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||Neutral Citation Number:  EWHC 468 (Ch)
||Case No: HC96 4933
IN THE HIGH COURT OF JUSTICE
||Royal Courts of Justice
Strand, London, WC2A 2LL
||12th March 2004
B e f o r e :
THE HONOURABLE MR JUSTICE LEWISON
Robert Onslow (instructed by Farrells) for the Claimant
Peter Colley (instructed by Hammonds) for the Defendant
Hearing dates : 1st, 2nd, 3rd, 4th, 5th March 2004
HTML VERSION OF JUDGMENT
Crown Copyright ©
Mr Justice Lewison:
- Mr Tom Scott is a draftsman. He works principally with extruded aluminium. Extruded aluminium is used for a number of purposes, including window frames and other kinds of frame. This case concerns aluminium frames used for holding unilluminated signs. The signs themselves are generally made of Perspex or plastic panels. Mr Scott's claim is for infringement of copyright in a drawing dated July 1976. He says that that drawing shows a new profile of an extruded frame which enables the frame to be held together by means of cleats. There is nothing especially original in the profile of the frame itself, which is a conventional profile of an extruded aluminium frame. The innovation is that the extruded aluminium lengths, of which the four sides of a frame are made, contain ledges projecting from the sides of the frame towards the centre, but leaving a gap in the middle. The ledges are separated from the outer edge of the frame by a few millimetres, thus enabling a right-angled metal cleat to be slid into two adjoining sides of the frame. The two adjoining edges of the frame can then be simply screwed together to make a right angled corner (and can also be simply unscrewed if the sign needs to be altered or repaired). Mr Scott says that the gap between the ledges is necessary, because a sign may have to be inserted right into the frame and between the ledges before being lowered into position. What I have described as "ledges" were called "pips" in the evidence and I shall refer to them by that description from now on).
- In about December 1989 a company called WASP began producing aluminium frames incorporating pips. These pips were said to have been derived indirectly from Mr Scott's 1976 drawing, through various intermediate stages, all with Mr Scott's consent. Mr Scott himself made a drawing called GAP 500 from which the product was made. This product was called "Ultraframe". It has already been decided, on the trial of a preliminary issue, that Mr Scott is not the owner of the copyright (if any) in GAP 500.
- Universal Components Ltd is a maker of aluminium frames, including frames for signs. They had been making sign frames for many years without any pips. Their product line was called "Panatrim". Panatrim comes in a number of sizes. In about 1992 they began to produce two versions of Panatrim with pips, called Panatrim 5 and Pantrim Major. Mr Scott says that in producing Panatrim with pips, Universal Components indirectly copied his 1976 drawing.
- The way in which Mr Scott says that the indirect copying came about is as follows:
i) Universal Components saw an example of Ultraframe (and/or GAP 500);
ii) Universal Components then instructed its own designer to incorporate pips into its own Panatrim frames;
iii) The designer did that without actually seeing Mr Scott's 1976 drawing or a drawing of Ultraframe, but the physical and technical constraints on the incorporation of pips into a conventionally profiled extruded aluminium frame were such that the result was (and would inevitably be) an indirect copy of Mr Scott's drawing.
- Universal Components say that they arrived at the idea of including pips independently and without copying. They say that in 1978 they had commissioned a drawing for some of the Panatrim range incorporating pips (JM 1054), but had decided at that time that incorporating pips into the sign frame was not commercially worthwhile (or in the case of some Panatrim sizes) not practicable.
- The appendix to this judgment contains copies of the following drawings:
i) The 1976 drawing;
ii) The GAP 500 drawing;
iii) Drawing JM 1054;
iv) Drawing UCL 142 and
v) Drawing UCL 162.
- Ultra Marketing (UK) Ltd, the first claimant, is in liquidation and has discontinued its claim.
- Since the drawing was made in 1976, any copyright in it must have arisen (if at all) under s. 3 (2) of the Copyright Act 1956. That says:
"Copyright shall subsist
in every original artistic work which is unpublished, and of which the author was a qualified person at the time when the work was made."
- The effect of the transitional provisions contained in Schedule 1 to the Copyright Designs and Patents Act 1988 ("the 1988 Act") is that copyright in an artistic work continued to subsist, but if the work was a design document (as defined in section 51), it ceased to be an infringement of copyright to make an article to the design on or after 1 August 1999: 1988 Act Sched 1 para 19; 1988 Act s. 51 (1). In addition a person became entitled as of right to a licence to do anything which would otherwise infringe copyright on or after 1 August 1994. (Had the drawing been made after the 1988 Act came into force, it would have been covered (if at all) by design right; and an action for infringement of copyright would have failed because of section 51.)
- An artistic work only attracts copyright if it is an "original artistic work". In this context "original" does not mean innovative. It merely means that the work has originated with the artist, as opposed to having been copied from something else. However, it is originality relating to artistic matters that is important. For this purpose, I take "artistic" to mean that which is visually significant: Interlego AG v. Tyco Industries Inc  AC 217 at 266. I will need to consider in due course whether the 1976 drawing attracts copyright at all.
