Judgments - Designer Guild Limited v. Russell Williams (Textiles) Limited (Trading As Washington Dc)

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    The first step in an action for infringement of artistic copyright is to identify those features of the defendant's design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and the differences. The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas. If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features which he alleges have been copied, and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying.

    Even at this stage, therefore, the inquiry is directed to the similarities rather than the differences. This is not to say that the differences are unimportant. They may indicate an independent source and so rebut any inference of copying. But differences in the overall appearance of the two works due to the presence of features of the defendant's work about which no complaint is made are not material. In the present case the disposition of the flowers and (except in one instance) the colourways of the defendants' design are very different from those of the plaintiffs' design. They were not taken from the copyright work, and the plaintiffs make no complaint in respect of them. They make a significant difference to the overall appearance of the design. But this is not material where the complaint is of infringement of copyright and not passing off.

    Once the judge has found that the defendants' design incorporates features taken from the copyright work, the question is whether what has been taken constitutes all or a substantial part of the copyright work. This is a matter of impression, for whether the part taken is substantial must be determined by its quality rather than its quantity. It depends upon its importance to the copyright work. It does not depend upon its importance to the defendants' work, as I have already pointed out. The pirated part is considered on its own (see Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273, 293 per Lord Pearce) and its importance to the copyright work assessed. There is no need to look at the infringing work for this purpose.

    The Court of Appeal were concerned only with this second stage. They were not entitled to reverse the judge's finding that the defendants' design reproduced features of the copyright work, nor his identification of the features in question. The only issue was whether those features represented a substantial part of the copyright work. A visual comparison of the two designs was not only unnecessary but likely to mislead.

    My noble and learned friend Lord Scott of Foscote has drawn attention to the differences between the copying of a discrete part of the copyright work and the altered copying of the whole, or the copying with or without modifications of some but not all the features of the copyright work. The distinction is not material in the present case. Whether or not it is alleged that a discrete part of the copyright work has been taken, the issues of copying and substantiality are treated as separate questions. Where, however, it is alleged that some but not all the features of the copyright work have been taken, the answer to the first question will almost inevitably answer both, for if the similarities are sufficiently numerous or extensive to justify an inference of copying they are likely to be sufficiently substantial to satisfy this requirement also.

    For these reasons, as well as those given by my noble and learned friends Lord Hoffmann and Lord Bingham of Cornhill, I would allow the appeal.

LORD SCOTT OF FOSCOTE

My Lords,

    Both the appellant, Designer Guild Ltd. ("DGL") and the respondent, Russell Williams (Textiles) Ltd. ("RWT"), design and sell fabrics. The issue in this litigation is whether RWT's Marguerite design is an infringing copy of DGL's Ixia design. The trial judge, Mr. Lawrence Collins Q.C., sitting as a deputy judge of the Chancery Division, held that it was. The Court of Appeal held that it was not.

The Ixia design

    Of the two designs Ixia came first. It was produced in 1994, in art form, by Helen Burke, a designer employed by DGL. From Helen Burke's design the Ixia fabric was produced. The design, in its artwork form, consisted of vertical stripes of alternating pink and pale yellow and with flowers scattered haphazardly across the stripes. The flowers consisted of four, and sometimes three, white petals with a centre stamen in a bold deep red and with green leaves in the vicinity of, but not actually connected to, each set of white petals. The stripes were painted with rough edges and rough brushwork. The flower petals and the leaves were painted in an impressionistic style with the colour of the stripes showing through the petals. Indeed the design as a whole was impressionistic in character. When the artwork design was transposed on to fabric there were some differences. Three distinct versions of stripes were produced. One version alternated pink with pale yellow as the artwork had done. The other two alternated deep blue stripes with very pale blue stripes and turquoise stripes with very pale blue stripes. The pale yellow and the pale blue stripes on the fabric do not, unlike the artwork pale yellow stripes, show the brushwork. But there were no other significant differences between the stripes on the fabric and the stripes on the artwork. The fabric stripes, whichever of the three colourways, pink, blue or turquoise, one looks at, give the impression as do the artwork stripes of rough, impressionistic brushwork, with the underlying colour of the fabric showing through and with rough edges to the stripes. The flower petals, the stamen and the leaves on the fabric have no significant differences from their artwork counterparts, save that on the blue colourway design the stamen are turquoise instead of red. It is accepted, that the Ixia design is, for copyright purposes, an original artistic work and that the copyright is owned by DGL.

