King Features Syndicate Inc. v Kleeman (O. & M.) Ltd
| Jurisdiction | UK Non-devolved |
| Judge | Viscount Maugham,Lord Russell of Killowen,Lord Wright,Lord Romer,Lord Porter |
| Judgment Date | 27 May 1941 |
| Judgment citation (vLex) | [1941] UKHL J0527-2 |
| Date | 27 May 1941 |
| Court | House of Lords |
[1941] UKHL J0527-2
Viscount Maugham
Lord Russell of Killowen
Lord Wright
Lord Romer
Lord Porter
House of Lords
After hearing Counsel, as well on Tuesday the 11th, as on Thursday the 13th, Friday the 14th and Monday the 17th, days of March last, upon the Petition and Appeal of King Features Syndicate Incorporated, of 235 East 45th Street, New York City, in the United States of America, and Frank Cecil Betts, of Black-friars House, New Bridge Street, E.C.4, in the City of London, the personal representative of Elzie Crisler Segar, deceased, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of His Majesty's Court of Appeal, of the 8th of July 1940, might be reviewed before His Majesty the King, in His Court of Parliament, and that the said Order might he reversed, varied or altered, or that the Petitioners might have such other relief in the premises, as to His Majesty the King, in His Court of Parliament, might seem meet; as also upon the printed Case of O. and M. Kleemann, Limited, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:
It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of His Majesty the King assembled, That the said Order of His Majesty's Court of Appeal, of the 8th day of July 1940, complained of in the said Appeal, be, and the same is hereby, Discharged: And it is further Ordered That an injunction be made to restrain the Respondents from infringing the copyright of the Appellants in the drawing No. 3 in the first published strip of drawings in the Statement of Claim mentioned by making or causing to be made without the Appellants' consent articles reproducing in a material form the figure of a sailor delineated in the said drawing, or by selling the same or by way of trade exposing or offering the same for sale; and that an order be made for delivery-up of infringing articles for destruction; and that an enquiry be made as to what damages, if any, have been sustained by the Appellants by reason of the infringement by the Respondents of the Appellants' copyright in the drawing No. 3 and by reason of the conversion by the Respondents of the articles which so infringe the Appellants' copyright: And it is further Ordered, That the Respondents do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Courts below, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this Judgment.
My Lords,
This is an Appeal from the Court of Appeal (England) who on 8th July, 1940 (Scott and Clauson, L.JJ., Luxmoore L.J., dissenting) reversed a judgment of Simonds, J., delivered on 25th March, 1940, and dismissed the action.
The action was brought for alleged infringement of the Appellants' copyright in certain artistic works, namely, sketches portraying a fictitious character known as "Popeye the Sailor," by the importation and sale of certain dolls and brooches. It was admitted that copyright had at one time subsisted in sketches relied on by the Appellants and that the Appellants or one of them was the owner of them, and it was also admitted that the Respondents had imported and sold the dolls and brooches in question.
It was originally contended by the Respondents that neither the dolls nor the brooches constituted a reproduction in a material form of any of the sketches relied on and that consequently there was no infringement. Relief was granted to the Appellants by Simonds, J., both in respect of the dolls and the brooches. The Court of Appeal differed as to the brooches, holding that these were not a reproduction of any of the sketches. As to the dolls the Court of Appeal held that they did constitute a reproduction of one particular sketch; but they held (by a majority) that the copyright, or at least the right to restrain infringement of it in this case, was taken away as the result of the operation of Section 22 of the Copyright Act, 1911.
The Respondents were content before your Lordships to accept the view of the Court of Appeal, and they no longer contend that the dolls are not a reproduction in a material form of that sketch. They supported the view of the Court of Appeal as to the brooches, and as to the effect of the Section I have referred to.