- If it does, then the owner of the copyright in the work has the exclusive right to do the acts restricted by the copyright as set out in section 16 of the 1988 Act. Those rights include the right to copy the work. Copying restricted by the copyright includes copying a substantial part of the work; and copying it either directly or indirectly: section 16 (3). In addition, it is immaterial whether any intervening acts themselves infringe copyright. Section 17 (2) tells us that copying includes reproducing the work in any material form. This is amplified by section 17 (3), which says that in relation to an artistic work copying includes the making of a copy in three dimensions of a two-dimensional work. In British Leyland Motor Corporation Ltd v. Armstrong Patents Co Ltd  AC 577 the House of Lords held (over a vigorous dissent by Lord Griffiths) that a design for an exhaust pipe was entitled to copyright protection as an artistic work, and that copyright was infringed by "reverse engineering" an exhaust pipe. In other words, to produce a copy of the finished artefact was an indirect copy of the drawing from which the artefact was produced.
- The idea of copying involves two elements:
"first, there must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part thereof, for the former to be properly described, not necessarily as identical with, but as a reproduction or adaptation of the latter; secondly, the copyright work must be the source from which the infringing work is derived."
Francis Day & Hunter Ltd v. Bron  Ch. 587 at 583 per Diplock LJ.
- Copying may be conscious or sub-conscious. At the stage of the inquiry whether there has been copying, the similarities between the copyright work and the alleged infringement is mainly of evidential value. In Designers Guild Ltd v. Russell Williams Textiles Ltd  1 WLR 2416 at 2425 Lord Millett put it as follows:
"The first step in an action for infringement of artistic copyright is to identify those features of the defendant's design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and the differences. The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas. If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features which he alleges have been copied, and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying.
Even at this stage, therefore, the inquiry is directed to the similarities rather than the differences. This is not to say that the differences are unimportant. They may indicate an independent source and so rebut any inference of copying. But differences in the overall appearance of the two works due to the presence of features of the defendant's work about which no complaint is made are not material."
- However, like most evidential presumptions, this evidential presumption is merely a tool. At the end of a trial, once all the evidence has been heard, it is a question of fact whether a drawing has been produced as a result of copying a copyright work or as a result of independent design.
- As I have said, the copy may be an indirect copy of the protected work, so that it is not necessary for the infringer ever to have seen it. Moreover, in the case of an artistic work, the reproduction may be derived from verbal instructions. This is illustrated by two cases to which Mr Onslow referred me. The first is Solar Thomson Engineering Co Ltd v. Barton  RPC 537. The claimant manufactured a special type of grooved pulley. In order to reduce wear on ropes passing over the pulley, the groove was fitted with a rubber liner. The liner had been manufactured in accordance with an engineering drawing in which the claimant claimed copyright. The idea behind the liner was that it could be relatively easily replaced. A buyer of the pulley commissioned a contractor to make a new rubber liner. The contractor, in turn commissioned a sub-contractor. He provided the sub-contractor with an example of the pulley, but not with any drawings. The sub-contractor made a mould and produced a liner which fitted the pulley. The claimant alleged that this was an infringement. So the contractor commissioned an independent designer to design a liner for the pulley. He supplied the designer with the hub flange and the steel plate on which the liner was to be bonded and verbal instructions; but no drawings. The instructions were relatively precise and contained dimensions. The designer produced two designs; one of which did not resemble the claimant's liner, but the other of which did. The former design was likely to have serious functional defects. Buckley LJ said of the latter design:
"The shape of the rubber ring where it is in contact with the steel ring and the edge of the flange is dictated by the shape and dimensions of those features. The designer had no latitude in that respect. Having regard to the terms of the designer's instructions it seems to me to have been virtually inevitable that he would produce a design having the essential features of his second alternative. It cannot, in my opinion, be regarded as a coincidence that that alternative bears a strong resemblance to the plaintiffs' design which it does. It must in my judgment be regarded as a reproduction of the plaintiffs' sectional drawing, the instructions give by the defendant to the designer affording a sufficient causal link to eliminate mere coincidence and to give the designer's version the quality of an indirect reproduction of the sectional drawing."
- The second case was Plix Products Ltd v. Frank M Winstone (Merchants)  FSR 63 (a decision of the High Court of New Zealand). The claimant in that case had for many years produced a method of packaging kiwi fruit for export, known as "pocket packs". They were rectangular trays, each containing a number of indentations. Each indentation contained one fruit. The number of indentations per tray depended on the size and weight of the fruit. Working largely from the claimant's packs, the New Zealand Kiwifruit Authority produced a specification for packaging. It was entirely verbal. The defendant made pocket packs according to the written specification, and without sight of the claimant's packs. Nevertheless they were held to have infringed the claimant's copyright in the design. Pritchard J held that indirect copying could be perpetrated through the medium of a verbal description of a copyright work. He distinguished between two types of verbal description. As he put it at p. 91:
"I think the enquiry must be whether the description said to have been used by the alleged copyist conveys the form (shape or pattern) of those parts of the design which are the copyright material alleged to have been "copied" or whether the description conveys only the basic idea of the drawing or artefact."
- He added:
"A designer who knows his subject and who is given the idea, or general concept, of a copyright product (and no more) may well be able, by drawing on his own skill and independent knowledge, to design a product which may, or may not, reproduce the form of a copyright work. I would regard this as independent work not copying."