    Fabric with the Ixia designs was included by DGL in its 1995 Orientalis collection. DGL distributed pattern books of its collection, some 1500 or thereabouts, to its wholesale and retail customers and the Ixia fabrics went on sale at DGL's shop in the King's Road, London, on 1 September 1995. The fabrics were shown at a trade fair in London on 1 October 1995. The trade fair was attended by Mrs. Williams, a director of RWT. Mrs. Williams works with RWT's designers on the design of their textile patterns. The evidence of the marketing of the Ixia fabrics led the judge to conclude that, by October or November 1995 when RWT's Marguerite design was created, RWT had had the opportunity to copy.

The litigation

    In September 1996 DGL was alerted to the presence at a trade fair in Utrecht of fabrics with the Marguerite design. An examination of these fabrics led DGL to believe that the Marguerite design was a copy of the Ixia design. Letters passed between the parties' respective solicitors and litigation then followed.

    The deputy judge, in a conspicuously careful judgment [1998] F.S.R. 803, came to the conclusion that the Marguerite design had been copied from the Ixia design. His conclusion of copying was not challenged in the Court of Appeal and is not challenged before your Lordships. The point taken in the Court of Appeal, successfully as it turned out, was a substantiality point. Section 16(3) of the Copyright Act 1988 provides that:

    "References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it?

    (a) in relation to the work as a whole or any substantial part of it, and

    (b) either directly or indirectly."

The Court of Appeal was persuaded that although there had been copying - as I have said, the deputy judge's finding of fact to that effect was not challenged - the copying did not extend to the copying of a substantial part of Ixia. Morritt L.J., who gave the leading judgment in the Court of Appeal, succinctly stated RWT's case thus:

    "[RWT's] case on this appeal is quite simply that notwithstanding such copying and notwithstanding such similarities the claim that RWT infringed the copyright of DGL in the painting of Ixia fails 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." (paragraph 12 of the judgment)

    In assessing the manner in which this issue of substantiality should be approached and whether the Court of Appeal's answer on the issue was right, it is necessary, in my opinion, to start with the judge's finding that copying was established. What was it that he found to have been copied? Clarity as to the answer to that question must precede the question as to whether what was copied was the whole or a substantial part of the copyright work.

The finding of copying

    The judge came to the conclusion of copying via a consideration of the similarities between the two designs, a recognition of the opportunity to copy that RWT had had, and a consideration of RWT's evidence as to the independent provenance of the Marguerite design.

    The Marguerite design, like the Ixia design, is based on vertical stripes in alternating colours and with flowers and associated stalks and leaves scattered across the stripes. The flower petals, like those on the Ixia design, are white. The stalks and leaves are two-tone green. As with the Ixia design, the Marguerite design was reproduced on fabric in different versions with different colourways. Each version has pale yellow stripes. The stripes that alternate with the pale yellow stripes are either pink, blue, green or orange. A difference between the Ixia fabric and the Marguerite fabric is that on Marguerite the pale yellow stripes, as well as the alternate stripes, show brushwork lines. On the Ixia fabric it is only the alternate colour stripes that show the brushwork lines. The Marguerite flower petals and stalks and leaves show, when compared with those on Ixia, both similarities and differences.

    On Marguerite the white petals are painted more boldly, or less delicately, than those on Ixia but, still, like those on Ixia, the underlying stripe colour shows through the petals. The Marguerite stamen on the pink colourway design are of a somewhat deeper shade of red than those on the Ixia pink colourway design. On the Ixia fabric with a blue colourway the stamen are turquoise; on the fabric with a turquoise colourway, the stamen are the same shade of red as on the pink colourway fabric. On each of the Marguerite fabrics, other than that with a pink colourway, the stamen are biscuit coloured. The leaves on the Ixia fabric are two-tone green. The stalks and leaves on the Marguerite fabric, too, are two-tone green of much the same shades. But the latter are more firmly and less impressionistically drawn than the former.

