Infabrics Ltd v Jaytex Ltd

JurisdictionEngland & Wales
JudgeLord Wilberforce,Lord Edmund-Davies,Lord Fraser of Tullybelton,Lord Scarman,Lord Roskill
Judgment Date26 March 1981
Judgment citation (vLex)[1981] UKHL J0326-1
Date26 March 1981
CourtHouse of Lords

[1981] UKHL J0326-1

House of Lords

Lord Wilberforce

Lord Edmund-Davies

Lord Fraser of Tullybelton

Lord Scarman

Lord Roskill

Infabrics Limited and Others
(Respondents)
and
Jaytex Limited (Sued as Jaytex Shirt Company Limited)
(Appellants)
Lord Wilberforce

My Lords,

1

This appeal is concerned with an artistic work designed by the third respondent, the copyright in which belongs to the first respondent, and which is claimed to have been infringed by the appellants.

2

The work consists of an attractive drawing in colours of 3 racehorses with jockeys engaged in a close finish at a winning post, this drawing being repeated at spaced intervals. It has become known as "Past the Post" though that point had in fact not been reached.

3

Put very shortly, the essential facts are that a representative of the appellants saw the design in Hong Kong at the premises of a company called T.A.L. and selected it from a number of others. The appellants then ordered a quantity of cloth to be printed with the design and arranged with a shirt maker, also in Hong Kong, to make it up into shirts and export them to the United Kingdom. The appellants then arranged for the shirts to be put on the market and sold by retailers. They sold well in the King's Road, Chelsea.

4

The claim as framed and as presented at the trial was based on infringement of copyright by importation from Hong Kong and sale in this country of shirts made from cloth bearing the Past the Post design which would have infringed the copyright if the cloth had been made in the United Kingdom. It was based upon section 5 of the Copyright Act 1956 which requires, as a condition of liability for infringement, knowledge that the making of the cloth constituted an infringement of the copyright or would have done so if the cloth had been made in the United Kingdom.

5

The appellants denied any such knowledge and the trial took place upon that issue. It was held by Whitford J. that until 5th March 1975, a fortnight after a warning letter had been sent, the appellants had no such knowledge, but that after that date they had. The appellants accepted the latter finding, and an inquiry as to damages was ordered.

6

In their speech in reply, after the appellants' (defendants') case had been closed, counsel for the respondents contended for the first time that the appellants were liable for infringement on the basis of "publishing" the work, under section 1 and section 3(5)(b) of the Act. They obtained leave to amend their statement of claim by inserting the following paragraph:

"5. Further or alternatively the defendants have infringed the said copyright work ( sic) by publishing the same by their aforesaid acts of sale and distribution of shirts bearing the said design".

7

The reference to "aforesaid acts" is to those acts of sale and distribution in the United Kingdom as to which Whitford J. had held the appellants not liable for infringement on the ground of lack of knowledge. In view of the late stage at which this claim was introduced, no additional evidence was called to support it. In particular, and this may well have been fatal, no evidence was called, or was available, that the artistic work was unpublished at the date of the alleged publication by the appellants.

8

On appeal to the Court of Appeal the respondents did not dispute the finding of the judge that the appellants did not have the necessary knowledge for liability under section 5. The Court of Appeal, however, was persuaded to hold that the acts of importation and sale nevertheless constituted infringement by publishing. Because of this infringement they held that the appellants were liable for damages in conversion under section 18 of the Act, the measure of damages being the value of the shirts.

9

The immediately relevant sections of the Act of 1956 as to "publishing" are sections 1, 3(5)(b) and 49(2). Section 1 lays the basis for copyright and of infringement by reference to certain acts, to be later specified, which are exclusively reserved to the owner of the copyright. It is important to notice that both the exclusive rights, of which the copyright consists, and any infringement of those rights, extend to the United Kingdom and any other country to which the relevant provisions of the Act extend. The territorial area, which may be referred to as "the Territory" includes Hong Kong.