- Mr Scott has no interest in the Ultraframe product; and it has already been determined in a preliminary issue that he has no copyright in the GAP 500 drawing from which it was made. Mr Onslow says that he overcomes this hurdle by carrying forward his copyright in the 1976 drawing through the GAP 500 drawing and thence into the Ultraframe product. In support of this submission Mr Onslow relies on the decision of the Court of Appeal in LA Gear Inc v. Hi-Tec Sports plc  FSR 121. That case concerned designs for trainers. The claimant's employee made three drawings (called drawings 1, 2 and 3 respectively). Drawing 1 was a design for a man's shoe. Drawings 2 and 3 were adaptations of drawing 1 for a comparable women's shoe. The Court of Appeal held that there was a triable issue whether drawings 2 and 3 were themselves entitled to copyright protection. They therefore concentrated on drawing 1. It was argued that drawing 1 might itself be derived from a yet earlier drawing, and hence not entitled to copyright protection. Nourse LJ rejected that argument. He said:
"If, in the course of producing a finished drawing, the author produces one or more preliminary versions, the finished product does not cease to be his original work simply because he adapts it with minor variations, or even if he simply copies it, from an earlier version. Each drawing having been made by him, each is his original work."
- Nourse LJ then held that even if drawings 2 and 3 were not themselves entitled to copyright protection, the claimant was entitled to an injunction in relation to copying all three drawings, based on its copyright in drawing 1 alone. Staughton LJ and Sir Michael Kerr agreed. In my judgment Mr Onslow's submission is legally well-founded. If Universal Components indirectly copied Gap 500, and if Gap 500 was itself a copy of the 1976 drawing, then Universal Components will have indirectly copied the 1976 drawing. The fact that Mr Scott is the copyright owner of the 1976 drawing, but not of GAP 500, makes no difference.
- It is sometimes said that there is no copyright in ideas; only in the expression of ideas. Like many beguilingly simple propositions, this one needs to be treated with caution. Lord Hoffmann explained in Designers Guild Ltd v. Russell Williams Textiles Ltd  1 WLR 2416 at 2423:
"My Lords, if one examines the cases in which the distinction between ideas and the expression of ideas has been given effect, I think it will be found that they support two quite distinct propositions. The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such. The same is true of an inventive concept expressed in an artistic work. However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own: see Kleeneze Ltd. v. D.R.G. (U.K.) Ltd.  F.S.R. 399. The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work. Kenrick & Co. v. Lawrence & Co. (1890) 25 Q.B.D. 99 is a well known example. It is on this ground that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff's work. At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author's skill and labour as to attract copyright protection.
Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution of the author's skill and labour, tends to lie in the detail with which the basic idea is presented. Copyright law protects foxes better than hedgehogs. In this case, however, the elements which the judge found to have been copied went well beyond the banal and I think that the judge was amply justified in deciding that they formed a substantial part of the originality of the work."
- Mr Roger Hill has been in the sign industry for the best part of 50 years. He originally carried on business in partnership, but incorporated the Defendant in 1980. It was originally incorporated under a different name to its current name, but I will call it "Universal Components" for convenience. In 1971 or 1972 his partner, Mr Charlie Dobson, invented a system for framing signs which became known as "Panatrim". It was granted a patent in 1972. The particular problem that Panatrim was designed to overcome is that Perspex has a high co-efficient of thermal expansion. So when it is rigidly secured by a frame on all sides it is likely to crack or warp under normal changes in ambient temperature. Panatrim was designed to allow the panel to be hung from the top of the frame only, by means of a projecting flange in the frame, which engaged with a rib on the sign panel. Another advantage of Panatrim was that the panel could be inserted from the front of the frame and tilted into position, rather than being slid in from the side. (This is called "Tilt and Fit".) This meant that frames could be erected in locations where there was insufficient room to slide a panel in from the side of the frame, and it also meant that the frame could be assembled off-site, instead of having to leave one side open until the panel had been inserted. Panatrim came in a variety of sizes, and the range changed over the years. Panatrim Standard was the first of the Panatrim range to go into production in about 1972.
- Mr Scott has spent his working life as a design draftsman. The majority of his work has been concerned with extruded aluminium profiles. The products he has designed include window and door frames, patio frames, door furniture and sign frames. He says that in July 1976 he drew the 1976 drawing. The 1976 drawing is headed "Sign Frame Sections". It contains three sketches (see appendix). Each was what Mr Scott called "a scheme drawing" or "scheme sketch". In order to translate a scheme drawing into a finished product, Mr Scott explained that the scheme drawing would be followed by a detailed design drawing; and if there is more than one piece in the design, that in turn would be followed by an assembly drawing. The 1976 drawing shows in the bottom left hand corner a section of an extruded aluminium profile with two pips towards the top of the profile. Between the pips and the top of the frame there is a shaded area, which Mr Scott told me represented the cleat. The top edge of the frame and the sides are at right angles to each other, and all the corners are right angled. The two vertical parts of the frame are of unequal lengths, and that on the right hand side is longer than that on the left. At the bottom of the frame each vertical member returns to the horizontal through a right angled turn. The left hand return is straight. The right hand return itself returns at about 45° to the vertical. There is a gap between them. The drawing was full size (although nothing on the drawing itself indicates this). This drawing is the relevant one in the present case.
