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

JurisdictionEngland & Wales
CourtHouse of Lords
JudgeLORD BINGHAM OF CORNHILL,LORD HOFFMANN,LORD HOPE OF CRAIGHEAD,LORD MILLETT,LORD SCOTT OF FOSCOTE
Judgment Date23 Nov 2000
Judgment citation (vLex)[2000] UKHL J1123-1

[2000] UKHL J1123-1

HOUSE OF LORDS

Lord Bingham of Cornhill

Lord Hoffmann

Lord Hope of Craighead

Lord Millett

Lord Scott of Foscote

Designer Guild Limited
(Appellants)
and
Russell Williams (Textiles) Limited
(Trading as Washington DC) (Respondents)
LORD BINGHAM OF CORNHILL

My Lords,

1

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.

2

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.

3

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.

4

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.

5

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.

6

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.

7

There was, I conclude, no ground for interfering with the judge's conclusion.

LORD HOFFMANN

My Lords,

8

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.

9

1. The Issues

10

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?

11

2. The findings of the judge [1998] F.S.R. 803.

12

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:

"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. [Technically called the "resist effect"].

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."

13

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.

14

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:

"It is the combination of the flowers and the stripes, the way in which they relate to each other, the way in which they were painted, and the way in which there was a 'resist' effect which makes the overall combination the copying of a substantial part."

15

3. The Court of Appeal

16

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:

17

(a)Visual comparison

18

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.

19

(b)Dissection

20

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.

21

(c) Ideas rather than expression.

22

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.

23

My Lords, I must examine each of these three reasons.

24

4. Visual comparison

25

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...

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