Designer Guild Ltd v Russell Williams (Textiles) Ltd (trading as Washington DC)

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLORD JUSTICE MORRITT,LORD JUSTICE CLARKE
Judgment Date26 March 1999
Judgment citation (vLex)[1999] EWCA Civ J0326-17
Docket NumberCHANF 1998/0274/3
Date26 March 1999

[1999] EWCA Civ J0326-17

IN THE SUPREME COURT OF JUDICATURE

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

(MR LAWRENCE COLLINS QC—SITTING AS A DEPUTY JUDGE OF THE CHANCERY DIVISION)

Royal Courts of Justice

Strand

London WC2

Before:

Lord Justice Morritt

Lord Justice Auld

Lord Justice Clarke

CHANF 1998/0274/3

Designers Guild Ltd
Plaintiff/Respondent
and
Russell Williams (Textiles) Ltd
Defendant/Appellant

MR M FYSH QC & MR I PURVIS (Instructed by Philip Conn & Co., Manchester, M2 5FJ) appeared on behalf of the Appellant

MR A WILSON QC & MR M HICKS (Instructed by Taylors, Lancashire, BB1 7JN) appeared on behalf of the Respondent

1

(POST JUDGMENT PROCEEDINGS)

LORD JUSTICE MORRITT
2

For the reasons given in the written judgments that have been handed down this appeal is allowed.

3

May it please you, my Lord, I have prepared some draft orders for your Lordships to look at. I have also given a copy to my learned friend, Mr Hicks. If I may hand these up to my Lords, Mr Hicks has a point on his, but if I could just take you through it and see where we go?

LORD JUSTICE MORRITT
4

Yes. Have you one for the Associate?

5

Yes, I have actually, my Lord. ( Same handed) That the appeal herein be allowed; that the order of Mr Lawrence Collins QC, dated 5 February, be set aside and that the injunction therein be discharged; that the sum of £114,000 be repaid forthwith by the respondents to the appellants together with interest thereon at, I put 8 per cent now—apparently that is correct—and that dates given are subject to one amendment. It should be 15 February, not 5 February.

LORD JUSTICE MORRITT
6

What is the sum of £114,000?

7

That was paid in relation to costs below, my Lord.

LORD JUSTICE MORRITT
8

I see.

9

Thus far I think my learned friend and I are agreed. Then, that the respondents do pay the appellants the costs of this appeal and of the action, such costs to be taxed if not agreed on the standard basis. That is not agreed, as I understand it. That there be an inquiry as to damages suffered by the appellant pending judgment in this appeal as a result of the injunction ordered in the said order of Lawrence Collins QC and that the said inquiry should be made before a Master of the Chancery Division of the High Court and that the respondent do pay the appellant such damages as may be found due. That should be together with interest thereon, and that the costs of taking such inquiry be reserved. I think the last three items my learned friend has no comment on. So therefore it is just the question of costs, my Lord, unless I have forgotten something. So that is the order I would ask for.

LORD JUSTICE MORRITT
10

Yes. Do you have any other comments on the order?

11

MR HICKS: No, just inquiries as to damages, if any. I want to make it clear, we are accepting that, and the question of the repayment of the £114,000 may depend upon the outcome of my submission as to costs.

LORD JUSTICE MORRITT
12

Quite. What do you say about costs?

13

MR HICKS: We would make this submission, that of course the general rule is that the defendant would get the costs in a normal case and there would be two circumstances in which your Lordships would be considering varying that rule. The first would be whether the defendant has done something which significantly increases the length of the proceedings and in those cases the authorities say he may be deprived of part of his costs or indeed all of his costs. The second and more serious situation, and we say we fall into that category, is where the defendant has raised issues or made allegations improperly or unreasonably and in those circumstances the authorities— Elgin Data, for example—say that the court may not just deprive the successful party of his costs but may order him to pay the whole or part of the unsuccessful party's costs. As regards to the matters we invite your Lordships to bear in mind on the question of costs——-

LORD JUSTICE MORRITT
14

What orders are you asking for?