    The judge came to the following conclusion on similarity, at p. 815:

    "In my judgment, [DGL] has clearly shown relevant similarity. The similarities are apparent. They go 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 identified seven similarities which led him to that conclusion. He described them as follows, at p. 813:

    "1. Each fabric consists of vertical stripes, with spaces between the stripes equal to the width of the stripe, and in each fabric flowers and leaves are scattered over and between the stripes, so as to give the same general effect.

    2. Each is painted in a similar neo-Impressionistic style. Each uses a brushstroke technique, i.e. the use of one brush to create a stripe, showing the brush marks against the texture.

    3. In each fabric the stripes are formed by vertical brush strokes, and have rough edges which merge into the background.

    4. In each fabric the petals are formed with dryish brushstrokes and are executed in a similar way (somewhat in the form of a comma).

    5. In each fabric parts of the colour of the stripes show through some of the petals.

    6. In each case the centres of the flower heads are represented by a strong blob, rather than by a realistic representation.

    7. In each fabric the leaves are painted in two distinct shades of green, with similar brush strokes, and are scattered over the design."

He referred also to the differences between the two designs:

    "The overall impression is very similar, but there are differences. The Ixia design is smaller and more delicate and the detail is different. In Marguerite the effect of the stripes showing through the petals is not as marked as it is in Ixia. The leaves in Marguerite are distinctly less impressionistic than those in Ixia. The impression of similarity is more marked on a comparison of the pink colourways."

    Having expressed his conclusion on the rival fabrics' similarities and having found that RWT personnel had had an opportunity to copy Ixia, the judge turned his attention to RWT's evidence as to the independent provenance of their Marguerite design. This evidence was given by Miss Ibbotson, the designer of the Marguerite design, and Mrs. Williams, a director of RWT who had worked with Miss Ibbotson in producing the Marguerite design. Their evidence was that the Marguerite flowers had been derived from an artwork design, referred to as "Open Cherry Blossom", created by Miss Ibbotson in October 1995. Variations had been incorporated into the Open Cherry Blossom flower design which had led to the Marguerite flower design. This flower design had then been added to a number of colourways of which Mrs. Williams had chosen the four to which I have already referred. Both Miss Ibbotson and Mrs. Williams said that at the time the Marguerite design was being developed they were not aware of the Ixia design. The judge summed-up the position as follows, at p. 818:

    "The essence therefore of the defence is that (a) neither Mrs. Williams nor Miss Ibbotson knew of the Ixia design when the Marguerite design was produced and executed; (b) any similarities between Ixia and Marguerite are coincidental; and (c) the Marguerite design evolved from the floral part of the Open Cherry Blossom design being copied onto the acetate for use on muslin, or to show how Open Cherry Blossom would work with white flowers."

    But the judge rejected the evidence of Miss Ibbotson and Mrs. Williams. He described Miss Ibbotson, at p. 819, as "a very unsatisfactory witness" and said that:

    "she and Mrs. Williams, far from being helpful and frank, were content to deny the obvious."

They had given evidence that the origin of Marguerite was an acetate floral design that, in October 1995, had been copied from Open Cherry Blossom in order to enable the floral motif on Open Cherry Blossom to be used for printing white flowers on to muslin.

    The judge had been troubled about this evidence, both because of differences between the flowers on the acetate design and the Open Cherry Blossom flowers and also because the flowers on the acetate had certain characteristics which appeared on the Ixia flowers but not on the Open Cherry Blossom flowers. He expressed the conclusion, at p. 820, that:

    "the explanation was designed to provide a false provenance for the floral part of the Marguerite design, and to distance it from the creation of the striped artwork."