- Mr Scott accepted that the idea of cleats (and cleat locating facilities) were common in the extruded aluminium industry in 1976; but he said that his drawing was the first time that pips had been applied to a sign frame (as opposed to, say, a window frame). In the case of a window frame the cleats were permanent, whereas in his drawing the cleats were demountable. However, as Mr Scott also accepted, the 1976 drawing did not show how the cleats were to be fixed, and hence did not embody the idea of a demountable cleat.
- The gap between the two returns of the profile, if measured, was about 10 mm. Mr Scott said that this was so that the profile should be capable of accommodating a panel 10 mm thick. But, as Dr Colley showed, at the time Perspex, from which the panels were made, did not come in thicknesses greater than 6 mm. If a Perspex panel had been placed in a profile manufactured to Mr Scott's sketch, it would not have been securely held. Mr Scott's riposte was that his profile could accommodate wooden panels as well. However, as Mr Russell (the Defendant's expert) said, and I accept, the use of an aluminium frame in conjunction with a wooden panel is, to say the least, highly unusual. Put shortly, a profile manufactured to Mr Scott's 1976 drawing would not have worked properly.
- There are some other features of Mr Scott's 1976 drawing I should mention. The length of the pips (measured from the inside edge of the frame) was 3 mm. The gap between the upper edge of the pips and the lower edge of the top of the extrusion was 3 mm. The overall width of the extrusion was 32 mm. Mr Scott also said that the wall thickness was a uniform 1.5mm.
- Mr Scott said that having made the 1976 drawing he did not show it to anybody or tell anybody outside his immediate family about it. It remained unused, in a drawer at home, until 1987.
- Mr Colley attacked the authenticity of the 1976 drawing, suggesting that it came into existence long after 1976. He pointed to the condition of the paper on which the drawing was made (as compared to the condition of the paper on which roughly contemporaneous drawings had been made), and to the appearance of the underlining of the date on the drawing which, he said, looked as though it had been added afterwards, as the underlining was discontinuous. He also pointed to Mr Scott's witness statement in which it was said that in preparing the 1976 drawing Mr Scott had looked at certain pages in a publication called "Aluminium Extrusions a Technical Guide". Dr Colley demonstrated that that publication was first published in 1989 (and indeed the pages exhibited by Mr Scott were from the 1994 reprint). He also submitted that the action was originally brought on the basis of an asserted copyright in the GAP 500 drawing, and that the claim based on the 1976 drawing was introduced by amendment only when Mr Scott began to appreciate that his claim based on GAP 500 was in jeopardy. From these materials he invited me to conclude that the 1976 drawing was, not to put too fine a point on it, a forgery.
- I leave aside any submissions based on the physical condition of the paper, which would need expert evidence to support them. I attach little weight to the break in the underlining. If Mr Scott had set out to produce a forgery, he would surely have made a better fist of it than that. It is true that Mr Scott's evidence about the publications he had in front of him cannot be right, but in my judgment that is a reflection of Mr Scott's carelessness in writing or approving his witness statement rather than such serious dishonesty as is alleged. I should also add that of the three pages from publications that he exhibited, one was taken from a publication that pre-dated 1976. So far as the amendment to the claim is concerned, I can understand a decision to rely on what appeared to be an engineering drawing rather than a "concept sketch" until copyright ownership in the former was challenged. Bearing in mind the seriousness of the allegation, I am not prepared to infer that it was a forgery. I find that Mr Scott did make the 1976 drawing in 1976.
- By September 1978 Panatrim had been on the market for some years. Its best seller was Panatrim Standard; but Universal Components also sold Panatrim Mini and Panatrim Major. As their names suggest, Panatrim Mini was a smaller profile than Panatrim Standard, and Panatrim Major was a larger profile than Panatrim Standard. In all cases the dies from which the extrusions were made were manufactured by Indalex, with whom Universal Components had been working since about 1972. Indalex not only made the dies, they also made the engineering drawings from which the dies were made. Indalex and Universal Components had a close working relationship. Representatives of the two companies spoke and met frequently. Instructions were usually informally given.
- Panatrim was manufactured and sold without pips. However, Universal Components also made other products. These included aluminium box systems for illuminated signs, called respectively Dualcase, Panacase and Slimline. These products all came with pips, whose function was to enable a cleat to be located in the frame.
- In 1978 Mr John Mayo was working for Indalex as a draftsman. He said that he was asked by someone at Universal Components (he cannot remember whom) to make a drawing of pre-existing Panatrim profiles incorporating pips. Mr Roger Hill said that it was he who made the request "out of curiosity". Both Mr Hill and Mr Mayo agree that the request was an oral one. Mr Mayo said that he did not need to be told what pips were (although he called them "slots") as they had been used in windows since the 1930s and in sign frames since the early 1970s. He got out the drawings of the relevant Panatrim profiles and made a new drawing, adding pips. The drawing is dated 12 September 1978, and that is the day on which Mr Mayo said he drew it. Its reference number is JM 1054 (see appendix). At one stage in the case Mr Scott made a counter-charge that JM 1054 was itself a forgery, but that charge was abandoned before trial. Somewhat surprisingly, in view of the abandonment of this allegation, Mr Scott did not retract or qualify the paragraphs in his witness statement in which he made this accusation when he came to verify his statement on oath. I find that JM 1054 was drawn on the date it bears.