The following facts should be stated:—
The said drawings were published in sets or "strips" of four or five, the first strip appearing in the New York Evening Journal on the 17th January 1929; in subsequent issues of the same newspaper further strips were published at frequent intervals. Copies of each issue were publicly sold in Canada simultaneously with publication in New York, and thereby the drawings became copyright in the United Kingdom.
Prior to any of the infringements alleged against the Respondents the Appellants had granted licences for the reproduction of the figure of "Popeye" in the form of brooches, plaster or clay-filled dolls and mechanical toys with the intention (duly carried out by the several licensees) that of each type of brooch, doll or toy more than fifty copies should be made. None of the designs therefor was registered under the Patents and Designs Acts 1907 and 1919. The infringements complained of are of the drawings and the Act relied on is the Copyright Act 1911.
For the purpose of the action the Appellants selected out of the thousands of strips published as before mentioned 55 strips published between the 17th January 1929 and the 16th January 1937, and conceded that if they could not prove infringement of the copyright in one or more of the drawings in these 55 strips they could not establish any infringement.
Before your Lordships the Respondents confined themselves to three contentions. First, they said that in any event the brooch was not an infringement. Secondly, they contended that the Appellants had not proved that the licensed articles copied by the Respondents had been copied from any of the drawings in the 55 selected strips rather than from any of the other "Popeye" drawings. Thirdly,—and this contention was the one which resulted in the dismissal of the action in the Court of Appeal—they said that even if the Respondents' acts would otherwise have been infringements the Appellants were debarred from any remedy which they might otherwise have had by Section 22 of the Copyright Act, which provides:—
"(1) This Act shall not apply to designs capable of being registered under the Patents and Designs Act, 1907, except designs which, though capable of being so registered, are not used or intended to be used as models or patterns to be multiplied by any industrial process."
"(2) General rules under Section 86 of the Patents and Designs Act, 1907, may be made for determining the conditions under which a design shall be deemed to be used for such purposes as aforesaid."
It should here be mentioned that the vital question arising on this question was not raised in its present form on the hearing before Mr. Justice Simonds, and your Lordships have not therefore the advantage of his opinion on the matter. In the Court of Appeal Lord Justice Scott and Lord Justice Clauson took the view that there was a good defence to the action under Section 22; but Lord Justice Luxmoore thought that the section had no further object than to prevent the application of the Act of 1911 to a work itself capable of registration as a design under the Patents and Designs Act of 1907 so as to confer artistic copyright on that work.
Before considering the effect of this section I will deal first with the other two contentions of the Respondents. The first is as to whether, assuming that the Appellants are entitled to copyright in the drawings, the brooches are colourable reproductions in three dimensions of any substantial part of the original drawings. It is not now contended that a figure in three dimensions which reproduces an original artistic work (within the meaning of the Copyright Act 1911) may not be an infringement of a drawing. On this point I have nothing to add to that which Simonds, J. and Clauson, L.J. have said. There remains the question whether the figure of "Popeye" on the brooches does or does not reproduce any substantial part of the drawings. The question is one of fact. When, as in this case, the copy or the reproduction is not exact the Court must examine the degree of resemblance. It is impossible to lay down any useful test of what constitutes a copy or a colourable imitation of such a work. I think, as Lord Watson seems to have thought in the not very different case of ( Hanfstaengl v. Baines & Co. 1895 A.C. 20 at p. 27), that the language of Bayley, J. in West v. Francis 5 B. & Aild. 737, though not always applicable, gives some assistance in determining what resemblance constitutes copying. Bayley, J. said:
"A copy is that which comes so near to the original as to give to every person seeing it the idea created by the original."
Lord Shand in the same case remarked that in comparing the works and keeping in view the idea and general effect created by the original, there was "such a degree of similarity as would lead one to say that the alleged infringement is a copy or reproduction of the original or the design—having adopted its essential features and substance." Those were remarks made in reference to the Fine Arts Copyright Act 1862; and there is in the Act of 1911 no reference to the design of the work as there was in the earlier Act....
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