|Judgments - Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)
In my opinion, the judge's approach in comparing Ixia ("the whole work") with Marguerite ("the end result") was correct. And having made the comparison he expressed his conclusion that: "It is the design which was copied and has been reproduced" (emphasis added). So, what had been copied was the design, and the design was a substantial part. In dealing in this way with the "substantial part" argument that had been addressed to him by counsel, the judge was re-affirming his conclusion that the Ixia design had been copied.
The Court of Appeal's approach to the 'substantial part' issue
In paragraph 12 of his judgment, Morritt L.J. recorded that counsel for RWT had accepted that he could not challenge the judge's findings on copying and that the similarities between the two fabrics described by the judge did exist. He recorded counsel's argument that "notwithstanding such copying and notwithstanding such similarities" DGL's claim should fail "because there was no copying of the whole of the painting of Ixia and such copying as there was of part of the painting of Ixia did not extend to a substantial part". This submission was not, in my view, consistent with the judge's findings of copying. Moreover, I think, with respect to counsel, that it introduced a confusion. Counsel was arguing the case as if it were one in which only a part of Ixia had been copied. But that was not what the judge had held.
This approach led the court into attempting a dissection of the rival designs in an attempt to identify the part or parts of Ixia that had been copied. It led Morritt L.J., at paragraph 25, to formulate as the question of fact to be determined: "Did the production of Marguerite involve the indirect copying of a substantial part of the painting of Ixia?"
At paragraph 29 of his judgment Morritt L.J. referred to " . those features of the painting of Ixia which the judge considered to have been copied into Marguerite". He summarised them as:
This was a fair and accurate summary of the respects in which the judge had found there to be similarities between the two designs. They were the similarities that, with other indicia, had led him to the conclusion that the designers of Marguerite had copied the Ixia design. But the judge had not expressed his finding of copying as being limited to those features. Morritt L.J. then went on to consider in turn each of the features and to ask himself whether a copying of that feature constituted an infringement. He concluded in each case that it did not. As to the combination of the flowers and stripes, he regarded that as the copying of an idea, rather than the copying of the expression of an idea. As to the relationship between the flowers and the stripes, he said that counsel for DGL had accepted that the layout or disposition of the flowers in Marguerite was not an infringement of copyright in that it had been derived from an independent source. He said, also, that the flowers in Marguerite were not copies of those in Ixia. As to the concession, I think there may have been some misunderstanding. Certainly before your Lordships no such concession has been made. Moreover the judge had rejected RWT's evidence as to the provenance of the Marguerite flowers and had made a finding of copying that extended to the design as a whole. As to the way in which the flowers and stripes were painted, i.e. the brushwork, Morritt L.J. agreed that comparable painting techniques had been used, but said, at paragraph 33, that "the visual result is not the same." And as to the "resist" effect i.e. the technique by which an impression is given that an undercolour is showing through, here again, the Lord Justice discerned visual differences between the rival designs. He expressed his conclusion in paragraph 35:
and, in paragraph 37:
Auld L.J. and Clarke L.J. agreed, and, consequently, the appeal was allowed.
In my opinion, there are two respects in which the Court of Appeal's approach went wrong. First, the conclusions seem to me to contradict the judge's finding of copying. More important, however, the approach whereby the constituent features of the rival designs were isolated from the whole and compared with one another was, in my judgment, in a case where copying had been found established and the finding was not under challenge, wrong in principle. The Marguerite design was an altered copy. The question whether the copying constituted an infringement did raise a question of substantiality, but a question that had to be determined by comparing Marguerite as a whole with Ixia as a whole. Did Marguerite, incorporate a substantial part of the skill and labour expended by the designer of Ixia in producing Ixia?
The judge had found that it did. He could not otherwise have made his finding of copying. There had been no direct evidence of copying and the judge's finding had been based on the extensive similarities between Ixia and Marguerite. These similarities, coupled with the opportunity to copy and in the absence of any acceptable evidence from RWT as to an independent provenance for Marguerite, had led the judge to conclude, on a balance of probabilities, that Marguerite had been copied from Ixia. If the similarities between the two works were sufficient to justify the inference that one had been copied from the other, there was, in my judgment, no further part for the concept of substantiality to play. The thrust of Morritt L.J.'s judgment in the present case suggests that he disagreed with the basis on which the judge had arrived at his finding of copying. If the judge's finding of copying had been challenged in the Court of Appeal on the ground that the similarities between Ixia and Marguerite were not sufficiently substantial to justify the inference that Marguerite had been copied from Ixia, the challenge would, I think, have been sympathetically received. And if asked whether the similarities on which the judge had based his finding of copying showed that Marguerite had incorporated a substantial part of Helen Burke's skill and labour in designing Ixia, I think that the Court of Appeal, in disagreement with the judge, would have said that it did not.
But the finding of copying was not challenged, and, in any event, findings on such matters are particularly the province of the trial judge. In Biogen Inc. v. Medeva Plc.  R.P.C. 1 my noble and learned friend, Lord Hoffmann, commented that:
The same caution should, in my view, be employed in relation to evaluations about similarities and substantiality. (see also the remarks of Buxton L.J. in Norowzian v. Arks Ltd. (No. 2)  F.S.R. 363, 370).