- JM 1054 shows three Panatrim profiles. From top to bottom of the drawing they are Panatrim Major, Panatrim Mini and Panatrim Standard (although they are not identified on the drawing by those names). Panatrim Major and Panatrim Standard have each had two pips added each of which is 7.5 mm long. Panatrim Mini has had two pips added each of which is 4.5 mm long. Mr Mayo sent a copy of his drawing to Mr Roger Hill. Mr Mayo also retained a copy of the drawing in his personal file. Mr Hill decided against incorporating pips into Panatrim. His reasons differed for the various profiles. In the case of Panatrim Mini and Panatrim Standard he decided that if pips were incorporated there would not be enough room within the frame to insert the panel into the frame before letting it drop back onto the flange on which it would rest. For this reason, he said, Panatrim Standard is still sold without pips. (Panatrim Mini continued to be sold without pips until 1999, when it was changed from a "tilt and fit" frame to a slide-in frame.) In the case of Panatrim Major this was not a problem as the frame size was big enough to allow the "tilt and fit" principle to work. However, the incorporation of pips would add to the cost of manufacture, and any increase in cost would have to be passed on to customers. Mr Hill saw no commercial advantage at the time in incorporating pips into Panatrim Major; and he put JM 1054 into his file of drawings, where it remained for many years.
- The story now moves on to 1987. In March or April of that year Mr Scott contacted Mr Rodney Coombes of Ultra Marketing. Mr Coombes is now dead, but a witness statement made by him was put in evidence. Mr Scott said that he contacted Mr Coombes with a view to offering him designs which could be manufactured and sold. He said that in April 1987 he had a meeting with Mr Coombes and Mr Christopher Warbutton. Mr Warbutton, together with his two brothers, ran a sign making business. Their company was known as WASP. Mr Scott says that he took his 1976 drawing to the meeting and showed it to Mr Coombes and Mr Warbutton. Mr Warbutton said that what struck him about Mr Scott's design was that the frame profile incorporated a horizontal groove, which accommodated a corner cleat. This, he said was a "major step forward which would revolutionise the manufacture and fitting of sign frames in the future, giving considerable cost savings on site erection." He and Mr Coombes decided to proceed with Mr Scott's design and that Mr Scott would produce more detailed designs. I think that Mr Warbutton's perception of Mr Scott's design was over-generous. What was new about it was not that it incorporated pips, which had been commonplace in the industry, but that with the addition of pips, the cleats (or angles as Mr Warbutton called them) could be made demountable, rather than permanent. But since the method of fixing the cleats was not shown on the 1976 drawing, that feature cannot have struck the eye.
- Mr Scott produced another drawing, which has the title GAP 500. It has already been determined in a preliminary issue in this case that although Mr Scott was the author of this drawing, he does not own copyright in it. So he cannot maintain a claim that it has been copied. What he says, however, is that GAP 500 is a refinement of the 1976 drawing, sufficient to mean that any one who copies GAP 500 also copies the 1976 drawing.
- GAP 500 was drawn in September 1987 (see appendix). It is a more detailed drawing than the 1976 drawing. It is precisely drawn and dimensioned and is the sort of drawing that one might send to an extruder. In Mr Scott's three-fold classification it is a detailed drawing, rather than a concept drawing. It differs visually from the 1976 drawing in a number of respects. First, the length of the pips is 5 mm (as opposed to 3mm on the 1976 drawing). You get this by deducting the wall thickness of 1.5 mm from the figured dimension of 6.5 mm. Second, the width of the extrusion was 30 mm (as opposed to 32 mm). This means that the gap between the pips is smaller. Third, two of the right angled corners of the profile have been replaced by rounded corners. Fourth, the ratio between the lengths of the two vertical parts of the profile differs from the 1976 drawing. Fifth, the riser at 45° shown on the 1976 drawing has disappeared. Sixth, the gap between the returns of the extrusion is smaller, so that a 6 mm Perspex panel would have been properly secured. Mr Scott said that he had the 1976 drawing in front of him when he prepared GAP 500. I do not accept this. The concept embodied in the 1976 drawing is a simple one, and is not difficult for a skilled draftsman like Mr Scott to grasp. I can see no need for Mr Scott to have had the 1976 drawing in front of him when preparing GAP 500. Nor do I think that Mr Scott was unconsciously copying the 1976 drawing. I think that he was nearer the truth when he said that GAP 500 "has taken the basic idea of the scheme at the front of an unilluminated sign panel with the insertion of the cleat." The basic idea was one that was firmly in Mr Scott's mind, without the need of any drawing to remind him. The visual ("artistic") impression of GAP 500 differs markedly, to my eye, from that of the 1976 drawing.