15

MR HICKS: The upshot of it is we would say that a convenient and just order would be that there would be no order as to costs either here or below. I will explain why we think that is a convenient order to make which avoids taxation and does broad justice between the parties. Essentially there are two points-the first far less important than the second. The first is that a notice to admit in relation to subsistence was served on 20 June and this is apparent from the judgment on page 9. I have given you the page reference in the core bundle there. On page 9—I am sorry it was page 8, page 19 of the core bundle. It is right at the end of Part 4. It explains the final——

LORD JUSTICE MORRITT
16

I am sorry, I have it on page 67, 68 and 69?

17

MR HICKS: Is that in the FSR's report?

LORD JUSTICE MORRITT
18

No, the core bundle.

LORD JUSTICE CLARKE
19

At any rate, it is page 8 of the internal numbers of the judgment, is it?

20

MR HICKS: Yes, I am sorry. Yes, that is a notice to admit. My Lord, Morritt LJ, referred to a notice to admit at tab 8. There is another notice to admit at tab 7. There are two notices to admit there. I was looking at the first at tab 7 and then on page 8 of the judgment internal numbering, and page 19 of the bundle, right at the end of Part 4.

"The original defence made no admissions as to originating ownership or subsistence. On 20 June a notice to admit was served and there was no response to that until eventually an amended defence was served about a week before the trial on 11 November in relation to subsistence and ownership of copyright at which point that was admitted."

21

Therefore the live issues on the trial were copying, yes or no; in substantial part, yes or no. The more important point, by far the more important point is the question of copying. We remind your Lordships that throughout this case the defendant denied copying and, not only that, it put forward a positively false case as regards design history. In fact the first time that any concession was made with regard to copying was on the Friday before this appeal was due to be heard. The appeal was listed for the Monday. It in fact started on the Tuesday. My learned friend spoke to my leader, Mr Wilson, on the Friday and said they were not pursuing the copying issue and as a result of that the estimate for the time of this appeal was reduced from three days to the 1 1/2 days in which it actually took. From that your Lordships can see that really an immense amount of time was wasted on this issue. There was a reduction in the time of the appeal. That is one point. The second point is one only needs to look at the notice of appeal itself in this case—tab 1 of the appeal bundle. One has seven pages on copying, pages 2 to 8, and a little over half a page on substantial part. I would make the same point about the trial. The trial lasted four days. There is no reason to suppose this trial could not have been disposed of in under two if this had not been run as a defence. It is not a case where it is just the trial time that was wasted. Obviously when one is dealing with a story put forward by the defendants, where a positively false provenance is put forward, an immense amount of time is put forward in preparing and dealing with that matter. I do emphasise the fact that it was not a case of the defendant saying: "You prove it." It was a case of a positively false story. Again I would emphasise this point, it was not a case of the judge finding copying simply because of similarities. He found copying because of the inherently unlikely story put forward with regard to the acetate.

22

So our basic submission is this, that we should be entitled to our costs on the issue of copying. Since in the round there was probably more of the case devoted to the issue of copying than to the issue of substantiality, if one were to tax the issues in that way there is probably a net balance owing to us, we would submit. However, quite clearly it would be desirable to avoid the taxation and so we would say that in the rather unusual circumstances of this case that a fair order would be simply no order as to costs either here or below. That will do broad justice to the parties and in the modern way it will avoid the need for a complex taxation. Those are the submissions I was to make on costs.

23

I would also wish to make a submission on leave to appeal. Would you like to hear that now?

LORD JUSTICE MORRITT
24

Yes, if you would like to make that now.

25

MR HICKS: So, my Lord, I have six very short points. The first is it is a case which is important not just to the parties, it is of considerable interest to everybody involved in the design of fabrics and the like: wallpapers, carpets, anything where there is artistic works involved generally. The second...

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