    The judge rejected, therefore, the evidence that Miss Ibbotson and Mrs. Williams had given of the provenance of the Marguerite design. He rejected also Mrs. Williams' evidence that she had been unaware of the Ixia design. He said:

    "In my judgment the effect of the (1) many and obvious similarities; (2) the opportunity to copy; (3) the complementary nature of the acetate and the striped artwork; and (4) the false provenance given to the acetate, is that [DGL] has convincingly discharged the burden of proving that [RWT] copied Ixia."

    The judge's finding of copying, accepted before the Court of Appeal and before your Lordships, and the manner in which that finding was arrived at, are, in my opinion, of fundamental importance in reviewing the reversal by the Court of Appeal of his decision. The finding of copying cannot be accurately described as a finding of the copying of a part of Ixia. In the passage cited above the judge said that DGL had proved that RWT "copied Ixia". He did not find that the Ixia stripes had been copied, or that the Ixia flowers or leaves had been copied or that the colours of the ingredients of the design had been copied, or that any specific feature of Ixia had been copied. He simply found that the Ixia design had been copied. The Ixia design had incorporated features that, by themselves, were not original. There was nothing original about vertical stripes. Helen Burke had based her vertical stripes on fabrics appearing in various pictures painted by Matisse. But she had brought flowers, leaves and vertical stripes together in a design that was accepted to be an original artistic work. The judge, rejecting the evidence of Miss Ibbotson and Mrs. Williams, found that the acetate, with the flowers, stalks and leaves, and the vertical stripe work of the Marguerite design had been created together for the purpose of producing the Marguerite design as a copy of the Ixia design. So, in a case of this sort what part does the concept of substantiality have to play?

Substantiality

    Section 16(3) of the 1988 Act says that copying a copyright work is a copyright infringement if the copying is of "the work as a whole or any substantial part of it". Section 16(3) may come into play in two quite different types of case. One type of case is, obviously, where an identifiable part of the whole, but not the whole, has been copied. For example, only a section of a picture may have been copied, or only a sentence or two, or even only a phrase, from a poem or a book, or only a bar or two of a piece of music, may have been copied (see the examples given at pp. 88/89, para. 2-102 of Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs, 2nd ed. (1995) (which, for convenience, I will refer to as 'Laddie'). In cases of that sort, the question whether the copying of the part constitutes an infringement depends on the qualitative importance of the part that has been copied, assessed in relation to the copyright work as a whole. In Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273 Lord Reid said at p. 276, that:

    "the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken."

    The present case is not a case of that type. The judge did not identify any particular part of Ixia and hold that that part had been copied. His finding of copying related to Ixia as a whole.

    The other type of case in which a question of substantiality may become relevant is where the copying has not been an exact copying of the copyright work but a copying with modifications. This type of copying is referred to in Laddie as "altered copying". A paradigm of this type of case would be a translation of a literary work into some other language, or the dramatisation of a novel. The translation, or the play or film, might not have a single word in common with the original. But, assuming copyright existed in the original, the "copy" might well, and in the case of a word-by-word translation certainly would, constitute an infringement of copyright.

    The present case is an "altered copying" case. Helen Burke put together a number of artistic ideas derived from various sources in order to produce her Ixia design, an original artistic design as it is accepted to be. Miss Ibbotson and Mrs. Williams, as the judge found, copied the Ixia design in order to produce their Marguerite design. But they did so with modifications. The Marguerite design is not an exact copy of Ixia. Nor is any specific part of the Marguerite design an exact copy of any corresponding part of the Ixia design. It is an altered copy.

    The question, then, where an altered copy has been produced, is what the test should be in order to determine whether the production constitutes a copyright infringement. If the alterations are sufficiently extensive it may be that the copying does not constitute an infringement at all. The test proposed in Laddie (pp. 92/93, para. 2-108) to determine whether an altered copy constitutes an infringement is:

    "Has the infringer incorporated a substantial part of the independent skill, labour etc. contributed by the original author in creating the copyright work. . .?"

    My Lords, I think this is a useful test, based as it is on an underlying principle of copyright law, namely, that a copier is not at liberty to appropriate the benefit of another's skill and labour.