- WASP began to produce designs to GAP 500 in late 1989. It was marketed under the name "Ultraframe". The advertising material showed a section of the frame, which depicted the pips within the extrusion. Universal Components learned of this new product fairly quickly and claimed that it was an infringement of the patent for Panatrim. A writ was served in November 1989. It is clear from a letter of 1 December 1989 that Universal Components had by then seen the advertisement depicting the section of Ultraframe. By February 1990 the action was settled on the basis of undertakings. What is significant about the action is that Mr Scott says that during the course of the action his drawings (including the 1976 drawing and GAP 500) and samples of Ultraframe were supplied to Universal Components; and that that supply gave Universal Components the opportunity to copy his design, which they did.
- In his first witness statement (prepared for the purposes of the preliminary issue) Mr Scott identified Mr Roger Hill as the person who came to the WASP factory and was handed the drawings and samples. Mr Roger Hill denied that such an incident had taken place. In his second witness statement (prepared for the trial) Mr Scott identified Mr Martin Hill as the person in question. He said that he had seen Mr Hill at the WASP factory collecting the drawings and sample. In this he was supported by Mr Thomas Warbutton, Mr Christopher Warbutton and Mr Alan Warbutton. Mr Alan Warbutton disclaimed any personal knowledge of the incident. I discount his evidence. Mr Thomas Warbutton said that he had opened a door and seen Mr Martin Hill walk across the car park of the WASP factory towards the offices. Mr Christopher Warbutton said:
"I had a call from Mr Martin Hill in early 1990 requesting samples and drawings, right, and he told me that if he did not get them he would get them through a solicitor. I agreed and he came up to my factory in Ashgrove Road at about half past two in the afternoon. He was seen there by Mr Scott; he was seen there by my brother who at the time opened a door and he seen him going across the yard. He remembers that. He picked up all the drawings of Mr Scott's. He picked up the 76 drawing, the 500D, [Ultraframe] drawings and I gave him 6-inch samples of extrusions."
- Universal Components admit that in the course of the patent infringement action they were supplied with a copy of GAP 500. But Mr Martin Hill denied ever having been at the WASP factory. He said that he was aware that in the course of the patent infringement proceedings his solicitors would request documents, but that he left it to them. As he put it: "If you employ a solicitor, you do everything through them." He denied that he had ever received samples of the Ultraframe product.
- There is clearly a sharp conflict of evidence. I did not find the evidence of any of the witnesses wholly satisfactory on this question. Mr Martin Hill was at pains to distance himself from both the day to day administration of Universal Components, and also from the conduct of the patent infringement action. If his evidence is to be believed, his involvement with the company was more or less limited to an annual board meeting and casual chats with the staff. His instructions to the company's solicitors in the patent infringement action were sketchy in the extreme. I think that Mr Martin Hill was more involved with Universal Components than he cares to admit. On the other hand, Messrs Warbutton clearly discussed their evidence together before compiling their witness statements. Mr Alan Warburton said that he and his brothers talked a lot about the case; and the more detail you can put in "the more reasonable it becomes". Mr Christopher Warbutton's statement was actually typed out by Mr Scott. I infer that he discussed his evidence with Mr Scott too. He came close to accepting this in the course of his cross-examination. Moreover, the passage from his evidence that I have quoted incorporates by reference the evidence of his brother Thomas and of Mr Scott, in order to strengthen his own. Mr Thomas Warbutton did not explain how he came to open the door at the very moment when Mr Martin Hill was crossing the car park. None of the Messrs Warbutton seemed to know exactly what the bundle of drawings actually contained. In assessing this conflict of evidence, I have placed weight on the course of the patent infringement action. A writ was served on 28 November 1989. By February 1990 undertakings were offered. No defence appears to have been served, and the action does not appear to have reached the stage of discovery. I cannot see that the 1976 drawing was relevant to the question of patent infringement, and cannot therefore see why it would have been handed to Mr Hill. Indeed, I find it difficult to accept that Messrs Warbutton had a copy of the 1976 drawing which had, by then, been superseded by GAP 500. Nor do I accept that Mr Christopher Warbutton would have handed documents direct to Mr Hill when he had solicitors acting for him. This was hostile litigation. On the other hand, it is admitted that GAP 500 was supplied to Universal Components. On balance I prefer the evidence of Mr Hill. I find that Universal Components had a copy of GAP 500 and of the advertisement depicting the section of Ultraframe; but not the 1976 drawing or a sample of the product itself.