10

The section dealing with artistic works is section 3 (literary, dramatic and musical works are dealt with in section 2). By section 3(5) the acts restricted by the copyright in an artistic work are:

"( a) reproducing the work in any material form;" (not relied on)

( b) publishing the work;

( c) �

( d) �"

11

There is no definition of "publishing" in this section, and there are great difficulties in extracting the meaning of the word from the rest of the Act.

12

There are three suggested meanings:

13

The first (accepted by the Court of Appeal) is that publishing consists of the issue of reproductions of the work to the public.

14

The second (contended for by the respondents) is that publishing is what is done by a publisher.

15

The third (contended for by the appellants) is that publishing means making public, in the Territory, a work which had not previously been made public in the Territory. I shall examine these in order.

16

1. The interpretation of the Court of Appeal is based upon section 49(2)(c) of the Act which reads, together with the introductory and closing words of section 49(2):

"With regard to publication, the provisions of this subsection shall have effect for the purposes of this Act, that is to say,�

�

( c) subject to the preceding paragraphs, a literary, dramatic or musical work, or an edition of such a work, or an artistic work, shall be taken to have been published if, but only if, reproductions of the work or edition have been issued to the public;

�

and in determining for the purposes of paragraph ( c) of this sub-section, whether reproductions of a work or edition have been issued to the public, the preceding subsection shall not apply."

17

Reference back to subsection (1) of the section unfortunately leads to an intricate piece of drafting which can only be approximately summarised by saying that reproduction includes reproduction of a substantial part of a work, but even this is qualified by a proviso referring to several other sections. It is this labyrinthine quality, which pervades the whole Act, that makes it so extraordinarily difficult to interpret. However, I think that we can take it that paragraph ( c) applies only to the issue of reproductions of the whole work.

18

The question then is, whether the Court of Appeal was right in treating this subsection 2(c) as a definition of "publishing" in section 3(5)(b). The respondents did not support this approach, and I think that this was inevitable. In the first place, if the interpretation were right, it would follow that a retail seller of a copyright work would be regarded as publishing it�a novel consequence and one contrary to the well-accepted distinction between primary and secondary infringement. Moreover, it would be difficult to reconcile with the requirement of knowledge which section 5 imposes with regard to selling. Would a selling publisher be entitled to the defence of ignorance or not? More importantly, perhaps, if section 49(2)(c), together with the closing words, were to apply to "publishing" in section 3(5)(b), it would not be an infringement under section 1(2) to publish a substantial part of the work. This would be paradoxical, and also contrary to section 49(1) as above summarised. In my opinion, the correct view of section 49(2)(c), on which I think both sides agree, is that it is not a definition of "publishing" for the purposes of the Act�it is indeed not cast in the form of a definition�but is a provision relating to the words in section 3(3) (and similarly in section 2(2)) "Where an original artistic work has been published, then � copyright "shall subsist in the work �". In other words, it is dealing with subsistence of copyright, and stating a rule as to the time of publication, a matter of importance in relation to the subsistence of copyright. The conclusion, through this regrettably opaque reasoning, is that the Court of Appeal's approach cannot be supported.

19

2. The respondents' contention is that publishing means what a publisher does. I should say of this, first, that even if this were correct there would still be difficulties in the respondents' way. As I have explained, evidence which might have borne directly on the question whether what the appellants did amounts to publishing in this sense was not called and I think it far from clear, on the existing material, that the appellants did anything amounting to publishing, sc. acting as publishers of the design.

20

But in any event I cannot accept the meaning offered. In relation to copy-right, whether under common law or statute, "publishing" and "publication" are fundamental expressions meaning making available to the public, and it would take a great deal of contextual restraint to force them into a narrower and special meaning. Mr. Blanco-White ingeniously tried to overcome this initial difficulty by deriving the word "published" in the Act of 1911 (the predecessor of the Act of 1956) from the Berne Copyright Convention of 1886 with reference to which the Act of 1911 was no doubt drafted. The word there used in the French authentic text and translated by "published" is "�dit�"�a word which seems to suggest what is done by an �diteur� i.e. a publisher. But even in the Convention the word is used in various contexts with various meanings, and so is "published" in the Act of 1911. Indeed, section 1(3) provides that for the purposes of the Act publication means the issue of copies to the public. So I do not think that the Convention indication is a...

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