Infabrics Ltd v Jaytex Ltd

This appeal raises questions of copyright law which I find difficult, but surprisingly they seem to have attracted very little judicial attention hitherto. The plaintiff company ("Infabrics") make printed fabrics for use in the manufacture of shirts and possibly for other purposes. The second plaintiff is a textile designer and colour consultant. The third plaintiff is a freelance designer, who devised the design which is the subject-matter of this action for the second plaintiff. Between them the plaintiffs at all relevant times owned the copyright in the design. I shall refer to the design as the "Past the Post" design, for it is a drawing of three racehorses with their jockeys passing a winning post in a neck-and-neck finish. This device is repeated at particular intervals and in a particular relationship (see Exhibit Pl) and is clearly meant to be printed on the fabric in that way. The defendant company ("Jaytex") are wholesalers of shirts in the United Kingdom.

In March 1974 the Past the Post design was one of a portfolio of some thirty or forty designs which Infabrics was then offering to potential customers as designs for printing on fabrics. At about the end of March 1974 a representative of Infabrics showed this portfolio, including the Past the Post design, to representatives of Jaytex, one of whom was a Mr. Ripper. Jaytex was then thinking of establishing a factory in the United Kingdom. Mr. Ripper was a director of Jaytex and had previously been employed by Jaytex as a buyer. His duties at the relevant time included buying goods for the Jaytex business from manufacturers and suppliers in Europe and the Far East. In the course of these duties he constantly travelled widely in the Far East in such countries as Korea, Malaysia, Taiwan and Japan, as well as onthe Continent of Europe, looking for suitable goods. In so doing he was accustomed to see designs for printed fabrics, as the learned judge put it, by the hundreds. The learned judge found as a fact that at the meeting in March 1974 the Past the Post design really made no great impression on Mr. Ripper's mind, if it made an impression at all.

In July 1974 Mr. Ripper went to Hong Kong in the course of one of his trips to the Far East. At the premises in Hong Kong of a company called Textile Alliance Limited ("TAD"), he made a selection of a small number of designs for printed fabrics from some 2,000 or more designs which TAL then had on offer. Some of these were shown to him in the form of fabrics already printed and some as drawings on a card. His selection included a fabric carrying the Past the Post design. He arranged for suitable amounts of the fabrics which he had selected to be delivered to a factory in Hong Kong to be made into shirts and, when made into shirts, to be shipped to Jaytex in England. The learned judge found as a fact that at that stage Mr. Ripper had no detailed recollection of the Past the Post design at all and that it never occurred to him that he had seen the same design only a few months earlier in England.

TAL supplied the appropriate quantity of cloth bearing the Past the Post design in response to the order placed by Mr. Ripper. This cloth was made into shirts by a manufacturer in Hong Kong and despatched to England by four shipments on the following dates, viz: 21st November 1974, 1st December 1974, 10th January 1975 and 24th February 1975. It was common ground in the court below that importation should be accepted as having taken place at the time when the ships carrying the goods came into a United Kingdomport, which would have been five weeks after sailing.

Infabrics discovered a shirt bearing the Past the Post design which was being offered for sale in the Kings Road, Chelsea. On 21st February 1975 they wrote to Jaytex stating this fact and claiming to be the owners of the copyright in the Past the Post design. Jaytex replied to the effect that they had purchased the goods in all good faith in Hong Kong without any knowledge that any copyright was being infringed.

On 6th May 1975 the plaintiffs issued their writ in this action, claiming (1) an injunction to restrain the defendants from infringing the copyright in the Past the Post design; (2) an inquiry as to damages for infringement or an account of profits; (3) damages for conversion; (4) delivery up or destruction of infringing material. By their statement of claim they alleged that the defendants had infringed the copyright by reproducing or causing others to reproduce the design or a substantial part thereof on shirt fabrics and by importing into this country, offering for sale, selling and/or distributing by way of trade in this country shirts made from fabric on which the design was reproduced. By an amendment made at the trial they further alleged that the defendants had infringed the copyright by publishing the design by selling and distributing shirts bearing the design. They further alleged that in the premises the defendants had converted to their own use property of the plaintiffs.

The charge of infringement by reproducing or causing others to reproduce the design was not pursued below. The plaintiffs relied upon importation and publication as acts of infringement. They also claimed damages for conversion. The defendants bytheir defence raised a plea relating to the title of Infabrics to the copyright and they counterclaimed a declaration that Infabrics had no rights relating to acts of infringement committed before 18th March 1975.

The learned judge held that importation into the United Kingdom, offering for sale, selling and distributing shirts bearing the Past the Post design after 5th March 1975 (allowing Jaytex 12 days after 21st February to consider their position) constituted infringement and directed an inquiry as to damages in relation to such infringements. He held that the defendants had not otherwise infringed the copyright. The defendants giving an undertaking against future infringement, the learned judge did not grant an injunction. He dismissed the counterclaim.

The plaintiffs appeal against so much of the judgment as limited their remedy to acts done after 5th March 1975. The appeal consequently does not relate to anything which occurred after that date. The defendants are not seeking to disturb the learned judge's decision that they are liable in respect of acts which occurred since 5th March 1975. The question for consideration is whether the defendants are liable in respect of anything done before that date.

The relevant statutory provisions are to be found in sections 1, 3, 5, 17(2), 18 and 49(2) of the Copyright Act 1956. Under section 1(1) "Copyright" means the exclusive right to do, and to authorise other persons to do, certain acts in relation to the subject-matter in the United Kingdom or in any other country to which the relevant provisions of the Act extend Under section 1(2) copyright is infringed by any person who, not being the owner of the copyright, and without the licence of theowner thereof, does, or authorises another person to do, any such act in relation to the subject-matter in the United Kingdom or in any other country to which the relevant provisions of the Act extend.

Section 3 relates to artistic works. The Past the Post design falls within that description. Under subsection (5) of that section the acts restricted by copyright in an artistic work, i. e. those acts in respect of which the owner's exclusive right subsists, are "(a) reproducing the work in any material form; (b) publishing the work; (c) including the work in a television broadcast, and (d) causing a television programme which includes the work to be transmitted to subscribers to a diffusion service". Of these (c) and (d) are inappropriate to the present case, and, as I have said, no claim is pursued under (a). So the type of infringement which we have to consider under section 3 is publishing the work.

Section 5(2), so far as relevant to the present case, provides: "The copyright in an … artistic work is infringed by any person who, without the licence of the owner of the copyright, imports an article (otherwise than for his private and domestic use) into the United Kingdom, if to his knowledge the making of that article constituted an infringement of that copyright, or would have constituted such an infringement if the article had been made in the place into which it is so imported".

Section 5(3), so far as relevant to the present case, provides: "The copyright in an … artistic work is infringed by any person who, in the United Kingdom, or in any other country to which this section extends, and without the licence of the owners of the copyright - (a) sells, … or by way of tradeoffers or exposes for sale … any article, or (b) by way of trade exhibits any article in public, if to his knowledge the making of the article constituted an infringement of that copyright, or (in the case of an imported article) would have constituted an infringement of that copyright if the article had been made in the place into which it...