- Mr Roger Hill said that throughout the 1980s he received requests from Universal Components' sales representatives that some customers had asked whether cleat locating facilities could be included in Panatrim. Mr Hill said that since his best seller was Panatrim Standard (in which pips would not work) he decided not to incorporate pips. However, in 1990 he was told by Mr Hance (Universal Components' sales director) that there were competing copies of Panatrim on the market with a cleat facility and that this was affecting sales. This, Mr Roger Hill told me, was raised at an internal meeting. He went to his file and got JM 1054. He returned to the meeting and said that pips would not work in Panatrim Standard and Panatrim Mini. However the drawing showed that it would work in Panatrim Major. By then a new size called Panatrim 5 had also been introduced, and the pips would work in that one too. Mr Hill said that he decided that pips should be included in Panatrim Major and Panatrim 5. However, since Panatrim was still protected by the patent, there was no rush. Mr Hill decided that the pips should be incorporated when new dies needed to be made. Mr Hill professed complete indifference to other products on the market. He said that since Panatrim was protected by the patent, he had no competitors. So he was not concerned to see what else was on the market. I do not accept this evidence. It seems to me self-evident that any businessman wants to know what the opposition is up to, and will keep himself informed about innovations in the products he makes and sells. Nor do I accept the created impression of non-communication between Mr Roger Hill and his brother Martin. If (as I accept) Mr Martin Hill told his brother that someone had infringed Universal Components' patent, it is incredible that Mr Roger Hill behaved with the indifference and lack of interest that he and his brother portrayed in evidence. I find that both Roger Hill and Martin Hill knew of the basic features of Ultraframe. In the light of the request that had been made by customers for the incorporation of pips into the Panatrim range, I find that Mr Roger Hill decided that it would be a good idea to incorporate pips into those parts of the Panatrim range that could accommodate them.
- What happened next? Mr Roger Hill said in his witness statement that his instructions "filtered down" to Mr Andrew Buckley who was in charge of stock control at Universal Components, and that he was the one who talked to Indalex. However, in cross-examination Mr Roger Hill gave an account of a conversation that he himself had had with Indalex. He said that he had spoken to someone at Indalex about incorporating pips into the profiles. He said that the person to whom he spoke was aware that Indalex had done a drawing before. Mr Hill could not recall his exact words, but he thought that he asked Indalex to "look at it again". I find that such a conversation did take place between Mr Hill and someone at Indalex, in which Mr Hill asked Indalex to revisit the question of incorporating pips into the Panatrim profiles.
- Mr Buckley could not recall the precise sequence of events, but he thought, based on documents, that he must have instructed Indalex to prepare the drawings in November 1991. Mr Buckley's contact at Indalex was Mr Martin Ford. Mr Buckley described his instructions to Mr Ford as follows:
"As was my normal practice, I telephoned Martin Ford and gave him the verbal instruction to incorporate pips into Panatrim 5 and Panatrim Major
. When instructing Mr Ford to incorporate pips into Panatrim 5 and Panatrim Major, I did not explain anything further to Mr Ford other than perhaps to say that we wanted to incorporate the pips to allow for corner cleat assembly. Indalex already had the die drawings
and I was confident of Mr Ford's expertise as a draughtsman and his knowledge of what pips were and how they worked. I did not refer Mr Ford to, nor provide him with, any drawing of the Defendant or any other person, or any product, brochure or advertisement of any other company."
- In his oral evidence Mr Buckley said that he did not discuss the length of the pips with Mr Ford or anything about fitting the sign panel in between the pips. Nor, he said, did Mr Ford produce concept drawings. He got it right first time.
- Mr Ford could not remember who had given him the instruction, although Mr Buckley was among the three likely candidates. Mr Roger Hill was not among those candidates, and Mr Ford did not say that he had been given his instructions by more than one person. He continued:
"I do not remember the exact wording of the request but it was to the effect that I should add cleat locating slots
to the top of the frame profile shown in the UCL 142 drawing. The Defendant did not provide me with, nor did it refer me to, any drawing or product of any other company or person."
- Mr Ford said that there was no need to explain to him what cleat slots were, as he was familiar with them from other products. He said that he was not told what length to make the pips as Universal Components rarely specified sizes. He got out Universal Components' file and flicked through it. He mentioned the request to Mr Mayo (who by then had been promoted to chief draftsman). Mr Mayo said that he had done something similar a few years previously, and he got out JM 1054 from his personal file. Mr Ford gave JM 1054 a casual glance and carried on with making modifications to the drawing. He said that he did not need to look at any drawing, and that any competent draftsman, if asked to add cleat slots, would have come up with the same or a similar thing. He said in his oral evidence that if you are going to put a cleat in a mitred frame there is only one way that the pips would fit to do the job. His design assumed that aluminium cleats would be used, and he did not take into account the possibility that they would be made of stainless steel. None of this evidence was seriously challenged.
- Mr Onslow submitted that Mr Roger Hill, knowing of the features of the Ultraframe product, gave instructions to Indalex. Those instructions were either instructions to incorporate pips into the Panatrim profiles, or to shorten the pips on JM 1054. Although I find that Mr Roger Hill did ask Indalex to revisit the question of pips, I do not infer that he told Indalex to shorten the pips. Nor am I able to find that Mr Roger Hill's request was passed on to Mr Ford within Indalex. I find that the instructions to Mr Ford, who actually drew the design, were given by Mr Buckley. Given the close working relationship between Indalex and Universal Components, I do not find it surprising that conversations took place between more than one representative of each. Mr Onslow also submitted that the similarities between Mr Scott's 1976 drawings and the drawings that Mr Ford produced were such as to raise an evidential presumption of copying, and that I should use that to test the evidence of Messrs Roger Hill, Buckley and Ford. I turn then to consider Mr Ford's drawings.
- Mr Ford was asked to incorporate pips into two pre-existing Panatrim designs. Universal Components used a standardised cleat to join the sides of the frame together. So Mr Ford's design constraints were that the pips had to fit within the pre-existing profile and the depth of the slot for the cleat had to be big enough to accommodate the depth of the cleat, and not so deep that it would move about. Apart from that, the length of the pips was a matter of relative indifference, as long as the resulting design was capable of efficient extrusion.
