the banal and I think that the judge was amply justified in deciding that they formed a substantial part of the originality of the work.
7. The appellate function
The question of substantiality is one of mixed law and fact in the sense that it requires the judge to apply a legal standard to the facts as found. It is, as I said, one of impression in that it requires the overall evaluation of the significance of what may be a number of copied features in the plaintiff's design. I think, with respect, that the Court of Appeal oversimplified the matter when they said that they were in as good a position to decide the question as the judge. I say this for two reasons.
First, although the question did not depend upon an assessment of the credibility of witnesses, there seems to me no doubt that a judge may obtain assistance from expert evidence in identifying those features of an artistic work which enable it to produce a particular visual effect. The plaintiff's expert Mr. Herbert described his expertise as "the art of visual literacy." This seems to me to be right. So I think that the judge, having heard Mr. Herbert, was well placed to assess the importance of the plaintiff's designer's brush strokes, resist effect and so forth in the overall artistic work. The Court of Appeal, on the other hand, adopted a reductionist approach which ignored these elements.
Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle: see Pro Sieben Media A.G. v. Carlton U.K. Television Ltd.  1 W.L.R. 605, 612-3. I agree with Buxton L.J. in Norowzian v. Arks Ltd. (No. 2)  F.S.R. 363, 370 when he said:
In my opinion the judge made no error of principle. His decision that the copied features formed a substantial part of the work should therefore not have been reversed. I would allow the appeal.
LORD HOPE OF CRAIGHEAD
I have had the advantage of reading in draft the speech of my noble and learned friend Lord Bingham of Cornhill. I agree with it, and for the reasons which he has given I too would allow the appeal.
Both parties design and sell fabrics and wallpapers. The plaintiffs brought proceedings against the defendants for infringement of the copyright in one of their designs. The trial judge (Mr. Lawrence Collins Q.C.) found that the defendants had prior access to the copyright work and that their design reproduced many of its features. He rejected the defendants' evidence of independent origin, and found that their design was copied from and reproduced a substantial part of the copyright work. He accordingly gave judgment for the plaintiffs.
The defendants appealed to the Court of Appeal, but they did so on a very narrow ground. They abandoned most of the grounds in their notice of appeal, and did not challenge the Judge's findings of fact, in particular that the defendants' design was copied from and reproduced features of the copyright work. They contented themselves with challenging his conclusion that what they had taken was a substantial part of the copyright work.
The Court of Appeal began by making a visual comparison of the two designs. Their initial reaction was that it did not look as if the defendants' design involved the copying of a substantial part of the copyright work. As Morritt LJ put it at para. 30:
Recognising that it would not be right to reach a concluded view "on so subjective and unanalytical approach alone", they proceeded to conduct a detailed analysis of the judge's findings of fact and recorded the many differences of detail in those features of the defendants' design which the judge had found to have been copied from the copyright work. This only served to confirm their initial impression. They concluded that, while the defendants had copied the idea of the copyright work and adopted the same techniques, they had not copied a substantial part of the expression of the idea. They accordingly allowed the defendants' appeal.
It is difficult to avoid the impression that the Court of Appeal were not persuaded that the defendants had copied the copyright work at all. Unable to reverse the judge's unchallenged findings that they had, they thought that if the defendants had copied any features of the copyright work they could not have copied very much. By adopting this approach they not only went behind the judge's unchallenged findings of fact, which they were not entitled to do, but rejected his finding of substantiality which, being essentially a matter of impression, an appellate court should always be very slow to do.
If this were all, I doubt that I would have wished to add anything to what my noble and learned friends have said. But I think that the Court of Appeal erred in principle in the approach which they adopted. In particular, I think that they misunderstood the function of a visual comparison of the two works in a case concerned with artistic copyright and the stage at which such a comparison should be undertaken.
It must be borne in mind that this is an action for infringement of copyright. It is not an action for passing-off. The gist of an action for passing off is deceptive resemblance. The defendant is charged with deceiving the public into taking his goods as and for the goods of the plaintiff. A visual comparison of the competing articles is often all that is required. If the overall impression is that "they just do not look sufficiently similar" then the action will fail.
An action for infringement of artistic copyright, however, is very different. It is not concerned with the appearance of the defendant's work but with its derivation. The copyright owner does not complain that the defendant's work resembles his. His complaint is that the defendant has copied all or a substantial part of the copyright work. The reproduction may be exact or it may introduce deliberate variations - involving altered copying or colourable imitation as it is sometimes called. Even where the copying is exact the defendant may incorporate the copied features into a larger work much and perhaps most of which is original or derived from other sources. But while the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendant's work: see Warwick Film Producers Ltd. v. Eisinger  Ch. 509. Thus the overall appearance of the defendant's work may be very different from the copyright work. But it does not follow that the defendant's work does not infringe the plaintiff's copyright.