    My noble and learned friend Lord Millett has made the point that once copying has been established, the question of substantiality depends on the relationship between what has been copied on the one hand and the original work on the other, similarity no longer being relevant. My Lords, I respectfully agree that that would be so in the first type of case. But in an altered copying case, particularly where the finding of copying is dependant, in the absence of direct evidence, upon the inferences to be drawn from the extent and nature of the similarities between the two works, the similarities will usually be determinative not only of the issue of copying but also of the issue of substantiality. And even where there is direct evidence of copying, as, for example, where it is admitted that the copier has produced his 'copy' with the original at his elbow, the differences between the original and the 'copy' may be so extensive as to bar a finding of infringement. It is not a breach of copyright to borrow an idea, whether of an artistic, literary or musical nature, and to translate that idea into a new work. In 'altered copying' cases, the difficulty is the drawing of the line between what is a permissible borrowing of an idea and what is an impermissible piracy of the artistic, literary or musical creation of another. In drawing this line, the extent and nature of the similarities between the altered copy and the original work must, it seems to me, play a critical and often determinative role. In particular, this must be so where there is no direct evidence of copying and the finding of copying is dependant on the inferences to be drawn from the similarities. In the Little Spanish Town case, Francis Day and Hunter Ltd. v. Bron [1963] Ch. 587, Wilmer L.J. said:

    "I do not think it could be doubted that there was material on which to base the inference that the composer of "Why" deliberately copied from "Spanish Town". Were that the right inference, I am satisfied that the degree of similarity would be sufficient to constitute an infringement of the plaintiffs' copyright." (p. 610)

and Diplock L.J. said:

    "…. it is well established that to constitute infringement of copyright in any literary, dramatic or musical work, there must be present two elements: first, there must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part thereof, for the former to be properly described, not necessarily as identical with, but as a reproduction or adaptation of the latter; secondly, the copyright work must be the source from which the infringing work is derived." (p. 623)

The same principles apply to artistic copyright as to literary, dramatic or musical copyright. Both Wilmer L.J. and Diplock L.J. treated similarity as being relevant to the substantiality issue. Laddie cites the Little Spanish Town case as an example of altered copying (p. 93, para. 2.109).

    In the present case, the similarities between Ixia and Marguerite, as found by the judge, play, in my judgment a determinative role. If the similarities between Ixia and Marguerite were so extensive and of such a nature as to justify a finding that, in the absence of acceptable evidence of an independent provenance for Marguerite, Marguerite was copied from Ixia, it must, in my opinion, follow that the Marguerite design incorporated a substantial part of the Ixia design. It must follow also that, in designing the Marguerite design, the designers incorporated a substantial part of the skill and labour of Helen Burke. The judge's finding of copying made it, in my opinion, unnecessary for him to go on to ask whether the copying was of a substantial part. But both the judge and the Court of Appeal engaged in that enquiry.

    The judge did so in order to deal with arguments that had been addressed to him by Mr. Geoffrey Hobbs Q.C., counsel for RWT at the trial. Mr. Hobbs, as I read the judge's description of his argument, was arguing that the Marguerite white flowers had not been copied from Ixia but had been derived, via the acetate, from the Open Cherry Blossom design, and that, accordingly, the white flowers should be set to one side when considering whether the Marguerite design had copied a substantial part of the Ixia design. Counsel pointed out, correctly, that the Ixia vertical stripes were not original but had been derived from Matisse and that the Marguerite vertical stripes differed geometrically and in colour from the Ixia stripes. It followed, counsel submitted, that the copying of whatever was original in the Ixia design could not be said to be a substantial part of that design.

    The judge, in rejecting that argument, said, at p. 828: "In my judgment there has been copying of a substantial part." He went on to emphasise that it was "the whole work" that had to be looked at "to determine whether the alleged infringing material [had] adopted the essential features and substance of the original". He said:

    "The right approach is to look at the end result of the acetate, the striped artwork, the modifications made by Mrs. Williams (especially making the stripes less harsh) and her selection of colourways, and the printed fabric. That end result is an infringement of the painting on which Ixia was based."

 
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