- Mr Ford produced Drawing UCL 142 (see appendix). It is the die drawing for Panatrim 5, with added pips. It has the following features. The wall thickness is in general 1.75 mm. The overall width of the extrusion is 28 mm. The maximum width of the slot for the cleat is 24.5 mm, and its depth is between 2.75 and 2.95 mm. The length of each pip is 4 mm. The shorter of the two vertical parts of the frame returns at a right angle and has no 45° riser.
- A few months later, Mr Ford modified drawing UCL 162 which is the die drawing for Panatrim Major with added pips (see appendix). The overall width of this profile is 30 mm (2 mm longer than UCL 142). But the width of the slot for the cleat is the same at 24.5 mm and its depth is the same at 2.75 to 2.95 mm. Mr Scott was prepared to accept that this suggested that both had been designed to take a cleat of a standard size. As a result of the difference between the overall width and the width of the slot, this has the knock-on consequence that the wall of UCL 162 had to be thickened on one side above the slot. The pips are again 4 mm long.
- Panatrim Major and Panatrim 5 (both incorporating pips) were launched in 1992. In 1999 Panatrim Mini was modified to incorporate pips because, by then, it was being used for slide-in panels rather than front loaded panels.
Was the 1976 drawing an original artistic work?
- The question here is not whether Mr Scott's idea of incorporating pips in a frame for an unilluminated sign was an original idea. The question is whether his drawing was an original drawing. In the sense that the drawing originated with him, and that he did not copy it from a pre-existing source, it was, in my judgment, original. It is also the product of skill and labour, so that in principle it is entitled to copyright protection as an artistic work. But the limit of its protection is its artistic (i.e. visual) characteristics and not the technical idea that it embodies.
Did Mr Ford copy Mr Scott's drawing?
- Mr Ford never saw Mr Scott's 1976 drawing. I accept his evidence that he was not given any drawings or samples by Universal Components. Was this, then, a case in which the verbal instructions he was given inevitably led to his copying Mr Scott's 1976 drawing; or was this a case in which, given the general idea, Mr Ford, as an experienced draftsman, was able to produce an independent design of his own? In my judgment it is clearly the latter case.
- The general idea of incorporating pips is clearly the same. But the dimensions of the pips, the dimensions of the slot for the cleat, the dimensions of the extrusion, the gap between the vertical parts of the frame and the wall thickness are all different. Far from there being coincidences that suggest copying, the differences are such as to rebut any such inference. The idea of an extrusion incorporating pips was commonplace in the industry, even if it had not previously been used in connection with sign frames. Once someone had had the idea of incorporating them into sign frames, the draughtsmanship was straightforward. If I add to that the evidence of Mr Ford (which I accept) the position becomes even clearer. Such design constraints as he had stemmed from the pre-existing profile of the extrusion and the size of the cleat then used by Universal Components. Neither had anything to do with Mr Scott.
- Mr Scott said on several occasions that the gap between the pips was necessary so that the sign panel could be pushed up between the pips before being lowered into position. That is why, he said, his design had been copied in Panatrim. But Mr Russell, convincingly as it seemed to me, explained that far from being a virtue, a gap between the pips into which the panel could penetrate would cause added practical difficulties in installing the panel. The gap between the pips did not, in my judgment, amount to a practical design feature.
- An overall visual comparison of Mr Scott's 1976 drawing and the two drawings produced by Mr Ford shows that the shapes are substantially different. The only common feature is the pips. But an idea of such simplicity would need to be exactly copied before the copying could be said to amount to a substantial part of the work. In the present case the pips were not copied at all, let alone exactly.
- In my judgment, although it is probable that the decision to incorporate pips into Panatrim 5 and Panatrim Major was inspired by the success of Ultraframe, the design was independently created.
- Mr Scott's real complaint, as it seems to me, not that someone has reproduced his drawing, but that someone has stolen his idea. I quote some passages from his evidence:
"Q. I want to suggest to you that what you have done really in 1976 in this figure 1, drawing 1, is you have done no more than take an unoriginal extrusion shape
and to that you have added the idea, the already well-known idea of pips, yes?
A. I have added the idea of demountable cleats which were not on the market."
"This [the 1976 drawing] was a scheme drawing so I was playing with ideas."
"Q. But that [i.e. GAP 500] really, in no way, owes anything to the 1976 drawing?
A. It has taken the basic idea of the scheme at the front of an unilluminated sign panel with the insertion of a cleat."
- Even if that complaint is well-founded, it is not a complaint that the law of copyright will protect. But I do not even think that this complaint is well-founded. The incorporation of pips into extruded aluminium frames was an old idea, and had been used in window frames for decades. Universal Components had the idea of incorporating pips into sign frames in 1978, long before Mr Scott's 1976 drawing saw the light of day. So that idea was also not a new one when Ultraframe was launched. What changed was not the idea, but its commercial viability. By resurrecting their own idea for incorporating pips into some of the Panatrim range, Universal Components have done no more than they were entitled to do.
- In my judgment the action must be dismissed.
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